Domain Name Handbook
DNS NewsDomain DisputesU.S. PolicyICANNMailing ListsArchivesTable of ContentsReviews & CitesViewpointAcknowledgmentGlossarySpecial FeaturesBooklist

Si a jure discedas vagus eris, et erunt omnia omnibus incerta.
If you depart from the law, you'll wander without a guide, and everything will be uncertain to everyone.

ABCARPETANDHOME.NET

A.B.C. Carpet Co., Inc., et al. v Mehdi Naeini, Case No. 00-CV-4882 (FB), 2002 U.S. Dist. Lexis 1129 (E.D.N.Y., January 22, 2002). Plaintiffs have used the marks "ABC" and "ABC Carpet" for retail stores offering carpets and rugs since 1961 and "ABC Carpet and Home" since 1992. Defendant has operated a business under the name "American Basic Craft Carpet and Home Restoration" since 1980 for carpets and carpet cleaning services. When he registered the domain ABCARPETHOME.NET, he was unaware of plaintiff's use of the mark. Plaintiffs commenced a lawsuit claiming trademark infringement and dilution and violation of the ACPA,. The court denied plaintiffs' motion for summary judgment, holding that issues of fact precluded it from resolving the parties' disputes at this time. The court also denied the dilution claim, finding that Plaintiff's failed to show that the mark is famous.

AIMSTER.COM

America Online filed a federal suit against Aimster, claiming that the music file swiapping service is intentionally piggybacking on its own trademark AIM (AOL Instant Messenger) to confuse AOL customers. The suit , filed in Virginia federal court, follows a UDRP decision from the National Arbitration Forum, that AIMSTER.COM. was registered in bad faith. Aimster claims that its name derives from two sources which have nothing to do with AOL's AIM service. When the startup was launched in September of 2000, it originally operated only through AIM's platform. After a court order to relinquish the AIMSTER.COM domain name to AOL, Aimster was renamed Madster

AJAX.ORG

In September 1998, Colgate-Palmolive sent a cease and desist letter to the co-founder of AJAX.ORG, claiming that the site diluted the corporation's famous brand. The developer of the site began using the name of an ancient Greek warrior in high school ten years earlier. Within weeks of Colgate's demand, another site posted a petition with 1,368 signatures protesting the multinational's threats to shut down the small non-commercial operation. The corporation backed down in October, explaining that the site's content did not lead to customer confusion over its source.

ALIBABA.CN

A Beijing Intermediate People's Court ruled that the China Internet Network Information Center did not have the right to reserve Chinese domain names for companies that are well-known and ordered the administrator of .CN to treat all domain applicants equally. The dispute arose after CNNIC refused the application of Beijing Zhengpu Science Development Company for the Chinese name "Alibaba" in January 2000 on the grounds that the domain was reserved for Hong Kong-based Alibaba.com Corp., a well-known online business-to-business marketplace

ALITALIASUCKS.COM

Plaintiff is Alitalia, Italy's flagship air carrier. Defendent is a William Porta, a disgruntled passenger who registered ALITALIASUCKS.COM on October 26, 2000 after his luggage was lost. The suit, filed in federal court in Manhattan, alleges trademark infringement. Alitalia sent Porta a check for $840 plus two travel tickets on Dcember 19 to settle his claim, but he said unless he received unspecified "satifactory compensation", he would register the website, on which he posted a letter about how the airline had treated him, with 350 Internet search engines within 9 days.

ALTAVISTA.COM

A long and complex battle for the ALTAVISTA.COM domain name was settled in July 1998 when Compaq Computer Corp, owner of the popular Alta Vista search engine, reportedly agreed to pay a record-breaking $3.35 million to Alta Vista Technology, a California software startup, for the Internet address. Alta Vista Technology registered the domain name in 1994, more than a year before the search engine was launched. In March 1997, a federal judge ordered Alta Vista Technology to change its logo and add a disclaimer on the site, which attracts nearly a million visitors a day looking for the search engine. Compaq inherited the search engine when it bought Digital Equipment Corp. in January 1998.

AMAZON.GR, AMAZOM.COM, AMAZON.NE.KR

In July 2001, the Seoul District Court ordered cancellation of the domain name registration AMAZON.NE.KR by a Korean man. The presiding man said the registration infringed the trademark rights of AMAZON.COM by misapropriating its name and logo.

Online bookseller AMAZON.COM filed a lawsuit in the U S District Court for the District of Delaware, alleging trademark infringement, trademark dilution, copyright infringement,and violations of the federal RICO statutes, against two Greek citizens. The pair registered AMAZON.GR and AMAZON.COM.GR to host "Greece's Biggest Bookstore" with a website layout similar to that of AMAZON.COM. Two weeks after the lawsuit was filed, the copycat site changed its domain name to GREEKBOOKSONLINE.COM , although the disputed domain names still remain in use.
An online entrepreneur at AMAZOM.COM capitalizes on people's spelling errors. The website feeds customers not to the similarly named "World's Largest On-line Bookstore" at AMAZON.COM but to two competing booksellers. Earlier, however, Amazon Bookstore filed a suit in U.S. District Court in Minneapolis against AMAZON.COM, claiming the Seattle-based bookstore intentionally misappropriated the name when it launched its online operation in 1995. The parties reached a settlement with the cooperative assigning its common law rights to the online bookseller.

AMERICASCUP.COM

New Zealand's America's Cup team was granted a temporary restraining order on December 9, 1999, preventing two New Zealand men who registered AMERICASCUP.COM from using the domain name. The lawsuit was filed by Quokka Sports, a company handling AMERICASCUP.ORG for the New Zealand America's Cup yachting team, on November 29, 1999, the same day the U.S. anti-cybersquatting legislation was signed into law. The parties settled hours before a judge was to rule on the complaint, and the domain names were transferred to the America's Cup Properties.

AOLBETA.COM

16-year-old Nickolas Grove registered the domain AOLBETA.COM on August 20 after seeing the domain was available. The following day, the DNS settings were changed and the domain name was transferred to AOL. Grove is seeking legal assistance in the matter.

AOLSEARCH.COM, AOL-CASINO.COM, AOL.ORG
The U.S. District Court in Virginia ordered the Public Interest Registry, the registry for .ORG, to transfer AOL.ORG to America Online. AOL previously obtained an ACPA in rem jurisdictional ruling to transfer the domain but the Asian-based registrar refused to comply. The Virginia court ruled that there is no bar on ordering the registry to transfer a domain where the registrar is uncooperative.

In June 1999, NSI revoked a woman's AOLSEARCH.COM domain name when she failed to respond to its 30-day warning that a trademark claim had been initiated by America Online. The site was called African-American OnLineSearch , a clearinghouse for links about African-American issues and cultures. The registrant claimed she never received the notification, but NSI said the contact information was incomplete and transferred the domain name to America Online.
In June 1998, America Online obtained a cease and desist order against a German on-line casino operating at AOL-CASINO.COM for violation of its trademark rights.

APPLEIMAC.COM

A Canadian teen who registered APPLEIMAC.COM to advertise his web hosting company received a cease and desist letter on February 18, 1999 from Apple Computer Co. The 17-year old student countered with a demand that Apple donate 30 iMacs to a local school. In mid-April 1999, he agreed to surrender the domain name to the computer company.

AVERY.NET, DENNISON.NET
Avery Dennison Corp. v. Sumpton, 999 F. Supp. 1337 (C.D. Cal. 3/19/98): A federal judge in Los Angeles ruled that FreeView Listings, of Canada must relinquish AVERY.NET and DENNISON.NET to the trademark owner, Avery Dennison. Jerry Sumpton, founder of FreeView, was ordered to convey the domain names to Avery Dennison for $300 apiece. Sumpton has registered thousands of domain names, which he leases for an annual fee to people seeking e-mail addresses that match their surnames. The judge said Sumpton's use lessened Avery's ability to identify its products on the Internet, even though the company registered and uses the domain names AVERY.COM and AVERYDENISON.COM. The judge dismissed claims against NSI, which was named as a co-defendant in the litigation. On August 23, 1999, the Ninth Circuit Court of Appeals reversed the injunction against Sumpton, holding that the widespread use "Avery" and "Dennison" makes it unlikely that either can be considered a famous mark eligible for the dilution cause of action.

BARBIESPLAYPEN.COM,
BARBIESPLACE.COM,
BARBIEBENSON.COM,
BARBIESBEACHWEAR.COM,
BARBIESCLOTHING.COM

Mattel , manufacturer of the popular Barbie dolls, has aggressively pursued its trademark rights in the domain name system.

In Mattel, Inc. v. Barbie-Club.com, the 2nd Circuit upheld the Southern District's dismissal of an action brought by Mattel against 57 Internet sites. The court said the "basic jurisdictional grant" in the ACPA "contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing in that judicial district and no other."

In Mattel, Inc. v. Adventure Apparel, (S.D.N.Y. September 19, 2001)--the court granted summary judgment to Mattel, holding that defendant violated the Anticybersquatting Consumer Protection Act by registering the BARBIESBEACHWEAR.COM and BARBIESCLOTHING.COM. Defendant argued that he intended to use the names for a parody site, a bona fide noncommercial or fair use under the ACPA. However, the judge noted that defendant parked the domain names at another domain name associated with the defendant's commercial Web site and rejected the parody argument. The court held that Mattel's "Barbie" trademark is famous and the domain names diluted the mark. The court further found that he domain names in question were confusingly similar to the distinctive "Barbie" mark. domain names at issue be cancelled, and awarded plaintiff $2000 in statutory damages for the two domain names registered. It did not award plaintiff attorneys' fees, nor did it direct the defendant to transfer the domain names to Mattel.

Mattel sued Internet Dimensions Inc. in Fort Lauderdale, Fla., for trademark infringement when it discovered a porn site called BARBIESPLAYPEN.COM. In mid-July 2000, a judge from the Southern District of New York ordered the site to stop using Mattel's "Barbie" trademark as part of its domain name and forced the registrant to cede the domain name to Mattel.

Elsewhere, (N.D. Cal 2/99): Mattel, filed a lawsuit in the U.S. District of Los Angeles against Internet Host, an ISP that registered BARBIESPLACE.COM and BADBARBIES.COM. The suit alleges that Oregon-based Internet Host intended to trade on dollmaker's goodwill and to extort payment to transfer the domain names to the trademark owner.

Mattel also complained to Barbie Doll Benson that her steamy website infringes on its well-known trademark. The exotic dancer received a letter demanding that she transfer her BARBIEBENSON.COM domain name to the toy manufacturer. Benson, who established the site in 1997 to break away from her stripping career, told Mattel to keep its hands off her domain.

BARCELONA.COM

In a UDRP decision that should cause concern for many Web-site- operating travel companies and city portals around the world, a WIPO arbitrator decided BARCELONA.COM should be taken away from the current registrants and awarded to the Spanish city of Barcelona. The domain was registered early in 1996 and used as a source of news and tourism information related to Barcelona. The arbitrator opined that people visiting the domain would expect an official site of the city and the resulting confusion constituted bad faith. The arbiter did not consider the operation of a Barcelona portal to constitute evidence of a legitimate right to the address and suggested that it is reasonable to assume that anyone using the address BARCELONA.COM "would normally expect to reach some official body or representative of the city oF Barcelona itself." The registrant filed a lawsuit in federal court to stay the transfer of the domain name. Barcelona City Council's motion to dismiss for lack of jurisdiction was rejected by the District Court at Alexandria, Virgina on March 16, 2001. A year later, chief judge for the Eastern District of Virginia, ruled in favor of the city of Barcelona with a decision based on trademark law in Spain. Judge Claude Hilton broke new ground with a ruling that says it was the intent of Congress to have ACPA apply to foreign trademarks. The 4th Circuit Court of Appeals reversed, remanded and vacated the lower court's decision, ruling that the lower court erred in applying Spanish law to an ACPA case.

BARGINBID.COM
Bargain Bid v. Ubid, E.D.N.Y. 99 CV 7598: In one of the first lawsuits to test the U.S Trademark Cyberpiracy Act, Bargain Bid was ganted a temporary injunction against Ubid and the registrant of BARGINBID.COM. The lawsuit alleged that the domain name was registered with the intent to divert consumers "during the height of the holiday shopping season" to the competitor's web site by using a common misspelling of "bargain".

BARRYDILLER.COM
Media mogul Barry Diller and his company, USA Networks, sued three men, who do business as Thoughts and Cybermultimedia, for hawking BARRYDILLER.COM for $10 million. The suit was filed in New York State Supreme Court on June 23, 1999. The defendants pooled about $40,000 to purchase domain names of famous people for resale. Diller was granted judgment by default when the defendants failed to appear in court or reply to the suit. The judge ordered an inquest on possible damages. The justice, ruling under the Anticybersquatting Consumer Protection Act, ordered the defendants to transfer the domain name to Diller and USA Networks but declined plaintiffs' request for $68,615 in attorney fees and damages.

BARTERCARD.ORG
On November 19, 1999, the Supreme Court of Queensland granting orders to proceed with the eviction of a company using the domain nameBARTERCARD.ORG. The application for interlocutory injunctions was brought by international trade exchange Bartercard to prevent rival AshtonHall from using the Bartercard name or trademark as a domjain name or email address. Lawyers claimed the BARTERCARD.ORG site substantially reproduced member information from Bartercard's National Directory and its own site.

BATTLEBOTS.ORG
Attorneys for the Comedy Central television show Battle Bots sent a cease and desist to the registrant of BATTLEBOTS.ORG, who operates a Unix-based Internet shell service, which includes Internet relay chat (IRC), email accounts, web pages and software programming. The registrant has used the term "bot" since 1994 and acquired the domain name in August 2000, several months before the trademark issued. Bowing to pressure, the registrant relinquished the domain name for $70 in September 2001.

BBC1.COM, BBC2.COM
The BBC won a High Court injunction blocking registrant Stephen Taylor of Britain from selling BBC1.COM and BBC2.COM. The BBC claimed trademark infringement, passing off and breach of contract in its litigation. The registrant was ordered to transfer the domain names to BBC and pay its legal costs.

BEANIEBABY.COM, BEANIE
COLLECTIBLES.COM, BARGAINBEANIES.COM
No. 99C 0692 (N.D. Ill - 2/3/99): Ty, Inc., manufacturer of the popular Beanie Babies stuffed toys, filed suit against a Missouri woman who registered the domain name BEANIEBABY.COM. Ty charged that the woman used the company's trademark as her website address to profit from Ty's name recognition. Her complaint for declaratory judgment and motion for dismissal were dismissed by the U.S. District Court of Missouri. Ty registered BEANIEBABIES.COM and reportedly was offered the BEANIEBABY.COM site for $1.25 million. The site posts a disclaimer that it is not affiliated with Ty. In April, Ty brought suit against an Arizona woman who registered BEANIECOLLECTIBLES.COM, which leads to information about an adult retirement community. In September 2002, the 7th Circuit Court of Appeals reversed a lower court decision and held that a reseller of "Beanie Babies" did not violate the Federal Trademark Dilution Act when she used plaintiff's "Beanies" trademark in the title and domain name of her web site, BARGAINBEANIES.COM, to market the product. The court relied on the fact that Ty's marketing strategy inlcuded creation of a secondary market and held that defendant's actions constituted neither a blurring nor tarnishment of plaintiff's marks.

BEWITCHED.COM

BEWITCHED.COM is the domain name Martin Wattenberg and his wife registered in May 1996 to market their Java applets. Two-and-a-half years later, they received a call from Columbia TriStar Interactive, demanding they relinquish the name which matched a popular TV show produced by TriStar in the 1960s. Columbia TriStar is a part of Sony, which owns two design marks for the show. The Wattenberg's sought help from the World Wide Web Artists Consortium (WWWAC) mailing list, with 3,000 subscribers. No lawsuits havbeen filed and Wattenberg is optimistic about reaching a settlement with the company.

BIRTHDAYBALLOONS.COM

NSI was taken to federal court by Plaintiff Bruce Watts, who sought to hold the registrar responsible for his inability to obtain a previously registered domain name, BIRTHDAYBALLOONS.COM. Watts' claim of antitrust violations were dismissed by the court in May 1999.

BLIZZARD.NET

Blizzard Entertainment, a division of software publlisher Davidson & Associates, Inc., sent a cease and desist letter to the registrant of BLIZZARD.NET, claiming use of the domain name is likely to deceive the public as it is "confusingly similar" to Davidson's trademark. There are a dozen registrations for the term "blizzard" in the USPTO trademark database--for electric fans, cryosurgical equipment, vaccuum cleaners, bicycles and ice cream confections--but Davidson's is for the words "Blizzard Entertainment".

CANADIAN.BIZ

Douglas Black, a University of Toronto graduate, registered CANADIAN.BIZ to use for an online business. Molson Breweries, owner of the "Canadian" trademark, was awarded tranfer of the domain name in a challenge under the registry's Start-Up Trademark Opposition Policy. Black challenged the decision, which was overturned by an Ontario court in July 2002. The judge noted that if the analysis used by the STOP panelist were correct, the only person who could register CANADIAN.BIZ without bad faith would be Molson, an approach that would grant the company defacto monopoly over the word Canadian in the domain name system.

CASARES.COM, CAESARSCASINO.COM, et. al.

Caesars World, Inc. v. Caesars-Palace.Com, et al. Civ. 99-550-A (E.D.Va.,March 3, 2000): Plaintiff asserted a claim under the Trademark Cyberpiracy Act and invoked its in rem provision. Defendants--CASARES.COM, CAESARES.COM, CEASARAS.COM, CEASARES.NET, CAESARES.NET, CEASARES.ORG, CEASAERES.ORG and others registered to Netgame, Inc.-- moved for dismissal asserting that the in rem provision is unconstitutional and violates rights to due process. The court holds that the provisions of the Anticybersquatting Consumer Protection Act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the Due Process clause of the United States Constitution. The court determined that, for the purpose of the Act, Congress mandated that a domain name is property located in the forum in which the domain name registrar is located. Accordingly, the court denied defendants' motion to dismiss the complaint. ": There is no prohibition on a legislative body making something property. Even if a domain name is no more than data, Congress can make data property and assign its place of registration as its situs," the court wrote.

  • Caesars World, Inc. v. Caesars-Palace.Com, et al., Order, Civ. 99-550-A , E.D.Va. (March 3, 2000)

CASRO.COM

Attorneys for the Council of American Survey Research Organizations (CASRO), a national trade association of survey research firms, sent a cease-and-desist letter to Consumer.Net for claiming a name that would lure traffic and cause confusion with its own website at CASRO.ORG. CASRO.COM now maps instead to the website of the consumer information organization, Consumer.net.

CDS.COM

Civil No. 97-793-HA (D.Or. 4/22/98): CD Solutions, Inc., a replicator of compact disks, registered the domain name CDS.COM in February of 1996. Fifteen months later, CDS Networks, one of twelve owners of U.S. trademarks for "CDS", lodged a challenge for the domain name. On May 19, 1998, CD Solutions received a final judgment from the U.S. District Court for the District of Oregon that its CDS.COM domain name does not infringe the trademark registered to CDS Networks for printing and desktop publishing services. The court concluded that the mark itself now denotes a term in common usage and is not entitled to protection as a strong mark.

  • CD Solutions, Inc. Press Release re: Final Judgment (May 19, 1998)
  • CD Solutions, Inc. v. CDS Networks, et.al., #97-CV-793, Pacer Record (U.S. District of Oregon, - May 22, 1998)
  • CD Solutions, Inc. v. John Cleven Tooker, Commercial Printing Co., CDS Networks, et.al., #97-CV-793-HA, Opinion and Order (U.S. District of Oregon, - April 22, 1998)

CHAMBORD.COM

Chatam International Inc. v. Bodum Inc., E.D. Pa., No. 00-1793 (8/7/01). - Chatam sells a raspberry liqueur and fruit preserves under the trademark "Chambord." Bodum sells non-electric coffee makers under the same mark. A Bodum affiliate registered CHAMBORD.COM, and Chatam filed suit against Bodum for violations of the ACPA, trademark infringement, and trademark dilution. The court granted summary judgment in favor of Bodum Inc., relying on a safe harbor provision for those registrants who the court determines "believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."

CHECKPOINT.COM

Checkpoint Systems, Inc., v. Check Point Software Technologies, Inc., 3d Circuit, No. 00-2373 (10/26/01) - The 3rd U.S. Court of Appeals affirmed a New Jersey U.S. District Court decision which held that the impact of a trademark "initial interest confusion" analysis must be weighed against such factors as the similarity of the companies' businesses and the sophistication of their customers. A property-protection company, Checkpoint Systems, filed suit against network firewall vendor Check Point Software, the registrant of CHECKPOINT.COM. "Initial interest confusion" is a concept wherein one company can divert the customers of another by imitating its trademarks, even if the confused consumers did not do business with the imitator. Nonetheless, the court found no evidence that Checkpoint Systems was known to those in the information technology world and did not order the domain name transferred to the plaintiff.

CHIA.BIZ, CHIA.INFO

Joseph Enterprises Inc. (JEI), which markets the Chia Pet planters, sued ued NeoPets, the popular virtual pet site, alleging cybersquatting for registering CHIA.BIZ and CHIA.INFO. The lawsuit was filed on June 3, 2002 in federal court in San Jose, Calif. JEI claims the virtual pet site is trying to trade unfairly off the Chia name. However, in March, NeoPets filed for trademark protection to use the Chia mark for plush toys, games and other items.

CHASE.CO.UK

Chase Manhattan Bank put the legal squeeze on Chase House and forced the small management consultancy business to sell its domain name, CHASE.CO.UK. Chase House was named after the two centuries old building in which the business is housed, but the bank claimed the company was trading off its familiar name and issued a claim in the High Court. Unable to afford a protracted legal fight, Chase House negotiated a settlement which included relinquishing the domain name, but staged a mock funeral and provided a virtual condolences book for supporters to sign. Chaser House will be resurrected as SOLUTIONSWAREHOUSE.COM.

CLAREMONT
MCKENNA.COM

The Assistant Vice President for Marketing and Public Relations at Claremont McKenna College in Southern California demanded that the students who established a website at CLAREMONTMCKENNA.COM relinquish the domain name to the admistration for a nominal fee. Although the college official praised the site, saying that it "showcases the entrepeneurial spirit of CMC," he claimed that the domain name infringes on the trademark rights of the college. The site included a disclaimer of affiliation with CMC with a link to the official website at MCKENNA.EDU, but the college president threatened the students with a lawsuit over rights to the name. In May, 1999, CMC issued a contract allowing the CMC students requiring the students to relinquish the domain name with a license to use for a renewable five-year term. Reportedly, a settlement was reachedin which CMC will purchase the rights to the domain name for $170,000. The college has agreed to establish a $120,000 account to fund fellowships to encourage enrepreneurial spirit and civil liberties. It will also pay $50,000 over ten years for an independent student-operated website at CMCSTUDENTS.COM. A complete history of this dispute has been moved to the new student website. Although the domain name dispute has been resolved, the principals involved are still arguing over the recollection and recitation of facts.

CLUE.COM

In 1996, Hasbro, Inc., an international toy manufacturer, challenged the registration of CLUE.COM by a two-person Colorado computer consultancy. Clue is the name of a classic children's board game. Clue Computing obtained a court order preventing suspension of the domain name. NSI filed federal interpleader against Clue Computing, which was dismissed. Next, Hasbro sued Clue in the District Court for Massachusetts, which ruled in September 1999 that Clue Computing is not infringing or diluting the rights of Hasbro in its domain name registration. The court said, "Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly." Thus, there was insufficient evidence to establish a likelihood of confusion between the board game and technology company's use of the trademark. On dilution, the judge wrote, "I find no calibrated fairness in awarding Hasbro equitable relief through an anti-dilution injunction granting it a nationwide monopoly in the use of this rather common word' against other companies like Clue Computing legitimately using that word in other contexts." Hasbro attorneys filed an appeal with the Court of Appeals for the First Circuit , which affirmed the decision of the District of Massachusetts on November 7, 2000.

CNNEWS.COM

The Cable News Network, known worldwide as CNN, sent a cease and desist letter to Shanghai-based Maya Online, registrant of CNNEWS.COM. The American company asserted that the domain registration and competitive news content on an associated website dilutes its rights in the CNN mark. CNN cited the Trademark Cyberpiracy Act, thoughtfully enclosing a Registrant Name Change Agreement with its demand for the name. The Asian ISP said CN represents China as its ISO-3166 country code and refused to honor CNN's demand. A senior judge in charge of intellectual property under the Beijing High People's Court said Maya appeared to have convincing reasons to defend its choice of domain name. CNN filed an in rem proceeding in Virginia federal court--(2001 U.S. Dist. Lexis 14693). The domain was registered with Eastern Communications, but the court held that the ACPA in rem provisions were met by virtue of Verisign's registry function, located in that state.The court ordered the domain name transferred to CNN but acknowledged that it could not create an order binding on a Chinese registrar. At the request of CNN, ICANN wrote to Eastern Communications that it is obliged to comply with the court order under the terms of its accredition agreement.

CONTAINERLIFT.COM

A High Court in New Zealand granted an interim injunction which prevents a manufacturer, Maxwell Rotor, from using the CONTAINERLIFT.COM domain name. The litigation was filed by two British companies, Containerlift Services and Containerlift Sales, and a New Zealand manufacturer, Steelbro. The High Court found that although the Containerlift companies had no reputation in New Zealand, had former had established a "significant business" in England and was well-known.  The court also also accepted evidence that the word "containerlift" was not used generically, and said the use of the CONTAINERLIFT.COM domain "will probably cause damage to the business or goodwill" of the UK Containerlift companies.

CORINTHIANS.COM

Jay D. Sallen V. Corinthians Licenciamentos LTDA and Desportos Licenciamentos LTDA: On May 18, 2000, Corinthians Licenciamentos, owners of the soccer team, filed a UDRP omplaint with WIPO, alleging that Sallen's domain name was similar to its rademark and that it has rights in Brazil to the name, "Corinthiao," the Portuguese equivalent of "Corinthians." A WIPO panel concluded that Sallen used the domain name in bad faith and ordered it transferred to the owners of the soccer team, Sallen filed a bid to have his use of the domain name declared legal under the ACPA,but the Court summarily dismissed it, citing lack of jurisdiction. That decision was reversed on appeal in December 2001. A 3-judge panel for the US Court of Appeals for the First Circuit found that the ACPA "grants domain name registrants who have lost domain names under administrative panel decisions applying the UDRP an affirmative cause of action in federal court for a declaration of nonviolation of the ACPA and for the return of the wrongfully transferred domain names." It slammed WIPO's interpretation from the UDRP, describing its fundamental structure as the "lowest common denominator of internationally agreed and accepted principles concerning the abuse of trademarks". Translation: The ACPA definitively trumps the UDRP.