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

IKEA.COM.CN

Inter IKEA System B.V. v. Beijing CINet is the first cybersquatting case accepted and dec ided by a Chinese court involving a foreign trademark owner. Plaintiff has registered the "IKEA" mark in more than 90 countries, including China and alleged that CINET was engaged in unfair competition by warehousing domain names of familiar brands and marks. The court held that CINet's registration of IKEA.COM.CN would mislead consumers and deprive the trademark owner of use of its name on the Internet . The domain name registration was therefore cancelled by the court.
 

INTELLIGENCE
EVERYWHERE.COM

MicroStrategy Inc., a data-mining company publicly traded at MSTR, filed suit in the U.S.District Court for the Eastern District of Virginia, against mobile-phone maker Motorola for infringement of its trademarked slogan: "Intelligence Everywhere." On February 26, 2001, the federal court denied MicroStrategy's bid for a preliminary injunction that would have barred Motorola from using the phrase or the domain name INTELLIGENCEEVERYWHERE.COM, which it registered in early December of 2000. The lawsuit invokes the Anticybersquatting Consumer Protection Act and the case moves to trial.

INTERNIC.COM

The Australian Competition and Consumer Commission (ACCC) filed fraud charges against Internic Technology Pty Ltd for collecting up to$3 million from consumers worldwide who apparently mistook the Aussie company's INTERNIC.COM site for that of the registery operated by NSI at INTERNIC.NET. The ACCC seeks a court order to shut down the deceptively similar domain and to collect refunds for consumers.

J-PHONE.CO.JP

J-Phone East Japan Co., Ltd. prevailed in court to prevent food importer-exporter Taiko Tsusho from using a Web site with the J-PHONE.CO.JP domain name. The Tokyo District Court also ordered Taiko Tsusho to pay 2 million yen for damages caused by defamation and 1 million yen for legal expenses.

JAGUARCENTER.COM

Ford Motor Co filed suit against several in several registrants whose domain names contain, in part, its trademarrk words "volvo", "ford" and "jaguar". Among these is a lawsuit against a child who created a website about cats at JAGUARCENTER.COM. All the sites named in the litigation were once available for sale by Great Domains, an aftermarket reseller owned by VeriSign.

JERRYFALWELL.COM

On September 9, 2002, lawyers for the registrant of JERRYFALWELL.COM, a parody website, asked the federal district court in the Western District of Virginia to reject Rev. Jerry Falwell's claims of trademark infringement and libel and dismiss the case. Public Citizen, a nonprofit organization founded by Ralph Nader, argued in the brief that since the registrant, Gary Cohn, lives in Illinois, he should not be sued in Virginia. Earlier, a panel of three arbitrators rejected Rev. Falwell's UDRP claims to the JERRYFALWELL.COM and JERRYFALLWELL.COM domain names, saying the sites were "a legitimate noncommercial or fair use of the domain name." The ACLU of Virginia also is representing Cohn.

JEWSFORJESUS.ORG

Jews for Jesus v. Brodsky, 993 F. Supp. 282, (D.N.J.), aff'd, 159 F.3d 1351 (3d Cir. 1998): The missionary organization, Jews for Jesus, filed a federal lawsuit in New Jersey against Stephen Brodsky, who registered the domain name JEWSFORJESUS.ORG. The suit charged Brodsky with unauthorized use of the group's trademark and alleged that he is a "self proclaimed antagonist" of the organization. Plaintiffs' claims for trademark dilution and infringement as well as unfair competition and false designation of origin were upheld. By Summary Order (2d. Cir. Feb. 9, 1998), the court enjoined defendant's unauthorized operation of the website, which was highly critical of the Jews for Jesus organization.

JOECARTOON.COM

In June 2001, the Third Circuit Court of Apeals said that a Pennsylvania man who registered JOESCARTOON.COM and several variations--JOECARTON.COM and CARTOONJOE.COM---violated the Anticybersquatting Consumer Protection Act. In a 3-0 decision, the court upheld a district judge's ruling, saying John Zuccarini's intent was "to register a domain name in anticipation that consumers would make a mistake, thereby increasing he number of hits his site would receive, and, consequently, the number of advertising dollars he would gain. We conclude that Zuccarini's conduct here is a classic example of a specific practice the ACPA was designed to prohibit." The judges said that JOECARTOON.COM, a site created by Joseph Shields, is famous enough to be protected under the ACPA.

JOHNNIEWALKER.ME.UK

.After Guinness United Distillers complained that it had the rights to the trade mark, Johnnie Walker, .UK registry Nominet ruled against John F. Walker, who registered JOHNNIEWALKER.ME.UK Although special consideration was given to the .ME.UK suffix, Walker had associated his website with terms such as alcohol, scotch, whisky, iquor, drink, spirits and brewers. Walker allegedly stated on his website that he supports Alcoholics Anonymous, Sobriety and Temperance" and had an intoxicated man striding across the screen, wobbily. Nominet ruled that the registrant tagged his site to confuse visitors with the Guinness trademark.

KATIE.COM

Internet user Katie Jones registered KATIE.COM in 1996 to link to personal photos, her online chat room and her professional C.V. Penguin Books published a book, KATIE.COM, written by Katherine Tarbok, describing her sexual abuse by a pedophile she met in an Internet chat room. Jones bristles that Penguin appropriated her Internet address and the likelihood of association with her own chat line. Orion, British publisher of the book, promised to add a note telling readers there is no connection with the website.

KELONG.COM.CN

Guangdong Kelong (Rong Sheng) Group Ltd v. Guangdong Yong An Clothing Manufacturing Company alleged infringement in bad faith, in violation of theAnti-unfair Competition Law and the Trademark Law. The case was the first accepted by the Intellectual Property Trial Chamber of Beijing Haidian District Court in March 1998. Plaintiff is registered owner of the "kelong" mark, used in commerce since 1992. Defendant registered KELONG.COM.CN in September 1997and attempted to sell it to the trademark owner for approx. US$100,000. Defendant failed to appear at a hearing on March 10, 1999 and voluntarily cancelled the domain registration with CNNIC.

KEVINSPACEY.COM

Oscar-winning actor Kevin Spacey lost a lawsuit to recover the domain KEVINSPACEY.COM from Jeffrey Burgar. A California judge told Spacey that he must sue Burgar in Canada since the court cannot assert jurisdiction over the dispute. The registrant lives in Canada and the court found that he did nothing to direct his activities to the state of California. Burgar has been the target of lawsuits by other celebrities -- Celine Dion, Bruce Springsteen, Jodie Foster, and Mariah Carey -- whose domain names he registered and point to his celebrity portal, CELEBRITY1000.COM. The action was brought under California's new celebrity personal name "right of publicity" statute (and other federal and state laws), In the ACPA, "fan appreciation" sites that contain fair use reference to the celebrity's name are not prohibited so long as there is no specific intent to profit by reselling a "personal name" domain to a celebrity for a profit, In August 2002, the actor won UDRP action in which the three-member panel ordered the domain transferred to him. One panelist wrote that "the persistent behavior of this Respondent in the registration of celebrity names militates against the 'benefit of the doubt'" which the Panelist previously afforded him.

LAPDGEAR.COM

The City of Los Angeles sent a four-page cease and desist letter to the Los Angeles Product Distributions, which sells apparel emblazoned with the Los Angeles Police Department (LAPD) emblem through a website at LAPDGEAR.COM. The Los Angeles Police Department Protective league website operates at LAPD.COM.

LAWSCOT.CO.UK

The Law Society of Scotland claims that the registrant of LAWSCOT.CO.UK is "passing off" as the trademark owner and wrongly receiving private and confidential emails. The registrant, Tommy Butler and the UK domain arbitrator Nominet were both served with a 10-page court order, suspending the domain until the court has reached a decision. Butler claims that the word is generic and that he registered the domain before the Law Society obtained a trademark or was approached to sell the name. He claims neither LAWSCOT.COM/NET/ORG have been approached by the Law Society.

LINUX.COM

Not a dispute but a bidding war for rights to the LINUX.COM domain name. Offers were submitted by Microsoft, Red Hat, Compaq, and Hewlett-Packard. The new owner, VA Research, paid substantially less than the top bid of $5.5 million.

LIVE.COM

A year after Live Networks, Inc. registered LIVE.COM (December 1994), the domain name was challenged by Live Entertainment, a corporation with a registered trademark for a stylized logo that contains the word "live". Live Entertainment asserted no trademark infringement, but Network Solutions, Inc. placed the domain name on hold in early 1996 according to a dispute policy introduced after the domain name was registered. No litigation was filed. The dispute was resolved in July 1998 when Live Entertainment changed its name to Artisan Entertainment and was persuaded to drop the dispute.

LUCENTSUCKS.COM

Lucent Technologies v. Lucent.com, U.S. VA, Alexandria, Civ 99-1916-A: Lucent Technologies, the telephone equipment giant, filed an in rem lawsuit to stop the use of its trademark name in the domain of an adult-oriented Web site. Filed in federal court in Virginia, Lucent claims people will believe LUCENTSUCKS.COM is affiliated with the company. On May 3, 2000, the court granted defendant's motion to dismiss the case because Lucent Technologies failed to accord the defendant sufficient time for due process between initial notificaton and filing of the in rem action. Although no specific holding was reached on the issue of whether LUCENTSUCKS.COM is a form of protest protected under the free speech provisions of the First Amendment and a defense to infringement as a fair use, the discussion cited the position that "cybergriping" is a legitimate form of critical commentary . The court also reaffirmed that domain names are property: "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."

MARKSANDSPENCER.COM,
BT.ORG, VIRGIN.ORG,
SAINSBURYS.COM

Marks and Spencer PLC. v. One in a Million, High Court of Justice, Chancery Division CH 1997 M.5403 (Nov. 28, 1997).; Court of Appeal - 7/23/98): Five companies in the United Kingdom -- BT, Marks & Spencer, Ladbroke, J. Sainsbury, and Virgin -- sued entrepreneurs Richard Conway and Julian Nicholson, who registered the famous British company names as domains for resale. In November, 1997, the U.K. High Court granted injunctions against the One in a Million for the threat of "passing off" and trademark infringement and ordered the two Brits to surrender the domain names and pay 65,000 pounds to the trademark owners. While the pair denied any intent to deceive, the appellate judges affirmed that the threat of "passing off" had been demonstrated and that the domain name registrations were "instruments of fraud". The appeal was dismissed on July 23, 1998 and that judgment cannot be appealed to the House of Lords.

METSONLINE.NET,
BRONX-BOMBERS.COM

Major League Baseball Properties sent a cease and desist letter to the administrator of METSONLINE.NET, a 20-year old college student who began the website in 1996. The email ordered Bryan Hoch to transfer the domain name to the owner of the baseball team and threatened lfurther legal action to recover "appropriate compensation" for use of the Mets' marks. Hoch's site averages about 10,000 visitors a day and briefly sold t-shirts and sweatshirts featuring the domain name but not the Mets' trademark. Hoch claims the site has never been about making a profit. Hoch elected to cease publishing baseball-related content on the domain name effective July 30th, 2002. On the heels of success, the MLBP sent a cease and desist to the registrant of BRONX-BOMBERS.COM, whose site will resurface under another domain name.

MICROSOFTOFFICE.COM,
MICROSOFTWINDOWS.COM,
MICROSOF.COM,
MISROSOFT.COM
and MNSBC.COM

 

Microsoft Corporation v. Microsof.com aka Tarek Ahmed
Software titan Microsoft filed a UDRP complaint in June 2000 against Tarek Ahmed, of Brooklyn, New York, who registered MICROSOF.COM. A WIPO panel ruled that the domain name was confusingly similar to the trademark already owned by Microsoft, that Ahmed had no legitimate interest in the domain name and he had registered it in bad faith. The panel ordered the domain name to be transferred to Microsoft Corp.

(C.D. Cal - 4/13/99): Microsoft and MSNBC sued three Los Angeles County residents who registered domain names similar to their own--MISROSOFT.COM and MNSBC.COM--to lead those who misspelled the names to their own pornographic sites.
(No. 98-04245 (S. D. Tex - 12/21/98): Microsoft filed suit against two Texans who registered MICROSOFTWINDOWS.COM and MICROSOFTOFFICE.COM, MICROSOFTKIDS.COM, MICROSOFTPRESS.COM, WINDOWSFILES, and 5 other domain names, alleging infringement of the company's trademarks and misleading the public. The lawsuit sought preliminary and permanent injuctions, undisclosed damages, rights to the domain names, and any profits derived from them. Defendants TEXASRGV.COM and TRADEMARKDOMAINS.COM allegedly have registered a long list of commercial names with the intent to sell them to the trademark owners. The Texas judge ruled for the plaintiff and ordered the domain names to be relinquished to Microsoft. No punitive damages were awarded.

MILLERTIME.COM

Repeated efforts by Miller Brewing Co. to force the Miller family to give up MILLERTIME.COM prompted Mark Miller and his family to file a complaint against the Milwaukee brewer in U.S. District Court. "It's Miller Time" is a trademarked slogan of the brewing company. The Millers registered the disputed domain name in 1995. On April 15, 2002, arbitrator for the National Arbitration Forum ordered the name transferred to the trademark owner, prompting the Miller family to file a complaint in federal court. Miller claims he is making legitimate, noncommercial or fair use of the domain name, without intent to..misleadingly divert consumers or to tarnish the trademark at issue.

MOVIEBUFF.COM

Brookfield Communications Inc. v. West Coast Entertainment Corp., 1999 US App. LEXIS 7779, No. CV-98-09074-CRM (9th Cir. Apr. 22, 1999): California-based Brookfield Communications, operator of MOVIEBUFFONLINE.COM, filed suit against West Coast Entertainment Corp. to prevent its planned launch of a website at MOVIEBUFF.COM. The complaint alleged trademark dilution and unfair competition of a common law mark in use since 1993. Because Brookfield did not have a federal trademark for the disputed domain name at the time it was registered, MOVIEBUFF.COM was not placed on hold by NSI. The District Court denied plaintiff's motion for a preliminary injunction until the case was resolved. The Ninth Circuit Court of Appeals reversed on April 22, 1999 holding that domain registration does not in itself constitute 'use' for purposes of acquiring trademark priority, and that the senior user of a mark used to identify goods or services in commerce is the legitimate owner of the mark. The defendant was enjoined from using plaintiff's "moviebuff" trademark in either a domain name or meta tags on defendant's web site.

MP3.CO.JP

On July 15, 2002, the Tokyo District Court upheld the right of System KJ, a Tokyo developer ofequipment for personal computers, to use its registration of MP3.CO.JP, despite a challenge by a U.S. online music distributor. Presiding judge Toshiaki Iimura said System KJ did not register the name in bad faith to resell it at an extremely high price

MSDWONLINE.COM

Morgan Stanley Dean Witter & Company filed suit in United States District Court in Manhattan in October 1999 against Sau Wong, who registered MSDWONLINE.COM. Morgan Stanley claims the site infringes on the firm's trademark. Wong's 17-year-old son, Ivan, said that he created the site to share his passion for mountain-bike racing and named if after Mud Sweat & Gears, the California shop that sold him his bikes. Sau Wong has also registered dozens of other domains that are derived from the names of investment banks. The registrant has offered to sell the domain name for $75,000.

MTV.COM.SG

Viacom International,Inc, v. Elitist Technologies - Viacom, the entertainment company which runs the Music Television channel known as MTV, lost a complaint against the Taiwanese firm, Elitist Technologies, claiming that it registered MTV.COM.SG in bad faith and profited from it. The case was the first heard by the Singapore Domain Name Dispute Resolution Service, set up early in 2002 by the Singapore Mediation Centre and Singapore International Arbitration Centre. The sole panelist found that 'MTV' used in thedomain name is descriptive and generic and that Viacom did not provie it had 'clear or unequivocal' exclusive rights over the word.

MYCOCA-COLA.COM,
MYMCDONALDS.COM,
MYPEPSI.ORG,
WASHINGTONPOSTSAYS.COM.
THEWASHINGTONPOSTSUCKS.COM,
THEWASHINGTONPOSTJESUS.COM,
THEWASHINGTONPOSTCHRISTIAN.COM
and many more

The Washington Post, Coca-Cola, McDonald's and PepsiCo joined in the lawsuit against William S. Purdy Sr., a former railroad engineer and longtime abortion opponent, to prevent him from using their trademarks in domain names. The suit was filed on July 18, 2002 in the U.S. District Court in Minneapolis. Purdy registered MYCOCA-COLA.COM, MYMCDONALDS.COM, MYPEPSI,.ORG and WASHINGTONPOSTSAYS.COM, which all redirected visitors to anti-abortion websites. Purdy arguesd that this is a free speech issue but plaintiffs contend that he has hijacked and abused their trademarks. A federal judge issued a TRO and ordered Purdy to immediately shut down his websites and transfer ownership of the domain names to respective trademark owners. The court order was upheld upon appeal. In January 2003, U.S. District Court Judge Ann Montgomery found Purdy in contempt and gave him until February 4, 2003 to comply with the court order or be arrested. Purdy said he would rather go to jail than surrender the domain names.

NASDAQEUROPE.COM, NASDAQEUROPE.NET

On April 25, 2000, NASDAQ filed a lawsuit with the U.S. District Court for the Eastern District of Virginia invoking the Anticybersquatting Consumer Protection Act against NASDAQEUROPE.COM and NASDAQEUROPE.NET registered by Deltacross Limited in the UK. NASDAQ also filed a UDRP proceeding asserting the names were being used in bad faith. NASDAQ plans to launch NASDAQ-Europe at NASDAQ-EUROMARKET.COM this year.

NEWYORKYANKEES.COM

Brian McKiernan was slapped with a 23-page lawsuit filed in Federal Court on Christmas Eve by the New York Yankees and Major League Baseball Properties under the new Anti-Cyberpiracy Act. The official Yankees site is at YANKEES.COM. McKiernan registered NEWYORKYANKEES.COM in 1997 with the intention of running a non-commercial fan site. He said the Yankees offered him $450 for the name several months before taking legal action.

NFLTODAY.COM,
NFLTODAY.ORG,
NFLTODAY.NET

On December 6, 1999, the National Football League filed suit in U.S. District Court in New York City, accusing Ken Miller of Clearlake Park, Calif., and his webites--NFLTODAY.COM, NFLTODAY.ORG and NFLTODAY.NET-- of violating a number of trademark and anti-cybersquatting statutes. The lawsuit cited the U.S. anticybersquatting legislation signed into law a week earlier. Miller says he has a disclaimer at the bottom of the web page and that he thought of the domain names in a generic sense. The sites offer picks, point-spread information and statistics.

NINA.COM

Actress Nina Hartley, who registered NINA.COM in 1995 to establish an adult entertainment website, filed suit on January 28, 1999, against Nina Footwear, a New York shoe company, to prevent NSI from suspending her use of the domain name. The manufacturer trademarked the "Nina" name in 1969 for shoes and 1987 for handbags, and filed a challenge with NSI against the erotic star's domain name registration.

NISSAN.COM

Nissan Motor Co., Ltd., Nissan North America v. Nissan Computer Corp., C.D. CA,, CV 99-12980 (March 23, 2000): Japanese automaker Nissan Motors Co., Ltd. and Nissan North America, Inc. filed suit against Nissan Computer Corp., a North Carolina-based corporation since 1991 with a registered trademark for its name. Uzi Nissan, an Israeli-American born in Jerusalem, registered NISSAN.COM in 1994 to expand his computer business and NISSAN.NET two years later to expand his ISP business. In August 1999, he posted a logo similar to that of Nissan Motor Corp, and began promoting automobile-related products and services. The automaker filed suit for trademark dilution on December 10, 1999. The court granted a preliminary injunction and held that Mr. Nissan is trading on the automaker's goodwill and diverting potential Nissan car customers to other websites. He was ordered to post a prominent disclaimer of any connection to Nissan Motor Corp and refrain from displaying any auto-related information. Nissan Motor Corp was ordered to post a $100K bond in case Uzi Nissan is found to be wrongfully restrained. "Nissan" means month of April in Arabic and the seventh month in the Hebrew calendar. Registrant has posted overview of the case, timeline and appeal for assistance.

NORTHERNLIGHTS.COM

Northern Light Technology, LLC v. Northern Lights Club, Civ 99-11664-DPW, U.S.MA (August 6, 1999): Northern Light Technology (NLT) filed suit for trademark infringement in the U.S. District Court of Massachusetts against Northern Lights Club of Alberta, Canada, registrant of NORTHERNLIGHTS.COM. The suit sought transfer of the domain name plus damages, punitive damages, and attorneys costs. The plaintiff's trademark for delivery of search engine services was registered in February 1999. The Canadian defendants offer vanity web-based e-mail services called Flairmail. They registered the domain name in October 1996 and argued that they are a victim of reverse piracy and should not be subject to the burden of personal jurisdiction in Boston. NLT offers an Internet search engine at both NORTHERNLIGHT.COM and NLSEARCH.COM. U.S. District Judge Douglas P. Woodlock ruled that NORTHERNLIGHTS,COM infringed on the trademark of plaintiff and ordered the registrant to shut down the site and to provide a link to the home page of the search engine. The 1st Circuit Court of Appeal upheld the lower court decision granting a TRO over the domain NORTHERNLIGHTS.COM. The registrant argued that the federal court in Massachusetts should not have asserted jurisdiction but the argument was rejected by the appellate court. The U.S. Supreme Court declined to hear the case.

NYSSCPA.COM

The New York Society of Certified Public Accountants v. Eric Louis Associates, Inc., 1999 U.S. Dist. Lexis 18543 (S.D. N.Y. Dec. 2, 1999): New York State Society of Certified Public Accountants, owns the common law mark "nysscpa," and operates a web site at NYSSCPA.ORG. Eric Louis Associates registered NYSSCPA.COM in January 1999 to promote its head hunting services. Upon receiving a cease and desist from the NY Society of Accountants, Louis Associates offered to sell the domain name for $20,000 or other consideratiion. Plaintiff obtained a TRO. The court found that the defendent acted in bad faith and determined that plaintiff's mark was famous and that defendant's use of NYSSCPA in both its domain name and meta tags blurred the mark. It also awarded $46,000 in attorney's fees.

OGGI.CO.NZ

Oggi Advertising filed suit against a domain registrant pf OGGI.CO.NZ, joining the Internet Society of New Zealand (ISOCNZ) and alleging that New Zealand's domain registry conspired to "passing off" (using the advertiser's intellectual property in a deceptive manner). Oggi Advertising does not have a registered trademark for the Oggi name. This was the first litigation filed against ISOCNZ or its domain name company, Domainz. The Auckland (NZ) High Court granted an interim injunction and ordered the domain registrant to relinquish the name but did not rule on the liability of the registrar. Domainz sued the litigant for reimbursement of costs and was awarded a near maximum of $10,000 in November, 1998.

OLYMPIC, OLYMPIAD x 1800 names

The International Olympic Committee, the US Olympic Committee, and the organisers of the Salt Lake City Winter Games in 2002 filed a joint lawsuit against 1804 domain registrants they claim are cybersquatters. Filed in the US Federal Court, the litigation targets domains that use the words Olympic, Olympiad or their non-English equivalents. It includes 168 names that falsely claimed to be associated with the games, 69 ticket-selling sites, 43 gambling sites, and 15 porn domains. The committes argue that in addition to creating false associations with the Olympic name and damaging its value, the associated web sites could encroach on their major sources of revenue--Olympics' sales of broadcasting rights to Olympic games coverage, worldwide sponsorships, and licenses. See Chapter 7 of the Domain Name Handbook for a discussion of the international Nairobi Teaty protecting the use of "Olympic" and other words.

OPTIMATECH.COM

Optima Technology filed suit against NSI, alleging that the registrar gave away its OPTIMATECH.COM domain name to a fvormer employee who diverted business to himself. NSI returned the domain name back to Optima in 2001. The lawsuit seeks $3M in damages.

OREOS.COM

The developer of an adult site at OREOS.COM received a cease and desist letter from Nabisco Corp., makers of the famous sandwich cookies of the same name. A threatened lawsuit was avoided when the registrant surrendered the domain name.

PANAVISION.COM (update)

141 F.3d 1316 (9th Cir. 4/17/98): On April 30, 1998, the 9th U.S. Circuit Court of Appeals upheld a summary judgment motion [945 F. Supp. 1296 (C.D. Cal 11/1/96)] against Dennis Toeppen, who had registered the domain name PANAVISION.COM and offered to release it to the trademark owner for $13,000. The court found that Toeppen's actions violated California and federal trademark dilution laws and that his use on the website diluted the distinctive quality of the trademark.

PAPALVISIT.COM

Archdiocese of St. Louis v. Internet Entertainment Group, Inc., Civ. No. 4:99CV27SNL,1999 WL 66022 (E.D. Mo. Mar. 12, 1999):The Internet Entertainment Group, a supplier of sexually explicit material online was sued by the Archdiocese of St. Louis and Papal Visit 1999 St. Louis for registration of PAPALVISIT.COM and PAPALVISIT1999.COM. The sites provided limited information on the St. Louis papal visit, off-color jokes about the Pope and the Roman Catholic Church, and advertising for IEG's adult entertainment websites. Although IEG raised a First Amendment defense, the court ruled that such protection is not available when the marks are used to identify the websites as belonging to or being sponsored by the plaintiffs. The court issued injunctive relief to the plaintiffs, finding that the marks are famous and distinctiive and that plaintiffs were likely to prevail on their Federal trademark claim of dilution by tarnishment.

  • Archdiocese of St. Louis and Papal Visit 1999 St. Louis vs. Internet Entertainment Group, 99CV27SNL, U.S. District Court for the Eastern District of Missouri (Feb. 12, 1999) 1999 U.S. Dist. LEXIS 1508
  • Case Summary, by Martin H. Samson (March 1999)

PDA.COM.CN

ShiJia Zhuang Fulande Development Co, the owner of the "pda" sued Beijing Nitian Jiaye Technology and Trade Ltd. for abusive registration of the domain name PDA.COM.CN. This case was accepted by the Intellectual Property Trial Chamber of Beijing No.1 Intermediate People's Court on 14 April 1999 and the decision was delivered on 12 July 1999 in favour of the defendant. The court held: a) even though the plaintiff had registered the PDA mark for two years, iit had not proved that the mark had actually been put to use or that the mark is well-known by the relevant public: b) defendant proved that "pda" refers to "personal digital assistant," which is a generic term; c) the registration of a domain name incorporating another's mark is not an infringement of trademark according to existing Chinese Trademark Law. The presiding judge later explainedonly well-known marks could justify the exclusive protection in domain areas and the applicable law should be the principle of honesty and credibility as stipulated by Chinese Anti-unfair Competition Law.

PETA.ORG

A federal judge ordered Michael Doughney to relinquish PETA.ORG, the domain name he registered in 1995 to host a parody site for the People for Eating Tasty Animals. The acronym is also used by an animal rights group, People for the Ethical Treatment of Animals. Doughney appealed the decision to the U.S. Fourth Circuit, Court of Appeals in Richmond, Virginia, saying parody is protected speech under the First Amendment. The Appellate Court affirmed the lower court's decision that theregistration constituted trademark infringement, unfair competition, and was a breach of the anticybersquatting act. in its August opinion and corrected order, published in September 2001, ending the nation's longest running domain name dispute. The case led Doughney and others to establish the Domain Name Rights Coalition in 1996.

PETERBILTNEWTRUCKS.COM,
PETERBILTUSEDTRUCKS.COM,
KENWORTHNEWTRUCKS.COM,
KENWORTHTRUCKDEALERS.COM

PACCAR Inc. v. .TeleScan Technologies, L.L.C. E.D.MI, (No. 99-76199 -PACCAR manufactures heavy trucks and truck parts under several trademarks, including "Peterbilt" and "Kenworth". TeleScan manages several web sites providing truck locator services.and links to TeleScan's manufacturer-specific web sites, including PETERBILTNEWTRUCKS.COM, PETERBILTUSEDTRUCKS.COM, KENWORTHNEWTRUCKS.COM, KENWORTHTRUCKDEALERS.COM and others. In 1999, PACCAR brought an action under the Lanham Act and state law against TeleScan in the United States District Court for the Western District of Washington. The case was dismissed for lack of personal jurisdiction over TeleScan. TeleScan then requested declaratory relief in the District Court for the Eastern District of Michigan, that its activities do not infringe upon PACCAR's trademarks. PACCAR counterclaimed for trademark infringement, unfair competition, false designation of origin, trademark dilution, common law unfair competition and dilution, and violations of the Michigan Consumer Protection Act. In 2000, the District Court granted PACCAR's motion for a preliminary injunction and enjoinedTeleScan from using the trademarks "Peterbilt" or "Kenworth" in any domain name, metatag or on a web site that could confuse customers that the web page is associated with PACCAR, On February 5th, the 6th Circuit Court of Appeals affirmed the lower court decision that the domain names that included trademarked truck names were likely to create initial interest confusion despite a disclaimer by the website owner disavowing affiliation The appellate court vacated the lower court's injunction with respect to trademarks within the site's metatags, noting that the lower court had failed to conduct a separate analysis on whether the metatags would also cause consumer confusion.

  • PACCAR Inc. v. .TeleScan Technologies, L.L.C., 2003 FED App. 0040P (6th Cir.), Opinion (February 5, 2003)

 

POKEMON-TRADER.COM,
GROWLITHE.COM etc.
Nintendo of America, Inc. v. Stefani Us, et. al - The U.S. District Court in Seattle awarded to Nintendo of America Inc. $560,000 in damages and recovery of 48 domain names in a lawsuit brought against 22 defendants under the Anticybersquatting Consumer Protection Act in October 2000. The court awarded statutory damages ranging from $2,000 to $30,000 per name in possibly the first mass lawsuit filed under the ACPA.

POKEY.ORG
A 12-year old boy name Christopher "Pokey" Van Allen, who developed a personal website at POKEY.ORG, was challenged by Prema Toy Company. Prema is owner of trademark rights to the character Pokey, equine sidekick of the better-known toy, Gumby. The trademark owner offered to let Van Allen use the name under royalty-free license. The dispute over the innocent PokeyWeb site generated more than 4,500 e-mail messages and comments sent to the child. TONIC, the registry for Tonga, and the Australian Root Server Confederation each offered Van Allen his own "pokey" domains. Eventually, the court of public opinion and reason prevailed, and Prema Toys withdrew its claims for the domain name (April 21, 1998).

PORSCHE*.* x 129 names

 

Civ. No. 99-0006-A (E.D. Va 1/6/99) and 1999 WL 378360 (E.D.Va 6/8/99): Automaker Porsche Cars North America alleged in rem (rather than in personam) jurisdiction in a trademark infringement suit filed on January 13, 1999, against 129 domain names related to the famous brand that "capitalize on the goodwill and reputation of Porsche in establishing their presence on the Internet." The suit was filed in US District Court in the Eastern District of Virginia, home of Network Solutions. Porsche announced two months later that 48 of the defendants agreed to cancel their domain name registrations. The court ruled that the company Federal Dilution Act under which Porsche had brought the suit did not permit in rem actions against unnamed individual defendants and dismissed the lawsuit on June 8, 1999. Porsche A.G. filed an appeal and the4th Circuit Court of Appeals upheld the constitutionality of the in rem jurisdiction provisions found in the ACPA. The court concluded that by registering the domains in the State of Virginia, the registrant exposes the domains to the jurisdiction of the Virginia courts at least for the purpose of determining who properly owns them.

PRESIDENTS
CHOICE.COM/.NET/.ORG

Supermarket giant Loblaws filed suit against Guita Azimi in f U.S. District Court, Northern District of California. after losing a trio of UDRP decisions. TheCanadian retailer alleged that the three domain names are "confusingly similar" to its President's Choice brand. It seeks $75,000 and transfer of the domain names. The arbiter criticized Loblaw for its "failure to conduct a cursory investigation" of whether the registrant had legitimate interests in the domain names which are used for an online embroidery and web design service.

RACES.COM

John McLanahan wanted to build a Web business around the RACES.COM domain name to provide race information and online registration forms for athletes in all sports. In July, 1999, he paid thousands of dollars to acquire the domain name. NSI bungled the transfer and inadvertently put it back into the available pool. A cyberspeculator scooped up the name and offered it back to McLanahan. Since the registration was completed through a different registrar, NSI says it is unable to fix its gaffe. NSI suggested the MBA student find an alternative domain name for his business.

RACINEKRINGLE.COM

Racine Danish Kringles Corp., or RDK, sued a local Internet provider that leases the domain name RACINEKRINGLE.COM to a rival kringle maker. RDK alleges that RACINEONLINE.COM intended to profit from Internet domain names that infringe on RDK's kringle trademarks

RAPCITY.COM

Early in 1998, twelve-year-old Aaron Doades, registered RAPCITY.COM for a website about his favorite rap stars, featuring photos, links to record companies, and lyrics. In May of the following year, Black Entertainment Television, Inc., told the youth that he was violating a trademark of the multi-billion dollar entertainment company and used NSI's dispute policy to shut the site down. Soon after, the boy and his father filed a $10M lawsuit against BET and NSI in U .S. District Court for the Southern District of New York. In the meantime, Doades has begun building a new site named World Wide Rap at WWRAP.COM.

REACTION.COM

The U.S. District Court for the Southern District of New York granted defendant's motion to dismiss for lack of personal jurisdiction. The defendant, William Cary Nash, had offered to sell the domain name REACTION.COM to Kenneth Cole Reaction, the owner of the "Reaction" trademark. The Court held that Nash, a California resident, had not transacted business within New York as required for jurisdiction under that state's long arm statute. The Court distinguished this case from Panavision v. Toeppen because the facts alleged did not support a finding that defendant Nash was a cybersquatter.

RINGLINGBROTHERS.COM

Ringling Brothers-Barnum & Bailey, Inc., has filed a "deceptive trademark" lawsuit against People for the Ethical Treatment of Animals (PETA) for registering and using the domain name RINGLINGBROTHERS.COM to protest the circus' use of animals. (April 24, 1998). The suit was settled in May 1998. PETA surrendered the domain name to Ringling Bros. and moved its protest to CIRCUSES.COM. In 1996, PETA filed its own challenge against a parody website at PETA.ORG, established by People Eating Tasty Animals. That site remains on hold.

.
DOMAIN
DISPUTES

INDEX

A - H

S - Z

UDRP

OTHER

 

Domain Handbook Cover

 

HOW MANY DOMAIN NAMES DO PEOPLE REGISTER?


Based on April 2000 data

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Website design and host

 

previous
Next

Contact | Order | Site | News | Disputes | Policy | ICANN | Lists | Archives
Contents | Reviews | Viewpoint | Acknowledgment | Glossary | Special Features | Booklist

 The Domain Name Handbook: High Stakes and Strategies in Cyberspace
Copyright© 1998-2003 Ellen Rony and Peter Rony. All Rights Reserved.
http://www.domainhandbook.com/dd2.html