Trademark of Domain Names
Domain names are assigned under the authority of the Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions. ICANN has approved a number of registrars. See http://www.icann.org/registrars/accredited-list.html.
- 1 Disputes Over Competing Claims to Domain Names
- 2 Domain Names and Cybersquatters
- 2.1 Pre-Anti-Cybersquatting Consumer Protection Act case law
- 2.2 The Anti-Cybersquatting Consumer Protection Act
- 2.2.1 Bad Faith Requirement of ACPA
- 2.2.2 Auction/Sale of Domain Names
- 2.2.3 Insertion of Generic Terms into Domain Names and Misspelling of Domain Names
- 2.2.4 ACPA Violation Unlikely Where Products Are in Different Markets
- 2.2.5 The Mere Act of Registering a Domain Name May Infringe a Famous Mark
- 2.2.6 ACPA Does Not Apply To Meta-Tags
- 2.2.7 ACPA Is Not Retroactively Applicable To Surnames
- 3 Consumer Criticism
- 4 Other Cases
Disputes Over Competing Claims to Domain Names
As an alternative to a lawsuit over use of a domain name, trademark holders can file a complaint with an ICANN-approved dispute resolution organization. See http://www.icann.org/udrp/udrp-policy-24oct99.htm. Generally, complainants must show that they have valid rights in the mark, the domain name registrant has no rights in the mark, and the domain was registered in bad faith. The World Intellectual Property Organization and the National Arbitration Forum are approved by ICANN to conduct domain name dispute resolution. The process is similar to a lawsuit but is designed to be speedier and less costly. Generally, no hearing is required and the arbitrator resolves the dispute on the papers submitted. ICANN has promulgated general rules of procedure which are augmented by a supplemental set of rules for each arbitration organization. See http://www.icann.org/dndr/udrp/uniform-rules.htm.
Domain Names and Cybersquatters
Substantial litigation has been filed against parties either “reserving” or using the trademark or trade names of another as a domain name for profit.
Pre-Anti-Cybersquatting Consumer Protection Act case law
- Toys ‘R’ Us, Inc. v. Abir, 45 U.S.P.Q.2d 1944, 1997 U.S. Dist. LEXIS 22431 (S.D.N.Y. 1997). Owners of the famous trademark TOYS ‘R’ US and domain name “toysrus.com” won a preliminary injunction against an alleged cybersquatter’s registration and threatened use of the domain name “toysareus.com” in what the court termed a “deliberate bad faith effort at cyberpiracy.” Id. at *11.
- Panavision Int’l LP v. Dennis Toeppen, 141 F.3d 1316 (9th Cir. 1998). The Ninth Circuit affirmed a district court ruling, 945 F. Supp. 1296 (C.D. Cal. 1996), against Toeppen, a “domain name hijacker.” Registration of the domain name “panavision.com” and subsequent attempts to profit by reselling the domain name to plaintiff owner of the registered trademark PANAVISION subjected defendant to jurisdiction in California and made defendant liable for trademark dilution. The circuit court upheld the district court’s order enjoining defendant from all further use of plaintiff’s mark and ordering him to transfer the domain name registration to Panavision. The court held that a defendant's "commercial use was his attempt to sell the trademarks themselves." Id. at 1325.
- Intermatic, Inc. v. Dennis Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996). Toeppen, a well-known cybersquatter, registered the domain name intermatic.com. Intermatic sued under a trademark dilution theory. The Court found dilution because (a) the registration would otherwise bar Intermatic from using its trademark as its domain name, and (b) Intermatic’s name and reputation would be at Toeppen’s mercy. The court found that "Toeppen's intention to arbitrage the 'intermatic.com' domain name constitute[d ] a commercial use." Id. at 1239
- HQM, Ltd. v. Hatfield, 71 F. Supp. 2d 500 (S.D. Md. 1999). The court granted defendant’s motion to dismiss, where plaintiff’s trademark infringement, dilution and cybersquatting claims failed to allege defendant’s “commercial use” of the mark. The court held that mere registration of a domain name could not constitute “commercial use,” where defendants had not conducted business or advertised under the domain name, nor had they attempted to sell the domain name to the trademark holder.
The Anti-Cybersquatting Consumer Protection Act
The Anti-Cybersquatting Consumer Protection Act (ACPA), enacted in 1999 and codified at 15 U.S.C. § 1125(d), creates a civil action against cybersquatters, where the cybersquatter had a bad faith intent to profit from the registration of a domain name, and the domain name is either a trademark or identical or confusingly similar to a famous or distinctive mark. A belief that use of the domain name was a fair use will defeat the required bad faith. A prevailing plaintiff can obtain an order requiring the transfer of the disputed domain name. In addition, the ACPA allows for in rem relief against the domain name itself without naming the registrant. "[C]ybersquatting occurs when a person other than the trademark holder registers the domain name of a well known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain name holder." DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir.2004) (internal quotation marks omitted).
Bad Faith Requirement of ACPA
The ACPA lists nine non-exclusive factors that courts may consider in determining whether a bad faith intent to profit exists. These include whether the domain name is part of a legal name of the defendant, whether the domain name was in use prior to registration by the defendant, and whether the mark is distinctive or famous.
- Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002). The appellate court affirmed a lower court’s ruling finding bad faith under the ACPA with regard to registration of fifty-four domain names, and reversed the same court’s ruling finding a lack of evidence for bad faith with regard to registration of six domain names. The court held that defendant’s intent to market its goods and services in a manner calculated to divert and deceive consumers seeking to do business with Harrods constituted bad faith.
- Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 (E.D. Mich. 2001). The district court held that using the famous "Ford" trademark in the domain “fordrecalls.com” demonstrated a bad faith intent to profit from the mark because “Ford” was not part of defendant’s name nor had defendant made any prior use of the domain name in connection with the bona fide offering of goods or services. Further, the “use of the word ‘recalls’ in juxtaposition with the name of a famous line of automobiles, combined with the lack of any semblance of a legitimate reason for defendant to register the domain name ‘fordrecalls’ strongly indicate[d] a bad faith intent to profit.” Id. at 466.
- People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001). The court affirmed the lower court’s motion for summary judgment against defendant under the ACPA, where defendant had used plaintiff animal protection organization’s service mark PETA in his domain name peta.org, which led to his Web site entitled “People Eating Tasty Animals.” The Court held that defendant’s use of “peta” in this forum “blurred” the distinctive association of the mark with the animal rights organization and that defendant’s registration of the domain name peta.org was motivated by bad faith. The court also held that equitable remedies under the ACPA apply retroactively to domains registered before its enactment.
- International Bancorp, LLC v. Societe Des Bains De Mer et Du Cercle Des Etrangers A Monaco, 192 F. Supp. 2d 467 (E.D. Va. 2002), aff ’d, 329 F.3d 359 (4th Cir. 2003). In a declaratory relief summary judgment action, the court held that International Bancorp’s use of the term “Casino de Monte Carlo” in forty-three of its domain names and/or Web sites constituted a direct infringement of Societe’s trademark. The court held that there was a high likelihood of confusion because of International Bancorp’s use of the mark on its Web site and because the content of the Web site, consisting of online gambling services, was similar to the services offered by Societe. The court did not rule on the issue of trademark dilution because plaintiffs provided no evidence of economic harm. Finally, the court held that International Bancorp was in violation of the ACPA because trademark infringement had been found and eight of the nine factors used to determine bad faith weighed in favor of Societe, in particular International Bancorp’s intent to divert consumers from Societe’s Web site.
- Nissan Motor Co. v. Nissan Computer Corp., 61 U.S.P.Q.2d 183 (C.D. Cal. 2002); 231 F. Supp. 2d 977 (C.D. Cal. 2002) (plaintiff’s motion for permanent injunction of advertisements on defendant's website granted on other grounds), aff’d in part on other grounds, rev’d in part on other grounds, 378 F.3d 1002 (9th Cir. 2004) (affirming plaintiff was entitled to summary judgment on trademark infringement for automobile-related advertisements on defendant’s website, and reversing decision to enjoin defendant from placing links on its websites that contained disparaging comments about plaintiff). The District Court granted defendant Nissan Computer's motion for partial summary judgment, finding defendant's registration of domain Nissan.com did not violate the ACPA. The Court noted that while the domain incorporated the mark of plaintiff Nissan Motor Co., the majority of bad-faith intent factors favored defendant: "Nissan" was the surname of the founder of defendant corporation; defendant's domain name included part of its preexisting mark and business name; defendant had no pattern of registering domain names containing others' trademarks; and defendant had been using the domain name in its computer business since 1994.
Auction/Sale of Domain Names
- Porsche Cars of North Am., Inc. v. Spencer, 55 U.S.P.Q.2d 1026 (E.D. Pa. 2000). The court granted plaintiff’s motion for a preliminary injunction against defendant who had registered and attempted to auction the domain name “porschesource.com,” finding that defendant’s actions constituted dilution and holding that the domain was confusingly similar to the PORSCHE mark. However, the court found no ACPA liability for the Web site that auctioned infringing domain names because ACPA liability is limited to persons directly transferring or receiving a property interest in the domain name. See also Ford Motor Co. v. Great Domains.com Inc., 177 F. Supp. 2d 656 (E.D. Mich. 2001).
- BroadBridge Media v. Hypercd.com, 106 F. Supp. 2d 505 (S.D.N.Y. 2000). The court ordered the transfer of a domain name to plaintiffs who had used the domain name for four years but had unintentionally neglected to renew its registration. The court found that defendant had acted in bad faith by registering the lapsed domain name for the sole purpose of selling it back to plaintiffs.
- E.J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (S.D. Tex. 2001). Spider had registered the domain name “ernestandjuliogallo.com” in hopes of selling it in the event that the ACPA was ruled unconstitutional. In upholding a preliminary injunction against Spider, the court ruled that the act of registering and holding the domain name constituted bad faith under the ACPA. Moreover, the court determined that use of a Web site only after litigation had begun ruled out the possibility of a fair use defense.
- Eurotech, Inc. v. Cosmos European Travels AG, 213 F. Supp. 2d 612 (E.D. Va. 2002). The court held that failure by Cosmos to conduct a trademark search prior to registering defendant’s trademark as a domain combined with attempting to sell the domain name to the trademark holder constituted bad faith.
- Target Advertising, Inc. v. Miller, 2002 U.S. Dist. LEXIS 8702 (S.D.N.Y. 2002). The court found bad faith under the ACPA where Miller, who had been contracted to design and operate Target’s Web site, registered the Target domain under his own name with the intent to profit from its use. The court distinguished its ruling from normal applications of the ACPA by extending the ACPA to cover an intent to profit from the use of a domain name, not only from its sale.
- Wright v. Domain Source Inc., 2002 U.S. Dist. LEXIS 16024 (D. Ill. Aug. 28, 2002). In determining bad faith under the ACPA, the court found that evidence of the history of Domain Source as a buyer and seller of domains was partially determinative.
Insertion of Generic Terms into Domain Names and Misspelling of Domain Names
- Victoria’s Cyber Secret LP v. V Secret Catalogue, 161 F. Supp. 2d 1339 (S.D. Fla. 2001). The court held that domain names that contain the entirety of another entity’s trademarked domain name combined with the words “sex” or “sexy” or other generic terms are confusingly similar to the trademarked domain. Furthermore, the nature of Internet shopping prevents consumers from exercising a level of care similar to that used in making physical purchases and enhances susceptibility to confusion.
- Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001). The district court held that registering domain names that are intentional misspellings of distinctive or famous trademarks violates the ACPA. The court found that there was bad faith intent to profit from the use of the confusingly similar domain names. The court affirmed the lower court’s preliminary injunction against defendant, who had registered four domain names for “Joe Cartoon” that were confusingly similar to plaintiff’s cartoon character of the same name. Defendant had posted criticism at these domains of the content of plaintiff’s site.
- Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002). The court held that where the strength of Entrepreneur Media’s trademark ENTREPRENEUR MAGAZINE was not strong due to its descriptive nature (in particular, the term “entrepreneur”), defendant’s domain name “entrepreneurPR.com,” although similar in spelling, did not create a likelihood of confusion and thus did not constitute trademark infringement.
- Caterpillar, Inc. v. Telescan Techs., LLC, 2002 U.S. Dist. LEXIS 3477 (C.D. Ill. 2002). The court held that verbatim incorporation of Caterpillar’s trademark into Telescan’s domain name with the addition of descriptors constituted trademark infringement where customers were confused into believing that Telescan’s site was endorsed by Caterpillar. Moreover, the court held that Telescan had violated the ACPA by using Caterpillar’s trademark in bad faith in several domain names to divert traffic to its own Web site.
- Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112 (D. Conn. 2002). The court found that Omega Engineering’s (“Engineering”) registered domain names “omegawatch.com” and “omegatime.com” were confusingly similar to Omega S.A.’s (“S.A.”) trademark OMEGA because the domain names coupled a generic word or term with S.A.’s mark. The court discounted the fact that the generic terms coupled with S.A.’s trademark might have placed it in a context different from than that for which it was registered. Engineering, a manufacturer of scientific instruments, used the above domain names in advertising campaigns that emphasized Engineering as the “Watchword on Scientific and Technical Books” (hence the “omegawatch.com” domain name) and “Timely Introducing the Scientific Instruments” (hence the “omegatime.com” domain name).
- PaineWebber, Inc. v. wwwpainewebber.com, 1999 U.S. Dist. LEXIS 6552 (E.D. Va. Apr. 9, 1999). In this case, defendants registered wwwpainewebber.com (without the period between www and painewebber), and used the domain to promote pornographic Web sites. PaineWebber was granted a preliminary injunction and the parties later agreed to a stipulated injunction; judgment included transfer of the domain name.
ACPA Violation Unlikely Where Products Are in Different Markets
- Interstellar Starship Servs. Inc. v. Epix Inc., 304 F.3d 936 (9th Cir. 2002). The court upheld a lower court ruling that a domain name that is confusingly similar to another company’s registered trademark does not infringe the company’s mark when the companies’ products and services are not in the same market, they are marketed through different channels, and there is no evidence to show that the registrant acted in bad faith. The appellate court affirmed this holding even where there might be “initial interest confusion” when services or products marketed under such domain name are not in the same market as the well-known mark. See also Chatam Int’l, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549 (E.D. Pa. 2001), aff ’d, 40 Fed. Appx. 685 (3d Cir. 2002). In Chatam, the district court held that a manufacturer of coffee makers under the trademark CHAMBORD did not violate the ACPA by registering the “chambord.com” domain name merely because another party sold liquor under the CHAMBORD mark. The court held that there was not a substantial likelihood of “initial interest” confusion because the products were not in direct competition with one another. Furthermore, there was no bad faith where a party had reasonable grounds to believe that the use of the domain name was a fair use and otherwise lawful.
The Mere Act of Registering a Domain Name May Infringe a Famous Mark
- Jack In The Box, Inc. v. Jackinthebox.org, 2001 U.S. Dist. LEXIS 9586 (E.D. Va. 2001). The court held that a trademark holder is entitled to relief under the ACPA when the act of registering a domain name itself is found to violate the holder’s trademark. The court held that the mere act of registering an Internet domain name is sufficient to invoke the protection of the in rem provision of the ACPA.
- Northern Light Tech., Inc. v. Northern Lights Club, 236 F.3d 57 (1st Cir. 2001). The district court held that a registrant’s ownership of numerous domain names similar to famous trademarks suggested bad faith under the ACPA.
- Cline v. 1-888-PLUMBING, 146 F. Supp. 2d 351 (S.D.N.Y. 2001). The district court held that merely registering a domain name likely to be confused with a registered trademark was not enough to infringe upon the mark, as it was not a “use in commerce” of the mark. “In the context of domain names, parties encroach on a registrant’s rights under […] the Lanham Act not when they reserve a domain name […] but when they use it.” Id. at 369 (emphasis added) (citations omitted). The court also found that because the mark was “a descriptive mark without inherent distinctiveness” it was not entitled to protection under the Federal Trademark Dilution Act. Id. at 372.
- Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002). Defendant Parsons operated a domain name auction and registration Web site. A third party used defendant’s Web site to register and auction a domain name consisting of Bird’s trademark. Bird subsequently brought suit against Parsons for trademark infringement, dilution and unfair competition. The court held that the act of registering a domain name and listing it for auction, per a third party request, did not constitute a “use” of a trademark.
- Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). Webfeats registered a domain name containing Taubman’s trademark but evidenced no intent to sell the domain and had no history of selling domain names. Taubman, not Webfeats, later initiated discussions relating to the purchase of the domain name from Webfeats. The court held that the act of discussing the sale of a domain name did not constitute bad faith under the ACPA where discussions were initiated by the buying party.
- Victoria’s Secret Stores v. Artco Equip. Co., 194 F. Supp. 2d 704 (S.D. Ohio 2002). Artco had registered a domain name knowing that it was similar to VSS’s trademark. The court upheld a magistrate’s determination that Artco was in violation of the ACPA because it had registered the domain name in bad faith. As such, Artco was not protected by the ACPA’s safe harbor rules.
ACPA Does Not Apply To Meta-Tags
- Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000). The court denied plaintiff’s motion for preliminary injunction against defendant’s use of plaintiff’s trademarks in its meta-tags, reasoning that the plain language and legislative intent of the ACPA clearly indicated that it did not apply to meta-tags.
ACPA Is Not Retroactively Applicable To Surnames
- Schmidheiny v. Weber, 2002 U.S. Dist. LEXIS 11852 (E.D. Pa. 2002). The court did not extend ACPA protection to family surnames when domain names containing such surnames were registered prior to the enactment of the ACPA, even where the domain name was re-registered after enactment. Reversing the district court, the Third Circuit held that the date on which a domain name was created does not control whether it is subject to the ACPA. Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003). The court found that the Act encompasses re-registrations that occur after the effective date of the Act.
Not all registrants of domain names using trademarks owned by third parties are for-profit cybersquatters. Some use these domains to publish criticism about companies or organizations that own the mark. Generally, use of a trademark to criticize is permitted, so long as there is no likelihood of confusion. Use of the trademark in the domain name, however, can create initial interest confusion and amount to blurring or tarnishing the mark.
- Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998). Faber created a Web site that criticized Bally. Since Faber did not use the Bally trademark in the domain name and printed the works “sucks” prominently over the trademark, the court found no likelihood of confusion. The court noted in dicta that “ballysucks.com” or a similar domain might also be permitted.
- Planned Parenthood v. Bucci, 1997 U.S. Dist. LEXIS 3338, 1997 WL 133313, (S.D.N.Y. 1997), aff ’d, 1998 U.S. App. LEXIS 22179 (2d Cir. 1998), cert. denied, 2003 U.S. LEXIS 5042, 1998 WL 336163 (2003). Bucci registered plannedparenthood.com and created an anti-abortion Web site titled the “Planned Parenthood Home Page.” While Bucci did not financially profit from the Web site, the Court found commercial use, noting that Bucci promoted a book for sale and referred users to his Christian radio program. The court rejected a First Amendment defense, holding that the “mere fact that defendant seeks to criticize plaintiff cannot automatically immunize a use that is otherwise prohibited by the Lanham Act.” Id. at *18.
- Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff' d. 159 F.3d 1351 (3d Cir. 1998). Brodsky registered jewsforjesus.com to post material critical of Jews for Jesus. The Court found for Jews for Jesus, noting that Brodsky’s use of the trademark lured users to the site, where he made disparaging statements about the organization and linked to sites critical of Jews for Jesus. Such use amounted to blurring and tarnishing of the mark.
- Ford Motor Co. v. Great Domains.com, Inc., 177 F. Supp. 2d 656 (E.D. Mich. 2001). The district court held that the immunity provisions of the Communications Decency Act, barring claims against Internet service providers for torts of their users, do not apply to claims arising out of federal trademark law. See also Gucci America, Inc. v. Hall & Associates, 135 F. Supp. 2d 409 (S.D.N.Y. 2001).
- Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Ma. 2002). The court held that the use of domain names incorporating TDB’s long-used trademark for the purpose of defaming TDB’s business constituted trademark infringement and unfair competition. Moreover, Karpachev was not able to claim fair use as his use of TDB’s trademark was not in connection with the offering of goods or services nor did he have an intellectual property right to the name.
- Bear Stearns Cos., Inc. v. Lavalle, 2002 U.S. Dist. LEXIS 23117 (N.D. Tex. 2002). Lavalle published Web sites highly critical of Bear Stearns with domain names confusingly similar to Bear Stearns’ trademark. The court granted a preliminary injunction against Lavalle, holding that while Lavalle is free to criticize Bear Stearns on the Web, he cannot do so with domain names that are deceptive, confusingly similar or identical because of the high likelihood of initial interest confusion. The court held that the ACPA did not apply to Lavalle’s use of an email address incorporating Bear Stearns’ trademark but did extend Lanham Act protection to use of email addresses, finding that defendant’s use of an email address containing Bear Stearns’ trademark and an additional generic term would confuse consumers as to the actual owner of the email address.
- Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir.2004), cert. denied, 544 U.S. 974 (2005). On appeal by both parties, the Ninth Circuit affirmed in part and reversed in part the district court ruling that granted Nissan Motor Co.’s (“Motor”) motion to permanently enjoin Nissan Computer Corp. (“Computer”) from placing advertisements on Computer’s websites. The court affirmed that Motor was entitled to summary judgment on trademark infringement for automobile-related advertisements on Computer’s websites, finding that Computer "traded on the goodwill of Nissan Motor by offering links to automobile-related websites." Id. at 1019. However, the court reversed the decision to enjoin Computer from placing links on its websites that contained disparaging comments about Motor. Id. at 1018. The court found this information to be non-commercial speech protected by the First Amendment that neither infringed Motor’s mark nor violated the FTDA despite its potentially negative impact on Motor’s commercial activities.
- Toys ‘R’ Us, Inc. v. Feinberg, 26 F. Supp. 2d 639 (S.D.N.Y. 1998), vacated and remanded on procedural grounds, 1999 U.S. App. LEXIS 29833 (2d Cir. 1999). In the original suit, defendant’s domain name “gunsareus.com” was held not to infringe or dilute plaintiff’s trademark TOYS ‘R’ US. On summary judgment, the court found there was no likelihood of confusion and hence no infringement when (1) the parties’ marks were not similar because defendant used “are” instead of “r” in his domain name, (2) there was little likelihood that plaintiff, a toy and family oriented retailer, would enter defendant’s product market of firearms, and (3) the relevant consumers are sophisticated enough to distinguish between plaintiff’s and defendant’s products. The court also did not find any basis for a claim of dilution by blurring because defendant’s domain name did not incorporate plaintiff’s distinctive “r”, nor any basis for a claim of dilution by tarnishment because it was unlikely that defendant’s Web site would be associated with plaintiff’s stores and products. The Second Circuit vacated and remanded, finding that the district court failed to provide sufficient notice of the sua sponte ruling and that not all reasonable inferences were given to defendants.
- Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 F.3d 1107 (9th Cir. 1999). ISS, which owned the “epix.com” domain name, sued for declaratory relief after Epix put the domain name on hold through the ICANN prior dispute resolution policy. In reversing the district court’s grant of summary judgment to ISS, the Ninth Circuit recognized “a brand of confusion called ‘initial interest’ confusion, which permits a finding of a likelihood of confusion although the consumer quickly becomes aware of the source’s actual identity and no purchase is made as a result of the confusion.” Id. at 1110 (citations omitted); but see Interstellar Starship Servs. Inc. v. Epix Inc., 304 F.3d 936 (9th Cir. 2002) (“initial interest confusion” does not constitute trademark infringement when services or products marketed under the allegedly confusing domain name are not in the same market as the well-known mark").
- OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176 (W.D.N.Y. 2000). The court granted plaintiff newspaper publisher’s motion for preliminary injunction against defendant, who operated a parody Web site with a confusingly similar name (“TheBuffaloNews.com”).
- American Family Life Ins. Co. v. Hagan, 2002 U.S. Dist. LEXIS 23908 (N.D. Ohio 2002). The court held that while the use of a quacking duck on the Web site of Hagan, a gubernatorial candidate in Illinois, did bring to mind American’s quacking duck trademark, Hagan’s use of the duck was exempted from trademark infringement based on fair use since the use related to Hagan’s political message.
- Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687 (6th Cir. 2003). The Sixth Circuit held that use of a trademark in the path of a URL, and not as part of the domain, did not give rise to liability for false designation of origin or trademark infringement.
- Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003). In a case involving fraudulent transfer of a domain name, the Ninth Circuit reversed the district court to hold that Internet domain names constitute intangible property subject to conversion claims under California law.