Interested in establishing an e-mail address of "[email protected]"? The
name might be available from the InterNIC (based on a recent review through
"Whois" of its list of "available" names), but you might think twice about
such a move, which would probably not generate too much amusement at The
Coca Cola Company.
Several court decisions indicate that "cyber squatting" will not be
tolerated and that those who attempt to snatch up domain names to take
advantage of a perceived association with a famous company will be sorely
disappointed.
Candyland
One of the first rulings on the issue of a trademark owner's right to legal
relief against use of a similar Internet domain name was the 1996 decision
of Hasbro, Inc. v. Internet Entertainment Group Limited. Hasbro owned the
trademark "Candy Land," which has been in use for more than 50 years as the
name for the children's board game. Internet Entertainment registered the
domain name "candyland.com" and set up an "adult-oriented Web site" at
candyland.com. The court enjoined the defendant's use of this term and
ordered that the Web site be moved to a different address.
Internet Entertainment maintained that because the services of the two
companies were so different, there could not be any confusion among
consumers. However, the "Candy Land" trademark was found by the federal
court in Washington state to be a "famous" mark which was entitled to
protection under the new Federal Anti-Dilution Act. This Act gives
protection to "famous" names whose distinctive quality may be diluted by
conflicting uses, without regard to whether the defendant's use of the name
may cause confusion or deception.
While the Hasbro case involved somewhat sensational facts, another decision
in California enjoined a defendant's use on a more ordinary set of facts,
and based its findings on garden variety trademark infringement (rather
than on the more exotic theory of trademark dilution, which requires a
"famous" mark). The court enjoined Comp Examiner Agency from using the
domain name "juris.com" for its Web site, which provided services to the
legal profession, on the ground that Juris Inc. owned the federally
registered trademark "Juris" for legal application software. The court held
that the use of a domain name can constitute trademark infringement as well
as trademark dilution.
Cyber squatters
Certain more notorious cases involving Dennis Toeppen, such as Intermatic
v. Toeppen and Panavision v. Toeppen, now point out that "cyber squatters"
(the term used by the court in the Intermatic case) will not find any
refuge within the federal courts. Dennis Toeppen was an Internet service
provider in Champaign, Illinois. In the spirit of the Oklahoma land rush,
Mr. Toeppen registered more than 200 Internet domain names, including
eddiebauer.com, neiman-marcus.com, intermatic.com and panavision.com,
presumably on the theory that if it was okay with the dispensers of
Internet names, it ought to be okay with everyone. However, Intermatic,
Inc. had been using the trademark "Intermatic" since the 1940s in
connection with its electronic products, and was not amused with Mr.
Toeppen's cyber-version of entrepreneurship.
The Illinois federal court found trademark dilution of Intermatic's famous
mark and forced Toeppen to relinquish the domain name to Intermatic. While
some commentators have questioned the court's authority to require a "cyber
squatter" to turn over the name to the "rightful" owner, it seems clear
that such a remedial power is well within the equitable powers of a federal
court. An important procedural point also arose in the Intermatic case: the
plaintiff obtained its relief by way of a "summary judgment," which
entitled it to a final judgment in its favor without being subjected to the
burden of an entire trial. Since lawsuits are long and expensive, a
trademark owner seeking relief will be much encouraged by this court ruling
which allows and encourages a summary form of relief against cyber
squatters.
Mr. Toeppen did not fare any better in a California federal court in a
claim brought by Panavision. The court found that Mr. Toeppen's actions
diminished Panavision's ability to identify its goods and services on the
Internet, which the court recognized as a "new and important medium" for
the conduct of business. The court's order effectively required Mr. Toeppen
to turn over all rights in the name to Panavision.
Interestingly, the Panavision court also left open the possibility that
Network Solutions, Inc., the dispenser of Internet names, might have some
liability in such a case if it had notice that a domain name registrant's
usage was intended to injure the commercial good will of a well-known
trademark owner. This line of cases seeking relief against NSI will no
doubt be developed in the next few years, as attorneys for disgruntled
trademark owners attempt to hold NSI liable for "wrongful issuance" of
domain names.
Gateway
However, not every trademark owner is entitled to enjoin every competing
use of its name. This principle is illustrated in the case of Gateway 2000
v. Clegg. The plaintiff, a well-known and well-heeled South Dakota vendor
of personal computers, brought a lawsuit in Raleigh, North Carolina against
Alan Clegg, a Unix/networking consultant in North Carolina. Gateway 2000
was disturbed by Mr. Clegg's use of "gateway.com" as his domain name.
Mr. Clegg registered his domain in 1990, and presented evidence that he had
used the term "gateway" as a UUCP address identifier for his business since
1988. Gateway 2000 claimed that Mr. Clegg injured its business by his use
of "gateway." However, Mr. Clegg observed that the term "gateway" is not
distinctive within the computer business and that it is a commonly used
word for a computer network component; and his usage was based on this
common understanding of the term. Furthermore, Mr. Clegg contended that he
had prior common law trademark rights in North Carolina.
The court sided with Mr. Clegg. While Gateway 2000 did have certain rights
in its name, it did not have all rights to forbid all uses of the term. It
seems clear that Mr. Clegg did not intend to refer to "Gateway 2000" by his
domain name and would have been just as happy if Gateway 2000 had never
come into existence. You can still visit Mr. Clegg's Web site at
www.gateway.com.
The inherent difficulties concerning domain names will surely continue, and
it seems unlikely that any legislatures will attempt to offer Solomon-like
solutions here. The cases will be sorted out by the courts, each one on its
own facts, for the years to come.
Edmund B. (Peter) Burke practices intellectual property and information
technology law in Atlanta with Sutherland, Asbill & Brennan, a law firm
with offices in Atlanta, Austin, New York and Washington, D.C.
[email protected]