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News and Information
April 13, 2006,
Vol. 7 No. 04
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Danica Racing, Inc. v. Web Master
Courts Differ on Role of Keywords in
Trademark Infringement Actions
"American Idol” Fan’s Website Irks
Danica Racing, Inc. v. Web Master
Automobile racing star Danica
Patrick initiated a claim against Respondent, Web Master, the registrant of
the <danicapatrick.com> domain name. Complainant asserted common law rights
in the <danicapatrick.com> domain name based on continuous and extensive use
of the mark in connection with her automobile racing career and sports
merchandise since 2002. Respondent’s domain name resolved to a pay-per-click
website featuring sponsored links relating to Complainant, racecars, and
pornography. The website also contained pop-up
advertisements. The Panel concluded that Respondent did not have
rights or legitimate interests in the <danicapatrick.com> domain name, and
Respondent’s registration of the domain name constituted bad faith
registration and use pursuant to the Policy.
Danica Racing, Inc. v. Web Master, FA 629203 (Nat. Arb. Forum Mar.
Aquascape Designs, Inc. v. Vertical Axis, Inc.
Complainant, Aquascape Designs,
Inc., brought a claim against Respondent, Vertical Axis, Inc., the
registrant of the <aquascape.com> domain name. Complainant asserted common
law rights in the AQUASCAPE DESIGNS mark in connection with its business as
a manufacturer and distributor of water garden products and services.
Respondent registered and was using the disputed domain name to operate a
website providing advertising services through an arrangement with Yahoo!.
Under the arrangement, Yahoo! displayed advertisements on Respondent’s
website at the disputed domain name, and advertisers paid Yahoo! to have
their advertisements brought to the attention of Internet users entering the
word “aquascape” into their browsers. The Panel denied Complainant’s claim,
finding that Respondent’s advertising activity demonstrated a legitimate
interest in the <aquascape.com> domain name, and therefore Complainant had
failed to demonstrate that Respondent did not have rights or legitimate
interests in the <aquascape.com> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel also held that because the term “aquascape” is subject to
substantial third party use in the field of water garden products and
services, Complainant did not sufficiently establish that Respondent
registered or used the disputed domain name in bad faith under Policy ¶
Aquascape Designs, Inc. v. Vertical Axis, Inc., FA 629222 (Nat. Arb.
Forum Mar. 7, 2006).
Inc. v. LineCom
Athletic footwear, apparel and
equipment retailer Nike, Inc. commenced an action against Respondent,
LineCom, asserting that Respondent’s <mynike.com> domain name is confusingly
similar to Complainant’s NIKE mark. Respondent’s disputed domain name
resolved to a website offering the domain name for sale starting at the
price of $3,500. The Panel held that that Respondent’s offer to sell
its domain name registration did not demonstrate rights or legitimate
interests in the <mynike.com> domain name, and that Respondent registered
and used the domain name in bad faith. Consequently, the Panel ordered that
the domain name be transferred to Complainant.
Nike, Inc. v. LineCom, FA 635471 (Nat. Arb. Forum Mar. 7, 2006).
Astaire v. Thum
Mrs. Fred Astaire filed a claim
against Respondent, Pingtjin Thum, the registrant of the <fredastaire.net>
domain name. Respondent was using the domain name to operate a website that
allowed Internet users to purchase products featuring unauthorized
reproductions of the FRED ASTAIRE mark and related images. In finding for
Complainant, the Panel found that Complainant established common law rights
in the FRED ASTAIRE mark, Respondent did not have rights or legitimate
interests in the domain name, and Respondent registered and was using the
disputed domain name in bad faith. Thus, the Panel ordered that the domain
name be transferred to Complainant.
Astaire v. Thum, FA 637404 (Nat. Arb. Forum Mar. 21, 2006).
Picture it SOLD!, Inc. v. Strathcom Media Inc.
Complainant, Picture it SOLD!,
Inc., filed a complaint against Respondent, Strathcom Media Inc., asserting
that Respondent’s <pictureitsold.com> and <pictureitsold.org> domain names
were confusingly similar to Complainant’s PICTURE IT SOLD! mark. Respondent
asserted that it registered the <pictureitsold.com> domain name on
June 22, 1998, and the <pictureitsold.org> domain name on April 14,
2005, for the future purpose of using them for online businesses. On June
14, 2003, Respondent received an e-mail from Complainant, inquiring as to
the sale of the domain names by Respondent for Complainant’s new business.
Respondent refused to sell the domain names to Complainant. Soon after,
Complainant began using the confusingly similar business name PICTURE IT
SOLD!, and registered and began using the confusingly similar name as a
service mark. The Panel held that Complainant established rights in the
PICTURE IT SOLD! mark based on registration with the United States Patent
and Trademark Office. However, the Panel held that Respondent had rights and
legitimate interests in the domain names, because Respondent’s <pictureitsold.com>
domain name was registered six years before Complainant registered its mark,
and Respondent had “significant plans” for the <pictureitsold.org> domain
name. Furthermore, the Panel concluded that Respondent did not register or
use the disputed domain names in bad faith. Accordingly, the Panel denied
Picture it SOLD!, Inc. v. Strathcom Media Inc., FA 645998 (Nat. Arb.
Forum Apr. 5, 2006).
(American Veterans) v. Rathman
The federally chartered
non-profit service corporation AMVETS (American Veterans) commenced a claim
against Respondent, John Rathman, asserting that Respondent’s <amvetsweb.com>
domain name was confusingly similar to Complainant’s federally protected
AMVETS mark. Complainant, a veterans’ service organization, was created for
charitable, educational and civic purposes, and provides extensive services
and support to veterans of the United States Armed Forces and their
families. Federal statute 36 U.S.C. Section 22706, specifically protects
Complainant’s AMVETS mark by providing that AMVETS “and its State, regional,
and local subdivisions have the exclusive right to use the name ‘AMVETS
(American Veterans)’ and seals, emblems, and badges the corporation adopts.”
Respondent registered and was using the <amvetsweb.com> domain
name to redirect Internet users to a website featuring commercial content
unrelated to Complainant. The Panel found that the statutory provision
granting exclusive use of the AMVETS mark to Complainant demonstrated that
Respondent did not have rights or legitimate interests in the <amvetsweb.com>
domain name and that Respondent’s registration of the domain name
constituted bad faith registration and use under the Policy.
AMVETS (American Veterans) v. Rathman, FA 643637 (Nat. Arb.
Forum Mar. 28, 2006).
Courts Differ on
Role of Keywords in Trademark Infringement Actions
As published in
the U.S. District Court for the Southern District of New York found on March
30, 2006 that buying a competitor’s mark from an Internet search engine for
use as a “keyword” does not constitute trademark infringement.
At issue is the practice of Internet search engines
selling keywords to advertisers. When Internet users enter keywords as terms
in their search, the advertisers who purchased them are listed on the search
results as “sponsored links.” Trademarks are frequently purchased as
keywords, because people often use trademarked brand names in search engines
to find products and services.
In the New York case, Merck sued a number of online
pharmacies for trademark infringement, trademark dilution and false
advertising. One of the claims was that the pharmacies purchased the “Zocor”
keyword from Google and Yahoo in order to list the pharmacies as sponsored
links for searches incorporating that term. The New York court dismissed the
trademark infringement charges relating to the purchase of “Zocor” as a
keyword, though the other claims remain active.
Eric Goldman, assistant professor of law at Marquette University Law
School, noted that whether the pharmacies used the mark visibly was central
to the court’s decision. “The applicable statutory definition of trademark
use in commerce . . . effectively requires that consumers "see" the
trademark usage for it to qualify. The Merck court . . . says that keyword
purchases are invisible to consumers and therefore do not constitute a
trademark use in commerce.”
Google has had poorer luck in similar court rulings.
Last year, a French court ordered Google to stop selling the trademarks of
Le Meridien Hotels and Resorts to trigger keyword ads. In December 2004,
a federal district judge in Virginia partially dismissed a
trademark-infringement complaint brought against Google by auto insurer
Geico, holding that Google was not liable for selling the “Geico”
keyword, but may be liable for any “sponsored link” ads which featured the
term “Geico.” Google had already begun blocking the use of the term “Geico”
in such ads per Geico’s request, and the two companies settled the case
before it went to trial. Courts have also decided against purchasers of
keywords. On March 20, 2006, the US District Court for the District of
Minnesota ruled that
Edina Realty could pursue its complaint of trademark infringement
against a rival realtor for buying its trademark from Google and Yahoo for
use as a search term.
Google does not disclose how much revenue it generates
by selling trademarked keywords, but approximately
99 percent of Google's revenue comes from advertising. Google derives
95 percent of its advertising revenue from keyword-triggered ads. Google
decided two years ago to permit advertising sales around trademarks, a
reversal of its earlier policy.
Amidst Linguistic Concerns, ICANN Announces
Plans To Test Internationalized Domain Names
ComputerWorld, March 16, 2006:
The Internet Corporation for Assigned Names and Numbers (ICANN) announced
plans to test an internationalized system of domain names, which will use
non-Roman characters or Roman characters featuring diacritical marks. At a
time in which there are many concerns that linguistic differences could
result in the division of the Internet, ICANN outlined two approaches to the
internationalization of domain names that will be tested. One will use an
alias designation for an entire domain by mapping a new domain into the one
that currently exists. The second approach will insert an internationalized
label in the root zone without duplicating a pre-existing sub-domain
structure. The test is expected to begin later this year.
Link to Full Story
Fan’s Website Irks Parent Company
Pittsburgh Tribune-Review, March 22, 2006: While the
parent company of FOX’s American Idol is no doubt happy about how
well the show is doing in the ratings and how well the contestants are
performing each week, they are not at all pleased with one northeast Ohio
man’s website at the <dialidol.com> domain name, which allows eager fans to
phone in multiple votes for their favorite contestants. The website
purportedly offers a free download that tells a computer to repeatedly call
the American Idol hot line for a chosen contestant. The website’s
operator then calculates the data to see who won each week and posts the
results before the live show on Wednesday night. The company’s lawyers sent
a cease-and-desist letter to the operator on March 14, 2006, accusing him of
displaying the AMERICAN IDOL mark on his website and allowing Internet users
to download clips from the show. The operator claims that he never offered
audio or video clips and that he is not out to make a profit from the
website, but did take down the site for about a week. The operator has since
restarted the website, albeit with a modified logo and a disclaimer stating
that it is not affiliated with American Idol. It remains to be seen
if the company behind American Idol will decide to let this case
slide or whether it will take further action.
Link to Full Story
The “.nu” Domain Sparks Battle On Tiny South
Post-Gazette.com, March 29, 2006: On the tiny South
Pacific island Niue, a battle has raged over the national Internet suffix “.nu,”
reports Christopher Rhoads of The Wall Street Journal. The “.nu” domain,
which is operated by Massachusetts entrepreneur Bill Semich, has become very
popular in Sweden, as “nu” in Swedish translates into the word “now.” With
110,000 domain names registered using the “.nu” domain, Mr. Semich generates
revenue “in the low single digit millions” of dollars every year. However,
this success has not left everyone happy. Some government officials of the
impoverished Polynesian island feel cheated out of what they see as an
important and profitable national asset. Although Mr. Semich has voluntarily
undertaken a project to make Niue the first nation to offer all of its
citizens free wireless Internet access, the island’s government is demanding
a bigger slice of the domain’s profits and a higher level of control. The
dispute incited a nearly three-year independent government investigation and
became the focal point of local political elections. Although the
investigation failed to uncover any improper behavior on the part of Mr.
Semich, the recently elected Niue Premier, Mititaiagimene Young Vivian,
plans to continue talks with Mr. Semich regarding the future of the “.nu”
domain. "The key issue is that reasonable benefits should come to Niue," he
says. "That is the goal of any leader."
Link to Full Story
Charities Benefit from Domain Name Gifts
International Herald Tribune, March 30, 2006: Instead of
selling the <farm.com> domain name for hundreds of thousands of dollars, a
Massachusetts-based entrepreneur donated the domain name to the Boston
Foundation, a non-profit organization, who later sold the domain name to
Pets United for $200,000. While some people might think such a move is
crazy, there are a growing number of people who are registering domain names
and donating them to charities. There are several reasons why a person might
donate a domain name to a non-profit group, one of them being for tax
purposes, as domain name donors receive a large tax credit for their
charitable contribution. One New York man, however, registered 107
education-related domain names and gave them to his alma mater, Prescott
College in Arizona, to get the school more attention. People typing “best
liberal arts school” and “top American university” into a search engine see
links for the school, thus creating a great marketing tool for the college.
Link to Full Story
Porn Domain Stirs ICANN Pot
Computer Business Review Online, April 3, 2006: While
ICANN has yet to decide whether to approve the “.xxx” top-level domain for
adult-only content, ICANN President Paul Twomey stated that the debate has
led him to realize that future proposals for TLDs should also be subject to
close scrutiny. ICANN is currently considering whether new TLDs should be
subject to oversight and debate before approval, or if instead there should
be a simple checklist of requirements. Twomey, however, prefers the former,
stating, “Because of the issues .xxx has raised, I just can’t see a
cookie-cutter approach. It’s too complicated, too complex, too many issues
are raised.” Florida-based ICM Registry Inc is aggressively pushing the .xxx
TLD. It wants to create the online equivalent of a “clean, well-lighted sex
shop.” ICANN’s Government Advisory Committee elaborated on the debate during
its recent meeting in Wellington, New Zealand by publishing a list of its
members' concerns, which included protecting vulnerable members of the
Internet community and appropriating measures to restrict access to illegal
and offensive content.
Link to Full Story
Name.Com To Partner with Sedo To Provide
“One-Stop Shop” for Domain Name Needs
BusinessWire, April 4, 2006: Name.com, a leading domain
name registration company, and Sedo, the leading online marketplace for
buying and selling domain names, have created a partnership which allows
Internet users to instantly bid on Sedo’s domain name listings. When
Name.com users search for the availability of various domain names, the
results will not only search the primary domain name market, but also the
results will show whether the domain in question is available for sale in
the secondary markets. Both companies hope that the integration will
increase new registrations and renewals while opening up new channels of
business. Name.com sees this as yet another step in becoming “a one-stop
shop for all domain name needs.”
Link to Full Story
Name Intelligence offers its second annual
American Intellectual Property Law Association (AIPLA)
offers its 2006 Spring Meeting.
International Trademark Association (INTA) offers
its 2006 Annual Meeting.
Toronto, Ontario, Canada
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