Cyber squatting

INTRODUCTION
Cases of cybersquatting often cause the most concern to
trademark holders and have been the subject of the
majority of litigated disputes.
There is no single accepted definition of cybersquatting.

Generally, however, if someone who lacks a legitimate

claim registers a domain name with the intent to sell the
name, prevent the trademark holder from gaining access
to the name, or divert traffic, this activity will be
considered cybersquatting.

A close corollary to cybersquatting is typosquatting -

where the domain name registrant registers a variant of a
famous trademark.
Panavision v. Toeppen, 141 F
.3d 1316 (9th Cir. 4/17/98)
Dennis Toeppen had registered a multitude of domain names incorporating
famous trademarks including panavision.com.

When contacted by Panavision, owner of the trademark, he offered to sell the

domain name to them for $13,000.

Toeppen had previously offered similar sales to other trademark owners for
domain names incorporating their marks (Intermatic and American Standard).

Panavision filed suit claiming trademark dilution.

Toeppen argued that the requirements for dilution were not met because his
use of the domain name to display the city of Pana, IL did not constitute
commercial use.

The court determined that Toeppen's business is to register trademarks as

domain names and then sell them to the rightful trademark owners.
 As such, they found the requisite commercial use. Panavision establishes the
principle in cybersquatting cases that the offer to sell a domain name to the
trademark holder constitutes use in commerce for purposes of trademark
infringement.

Establishing commercial use, however, is not sufficient.

The plaintiff must also show that there has been dilution.

Here the Ninth Circuit indicates that a court need not rely on the traditional
definitions of blurring or tarnishment to find dilution.

Because Toeppen's conduct diminished the capacity of the Panavision marks

to identify and distinguish Panavision's goods and services on the Internet, the
court finds that dilution has occurred.

While this is one of the older cases and its interpretations have been
questioned by scholars, it has frequently been relied on by courts throughout
the US in subsequent cases.
 II. Competing Use
he Ninth circuit found infringement
where the name causes "initial
interest confusion."
The theory is that although web
users will realize that they have
reached the wrong site, they may be
satisfied with the goods or services
offered at the competitive site and
not continue searching for the
original site they had intended to
 Brookfield Communications v. West Coas
t Entertainment Corp
. 174 F.3d 1036 (9th Cir., April 22, 1999)
This case analyzes the priority issue as well as reviewing standard
trademark infringement in a case where a competitor has registered
another's mark as a domain name.
Brookfield, the owner of the moviebuff trademark sued West Coast to
prevent its use of the moviebuff.com domain name for its web site.
While overall the companies provided some different services, they
were both provided similar searchable databases of movie
information.
Thus the court held that the proximity of their products is quite high.
According to the court, the relatedness of the overall company
mission is not relevant.

The focus is instead on whether they consuming public is likely to

associate the defendant's product with the plaintiff's.
 Proceeding through the standard eight factor test, the court finds that the plaintiff
is likely to succeed on the merits and thus grants a preliminary injunction.

Before addressing the infringement issue, the court establishes that the plaintiff is
the senior user.
Without such a holding, an infringement analysis is irrelevant. In order to
determine which party has priority, the court undergoes a tacking analysis.

It concludes that West Coast video cannot tack its use of moviebuff.com to its
prior trademark registration of "The Movie Buff's Movie Store" because the two
marks are not legally identical.

In further analyzing the priority issue, the court determines that mere registration
"does not in itself constitute "use" for purposes of acquiring trademark priority."
Nor is registration with an intent to use the name commercially sufficient to
convey trademark rights.
To establish priority, one must demonstrate use in a way sufficiently public to
identify or distinguish the marked goods in an appropriate segment of the public
mind as those of the adopter of the mark.
Interstellar Starship Services
Limited v. Epix, Inc., 184 F.
Epix, Inc., the owner of the Epix trademark,
3d 1107 and
manufactures (9th Cir,imaging
sells video Julyhardware
19, 199 and

9)software products.
Interstellar Starship Services, Ltd. (ISS) registered
epix.com as a domain name and displayed photos of
a drama group along with information about how
the pictures were transferred to a computer and
touched up for posting.
The district court granted summary judgment in
favor of ISS. The Ninth Circuit reversed, holding that
it is not appropriate to grant summary judgment
when there are genuine issues of material fact.
 In fact, the court indicated that summary judgment
is generally disfavored in the trademark arena.
While the general business of ISS did not seem to be
related to the business of Epix, the court concluded
that it is the use of the epix.com website, rather
than the entirety of the business transacted under
the ISS name, that is the relevant criterion.

Because there were genuine issues of material fact,

the court held that Epix must be granted to right to
go to trial on its infringement claim.
III. Non-competing Use - Legitimate
Claims
The area of legitimate competing claims is the most
complex in this field.

Consequently, it remains more unresolved than other

domain name disputes.
Because the trademark system is divided territorially and
by industry, many companies can use the same name as
a trademark without causing infringement.
For example, the trademark United is used by United Van
Lines, United Airlines, the United Way, and many other
organizations.
Only one of these entities, however, can register
united.com.
 In the first type, the trademark
holder sues a domain name holder
who has a legitimate claim, but no
trademark rights.
Because the domain name system is
not a corollary to the trademark
system, a domain name registrant
need not have a corresponding
trademark in order to have a
legitimate right to the name.
 In the second type of legitimate
dispute both parties have a
trademark claim in the name.
 Gateway 2000, Inc. v. Gatewa
y.com, Inc., 1997 U.S. Dist.
Lexis
Gateway.com, 2144 (W.D.NC
Inc. reserved February
the domain name gateway.com
years before the mega computer maker Gateway 2000
6, 1997).
attempted to register the name.

Gateway 2000 sued but lost because the court found that
Gateway.com had a legitimate reason for owning the
domain name and had chosen it six years earlier - long
before domain names had the value that they do today and
before Gateway 2000 became a well-known trademark.

One of the keys to the decision was that the defendant

was not opportunistically trying to get value by using a
well-known mark.
Data Concepts, Inc. v. Digita
l Consulting, Inc., 150 F.3d
620, (6thsoftware
Cir.,forAugust 1998)
Data Concepts, Inc., owner of the domain name dci.com,
supplies computer data management. Digital
Consulting, Inc., owner of the trademark DCI, provides training
and educational services in many computer related fields.
The District Court in the case granted summary judgment for
Digital, holding that the use of dci.com infringed on the DCI
trademark.
The Sixth Circuit court reversed and remanded for additional
consideration.

Although Data Concepts had used a stylized mark

incorporating the letters d, c, and i, since 1982, they had only
registered the stylized mark and not simply the letters dci.
 The court determined, therefore, that Digital was the senior
user of the mark DCI which they had registered in 1987.
The Sixth Circuit analyzed the traditional likelihood of
confusion factors and determined that additional information
was needed to determine if infringement had occurred.
Two areas of the analysis are important when compared with
other domain name infringement cases.
First, the court indicates that likelihood of confusion is not
measured simply by whether a buyer might accidentally
purchase the good, but also by whether a buyer might
mistakenly believe that the good is affiliated with the
trademark owner.
Second, the court indicates that evidence of intent does merit
weight as a factor in likelihood of confusion
IV. Reverse Domain Name Hijacking
Reverse domain name hijacking occurs when the trademark
holder attempts to get a domain name from a party where the
party has a legitimate competing claim and there is no
question of infringement or dilution.
As noted above, the domain name system is not a corollary to
the trademark system.
Nonetheless, some trademark holders behave as though it is.
They seem to believe that no one has the right to use a
domain name that might relate to a trademark or product
name held by the company.
Thus they sue legitimate domain name registrants to recover
the domain name even though there has clearly been no
infringement or dilution.
 pokey.org: The web site at this domain
name was run by a 12 year old boy
whose nickname was pokey.
The owner of the Pokey trademark
(Prema Toy Co.) sent a cease and desist
letter requesting that he turn over the
domain name.
After being inundated with bad publicity,
the company withdrew its request.
 veronica.org: Archie comics sent a cease and desist
letter to the domain name holder - a 1 year old girl
named Veronica whose parents had bought the name
for her when she was born.

The only material on the site was a picture of her in

the bathtub.

There was no chance for confusion and thus

possibility of infringement. Again after much
negative publicity the company withdrew its request.
 V. Free Speech, Product
Commentary and Parody
As with other forms of intellectual property,
trademark rights are subject to fair use

The combination of free speech and

product commentary cases suggest that
registration of the exact trademark as a
domain name is generally disallowed by
courts while registration of a name that
incorporates the trademark such as
"chasebanksucks.com" may be upheld.
Jews for Jesus v. Brodsky, 99
3 F.Supp. 282 (D. NJ. 1998))
The analysis in this case is very similar to Planned
Parenthood. Defendant owned the domain name
jewsforjesus.com which linked to a site that
disparaged Jews for Jesus and provided another link to
a pro-Judaism site.

Defendant admitted that his site was intended to

"intercept potential converts." Plaintiff, Jews for Jesus,
sued to prevent plaintiff from using the domain name.
A preliminary injunction was granted after the court
determined that the plaintiff would likely succeed on
the merits.
 The court analyzes trademark infringement, dilution and
unfair competition.

It claims that the plaintiff would be likely to succeed on

all three counts.
The case relies heavily on Planned Parenthood.

The Third Circuit then upheld without issuing an opinion.

Rather than viewing this as protected speech, the court
viewed the fact that the defendant registered the exact
name in order to discredit and disparage the trademark
owner as additional evidence of infringement.
 For more case reference:
http://cyber.law.harvard.edu/property
00/domain/CaseLinks.html