Category: Trademarks

February 8, 2006 Trademarks

No relief for prostitution website owner

Court wouldn’t enter injunction where plaintiff had “unclean hands”

Plaintiff First Global Communications operates a website called “World Sex Guide.” In 2000, First Global got a federal trademark registration for the name of its site, to be used in connection with “guides in the field of travel and entertainment.” Defendant Powertools Software was the web developer that First Global hired to build the site.

First Global sued Powertools in federal court in the state of Washington, claiming that Powertools had set up several other websites that were illegally trading on the goodwill associated with the World Sex Guide trademark, and diverting visitors from the site. This act of diverting traffic was especially egregious, First Global claimed, since most of the content on the website consists of “travel reports” submitted by the site’s members. First Global asked the court to enter a preliminary injunction, ordering Powertools to stop diverting traffic and to turn over several domain names.

As it turns out, First Global’s site is a bit more than merely a guide to “travel and entertainment.” In fact, the site consists largely of information about how and where to pick up prostitutes, as well as advice on avoiding law enforcement efforts. Because of its content, the court determined that the website served an illegal purpose.

In reaching this conclusion, the court rejected First Global’s argument that the site’s content does not illegally advance prostitution. It also rejected First Global’s argument under the First Amendment, holding that “speech that aids or abets criminal activity can be prohibited.”

The court determined that entering an injunction “would have the effect of encouraging illegal activity and would serve an unconscionable purpose.” Relying on the equitable maxim that “those who seek equitable relief must come to court with clean hands,” the court refused to enter a preliminary injunction against Powertools.

First Global Communications, Inc. v. Bond et al., 2006 WL 278566 (W.D. Wash., Feb. 3, 2006).

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December 19, 2005 Cybersquatting, Trademarks, Unfair Competition

Mall owner uses Section 43(a) of Lanham Act to successfully challenge domain name registrations

A few days before the public groundbreaking ceremony for the shopping mall that would be known as Provo Towne Centre, Plaintiff Rasmussen, unaffiliated with the mall, registered the domain name provotownecentre.com. Claiming an intent to start an online shopping mall, he also registered the domain names provotownecentre.biz and provotownecentre.net.

In an arbitration proceeding brought by the owner of the Provo Towne Center mall before the World Intellectual Property Organization (“WIPO”) pursuant to the Uniform Domain Name Dispute Resolution Policy, Rasmussen was found to have registered the domain names in bad faith. As an “apparent appeal” of the WIPO decision, Rasmussen filed suit in a Utah federal court against the mall owner, General Growth Properties, Inc.

General Growth filed several counterclaims against Rasmussen, alleging, among other things, violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a). It then moved for summary judgment on that claim. (It is interesting to note that although the case had at its root the use of a domain name, the opinion makes no mention of the Anticybersquatting Consumer Protection Act, another portion of the Lanham Act specifically drafted to address a cybersquatting case like this one.)

The court granted General Growth’s motion for summary judgment, and ordered the domain names transferred.

In its opinion, the court considered two elements to find that no genuine issue of material fact remained in regard to the alleged violation of Section 43(a). First, the court found that although General Growth’s mark “Provo Towne Centre” was merely descriptive of the services that General Growth provided, there was “exhaustive, unrebutted evidence” to show the term had acquired secondary meaning. Thus, it was protectable as a trademark.

Secondly, the court considered whether the use of the domain name would create a likelihood of confusion with General Growth’s “Provo Towne Centre” mark. It found that confusion would likely occur. The court determined that the marks were virtually identical, and that the bad faith intent found by the WIPO panel had been confirmed in the record before the court. It found the similarities between the parties’ “use and manner of marketing the services” was “problematic,” comparing Rasmussen’s intended online shopping mall with General Growth’s establishment of a successful site promoting the Provo Towne Centre mall. The court also found that the lack of sophistication in the affected consumers and the strength of the Provo Towne Centre mark weighed in favor of a finding of likelihood of confusion.

Accordingly, because General Growth had a protectable mark, and because Rasmussen’s use of the domain name would likely cause confusion, the court held that no reasonable jury would find in Rasmussen’s favor under Section 43(a).

Rasmussen v. General Growth Properties, Inc., 2005 WL 3334752 (D. Utah, December 7, 2005).

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August 29, 2005 Cybersquatting, Trademarks

Fallwell.com back in the hands of gripe site owner

Fourth Circuit reverses earlier decision of district court which had found in favor of TV evangelist Jerry Falwell.

Apellant Lamparello developed a website at www.fallwell.com that was critical of Reverend Jerry Falwell’s political views. The home page contained a disclaimer stating that the site was not affiliated with Reverend Falwell or his ministry, and provided a link to Reverend Falwell’s site. Lamparello never sold any goods or services from fallwell.com.

Reverend Falwell sent cease and desist letters to Lamparello in 2001 and 2003, demanding that Lamparello stop using fallwell.com. After receiving these letters, Lamparello filed a declaratory judgment action, asking the court to determine that the use of fallwell.com did not infringe on Reverend Falwell’s rights. Reverend Falwell countersued, claiming, among other things, trademark infringement and cybersquatting. The district court sided with Reverend Falwell, and ordered the domain name transferred. Lamparello sought review.

On appeal, the Fourth Circuit reversed. It held that the district court had wrongly found trademark infringement, as there was no likelihood of confusion between the respective sources of website content. The court emphasized that Lamparello’s website in no way resembled Falwell’s, and that Lamparello had created the site only as a forum for criticizing ideas. Most importantly, the parties did not offer similar goods or services. There had been no actual confusion, which was made clear by reports of certain visitors to Lamparello’s site who “quickly realized that Reverend Falwell was not the source of the content therein.”

The court also determined Reverend Falwell had failed to demonstarte that Lamparello had registered the domain name with a bad faith intent to profit. Such a showing is necessary to a claimant’s success under the ACPA, 15 U.S.C. §1125(d). Of particular importance was the fact that Lamparello had used the domain name “for purposes of comment, [and] criticism,” such use constituting a “bona fide noncommercial or fair use” under the ACPA.

The balance of the various “bad faith factors” found at 15 U.S.C. §1125(d)(1)(B)(i) also weighed in favor of Lamparello. Specifically, as noted in the portion of the opinion dealing with trademark infringement, the court found that there was no likelihood of confusion as to the source or affiliation of the website content. Further, Lamparello had never attempted to sell, to Reverend Falwell or anyone else, the rights in the fallwell.com domain name, nor had he engaged in the practice of registering numerous domain names.

The court’s opinion addressed several other issues raised by the parties not necessary for the final determination. For example, the opinion includes a thorough analysis of the initial interest confusion doctrine. Such an analysis was not necessary, as the Fourth Circuit has never adopted the initial interest confusion doctrine. In any event, the case is an interesting and thought-provoking read on a modern issue of trademark law.

For a more thorough analysis, be sure read Professor Eric Goldman’s remarks over at his Technology & Marketing Law Blog.

See also Mark Partridge’s post on the case at his Guiding Rights Blog.

Lamparello v. Falwell et al., No. 04-2011 (4th Cir., August 24, 2005).

August 18, 2005 Cybersquatting, Trademarks

Trademark on Supplemental Register no help in domain name proceeding

A WIPO administrative panel recently denied a request to transfer the domain name oilchanger.com, finding that the complainant had failed to prove the essential element of enforceable trademark rights in the domain name.

Oil Changer, Inc., operator of numerous oil changing facilities in California, claimed that its registration of the marks OIL CHANGER and OIL CHANGERS on the Supplemental Register with the United States Patent and Trademark Office served as prima facie evidence of its ownership and the validity of the marks. However, the panel refused to recognize any such presumption for marks on the Supplemental Register.

The panel determined that registration on the Supplemental Register was an admission that the marks were not inherently distinctive at the time the applications for them were filed. Further, the panel determined that registration on the Supplemental Register was evidence that there were no common law rights at the time of the applications. Finally, there was insufficient evidence in the record to show that the complainant’s marks had acquired secondary meaning.

Oil Changer, Inc. v. Name Admin., Inc., Case No. D2005-0530 (July 28, 2005).

August 10, 2005 Trademarks

Court zaps ISP’s request to prohibit TV network’s use of CURRENT trademark

Injunctive relief denied in trademark suit against Current TV, as court finds broadband services and television network services “not related or only tangentially related.”

Plaintiff Current Communications provides broadband over power line (BPL) services to about 2,100 customers in the Cincinnati, Ohio area. It owns several trademarks used in connection with these services. Defendant Current Media operates the new television network Current TV, which seeks to “democratize” television by airing content that users have submitted through the Internet.

Current Communications sued Current Media for, among other things, trademark infringement, and asked the court to prohibit Current Media from using the word “Current” in connection with its newly-launched network. The court denied the plaintiff’s request, and refused to enter an injunction.

The court went through a thorough analysis of the “likelihood of confusion” factors to determine that injunctive relief would not be proper. Current Communications had not shown that it would likely succeed on the merits of its trademark infringement claim.

One of the likelihood of confusion factors was the extent to which the services provided by the plaintiff and defendant were related. The court concluded that the parties are not direct competitors, “[n]or is it likely that they will become direct competitors.” Accordingly, the court concluded that there was no likelihood of confusion as to the source of the parties’ services, and injunctive relief would not be proper.

Current Comm. Group, LLC v. Current Media, LLC, 2005 WL 1847215 (S.D.Ohio, Aug. 2, 2005).

July 27, 2005 Cybersquatting, Trademarks

Evidence of intentional copying of domain name gives rise to presumption of trademark distinctiveness

Plaintiff Fryer sued his former employee, Bernie Brown (no relation to the author of this weblog), after Brown set up a website for his new competing auto upholstery business. Since 2000, Fryer had maintained the website located at autoupholsterykits.com. In 2002, Brown set up his website at autoupholsterykit.com.

Fryer’s suit alleged, among other things, violation of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §1125(d). In a motion for summary judgment, Brown argued that the domain name autoupholsterykits.com was a generic term, and thus not subject to trademark protection. He argued in the alternative that if it was not a generic term, it was at least a descriptive term without secondary meaning.

The court denied the motion for summary judgment as to the ACPA claim, holding that the domain name was a distinctive trademark and subject to protection against infringement. The court did some interesting maneuvering, however, to reach this conclusion. In essence, it avoided the real question of whether the domain name may actually be a generic term or merely describe the goods provided. Instead, the court looked to evidence of intentional copying of the plaintiff’s domain name by the defendant.

In so many words, the court conceded that an analysis of the domain name vis-à-vis the goods provided in connection therewith would be like stepping into a quagmire: “The distinctions between generic and descriptive and descriptive and suggestive are often illusory. Accordingly, the Court relies upon the link between the mark’s secondary meaning and the likelihood of confusion as critical.”

So the court analyzed the relationship of intentional copying of plaintiff’s domain name to both the likelihood of confusion and secondary meaning. It noted that “[w]hen intentional copying is at issue, the court may presume the likelihood of confusion.” Further, the court noted that “evidence of deliberate copying establishes a prima facie case of secondary meaning.”

Accordingly, the court denied summary judgment where there were factual issues relating to whether the defendant had intentionally copied the domain name.

Fryer v. Brown, 2005 WL 1677940 (W.D.Wash., Jul 15, 2005).

July 22, 2005 Trademarks

Has Microsoft forgotten to file a trademark application for the name of its new operating system?

Microsoft has announced that the name of its new operating system coming out next year will be called “Vista.” As of the date of this posting, a search of the records of the United States Patent and Trademark Office reveals no applications on file for the mark VISTA owned by Microsoft. Is this an oversight or merely a consequence of the several day backlog for getting information about new applications online? Perhaps it’s just a load date issue.

Further: More observations on this subject over at Infamy or Praise.

And further: Dennis Crouch over at Patently-O has a this post on the delay one finds in the world of patent applications.

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