Note: This is a draft of an article which has now been published as 15 John Marshall Journal of Computer & Information Law 437 (1997). Copyright © 1997 Oppedahl & Larson.
Table of contents:
In three short years the Internet domain name has gone from an intellectual curiosity to one of the most hotly contested forms of intellectual property. While thousands of domain names have been fought over, only a tiny handful of court opinions have been written. There is as yet no well-developed body of law regarding remedies in domain name cases. This article offers a framework for analysis and proposes an answer to a central question:
Under what circumstances ought a court to take away a domain name from one party and give it to another?
The significance of an Internet domain name derives fundamentally from the significance of the Internet itself. The Internet is the single most pervasive and potent agent of change in modern society. It has unified the email systems of all the individuals, companies and organizations in the world: any two persons, anywhere on the planet, may communicate via email, regardless of the types of computers and software that they use.(2) It has made possible the World Wide Web, an interlinked structure which now makes a significant fraction of the body of human knowledge available to anyone with an Internet connection and a web browser. The Web allows anyone to be an instant publisher, and the publication is not only instant but worldwide. The World Wide Web has enabled a variety of meta-applications such as Web search engines (e.g. Alta Vista, Lycos, and Yahoo!(3)) which permit searching the Web quickly and thoroughly. People sharing any interest, no matter now obscure, can learn of each others' existence and devote arbitrarily large amounts of time and energy to that interest, whatever it may be.
From its origins the Internet has been consensus-driven and uncontrolled by any government or central authority, and in this way differs from other agents of change (telephone, broadcast radio, broadcast television) which were, early on, taken completely under the control of regulators and governments. Even the terminology of the Internet's organization shows its consensus-based nature: where other media are defined by "standards"(4) and "specifications", the interaction of elements of the Internet is set forth by "Requests for Comment" or RFCs. An author, any author, may publish an RFC for consideration by the Internet community. If a consensus develops around a particular RFC then it may come to be adopted and followed by the entirety of the Internet, at which point it enjoys the status that a "standard" or "specification" has in other industries.(5) There are thousands of RFCs, and they define, for example, how computer systems exchange email, and how computer systems are to exchange information on how best to route data packets to each other. Some commenters refer to the Internet as "anarchic", a term which is meant to convey the absence of central planning and the inability of any government to control it, but of course in an important sense the Internet is not anarchic at all: it functions only because every computer connected to it behaves in precisely the manner set forth in myriad RFCs, not deviating an iota from the prescribed behavior.
All interaction via the World-Wide Web relies upon URLs (uniform resource locators), each of which is comprised of a protocol identifier, a domain name defining a physical host, and optional location information within the host.(6) A typical URL is http://www.patents.com/nsi/iip.htm, which contains the domain name patents.com and which would be meaningless if the patents.com domain name did did not function. All email interaction relies upon email addresses, each of which likewise contains a domain name without which the email address would not function.
In principle a URL or email address could be an arbitrary string of characters, no easier to remember than a street address, a numeric telephone number, a geographic latitude or longitude, or the internal hardware (MAC) address of one's Ethernet card. And indeed some URLs and email addresses are largely or wholly arbitrary.(7) But for many purposes it is desirable that a URL or email address be easily remembered. Notably, many television advertisements end with a web address which a viewer might use to obtain more information about the goods or services touted in the advertisement. The web address serves this purpose well only if it is easily remembered, which necessarily requires that the domain name which forms part or all of the web address be likewise easily remembered.
A series of rather unfortunate historical accidents have led to a present day in which many large companies perceive it to be extremely important not only that a domain name be easily remembered, but also that it be easily guessed, which is quite a different thing. A company named "Brown Enterprises" may wish it could have the domain name "brown.com" since that might be a first guess made by a would-be visitor to the web site of Brown Enterprises. This perception has led to bitter legal disputes, for example the recent case in which Juno Electric, a maker of light fixtures, took steps to attempt to deprive Juno Online, an email service provider, of the domain name juno.com. Had the steps initiated by Juno Electric reached their conclusion, some seven hundred thousand email customers of Juno Online would have lost their ability to receive email. Juno Electric presumably wanted to possess the domain name so that would-be visitors to its web site could guess the address www.juno.com and thereby reach the web site.
Commenters have suggested that the present-day emphasis on domain names is inappropriate and that in coming years search engines and other metalayers of Internet interaction will develop that make domain names unimportant (and thus, not worth fighting over).(8) The views of such commenters cannot be ignored, considering generally the fast pace of change within the Internet, and considering as a particular example the web search engines which now play a crucial role in the Web and which did not even exist three years ago. The fact remains, however, that at the present time domain names are hotly contested; the courts and the legal profession have no choice but to attempt to understand the purpose and function of domain names, and to try to develop sensible principles according to which domain name disputes will be decided and resolved. In particular, it is necessary to develop a law of remedies for domain names.
The domain names disputes that are publicly known have been listed and summarized by several commenters.(9) Several distinctions may be drawn among the disputes.
Uniqueness. Some domain names are identical to unique names. Panavision and Actmedia, to name two examples, are trademarks each of which is held by only one company worldwide. The company owning the trademark Panavision found that someone else had registered the domain name panavision.com and had no difficulty convincing a US District Court to order that it be given the domain name; the same occurred in the case of actmedia.com (But see a note, below, about the Actmedia case). Other domain names, for example perfection.com and clue.com, are identical to words in common use in the English language.
Presence or absence of commercial activity. Some domain names are used in commercial activity, while others are not. This is significant because many commonly asserted causes of action (e.g. the United States' Lanham Act, the United States' Federal Trademark Dilution Act) expressly direct themselves only to commercial activity.
Presence or absence of allegedly offending conduct above and beyond mere possession of the domain name itself. As will be discussed in more detail below, in a substantial fraction of domain name disputes the plaintiff presents the case as if it were a traditional trademark case with goods or services being marketed in a way that allegedly gives rise to confusion, while the reality is that no goods or services are involved, let alone confusion. In such disputes it becomes clear that the complaint, reduced to its essence, is "we wish we had registered the domain name first, and we really want to have the domain name now". The past conduct of the defendant domain name owner is generally irrelevant in such cases, and in some of them there has been no conduct whatsoever other than the mere registration of a domain name.
Presence or absence of a legitimate basis for use of the domain name. Some domain names are identical to words or phrases which anyone could plausibly use. The domain name "homes.com" could be plausibly used by anyone doing anything involving homes, from real estate brokerage to house construction. The domain name roadrunner.com could be plausibly used by anyone located in New Mexico, where the state bird is the roadrunner and dozens of companies are named Roadrunner.(10) In contrast, it is difficult to imagine who, other than the publisher of The New York Times, could offer an innocent reason to use newyorktimes.com.
Attempts have been made to analogize domain names to other things. Some commenters have stated that domain names are of no greater legal significance than street addresses, urging that since people don't litigate over street addresses, courts should ignore demands regarding domain names. This analogy fails for the simple reason that one generally does not choose one's street address, while every domain name is expressly selected by its owner.(11)
It is somewhat instructive to turn to the body of cases relating to North American toll-free 800 telephone numbers, in which the letters on the telephone dial give rise to easily remembered sequences of digits. But the comparison only goes so far, in that a telephone customer might obtain a telephone number without knowing that it "spells" some word or phrase that is important to someone else. In contrast a domain name's spelling is evident from the domain name itself. A party obtaining the telephone number 1-800-698-4637 may truly be unaware that it spells 1-800-NYTIMES, but the same may not be plausibly said of someone who registers the domain name nytimes.com.(12)
In a recent interesting case, an enterprising party obtained a telephone number that happened to spell 800-H0LIDAY, notable because the second digit after "800" was a zero rather than the digit "6" corresponding to the letter "O". (The number 800-HOLIDAY was owned by the motel chain Holiday Inns Inc., plaintiff in the action.) The practical result was that this party occasionally received calls in which people intended to dial 800-HOLIDAY (all letters) but who mistakenly dialed the digit zero instead of a 6, and offered to book hotel rooms for such people. The district court ruled in favor of Holiday Inns, Inc. On appeal, the Sixth Circuit Court of Appeals noted that this party did not overtly trade on the name "Holiday" and took pains to identify itself when answering the telephone, thus negating any consumer confusion that might have arisen. The Court of Appeals felt that no remedy was needed and reversed, deciding the case against the plaintiff.(13)
A strong analogy may be drawn between domain names and stock exchange ticker symbols. With ticker symbols (which are by their nature limited to only a few characters) it is unsurprising that a company might sometimes find its desired ticker symbol already to have been taken by someone else. As with domain names, ticker symbols are allocated in the first instance on a first- come, first-served basis. In what is perhaps the only published case involving ticker symbols, a company MDT Corp., plaintiff, wanted the ticker symbol MDT, only to find that it was already in use by the company Medtronic Inc.. The court ruled against the plaintiff, finding no remedy to be necessary. Notably, the ticker symbol had been in use for some 12 years, a factor the court apparently found relevant in view of MDT Corp's tardy presentation of a claim to the ticker symbol.(14)
It is suggested that while attempts to analogize domain names to other property rights may yield insights, the legal community (and the Internet community) should be prepared for the possibility that domain names may turn out to be sui generis.
One question that arises, albeit only briefly, is whether a domain name is property. One factor suggesting that the answer is in the affirmative is that domain names issued by most registration authorities (that of Israel being a notable exception(15)) are capable of being bought and sold.
It is of some interest that Network Solutions, Inc. ("NSI"), the registration authority administering COM and other top-level domains until 1998, has taken the position that domain names are property. In an attempt to use federal interpleader(16) to escape judicial review of its actions regarding the domain name clue.com, NSI stated the following in its interpleader complaint:
22. Network Solutions, as an impartial and unbiased stakeholder, has no interest in the property in dispute and is prepared to assign the registration and use of the "CLUE.COM" domain name as determined by the Court.(17)
Interpleader is available only with respect to property, and thus NSI had to take the position that the clue.com domain name was property so as to attempt to avail itself of interpleader.
Perhaps the most telling indications that domain names may be property are simply
If one reaches an affirmative answer to the question whether domain names are property, a related question is, who owns them? Does the domain name registration authority own the domain names, in which case a domain name "owner" merely has some entitlement to use its domain name, but does not actually "own" it? Or does the party who has registered the domain name, and who uses it, the legal owner of the domain name? Perhaps the question is merely one of semantics: perhaps it is irrelevant whether we say that what people are fighting over is the domain name itself, or as NSI characterized it, "the registration and use of" the domain name. Parties to domain name lawsuits know perfectly well what it is that they want, and in most cases it is the domain name. For purposes of this article we will defer the question of whether domain names are property, but will simply employ the shorthand that the registrant is the "domain name owner," and that what is being fought over is "the domain name".
Trademark owners have sought a variety of remedies against domain name owners. Most prayers for relief have fallen into two general categories: cease-and-desist relief and transfer-the-domain- name relief. Here is a typical prayer for relief in an actual domain name lawsuit:
Wherefore, plaintiff respectfully prays:
(a) From using the GLAD trademark, any colorable imitation of the GLAD trademark, and any thing or mark confusingly similar thereto or likely to cause dilution of the distinctiveness of the GLAD trademark or injury to plaintiff's business reputation;
(b) From representing by any means whatsoever, directly or indirectly, that defendants, any products or services offered by defendants including, without limitation, telecommunications services on the Internet, are associated in any way with plaintiff or its products or services, and from otherwise taking any other action likely to cause confusion, mistake or deception on the part of purchasers or consumers; and
(c) From doing any other acts or things calculated or likely to cause confusion or mistake in the mind of the public or to lead purchasers or consumers into the belief that defendants' products or services come from or are the products or services of plaintiff, or are somehow sponsored or underwritten by, or affiliated with, plaintiff, and from otherwise unfairly competing with plaintiff or misappropriating that which rightfully belongs to plaintiff.
The prayer for relief, up to paragraph 7, reads like any boilerplate trademark prayer for relief, seeking essentially cease-and-desist relief. Paragraph 7 differs from trademark boilerplate in that it asks that the court "direct" that the domain name be transferred "from defendants to plaintiff". It is this "transfer-of-domain-name" relief that is the focus of this article.
It is extremely interesting to note how different a domain name lawsuit (such as that from which the above except was taken) can be from a traditional trademark lawsuit. In a traditional trademark lawsuit the defendant has sold goods or services, or has offered to sell goods or services, and it is the sale or offer that is alleged to have given rise to infringement. The complaint from which the above excerpt was taken alleged no sale of goods or services, nor any offer to sell goods or services. No commercial activity of any kind was alleged in the complaint. The only conduct complained of was the mere registration of the domain name glad.com, without more. And indeed at the time the complaint was filed, so far as the author is aware the owner of the glad.com domain name had done nothing with it whatsoever other than register it.
As it happens, the glad.com lawsuit settled, so no judicial factfinding occurred. However, in light of suggestions made later in this paper, it is also interesting to note that First Brands was by no means the only company that might have felt it was entitled to the use of the word "glad". In the United States alone, for example, there are over two hundred businesses called "Glad".(19) Domain names ending in ".com" are worldwide, so it is pertinent to look outside the United States for companies that might feel entitled to the use of the word "glad". Procter & Gamble Limited has a British trademark(20) for "glad" for detergents. International Business Machines Corp. has a French trademark(21) for "glad" for electrical apparatus. L'Oréal S.A. has a Swiss trademark(22) for "glad" for cosmetic products. Any rule of law relating to remedies in domain name cases must necessarily take into account a world in which there is more than one company using a particular name.
Every lawsuit ever filed relating to domain names has based its claims, at least in part, on trademark law. Thus it is important to keep clearly in mind the traditional trademark remedies.
When a trademark owner wins a trademark infringement case, the most commonly granted remedy is an injunction, that is, an order that the infringer must cease and desist from particular conduct.(23) The simple reason for this is that if the conduct is causing ongoing harm, no award of money damages would be adequate to compensate the plaintiff; only an injunction will provide suitable relief.(24)
In relatively rare cases (those involving counterfeiting) the court also orders impoundment and destruction of goods.(25) It bears noting that the trademark owner doesn't get to keep the infringer's goods, but is merely entitled to destroy them.(26)
Finally it bears noting that awards of money damages are exceedingly rare in trademark cases. One treatise says that "it is a realistic and cautious view" to say that "obtaining a strongly worded injunction should be viewed as a 'win' in a trademark infringement case and that recovery of a monetary award of any kind is problematical."(27)
Traditional trademark cases typically involve sales of allegedly infringing goods or services. Yet in many domain-name-related cases, no allegation is made that any goods or services are being sold or offered for sale. Indeed a substantial number of cases have been brought in which the only conduct complained of is that the domain name owner registered the domain name and has refused to give it to the plaintiff. Thus it appears that in developing a law of domain name remedies, it is important to distinguish between:
The closely related, but distinct, legal theory alleged in nearly all domain name lawsuits is dilution. While many states have had anti-dilution laws for many years, a great shift in American trademark law occurred in January of 1996 when Congress enacted a federal anti-dilution law.(28) This new law provides an injunctive remedy for any conduct that "dilutes" a trademark, regardless of whether the conduct gives rise to customer confusion, the only requirement for this relief being that the trademark is "famous". One's first reaction, upon learning of such a law, is to attempt to locate Congress's definition of "famous" in the Act, since this determines who the eligible plaintiffs are for this extraordinarily powerful relief. It is thus rather striking to find that Congress did not see fit to define "famous", but instead did no more than provide a nonbinding list of eight factors which courts are free to apply or not as they see fit in their efforts to determine whether a trademark is "famous".
Sen. Patrick Leahy said this about the Act:
It is my hope that this antidilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others.(29)
Given the absence of any definition of "famous," and Sen. Leahy's comments, it is perhaps unsurprising to observe that every single subsequent US lawsuit by a trademark owner relating to a domain name has asserted the Federal Trademark Dilution Act. It is likewise unsurprising that each such lawsuit has been accompanied by a brief quoting the statement by Sen. Leahy.
The trademark plaintiff drafting a domain name complaint need not hesitate in inserting a dilution claim, for the simple reason that there is no way to rule out the possibility, however remote, that the court might find the trademark to be "famous". The dilution claim offers the great advantage that the plaintiff need not prove confusion as in a traditional trademark claim. There is, however, one salient drawback to the dilution claim, namely that the federal anti- dilution act provides an exhaustive list of available remedies(30), and transfer of a domain name is not among them. The chief remedy is a simple injunction,(31) and in exceptional cases an award of money damages.(32) Thus, for the trademark plaintiff whose goal is to possess a domain name, the Federal Trademark Dilution Act is (or should be) of little or no help other than as a make-weight together with other theories of relief.
No discussion of domain name remedies would be complete without a mention of the peculiar trademark domain name policy of Network Solutions, Inc, (NSI) the temporary administrator of most Internet domain names (including all .com domains) under a five-year government contract that expires in 1998. Under NSI's policy,(33) a trademark owner can obtain preliminary relief without the bother of showing any likelihood of success on the merits nor any irreparable harm. All the trademark owner need do is write two letters, one to the domain name owner and a second one to NSI, and NSI will deactivate the domain name. Similar relief from an ordinary court would require the above-mentioned showings of likelihood of success and irreparable harm, and would also require the posting of a bond to protect the domain name owner in the event the relief was improvidently granted.
NSI's policy has come under attack from all sides. The Domain Name Rights Coalition, which speaks for domain name owners, says NSI's policy is "unfair", and that it "favors large companies, even when their claims may be unsustainable."(34) A recent article in Wired magazine says:
Network Solutions' policy shows a fundamental misunderstanding of trademark law and offers a novel interpretation of it: the trademark holder is always right; domain-name holders must prove their innocence. And the only place to do that is in court.(35)
The Internet subcommittee of the International Trademark Association, which represents trademark owners, recently issued a paper which "proposes that the current NSI Dispute Policy be recognized as a failure and eliminated, [and] that domain name disputes be left to the courts."(36)
For the trademark owner that happens to have a goal of gaining possession of a domain name, the NSI policy is not fully satisfactory, for the simple reason that NSI does not transfer the domain name to the trademark owner. Nonetheless, the NSI policy promotes that goal, because in some cases getting a domain name placed "on hold" under the policy will cause the domain name owner to be put out of business, which then permits the trademark owner to apply to NSI for the domain name and thus to obtain it.
A most unfortunate direct effect of the NSI policy has been to make trademark owners (and, perhaps, courts) think that somehow the possession of a trademark registration, without more, entitles the trademark owner to a remedy. Many trademark owners thus think of the NSI policy as a perfectly proper weapon to use in cases where an ordinary court would not rule in their favor.
A recent sequence of events underscores the intellectual poverty of the NSI policy. In 1989 a company called Publishing Perfection was incorporated and began doing business under that name. In November of 1994 the company registered the domain name perfection.com. The word "perfection" is, to state the obvious, a common English word and it is difficult to imagine circumstances in which one company would have to answer to another for the use of such a domain name (absent, of course, traditional trademark confusion).
Everything changed in 1995 when NSI began following its now-notorious trademark domain name policy. Hasbro, a maker of children's games, noted that its "perfection" trademark for children's games was text-identical to the domain name owned by Publishing Perfection, and in mid-1996 asked NSI to commence a challenge proceeding against Publishing Perfection. NSI did so(37) and scheduled a date for the domain name to be cut off. As it happens, the domain name owner and Hasbro have agreed to a series of extensions of time and the domain name has not yet been cut off, although at any particular moment there has always been some date certain in the future at which the domain name would be cut off.
In late 1996 the L'Oréal cosmetics company noted that its "perfection" trademark for cosmetics was text-identical to the domain name owned by Publishing Perfection, and in December 1996 asked NSI to commence a challenge proceeding. L'Oréal was apparently unaware that Hasbro had, just months earlier, made a similar request of NSI.
To the credit of L'Oréal and the domain name owner, they managed to reach a private resolution that avoided the spectacle of NSI proceeding with two different challenge proceedings with two different companies that presumably had comparable claims to the domain name. But the sequence of events illustrates one of the primary flaws in the NSI policy, namely that it fails completely to take account of the possibility that two or more parties may coexist in the use of a trademark, and that it might easily be the case that no one of them is entitled to take the domain name from any of the others.
In traditional goods-and-services trademark cases, the usual remedy (if any) is cease-and-desist relief relating to the disputed goods and services. But it is apparent that many domain name cases are different from traditional trademark cases. In three recently reported cases, there were no goods or services, and indeed no conduct other than registration of the domain name, yet the court ordered that the domain name be transferred from the domain name owner to the trademark owner. Let us consider each case in turn.
ACTMEDIA.COM.(38)(Much of what follows is superseded by newly discovered information about the Acmedia "opinion" as detailed in a note, below.) A company called Actmedia, Inc., which owns a US trademark registration for ACTMEDIA,(39) went to Network Solutions, Inc. to sign up for the domain name actmedia.com, and found that a company called Active Media, Int'l Inc. had already registered it. Actmedia did what many companies do these days when they find that the desired domain name is already taken -- they sued the domain name owner. In a very short statement of findings that does little to guide practitioners, the court found the domain name owner's actions to constitute trademark infringement and ordered that the domain name be given over to the plaintiff. The court was silent on the source of its authority to order that the domain name be transferred.
Not only did the Actmedia opinion omit to mention the basis for its remedy, the opinion also based its conclusions on a misunderstanding about how the Internet works. The court said that the "[d]efendant's reservation of [actmedia.com] has precluded Plaintiff from reserving an Internet domain name incorporating its registered Mark." In reality, the plaintiff was not so precluded. First, there are over 180 top-level domains in the Internet, of which "com" is only one. The trademark owner could have registered actmedia.org or a domain name in the ".us" domain, either of which would have been "an Internet domain name incorporating its registered mark." Second, even within the "com" domain it would have been quite easy for the trademark owner to reserve an Internet domain name incorporating its registered Mark, for example actmediainc.com or actmedia-inc.com. The Actmedia judgment was not appealed, so one can only speculate as to whether an appellate court would have attached any significance to this particular misunderstanding.
Probably what the court meant to say was something rather different, namely that "[d]efendant's reservation of [actmedia.com] has precluded Plaintiff from reserving the particular domain name that is made by adding '.com' to the company name of 'actmedia'". In other words, probably the court assumed, but did not bother to say openly, that the only top-level domain suitable for the plaintiff's use was the ".com" domain, and that the the only domain name acceptable to the plaintiff was the particular ".com" domain constructed by adding ".com" to "actmedia".
As it happens, "actmedia" is apparently a unique mark; a search of online trademark databases for many countries revealed no registrations owned by anyone other than the plaintiff. That, together with the apparent overlap of lines of business (media presumably overlapping with media) may explain why the court concluded that "[d]efendants' commercial activities" were likely to cause confusion, and why the court found the Illinois Anti-Dilution Act to have been violated. It may also explain why the Court apparently felt justified not only in granting the usual trademark infringement relief (enjoining further conduct) but in additionally ordering that the actmedia.com domain name be transferred to the plaintiff.
INTERMATIC.COM.(40) Intermatic Inc., the plaintiff, was the owner of a trademark registration for "intermatic"(41) for a variety of goods relating to its main line of business: timers that turn electrical equipment on and off at various times of day. Intermatic Inc. tried to register the domain name intermatic.com and found that it had been registered by Mr. Toeppen. Indeed it found that Mr. Toeppen had registered about 240 domain names, including intermatic.com,deltaairlines.com, britishairways.com, crateandbarrell.com, ramadainn.com, eddiebauer.com, greatamerica.com, neiman-marcus.com, northwestairlines.com, ussteel.com, and unionpacific.com. The trademark owner sued Mr. Toeppen, alleging trademark infringement, trademark dilution, and related causes of action.
The Intermatic court wrote a thirty-two page opinion which opened by saying "Welcome to cyberspace!" One of the problems faced by the court was the apparent inapplicability of substantive law to the conduct. Mr. Toeppen was not, it seems, engaged in any overt commercial activity with the contested domain name intermatic.com. Visitors to the intermatic.com web site were greeted with a decidedly noncommercial street map of the greater Champaign-Urbana area. Yet the Federal Trademark Dilution Act explicitly limits itself to commercial activity, and thus on its own terms did not provide a remedy to the trademark owner. The remainder of the Lanham Act likewise limits itself to fact patterns in which "goods or services" are changing hands "in commerce", and Mr. Toeppen was apparently intentionally avoiding the provision of goods or services and anything resembling commerce.
Trademark plaintiffs, when faced with a domain name owner defendant that is not engaged in commerce, have strained to find something to fill the place of the traditional goods and services of a traditional trademark lawsuit. One approach is to urge (as the Intermatic plaintiff apparently did) that because the three letters com are taken from the word commercial, then the use of a domain name ending in com is necessarily commercial (and thus counts as commercial activity even in the absence of any other conduct). And indeed the designers of the Internet offer support for this view in the official document RFC 1591, which says in pertinent part: "This domain [COM] is intended for commercial entities, that is companies." Yet the Intermatic court said, instead, "The use of the first level domain designation '.com' does not in and of itself constitute a commercial use."
In the face of all this, the court in the intermatic.com case might have chosen to write an opinion stating that registration of an Internet domain name, without more, can nonetheless count as trademark infringement. If it had done so, this would have been new law and perhaps bad law. Instead, the court strained to find something commercial in Toeppen's conduct, and it found two items. First, Toeppen had, for a brief time, used the mark "Intermatic" in connection with the sale of a computer software program. (The court says nothing that would permit the reader to discern whether the "software program" was in an area of goods or services likely to be confused with those of the trademark owner.) But this use had ceased prior to the effective date of the Federal Trademark Dilution Act, the court noted, and thus it was with some apparent relief that the court was able to point to a second indicium of commercial activity. "At oral argument Toeppen's counsel candidly conceded that one of Toeppen's intended uses for registering the Intermatic name was to eventually sell it back to Intermatic or to some other party." The court went on to say that "Toeppen's desire to resell the domain name is sufficient to meet the 'commercial use' requirement of the Lanham Act."
The intermatic.com court, to its credit, did understand domain names better than the actmedia.com court. The plaintiff was "technically capable," the Court explained, "of establishing its web page at another domain name including, for example, intermatic-inc.com and is technically capable of establishing at any available domain name a web page featuring the INTERMATIC mark and any other Internet-related marketing or business information." Yet even the intermatic.com court seemed to overlook that com is but one of several top-level domain names in which the trademark owner might obtain a domain name, stating incorrectly that "[t]he practical effect of Toeppen's conduct is to enjoin Intermatic from using its trademark as its domain name on the Internet." In reality, Intermatic could have registered intermatic.org or a domain name in the ".us" domain, either of which would have enabled the trademark owner to "us[e] its trademark as its domain name on the Internet."
Having found Toeppen's conduct to be "in commerce" (a finding which the court felt followed automatically from the worldwide nature of the Internet) and "commercial," having found violation of the Illinois state anti-dilution law, and having found that "intermatic" is a unique trademark, the court ordered that the intermatic.com domain name be given over to the trademark owner. The court did not explain how the transfer-of-domain-name relief followed from the Illinois state anti-dilution law.
PANAVISION.COM.(42) In what is by now a familiar sequence of events, the plaintiff Panavision International L.P. went to register the domain name panavision.com, only to find that it had been previously registered by someone else. Panavision was armed by a registered trademark for "panavision"(43) and filed suit, alleging federal and California state dilution.
The court found that "panavision" was "famous" under the Federal Trademark Dilution Act. In support of this finding, the court noted that the word "panavision" was not "found in the dictionary" and had enjoyed a "long period of exclusive use" by the plaintiff. Indeed a search of online trademark databases for many countries shows no trademark registrations other than those to the plaintiff. As with Actmedia and Intermatic, there did not seem to be a plurality of other companies with comparable claims to the domain name.
The Panavision court, like the Intermatic court, next faced the difficulty that the anti-dilution laws expressly limit themselves to "commercial" activity, and that Mr. Toeppen had taken pains not to do anything that was commercial (in the ordinary sense of the word) with the domain name. The Panavision court openly recognized this problem, noting that "[r]egistration of a trade[mark] as a domain name, without more, is not a commercial use of the trademark and therefore is not within the prohibitions of the Act." Like the Intermatic court, the Panavision court supplied the missing commercial activity by construing Mr. Toeppen's conduct so as to trigger the anti-dilution laws.
Toeppen's "business" is to register trademarks as domain names and then to sell the domain names to the trademarks' owners. Toeppen's business is evident from his conduct with regard to Panavision and his conduct in registering the domain names of many other companies.
The court listed some of the "many other companies" and the corresponding domain names registered by Mr. Toeppen: aircanada.com, anaheimstadium.com, camdenyards.com, lufthansa.com, and yankeestadium.com.
As did the Actmedia and Intermatic courts, the Panavision court appeared to misunderstand the Internet. The court stated that "Toeppen was able ... to eliminate the capacity of the Panavision marks to identify and distinguish Panavision's goods and services on the Internet." The court further found that "Toeppen's conduct ... prevented Panavision from using its marks in a new and important business medium." Of course, Panavision could have used its marks in many ways other than as a domain name, for example in the text of a web site. In this way Panavision could quite well have "identif[ied] and distinguish[ed] Panavision's goods and services on the Internet. Panavision could also have registered panavision.org or a domain name in the .us domain.
Notwithstanding any factual misunderstandings, having found "commercial" activity, and having found the mark to be "famous", then as in the Actmedia and Intermatic cases, the court unhesitatingly found for the plaintiff. But as in the Actmedia and Intermatic cases, there was a difficulty that the court declined to address squarely -- the pesky issue that the dilution law on its own terms only permits the court to award cease-and-desist relief. The court said nothing to explain where a basis could be found for the extrastatutory relief of an ordered transfer of a domain name.
The reported cases are extraordinarily fact-specific. Perhaps most importantly, the Intermatic and Panavision cases appear to have involved judges who disapproved generally of Mr. Toeppen's conduct. Each judge felt compelled to list numerous other domain names held by Mr. Toeppen as part of showing a pattern of behavior.(44)
Each case also involved what appeared to be a truly unique mark. Each of the three marks is coined. None of the three marks can be found in a dictionary. Searches of online databases show but a single trademark owner for the mark, in each case the plaintiff in the action. Searches of directories of corporations show few or no other companies named for the mark.
In contrast, consider other domain name cases in which domain name owners, in the face of challenges by trademark owners, have been in and out of court and have retained their domain names. These cases include roadrunner.com,(45) dci.com,(46) ty.com,(47) clue.com,(48) disc.com,(49)regis.com,(50) and juno.com.(51) The cases have many factors in common. None of the domain names corresponds to a unique mark: roadrunner, clue, disc, regis, and juno are common dictionary words, ty is a person's name, and dci is an acronym for a three-word company name. In each case, there are dozens or even hundreds of other companies that use the same name or the same trademark, and thus the trademark owner presenting the trademark challenge is but one of many possible claimants to the use of the domain name.
The Panavision court acknowledged that some trademarks are held by multiple parties: "[t]raditionally, trademark law has permitted multiple parties to use the same mark for different classes of goods or services." Where a domain name in dispute corresponds to a trademark that is held by multiple parties, it seems possible that the court would conclude that in the absence of confusion, there is no reason to disturb the ownership of the domain name.
It will be recalled that this article poses the question:
Under what circumstances ought a court to take away a domain name from one party and give it to another?
Any effort to answer that question must necessarily attempt to harmonize with the already- decided cases, as well as to generate fair and just results going forward. The following table is offered to attempt to categorize the various types of domain name disputes that have arisen and that are likely to arise in future.
| Factor I |
Factor II |
Factor III |
Factor IV |
Factor V |
||
| Category |
Is trademark coined, not in the dictionary, and unique? |
Has domain name owner registered numerous domain names corresponding to coined, unique trademarks? |
Is domain name owner doing anything at all with the domain name? |
Is domain name owner actually causing confusion with trademark owner's goods or services? |
Did trademark owner assert challenge promptly after domain name was registered? |
Proper remedy |
| A - Toeppen cases |
yes |
yes |
doesn't matter |
doesn't matter |
doesn't matter |
transfer domain name |
| B - Actmedia (see note) |
yes |
no |
yes |
yes |
doesn't matter |
transfer domain name |
| C - glad, perfection |
no |
no |
yes |
no |
doesn't matter |
none |
| D |
no |
no |
yes |
yes |
relevant to preliminary relief and to lability |
cease-and- desist only |
| E |
no |
doesn't matter |
doesn't matter |
no |
no |
none |
The factors which courts might take into account in fashioning a remedy will be discussed in turn.
I. Is the trademark coined, not in the dictionary, and unique? The relevance of this factor is not directly discussed in the the Actmedia, Intermatic, and Panavision cases, yet given that the remedy given in those cases is different in kind from any trademark remedy heretofore granted by a court, the factor is apparently important. Perhaps the underlying policy reason for a forced transfer of the domain name is simply judicial economy. If it can be said that there is realistically only one party who could plausibly have use of the domain name, then granting only cease-and-desist relief, possibly followed by registration of the domain name by some third party, would simply lead to another trademark lawsuit, this one against the new owner of the domain name. The specter is a never-ending series of lawsuits in which undeserving parties have to be sued, one by one, to cause a cessation of infringing use. As will be discussed below, this factor is the sole factor which, in the author's view, might sometimes justify transfer-the-domain-name relief.
"Famous" does not mean "unique." The value of the uniqueness factor to the court is simply that it has the potential to simplify the question of who might credibly claim the domain name. But it is important to distinguish this factor from, for example, the definition (or, rather, non-definition) of "famous" in the Federal Trademark Dilution Act. With the passage of years it is possible to imagine a court determining that "Ford" is famous in the area of automobiles, in the area of fashion models ("Ford Models"), and in the area of theater (the Ford Theater in Washington). Yet even if there were a finding that "Ford" is famous, this would not and could not lead to a conclusion that any particular one of the famous mark-holders is uniquely entitled to own the domain name ford.com.
Instead, for a court to reach a meaningful conclusion that only one party is entitled to a domain name, it would be necessary to make a fact-finding that exactly one company is so entitled. This finding would require at a minimum a trademark search in each of the generally available online trademark databases(52) as well as company-name searches in a comprehensive selection of online company-name databases.(53) In addition, the subject trademark should be searched in web search engines such as Alta Vista. Only if all of these resources come up empty (save for references to the plaintiff trademark owner), and if the trademark owner actively affirms that it is unaware of any other possible claimants to the domain name, should the court consider exercising its equitable power to order a transfer of the domain name to the plaintiff. Otherwise, the court should decline to so order.
II. Has the domain name owner registered numerous domain names corresponding to coined, unique trademarks? In each of the two Toeppen cases, the court went to some length to detail the numerous coined and unique trademarks which Toeppen had registered as domain names. Recounting such a roster of domain names is surely emotionally satisfying (and may play a meaningful role in inferring the infringement-related state of mind of the domain name owner) but should play no part whatsoever in selecting the remedy to apply. The reason is simple: no matter how strongly one disapproves of the domain name owner, such disapproval should not be redirected to the general public, some of whom may have as strong a claim on the domain name as the plaintiff. The extreme and nearly unprecedented remedy of an order of transfer of the domain name should be reserved for the few cases where it is conclusively shown that there is no colorable claimant to the domain name other than the plaintiff, and a roster of other domain names owned by the defendant does nothing to support such a showing.
III. Is the domain name owner doing anything at all with the domain name? In the Toeppen cases much attention was paid to this question, for the simple reason that the Lanham Act applies on its own terms only to commercial activity, and someone who is doing nothing is necessarily not doing anything commercial. But this factor goes more to liability than to the selection of remedy.
IV. Is domain name owner actually causing confusion with trademark owner's goods or services? This factor was studiously ignored in the Panavision, and Intermatic cases, for the simple reason that it would have been difficult or impossible to show such confusion. The Actmedia case stated in conclusory fashion that confusion was likely but said nothing to show what basis there was for such a conclusion. (See note, below, for more information on the Actmedia case.) In the case of a non-unique trademark (i.e. a trademark shared by two or more companies) the transfer-the-domain-name remedy should be unavailable and the only remaining question would be whether cease-and-desist relief should be available. The presence or absence of actual or likely confusion is, of course, extremely relevant to the question of whether there is trademark liability, in the absence of which no trademark remedy at all would be appropriate.
V. Did the trademark owner assert its challenge promptly after the domain name was registered? Still another factor that a court might be urged by the parties to consider is whether the trademark owner presented its challenge promptly after registration of the domain name, or whether it allowed months or even years to pass before presenting its claim. Many of the highly visible domain name lawsuits(54) are ones in which the triggering event was the act of the trademark owner attempting for the first time to register a domain name, only to find that the domain name had been registered by someone else some months or years ago. In many of these cases, the suspicion raised in the mind of a skeptical reader is that the allegation of infringement recited by the trademark owner is mere bluster, intended to overcome embarrassment at not having been savvy enough to apply for the domain name earlier. Such an allegation, in the case of a non-unique trademark and a challenge raised only years after the domain name owner obtained the domain name, tends to ring hollow, especially when the trademark owner is unable to point to any particular conduct by the domain name owner that supposedly infringes, other than ownership of the domain name itself.(55) The passage of a long time between registration of a domain name, and the challenge by a trademark owner, especially when combined with a finding that numerous companies use the trademark (i.e. that it is a shared trademark rather than a coined, unique one) tend to negate a finding of trademark liability, and thus tend to negate the grant of any remedy at all.
The Intermatic and Panavision cases fall within category A. Due to the unique and coined nature of the trademarks, it is suggested that it need not matter whether the trademark owner asserted a claim promptly after registration of the domain name. However, for the grant of the hitherto unprecedented relief of an order that the domain name change hands, it is suggested that the court require a full and credible showing that there is no one else who might be entitled to claim the domain name. This article suggests that for the grant of such sweeping relief, it is not enough that the defendant not oppose the sweeping relief. After all, the defendant may be aware that it is going to lose and thus may have little incentive to assist the court in crafting judicially sound equitable relief. Indeed in many such cases there may be no meaningful commentary from the defendant due to a failure to appear or failure to be represented by competent counsel (or to be represented by counsel at all).
Instead, as mentioned above in connection with factor I, this article suggests that sweeping transfer-the-domain-name relief should be considered by a court sitting in equity only after a thorough and credible showing that there are no other colorable claimants to the domain name. Stated differently, if a court were to grant such relief in the absence of such a showing, this would merely reward the trademark owner (who shares some trademark with other trademark owners) who happens to win the race to the courthouse. Indeed the trademark plaintiff that asks the court to order that a domain name be transferred to it, with undisclosed knowledge that other trademark owners have equally colorable claims to the domain name, is coming to the court with unclean hands and should not be given equitable relief.
A court sitting in equity, with a trademark claim presented together with a request that a domain name be transferred, should also bear in mind that the purpose of the trademark and unfair competition laws is to protect the public, not merely to protect the particular trademark owner who happens to stand before the court as plaintiff. This highlights the fact that parties not before the court (members of the public and other trademark owners) may have colorable claims to the domain name, and that absent a due inquiry into this possibility a transfer of domain name would be quite likely to do harm to parties not represented in the action. What's more, the court that orders such a transfer without having made such an inquiry is simply setting the stage for yet another fight over the domain name, and adding to the workload of the courts.
The Actmedia case does not fit squarely within category A, for the reason that little or no factual basis was offered for the remedy granted. It is possible, given the brevity of the Actmedia opinion, that there was no meaningful opposition by the domain name owner (see note, below). In such cases it is, as mentioned above, encumbent upon the court to consider not only the plaintiff but also the public, and make due inquiry before granting a remedy that affects the general public and perhaps other would-be claimants to the domain name.
Where the court becomes aware (or where the plaintiff discloses to the court) that there are two or more companies with the same trademark, equity suggests that before any action is taken by the court tending to make the domain name available to the plaintiff (even a mere release of the domain name by the defendant back into the hands of the registration authority), reasonable notice ought to be given to the other colorable claimants to the domain name. Otherwise the court sitting in equity will again be simply rewarding a race to the courthouse, and of course practices that reward races to the courthouse tend to engender unnecessary and hasty litigation, and tend to lead to inequitable results for the losers of the race.
Categories C and E are the most interesting and, for lawyers counseling domain name owners, the most distressing. These are categories encompassing the increasingly common fact pattern of the company that attempts to register a domain name, only to find that the desired domain name was already registered by someone else. Clearly, given that domain names are registered on a first-come, first-served basis, what the company should have done was to register the domain name earlier. Notwithstanding this, the company covets the domain name and discovers that it happens to have a trademark registration identical to the text of the domain name. The company then sues the domain name owner, seeking an order that the domain name be transferred. This article suggests that such an order should be denied, for several reasons.
First, to rule otherwise would raise the specter of endless litigations, as each of the trademark holders takes its turn suing whoever happens to have the domain name. Stating this differently, transfer-the-domain-name relief is appropriate only if the trademark being asserted is coined and unique. The vast majority of trademarks are not coined, are not unique, and are in fact shared by numerous parties who are in different lines of business. In cases where the trademark is non- unique and where no confusion is present or likely, it is simply indefensible to order a transfer of the domain name, and indeed is also inappropriate to grant any remedy at all.
Second, it must be remembered that strictly speaking, there is no remedy in trademark law or dilution law that calls for transfer of a domain name. The Lanham act speaks of cease-and-desist relief and (relatively rare) awards of money damages, but not of transfers of property. Likewise the Federal Trademark Dilution Act calls only for cease-and-desist relief (and damage awards but only in exceptional cases).
Third, where the plaintiff's claim is properly understood as nothing more than "we wish we had registered the domain name earlier and want the court to force the owner to give it to us", then the delay of months or years from the registration of the domain name belies any claim that the domain name, by itself, somehow counts as infringement. The plaintiff should be denied a remedy and should be encouraged to select a different domain name. Such cases amount to what has been called "reverse domain name hijacking", and commenters have suggested that the trademark owner who attempts such reverse hijacking may run the risk of cancelation of the trademark.(56)
Fourth, the Internet generally, and the World Wide Web in particular, relies on stable domain names and URLs. The Web simply would not work if URLs tended to change from time to time due to court actions brought by merely covetous plaintiffs. In the case where a domain name owner is not infringing any trademarks and has selected a name that is non-unique, the court simply should not grant any remedy that disturbs the stability of the domain name or URL. To do so harms the innocent domain name owner by harming and perhaps destroying the domain name owner's business, and harms the Internet community generally by rendering unusable their browser bookmarks and hypertext links to the domain name.
Categories C and E bring to mind the following passage from Gulliver's Travels:
For example, if my neighbour hath a mind to my cow, he hires a lawyer to prove that he ought to have my cow from me. I must then hire another to defend my right, it being against all rules of law that any man should be allowed to speak for himself. Now in this case, I who am the true owner lie under two great disadvantages. First, my lawyer, being practiced almost from his cradle in defending falsehood, is quite out of his element when he would be an advocate for justice, which as an office unnatural, he always attempts with great awkwardness, if not with ill will. The second disadvantage is, that my lawyer must proceed with great caution: or else he will be reprimanded by the judges, and abhorred by his brethren, as one who would lessen the practice of the law. And therefore I have but two methods to preserve my cow. The first is to gain over my adversary's lawyer with a double fee, who will then betray his client by insinuating that he hath justice on his side. The second way is for my lawyer to make my cause appear as unjust as he can, by allowing the cow to belong to my adversary; and this if it be skilfully done will certainly bespeak the favour of the bench.
[...]
In pleading, [the neighbour's lawyers] studiously avoid entering into the merits of the cause, but are loud, violent, and tedious in dwelling upon all circumstances which are not to the purpose. For instance, in the case already mentioned: they never desire to know what claim or title my adversary hath to my cow, but whether the said cow were red or black, her horns long or short; whether the field I graze her in be round or square, whether she was milked at home or abroad, what diseases she is subject to, and the like; after which they consult precedents, adjourn the cause from time to time, and in ten, twenty, or thirty years come to an issue.
(Jonathan Swift, Gulliver's Travels, Part IV, Ch. 5, 1726.)
Courts need to recognize mere covetousness when it is presented in the guise of a trademark lawsuit, and need to be prepared to deny relief in such cases.
Clumsy policymaking by NSI, a poorly drafted US Federal Trademark Dilution Act, and the hard facts presented by the first few domain-name-transfer cases have combined to yield an awkward mix of precedents and fact patterns for domain name trademark disputes. It is hoped that as courts encounter new and different fact patterns, the law of domain name trademark remedies will develop in a way that is fair to non-infringing domain name owners, that promotes stability of URLs and domain names, and that provides meaningful remedies for owners of the handful of trademarks that are truly unique.
(1) Partner, Oppedahl & Larson, email: oppedahl@patents.com. JD Harvard University 1981
(2) The Internet-style email address, with a user name and domain name conjoined with an "@" sign, is now standard worldwide and all other forms of email address have fallen out of use.
(3) <http://www.altavista.digital.com>, <http://www.lycos.com>, and <http://www.yahoo.com> respectively.
(4) For example, in the United States, the National Technical Standards Committee promulgates NTSC Standards for broadcast television.
(5) There are by now over a thousand RFCs, one of which is RFC 1591 <ftp://rs.internic.net/rfc/rfc1591.txt>, discussed below. RFC 1591 determines, among other things, the role of a domain name registration authority with respect to disputes over Internet domain names.
(6) The majority of URLs begin with "http://" which stands for Hypertext Transport Protocol. It is commonplace to omit the "http://" and most web browsers will supply it if the user does not enter it. A URL that begins with "http://" may be variously referred to as a "web address" or "web page address" or "web site address".
(7) For example, many CompuServe email addresses begin with nine randomly-assigned numerical digits.
(8) Don Mitchell, Scott Bradner, & K Claffy, In whose domain: name service in adolescence, <http://ksgwww.harvard.edu/iip/bradner.html>.
(9) Jonathan Agmon, Stacey Halpern and David Pauker, What's in a Name, <http://www.law.georgetown.edu/lc/internic/domain1.html>; NSI Flawed Domain Name Policy information page, <http://www.patents.com/nsi.htm>; and Electronic Frontier Foundation's "Internet Address & Domain Name Disputes" Archive, <http://www.eff.org/pub/Intellectual_property/Internet_address_disputes/>.
(10) The author was counsel for Roadrunner Computer Systems, Inc. in the case of Roadrunner Computer Systems, Inc. v. Network Solutions, Inc., (cite) now concluded.
(11) This point was, so far as the author is aware, first made clearly by Mr. Albert Tramposch of the World Intellectual Property Organization in a posting in a discussion group hosted by the Internet Ad Hoc Committee.
(12) It should also be borne in mind that in most of the countries of the world, there are no letters on telephone dials, or the letters are in different places than in North America. In addition, in most of the countries of the world a toll-free call does not particularly relate to the number "800". Thus the law relating to disputes over 800 numbers is of only limited significance in an attempt to develop a consistent worldwide body of law relating to domain names.
(13) Holiday Inns Inc. v. 800 Reservation Inc., 86 F.3d 619, 39 U.S.P.Q.2d 1181 (6th cir. 1996)
(14) MDT Corp. v. New York Stock Exchange Inc., 858 F.Supp. 1028, 30 U.S.P.Q.2d 1849 (C.D. Cal. 1994)
(15) See Domain Name assignment rules in Israel at <http://www.isoc.org.il/ildomain.html>.
(16) There are two types of federal interpleader, so-called Rules interpleader (F.R.C.P. 22) and statutory interpleader (28 USC § 2361).
(17) Complaint for Interpleader Pursuant to 28 U.S.C. § 1335, Network Solutions, Inc. v. Clue Computing, Inc. et al., 96 civ. 1530, filed June 21, 1996, D. Colorado. NSI's attempt to use federal interpleader in this case was ruled improper not because domain names are not property, but on other grounds, see Network Solutions, Inc. v. Clue Computing, Inc., 41 U.S.P.Q.2d 1062 (D.Colo. 1996). The court, explaining why interpleader was not proper with respect to the clue.com domain name, likened NSI to "a wrongdoer with respect to the subject matter of the suit", said that NSI was not "free from blame in causing the controversy", and said that NSI was improperly seeking "to escape adjudication of its contractual duties, and possible liability, in [a previously filed] state court action."
(18) First Brands Properties Inc. v. Weitzman, et al., 96 civ. 2193, D. Md. (filed July 16, 1996).
(19) Search performed in Dun & Bradstreet "Duns Market Identifiers" in January of 1997 (available at Dialog file 516)
(20) Great Britain trademark reg. no. 752245
(21) French trademark reg. no. 1536267
(22) Swiss trademark reg. no. R 266562
(23) See generally McCarthy on Trademarks § 30.02 et seq. "It is difficult to imagine an unfair competition case where damages are adequate to remedy the problem of defendant's continued acts."
(24) Id.
(25) See generally McCarthy on Trademarks § 30.16[2][g] and cases cited there.
(26) See generally McCarthy on Trademarks § 30.04[5] and cases cited there.
(27) McCarthy on Trademarks § 30.24[2]
(28) Federal Trademark Dilution Act of 1995, 15 USC § 1125(c).
(29) Cong. Rec. Dec. 29, 1995, S19312.
(30) The Act offers only an "injunction against [the diluter's] commercial use in commerce of a mark or tradename..." except in the special case in which wilfulness is shown.
(31) pinpoint cite in 15 USC § 1125(c).
(32) pinpoint cite in 15 USC § 1125(c).
(33) <ftp://rs.internic.net/policy/internic/internic-domain-6.txt>
(34) <http://www.domain-name.org/intro.html>
(35) <http://www.wired.com/wired/4.10/updata.html>
(36) <http://www.inta.org/intaprop.htm>
(37) Under NSI's policy, NSI does nothing to investigate whether any actual trademark infringement is going on, but it merely mechanically checks to see if the trademark and domain name are identical, in which case it schedules a cutoff of the domain name at a date certain, generally 30 days later. In the case of perfection.com, the presentation of two distinct trademarks (one for children's games, another for cosmetics) led to NSI mechanically making the same check and presumably would have led to NSI's determination that both trademark owners deserved to receive the benefit of NSI's preliminary injunctive relief.
(38) Actmedia, Inc. v. Active Media Int'l Inc., 1996 WL 466527 (N.D.Ill., Jul 17, 1996) (No. 96C3448) (See note, below.)
(39) US trademark reg. no. 1,389,370
(40) Intermatic Inc. v. Toeppen, 1996 US Dist. Lexis 14878, 40 USPQ2d (BNA) 1412 (N.D.Ill, 1996)
(41) US trademark reg. no. 1,117,588
(42) Panavision Int'l L.P. v. Toeppen, 945 F.Supp. 1296, __ USPQ2d ___ (C.D. Cal. 1996)
(43) US trademark reg. no. 1,160,790
(44) Another reported Toeppen case is American Standard Inc. v. Toeppen, 1996 US Dist Lexis 14451 (C.D. Ill., 1996). In that case, the domain name americanstandard.com was transferred from Mr. Toeppen to the plaintiff. The case is of little or no precedential value, however, because it was entered "on consent" of Mr. Toeppen.
(45) Roadrunner Computer Systems, Inc. v. Network Solutions, Inc., E.D. Va. 96-civ-413-A. The author was counsel for Roadrunner Computer Systems, Inc.
(46) DCI v. Network Solutions, Inc., M.D. Tenn. 96-civ-429
(47) Giacalone v. Network Solutions, Inc., N.D. Cal. 96-civ-20434
(48) Clue Computing v. Network Solutions, Inc., District Court, Boulder County, Colorado 96-civ-694-5
(49) DISC v. Network Solutions, Inc., D. Colo. 96-civ-1551
(50) Regis v. Network Solutions, Inc., N.D. Cal. 96-civ-20551
(51) Juno Online v. Network Solutions, Inc., E.D. Va. 96-civ-1505
(52) There are commercial databases providing comprehensive coverage of trademarks in the United States, in Canada, and in most of Europe, for example the Thomson & Thomson Trademarkscan databases.
(53) There are commercial databases providing comprehensive coverage of company names in North America, Europe, Japan, and other areas, for example from Standard & Poors and from Dun & Bradstreet.
(54) E.g. Roadrunner.com, Clue.com, Regis.com, DCI.com, Disc.com, Actmedia.com, Panavision.com, Intermatic.com.
(55) Examples of cases which, as perceived by the author, ring hollow in this way are the glad.com case, the clue.com case, the juno.com case, and the perfection.com case.
(56) Stephen J. Davidson and Nicole A. Engisch, Applying the Trademark Misuse Doctrine to Domain Name Disputes, <http://cla.org/TM_MIS/T-MISUSE.htm>
The author is indebted to Steven T. Shelton who was kind enough to pass along the results of some digging in the court files of the US District Court for the Northern District of Illinois. Mr. Shelton has provided to me copies of papers according to which the parties in the Actmedia case stipulated to a final judgment and permanent injunction. The parties signed and filed with the Court a stipulation reciting that "upon entry of the attached Final Judgment and Permanent Injunction by the Court", the case would be dismissed. This essentially coerces the judge to enter the Final Judgment, even if it contains an incorrect statement of the law or the facts (as is the case here), since if the judge refuses to do so, there is the danger that that the case will not be dismissed and the judge will be stuck with an active case on his docket and no sure prospect of getting rid of the case. The problem, of course, is that the signing of a publishable opinion such as this one affects far more than the named parties in a case.
It is the view of this writer that any judge who permits his or her signature to be placed upon a Final Judgment that contains an incorrect statement of the law or the facts, so as to dispose conveniently of a case, is doing a grave disservice to the general public and to future litigants, and casts an unfavorable light upon the Court. And in this writer's view, that is exactly what happened in this case. The "opinion" in the Actmedia case has been cited dozens and dozens of times since July of 1996 in discussions of the development of domain name trademark law and in cease-and-desist letters sent by domain name challengers, and it has misserved the Internet community due to its inaccuracies.
Judge Zagel should not have signed this Final Judgment without requiring that factual and legal inaccuracies be corrected first. And the lawyers in the case (J. Douglas Baldridge of Collier Shannon in Washington DC, Thomas A. O'Donnell, Jr. of Hoffman Estates, IL) should be ashamed of themselves for furthering such a result.
Return to the Oppedahl & Larson Patent Law home page.
Last revised June 21, 1997.
This page is http://www.patents.com/pubs/jmls.htm