A decision issued by the Eastern District of Virginia on July 14, 2005, provides a useful basis for reviewing the in rem rules under the Anti-Cybersquatting Consumer Protection Act. See NBC Universal Inc. v. nbcuniversal.com, 76 USPQ2d 1370 (E.D.Va. 2005).

1,  The filing of a proceeding under the ICANN UDRP does not waive the right to pursue an in rem ACPA action, either before, during or acfter the UDRP action.  See Barcelona.com, Inc. v. Excelenstisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003); Parisi v. Netlearning, Inc., 139 F.Supp.2d 745 (E.D.Va. 2001).

2.  A plaintiff is not limited in ...   more »

A Wisconsin federal court has dismissed TRO action against Vancouver registrar and undisclosed registrant of www.amercangirl.com site.  Court proposes ICANN UDRP and ACPA in rem actions as alternatives.

American Girl LLC v. Nameview Inc., (E.D. Wis. 8/9/05)

   more »

Reversing a lower court decision in Jerry Falwell's favor, the Fourth Circuit has allowed Christopher Lamparello to use the domain name www.fallwell.com to criticize Falwell's position on homosexuality. 

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

   more »

A recent decision by the Ninth Circuit confirms that "commercial use" by the defendant is required for a Lanham Act trademark or dilution claim, but is not required in a cybersquatting claim under the ACPA.

Michael Kremer, a dissatisfied hair transplant patient, used the domain name www.BosleyMedical.com as a site critical to the Bosley Medical Institute, a hair transplant clinic. Bosley sued. The district court entered summary judgment for Kremer on the grounds that his conduct was not commercial.  See Bosley Medical Institute, Inc. v. Bosley Medical Group, 2005 U.S. App. LEXIS 5329 (9^th Cir., April 4, 2005).

Kremer's ...   more »

Sixth Circuit affirms lower court ACPA decision in DaimlerChrysler v. Net Inc., (6th Cir., October 28, 2004).

Decision available here.

   more »

Forbes.com reports on lawsuit by Avis Coatings Inc. against homeowners Linda and Alan Townsend over complaint site on the web in this article:  "Web Site for Complaints Sparks Lawsuit."   more »

The prohibition against the assignment of trademarks without goodwill is alive and well in this recent decision by the Judge St. Eve of the Nothern District of Illinois.  Pure Imagination Inc. v. Pure Imagination Studios Inc., Civil Action No. -03 0 6070 (N.D.Ill. Sept. 30, 2004).

Students of trademark law will appreciate the continued application of that classroom favorite, Pepsico, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1968).

The Pure Imagination case stands for these key points:

1.  Mere registration of a domain name creates no rights or goodwill (although use of a domain name as a trade ...   more »

Computer software engineer Joseph Maxwell registered the domain name www.trendmakerhome.info for a gripe site about TrendMaker Homes.  TMI, the owner of the mark, sued for infringement, dilution and cybersquatting.  The lower court agreed and awarded TMI $80,000 in statutory damages and attorneys fees.

The Fifth Circuit reversed, concluding that Maxwell's conduct was entirely non-commercial and did not violate the Lanham Act. TMI, Inc. v. Maxwell, Case No. 03-20243 (5th Cir. April 21, 2004). 

The Fifth Circuit held that the case only embraced dilution and the ACPA, and therefore there was no need to address the possibility of liability for non-commercial speech under ...   more »

Yesterday's decision: Coca-Cola Company v. Purdy, Case No. 02-2894 (8th Cir., Sept. 1, 2004), is important reading for persons confronting cybersquatting disputes.  Here are some highlights.

On the first element of the claim, the court states:

"The Question under the ACPA is not whether the domain names which Purdy registered are likely to be confused with a plaintiff's domain name, but whether they are identical or confusingly similar to a plaintiff's mark. The inquiry under the ACPA is thus narrower than the traditional multifactor likelihood of confusion test for trademark infringement. The fact that confusion about a website's source ...   more »

Bill Purdy of South Saint Paul, Minnesota, registered and used domain names such as mypepsi.org, drinkcoke.org and mymcdonalds.org to direct Internet users to an anti-abortion site depicting dismembered fetuses.

The Eighth Circuit has rejected Purdy's First Amendment defense, finding him in violation of the Anti-Cybersquatting Consumer Protection Act. 

See story by Declan McCullagh for CNET News.com: "Anti-Abortion Cybersquatter Loses Appeal."

 

   more »

After losing a perliminary injunction motion, the plaintiff, a suburban Chicago car dealer, continued to pursue its case against the use of the domain names gurneevolkswagen.com and gurneevolkswagon.com used by a dissatisfied customer to post her complainant about her experience with the car dealer.  Judge Holderman ruled that the car dealer did not own rights in the GURNEE VOLKSWAGEN mark and that the defendant's noncommerical use of the domain name to voice her complaints did not violate the ACPA.  Concluding that the prosecution of the case was oppressive, the Court granted the defendant's motion for attorney's fees.  Rohr-Gurnee Motors Inc. ...   more »