In the News

Ferrari Overreaches As it Tries to Control Design Publicity

Adam Holland, Jalopnik, December 12, 2012
Abstract: Ferrari, seeking to control its designs and how they are publicized, takes down not just an unauthorized image of a modded Ferrari, but the entire website on which the image was hosted.
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Fourth Circuit Rules For Critic in Falwell Domain Name Dispute

Public Citizen, August 26, 2005
Abstract: WASHINGTON, D.C. – In a victory for free speech on the Internet, a New York man ordered to transfer the domain name www.fallwell.com to the Rev. Jerry Falwell will be allowed to keep the Web site, the United States Court of Appeals for the Fourth Circuit has ruled.
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Gripe Site Win: TrendMaker Homes Critic Keeps trendmakerhome.com, Paul Alan Levy, CircleID, April 30, 2004
Abstract: There are now several different courts of appeals that have upheld the right of individuals to post a non-commercial website using the domain name www.company.com, and there are as yet NO appellate decisions that forbid such websites outside the context of the serial cybersquatter who tries to erect a so-called gripe site as a CYA measure after being sued. In fact, it seems to me that we are getting close to the point where companies that sue over such websites have to consider seriously the possibility that they will not only lose the suit, but face a malicious prosecution action or other counter-measure from the consumer critic seeking damages for having been sued.

MikeRoweSoft Names His Price, AP, January 26, 2004
Abstract: Mike Rowe has agreed to pick a new name for his Web site, currently called www.mikerowesoft.com. Microsoft will cover Mike's costs of changing to a new Web site and redirecting traffic from the old site. Microsoft also has agreed to help the teen get Microsoft certification training and other gifts, including an Xbox game console, and has invited Mike to a technology festival in March at the corporation's headquarters.

Protection of Non-U.S. Trademarks under U.S. Law

Mark Matuschak and Vinita Ferrera, Hale & Dorr Internet & IP Alert, July 21, 2003
Abstract: In an analysis of recent federal activity, Hale & Dorr's IP Alert announce that In International Bancorp, LLC, et al. v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, (May 19, 2003), a divided panel of the United States Court of Appeals for the Fourth Circuit held that the "use in commerce" requirement for trademark protection could be met by a non-U.S. company that owns and operates resort and casino facilities outside the United States, because of the combination of that company's extensive advertising of its services in the United States and its sale of those services to U.S. citizens - even if those services are provided in another country.
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Sixth Circuit Supports Sucks Sites

Martin H. Samson, Esq., Partner, Phillips Nizer LLP, Internet Library Case Upda, February 20, 2003
Abstract: The Sixth Circuit (which covers Tennessee, Kentucky, Ohio and Michigan) held that a domain name holder's use of another's trademark in a 'fan' site did not run afoul of Section 1114 of the Lanham Act because of the presence of both a prominent disclaimer on the site disavowing any affiliation with mark owner, and a link to plaintiff's official web site. The domain holder's use of the trademarks in conjunction with the word "sucks" in the domain names of non-commercial complaint sites did not violate Section 1114 of the Lanham Act because there was no likelihood of consumer confusion arising from that type of use, and because such speech is protected by the First Amendment of the US Constitution. The Taubman Company v. Webfeats, et al., Nos. 01-2648/2725 (6th Cir., February 7, 2003).
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Taubman v. Webfeats: Domain Names are Speech, Sixth Circuit Opinion, February 07, 2003
Abstract: A federal appeals court has upheld the right of a Texas man to use the name of a local shopping mall as the domain name for a Web site praising the mall, as well as a second web site denouncing the mall's owner for suing him under the federal trademark laws. The rooftops of our past have evolved into the internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.

Domain Name Disputes Decline as Internet Matures, Tamara Loomis, New York Lawyer, February 06, 2003
Abstract: The wild wild web is getting tamed. Cybersquatters no longer freely roam its highways looking for easy marks. And trademark owners who once went after anyone who crossed their path are now choosing their battles much more carefully.

Furniture Store Wins Injunction Against Critic Site Using its Name, Associated Press, January 07, 2003
Abstract: Kane's Furniture has won a court fight to shut down a consumer-oriented Web site that had steered hundreds of complaints to state regulators over the past three years. The Web site, www.kanes-furniture.net, helped the Florida Attorney General's Office forge a rare civil suit against the Pinellas Park retailer in November. But Pinellas County Circuit Judge Walt Logan issued the injunction last month, shutting down the site.

FTC Settles Domain Name Suit, Dawn Kawamoto, news.com, December 03, 2002
Abstract: The Federal Trade Commission said Tuesday it reached a settlement with five parties accused of selling bogus Web site domains. TLD Network Ltd, TLD Networks, Quantum Management Ltd, TBS Industries Ltd and Thomas Goolnik advertised and sold domains that did not work, alleged federal regulators. Beginning in July last year, the defendants offered such domains as .usa, .sex, .brit and .scot, charging customers $59 annually to register the names. But they were not accredited domain name registrars, the FTC charged. As a result, the domain names did not work.

Reseller wins right to use TM in domain name

Martin Samson, Phillips Nizer LLP Internet Library Case Update, October 31, 2002
Abstract: Holder of barginbeanies.com permitted to keep the domain name, against a challenge from Ty, Inc. Where domain holder's primary business was reselling authentic marked goods, the Seventh Circuit held that use of the mark as part of website title and domain name was not a violation of the Federal Trademark Dilution Act.
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Nissan vs. Nissan, Andrew Leonard, Salon.com, June 03, 2002
Abstract: Is a North Carolina businessman a cybersquatter unfairly pirating the car maker's brand name, or something even worse: A spammer of journalists?

Bill Simon's Online Bid for Governor Backfires, Brian Faler, Washingtonpost.com, September 09, 2002
Abstract: A dark cloud seems to be dogging Bill Simon, the California GOP nominee for governor. Already beset with questions about his business dealings and campaign acumen, Simon now is threatened with a possible lawsuit by -- of all groups -- the Internet company eBay.

Falwell parody site preaches free speech, Declan McCullagh, c/net News.com, September 10, 2002
Abstract: Domain holder requests dismissal of anti-parody case brought in Virginia rather than in domain holder's own jurisdiction.

Ford Shuts Down Dot-Com Dead Pool Site, Paul Festa, News.com, August 26, 2002
Abstract: Ford Motor has successfully complained about alleged trademark infringements to the hosting provider of Phil Kaplan's F***edCompany.com--a web site that has gained fame and some fortune collecting rumors and reports of layoffs, closures and other dot-com fiascos. Ford threatened to sue Hostcentric, Kaplan's ISP, which pulled Kaplan's site altogether.

Abortion activist sued for cybersquatting, Associated Press
Abstract: Some of the most-high profile consumer and media companies in the nation are suing a South St. Paul man to stop him from using their trademarks to direct people on the Internet to anti-abortion Web sites. The joint lawsuit filed in U.S. District Court in Minneapolis on Thursday set up a fight over the rights of companies to protect valuable trademarks vs. the right to free speech.The Washington Post, Coca-Cola, McDonald's and PepsiCo joined in the lawsuit against William S. Purdy Sr., a former railroad engineer and longtime abortion opponent.

Miller Brewing Company v. The Miller Family, Anne M. Wallace, Q.C., Panelist, National Arbitration Forum, April 15, 2002
Abstract: The interference to be drawn from all the evidence is that at the time Respondent registered the domain name, Respondent was well aware of Complainant’s MILLER TIME trademark. Respondent says that at the time he registered the domain name, Complainant did not have any web sites using the word MILLER or the word TIME. The fact Respondent knows this to have been the case, demonstrates that Respondent knew of Complainant’s trademark. The further inference to be drawn from this is that Respondent chose the disputed domain name because of Complainant’s trademark.

Political cybersquatting scores a win, By Lisa M. Bowman, news.com, April 29, 2002
Abstract: In a victory for cybersquatters and others who snatch up domain names containing personal monikers, a dispute-resolution board has refused to turn over Web addresses containing the words "Kathleen Kennedy Townsend."

E. & J. GALLO WINERY v. SPIDER WEBS LTD., No. 01-20333, US Courrt of Appeals for the 5th Cir, findlaw.com, April 03, 2002
Abstract: The Ernest and Julio Gallo Winery ("Gallo") holds a trademark in the name "Ernest & Julio Gallo." Spider Webs Ltd. registered the internet domain name "ernestandjuliogallo.com" (the "domain name"). Gallo sent Spider Webs a letter requesting that they release or transfer the domain name to Gallo, but Spider Webs refused to do so. Gallo sued Spider Webs under the Anti-Cybersquatting Consumer Protection Act ("ACPA"), and under federal and Texas anti-dilution, trademark infringement, and unfair competition laws. After this litigation began, Spider Webs hosted a web site at the domain name that was critical of this litigation, of alcohol, and of corporate America. The parties consented to proceed before a magistrate judge, who granted summary judgment to Gallo on the ACPA and Texas Anti-Dilution Statute ("ADS") claims, issued an injunction under the ADS, ordered the transfer of the domain name to Gallo under the ACPA, and awarded statutory damages to Gallo under the ACPA. Spider Webs appeals. We AFFIRM.

Abortion Foes Stage Cyber Sit-In, By Katie Dean, wired.com, March 06, 2002
Abstract: Students looking for information on Oregon's Reed College may have mistakenly landed on anti-abortion websites not associated with the school. Since Feb. 14, the reedcollege.com domain name has been redirected to a series of pro-life websites, including abortionismurder.org, StandUpGirl.com and Abortionfacts.com.

eBay settles lawsuit against similar site BidBay, AP, sfgate.com, February 20, 2002
Abstract: EBay Inc. has settled a trademark-infringement lawsuit it brought in July against BidBay.com, an upstart Internet auction site with a similar look and rainbow-colored logo.

ICANN Proposes 'Grace Period' For Deleted Addresses, David McGuire, BizReport.com, February 15, 2002
Abstract: Internet addressing authorities this week proposed establishing a uniform one-month "grace period" during which domain-name holders could reregister Internet addresses that inadvertently lapse, either due to malicious hijacking or simple oversight.

US Govt. Agency Says .us Procurement (Partly) Unlawful, Michael, ICANN Watch, February 14, 2002
Abstract: The U.S. may be the only country in the world with a government that routinely takes itself to court. Disputes between branches of government, or even within the executive branch, land in front of judges with amazing regularity. Add one more possible entry to that list: the U.S. Small Business Administrations's independent Office of Advocacy has written a strong letter to NTIA chief Assistant Secretary of Commerce Nancy J. Victory challenging the legality of the department's actions in the recent .us procurement.

Sex.tv Sues The .tv Corporation, Kathee Brewer, AVN Online, February 12, 2002
Abstract: Sex.tv disappeared from the Web on Monday, hours after its parent company, Sex.tv Ltd., filed suit against registrar The .tv Corporation in U.S. District Court. The lawsuit alleges fraud, cybersquatting, and deceptive business practices under California and federal statutes. It also seeks to have the court place the domain Sex.tv and the $688,000 paid by Sex.tv Ltd. to The .tv Corporation for domain registration fees in a “constructive trust” pending further action.

Loosening government hold on .us, Reuters, news.com, February 12, 2002
Abstract: Internet users looking to add a patriotic flair to their Web sites will be able to reserve names ending in .us by the end of April, the company responsible for the retooled Internet domain said Tuesday.

Playmate Checkmates Hef's Mag, By Declan McCullagh, Wired.com, February 07, 2002
Abstract: Thanks to a lawsuit brought by Playboy, Welles has become famous for much more than merely shedding her clothes for photographers In a unanimous decision, a panel of federal judges from the Ninth Circuit Court of Appeals said last Friday that terriwelles.com could feature the term "Playmate of the Year" because it did not infringe upon the trademarks of Playboy Enterprises (PEI).

eBay causes Lego site to change name, Troy Wolverton, Special to ZDNet News, ZDNet News, February 05, 2002
Abstract: Lego-trading site Brickbay.com has changed its name to BrickLink.com after a request from eBay. eBay warned site owner Dan Jezek last month that his site's name infringed on eBay's trademark. The online auction giant threatened legal action against Jezek if he didn't change the name. Jezek's site, unaffiliated with Lego, hosts dozens of online stores where enthusiasts can buy Lego parts and sets.

unicom.com Registrant Wins Right to Keep Name, Chip Rosenthal, save.unicom.com, February 04, 2002

x-AOL.com and AOL-x.com names Transferred to AOL, James P. Buchele, National Arbitration Forum, February 01, 2002
Abstract: The domain names at issue are aol-msn.com, microsoft-aol.com, and aol-microsoft.com, registered with Catalog.com, and aol-sony.com registered with Tucows, Inc.

Ford Appeals Court Ruling On Domain Name Spoof, David McGuire, BizReport.com, February 01, 2002
Abstract: Ford Motor Company intends to appeal a federal judge's ruling that an ongoing Internet prank involving Ford's main Web site does not violate trademark law.

HC transfers domain names to Bharti, PTI, The Economic Times, February 03, 2002
Abstract: NEW DELHI: To protect its brand name "Bharti" from being misused, telecom major Bharti Televentures, service arm of Bharti Group, has approached the Delhi High court seeking transfer of domain names from the clutches of an enterpreneur who was running a website on vedic astrology using the word "Bharti"

Attorneys Sanctioned in Cybersquatter Dispute, Mark Hamblett, New York Law Journal, January 29, 2002
Abstract: Charging that two lawyers in a cybersquatting dispute misrepresented the law and the facts, Southern District Judge Denny Chin said that he will impose sanctions in the case. Judge Chin criticized attorneys John P. Sheridan and Scott E. Mollen of Herrick, Feinstein for claiming their client had every right to take a cybersquatter to arbitration after Judge Chin had dismissed their action with prejudice on the assumption the case had been settled.

Aimster.com Out -- Madster.com In, Danielle T. Furfaro, Business writer, TimesUnion.com, January 24, 2002
Abstract: Name change is one term of the Troy-based file-swapper's settlement with AOL.

E-mail problems dog @Home customers, Stefanie Olsen, CNET News.com, December 07, 2001
Abstract: When nearly a million Excite@Home customers were switched to AT&T Broadband's high-speed network this week, the vast majority were surfing the Net again within a few days. But e-mail problems are a headache that promises to linger for weeks.

First Circuit Says ACPA Trumps UDRP, Prof. Michael Geist, BNA's Internet Law News, December 06, 2001
Abstract: In a ruling involving the domain "corinthians.com," the First Circuit Court of Appeals has held that a domain holder who loses a UDRP proceeding can seek to block that action under the provisions of the ACPA.

VeriSign To Stand Guard For Online Brands, Prof. Michael Geist, BNA's Internet Law New, December 06, 2001
Abstract: VERISIGN TO STAND ON GUARD FOR ONLINE BRANDS Verisign has announced plans to establish new services that guard a company's brand name online. The new services will notify trademark holders when Web sites spoof a trademarked name or when similar sounding domains are registered.

Name Games, Carlyn Kolker, The American Lawyer, September 19, 2001
Abstract: The second rush for Internet handles is about to begin. The first time it was anarchy; this time, it's merely confusing.

Fourth Circuit limits parody defense in PETA, Fourth Circuit, August 23, 2001
Abstract: People for the Ethical Treatment of Animals sued People Eating Tasty Animals. The tasties lost.