At 06:10 PM 1/22/99 -0500, you wrote:
>>Unlike the situation with respect to trademark infringement, whether or not a
>>domain is "commercial" is irrelevant on issues of dilution. I could put up a
>>site full of quotations from Hamlet on the domain name cocacola.org and
>>get my butt sued and I'd lose. Secondly, what is filed is a Complaint For
>>Declaratory Judgment, not involving an injunction, and when you file that
>>NSI leaves the domain name as it was until the case is done. (It files the
>>registration certificate for the domain name into the Federal Court, and
>>then the winning party seeks an order from the Court to NSI to do whatever
>>the result was, and I expect that NSI will obey the order.) Point about this
>>whole thing is, the NSI policy leaves it to the often penniless domain name
>>holder the task of coming up with the bucks -- i.e., just by writing a letter
>>to NSI the owner of the registered mark gets a shortcut or even an instant
>>winner, if the domain name holder just can't raise the bucks to file suit,
>>and
>>without regard to any merits of the case, i.e., even in the complete absence
>>of even the slightest likelihood of confusion.
>
>The dilution statute itself requires commercial use (regardless of whether
>the domain itself is labeled as "commercial." I'm certain that if a .org
>sold things, it would qualify under dilution. I do not believe, under the
>statute as written, that you should lose your domain name even if it was
>cocacola.org.
>
Literally, what you say about "commercial use" is quite true: here's the
statute:
15 U.S.C. �1125(c):
(1) The owner of a famous mark shall be entitled, subject to the principles
of equity and upon such terms as the court deems reasonable, to an
injunction against another person's commercial use in commerce of a
mark or trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality. of the mark,
and to obtain such other relief as is provided in this subsection. * * *
However, depending upon what court you get into, and using the terms
"use in commerce" as typically employed, some have decided that
virtually any use of the Internet beyond a mere registration of a domain
name (i.e., with no web page put up) is "use in commerce." That is
another part of the battle I am fighting -- what "should" be the case as
you correctly point out, and what turns out to BE the case, do not
always track.
In the Toeppen cases, Toeppen had registered tons of famous names
with a view towards getting money out of the owners of trademark
registrations for such names. (In the Panavision case, his site was
an aerial view of Pana, Illinois, as I recall.) He got his lumps.
In the Avery-Dennison case, the defendant had registered a bunch of
common surnames for sale to individuals such a James Avery, a
Sam Dennison, etc. (I'm making those names up, of course), without
reference to or even knowing about any related trademark registrations.
Either the Avery or the Dennison, I forget which, got the defendant
sued, and he also lost. So far as I recall, there had not even been
anything put up on the web at all -- the only problem was that the
name (whichever one it was) had been registered with NSI. That case
was won by Avery-Dennison and, like the one I'm doing (Interstellar
Starship Services, Limited v. Epix, Inc. -- who could NOT take a case
from a client with a name like that?-- is on appeal in the 9th circuit.
>As to the motion, why not file a direct injunction against NSI itself in
>state court if you happen to be in Virginia? I think that would be much
>cheaper for the domain name holder. Do you think that would be a bad idea?
>
That was tried in Colorado -- I forget the case name, actually. (In case you
all think I've no memory whatever, all this stuff is in my files and I try
not to
think of it ALL the time!) Anyway, if it's a Federal trademark
registration that
is involved, the state courts have no jurisdiction.
Bill Lovell
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