The Cyberspace Law Committee of the Business Law Section Presents:
Cyber Space Odyssey 2002

	Philip R. Green
	Law Offices of Green & Green

Overview

	Trademark Basics
		Registration benefits
		Strong & Weak Marks
		Surnames
	Trademark as Domain Names
		Exporting the 1st Amendment?
		FORUMS:
			US law vs. International Forums
	Interplay between UDRP and ACPA
		Infringement
		Famous Names – Springsteen Case
	Conclusions and Best Practices

Registered Trademarks carry more weight

		USE a mark in IN COMMERCE or INTERNATIONALLY (U.S. only!)
		Register TMs all other places. (use examining registers not Tunisia- Madonna Case)
		Use of WWW & Domain Names to do immediate national and international advertising.
		Forum: UDRP and/or  ACPA

Fanciful to Descriptive

	Fanciful: Strongest marks
		Not Descriptive Marks to be Registered should be Fanciful on a spectrum from “Xerox”- “KODAK” –
		Can be registered on U.S. Principal Register

Fanciful to Descriptive

	Suggestive: Weak but Registrable
		Not Descriptive but close to it: “MOVIEBUFF” for a database of movie information*
			Needs test - Imagination test –Competitors Use test

Fanciful to Descriptive

	Descriptive: Not usually Registrable
		Usually cannot be registered on U.S. Principal Register –maybe after time & Secondary Meaning
		Celebrity names treated as if descriptive of person
			Series of goods , Sec 2(f) (Distinctive) Secondary Meaning exceptions.

Fanciful to Descriptive

	Generic & Geographically – Descriptive / Misdescriptive: Weakest “Geographical”
		Usually cannot be registered in U.S.–maybe after a LONG time & Secondary Meaning

Domain Name as a Trademark… P.T.O. and TM.Com

	As an address, a Domain Name  does not serve to indicate source.
		Attorney who used his “www…” on letterhead among his addresses does not make of it an acceptable “use.” as a source identifier for legal services, it is In re Eilberg,   49 USPQ2d 1955  (TTAB 1998).
	Advertises Applicant’s own services is not itself a “service.”
			Use of a DOTCOM…”for  the  sole purpose of advertising their own products or services cannot  register a domain name used to identify that activity.” In  re Reichhold Chemicals, Inc.,  167 USPQ 376  (TTAB 1970); TMEP  §1301.01(a)(ii)

Personal Names as Trademarks

	SURNAMES
		If a mark is composed of a surname and a TLD, the mark is primarily  merely a surname under 15 U.S.C.  §1052(e)(4).
		A TLD has no trademark significance.
		If the  primary  significance of a term is that of a surname, adding a TLD to the  surname does not alter the primary significance of the mark as a  surname.
	P.T.O. Policy on Person’s Names:
		Abba Case:  IN RE POLAR MUSIC INTERN. AB, 714 F.2d 1567, 221 U.S.P.Q. 315 (C.A.Fed.,1983.) “ABBA” used on albums – was not the source the record company is deemed the source of the GOODS.
			Name of group …merely identifies the Band: … “applicant has done no more than show the name of the recording group, "TOYZ", on a record cover. Such a showing "* * * will not by itself enable that name to be registered as a trademark."
				In re Peter Spirer  225 U.S.P.Q. 693 P.T.O.  (T.T.A.B. Feb. 27, 1985)
		Must use on series of goods and
		Be used as the source identifier and not just the name of the person.
			Proof: Agreement with Record Company showing it was only a manufacturer and distributor.
		Affects whether a name can be registered.
	Full Story, Get: P.T.O. Examination Guide No. 2-99 September 29, 1999 online at www.uspto.gov
	VINCE GUARALDI ® FOR CLASS 09 RECORDINGS REGISTERED 2002
		Over 25 years after the Famous “Charlie Brown” Cast Your Fate to the Wind
		Jazz composer & musician died.

U.S. – EU: USE vs. Registration

	U.S. Trademarks:
		Right by USE under Lanham Act
		Trademarks represent the Good Will of the Name to the Consumer.
		Internet Domain Names behave like Trademarks
			Courts do not always treat Domain Names like Trademarks
		Searches MUST include “Common Law”
	EU- FIRST TO REGISTER
			U.S. ALLOWS ITU applications for near - filing date use
			Rest of World => Register the mark

Trademark Prosecutions can Alter Domain Name rights…

	A registered Trademark is more likely to prevail over an unregistered mark
		But a mere unexamined “otc” registration from Tunisia may not be recognized to defeat the famous.
			Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com“ Case No. D2000-0847Case No. WIPO D2000-0847 October 12, 2000
	If P.T.O. denies or opposes registration there is a Prosecution History in the File Wrapper: evidence either side may use.
		If a mark was not registered or “Actioned” because it was
			Generic
			Descriptive or
			Geographical
		It may lose a UDRP action.
	Standards for “Confusingly Similar” differ from USA to UDRP
		UDRP uses no standard U.S. uses Case law tests: Sleekcraft Factors
				AMF v. Sleekcraft  204 U.S.P.Q. 808 (9th Cir,  1979)

Exporting the
First Amendment? Sucks sites

	SUCKS websites may be legitimate comment, criticism - Exporting the 1st Amendment?:
		Prepare to defend your GOOD NAME
	Defamatory statements are protected
		Savin Copiers unable to “get” SavinSUCKS.COM:
			The “bad faith” in the Policy have at least one element in common: … that the respondent, at the time the domain name was registered, harbored an intent that related in some manner to the complainant or its trademark.”
				Savin Corporation v. savinsucks.com (Claim Number: FA0201000103982 March 5, 2002)
			The Panel: “Although Complainant’s trademark rights are valid, they are nonetheless limited by the Respondent’s First Amendment rights. Under the First Amendment of the United States Constitution, Respondent has an unfettered right to hold or express his opinion …that ‘Savin Sucks’…”

Exporting the
First Amendment? UDRP

	NO 1st Amendment in UDRP – WIPO panel limits use: in transferring wal-martcanadasucks.com  to the complainant, “The Panel … decision does not address legitimate freedom of expression sites … [do not] characterize this decision as seeking to stifle freedom of expression … by ordering the transfer of "sucks" formative names. …this decision to serve[s] neither …aim. This decision is directed to a blatant abuse of the domain name registration process -- no more, no less.”
		The panel found the use was commercial, and “not within the scope of fair use or legitimate noncommercial use permitted by paragraph 4(c)(iii) of the Policy”
			Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, (July 20, 2000) WIPO Case No. D2000-0477

Courts may use foreign law against U.S. user, and U.S. law against a Foreign Judgment…

	Barcelona.Com, Inc. v. Excelentisimo Ayuntamiento de Barcelona 2002 WL 359759 E.D.Va. (Feb. 22, 2002)
		Cannot use name of European cities even with a legitimate travel business aimed at boosting tourism there.
		Court not bound by an ICANN decision and
		U.S. Court Followed Spain law to determine bad faith & Trademark validity, where mark was registered:
			First to properly register a trademark is the only legally authorized user.
			The Defendant had no right to use the first-registered mark under Spanish law and thus the use and attempts to sell were bad faith.
	Yahoo and the unwanted memorabilia, Yahoo! V. La Ligue Contre Le Racisme Et L’Antisemitsme, C-00-21275 JF19
		1st amendment will protect US version of services aimed at the world from the effect of a French court ruling if to enforce the order would be abhorrent to the Constitution.

Domain Names 2003:
Working a Balance

	Internet Changed the Trademark Rules
		Instant “use” and worldwide publication of Trademarks
		NSI had instant litigation and invented 1st Domain Name Resolution system.
		UDRP under ICANN followed – better but criticized.
	Domain Names are not easy to obtain & keep: (Corninthians.com)
		Lost to U.S. poster on WWW of biblical passages
			Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises Case No. D2000-0461
		Gained back in ACPA- Dec. Action.
	Playing field increases .BIZ*
		* Predict that the “.COM” will remain most popular and sales of other and new TLDs will be slack.
		BIZ “STOP 1” procedure similar to UDRP 1 Start-up Trademark Opposition Policy

If you are Famous:  UDRP vs. ACPA or  both…

	First Amendment & Right of Publicity Play Roles in U.S. - Based and UDRP cases involving US litigants.
	UDRP Does Not have to use any particular law
		It is suggested a BEST PRACTICE: define what law an arbitrator applies in contract.
		Rollerblade® + ing = verb is “generic” as used by the Respondent thus weak Trademark rights.
			Rollerblade, Inc. v. CBNO. [rollerblading.com] Case No. D2000-00427 August 24, 2000
		Unusually large amount of other case citations – be in control, explain the law you will use and how it applies or arbitrator may supply what they know best.
			Use of law of both countries where litigants from US and Switzerland Isabelle Adjande
	UDRP: Shop for Arbitrator Panels Carefully
		Arbitrators can be arbitrary
		Use contract terms to specify Law and Details of ADR
		Review Past decisions by arbitrators
		SEE: www.incann.org

Relationship Between Trademarks and Domain Names

	Domain Name is international.
		Trademark only viable in country where it is registered. No extraterritorial effect.
		NEW: Madrid Protocols allow for international registrations.  Congress is working on it.
	Domain Name Capable of identifying source of a web site.
		Trademark identifies source of goods/services.
	Domain Names are all unique BUT FOR the TLD (the dotcom-dotnet-dotinfo-dotBIZ).
		Trademarks can be identical but if on different goods, they can both be registered.
		P.T.O. - Domain Names as Reg’d Trademarks – analogous to an 800-number.

Interplay between
UDRP and ACPA
Sanctions for Too Many Cases:

	Storey v. Cello Holdings, L.L.C. (S.D.N.Y.,2002)  182 F.Supp.2d 355 attorney held for sanctions, attorney fees and coverage of Court costs. Cello Company Limited  sued Storey for the Domain Name it wanted.  The Cello attys advised the Court it had settled, though it was only discontinued by Cello.
	Later Cello complained under UDRP to eResoultion.
	Then, while the ADR was pending, Cello filed complaint in New York for the Domain Name asking for a Declaratory Judgment that Storey was not in bad faith. The eResolutiuon Panel held for Cello and the New York action was dismissed for lack of merit regarding the word Cello as a Trademark.
	Attorneys misrepresented the nature of the “dismissal” &  they had a pending case in Court while filing the UDRP claims.
	Because the proceedings were almost identical in the UDRP and original actions, “--for precisely the same reasons--the alleged confusion between Cello's mark "Cello" and "cello.com."
		Cello was barred from reasserting its claims in the arbitration proceedings.
		The bottom line of this is do not attempt to use UDRP as a substitute for a Court action.

Interplay between
UDRP and ACPA
 Declaratory Relief and ACPA as Appeal from UDRP

	ICANN waits - 10 days to file
	Dec. Action to Repair UDRP errors:
		15 U.S.C. § 1114(2)(D)(v) – ACPA - Reactivation
			If registrar cancels or transfers a Domain Name based on knowing misrepresentation in a UDRP action,
			A civil action for costs, attorney fees and to have reactivation of the domain name or transfer of the domain name back to the Respondent.
		28 U.S.C. § 2201  - Declaratory Judgment (DJ) Actions
			“…declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” For Declaration that use of Domain Name is not unlawful  as a final judgment.
		SALLEN v. CORINTHIANS LICENCIAMENTOS LTDA No. 01-1197  U.S.C.A. 1st DIST MASS. (Dec. 5, 2001)
			Overturned a UDRP-ICANN ADR Ruling to RETURN a Domain Name to a registrant / former Respondent in the UDRP action.

UDRP Rules: Paragraph 4(a) Basic Elements

	Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
	(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
	(ii) that the respondent has no legitimate interests in respect of the domain name; and,
	(iii) that the domain name has been registered and used in bad faith.

UDRP Rules: Paragraph 4(a)(iii) – Bad Faith Use

	“…Without limitation, -- shall be evidence of the registration and use of a domain name in bad faith:
	circumstances indicating … you have … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or
		to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
	(ii) Pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,; or
	(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
	(iv) using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

UDRP: Famous Names may not fare well:  Arbitration can be arbitrary…

	Bruce Springsteen -v- Jeff Burgar and Bruce Springsteen Club Case No. D2000-1532.
		The panel “under 4(b)(ii) of the UDRP held that the registration of the Domain Name had to prevent the owner of a trade mark or service mark from reflecting the mark "in a corresponding domain name“…  Bruce had been able to register a “.NET” version, he lost.
		Criticism:  It may not be good faith to use the ONLY “.COM” available because Users might believe the “COM” to be the true official site for an artist. See: Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, Case No. D2000-1838
			BEST PRACTICE: Gather and be ready to present ALL evidence you have on trademark rights and use!

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UDRP: Famous with Teeth

	Madonna – lots of proof, different panel and continuing, well used, ®egistered trademarks makes a difference.
		Respondent here asserted use of a “dictionary word”, and the panel agreed there is another use of the name.
			We find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. His Tunisia registration of no moment
			Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com“ Case No. D2000-0847Case No. WIPO D2000-0847 October 12, 2000
	Garth Brooks with ®eg’d Trademarks
		simply operating a "fan-site“ is a no-no without proper linking, Name & likeness, Trademark and other licenses:
			While the Respondent has not yet attempted to sell the site, it is or has been in the line of business of selling Domain Names.
			“… given the nature of Respondent’s other businesses in the business of the brokerage and registration and sale of domain names, it is reasonable to infer that Respondent registered the domain name with the intent to attract Internet users for commercial gain.”
			Garth Brooks v Commbine.com, LLC WIPO Claim Number: FA0011000096097. January 3, 2001

Famous – Political Religious & Wealthy under UDRP

	KennedyTownsend - Political Fund raising is not Commercial Use
		WIPO: “…protection of an individual politician’s name no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation as set forth in the…Report.”
		WIPO 2nd Report: Policy on famous names that if the name did not itself raise funds or have commercial activity, it cannot be given Trademark rights.
			NO alter-ego in political Complainant and her fund raising corporations.  Only the “Friends of” should file since it is the fund raising entity.
			KennedyTownsend v. Birt  WIPO  D2002-0030 4/11/02
	Gerry Falwell -  religious but no Commercial Use
		"Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society." Second WIPO Report, paragraph 199.
		Because Rev. Falwell is careful to use his name connected with Charities, not deemed commercial, he loses.
		The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, WIPO Case No. D2002-0184
	Ted Turner -  famous but he is a “one-off category”
		Ted Turner is a surname and not a Trademark – thus the name tedturner.com is up for sale.
		there is insufficient evidence that his personal name has been used commercially – though is name is a name for “personal name of a well-known businessman.”
		as a trademark to promote goods and services other than to use his name IN another mark (Ted Turner Film Properties)
		R. E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi WIPO Case No. D2002-0251July 4, 2002

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U.S.A.: Anticybersquatting Consumer
Protection Act   Elements:

	Best for U.S. Domain Names:
		Original Action
		Money Damages
		UDRP appeals and
		Declaratory Relief Actions
	ELEMENTS:
		One who “Registers, traffics in, or uses a domain name of a mark that is distinctive at the time of registration of the domain name that is identical or confusingly similar to that mark or mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark.
		With the bad faith intent to profit from that mark…
		Domain Name registrant could:
			Lose the Domain Name
			Pay Money Damages
			Have Domain Name put on hold
			15 U.S.C.  1125 (d)(1)(A)

ACPA  Bad Faith Intent to Profit - Factors:

	Applies Traditional US trademark notions of first to use and nature and extent of use.
	Jurisdiction over the “Res” and In Rem
		Personal Jurisdiction can be difficult to obtain.
	Virginia and California are target states
		California because ICANN is here.
	Best Practice: Register important Trademarks
		Note that over 250,000 marks were applied for in 2000 in the US – P.T.O.
		2002-2003 – Slow Down
		Register INTERNATIONALLY
		Domain Name registrations declined 2002.
		DOT-COM Trademark registrations seriously declined in 2002.

ACPA  Bad Faith Intent- Offers to sell the Domain Name:

	Offers to sell: to the trademark owner or others hold the Domain Name for ransom, Especially for more than the cost of registration.
	The quantity of the Domain Name user’s content  that might be “valid” content:
		1st Amendment “content” concerns – The “Sucks” cases
	Did the Domain Name registrant know the offended trademark?
		SPORTY'S FARM L.L.C., v.SPORTSMAN'S MARKET, INC, Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A., 2nd Cir. Feb. 02, 2000, 2000 WL 124389.
			“Cybersquatting involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners.”

ACPA & Trademark 2002: Broadening Jurisdiction? “Simon Says – Wine”

	My Simon.com:
		Melvin Simon founded SPG mall management 40 years ago but did no branding.  MySimon.com is an I-Shop for comparison shoppers.
		TRO failed to issue, SPG dropped its request for preliminary inj and in so doing may also say it faces irreparable harm of Trademark infringement. $Millions in damages awarded by jury was found in MySimon’s JMOL motion to be lacking strength.
		Court thus lacks jurisdiction under 28 U.S.C. 1292(a)(1) permitting appeal if a Court denies an injunction. SPG v. mySimon No.01-1444 (UCSA 7th Cir, 3/2002) and dismisses SPG appeal. Trial is pending
	Ernesandtjuliogallo.com:
		Domain Name cannot have “&” other symbols and thus the name is = the winery’s famous Trademark.
		Dilution occurs when, after the ACPA case is filed, the Defendants post anti-wine ads.
		Bad faith can be presumed when Defendants warehouse Domain Names of famous marks and lie in with for ACPA to become unconstitutional
			E&J Gallo Winery vs. Spider Webs 129 F. Supp.2d 1033,  So.Dist Tx, 5th Cir No. 01-20333, 4/2002
	Bottom Line: Register all permutations of a Domain Name to avoid costly litigation.

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ACPA   In Rem Action: When The Bad Guy is Not Available

	15 U.S.C. 1125 (d) (2) (A) provides for an In Rem action –
	In Rem -  against the property rights in a Domain Name
	And the Court finds the owner is not able to obtain in personam Jurisd. over person…
	If you cannot locate the Domain Name Registrant by notice
	Then you may, by publication of notice as ordered by a court, obtain in rem jurisdiction in the district of the Court where the register has its offices.
	Best Practice: Be sure to follow the exact statutory requirements of attempted notice and other steps to insure proper jurisdiction.

No Dilution – In Rem Remedy

	Porsche redux:  In Porsche’s first case, pre- ACPA, it was denied in Rem jurisdiction because under 15 U.S.C. 1125 [c] (dilution) + 1655 (in rem over property)  there is no in Rem (Porsche v. allporsche No 99-1804, 99-2152 (4th Cir. 2000)
		Now under ACPA, though Court refused to stretch traditional dilution it succeeds in an In Rem ACPA:
		11th hour submittal of Defendant to in personam in California does not divest Court of In Rem in Va.
			Under 15 U.S.C. 1125(d) Special In Rem is available, no need to allege dilution
			Porsche v. *porsche.*…No.01-2073, 01-2028,  U.S.C.A. 4th Cir. Aug./2002)

ACPA   Retroactivity, Money Damages

	Applies to domain names that were registered before and used after the law's enactment, however:
	Injunctive relief and transfer of the domain name are the only available remedies if the domain name was registered before the law's enactment.
	Money Damages (whether actual or statutory) are available only if the domain name was registered after the law's enactment (which was Nov. 29, 1999).
		Need to show actual loss by lack of “hits” to YOUR site before & after the offending Domain Name!
		It is easier to show Squatter’s profits made in bad faith.
		Joseph C. Shields dba Joe Cartoon Co.v. Zuccarini (April 24, 2001 U.S.C.A. 3rd CIR. No. 00-2236)
		Damages based on “punitive” theory Statutory Damages $10,000/Domain Name, x8.

Is a Domain Name “Property?”

	Recent case: Network Solutions Inc vs. Umbro International Va. S. Court 4/21/00 No 991168, suggests that if the URL is a or permits a service, it is not garnishable under Virginia’s garnishment laws.
	15 U.S.C. Sec. 1125 (d) allows courts to order the Domain Name register to turn over a URL to a trademark owner.
	No Money Damages in an In rem Action.
	NSI position: URL is service connecting computers by an alphanumeric system and NO MORE.
	May be transferred by contract.
	Porsche Case: a Domain Name is not property that can be diluted Porsche v. *porsche.*…No.01-2073, 01-2028,  U.S.C.A. 4th Cir. Aug./2002)
	Domain Name may take on the Properties of a Trademark
		Become a source indicator for goods sold, services rendered
		Become famous and go with the good will (AMAZON.COM)
		Can be registered as Trademark with the DOT COM

Is a Domain Name “Property?” SEX.com

	Kremen vs. Cohen
		Facts: Cohen wanted Kremen’s SEX.com, wrote letters to NSI alleging he was transferred the Domain Name with confirmation of Kremen’s former administrator.
		Issues – was this CONVERSION?
		Held NO – Historically, the tort of conversion was confined to tangible property. See 5 Witkin, Summary of California Law, Torts § 613 (9th ed.1988). “However, California law does recognize "conversion of intangibles represented by documents, such as a bonds, notes, bills of exchange, stock certificates, and warehouse receipts." Id. Intangible property such as "goodwill of business, trade secrets, a newspaper route, or a laundry list of customers" are not subject to conversion. Kremen lost millions over 4 years.
		Does not adopt Umbro because Umbro was a garnishment and Right in a Domain Name exist apart from NSI agreements.
		It may be: forgery, and conspiracy to convert property RICO and Fraud theories U.S.C.A. 9th Cir. No. C 98-20718 May 30, 2000.
	Bottom Line – Allege all possible theories not just conversion.

Domain Name Registrants Rights

	Domain Name Registrants have rights to use a name that suits their legitimate needs and to express opinions.  The law will continue to strike a balance between conflicting rights.
		Right to register Domain Name for Sale (South Bank)
		Right to Express opinion [“Sucks” sites] (Bihari Case)
		Right to Comment on a Copyrighted Work (ACPA CA Business & Professions Code  )
		Right to hide behind lack of commercialism:
			Ford: Cases in Point

Domain Name Registrants Rights Cybersquatters Rights?

	1. Selling Domain Names is not Using Them:
	Auction Domain Names: The site: www.greatdomains.com is an auction site specializing in auctioning Internet domain names
		Owners of the site do not own the Domain Names.
		Third parties sell such names as “fordparts.com” and “volvoparts.com”
		Thus, Great Domains cannot be trafficking in that which it has no rights to. Therefore There can also be no cybersquatting.
			Ford Motor Co. v. Greatdomains.Com, Inc.177 F.Supp.2d 635E.D.Mich.,2001. Dec. 20, 2001.
			Recall Universal v Corley et al.? 111 F. Supp. 2d 348

Lack of Commercialism  and Asserted “Art”

	2. Cyber art is not infringing:
	Ford sued: Fuckgeneralmotors.com: Dilution and Trademark claims
		No commercial website – just links to GM called “cyberart”
		creative use of links, no commercial use of the link and “The essence of the Internet is that sites are connected to facilitate access to information.”
		injunction against another person's commercial use in commerce of a mark: 15 U.S.C. § 1125 (c ) Dilution

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Cybersquatters Rights?
Bad Trademarks

	3. Use of Generic and Geographical Names
	Generic Words do NOT a strong mark make:
		SouthBank had branches in 5 states BUT:
		“South Bank” is a business center in London
		Web developer had, therefore “legitimate” right to sell “south bank.com” to its customer.
		SOUTH Bank v. Media Street, Case No. D2001-0294 (WIPO, April, 2001)
			Note- the Bank now has the Domain Name.
	TV Stations Call Letters
		KCTS Television Inc. v. Get-on-the-Web Limited Case No. D2001-0154 (4/2001)
		Under principles of U.K. law, the same as E.U. law, the mark is not
		confusingly similar.
		The name is ALSO the Kensington & Chelsea Tourism Sites …No transfer

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Bottom Lines:

	Register Trademarks!
	Obtain All permutations of Domain Names
		Register SUCKS and DAS-HED versions.
	Select marks carefully especially IF they are also to become Domain Names.
	Keep Litigation costs down – plan way ahead –
		ONLINE searches are not enough
		analysis must be international
		Include “Common Law.”

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