TRO issued against domainer’s use of “mylennar.com”

Lennar Pacific Properties Management, Inc. v. Dauben, Inc., No. 07-1411, 2007 WL 2340487 (N.D.Tex. August 16, 2007)

Companies sometimes find that opportunistic purchasers of domain names (often referred to as “domainers”), will purchase a domain name quite similar to that of the company, and establish a site at the URL loaded with revenue-generating sponsored ads. To accomplish these purposes, domainers seem to prefer the services of companies like HitFarm and Domain Sponsor. A web user types in the confusingly similar URL and is bombarded with pop-up ads and sponsored links to goods and services, often competitive to the company whose name or trademark is being appropriated in the URL.

The Lennar Corporation, an established home builder, noticed that a company called Dauben, Inc., d/b/a “Texas International Property Associates,” set up a HitFarm site at mylennar.com. Dauben’s page purported to feature “resources and information on Floor plans and Building construction.” It also contained a link titled “Home building,” which when clicked on, took the user to another page of sponsored links to homebuilders competitive to Lennar.


Lennar filed suit for trademark infringement in Texas federal court, and sought injunctive relief. The court granted the motion for temporary restraining order, prohibiting the defendant from using, canceling or transferring the domain name to any person or entity other than Lennar, and from using any domain name that incorporated or was confusingly similar to the Lennar mark.

The court held (1) there was a substantial likelihood of Lennar’s success on the merits of the trademark claim; (2) there was a substantial threat that Lennar would suffer irreparable injury if the injunction was denied; (3) the threatened injury outweighed any damage that the injunction might cause Dauben; and (4) granting the injunction would not disserve the public interest.

It looks like this Texas International Property Associates has targeted other companies in the past, and has come up empty handed. See, e.g., this WIPO opinion, in which Fry’s Electronics wrestled to get the typo-squatted domain name “fyrselectronics.com”.

Decision appears below (click through if it’s not showing up in the RSS feed):

Court shuts down unauthorized “e-Certificate” site

Ex parte temporary restraining order issued against operator of northwestdiscountcoupons.com

Northwest Airlines gives away “e-Certificates” to passengers who experience flight delays, cancellations, or other inconveniences. These e-Certificates are redeemable for significant discounts on future ticket purchases. Passengers redeem e-Certificates by visiting Northwest’s website and entering the unique coupon number appearing on the face of each e-Certificate. Until recently, passengers were allowed to give away their e-Certificates to others, but were not permitted to sell them.

In the course of investigating the unauthorized sale of e-Certificates on sites like eBay and Craigslist, a Northwest employee discovered the site northwestdiscountcoupons.com, allegedly operated by one Mike Bauer. To confirm its suspicions, Northwest had one of its interns purchase a number of e-Certificates from the site.

Northwest filed suit against Bauer alleging a number of causes of action, including false advertising, tortious interference, cybersquatting, and trademark infringement. It sought an ex parte temporary restraining order against Bauer. The U.S. District Court for the District of North Dakota granted the motion.

Northwest asserted that two independent causes of action entitled it to injunctive relief. First, it argued that Bauer’s misleading use of the NORTHWEST mark violated the Lanham Act and caused continual and irreparable damage to the value and trust Northwest had cultivated in its name and mark. Second, Northwest argued that Bauer’s alleged illegal and fraudulent sale of e-Certificates to unknown and unsuspecting customers was a violation of public trust that could not be permitted to continue under North Dakota law.

The court went no further than analyzing the alleged violations of the Lanham Act to determine that the temporary retraining order was warranted.

It held that Northwest was likely to succeed on its trademark infringement claim, where, among other things, the defendant was alleged to have registered a domain name that was identical or confusingly similar to Northwest’s distinctive mark. On this point, the court cited to Green Products Co. v. Independence Corn By-Products Co., 992 F.Supp. 1070, 1076-77 (8th Cir.1997) and Faegre & Benson, LLP, v. Purdy, No. Civ. 03-6472 (MJD/JGL), 2004 WL 167570 (Jan. 5, 2004, D.Minn).

Further, citing to Coca-Cola Co. v. Purdy, [No. 02-1782 ADM/JGL, 2005 WL 212797 (Jan. 28, 2005, D.Minn)] the court found that “the nature of the Internet makes if unlikely that consumers can avoid confusion through the exercise of due care.”

Northwest Airlines, Inc. v. Bauer, (Slip Op.) 2006 WL 3733295 (D.N.D., December 15, 2006)

Summary judgment denied in a case of creative typosquatting

In the case of Lands’ End, Inc. v. Remy, the defendant website owners were accused of crafting a clever scheme to get some extra commissions from their affiliate relationship with landsend.com. It looks like the scheme has backfired, however, as Lands’ End’s claim against the defendants under the Anticybersquatting Consumer Protection Act, [15 U.S.C. §1125(d)] (“ACPA”) has survived a summary judgment motion and the case is heading for trial.

Lands’ End operates an affiliate program that allows owners of approved websites to put up links to landsend.com. If a visitor to one of those approved websites clicks on the link and ends up buying something at the Lands’ End site, the affiliate website owner gets a 5% commission. The defendants in this case signed their websites up to be affiliates, and were approved.

In the process of signing up to become affiliates, however, the defendants only disclosed the URLs of their legitimate websites, e.g., savingsfinder.com. They did not tell Lands’ End that they also owned other domains like lnadsend.com and landswnd.com.

The defendants set up these other domain names so that if an Internet user accidentally typed one of them into a web browser, he or she would be automatically and invisibly redirected to the Lands’ End site. If one of those typosquatting victims purchased something at landsend.com, the defendants would pick up a commission.

The redirect only worked the first time a user would mistype the domain name. Perhaps to avoid detection, the defendants set up the redirect so that if a user typed the wrong domain name again, a 404 error would appear. (“Oh, I guess it was just a fluke.”)

After it noticed the defendants’ setup, Lands’ End filed suit alleging, among other things, violation of the ACPA. The defendants moved for summary judgment, arguing that there was no showing of bad faith. After all, the defendants argued, their scheme had sent visitors to the Lands’ End site, not diverted them away.

The court rejected the defendants’ argument and denied the motion for summary judgment as to the ACPA claim. It held that Lands’ End adduced substantial evidence to show that the defendants exploited the Lands’ End trademark to get commissions to which they were not entitled. Accordingly, the question of bad faith should ultimately be left up to the finder of fact.

Lands’ End, Inc. v. Remy, — F.Supp.2d —-, 2006 WL 2521321 (W.D. Wis., September 1, 2006).

This entry originally posted by Evan Brown at InternetCases.com.

Sometimes “may” means “must”

Virginia federal court reads publication requirement for in rem jurisdiction under ACPA.

Investools, Inc. recently filed an in rem domain name proceeding against a Canadian entity that registered the domain names investtools.com and investtool.com. In rem domain name proceedings are provided for under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. 1125(d), and are a handy way for a trademark owner to acquire a domain name from a cybersquatter when the cybersquatter can’t be found e.g., is located outside the U.S. [More on in rem proceedings.]

The ACPA requires that a plaintiff demonstrate four things to establish in rem jurisdiction over a domain name.

— First, the plaintiff must show that subject matter jurisdiction is proper in the district where the action is brought. Since the ACPA provides for jurisdiction in the judicial district in which the domain name registry is located, actions involving .com domain names will be proper in the Eastern District of Virginia for at least as long as Verisign is located there.

— Second, a plaintiff must establish that it is unable to obtain in personam jurisdiction over the defendant where the suit is brought. This is usually pretty easy to do where the registrant is a foreign entity with no ties to the U.S.

— Third, the plaintiff must show that it has perfected service of process as described by the ACPA. Under 15 U.S.C. §1125(d)(2)(A)(ii)(II), this involves:

(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and

(bb) publishing notice of the action as the court may direct promptly after filing the action.

(It is on this third point that the court made the important ruling in this case. We’ll come back to take a closer look at that after laying out the fourth element.)

— Fourth, a plaintiff must establish the elements of trademark infringement or trademark dilution.

In this case, the court held that Investools had satisfied the first, second and fourth elements for establishing in rem jurisdiction. It would not award summary judgment, however, because of a failure to meet the two-step third element.

Although Investools had sent notice by mailing and emailing the complaint to the listed registrant, it had not published notice of the action as provided for in (bb).

And why should it have? Nothing in the case indicates the court had directed that any publication occur. Apparently, the plaintiff was supposed to have interpreted the case of Cable News Network L.P., L.L.L.P., v. CNNews.com, 177 F.Supp.2d 506 (E.D.Va. 2001) to stand for some permanent order that publication is required in every in rem case.

One could reasonably disagree with the court’s determination that (bb) requires filing in every case. A perfectly sensible interpretation would be that it is required only in those particular actions where the court specifically directs it. But that is not the way the Eastern District of Virginia reads it, and it looks like an in rem plaintiff must publish notice of the action regardless of whether it’s specifically ordered to do so.

Investools, Inc. v. investtools.com, (Slip Op.) 2006 WL 2037577 (July 17, 2006).

Mall owner uses Section 43(a) of Lanham Act to successfully challenge domain name registrations

A few days before the public groundbreaking ceremony for the shopping mall that would be known as Provo Towne Centre, Plaintiff Rasmussen, unaffiliated with the mall, registered the domain name provotownecentre.com. Claiming an intent to start an online shopping mall, he also registered the domain names provotownecentre.biz and provotownecentre.net.

In an arbitration proceeding brought by the owner of the Provo Towne Center mall before the World Intellectual Property Organization (“WIPO”) pursuant to the Uniform Domain Name Dispute Resolution Policy, Rasmussen was found to have registered the domain names in bad faith. As an “apparent appeal” of the WIPO decision, Rasmussen filed suit in a Utah federal court against the mall owner, General Growth Properties, Inc.

General Growth filed several counterclaims against Rasmussen, alleging, among other things, violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a). It then moved for summary judgment on that claim. (It is interesting to note that although the case had at its root the use of a domain name, the opinion makes no mention of the Anticybersquatting Consumer Protection Act, another portion of the Lanham Act specifically drafted to address a cybersquatting case like this one.)

The court granted General Growth’s motion for summary judgment, and ordered the domain names transferred.

In its opinion, the court considered two elements to find that no genuine issue of material fact remained in regard to the alleged violation of Section 43(a). First, the court found that although General Growth’s mark “Provo Towne Centre” was merely descriptive of the services that General Growth provided, there was “exhaustive, unrebutted evidence” to show the term had acquired secondary meaning. Thus, it was protectable as a trademark.

Secondly, the court considered whether the use of the domain name would create a likelihood of confusion with General Growth’s “Provo Towne Centre” mark. It found that confusion would likely occur. The court determined that the marks were virtually identical, and that the bad faith intent found by the WIPO panel had been confirmed in the record before the court. It found the similarities between the parties’ “use and manner of marketing the services” was “problematic,” comparing Rasmussen’s intended online shopping mall with General Growth’s establishment of a successful site promoting the Provo Towne Centre mall. The court also found that the lack of sophistication in the affected consumers and the strength of the Provo Towne Centre mark weighed in favor of a finding of likelihood of confusion.

Accordingly, because General Growth had a protectable mark, and because Rasmussen’s use of the domain name would likely cause confusion, the court held that no reasonable jury would find in Rasmussen’s favor under Section 43(a).

Rasmussen v. General Growth Properties, Inc., 2005 WL 3334752 (D. Utah, December 7, 2005).

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