Category Archives: Cybersquatting

Noncommercial use of BOSLEY MEDICAL trademark as domain name does not constitute infringement

In a decision released April 4, 2005, the Ninth Circuit has affirmed the district court’s determination in Bosley Medical Institute, Inc. v. Kremer that the registration by defendant of the domain name bosleymedical.com did not constitute infringement of plaintiff’s BOSLEY MEDICAL trademark. The court remanded the matter for further proceedings, however, on plaintiff’s Anticybersquatting Consumer Protection Act (ACPA) claim, as the district court improperly required a showing of commercial use of the domain name as necessary to sustain an anticybersquatting claim.

Defendant Kremer was unhappy with the hair replacement services he received from Plaintiff Bosley, and registered the domain name bosleymedical.com in 2000. In 2001, he developed a site at that address which was critical of Bosley’s services, and included information about an investigation of Bosley that took place in 1996. The site linked to a “sister site,” bosleymedicalviolations.com, which contained links to a newsgroup, which in turn linked to certain of Bosley’s competitors. Kremer earned no revenue from the bosleymedical.com site.

Bosley filed suit alleging trademark infringement, dilution, and violations of the ACPA. The district court granted summary judgment on these claims, holding that Kremer’s use of the mark and the domain name were noncommercial in nature, thus there could be no recovery for either trademark infringement, dilution or cybersquatting. On appeal, the Ninth Circuit affirmed as to the claims for trademark infringement and dilution, but reversed and remanded as to the ACPA claim.

Bosley presented three arguments in support of its claim that Kremer’s use of the trademark in the domain name was commercial in nature, thus susceptible to liability for infringement and dilution.

First, it argued that the links on Kremer’s site leading to commercial sites made it commercial in nature. The court disagreed, noting that the only links from Kremer’s site led to other noncommercial sites which in turn linked to commercial sites. Such a “roundabout path to the advertising of others [was] too attenuated to render Kremer’s site commercial.”

Second, Bosley argued that Kremer had created his site as part of an extortion scheme in an attempt to profit from registering the domain name. The court rejected this argument as well. It determined that there was no evidence that Kremer had tried to sell the domain name itself.

Third, Bosley argued that Kremer’s use of the Bosley trademark was in connection with Bosley’s goods and services, inasmuch as Kremer prevented visitors to the website from obtaining Bosley’s goods and services. The court rejected this argument by holding that Kremer’s use of the Bosley mark was not in connection with the sale of goods or services, but was in connection with the expression of his opinion about Bosley’s goods or services. “Kremer’s use of the Bosley Medical Mark simply cannot mislead consumers into buying a competing product – no customer will mistakenly purchase a hair replacement service from Kremer under the belief that the service is being offered by Bosley.”

As for the ACPA claim, the court held that the lower court erred in granting summary judgment for Kremer, by improperly including the requirement that the domain name be used for commercial purposes. The court cited to the 2004 Eighth Circuit decision of Coca-Cola v. Purdy, 382 F.3d 774, noting that “the use of a domain name in connection with a site that makes a noncommercial or fair use of the mark does not necessarily mean that the domain name registrant lacked bad faith.” Because the district court in this case had granted summary judgment without allowing discovery on the issue of whether Kremer’s registration was made in bad faith, the Ninth Circuit sent it back to the district court for further proceedings.

Bosley Medical Institute, Inc. v. Kremer, No. 04-55962 (April 4, 2005).

Update: Professor Eric Goldman has reported on this case at the Technology & Marketing Law Blog.

NYJETS.COM for aircraft leasing doesn’t fly with WIPO panel

An administrative panel of the World Intellectual Property Organization (“WIPO”) has ordered the transfer of the domain name “nyjets.com” to the owner of the New York Jets football team. The panel determined, among other things, that the registrant’s unsupported assertions of plans to use the name for an aircraft leasing business did not prove it had rights or legitimate interests in the name.

NFL Properties LLC and New York Jets LLC brought this WIPO action under the Uniform Domain Name Dispute Resolution Policy, seeking a transfer of nyjets.com from Link Commercial Corp., a company located in the Bahamas. The Complainants argued that (1) the domain name was confusingly similar to the NEW YORK JETS and NY JETS trademarks, (2) the registrant had no rights or legitimate interests with respect to the domain name, and (3) the domain name had been registered and used in bad faith.

The panel awarded a transfer of the domain name. The transfer was ordered, however, only to the New York Jets and not NFL Properties, because the record showed that NFL Properties was merely a representative of the New York Jets regarding licensing and protection of trademark rights. The panel held that “[a]ppointment as a representative to exploit property does not necessarily confer rights in that property on the representative.”

The panel determined that the domain name was confusingly similar to the registered mark NEW YORK JETS. If further determined that Link had not proven it had rights or legitimate interests to use the domain name for an aircraft leasing business. The first mention of one “Norman Yacopino Jets” at nyjets.com came after the NFL and the New York Jets had challenged Link’s ownership of the name. Link had made “unsubstantiated assertions” that its preparation to use the name for this business pre-dated being contacted by the Complainants. The panel determined, however, that such assertions “[did] not constitute evidence of demonstrable preparations.”

In determining that Link had registered and used the name in bad faith, the panel looked to the elevated price Link at which it had offered the name for sale (no less than $2,000), and the fact that Link had a history of registering other domain names in bad faith.

NFL Prop. LLC v. Link Commercial Corp., Case No. D2004-1087 (March 10, 2005).

Court orders truck driver to deliver domain name

The U.S. District Court for the District of Massachusetts has determined that the registration of the domain name leasecomm.org by a disgruntled former customer was made in bad faith, thus violating the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §1125(d). The court placed special emphasis on the fact that the registrant had offered to sell the domain name to the rightful owner of the LEASECOMM mark without having used the domain name in connection with a bona fide offering for sale of goods or services.

The procedural alignment of the parties in this case was a bit unique. Plaintiff Harrison, a retired truck driver, had lost a dispute with Defendant Microfinancial over the domain name leasecomm.org. The dispute had been submitted to arbitration pursuant to the Uniform Domain Name Dispute Resolution Policy before an administrative panel of the World Intellectual Property Organization (“WIPO”). Microfinancial, Inc. v. Harrison, Case No. D2003-0396. Before the domain name could be transferred as ordered by the WIPO panel, Harrison filed suit to enjoin the transfer. Microfinancial counterclaimed under the ACPA, and both parties moved for summary judgment. The court granted Microfinancial’s motion, holding that Harrison had a bad faith intent to profit from the use of the LEASECOMM mark.

Leasecomm, Inc. (“Leasecomm”) is a wholly-owned subsidiary of Microfinancial, and owns the mark LEASECOMM. The mark has been used in commerce since 1985 and is the subject of pending applications with the United States Patent and Trademark Office. Leasecomm also owns the domain names leasecomm.com and leasecomm.net.

Harrison had become unhappy with the terms of a business arrangement he had made with Leasecomm, and in retaliation, registered the domain name leasecomm.org. He established a site at leasecomm.org critical of Microfinancial and Leasecomm’s conduct. Harrison offered to “give” the leasecomm.org domain name to Microfinancial in return for compliance with various demands, including refunding money Microfinancial had allegedly “stolen” from “victims” and writing letters of apology.

Harrison claimed that his offer to transfer the domain name in exchange for compliance with his demands was merely “rhetorical and polemical” and thus did not evidence a serious offer to make a deal. The court rejected Harrison’s argument and found that “the undisputed evidence is clear that Harrison sought to use the offered transfer of the domain name to Microfinancial as leverage to obtain financial benefit for himself and others (whom he described as victims.)”

The court considered several other bad faith factors under the ACPA (e.g., Harrison had registered multiple domain names with were identical or confusingly similar to Microfinancial’s trademarks) to determine that the Harrison registered the domain name in bad faith. It concluded that no reasonable jury could have found that Harrison did not have a bad faith intent to profit from his use of the domain name.

Harrison v. Microfinancial, Inc., 2005 WL 435255 (D.Mass., February 24, 2005).

KERACARE trademark diluted by registration of domain name KeraCare.com

The United States District Court for the Northern District of Illinois granted summary judgment in favor of a plaintiff who claimed that the defendant’s registration and use of fifteen domain names incorporating variations of plaintiff’s trademark KERACARE caused dilution of the mark.

Plaintiff Avlon owns the incontestable trademark registration for the mark KeraCare for hair care products. Defendant Robinson is in the hair care products industry as well, and does business under the name Sheldeez Hair Prouducts and Salon. Robinson registered at least fifteen domain names incorporating variations of Avlon’s mark, including www.keracare.com. From these sites, Robinson offered for sale hair care products made by both Avlon and Avlon’s competitors.

Avlon sued Robinson claiming, among other things, that Robinson’s incorporation of Avlon’s mark in his domain names diluted Avlon’s mark, in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). (Dilution is defined in Section 45 of the Lanham Act, 15 U.S.C. § 1127 as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.) Avlon moved for summary judgment on the dilution claim, and the court granted Avlon’s motion.

Robinson first argued that Avlon had failed to show the KeraCare mark is famous. The court disagreed, and found that the mark is famous. The court noted that Robinson’s actions in part betrayed the mark’s fame – if the mark was unfamiliar to the vast majority of shoppers, Robinson would not have registered at least fifteen variants of the word as domain names. The court also gave weight to the fact that Avlon’s mark was incontestable under Section 15 of the Lanham Act, 15 U.S.C. §1065. Finally, the court also gave weight to the fact that Avlon sells millions of dollars of KeraCare products annually, and that Robinson himself testified that the KeraCare line is one of four product lines that are “well known and respected in a marketplace ‘flooded’ with product lines.”

Robinson next argued that Avlon had failed to establish actual dilution of its mark as required by the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc. et al. 537 U.S. 418 (2003). The court was not persuaded by this argument. It looked to the portion of Moseley which states that “actual dilution can reliably be proved through circumstantial evidence–the obvious case is one where the junior and senior marks are identical.” Because Robinson’s domain names used Avlon’s exact marks, the court found that Avlon had shown actual dilution. The court noted that actual dilution was also supported by the fact that Robinson’s control over all possible variations of Avlon’s marks permitted him to decide what messages and goods are associated with such marks.

Avlon Indus. v. Robinson, 2005 WL 331561 (N.D.Ill. Feb. 8, 2005).