Lectures on Internet Law
(CSM04)
Prof. Khurshid Ahmad
Mrs. Tuğba Taşkaya Temizel
Department of Computing
School of Electronics & Physical Sciences
November 2004
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others
Hotmail Inc. (the Plaintiff), a free e-mail service provider,
filed a lawsuit against ALS Enterprises & others (the
Defendants) in the U.S. District Court Northern District
of California in 1998. [Hotmail v. Van$ Money Pie
including ALS Enterprises and others]
The Plaintiff sought an injunction against the Defendants,
one-time subscribers of the services of Hotmail Inc., as
they alleged that the Defendants have violated of
Hotmail’s Service Agreement and trademark, which has
been using its mark since 1996.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (KEY FACTS)
• To become a Hotmail subscriber, one had to agree to abide by a
Service Agreement. This agreement clearly states that the subscribers
are prohibited from sending unsolicited commercial bulk e-mail or
‘spam’ or obscene or pornographic messages. Hotmail can terminate
the account of any Hotmail subscriber who violates the Terms of the
Service Agreement.
• In or about the Fall of 1997, Hotmail learned that the Defendants were
sending “spam” e-mails to thousands of Internet e-mail users, which
were intentionally falsified in that they contained return addresses
bearing Hotmail-account return-addresses. The return addresses
contained Hotmail’s domain name and thus its mark, when in fact the
spam e-mails did not originate from Hotmail or Hotmail account.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (KEY FACTS)
• The spam messages sent by the Defendant advertised pornography,
bulk e-mailing software, and “get-rich-quick” schemes, among other
things.
• As a result of the falsified return addresses, Hotmail was inundated
with hundreds of thousands of misdirected responses to the
Defendants' spam, including complaints from Hotmail subscribers
regarding the spam and "bounced back" e-mails, which had been sent
by the Defendants to nonexistent or incorrect e-mail addresses.
• These overwhelming number of e-mails took up a substantial amount
of Hotmail's finite computer space, threatened to delay and otherwise
adversely affect Hotmail's subscribers in sending and receiving e-mail,
resulted in significant costs to Hotmail in terms of increased personnel
necessary to sort and respond to the misdirected complaints, and
damaged Hotmail's reputation and goodwill.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
Hotmail Inc. requested for permanent injunction
For permanent injunction, court should decide:
(i) A likelihood of success on the merits and the
possibility of irreparable injury
(ii) The existence of serious questions going to the
merits and the balance of hardships tips in
Hotmail’s favour.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i) False Designation of Origin and Unfair
Competition
(ii) Dilution
(iii) Violation of Computer Fraud and Abuse Act
(iv) Breach of Contract
(v) Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
• Factors,as relevant to determination of
the likelihood of confusion for claims:
– Strength or weakness of plaintiff’s mark
While the second part of the mark--"mail"--may be suggestive
by conveying some aspect of the e-mail process, the mark as
a whole is arbitrary and fanciful because it neither describes
nor suggests that Hotmail is a provider of electronic mail as a
Web-based service on the Internet. Moreover, plaintiff has
spent substantial sums of money to advertise and market its
services in association with the mark and has extensively
featured the mark in its promotions
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
• Factors,as relevant to determination of the
likelihood of confusion for claims:
– The degree of similarity with defendant’s mark
Defendants' "mark" is not only confusingly similar to plaintiff's
mark, it is identical to it. A comparison of defendants' and plaintiff's
uses shows such striking similarity that a jury could not help but
find that defendants' use is confusing. Indeed, there has been
actual confusion among consumers regarding the marks. This
factor alone may be determinative.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
• Factors,as relevant to determination of the
likelihood of confusion for claims:
– Class of goods
The class of goods and services distributed by defendants--e-mails-which bear a mark identical to plaintiff's, are the same as the class of
goods and services distributed by plaintiff--e-mails.
Marketing
channels used
The marketing channels through which the parties sell their
goods and services are the same--via e-mail over the Internet.
Their consumer audience is likewise the same. Moreover,
because e-mail is specifically designed for the rapid exchange
of information, consumers are unlikely to exercise a great deal
of care in distinguishing between marks on e-mails they receive.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
• Factors,as relevant to determination of the
likelihood of confusion for claims:
– Evidence of actual confusion
– Intent of the defendant
Defendants' intent further supports possible confusion. Levi Strauss
& Co. v. Blue Bell, 632 F.2d 817, 822 (9th Cir.1981); Pacific Telesis
Group v. International Telesis Communications, 994 F.2d 1364, 1369
(9th Cir.1993). Here, the evidence supports an inference that
defendants intended to emulate plaintiff's trademark, given their
knowing falsification of e-mail return addresses, their fraudulent
creation of Hotmail mailboxes, as well as their attempts to circumvent
plaintiff's efforts to prevent its subscribers from receiving spam.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i) False Designation of Origin and Unfair Competition
(ii) Dilution
(iii) Violation of Computer Fraud and Abuse Act
(iv) Breach of Contract
(v) Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
•
•
The core elements of a cause of action under the federal
dilution statute are plaintiff's ownership of a famous
mark and dilution of the distinctive quality of plaintiff's
mark, regardless of whether consumers are confused
about the parties' goods.
In determining whether a mark is distinctive and famous
so as to support a claim for federal dilution, the Court
has considered the following factors:
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i) False Designation of Origin and Unfair Competition
(ii) Dilution
(iii)Violation of Computer Fraud and Abuse Act
(iv) Breach of Contract
(v) Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
•
•
The Computer Fraud and Abuse Act prohibits any
person from knowingly causing the transmission of
information which intentionally causes damage, without
authorization, to a protected computer. 18 U.S.C. §
1030.
The defendants took actions knowing the risks caused
thereby to Hotmail's computer system and online
services, which include risks that Hotmail would be
forced to withhold or delay the use of computer services
to its legitimate subscribers. The defendants' actions
caused damage to Hotmail, and such actions were done
by defendants without Hotmail's authorization.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i) False Designation of Origin and Unfair Competition
(ii) Dilution
(iii) Violation of Computer Fraud and Abuse Act
(iv) Breach of Contract
(v) Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
MSN Website Terms of Use and Notices
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
•
•
•
•
The defendants obtained a number of Hotmail mailboxes and access
to Hotmail's services. So defendants agreed to abide by Hotmail's
Terms of Service which prohibit using a Hotmail account for
purposes of sending spam and/or pornography.
The defendants breached their contract with Hotmail by using
Hotmail's services to facilitate sending spam and/or pornography.
Hotmail complied with the conditions of the contract except those
from which its performance was excused.
If the defendants are not enjoined they will continue to create such
accounts in violation of the Terms of Service.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i)
(ii)
(iii)
(iv)
False Designation of Origin and Unfair Competition
Dilution
Violation of Computer Fraud and Abuse Act
Breach of Contract
(v) Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
1.
2.
The Defendants fraudulently obtained a number of Hotmail
accounts, promising to abide by the Terms of Service without any
intention of doing so and suppressing the fact that such accounts
were created for the purpose of facilitating a spamming operation
The Defendants' fraud and misrepresentation caused Hotmail to
allow defendants to create and use Hotmail's accounts to Hotmail's
injury. In addition, the evidence supports a finding that defendants'
falsification of e-mails to make it appear that such messages and the
responses thereto were authorized to be transmitted via Hotmail's
computers and stored on Hotmail's computer system--when
defendants knew that sending such spam was unauthorized by
Hotmail--constitutes fraud and misrepresentation, and that Hotmail
relied on such misrepresentations to allow the e-mails to be
transmitted over Hotmail's services and to take up storage space on
Hotmail's computers, to Hotmail's injury.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i)
(ii)
(iii)
(iv)
(v)
False Designation of Origin and Unfair Competition
Dilution
Violation of Computer Fraud and Abuse Act
Breach of Contract
Fraud and Misrepresentation
(vi) Trespass to Chattel
(vii) Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
The plaintiff has presented evidence of the following:
1. The computers, computer networks and computer
services that comprise Hotmail's e-mail system are the
personal property of Hotmail;
2. The Defendants obtained consent to create Hotmail
accounts within the limitations set forth in the Terms of
Service: no spamming and no pornography; that
defendants intentionally trespassed on Hotmail's
property by knowingly and without authorization
creating Hotmail accounts that were used for purposes
exceeding the limits of the Terms of Service;
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
The plaintiff has presented evidence of the following:
3. The Defendants trespassed on Hotmail's computer space
by causing tens of thousands of misdirected e-mail
messages to be transmitted to Hotmail without Hotmail's
authorization, thereby filling up Hotmail's computer
storage space and threatening to damage Hotmail's
ability to service its legitimate customers;
4. The Defendants' acts of trespass have damaged Hotmail
in terms of added costs for personnel to sort through and
respond to the misdirected e-mails, and in terms of harm
to Hotmail's business reputation and goodwill.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
(i)
Hotmail Inc. requested for permanent injunction For
permanent injunction, court should decide
A likelihood of success on the merits and the possibility
of irreparable injury
Court must evaluate:
(i)
(ii)
(iii)
(iv)
(v)
(vi)
False Designation of Origin and Unfair Competition
Dilution
Violation of Computer Fraud and Abuse Act
Breach of Contract
Fraud and Misrepresentation
Trespass to Chattel
(vii)Irreparable Harm to Plaintiff
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
1.
2.
In cases where trademark infringement is shown, irreparable harm is
presumed. Apple Computer, 725 F.2d at 525; Charles Schwab & Co. v.
Hibernia Bank, 665 F.Supp. 800, 812 (N.D.Cal.1987).
Plaintiff has suffered and, if defendants are not enjoined, will continue
to suffer irreparable harm from the distribution, promotion and use of emails bearing plaintiff's mark--particularly spam e-mails, some of which
advertise pornography--because of the loss of goodwill and reputation
arising from customer confusion about the source of defendants' spam
e-mails and/or plaintiff's affiliation or sponsorship of them. This kind of
harm is not easily quantified and not adequately compensated with
money damages. Plaintiff thus has no adequate remedy at law.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (RESULTS)
Hotmail Inc. requested for permanent injunction
For permanent injunction, court should decide:
(i) A likelihood of success on the merits and the
possibility of irreparable injury
(ii) The existence of serious questions going to the
merits and the balance of hardships tips in
Hotmail’s favour.
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (INJUNCTIONS)
1. Using any images, designs, logos or marks which copy, imitate or simulate
Hotmail's HOTMAIL mark, and/or Hotmail's "hotmail.com" domain name for
any purpose, including but not limited to any advertisement, promotion, sale or
use of any products or services;
2. Performing any action or using any images, designs, logos or marks that
are likely to cause confusion, to cause mistake, to deceive, or to otherwise
mislead the trade or public into believing that Hotmail and defendants, or any
of them, are in any way connected, or that Hotmail sponsors defendants; or
that defendants, or any of them, are in any manner affiliated or associated with
or under the supervision or control of Hotmail, or that defendants and Hotmail
or Hotmail's services are associated in any way.
3. Using any images, designs, logos or marks or engaging in any other
conduct that creates a likelihood of injury to the business reputation of
Hotmail or a likelihood of misappropriation and/or dilution of Hotmail's
distinctive mark and the goodwill associated therewith;
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (INJUNCTIONS)
4. Using any trade practices whatsoever, including those complained
of herein, which tend to unfairly compete with or injure Hotmail, its
business and/or the goodwill appertaining thereto;
5. Sending or transmitting, or directing, aiding, or conspiring with
others to send or transmit, electronic mail or messages bearing any
false, fraudulent, anonymous, inactive, deceptive, or invalid return
information, or containing the domain "hotmail.com," or otherwise
using any other artifice, scheme or method of transmission that would
prevent the automatic return of undeliverable electronic mail to its
original and true point of origin or that would cause the e-mail return
address to be that of anyone other than the actual sender
http://www.spamlaws.com/cases/vanmoneypie.html
Trademarks
Case Study – Plaintiff:Hotmail Corporation Defendant:Van$ Money Pie Inc.;
ALS Enterprises Inc. and others (INJUNCTIONS)
6. Using, or directing, aiding, or conspiring with others to use, Hotmail's computers or
computer networks in any manner in connection with the transmission or transfer of any
form of electronic information across the Internet, including, but not limited to, creating
any Hotmail e-mail account, or becoming a Hotmail subscriber, for purposes other than
those permitted by Hotmail's Terms of Services, including but not limited to, for
purposes of participating in any way in sending spam e-mail or operating a spamming
business, or sending or advertising or promoting pornography and/or sending e-mails for
any commercial purpose.
7. Opening, creating, obtaining and/or using, or directing, aiding, or conspiring with
others to open, create, obtain and/or use, any Hotmail account or mailbox;
8. Acquiring or compiling Hotmail member addresses for use in the transmission of
unsolicited promotional messages to those Hotmail members; and,
9. Sending or transmitting, or directing, aiding, or conspiring with others to send or
transmit, any unsolicited electronic mail message, or any electronic communication of
any kind, to or through Hotmail or its members without prior written authorization.
http://www.spamlaws.com/cases/vanmoneypie.html
Domain Name Registration
• The Internet Corporation for Assigned Names and
Numbers (ICANN) is an international, non-profit
organisation which is responsible for
– IP address space allocation
– Protocol Identifier assignment
– Generic and country-code top-level domain name
system management
– Root server management functions
• ICANN implemented a Uniform Domain Name
Dispute Resolution Policy (UDRP)
http://www.icann.org/
Domain Name Registration
• Top-level Domain Names
– Generic names:
• .com, .org, .edu, .gov, .mil, .net
• (since 2000) .aero, .biz, .coop, .info, .museum, .name ,.pro (see
http://www.nic.aero, http://www.nic.biz, … for details)
– Country code domains:
• .uk, .de, .jp, .us, …
– A special top-level domain (.arpa) for Internet
infrastructure
Domain Name Registration
The Shared Registration System (SRS)
• The Commerce Department created the SRS
in 1999, under agreement with NSI (‘Network
Solutions’, which was acquired by VeriSign).
• There are now several accredited registrars
(http://www.internic.net/alpha.html). Each registrar
should be approved by ICANN.
• All registrars use a central registration
system, operated by VeriSign.
Domain Name Registration
UK
• UK Nominet performs .uk internet name
registers. They are not a part of ICANN.
• UK domain name registration is conducted
via registration providers (ISP) or any
international registrars.
• They operate Dispute Resolution Service, in
which the cases are processed by
themselves.
http://www.nominet.org.uk/
Domain Name Registration
Process
A business deal that plans to acquire a new domain name should
first conduct a trademark search to determine whether anyone else
is already using the proposed domain name as a trademark.
A search is also important because the registration authorities
requires each applicant for a domain name to represent and
warrant that:
•
It has the right to use the requested domain name
•
It intends to use the name on a regular basis
•
It will not use the name for any unlawful purpose; and
•
Its use of the name will not violate any third party’s
rights in any jurisdiction.
Domain Name Registration
Process
The application must also agree to defend and
indemnify registration authorities for any
claim or expense resulting from the
applicant’s use of the domain name. This
indemnity could result in significant expense
if a third party sues registration authorities in
a dispute over the applicant’s choice of
domain name.
Domain Name Registration
Legal Domain Names – Unregistrable Marks
• Absolute grounds for refusal of registration are, by section
3 of the Trade Marks Act 1994, where the mark is:
– not capable of graphical representation or not capable of
distinguishing;
– devoid of any distinctive character;
– exclusively descriptive or laudatory (words of praise) - for
example, ‘Superb Computers’;
– in bona fide use in the trade - for example, ‘Software Bug’;
– of a shape necessary to achieve a technical result which gives
substantial value to the goods; or
Domain Name Registration
Legal Domain Names – Unregistrable Marks
• Contrary to public policy, accepted principles of morality or
deceptive - for example, where a dating agency that does not
possess or use a computer wishes to register the mark
‘ComputaDate’ or `sugar sweet’ for candy sweetened with
artificial sweetener.
• Names and surnames: An exception is if you prove your
services have become known under that name.
• Marks Containing Geographical Matter
• Words in other languages: e.g. `gelato’ Italian for ice cream
• Prohibited marks such as official government symbols
http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_gd_regis-e.html
http://www.uspto.gov/web/offices/tac/notices/guide299.htm
Domain Name Registration
Legal Domain Names (under Lanham Act)
The following examples illustrate fact patterns where a
likelihood of confusion may exist:
Similar Goods or Services. A likelihood of confusion may exist where the defendant is
using its domain name in connection with the same type of goods or services as the
trademark owner.
Trademark Relates to Computers. A likelihood of confusion may also exist when the
allegedly infringed trademark is used in connection with computers, communications, or
information services.
Defendant shows Bad Faith. A trademark owner’s case will be particularly strong
where the domain name user has adopted a domain name in bad faith - that is, with the
intent of deriving benefit from the trademark owner’s reputation.
Mark is very strong. One theory espoused by owners of famous marks is that
unauthorised use of such marks as a domain name is inherently a use in commerce that is
likely to cause confusion.
Domain Name Registration
Cybersquatters, typosquatters, pirates, and bad faith
Anticybersquatting Consumer Protection Act (ACPA)
1999
AIM: The act gives trademark and service mark owners
legal remedies against defendants who obtain domain
names "in bad faith" that are identical or confusingly
similar to a trademark or service mark. If a mark is a
famous mark, the same remedies are available if the
domain name is identical to, confusingly similar to or
dilutive of the mark.
http://www.mama-tech.com/antipiracy.html
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Mr.Zuccarini registered hundreds of domain names, which are
misspellings of famous people’s names, famous brands, company name,
television shows and movies. This list also includes EB, in which several
derivatives of EB’s domain name (www.electronicbotique.com,
www.ebwold.com, www.ebworl.com..) were used for advertising
purposes such that when a potential customer mistyped the domain
name, s/he was ‘mousetrapped’ in so many advertising windows with no
closing option. Mr.Zuccarini was paid between 10 and 25 cents by the
advertisers for every click. EB’s website can be accessed via
www.ebworld.com and www.electronicsboutique.com . EB registered its
‘EBWorld’ domain name in 1996 and “Electronics Boutique” domain
name in 1997.
Holding: violations of Lanham Act, dilution, common law service
mark infringement, and unfair competition.
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually
succeeded on the merits
(ii) Whether the moving party will be irreparably injured by
denial of the relief
(iii) Whether granting the permanent relief will result in
even greater harm to the nonmoving party.
(iv) Whether granting permanent relief will be in the public
interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
Court must evaluate:
(i) Whether EB’s service marks are distinctive and
famous
(ii)
Whether Mr.Zuccarini’s domain misspellings are identical or
confusingly similar to EB’s marks
(iii) Whether Mr.Zuccarini registered the domain misspellings with
a bad faith intent to profit from them.
(i)
(ii)
(iii)
Whether the moving party will be irreparably injured by denial of the relief
Whether granting the permanent relief will result in even greater harm to the nonmoving party.
Whether granting permanent relief will be in the public interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
A mark is distinctive or famous, if
•
The degree of inherent or acquired distinctiveness of the
mark
•
The duration and extent of use of the mark in connection
with the goods and services with which the mark is used
•
The duration and extent of advertising and publicity of
the mark
•
The geographical extent of the trading area in which the
mark is used
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
A mark is distinctive or famous, if
The channels of trade for the goods or services with
which the mark is used
The degree of recognition of the mark in the trading
areas and the channels of trade used by the marks’
owner and the person against whom the injunction is
sought
The nature and extent of use of the same or similar
marks by third parties
Whether the mark was registered under the Act of
March, 3, 1881, or the Act of February 20, 1905, or on
the principal register.
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
Court must evaluate:
(i)
Whether EB’s service marks are distinctive and famous
(ii) Whether Mr.Zuccarini’s domain misspellings are
identical or confusingly similar to EB’s marks
(iii) Whether Mr.Zuccarini registered the domain misspellings with
a bad faith intent to profit from them.
(i)
(ii)
(iii)
Whether the moving party will be irreparably injured by denial of the relief
Whether granting the permanent relief will result in even greater harm to the nonmoving party.
Whether granting permanent relief will be in the public interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
(i) The success of Mr. Zuccarini’s enterprise is
wholly dependent on the similarity of his
registered domain names to famous names.
(ii) As the similarity in the spellings of
Mr.Zuccarini’s domain names to popular or
famous names increases, the likelihood that an
Internet user will inadvertently type one of Mr.
Zuccarini’s misspellings.
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
Court must evaluate:
(i)
(ii)
Whether EB’s service marks are distinctive and famous
Whether Mr.Zuccarini’s domain misspellings are identical or
confusingly similar to EB’s marks
(iii) Whether Mr.Zuccarini registered the domain
misspellings with a bad faith intent to profit from
them.
(i)
(ii)
(iii)
Whether the moving party will be irreparably injured by denial of the relief
Whether granting the permanent relief will result in even greater harm to the nonmoving party.
Whether granting permanent relief will be in the public interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Mr. Zuccarini
• Used domain misspellings to generate advertising revenue for
himself
• Used domain names, which do not comprise names to identify
Mr.Zuccirini’s business.
• Has no bona fide business purpose for registering the domain
misspellings, as he does not and has not offered any goods or
services that relate to EB or electronic products.
• Has no intellectual property rights on this issue.
• Specifically intended to prey on the confusion and typographical
and/or spelling errors of Internet users to divert Internet users from
EB’s website for his commercial gain.
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
(ii) Whether the moving party will be irreparably
injured by denial of the relief
(iii) Whether granting the permanent relief will result in
even greater harm to the nonmoving party.
(iv) Whether granting permanent relief will be in the public
interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
• In a trademark infringement action, the Third Circuit
observed that “[g]rounds for finding irreparable injury
include loss of control of reputation, loss of trade, and loss
of good will.” Finding or irreparable injuiry “can also be
based on likely confusion”.
– Potential customers are diverted from EB’s website. They are
discouraged from shopping online.
– The customers expressed their concerns regarding the security of
the website, who believed EB was associated with the
Mr.Zuccarini’s website.
– EB lost its reputation and goodwill.
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
(ii) Whether the moving party will be irreparably injured by
denial of the relief
(iii) Whether granting the permanent relief will
result in even greater harm to the nonmoving
party.
(iv) Whether granting permanent relief will be in the public
interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Domain Name Registration
Case Study – Plaintiff:Electronics Boutique Holding Corporation (EB)
Defendant:John Zuccarini
Results: EB requested for permanent injunction and statutory
damages.
For permanent injunction, court should decide
(i) Whether the moving party has actually succeeded on the
merits
(ii) Whether the moving party will be irreparably injured by
denial of the relief
(iii) Whether granting the permanent relief will result in
even greater harm to the nonmoving party.
(iv) Whether granting permanent relief will be in the
public interest
U.S. District Court, Eastern District of Pennsylvania, 10 August 2000
http://www.keytlaw.com/Cases/electronic.htm
Next Week
• Please read the following cases:
•
•
http://www.riaa.com/news/filings/pdf/mp3board/court_ruling.pdf
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=2nd&navby=case&no=
017860v2&exact=1