| A registered domain name must be providing goods and services in order for it to receive trademark protection, a federal court ruled late last week.
Rolex to Domain Name Registrants: Watch Out! -- Chilling Effects ::
The court can issue an injunction (a ruling that requires other people to stop The trademark does not have to be registered.
http://www.chillingeffects.org/acpa/notice.cgi?NoticeID=5778HOME |
The ruling, made by a panel from the Ninth Circuit U.S. Court of Appeals in San Francisco, comes from a dispute involving the domain name Moviebuff.com. Brookfield Communications, a movie industry vendor, sued video rental chain West Coast Entertainment for infringing on its trademarked software database by registering Moviebuff.com.
Even though West Coast had registered the domain name almost two years before Brookfield used the Moviebuff name on the Web, the three-member panel agreed that Brookfield used the name in commerce first, and therefore was entitled to trademark protection online.
"Registration with Network Solutions, however, does not in itself constitute "use" for purposes of acquiring trademark priority," wrote the panel in its opinion. ". . .We must therefore conclude that Brookfield is the senior user because it marketed "Moviebuff" products well before West Coast began using "moviebuff.com" in commerce. . ."
News from BuildWebsite.com affiliates -- What does the U.S. Court say ::
trademark or service mark in which the complainant has rights; the of the dispute-resolution policy or one is not able to register the domain name.
http://www.buildwebsite.com/dndispute2.htmlHOME |
West Coast did not begin using its domain name for commerce until October 1998, more than one year after Brookfield began its commerce site, Moviebuffonline.
The court cited the Lanham Act, which "grants trademark protection only to marks that are used to identify and to distinguish goods or service in commerce--which typically occurs when a mark is used in conjunction with the actual sale of goods or services." The decision reversed a ruling previously made by U.S. District Court in California.
WIPO Domain Name Decision: D2000-1769::
contends that the Domain Name is identical to a trademark in which Complainant registered the Domain Name on February 24, 2001 and up to date has not
http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1769.htmlHOME |
As a result of the court's ruling, West Coast may no longer use the Moviebuff.com, nor may it use the moviebuff name in its metatags.
"Using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's story," the panel wrote.
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Court Rules Registered Domain Name Is Not Trademark