GOOD BAD NEWS:

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• GOOD/ BAD NEWS
• NO CLASS NEXT WEEK

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Domain Names the Context

• An Address
• ABC.com
  1-714-991-3400

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Current

• Domain name consists of a prefix and a suffix.
  These are described, respectively, as a generic
  top-level domain (GTLD) and a second-level domain
  (SLD). Thus, in the domain name uh.edu, the uh
  is the SLD and the .edu is the GTLD. In e-mail
  and similar user-specific addresses, another
  identifier will be added as an additional prefix.
  
• Congestion has occurred. One response is to
  expand the GTLD categories.
• While the theory may be that expanding the number
  of categories will reduce congestion, in fact
  that effect has clear limits.

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DM Issues

• Ownership
• Can I prevent using my name
• Defend from attack Trendmaker.com
• What can I own?
• Misleading use Fullbrite.biz
• Competitive benefit Greenproducts.com
• Extraneous use DM as a mark
• Relevance of the issue?

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Control Basic TM law as source

• Product and service identification as to source
• The primary criterion for a mark is that it be
  distinctive (or suggestive) in the sense of
  identifying the particular companys product or
  service, as compared to merely descriptive (e.g.,
  online telephone number directory) or generic
  (e.g., word processing software).
• Rights created prevent uses that create consumer
  confusion.
• Registration/ rights limited by excluding a mark
  that
• 1. Is merely descriptive when used in connection
  with the goods of the applicant
• 2. Is primarily geographically descriptive
• Is primarily a surname.

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DM as a Mark

• In the same way that businesses sometimes desire
  to have a prestige business address, businesses
  want a prestige address in cyberspace that
  corresponds to the trade name of the company or
  to a company trademark. Like a street address or
  telephone number, every domain name serves the
  purely technological function of locating a web
  site in cyberspace. But a domain name does not
  become a trademark or service mark unless it is
  also used to identify and distinguish the source
  of goods or services. Out of the millions of
  domain names, probably only a small percentage
  also play the role of a trademark or service
  mark.

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Hypo

• Client discovered that there is no domain name
  registration for the name builders.biz. It plans
  to register that name and use it for the primary
  name of its business. What is your advice?
• Why is that an issue?
• Proximity
• External use
• What business is involved?
• Protecting a name?
• Builder.biz
• Builder.com

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Oppendahl case Patents.com

• Patents.com for a patent searching service
• Descriptive
• .com describes what?
• Patents describes what

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Other illustrations

• Try Tennis.net (for a non-internet company)
• Try Amazon vs. Amazon.com for a book seller
  online
• Law.org

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(No Transcript)
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DM infringing a mark

• Images or words what is an external mark?
• Client uses Ninfa.biz and is sued, what result?
• What is the Ninfa mark?

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Greenproducts case

• ICPB Competes with plaintiff
• Greenproducts.com
• Held confusing
• Why?
• Arbitrary, suggestive, descriptive, generic
  strength vs mere description
• Similarity
• Products

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• ICBP believes that there will be no consumer
  confusion because internet users will immediately
  know that the web site belongs to ICBP once the
  actual web page appears on the screen . This
  Court finds that the use of plaintiff's trademark
  as defendant's own domain name is likely to cause
  consumer confusion as to who owns the site.
  Just as customers entering a store that
  advertises "Green Products" as its store name
  would be initially confused to find, upon
  entering the store, that ICBP actually owned it,
  so will customers typing the domain name
  "greenproducts.com" be initially confused to find
  that ICBP owns the web site. The Court
  acknowledges that such an interpretation of
  "consumer confusion" is somewhat different than
  that typically used Typically, the courts
  examine whether a company intended to confuse
  consumers into thinking that its own products
  were made by a competitor company. However,
  ICBP did intend to pass off its domain name as
  though it belonged to Green Products. As a
  result of the confusion ICBP could deceptively
  lure potential customers onto its own turf

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PACCAR

• PACCAR a manufacturer of trucks under several
  trademarks, including the "Peterbilt" and
  "Kenworth"
• PACCAR administers a used truck locator service
  on its web site, www.paccar.com.
• Defendant uses various, including
  peterbiltnewtrucks.com, peterbiltusedtrucks.com,
  peterbilttruckdealers.com, kenworthnewtrucks.com,
  kenworthusedtrucks.com, and kenworthtruckdealers.c
  om. In addition to using the "Peterbilt" and
  "Kenworth" trademarks in its domain names,
  TeleScan displays the marks in the wallpaper
  underlying the manufacturer-specific web sites
• Result?

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Paccar continued

• Name conveys info about sponsor of site
• Strong marks fanciful
• Closely related goods
• Very similar exact match
• No proven actual confusion
• Effect of disclaimer
• Comes too late?
• Customers not sophisticated
• The Ninth Circuit has held that in the Internet
  context, similarity of the marks, relatedness of
  the goods or services, and simultaneous use of
  the Internet as a marketing channel are the three
  most important factors in finding a likelihood of
  confusion.

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END