Trademark. What do you do when someone sets up a web site almost identical to yours, but you can’t find the owner of the site in order to sue them?
This was the problem faced by American Girl , which sells wholesome girls dolls, clothing and books targeted at pre-adolescent girls, when it discovered that someone was publishing pornography on www.amercangirl.com. (Note the missing letter).
American Girl sued the registrar and “John Doe” (legalese for, “I’ll name you when I identify you”) but was rebuffed by a Federal District Court Judge in Wisconsin, who held that a John Doe suit was inappropriate in these circumstances. However, this judge really did his homework, and the decision is an excellent road map on how to go about obtaining an injunction under these circumstances, including remedies such as an in rem action against Verisign under the ACPA or arbitration under the UDRP. The decision also provides an excellent summary of the domain name system and the laws that regulate it.… Read the full article
Office Depot, the office supply giant, has filed a lawsuit against arch rival Staples in U.S. District Court in West Palm Beach, Florida. Office Depot’s complaint alleges that Staples has engaged in trademark infringement, unfair competition, false advertising, and deceptive trade practices by buying VIKING, a trademark owned by one of Office Depot’s subsidiaries, as an advertising keyword from Google. Google has successfully defended its right to use third party trademarks in its keyword advertising program in a number of recent suits, including the recent GEICO v. Google case that we first discussed here, and reported settled here, but this is the first time that a trademark owner has bypassed Google and gone directly after the company actually buying the keywords.
Assuming this case doesn’t settle, we expect that Staples ultimately will prevail, as keyword advertising on the Internet these days is analogous to the completely legal practice of Burger King putting up a billboard next to a McDonald’s in the brick-and-mortar world.… Read the full article
Trademarks/Domain Names. Why did Jerry Falwell lose and Bill Cosby win?
Bill Cosby prevailed this week in a domain name dispute involving FATALBERT.ORG (William H. Cosby, Jr. v. Sterling Davenport). This dispute was resolved in an ICANN arbitration, which requires that the complainant prove both that the domain name was registered and used in bad faith in order to succeed. The arbitrator found that Mr. Davenport had no legitimate interest in the domain name, that he had registered it solely with the intention of trading on the fame of Cosby’s Fat Albert character, and that he sold sexually explicit products and drugs on the site, which the arbitrator found particularly offensive since the Fat Albert mark is so closely associated with children. Mr. Davenport’s for-profit conduct clearly constituted bad faith use and registration of the domain name, and he was ordered to transfer the domain name to Cosby.
Compare this with The Reverend Jerry Falwell’s attempt to gain control over FALLWELL.COM, a “gripe” site highly critical of Falwell’s conservative beliefs (Lamparello v.… Read the full article
Trademark. Geico and Google have reported a settlement of the trademark suit we reported on on August 19th.
The terms of the settlement were not disclosed.… Read the full article