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Conflicts over Domain Names

Conflicts over Domain Names. Program of Instruction for Lawyers William Fisher June 25, 2004. © 2004. All rights reserved. Types of Domain-Name Disputes. Cybersquatting. Joshua Quittner registers “mcdonalds.com”. Typosquatting. Misrosoft.com. Conflicts between Competitors. Kaplan.com.

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Conflicts over Domain Names

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  1. Conflicts over Domain Names Program of Instruction for Lawyers William Fisher June 25, 2004 © 2004. All rights reserved

  2. Types of Domain-Name Disputes

  3. Cybersquatting Joshua Quittner registers “mcdonalds.com”

  4. Typosquatting Misrosoft.com

  5. Conflicts between Competitors Kaplan.com

  6. Conflicts between Noncompetitors Howard Johnson registers “howardjohnson.com”

  7. Retailers weber.com

  8. Retailers weber.com webergrills.com

  9. Commerical v. Noncommerical Users(Reverse Domain Name Hijacking) pokey.org Prima Toy Company

  10. (December 2, 2000)

  11. Fan Sites

  12. Parody and Commentary

  13. http://www.introducingmonday.com http://www.introducingmonday.co.uk/

  14. http://www.introducingmonday.com http://www.introducingmonday.co.uk/

  15. Initial Legal Responses

  16. Types of Trademark Infringement

  17. Types of Trademark Infringement Identical Marks on Competitive Products

  18. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products

  19. Axes and Factors in Assessing Likelihood of Confusion • Similarity of Appearance • SQUIRT / QUIRST (for soft drinks) • Similarity of Sound • Huggies / Dougies (for disposable diapers) • Similarity of Meaning • Apple / Pineapple (for computer products) • Good Morning / Buenos Dias (for bath products) • Marketing Environment

  20. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products

  21. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products

  22. Polaroid/McGregor Factors for Noncompetitive Products Ultimate issue: likelihood of confusion • Strength of the plaintiff’s mark • Similarity of the two marks • Proximity of the two products • Quality of the defendant’s product • Likelihood of the plaintiff “bridging the gap” • Actual confusion • Defendant’s “good faith” • Sophistication of buyers of the products • General equities

  23. Varieties of “Consumer Confusion” • Source • Endorsement (e.g., Rolls Royce Radio Tubes) • Post-sale (e.g., Ferrari) • Initial Interest (e.g., Brookfield)

  24. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products

  25. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Dilution

  26. Forms of Dilution (Clinique 1996) • “Dilution by blurring occurs where ‘the defendant uses or modifies the plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.’ Like tarnishment, blurring is concerned with an injury to the mark's selling power and ‘need not involve any confusion as to source or sponsorship.’” • “Tarnishment may occur when the plaintiff's mark is used by the defendant in association with unwholesome or shoddy goods or services. Tarnishment may also result from an association with obscenity, or sexual or illegal activity, but is not limited to seamy conduct.”

  27. International Development of Dilution Doctrine • Originates in Germany, (Odol 1925) • Gradually expands in United States • Schecter, 1927 • State anti-dilution statutes, 1947-present • Federal Trademark Dilution Act, 1996 • Slow introduction elsewhere • Benelux countries, Germany adopt expansive doctrines • EC Harmonization Directive (1988) and EC Community TM Regulation (1993) are ambiguous • Benelux countries and France favor generous reading • England and ECJ resist

  28. Types of Trademark Infringement Identical Marks on Competitive Products Similar Marks on Competitive Products Similar Marks on Noncompetitive Products Dilution

  29. Applications of TM Infringement Doctrine to Domain Names • Amadeus Marketing (Italy 1997): TM owner must prove operation of similar DN is directly confusing or damaging to TM • British Telecommunications (UK 1998): A DN incorporating a TM “shows an inherent tendency to confuse” consumers • Champagne Céréales (France 1998): A DN mimicking an unregistered TM creates excessive likelihood of confusion • Braunschweig (Germany 1997): DN incorporating name of a city creates likelihood of confusion

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