CyberSquatting Cases: Brookfield Communications v. West Coast Entertainment : The ACPA statute : Recent Anti-Cybersquatting Court Decisions

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What You Need to Know About the New "Anti-Cybersquatting" Law
Recent Anti-Cybersquatting Court Decisions
Domain Name Disputes by Domain Name
WIPO Decisions

BROOKFIELD COMMUNICATIONS, INC. v. WEST COAST ENTERTAINMENT CORP., April 22, 1999. West Coast's use of the domain name "moviebuff.com," for a software retail site, violated the Lanham Act because it was confusingly similar to the federally registered trademark "MovieBuff" for video rentals.

AVERY DENNISON CORPORATION v. SUMPTON, Aug. 23, 1999. Ninth Circuit held that district court erred as a matter of law in finding "Avery" and "Dennison" to be famous and Appellants' use of avery.net and dennison.net to be commercial use. Genuine issues of material fact existed as to whether Appellants' use of the domain-name registrations dilutes or is likely to dilute Avery Dennison's marks, and the district court erred in granting Avery Dennison an injunction.

VIRTUAL WORKS v. VOLKSWAGON, Feb. 24, 2000 Volkswagen brought a Counterclaim against Virtual Works, registrant of "VW.net," for Cyberpiracy, Trademark Dilution and Trademark Infringement under the Lanham Act, 15 U.S.C. §§1114(1) and 1125 (a)&(c). Following the factors set forth in the ACPA, the Court found that Virtual Works had attempted to profit from the trafficking of a domain name of a previously trademarked name. Accordingly, the court held that Volkswagon was entitled to the domain name VW.net.

OBH, INC. v. SPOTLIGHT MAGAZINE, INC., Feb. 28, 2000 Spotlight Magazine registered the domain name "thebuffalonews.com" and used it to criticize OBH's newspaper, "The Buffalo News." Spotlight's website contained the following prominent disclaimer: "We are in no way affiliated with or endorsed by THE BUFFALO NEWS, OBH Inc. (formerly Berkshire Hathaway Group) or Columbia Insurance Company. This website operates as a parody and forum for discussion of THE BUFFALO NEWS." The district court held that Spotlight's use of "thebuffalonews.com" was not protected by the First Amendment. The court ordered Spotlight to cease and desist using the name.

CELLO HOLDINGS v. LAWRENCE-DAHL COMPANIES, March 6, 2000. The District Court held that, because "cello" is a common noun, a genuine issue of material fact existed as to whether Storey had reasonable grounds to believe that the use of "cello.com" was a "fair use" or "otherwise lawful." A reasonable factfinder could conclude that Storey was not trying to extort money from a particular trademark holder. Rather, the case was more akin to the situation where a person registers "apple.com" and then offers it to a number of parties that might be interested in the domain name, including the maker of Apple Computers. The court noted that the ACPA specifically precludes a finding of bad faith where a domain name holder reasonably believes that the registration of the domain name was a "fair use" or "otherwise lawful."

NORTHERN LIGHT TECH., INC. v. NORTHERN LIGHTS CLUB, March 21, 2000 The Defendants were found to have registered "northernlights.com" in bad faith under the ACPA. The district court found a high likelihood, given the Defendants' bad faith intent to profit from Plaintiff's distinctive mark, "Northern Light," that Plaintiff would succeed on the merits of its Anticybersquatting claim.

SHIELDS v. ZUCCARINI, March 27, 2000 Zuccarini registered five World Wide Web variations on Shields's "joecartoon.com" site: joescartoon.com, joecarton.com, joescartons.com, joescartoons.com, and cartoonjoe.com. Zuccarini's sites featured advertisements for other sites and credit card companies. Visitors were trapped or "mousetrapped" in the sites, unable to exit without clicking on a succession of ads. The district court held that Zuccarini had engaged in "exactly the type of conduct the ACPA is designed to prevent," and that Shields would suffer irreparable harm unless Zuccarini was enjoined.

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