LIKELIHOOD OF CONFUSION®

Originally posted 2011-01-20 22:38:14. Republished by Blog Post Promoter

Michael Atkins:

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District [of Washington].

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

This is an interesting development, and one to watch, in light of what I see as the overall reluctance of courts to extend the law of secondary liability for trademark infringement — including with respect to domain name registrars.

Gratuitous picture

Kevin Murphy, editor of Domainincite, has a pretty interesting teaser for an analysis — subscription required (maybe he’ll shoot me one, though?) — of how the world’s biggest brands use new gTLDs:

DomainIncite PRO is excited to reveal the results of the domain name industry’s first in-depth study into how the world’s biggest brands use new generic top-level domains.

In March and April 2012, we surveyed the domain name ownership and usage patterns of the world’s 100 most-valuable brands — representing over $1.2 trillion in brand value, according to Interbrand — in six gTLDs introduced since 2001.

As well as confirming the long-held belief that brand owners see little value in defensive registrations — many not even choosing to benefit from residual traffic — the survey also revealed which brands are more likely to develop their sites, which are most vulnerable to cybersquatting, and which appear to care the least about enforcing their brands.

We also examined how “cybersquatters” use the domain names they register, with some surprising results.

Privacy/proxy registration is not nearly as prevalent as many believe, our study found, and a significant portion of registrants have made no effort to monetize the domains they own that match famous brand names.

I wish I had time to get on top of this stuff.  Just from the teaser, however, I’m perceiving one thing that I had predicted is, kind of, coming to pass:  Domain names are, in fact, becoming passé.

I don’t assume Kevin puts it that way in his report.  After all, he’s got this domaining blog; it’s like his life’s work, and that of many others; and just ask my friend Paul Keating — there’s plenty going in UDRP-land, governed as it is by a non-law interpreted by non-courts  (not like our oh-so-with-it real courts!).  Even I play the domain game from time to time.

But reading between the lines of the above, it seems that domain names are of some relevance, yes, but mainly as a part of a far more complex formula that determines how people get places on the Internet and what they “get” once they get there.

No, not necesarily, but the DeBeers name is still pretty good currency when it comes to selling diamonds:

A New York diamond merchant acted in bad faith when he sought to capitalize on the famed De Beers name as part of his plan to sell diamonds on the Internet, a federal judge ruled on Friday.

U.S. District Judge Denise Cote ruled Rosenblatt violated trademark law through the use of the name DeBeers Diamond Syndicate Inc. that rightly belonged to plaintiffs De Beers LV Ltd., a joint venture of De Beers and luxury goods maker LVMH Moet Hennessy Louis Vuitton.

Rosenblatt’s decisions to apply for dozens of Internet domain names with the name De Beers, obtain a Web site proposal and seek investment dollars “were done in entirely bad faith,” she said.

This doesn’t sound like a particularly hard case, or an interesting one — so ordinary that it raises, in fact, the interesting question: How did this litigation every get to trial?

UPDATE:  I decided to look into the question on PACER.  This was actually some pretty hard-fought litigation, as obvious as the outcome looks in retrospect.  One opinion and order by Judge Cote involved motions to strike affirmative defenses.  The affirmative defense of unclean hands was stricken (not “struck”?); the motions to strike the affirmative defense of lack of standing and to dismiss the declaratory judgment counterclaim was denied; the motion to dismiss Sherman Antitrust Act counterclaim was granted, and defendants’ motion for was joinder was denied.

It still seems hard to justify, but of course, we know so much more now than they knew then, I guess.