Tag Archives: Domains

Google Takes Offense, Takes Offensive (for a change)

Originally posted 2013-08-20 13:18:08. Republished by Blog Post Promoter

According to Search Engine Journal, perennial trademark infringement defendant Google has filed suit against Froogles.com, an online shopping site. The New York federal complaint is here. Google has already lost against Froogles at the ICANN level, the site reports. Don’t confuse with Froogles.com with Froogle.com, which is a Google site. Does that figure into the claim now? Take a look and let me know!

UPDATE:  After more than two years of pretrial stuff, according to PACER the case was settled on undisclosed terms.  Either way, Froogles.com is still in business and Richard Wolfe remains its “sole proprietor.”

But it is the Dark Side? Or just plain old The Force?

Evan Brown:  “Behold the power of in rem actions“:

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name.  In a sense, the domain name itself is the defendant. . . .

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com.  Plaintiff filed an in rem action and sought a temporary restraining order (TRO). . . .

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

Oh, when the defendant is this naughty, Evan, a question such as “was it really consumer confusion”? — perhaps we could ask, instead, “Was there really LIKELIHOOD OF CONFUSION given the sophistication of consumers?”–is, as we say in yeshiva, “not really a question.”

You’ve got a copycat domain name, a competing business and, for heaven’s sake, the Golden Ring itself — actual confusion?  Don’t give me questions!  And as Evan says, it’s for cases such as this one where the wrongfulness of the act is, not surprisingly, matched by the ethereality of the defendant that Congress gave us the in rem action.  Powerful stuff!

Fallout from 9th Circuit’s “nuclear option” on cybersquatting secondary liability

mushroom cloudDid the 9th Circuit’s opinion last week in Petroliam Nasional Berhad v. GoDaddy.com  (9th Cir. Dec. 4, 2013) really “kill” secondary liability for trademark infringement under the Anticybersquatting Consumer Protection Act (ACPA)?  Or did the court merely, as seems to be the case, engage in a bit of overkill?

Here’s Jane Coleman‘s take on it:

As our book speeds its way to the printer, the Ninth Circuit has made sure we will have a lot to discuss on this blog and in the upcoming supplement to Secondary Trademark Infringement.  Last week it held there is no cause of action for contributory cybersquatting under the ACPA, exercising the nuclear option on a body of case law that says such claims are valid when they involve fact patterns this sweeping decision ignores. . . .

Viewed against this backdrop of jurisprudence distinguishing mere registrars from complicit actors, the Ninth Circuit’s decision is hard to understand. The court simply declined to address the issues raised in cases like Verizon Cal. when it affirmed the district court’s grant of summary judgment in favor of GoDaddy.  Instead it said this:

Extending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.

2013 WL 6246460 at *3 (emphasis added).

None of the foregoing cases has even remotely suggested that secondary liability would extend to such “rote” activity as the “mere maintenance of a domain name.” In the much more relevant contexts where contributory liability presumably would lie, the courts have made clear that a cause of action for contributory cybersquatting would reach precisely the defendants whose conduct the Act was meant to prohibit – those who are complicit actors in cybersquatting schemes.

Read the whole post; then buy the book from Bloomberg BNA!  (It’s only available for pre-order right now, which is why you haven’t seen the big splashy announcement here yet.)

nuclear-fallout-shelter-e1268946574684-300x226In theory, when faced with such a case, a court in the Ninth Circuit will want to say that the Petroliam Nasional case decision didn’t go that far.  The problem is that the plain language in the opinion appears to … go that far.   The result will be meritorious claims under the Verizon Cal. line of cases being dismissed, or weird workarounds that will distort jurisprudence even more unless and until the Circuit itself reconsiders this opinion (en banc or otherwise).

Alternatively, and less pleasant to contemplate, the Ninth may eventually correct itself without admitting any mistake on its part — the way the Second Circuit did in Rescuecom, pretending that its decision in 1-800 Contacts couldn’t possibly be read to suggest that keyword advertising did not constitute trademark use, even though that’s how pretty much every court in the Second Circuit, and elsewhere, read it.

Their mistake; everyone else’s fallout — an old story.  The question here, though, is:  Why?  The District Court, as Jane points out in her full blog post, had found that the claim failed, on summary judgment, on evidentiary grounds.  Whatever happened to judicial restraint, which would have resulted here in a perfectly acceptable “we need not reach the question of whether there is a viable claim for secondary liability under the ACPA?” — even, if the Circuit wanted to say more, followed by a bit of analysis as to why it’s a question.

Unfortunately the Ninth Circuit went beyond dictum here, it seems, affirmatively deciding a question it didn’t have to and doing so with unfortunately overbroad language that’s likely to cause a lot of litigation confusion.  Ka-boom!

Jews for Jesus v. Google and Brodsky – update and analysis

Jews for Jesus

I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:

Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.

If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?

WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.

As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.

It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.

As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):

Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .

[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:

Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.

42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.

The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.

In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:

On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.

Id. . . .  As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!– RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.

If you’re still with me, here’s a last nail from the Third Circuit reply brief:

In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”

Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:

Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.

304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:

No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.

Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:

[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.

Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.

They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point:  Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.

It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.

Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)

Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.

Give it a rest!

John Welch reports on a case involving the would-be registration for IRESTMYCASE.COM, an attorney’s website, wherein the TTAB reminds us that a URL (website address) alone does not constitute a trademark.

The great white domain extension

The Register reports:Gregory Peck as Captain Ishmael in Moby Dick

From today, trademark holders from within the mobile industry have the chance to register their trademarks as .mobi domains.

Call me Ishmobile.

UPDATE:  Is the .mobi sinking like so much blubber?

Transamerica v. Moniker Online: When domain registrars go bad

This is a summary and analysis of the decision in Transamerica Corp. v. Moniker Online Services, 672 F.Supp.2d 1353 (S.D. Fla. 2009), which stands for the proposition that, yes, a domain name registrar can be liable for contributory trademark infringement arising from the directly infringing acts of its clients.

The decision is over six months old but it whizzed right past LIKELIHOOD OF CONFUSION®. And that’s just wrong.

Luckily, the online treatise Secondary Trademark Infringement by Jane Coleman has recently been updated and the impact of this decision integrated into the text; a full update is planned for September.  This is an adaptation of the integration of Moniker into the treatise text.  The complete analysis of Moniker, including full citations, can be found here.

Secondary Trademark Infringement Domain name registrars have not typically been held contributorily liable for trademark infringement committed by their registrants. See Lockheed Martin; Size, Inc.; Academy of Motion Picture Arts and Sciences v. Network Solutions.  The courts have found that domain name registrars lack the requisite degree of monitoring and control over the activity of their registrants to trigger contributory liability.  By contrast, where the plaintiff’s allegations against the defendant domain name registrar made out a complex scheme of cybersquatting, the court rejected the defendant’s motion to dismiss the contributory liability claim against it.  Far from the “rote translation” involved in Lockheed, the facts alleged in Transamerica depicted a domain name registrar that acted in concert with other defendants to knowingly profit from the infringing activities of its customers.

In Transamerica, the plaintiff was Transamerica, a holding company for a group of subsidiary companies engaged in the sale of life insurance and other financial services. It sued the domain name registrar, “Moniker Online”; a related company, “Moniker Privacy”; and “Oversee,” the company that allegedly owned and controlled the Moniker defendants, as well as other unnamed defendants – the ostensible owners of the infringing domain names.  Transamerica claimed, inter alia, that the defendants were contributorily liable for direct trademark counterfeiting and infringement by their customers who used infringing versions of the TRANSAMERICA mark in their websites, from which use the defendants profited.
EDNY Brooklyn

Specifically, Transamerica alleged that Moniker Online registered numerous domain names that were substantially similar to the TRANSAMERICA mark and its other registered marks, such as “Transamericalifeins.com.” When internet consumers arrived at the website, the plaintiff alleged, they encountered the TRANSAMERICA service mark or marks likely to be confused with it, and upon clicking a hyperlink would be “duped into believing they [were] accessing the well-known Transamerica, but instead [were] directed to other entities selling comparable products.” The plaintiff further alleged that the “ostensible owners of the infringing domain names are anonymous individuals or fictitious entities who are impossible to locate.”

Defendants argued that these allegations did not satisfy either the inducement or the knowledge and control prong for contributory infringement, citing the two-prong standard under Inwood and the control element pursuant to Lockheed.  The court rejected this argument.   Read More…

Gripes of wrath

If you’ve seen one disgruntled-former-law-associate attack gripe site, you’ve seen them all.  But I did like this point by gold-plated pariah Edward Harrington Heyburn, Esq. (corrected).  Because he’s so big on free expression, especially his of course (like the rest of us), I am certain he won’t mind my reproducing his whole rant, which actually looks like it could have been strung together using quotes from the “best of LIKELIHOOD OF CONFUSION®“:

Did the Judge infringe upon someone else’s trademark by telling me to “Get a life”?”

Proving that life is stranger than fiction, it appears that Judge Thompson has trampled upon a registered trademark by telling me to “get a life.”  [B]elieve it or not, “Get a Life” is a registered trademark.  Here is a copy of the record from the US Trademark Office.

Word Mark GET A LIFE
Goods and Services IC 035. US 100 101 102. G & S: Outsourcing in the field of legal support services. FIRST USE: 20090601. FIRST USE IN COMMERCE: 20090601
Serial Number 77615815
Filing Date November 17, 2008
Live/Dead Indicator LIVE

I guess the question is whether the judge used the phrase in commerce?  I point this out to illustrate how ridiculous trademark law can get.  Trademark holders like Levinson Axelrod can use misguided arguments to silence us.  We are so afraid of the Government imposing on our right to free speech we neglect to see how corporate America can use our existing laws to silence criticism.  I guess a web site called www.getalifesucks.com is out of the question.

Pretty good!  Maybe I wish I’d had Heyburn around for a couple of my more “successful” trademark cases in a certain federal judicial District he knows.  I couldn’t have lost them much harder, but maybe there would have been a few more laughs along the way.

Go chutzpa!

GoDaddyGoDaddy, better than anyone, realizes that the margins in domain sales are slim and getting slimmer.  Economics teaches us that in a perfectly competitive market, there is no profit in the long run.  Domain registration is rapidly approaching that level of efficiency.  How can GoDaddy leverage its substantial market position, both as a leading destination for prospective buyers and “owner” of a substantial portfolio of registrations, registrant data and associated relationships — all of which are, however, completely vulnerable to the devastating encroachment of the Internet’s efficiencies?

Well, how about going crooked, and adding a markup?  Here’s the scoop on how GoDaddy is now claiming to help prospects evaluate the name value of obviously trademark infringing registrations, from the “The Domains” blog (via Randazza):

We have discussed on numerous occasions, TDNAM (Godaddy) is allowing the sale of trademarked domains on its site.

However today they have gone further.

They have hit a new low.

Not only are they allowing the auction of cnnnews.tv though the TDNAM platform but they have actually issued a “Certified Domain Appraisal” for the domain.

They can no longer claim ignorance or simply state that they can’t be expected to review each domain submitted for auction to see if there is a trademark violation.

Here the domain was basically thrown in their face when an appraisal was ordered.

Godaddy gave the domain owner a range of what they determined the domain was worth, in their certified opinion, as the world’s largest registrar.

What should they have done?

The right thing.

Just what you or I would have done if someone came to us with the domain, tell them square and true, hey buddy this domain violates a federally registered trademark, its worthless and we are not going to help you sell it or have any involvement in it and here’s your $15 back.

Instead Godaddy took the $15 for the certified appraisal, the domain owner with Godaddy’s blessing and opinion that the domain has value, put it up for sale on TDNAM where is now has 2 bids with over 2 days to go.

Anarchy has always been a subtext of the Internet, but this really does take chutzpa, daddy.  We can’t wait for this shoe to drop.