While URDP are decided daily its pretty rare to find a Federal Court decision involving domain names and ever rarer to find a court that rules in favor of the domain name holder, but that’s exactly what happened in the case of TOYOTA MOTOR SALES U.S.A., INC. v. TABARI a decision just released on Thursday by the Ninth Circuit for the United States Court of Appeals.
In that case a couple who are auto brokers, beat Toyota on appeal winning the right to a new trial on whether they can regain their domain names; buy-a-lexus.com and buyorleaselexus.com and the most amazing thing about the case, is they did it without an attorney.
Yes they represented themselves against a global heavyweight and won!!!!
Being a federal Appellate court decision, its pretty long, but I think its well worth 15 minutes it may take you to get thorough it. Of course I tried to shorten it up as much as possible.
But the discussion by the chief judge is very interesting for anyone in the domain space, and much of the language goes against a lot of what we read daily in UDRP decisions.
Here are the fact of this case as described by the chef judge of the court:
“Farzad and Lisa Tabari are auto brokers. They contact authorized dealers, solicit bids and arrange for customers to buy from the dealer offering the best combination of location, availability and price.”
“Until recently, the Tabaris offered this service at buy-a-lexus.com and buyorleaselexus.com.”
“Toyota Motor Sales U.S.A. (“Toyota”) is the exclusive distributor of Lexus vehicles in the United States, and jealous guardian of the Lexus mark.”
“A Toyota marketing executive testified at trial that Toyota spends over $250 million every year promoting the Lexus brand. In the executive’s estimation, “Lexus is a very prestigious luxury brand and it is an indication of an exclusive luxury experience.” No doubt true.”
“Toyota objected to the Tabaris’ use on their website of copyrighted photography of Lexus vehicles and the circular “L Symbol Design mark.” Toyota also took umbrage at the Tabaris’ use of the string “lexus” in their domain names, which it believed was “likely to cause confusion as to the source of [the Tabaris’] web site.”
“The Tabaris removed Toyota’s photography and logo from their site and added a disclaimer in large font at the top. But they refused to give up their domain names.”
“Toyota sued, and the district court found infringement after a bench trial. It ordered the Tabaris to cease using their domain names and enjoined them from using the Lexus mark in any other domain name. Pro se as they were at trial, the Tabaris appealed.”
In finding in favor of the domain holders the court said:
“When customers purchase a Lexus through the Tabaris, they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota’s bank account. Toyota doesn’t claim the business of brokering Lexus cars is illegal or that it has contracted with its dealers to prohibit selling through a broker. Instead, Toyota is using this trademark lawsuit to make it more difficult for consumers to use the Tabaris to buy a Lexus.””
“”The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), and found that the Tabaris’ domain names—buy-a-lexus.com and buyorleaselexus.com— infringed the Lexus trademark. But we’ve held that the Sleekcraft analysis doesn’t apply where a defendant uses the mark to refer to the trademarked good itself.”
“The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We’ve long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement. The Tabaris did in fact present a nominative fair use defense to the district court.”
“In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder. “
“This test “evaluates the likelihood of confusion in nominative use cases. see New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992)
This test is “designed to address the risk that nominative use of the mark will inspire a mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the trademark holder. The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or “more” of a mark than necessary. But if the nominative use satisfies the three-factor New Kids test, it doesn’t infringe. If the nominative use does not satisfy all the New Kids factors, the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether.”
“The district court enjoined the Tabaris from using “any . . . domain name, service mark, trademark, trade name, meta tag or other commercial indication of origin that includes the mark LEXUS.” A trademark injunction, particularly one involving nominative fair use, can raise serious First Amendment concerns because it can interfere with truthful communication between buyers and sellers in the marketplace”
“To uphold the broad injunction entered in this case, we would have to be convinced that consumers are likely to believe a site is sponsored or endorsed by a trademark holder whenever the domain name contains the string of letters that make up the trademark.””
“The injunction here is plainly overbroad because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement.
“The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn’t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.”
“Even if we were to modify the injunction to exclude domain names that expressly disclaim sponsorship or endorsement (like the examples above), the injunction would still be too broad.”
“”When a domain name consists only of the trademark followed by.com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder.
“If customers type in trademark.com and find the site occupied by someone other than the trademark holder, they may well believe it is the trademark holder, despite contrary evidence on the website itself. Alternatively, they may become discouraged and give up looking for the trademark holder’s official site, believing perhaps that such a website doesn’t exist.
” But the case where the URL consists of nothing but a trademark followed by a suffix like .com or .org is a special one indeed.
“Because the official Lexus site is almost certain to be found at lexus.com (as, in fact, it is), it’s far less likely to be found at other sites containing the word Lexus.”
“On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder: You can preen about your Mercedes at mercedesforum.com and mercedestalk.net, read the latest about your double-skim-no-whip latte at starbucksgossip.com and find out what goodies the world’s greatest electronics store has on sale this week at fryselectronics-ads.com.”
“Consumers who use the internet for shopping are generally quite sophisticated about such matters and won’t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain.”
“When people go shopping online, they don’t start out by typing random URLs containing trademarked words hoping to get a lucky hit. They may start out by typing trademark.com, but then they’ll rely on a search engine or word of mouth.”
“”If word of mouth, confusion is unlikely because the consumer will usually be aware of who runs the site before typing in the URL. And, if the site is located through a search engine, the consumer will click on the link for a likely-relevant site without paying much attention to the URL. ”
“Use of a trademark in the site’s domain name isn’t materially different from use in its text or metatags in this context; a search engine can find a trademark in a site regardless of where exactly it appears.”
” Of course a domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder. ::
“When a domain name making nominative use of a mark does not actively suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find. But in the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error.””
“They skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents. They fully expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary. Outside the special case of trademark.com, or domains that actively claim affiliation with the trademark holder, consumers don’t form any firm expectations about the sponsorship of a website until they’ve seen the landing page —if then. This is sensible agnosticism, not consumer confusion.”
“So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use.”
“Toyota argues it is entitled to exclusive use of the string “lexus” in domain names because it spends hundreds of millions of dollars every year making sure everyone recognizes and understands the word “Lexus.” But “[a] large expenditure of money does not in itself create legally protectable rights.”
“Indeed, it is precisely because of Toyota’s investment in the Lexus mark that “[m]uch useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to [Lexus] by using its trademark.”
“”It is the wholesale prohibition of nominative use in domain names that would be unfair.””
“”It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers. The nominative fair use doctrine is designed to prevent this type of abuse of the rights granted by the Lanham Act.””
“Toyota asserts that, even if the district court’s injunction is overbroad, it can be upheld if limited to the Tabaris’ actual domain names: buyorleaselexus.com and buy-a-lexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris’ use of the mark was “necessary” to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It’s true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it’s enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal. While using Lexus in their domain names wasn’t the only way to communicate the nature of their business, the same could be said of virtually any choice the Tabaris made about how to convey their message”
“Rather than using the internet, they could publish advertisements in print; or, instead of taking out print ads, they could rely on word of mouth. We’ve never adopted such a draconian definition of necessity, and we decline to do so here.
“The fact that the Tabaris also broker other types of cars does not render their use of the Lexus mark unnecessary.
“Nor are we convinced by Toyota’s argument that the Tabaris unnecessarily used domain names containing the Lexus trademark as their trade name.
“The Tabaris’ business name is not buyorleaselexus.com or buy-a-lexus.com; it’s Fast Imports.
“Toyota points out that the Tabaris’ domain names featured prominently in their advertising, but that by no means proves the domain names were synonymous with the Tabaris’ business. The Tabaris may have featured their domain names in their advertisements in order to tell consumers where to find their website, as well as to communicate the fact that they can help buy or lease a Lexus. Toyota would have to show significantly more than “prominent” advertisement to establish the contrary. We therefore conclude that the Tabaris easily satisfy the first New Kids factor.”
“”The district court is in a better position to assess in the first instance the timing and extent of any infringing conduct, as well as the scope of the remedy, if any remedy should prove to be required. We therefore vacate the injunction and remand for reconsideration. The important principle to bear in mind on remand is that a trademark injunction should be tailored to prevent ongoing violations, not punish past conduct. Speakers do not lose the right to engage in permissible speech simply because they may have infringed a trademark in the past.””
“On remand, (new trial) Toyota must bear the burden of establishing that the Tabaris’ use of the Lexus mark was not nominative fair use.”
The court then ruled as follows:
“We vacate and remand for proceedings consistent with this opinion. At the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris. Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.”
“”Many of the district court’s errors seem to be the result of unevenly-matched lawyering, as Toyota appears to have taken advantage of the fact that the Tabaris appeared pro se. “”
“Costs on appeal are awarded to the Tabaris.”
So its obviously a great win for the Tabaris.
It’s not easy to beat a company like Toyota with the best and most expensive attorneys in the world, but to do so, per se, without any counsel is quite impressive.
Now lets be clear, this is not a case where the use of the domain was parking.
However the couple was engaged in the auto broker business using the trademark of Lexus in their domain name without permission or license from Lexus.
So for those who engage in a business or have a blog, or fan site, using a domain containing a trademark this is an important case.
It is also a great case to support the argument that its not the domain, but the use of the domain that determines infringement in most cases.
I don’t think this court would uphold the line of reasoning we see in many UDRP or WIPO panels that non-use of a domain where it goes to a non-resolving page is an indication of bad faith.
Moreover unlike UDRP and WIPO were we see panels bringing up past decisions all the time, even as few as 2 negative decisions, to decide against the domain holder, as recently as the Domain Capital we discussed on Friday, this court said:
Speakers do not lose the right to engage in permissible speech simply because they may have infringed a trademark in the past.”
Unfortunately UDRP and WIPO panels have a different standard then federal courts and do not seem to have to follow any precedents of courts or even their own decisions and pretty much make it up on the fly as they go.
With decisions like this, there is some hope on the horizon for a better day.
Excellent and very well thought out ruling!
This is the type of benchmark case law domainers need. The rulings on TM infringement are much wider on the net than in the real world. It is about time folks realize the difference between an infringement and a domain with a trademark in it. It depends on “Use”.
In time many domains that were wrongly taken by WIPO or NAF etc will be returned to their original owner if they follow up in Federal Court.
It is good to see the scale of justice SLIGHTLY swing towards neutral.
Just like you, I’m impressed they did it ‘pro per’.
Lady Justice must have been whispering in their ear throughout the process.
Tabaris must have had some legal assistance.
You know Toyota and the Toyota lawyers will not let this case stand.
If/when Toyota appeals the Appellete decision, I’m sure a few famous attorneys will offer their services pro bono just for the prestige and notoriety of a case like this.
Please keep us posted.
And, thanks for bringing this to our attention.
“We vacate and remand for proceedings consistent with this opinion. At the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris. Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.”
These are profound and beautiful words. It supports the proposition that if you have a legitimate business reason for using the words in your domain, the courts WILL uphold their use.
@Coffeebreak – whoever the hell you are – Toyota can’t appeal this decision, they can apply for a Writ of Certiorari to the U.S. Supreme Court, but there is no appeal process available.
Howard, as always you are 100% correct.
Please take a break from this mambo jumbo legal BS stuffs and go watch soccer .
Gooooooooooaaaaaaaaaaal Tabari!!!
I watched soccer, 0-0 after 110 Minutes, well it’s not the superbowl, and half time no Prince, no Janet Jackson titties.
No Bueno
You quite too soon.
“felicitaciones España”
Bravo!
A carefully considered and well-reasoned decision indeed … and one which will be quoted and relied upon for many years to come in support of this type of fair use of TM terms.
Though not directed specifically to UDRP/WIPO decisions, it could/should still prove useful in arguments to these bodies; which we should expect to see before the year’s out in decisions from them.
Yes; congrats to the Tabaris. A rare and truly impressive victory; as pro se nonetheless.
This is a great decision.
Trademark names shouldn’t be allowed in domains.
@Louise – What would be wrong with AnyoneWantToBuyMyLexus.com ?
@Louise – I hope you have a 3 or word letter domain which you spent $250,000 buying, only for a thieveing company to come and snatch it from you on pretext of it being a trademark. Then I bet you will sing a different tune.
Mike, Thank you for writing an terrific condensed version of this great ruling. It was very encouraging to read it.
A 3 letter domain are based off acronyms. Of course if you owned ABC.com you can argue that these are common building blocks of life.
However if you own APC.com and you purchased it prior to APC backup battery company started doing business, then you have nothing to worry about.
However if you own TIM.com and Donald Trump comes out with a TV show “Time Is Money” there is no way in hell they will win. Or for instance MIT.com and Massachusetts Institute of Technology wanted the name, again, no way. This acronym can stand for 100’s of companies or organizations. It doesn’t belong to just “one”
This decision will surely help certain business owners who own domains with TM’s inside it.
@Louise
Yours is exactly the type of safe (some might say shallow) knee-jerk reaction against which this case provides a well-considered and deeply reasonable response.
There *are* genuine reasons why use of a trademark by non-holders of that trademark is valid and essential for free trade and fair exchange of information and this provides a perfect example.
This court decision is to be applauded.
Hi, Posted before I read the other posts -sorry! Didn’t mean to come off abrasive! Communication is good, tho, right?
Domainers are doing their industry in with parked pages – which bring down the value of the internet, thereby devaluing domains, and diminishing the worth if trademarks are allowed! And it’s a double standard. Go Daddy allows NOONE to register a name with “Go Daddy” in the root domain, or anything close. Go Daddy is fierce in its defense of its trademark. Yet it sits on thousands of copyright infringement domains making $$ off paid links. Any huge domainer, I’m sure they’re great people and I want to meet you all some day, has a business and an online reputation, and I’m sure wouldn’t appreciate a domain like, RickScwartzFan.com or HowardNeuSpeaks.com – even if I post a disclaimer on the homepage! Even if it’s a positive slant as a fan page, each individual has an established business and a reputation. If Howard were to say, “I’m perfectly okay with that,” then it’s not a double standard.
Toyota is a large company that not just one, but thousands of employees depend on its name and reputation.
Please, people, think about it! The term, “Lexus” might be proper in the title, though I wouldn’t use it, or in the description, or even as a folder or file under the root domain. That may be a grey area. But draw the line. Please draw the line on domains which include trademark in the root domain.
Thank you for listening.
BTW, @ Robbed Domainer, I’m totally in your court. You were robbed. A 3-letter acronym does not constitute a trademark!
@Louise
Your concern is with domain parking, misappropriation and possible negative effect on the goodwill and brand value of Lexus.
If the plaintiffs were people who were abusing the term “Lexus” in their domain then you could have a point however it is clear that *in this case* they had a valid business where they acted as good-faith brokers for genuine Lexus vehicles (amongst other brands).
They would have a fair use right to use the Lexus logo in print advertising and, if they chose, in TV spots provided it was clear that they were not misrepresenting themselves as an affiliate or subsidiary of Toyota but merely as a source for purchase of Lexus vehicles.
The internet is NOT a special case in this instance and the court has very wisely recognised this fact.
I encourage you to reconsider your viewpoint.
L
The court said:
But we’ve held that the Sleekcraft analysis doesn’t apply where a defendant uses the mark to refer to the trademarked good itself.”
I gave up any of my (and pursuing anymore) Cheap{brand & car brand} and Discount{brand & Car brand} domains long ago.
Because these folks acutally were running a brokering business – they put the chicken before the egg. – eliminating owning a domain for speculation purposes – something horiffically evil and worthy of thousands of years in jail time under US unconstitutional UDRP findings.
Hopefully some of the UDRP $1000 kangaroos read the opinion
Brian
Much of the issue has to do with control. If buy-a-lexus.com is a bad looking site offering cheap deals, then Lexus would not want to be associated with that. Even though the customer probably understands it is not an official Lexus site, Lexus still would look bad just by association.
The point is Lexus does not want to have to worry about quality control for businesses that are not part of the dealer network, so it is best for them to let nobody outside the company use their name. I assume their dealers have strict rules about how the brand name and logo can be used.
Also, big companies, including many car companies, have specific domains for specific ad campaigns or just in general have many different urls, so it would not surprise me at all if buy-a-lexus.com was an official url Toyota used. Yes, once I went to the site I would see it was not really them, but don’t forget that there are lots of stupid people out there.
To Eric
It is good to see Eric Bogros on the Blog…For those who do not know – or know of Eric Bogros’ – his comment prior to this on protecting a mark is very accurate – and I respect a person’s opinion who actually operates a decent business of a premium generic “CheapFlowers.com”.
Brian
@Eric Borgos
Your point is valid in that of course it relates to control and it is clear to see why the case was brought (if nothing else, legitimate dealerships would be very upset if they hadn’t) *however* that is really not good enough reason to override the defence of nominative fair use and thank heavens the court judgement reflected that.
If the retrial result maintains this court’s view then I think this is a major step forward and a reality-check for large global brands.
L
All of this reminds me a little of movie title domains. For some reason movie studios frequently pick long, hard to remember domains for their movies, which you would never assume were the official domain. For example, I happened to own the domain DearJohn.com but instead of buying it from me (they never made me an offer) for the recent Dear John movie, Sony used the domain dearjohn-movie.com.
So again, this is another example of why [brand name].com is not always the official site, and why people might think buy-a-lexus.com was the official site.
I am not a lawyer, so I am not sure what the right decision is in this case, I am just pointing out that each side has valid points.
as i have stated many times before a trademark has limited value and a sharp domainer could level an army of ip attorneys.and corps could easily be knocked to the ground.in addition toyota is lucky they do not have a pissed off consumer as many people use trademarks to put up gripe sites that devalue the trademark and corps can do nothing ie statefarmsucks.com homedepotsucks. taubmansucks.com.nominative fair use uses trademarks to compare products/services this is a ligitimate fair use there are other fair uses news reporting,parody, satire,etc.
any domainer could keep at trademark domain by using a fair use,proper disclaimer and not using the trademark in commerce.
Per howard Neu,
If Toyota were to find a somwhat similar infringement in a different circuit , like the 2nd circuit, where they would likely favor Toyota, that would cause a discrepancy between 2 of the 2nd highest courts in the US – and likely result in the case(s) being taken on be the Supreme Court.
Brian
Wasn’t there a WIPO or UDRP decision earlier this year (or late last year) that found that a retail business selling a brand name product could use the brand name product’s trademarked name in it’s domain string without infringing on the trademark? I’m afraid I don’t remember any of the players in the case, but the ultimate decision sticks in my mind.
Anyone remember?
“Anyone remember?”
There is an entire line of UDRP cases which follow Oki Data Americas, Inc. v. ASD, Inc., a case from 2001, which was NINE years ago. It is one of the most frequently-cited UDRP cases.
The domain name was OkiDataParts.com, and the domain registrant was an authorized OkiData sales and service provider:
——–
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html
To be “bona fide,” the offering must meet several requirements. Those include, at the minimum, the following:
– Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
– Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., WIPO Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
– The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
– The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
In this case, Respondent’s conduct meets all these factors. Respondent is an authorized seller and repair center, is using the okidataparts.com site to promote only OKIDATA goods and services, and prominently discloses that it is merely a repair center, not Oki Data itself. It has not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers.
——-
Where the UDRP gets this wrong is on the point of selling “only the trademarked product”. If you walk onto the lot of, say, a Ford dealer, then you are typically going to find used trade-ins of all makes and models for sale there. Or, in my tired example of the store advertising “Coca-Cola On Sale!” you are going to find a variety of brands of soft drink on sale inside the store. Nobody is being “baited and switched” in these examples, which this court decision makes clear.
This decision from the 9th Circuit is really no different in substance than Ty v. Perryman from the 7th Circuit a few years ago (bargainbeanies.com permissible use of trademark for sale of trademarked ‘beanie’ and related merchandise).
It’s the same nominative use stuff over and over again, but everyone seems surprised whenever it happens.
Another thing that UDRP panelists won’t accept is the use of TM-containing domain names for PPC, even if it is a product which is normally sold by third party retailers who show up in the PPC results.
“A 3-letter acronym does not constitute a trademark!”
LOL, so Toyota works hard to protect its brand, but BMW doesn’t?
It depends on the letters. I’m sure GM and VW would love to have word with you, along with IBM, AT&T, and CNN.
Lou
I think the case your thinking about is one that involved another car maker that we wrote about over a year ago
http://www.thedomains.com/2009/02/24/another-win-for-a-domain-trademark-domain-used-in-commerce/
This is great! Enjoy the posts! Steinway, Inc., lost against American-Steinway.com, which sells used pianos. It is another decision that burns me up!
LOL @ John Berryhill, there’s a few like that . . . my brother contracted for IBM and made sure it registered product names back in the ’90’s – believe me! Hypothetically speaking, if there was a company, say, InteriorBasementMakeovers, that registered IBM.com before International Business Machines, IBM would have to make an offer. His friend was targeted by a lawsuit. The company trademarked the name, Digicraft, and went after it. The decision went his way, but he learned he better copyright his domain!
Sheesh, even LOL is registered:
Dave
I have made this obvervation many times on the blog
Almost every word, expression, phrase, two letter and three letter combination is trademarked in the US.
Moreover UDRP tell you that you also have to respect trademarks registered in countries all over the world and as of last week, unregistered trademarks as well
It’s nice to see a decision like this one.
I’m currently defending myself in a pro se ACPA action in the 9th district as well… cool to see a fellow pro se defender end up on top and not get muscled by Toyota’s in-house.
“I’m currently defending myself in a pro se ACPA action”
Dutch,
You are very successful with domains and poker.
However, there is a big difference between you and Tabaris.
You are a lawyer so you know the ropes.
For Tabaris, it is an all new experience.
Today, they probably feel like they could sit for the boards.
Dutch, please keep us posted on your case.
This is a great David and Goliath story. Of course, it was pretty clear that the domain holders had the law on their side, but even some experienced lawyers haven’t let that fact stop them from botching cases.
Go Daddy allows NOONE to register a name with “Go Daddy” in the root domain, or anything close. Go Daddy is fierce in its defense of its trademark.”
GoDaddyPayTheChildSupport.com is 100% legal so I have no clue what you’re talking about
To me it is a fine line that a company known by its popular, trademarked acronym is entitled to its corresponding dot com, when so many company or personal names might qualify. If I was mistaken because I spoke out of hand, I stand corrected! It only underscores the importance of a domain and not violating trademarks within the domain.
There are several Wipo judgements against Go Daddy infringers. One line of Go Daddy’s complaint states: “Complainant also asserts that the Domain Names are confusingly similar to the phrase “Daddy” which has become synonymous with Go Daddy.” Any domain registered having the name, “daddy” in it, having to do with domains is viewed as an infringement. – Go Daddy Software, Inc. v. Hostnut.com, Inc.
Samples of Go Daddy infringement: (1) MHB noted in an earlier post GoDaddy certified cnnnews dot tv for auction on its auction site. (2) In Ubid v. GoDaddy, Ubid posits Go Daddy has has dozens of registrations of ubid variations, which it monetizes tby displaying advertising. (3) The Academy of Motion Picture Arts and Sciences filed a 134-page lawsuit against domain registration giant GoDaddy and its subsidiaries for trafficking in unauthorized trademarks. (4) GD prohibits resellers from using its name.
Therefore GD flagrantly profits from trademarked domains, yet squashes any hint of GD infringement with regard to its trademark name.
The domain in your example is unregistered, so I don’t know what you are talking about!
interesting article
Interesting judgment.
What if your company was LEX in the US, would Visitlexus.com be allowed ?
it was as expected, even currently bmw sued to google for using their brand name alphabet.