Cases

• Bally Total Fitness Holding Corp. v. Faber 29 F. Supp. 2d 1161 (C.D. Cal. 1998) "Ballysucks.com" domain name does not create likelihood of confusion.
• Bensusan Restaurant Corp. v. King 126 F.3d 25 (2d Cir. 1997)
• Cybersell, Inc. v. Cybersell, Inc. 130 F.3d 414 (9th Cir. 1997)
• Hasbro, Inc. v. Clue Computing, Inc. No. 00-1297 (1st Cir. November 7, 2000) The trademark owner failed to show the likelihood of "legally significant confusion" and the lower court correctly decided that the mark is not sufficiently famous to justify a remedy under a theory of dilution or tarnishment.
• Lockheed Martin Corp. v. Network Solutions, Inc. 194 F.3d 980 (9th Cir. 1999)
• National A-1 Adver., Inc. v. Network Solutions, Inc. 121 F. Supp. 2d 156 (D.C.N.H. 2000) Registrar did not violate First Amendment in refusing to register domain names it considered vulgar.
• Network Solutions, Inc. v. Umbro, Int'l, Inc. 529 S.E.2d 80 (Va.Supr.Ct. 2000)
• On-Line Careline, Inc. v. America Online, Inc. 229 F.3d 1080 (Fed. Cir. 2000) Internet access provider's service mark would likely confuse consumers familiar with the mark belonging to an online provider of Internet information because the marks are substantially similar.
• Panavision Int'l v. Toeppen (9th Cir. 1998) Interprets the Federal Trademark Dilution Act, 15 U.S.C. Sec. 1125(c) as it applies to internet domain names. Panavision accused Dennis Toeppen of being a "cyber pirate" who steals valuable trademarks and establishes domain names on the Internet using these trademarks to sell the domain names back to the rightful trademark owners. The 9th Circuit concluded that Toeppen made commercial use of Panavision's trademarks and his conduct diluted those marks.
• Parisi v. Netlearning, Inc. 139 F.Supp.2d 745 (E.D. Va. May 10, 2001) The Federal Arbitration Act restrictions on judicial review of arbitration awards do not apply to civil actions challenging UDRP panel decisions because the remedies available under the UDRP are specific, narrow, non-exclusive and non-binding.
• Shields v. Zuccarini No 00-2236 (3d Cir. June 15, 2001) Registering as domain names the misspellings of famous marks for purposes of profiting from consumer confusion violates 15 USC 1125(d)(1)(A)(ii)(I) and (II), and where the defendant acted flagrantly and shows no remorse, the award of attorneys' fees is appropriate.
• Virtual Works, Inc. v. Volkswagen Of Am. 238 F.3d 264 (4th Cir. 2001) Where company founders admitted a dual purpose in registering domain name - designating their own company, but also selling to trademark holder if the price were right - they violated the Anticybersquatting Consumer Protection Act, 15 USC 1125(d).

 

Statutes

• Lanham Act 15 USC §§1051-1127.