Re: [ga-udrp] TM not infringed on by registering a domain name

["William S. Lovell" <wsl@cerebalaw.com>]

NameCritic wrote:

> Court finds that just registering a domain name does NOT infringe upon
> the TM of the same or similar name. Only USE of the domain name to
> compete could be an infringement. Finally somebody gets the
> point. http://www.pf.com/cgi-bin/om_isapi.dll?clientID=1857285&advquery=%5bGroup%20NEWS2157%5d&infobase=ilr&recordswithhits=on&softpage=ILRNews  Chris
> McElroy aka NameCritic

Here's an excerpt from the case (and thank you, Chris -- this case is
not even in Lexis yet!):
_____

A defendant does not encroach on a mark registrant’s rights under §32(1)
of the Lanham Act, 15 U.S.C. §1114(1), when it merely registers a domain
name
likely to be confused with the registered mark, the U.S. District Court
for the Southern District of New York held May 25.  Cline v.
1-888-PLUMBING
Group Inc., 7 ILR (P&F) 3121 [SD NY, 2001].

In so holding, the court rejected the argument that the mere
registration of a domain name similar to the plaintiff’s mark was a “use
in commerce” that mark.

In an opinion by Judge Robert J. Ward, the court held that
1-888-PLUMBING Group Inc. and Frank Campisi’s mere registration of
domain names that
were likely to be confused with Beth Cline’s registered mark,
1-800-PLUMBING, is not enough to encroach on Cline’s rights in the
mark.  However, the
court held that issues of material fact existed because there was not
enough evidence before it to determine whether 1-888-PLUMBING had a role
in
Tele-Name Communications Inc.’s posting a web site advertising
1-888-PLUMBING’s services.

In denying both Cline and 1-888-PLUMBING’s motions for summary judgment
under §32(1) of the Lanham Act, the court also held that issues of
material
fact existed regarding the defendant’s claim that Cline had abandoned
the mark and the plaintiff’s assertion that the defendants’ use of
1-888-PLUMBING
or of one of the eight Internet domain names they registered, is likely
to be confused with her registered mark.

In addition, the court held that since Cline’s mark is “a descriptive
mark without inherent distinctiveness” it was not entitled to protection
under the Federal
Trademark Dilution Act.  Finally, the court denied Cline’s motion for
summary judgment under the Anticybersquatting Consumer Protection Act,
finding
issues of material fact existed over whether the defendants had
registered the allegedly infringing domain names in bad faith.
_______

Although reaching the right substantive decision as to the infringement,
the Court entirely fails to understand the jurisdictional issue. If, in
fact,
registering a domain name alone (without use) does not constitute being
"in commerce," then the court has no jurisdiction over the domain
name.  I pointed that out in the Ninth Circuit about a year and a half
ago, but that Court declined to enter my argument. Later, back in the U.
S.
District Court for the District of Oregon, I argued the same with
respect to the Anticybersquatting Consumer Protection Act (Ah! The
search
for something more repulsive than the UDRP has born fruit!) -- if the
registration of the domain name by itself is not "in commerce," then the

Congress can have no jurisdiction over it under the Commerce Clause, and
there is no other source of jurisdiction.  The District Court did not
answer my argument explicitly, but it did dismiss the Anti . . . . blah,
blah count.  The pinhead Congress, backed by its pair of Congress
critters from Virginia and California (wonder why that was?), explicitly
excluded considerations of "goods and/or services"  in connection with
domain name registrations under the Anti blah, blah Act, thereby
avoiding having to go through the "dilution" or other trademark-like
arguments,
but at the same time, without even realizing it, it stripped its bill of
any Constitutional authority whatever, since without goods or services
there
can be no "in commerce."  (My Ninth Circuit brief cites the statutes
which say "Goods are 'in commerce' when . . ." and "Services are in
commerce
when . . . ," but there was no statute (and is not to this day) which
says "Domain names are in commerce when . . . .")  That over which the
Congress has no jurisdiction provides no jurisdiction to the President,
either, and even ignoring the fact that the President cannot make
international
law except through the treaty process, the President likewise has no
authority to allow ICANN (or WIPO, etc.) to cook up UDRP rules. The
whole thing is quite unconstitutional, not in the usual sense of
"they're taking my rights," but rather in the sense of addressing an
issue over which
the Constitution grants no Federal authority.  From the first adoption
by Network Solutions of its "domain name policy," the process had been
entirely without any legal foundation and operates solely on the basis
of raw power.

Bill Lovell

--
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GLOSSARY: http://www.icann.org/general/glossary.htm


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