Re: [wg-b] Second Circuit on First Amendment Analysis of DomainNames

[KathrynKL@aol.com]

martys@interport.net wrote 
>  In the class of situations we are talking about here - where the SLD is
>  identical to the mark, even in the most political context, where defendant
>  was commenting on the politics of the mark owner, the court held that there
>  was an infringement.  That creates the presumption that that entire class
>  of cases should come out the same way and that's why you can apply a
>  mechanistic rule to that class of cases thereafter (with the ability of
>  challenging the famous mark designation as the safety valve).

I think we have to remember that in this case, the website was completely 
misleading as well.  For those in the international arena, there is nothing 
more controversial in the US political arena than a woman's right to choose 
abortion.  Planned Parenthood is an organization that offers birth control 
and abortion counseling.  It is the target of many attacks and anti-abortion 
groups from time to time masquerade as Planned Parenthood to get young women 
in their door (virtual or physical) and give them anti-abortion information. 

In the physical and virtual worlds, Planned Parenthood has won against these 
anti-abortion groups. Just as masquerading of a Microsoft website should be 
shut down, so too should masquerading of a Planned Parenthood website.  But 
in both cases, it is more than the domain name that poses the problem, it is 
the entirely misleading nature of the website.  Trademark analysis is always 
context based -- and the website has given the court the context it needs to 
find confusion. 

However, federal courts are Also finding that similar or even identical 
domain names -- alone -- are not enough to find confusion or dilution, if the 
website indicates an entirely reasonable commercial or non-commercial use of 
the word.  

As an example,  please see AVERY DENNISON V SUMPTON , U.S. Court of Appeals 
for the Ninth Circuit, posted at http://www.iplawyers.com/, where the court 
declines to revoke avery.net from Sumption and declines entirely Avery 
Dennison's demand to get it (Avery Dennison holds avery.com).

Regards, 
Kathy Kleiman