Paccar v. Telescan, No. 00-2183 (6th Cir. Feb. 5, 2003) (Injunction against defendant’s use of PETERBILT and KENTWORTH trademarks affirmed in part, vacated in part).
This is a very pro-plaintiff infringement case involving the domain names peterbilttrucks.com, and kentworthtrucks.com and two other variants, registered to a company which provides communication services to truckers. There was apparently no cyber-squatting cause brought.
Of interest from the decision:
The district court did not adopt a per se rule that every domain name identifies the owner or affiliation of the site. Instead, the district court joined many other courts in stating the obvious: words in many domain names can and do communicate information as to the source or sponsor of the web site (citations omitted).
In Brookfield, the Ninth Circuit explained why simultaneous use of the Internet as a marketing tool exacerbates the likelihood of confusion:
In the Internet context, in particular, entering a web site takes little effort–usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.
Brookfield, 174 F.3d at 1057. Even in the absence of proof regarding Internet marketing’s effect on consumer confusion, the district court’s finding that using the Internet as a marketing channel increases the likelihood of confusion is not clearly erroneous.”
There is also a lengthy discussion as to rejection of a nominative fair use defense (for more on nominative fair use, see the Beach Boys case here.)