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Mar/09

Problematic Decision re PHILBRICKSPORTS.COM


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Plaintiff, Daniel Philbrick, or affiliated companies or predecessors in interest operate various businesses in the sports field under the name PHILBRICK’S SPORTS or variants thereof, since 1983. He used the domain name PHILBRICKSSPORTS.COM and others. Defendant eNom (a registar) obtained the domain name PHILBRICKSPORTS.COM (one S) and several others, and ran keyword ads relating to sports. It is not quite clear how eNom obtained all the names and why it didn’t transfer them to plaintiff (the decision indicated that at some point it deactivated the names in order to transfer them to plaintiff, but didn’t).
Plaintiff brought, inter alia, an ACPA cause. Defendant eNom prevailed at summary judgment, as the judge held that plaintiff failed to prove secondary meaning in the mark PHILBRICK’S SPORTS.
I haven’t seen the evidence in the record but what is reported in the deicsion seems to be sufficient to establish that PHILBRICK’s SPORTS functions as a trademark. This is despite the fact that the judge didn’t seem to give the plaintiff any benefit of the doubt (and despite the judge finding that the ‘intentional copying as evidence of secondary meaning’ argument as being circular.
But consider that it seems uncontested that the mark PHILBRICK’S was used in interstate commerce in relation to sports since 1983. The PTO gives a presumption of secondary meaning after 5 years of use. Also consider the following: defendant earned $183 in click-though advertising from the name (I’m not sure what period of time that covers). I’m guessing here but the usual ‘page o’ links’ operated by a domainer, doesn’t have links to it, which suggests that people are only arriving at PHILBRICKSPORTS.COM by typing that name into an address bar. We don’t know how many people total landed at the site (that would have been a useful fact), but enough to generate $183 in click-throughs. It seems to me that the fact that a lot of people are taking the trouble to type PHILBRICKSPORTS.COM into an address bar is evidence of secondary meaning of the name serving as a source of origin.
Read the decision, tell me what you think.
Prof. Goldman doesn’t see it the way I do.
Coupla additional practice pointers here: (1) file trademark applications and get that presumption of registrability; (2) alleging fame can be a distraction from your stronger causes; and (3) UDRP first?
Complaint Philbrick

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