Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q.2d (BNA) 1511 (9th Cir. 1998)

This case was brought before there was either ACPA or the UDRP. Toeppen obtained domains reflecting the trademarks of third parties such as and,, and  In the case of Panavision, he displayed an image of Pana, Illinois (a vision of Pana). He argued that he was not making trademark use in a way that would infringe Panavision’s rights.

The Ninth Circuit held that Toeppen’s attempts to sell the domain names constituted use in commerce, which use diluted Panavision’s famous trademarks.

This case may be th of as a stop-gap measure against cybersquatting, as there was no effective federal statute directly on point, at that time. ACPA and the UDRP were approximately one year away. Professor McCarthy noted that dilution is targeted at use of a trademark that dilutes plaintiff’s mark – not activity that prevents plaintiff’s use in a specific mode (e.g. on the internet) or otherwise extorts value from the plaintiff. The dilution domain name cases resulted in several questionable holdings with regard to fame of the plaintiff’s marks.

Text of Panavision v Toeppen, 141 F.3d 1316 (9th Cir 1998)