Via UDRPlaw.net, in GlobalSantaFe Corporation v. GlobalSantaFe.com, 2003 US Dist. LEXIS, 01-1541-A (E.D.Va. Feb. 5, 2003), the Court has ordered Verisign to cancel a registration of a domain name under ACPA, in spite of a contradictory order to stay cancellation from a Korean court. 

The Third Circuit has held that the Anti-Cybersquatting Protection Act will not retoractively apply to a domain name registered prior to the Act but will apply if the name is renewed.

The MBC Network has announced that it will roll out a 24 hour news channel targeted at African Americans, named MBC NEWS.  When  I heard the report on the radio, both the anchor and the reporter said “Not to be confused with NBC News.”  Which shows a likelihood of association, not confusion.

On the one hand, the names do sound similar.  On the other hand, the TV audience has learned to distinguish between CBS, PBS and TBS, and CNN and TNN.

Here is an article from Interbrand’s Brandchannel site entitled “Can anyone at a Company Build Brand Value?”  The article answers yes by providing five things emplyees can do to get behndi the company’s brand.  To which I add a sixth: Obey good brand hygiene in communications (both internal and external). 

Use your brand as an adjective, not a noun.  Example – not “Buy our Timberlands” but “Buy our Timberland boots.”

Never use your trademark descriptively in lower caps.  If your mark is an arguably descriptive term such as “Office in the Clouds” for some sort of in-flight data system, don’t say “Our system is a virtual office in the clouds.”  Better: “Our Office In The Clouds ™ system provides . . . “

No one likes their own work product submitted against them as evidence in litigation . 

Couresty of amlaw.com, a complaint filed by Dr. Seuss Enterprises against an allegedly terminated distributor which continues to sell CAT IN THE HAT merchandise.  Representing Dr. Seuss was the fish in the bowl.  The prayer for relief requests a new rake, a new cake, and a new polka dot dress for Mom.  Although what was she doing leaving the kids alone in the house to begin with?

Here is a NY Times article on paid search.  From the lead paragraph:

” . . . reputable advertisers increasingly find themselves outbid for top search listings by unscrupulous and perhaps fraudulent e-tailers.”

Example.  If you Google “Sony Handycam DCR-TRV27” today then you will get Broadway Photo as the top paid hit.  The article lists various allegations against this site (bait and switch, etc.).

I’m not sure whether the fact that this is occuring on paid search is all that relevant.  Something equivalent occurs if the “bad” retailer catches your eye with a huge Sony Handycam ad in a newspaper.

Of interest is the debate as to whether the search engines such as Google or Overture should do anything about this.

Goldstein Howe, source of the SCOTUS Blog, has filed a petition for cert on behalf of Ty Inc. (the Beanie Baby people), in Ty v. Perryman (the BARGAINBEANIES.COM case discussed previously here).  The question presented is:

Whether every third-party reseller of goods bearing famous trademarks has the right, as a matter of law, to incorporate the famous marks into the reseller’s business name and Internet domain name, or whether such conduct instead constitutes dilution of the famous trademarks under the Federal Trademark Dilution Act.

Text of the cert petition here.

What a difference two days and three different Judges make.  After the pro-plaintiff Paccar decision, the Sixth Circuit has handed down a very pro-defendant decision in Taubman v. Webfeats.  Defendant’s website, which linked to plaintiff’s official website, was held not to infringe, thanks to (1) a very narow definition of commercial use; and (2) great weight given to a disclaimer.

Plaintiff opened a mall named THE SHOPS AT WILLOW BEND.  Defedant registered SHOPSATWILLOWBEND.COM.  He set up a site containing links to the mall’s official site and to stores at the mall.  He also provided links to his webdesign business and his girlfriend’s business.  Plaintiff objected and defendant removed links to his and his girlfriend’s businesses.  He also registered five “sucks” names and set up a gripe site. 

Plaintiff made what in retrospect was a tactical error in going after the gripe ste, first enjoining it and then having the injunction overturned at appeal.

It appears that everything document every filed in this case is available at the gripe site.  If you want to see how long and involved a litigation can be, by all means go there.

The refusal of the court to enjoin the gripe sites is not shocking.  What is of interest is the infringement analysis of shopsatwillowbend.com.   Relying on its 1-800-H0LIDAY decision, the court gave great weight to the fact that (1) defendant used a disclaimer and (2) defendant provided a link to the official website.

Once defendant removed the commercial links, this in effect became a warehousing fact pattern.    ACPA and the UDRP are targeted at this behavior, not the infringement provisions of the Lanham Act.  I suspect that plaintiff would have had a very decent shot at the UDRP with regard at shopsatwillowbend.com, and spent hundreds of thousands of dollars less to be in no worse a position than it is in today.

This case is going to get cited a lot by defendants.