ORDER GRANTING DEFENDANT GREATDOMAINS.COM, INC.’S RULE 12(B)(6) MOTION TO DISMISS AND GRANTING IN PART, DENYING IN PART THE EFF DEFENDANTS’ RULE 12(B)(6) MOTIONS TO DISMISS
Currently pending before the court are motions by Defendants Robert Emmert; Paul Brown; Alfonso Fiero; John Hall; 1 Radtech; and Tom Cooper (collectively “the EFF Defendants”) 2 and GreatDo-mains.com, Inc. (“Great Domains”) to dismiss this case under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief may be granted. For the reasons set forth below, the court will grant Great Domains’s motion and dismiss Great Domains from this case. The EFF Defendants’ motions will be granted in part and denied in part.
I. BACKGROUND
Great Domains operates a website on the Internet at “www.greatdomains.com”, an auction site that operates in a manner similar to the well-known “ebay.com”. Rather than offering a forum for whatever objects cyber-merchants might wish to
In addition to providing a marketplace for buyers and sellers of domain names, Great Domains furnishes a number of ancillary services, including domain name appraising. Great Domains also will extend offers to domain name registrants on behalf of persons interested in purchasing domains that have not been posted for sale. In exchange for these and other services, Great Domains receives a fixed percentage of the price of any domains sold over its website.
Plaintiffs Ford Motor Company; Jaguar Cars, Ltd.; Aston Martin Lagonda, Ltd.; and Volvo Trademark Holding (collectively “Ford”) commenced this lawsuit against Great Domains and the EFF Defendants, alleging that numerous domain names registered to the EFF Defendants and offered for sale at “greatdomains.com” infringe Ford trademarks. Ford thus asserts that Great Domains and the EFF Defendants are liable for (1) trademark cyberpiracy under the 1999 Anticybers-quatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d); (2) trademark infringement pursuant to the Lan-ham Act § 32, 15 U.S.C. § 1114; (3) unfair competition, Lanham Act § 43(a), 15 U.S.C. § 1125(a); and trademark dilution, under the Federal Trademark Dilution Act of 1995 (“FTDA”), 15 U.S.C. § 1125(c). Great Domains and each of the EFF Defendants have filed motions to dismiss under Federal Rule of Civil Procedure 12(b)(6).
II. STANDARD
In ruling on a Rule 12(b)(6) motion to dismiss, the court must construe the complaint in a light most favorable to the plaintiff, accept all factual allegations as true, and determine whether the plaintiff undoubtedly can prove no set of facts in support of his claims that would entitle him to relief.
See Sistrunk v. City of Strongsville,
Though decidedly liberal, this standard of review requires more than the bare assertion of legal conclusions.
See Lillard v. Shelby County Bd. of Educ.,
III. DISCUSSION
In addressing the Defendants’ Rule 12(b)(6) motions, the court concludes that all claims must be dismissed, except the cybersquatting claims brought pursuant to the ACPA against the EFF Defendants.
The Anticybersquatting Consumer Pro tection Act provides in relevant part as follows:
A person shall be liable in a civil action by the owner of a mark ... if without regard to the goods or services of the parties that person
(i) has a bad faith intent to profit from that mark ...; and
(ii) registers traffics in or uses a do main name that
(I) in the case of a mark that is distinctive at the tint�e of registra tion of the domain name is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of regis tration of the domain name is iden tical or confusingly similar to or dilutive of that mark[[j
15 U.S.C. § 1125(d)(1)(A). Ford has al leged facts sufficient to sustain a claim of cybersquatting against each of the EFF Defendants. With regard to Great Do mains however Ford has failed to allege that Great Domains directly transferred or received a property interest in a domain name as is required under the ACPA. Accordingly the cybersquatting claim against Great Domains must be dismissed.
1. EFF Defendants
To survive a Rule 12(b)(6) motion for failure to state a claim under the ACPA a plaintiff must allege facts in sup port of the following three elements:
(1) that the defendant has registered trafficked in or used a domain name;
(2) that the domain name is identical or confusingly similar to or dilutive of a distinctive or famous trademark; and
(3) that the defendant has bad faith in tent to profit from the mark.
15 U.S.C. § 1125(d).
(a) "Registered trafficked in or used"
With regard to the first element the complaint asserts that each of the EFF Defendants is the registrant of at least one domain name that incorporates a Ford mark. Indeed the EFF Defendants indi vidually have conceded this point. (See EFF Defs.' Affs. � 3). Ford thus has al leged facts sufficient to satisfy this re quirement.
(b) "Identical or confusingly similar"
The court similarly concludes that Ford has alleged facts sufficient to support its allegation that the domain names are "identical or confusingly similar to" a distinctive Ford mark. Each of the disputed domain names�"4ford-parts.com" "4fordtrucks .com" "lincoln trucks.com" "jaguarcenter.com" "jaguar enthusiastsclub.com" "vintagevolvos.com" and "volvoguy .com"�incorporates either the FORD LINCOLN JAGUAR or VOLVO mark. Courts generally have held that a domain name that incorporates a trademark is "confusingly similar to" that mark if "consumers might think that [the domain is] used approved or permit ted" by the mark holder. Harrods Ltd. v. Sixty Internet Domain Names,
(c) “Bad faith intent to profit”
The issues are less straightforward with regard to the third element: “bad faith intent to profit from the mark.” In the ACPA, Congress provided a non-exhaustive list of factors to consider in determining whether a domain name registrant has acted with “bad faith intent to profit.” Specifically, the statute directs courts to consider whether the defendant (1) has trademark rights in the domain name that are concurrent with the plaintiffs; (2) is identified by the domain name; (3) has previously used the domain name in connection with goods or services; (4) has engaged in noncommercial or fair use of the mark on the Internet; (5) intends to divert customers away from the mark owner; (6) has offered to sell the domain name before using it for a legitimate purpose; (7) provided misleading contact information when registering the domain name; or (8) has registered multiple domain names that are confusingly similar to others’ trademarks. 15 U.S.C. § 1125(d)(l)(B)(i)(I)-CVTII). The statute also invites consideration of the extent to which the incorporated mark is distinctive and famous. Id. at (IX).
These factors, as a whole, focus on whether the defendant’s use of the disputed domain name is legitimate — ie., for some purpose other than simply to profit from the value of the trademark. This indicates that the ACPA was designed to target persons who commandeer a domain name for no reason other than to profit by extortion, yet bypass persons with legitimate interests in the domain name — even if they do incidentally profit from the domain name’s status as a trademark. The ACPA’s legislative history reinforces that this is the purpose of the Act.
For example, in discussing the fourth “bad faith factor” — ie.,' the defendant’s “bona fide noncommercial or fair use of the mark in a site accessible under the domain name” — the Senate and House Reports state that “[u]nder the bill, the use of a domain name for purposes of comparative advertising, comment, criticism, parody, news reporting, etc.,
even where done for profit,
would not alone satisfy the bad-faith intent requirement.” S.Rep. No. 106-140, at 14 (1999),
published at
Further the Report "instructs that the sixth "bad faith" factor�i.e. whether the defendant has offered to transfer the do main name to the mark owner for financial gain without having used the domain name in the bona fide offering of goods or ser vices"�
does not suggest that a court should consider the mere offer to sell a domain name to a mark owner or the failure to use a name in the bona fide offering of goods or services is [sic: as] sufficient to indicate bad faith. Indeed there are cases in which a person registers a name in anticipation of a business venture that simply never pans out. And someone who has a legitimate registration of a domain name that mirrors someone else's domain name such as a trademark owner that is a lawful concurrent user of that name with another trademark own er may in fact wish to sell that name to the other trademark owner.
S.Rep. No. 106-140, at 15; H.R. Rep. 106-412 at 12. Cf. HQM, Ltd. v. Hatfield,
These statements from the con gressional record demonstrate that Con gress sought to prevent the AGFA from being trolled as dragnet catching every small-fry Internet user whose domain name happens-in some small degree-to correspond with a protected trademark. According to the EFF Defendants howev er that is exactly what Ford has done in this lawsuit naming as a defendant every seller listed at "greatdomains.com" whose domain name incorporates a Ford mark. Moreover the EFF Defendants note that Ford has aimed no specific allegations against any of them individually asserting no more than that each is the registrant of a domain name that (1) incorporates a Ford trademark and (2) has been offered for sale over the Internet.
Ford responds to these accusations noting that increasingly sophisticated tac tics of cybersquatters make it difficult at best to determine whether a domain name was registered in bad faith. Where early cybersquatters were bold in directly seek ing to extort money from trademark hold ers see, e.g., Panavision Int'l, L.P. v. Toeppen
While the court finds merit in both parties' positions the AGFA clearly is intended to address concerns such as those set forth by Ford. Because defendants eas ily can conjure up a "legitimate" use for a domain name that incorporates a trade mark plaintiffs frequently will find it diffi cult if not impossible to obtain evidence probative of "bad faith intent" without court sanctioned discovery. Indeed ob taining information relevant to almost all of the bad faith factors set forth in the statute requires direct testimony from the defendant. Accordingly the court con cludes that at least where facts showing a prima facie case of "intent to profit" have been alleged the element of bad faith gen erally will not come into play until the summary judgment stage. Thus the les
Defendant John Hall has stated in affidavit that “I have never registered the <jaguarcenter.com> domain for sale at Great Domains or anywhere else. It is not for sale.” (Hall Aff. at 8, attached to Hall’s “Motion to Dismiss.”) Moreover, he explains that he registered the “jaguarcenter.com” domain to assist a friend’s daughter, who had done research about jaguars cats and wanted to publicize issues concerning their preservation. (Id.) His claims are supported by a reasonably well-developed website dedicated to jaguar cats and located at “jaguarcenter.com”. Although Defendant Hall alleges that he has done no more than register a domain name — thus not even evincing an “intent to profit” — at the 12(b)(6) stage, all reasonable inferences must be drawn in the plaintiffs favor. That the “jaguareenter.com” domain was posted for sale through Great Domains is sufficient to let this case proceed to discovery. Accordingly, it is unnecessary for the court to determine what additional facts would be necessary to overcome a Rule 12(b)(6) motion if the complaint alleged no more than that a defendant had registered a trademark as a domain name.
2. Great Domains
The issue with regard to Great Domains is whether Ford has sufficiently alleged the first' necessary element of a cybers-quatting claim, i.e., whether Great Domains either (1) “registers,” (2) “traffics in,” or (3) “uses” the domain names at issue in this case. 15 U.S.C. § 1125(d)(l)(A)(ii). It is undisputed that Great Domains has not “register[ed]” any of the challenged domain names. Moreover, § 1125(d) expressly provides that a person may not be held liable for “using” a domain name under the statute unless that person “is the domain name registrant or that registrant’s authorized licensee.” § 1125(d)(1)(D). Thus, the court’s inquiry must focus on whether Ford can demonstrate that Great Domains has “traffic[ked] in” a domain name. 15 U.S.C. § 1125(d)(l)(A)(ii).
The phrase “traffics in” is defined in the ACPA as “refer[ring] to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.” 15 U.S.C. § 1125(d)(1)(E). The specific terms listed in this definition are susceptible to broad interpretation and, moreover, are merely illustrative. Nonetheless, the concluding catch-all phrase “any other transfer ... or receipt in exchange for consideration” provides the context in which they must be understood. Specifically, the language “any other transfer ... or receipt” clarifies that the defining terms are all ways in which a domain name may be transferred or received. The key words — “transfer” and “receipt”' — -both denote some level of ownership or control passing between the person transferring and the person receiving.
Great Domains's commercial ac tivity does not fit within this definition. As an auctioneer Great Domains does not transfer or receive for consideration the domain names that are sold over its website. Although it does provide a forum at which such transfers and receipts may take place the property interests associat ed with each domain name remain with the person "transferring" and pass directly to the person "receiving thus bypassing Great Domains entirely. Accordingly the court concludes that the ACPA does not cover Great Domain's provision of ancillary services which merely facilitate the statu torily targeted transfers and receipts. Accord Bird v. Parsons
In addition to the plain language of the statute the ACPA's "bad faith in tent" requirement lends further support to the conclusion that only persons directly transferring or receiving a property inter est in the domain name can be liable as cybersquatters. First as discussed previ ously the bad faith factors set forth in the ACPA focus on the relationship between the domain name and the defendant di recting attention to the legitimacy of the defendants' use. Such an analysis is not purposeful when applied to a person or entity that did not register the domain name has no ownership interest in the domain name and does not otherwise use the domain name. Cf. Lockheed,
Second subjecting ancillary service pro viders such as Great Domains to liability under the statute would significantly hin der the case-by-case analysis intended in "balanc[[ing] the property interests of trademark owners with the legitimate in terests of Internet users and others who seek to make lawful uses of others' marks." S.Rep. No. 106-140 at 13; H.R.Rep. No. 106-412 at 10. Great Do mains has little ability to ascertain wheth er a domain name seller wishes to sell based on a "bad faith intent to profit" or because some previous legitimate use has proven unsuccessful or undesirable. This is particularly true where as here a do main name incorporates another's trade mark but is not identical to that trade mark. In such circumstances a defendant easily can set forth a facially legitimate reason for having registered the disputed
3. Contributory liability
Ford argues that even if it cannot directly state a cybersquatting claim against Great Domains, the law supports a claim of contributory liability. This argument is premised on Ford’s allegations that Great Domains (1) auctions domain names “to the highest bidder” through the “greatdomains.com” website (Compl.t 5); (2) “collects a commission on the sale of domain names purchased through its web site” and thus “shares its customers’ interest in selling their domain names at the highest possible price” (Comply 108); and (3) encourages cybersquatting by explaining in the “valuation model” found on its website that “the value of a domain name is driven by its ability to deliver traffic and revenue,” which ability, Ford adds, is greatly enhanced if the domain name incorporates a trademark. (Comply 112.) These claims are insufficient to support contributory liability in the cybersquatting context.
It is well established that a third party can be held liable for another’s infringement of a trademark if the third party (1) “intentionally induces another to infringe a trademark” or (2) “continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement.”
Hard Rock Cafe Licensing Corp. v. Concession Servs., Inc.,
Courts in at least two cases have expanded this analysis to hold that a flea market that exercises “direct control and monitoring” over its vendors can be liable for contributory infringement if it “supplied] the necessary marketplace” for the sale of infringing products.
Lockheed Martin Corp. v. Network Solutions, Inc.,
B. Dilution, Infringement, and Unfair Competition
In addition to raising a claim under the ACPA, Ford’s complaint seeks redress pursuant to claims of infringement, 15 U.S.C. § 1114, unfair competition, 15 U.S.C. § 1125(a), and dilution, 15 U.S.C. § 1125(c). 6 For the reasons set forth below, the court will dismiss these causes of action as against all Defendants.
A number of courts have adjudicated cybersquatting cases under traditional infringement and dilution standards. The analysis in those cases focuses on the “in connection with any goods or services” requirement for proving infringement, 15 U.S.C. §§ 1114 & 1125(a), and the “commercial use in commerce” requirement for proving dilution.
Infringement claims consistently have been dismissed by courts, regardless whether based on allegations of (1) mere registration,
see Lockheed Martin Corp. v. Network Solutions, Inc.,
That domain name trafficking more readily has been deemed actionable under dilution rather than infringement law may have resulted from an incautious reading of the respective statutes; because the FTDA does not
expressly
require use of a mark “in connection with any goods or services,” courts may have felt less constrained in applying it to allegations of domain name trafficking. Absence of the “in connection with any goods or services” language, however, cannot account for the distinction that has been made within dilution law between the registration of trademarks as domain names, which does not “constitute a commercial use under the [FTDA],” and the “attempt to sell the trademarks themselves,” which does.
See Panavision,
1. “Commercial Use in Commerce”
The parties in this case, similar to the majority of courts addressing the issue, have treated the dilution statute’s “commercial use in commerce” requirement as a single element of their overall claim, rather than address its distinct parts. This court concludes, however, that it is helpful to conduct a separate analysis of whether selling a trademark as a domain name is (1) “commercial,” (2) “use,” and (3) “in commerce.”
a. “Commercial”
“Commercial” generally is defined as relating to “the exchange or buy
connected with trade and traffic or commerce in general; ... occupied with business and commerce. Generic term for most all aspects of buying and selling.
Black’s Law Dictionary 270 (6th ed.1990) (citation omitted). Thus, the court concludes that a dilution claim under 15 U.S.C. § 1125(c) requires proof that the defendant has engaged in exchange (commonly through buying or selling), or other activities that have profit as their primary aim. Here, it is indisputable that Ford has sufficiently stated a claim that the EFF Defendants’ activities are “commercial”; their alleged intent is to profit from the sale of domain names.
b. “In commerce”
Similarly, it cannot be disputed that the EFF Defendants’ trafficking activities are “in commerce.” This requirement is satisfied if the defendants’ trademark use falls within the scope of Congress’s Commerce Clause powers under the Constitution.
See United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc.,
c. “use”
It is well established that not all uses of trademark are infringing or dilutive.
See e.g., Avery Dennison Corp. v. Sumpton,
The line dividing use of a word or symbol in its trademark and non-trademark senses is determined, in significant part, by whether it is used in connection with goods or services. This conclusion is amply supported by the statutory trademark laws. For example, 15 U.S.C. § 1127 defines “use in commerce” to occur when a mark is “placed in any manner on the goods” or “used or displayed in the sale or advertising of services.” 15 U.S.C. § 1127. Similarly, the terms “trademark” and “service mark” are themselves defined by statute as “any .word, name, symbol, or device, or any combination thereof’ that is “used by a person ...
to identify and
2. “Goods or Services”
Having determined that, like infringement claims, dilution claims brought pursuant to the FTDA require use of a trademark “in connection with goods or services,” the court must next determine whether such use sufficiently has been alleged in this case. Ford asserts that it has stated a claim in support of this element (1) because the trademarks themselves are the goods in connection with which the trademarks are used and (2) because the EFF Defendants use of the Ford marks is in connection with Ford’s own goods and services. For the following reasons, both theories must be rejected.
a. Selling the trademarks themselves
Ford first argues that the “goods or services” requirement is satisfied because the EFF Defendants are selling the trademarks themselves. In support of this proposition, Ford cites two cases: (1)
Panavision International, L.P. v. Toeppen,
(i) Panavision
Panavision was one of the earliest cases to apply the FTDA’s anti-dilution provisions against domain name cybersquatting. The defendant in that case — Dennis Toep-pen of Intermatic fame 9 — was sued by Panavision International, L.P. (“Panavision”) for trademark dilution after he registered the PANAVISION mark as a domain name and used it to display online photographs of the city Pana, Illinois. Id. at 1319. “Incidentally,” Toeppen also sought $13,000.00 as an incentive to release the domain name to Panavision. Id. On appeal from the district court’s award of summary judgment in Panavision’s favor, the Ninth Circuit affirmed, focusing on the FTDA’s “commercial use” and “dilution” elements.
(a) “Commercial use”
With regard to the commercial use requirement, the court concluded that “[i]t does not matter that [Toeppen] did not attach the marks to a product. [His] commercial use was his attempt to sell the trademarks themselves.”
Id.
at 1325. A
In
Avery Dennison Corporation v. Sumpton,
On appeal, the Ninth Circuit reversed, distinguishing Sumpton’s “commercial use” from that in Panavision:
Commercial use under the Federal Trademark Dilution Act requires the defendant to be using the trademark as a trademark, capitalizing on its trademark status. Courts have phrased this requirement in various ways.... In our Panavision decision, we considered the defendant’s “attempt to sell the trademarks themselves.” All evidence in the record indicates that [Sumpton] register[s] common surnames in domain-name combinations and license[s] e-mail addresses using those surnames, with the consequent intent to capitalize on the surname status of “Avery” and “Dennison.” [Sumpton] do[es] not use trademarks qua trademarks as required by the caselaw to establish commercial use. Rather, [he] use[s] words that happen to be trademarks for their non-trademark value.
Avery Dennison,
Although the court, speaking generally, concluded that Sumpton’s use of the AVERY and DENNISON marks was not “commercial use,” it unquestionably was “commercial.” Sumpton charged a $19.95 start-up fee, plus $4.95 annually thereafter for the rights to each vanity email address. Id. at 872. Indeed, the court itself appears to have focused on whether Sump-ton’s “use” was the type “required by the caselaw.” Id. at 880. Careful examination of the two defendants’ “uses” in Panavision and Avery Dennison, however, reveals that they essentially are indistinguishable from one another. In both cases the defendants registered the plaintiffs’ exact marks as domain names and then trafficked in those marks. The only point of contrast in the two “uses” was each user’s subjective intent. As evinced by their contrasting pricing practices and sales approaches, Toeppen clearly sought to extort while Sumpton pursued a more benign objective.
Even this distinction, however, is not highly significant. Both Toeppen and Sumpton — despite their differing subjective intents — stood to profit from the disputed domain names’ status as trademarks. Although Sumpton did not directly adjust his prices to reflect the trademark value of his domain names, he nonetheless benefitted from the heightened interest a trademark holder has in controlling the domain that corresponds to its exact trademark.
10
Thus, the only
While the distinction between an intentional cybersquatter’s reprehensible conduct and another’s unintentional tying up of a protected trademark is logical, subjective intent is not an appropriate consideration under the dilution or infringement statutes. The inconsistencies that arise from its insertion into the analysis are demonstrated in the Panavision court’s treatment of the dilution element.
(b) Dilution
To succeed on a claim under the FTDA, a plaintiff must demonstrate that the challenged use “causes dilution of the distinctive quality of the mark.” 15 U.S.C. § 1125(c). In addressing this element, the
Panavision
court agreed that dilution traditionally is defined as “blurring” or “tarnishment.”
Apparently uncomfortable with the broad scope of the
Panavision
holding, courts have limited application of the “dilution by cybersquatting” analysis — again to cases involving bad faith intent. Thus, in
Hasbro, Inc. v. Clue Computing, Inc.,
I join those courts finding that, while use of a trademark as a domain name to extort money from the markholder or to prevent that markholder from using the domain name may be per se dilution, a legitimate competing use of the domain name is not.
Id.
at 133.
See also Intermatic,
The theory that a defendant’s use of a trademark as a domain name constitutes “dilution” only when the defendant is acting with intent to profit from the domain name’s status as a trademark is flawed. Use of a trademark as a domain name by someone other than the mark holder— regardless for what purpose — always has the “dilutive” effect complained of in Pa-navision: (1) it precludes the mark holder from using the website that it believes customers will locate most easily and (2) it subjects the mark holder’s name and reputation to the mercy of the domain name registrant. 12 If “dilution,” as that term is to be understood under the FTDA, truly occurs when a mark holder is prevented from using the Internet domain that it believes is most accessible to its customers or when the mark holder’s name is subjected to the mercy of another, the FTDA should provide a remedy regardless of the domain name registrant’s subjective' intent. 13
Pointing out divergent roads is, of course, not the same as taking the right one. This court concludes, however, that it must depart from the path taken by the majority of courts. The following statement, compiled from a number of cases by the District Court for the Eastern District of Pennsylvania, explains why.
[I]t is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous marks holders on the Internet, by which they could lay claim to all .com domain names which are arguably “the same” as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. Trademark law does not support such a monopoly.
Strick Corp. v. Strickland,
This conclusion is consistent with the nearly unanimous holding of courts that mere registration of another’s trademark as a domain name is insufficient to support a cause of action for dilution. Registering a domain name is both “commercial,” in that a yearly fee is required, and “in commerce,” at least when it occurs, as is typical, over the Internet. Thus, although courts upholding mere registration have broadly stated that registration is not “commercial use,” it is logical to conclude that the failing in those cases was the defendant’s failure to “use” the mark as a trademark, that is, in connection with goods or services.
(ii) Boston Pro. Hockey
The case
Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Manufacturing, Inc.,
Defendant is in the business of manufacturing and marketing emblems for wearing apparel. These emblems are the products, or goods, which defendant sells. When defendant causes plaintiffs’ marks to be embroidered upon emblems which it later markets, defendant uses those marks in connection with the sale of goods as surely as if defendant had embroidered the marks upon knit caps. The fact that the symbol covers the entire face of defendant’s product does not alter the fact that the trademark symbol is used in connection with the sale of the product.
Id. at 1011. Thus, although it initially may have appeared to the contrary, the defendant’s use of the hockey teams’ trademarks was not, in fact, “unattached to any goods or services.” The product sold by the defendants was not the mark itself, but a cloth emblem carrying a reproduction of the mark. Because the NHL teams sold clothing and other similar products bearing their marks, the court was justified in concluding that a reasonable person could be confused as to the source of the emblems. Here, to the contrary, Ford’s marks truly are being used by the EFF Defendants unattached to any goods or services. The EFF Defendants have not used the domain names as web sites from which to advertise goods or services. Rather, they have merely obtained rights to use certain domain names and wish to transfer those rights.
Moreover, to the extent that
Boston Professional
attempted to treat the marks as “goods,” the Fifth Circuit later retracted, forswearing “any notion that a trademark is an owner’s ‘property’ to be protected irrespective of its role in the protection of our markets.”
Kentucky Fried Chicken Corp. v. Diversified Packaging Corp.,
b. Ford’s “goods or services”
Finally, Ford relies on the case
Planned Parenthood Federation of Am., Inc. v. Bucci,
No. 97 Civ 0629(KMW),
The court rejects this analysis for two reasons. First; it is dictum. It was undisputed in Planned Parenthood that the defendant had begun operating a web-page under the disputed domain name, from which he was promoting anti-abortion literature. Id. at *2, 5. This presumably satisfied the “goods or services” requirement, thus making it unnecessary for the court to link the defendant’s use of the mark to the plaintiffs goods and services. Furthermore, courts soundly have rejected the Planned Parenthood dictum, noting that
trademark law requires reasonableness on the part of consumers. Although the need to search for a mark holder’s site “may rise to the level of inconvenience, this inconvenience [is] not cognizable.” An Internet user who intends to access either party’s products or services, but who has not done so before, may go to a search engine, or on America Online, to Keyword. Any inconvenience to an Internet user searching for Plaintiffs web site is trivial. Searches for Plaintiffs web page on popular internet search engines, including google.com, goto.com, and lycos.com, list Plaintiffs web site as their first or second “hits.”
Strick,
IV. CONCLUSION
For all the foregoing reasons, the court concludes that neither registering, nor warehousing, nor trafficking in a domain name that incorporates a protected trademark is alone sufficient to support claims of trademark infringement or dilution. Both causes of action require use of a trademark in connection with goods or services, which, in the cybersquatting context, generally will require evidence that the domain was used to host a website from which goods or services have been offered over the Internet.
Ford and other trademark holders are, of course, not without a remedy against the objectionable acts of cybersquatters who register, warehouse, or sell domain names for the sole purpose of extorting money from trademark holders. Indeed, the ACPA appropriately regulates the otherwise “first-come, first-serve” policy of distributing domain names by taking into account the legitimate competing interests that might exist in a given domain name. Thus, cybersquatting claims must be brought, if at all, under the ACPA. In
Accordingly, IT IS ORDERED that Defendant Greatdomains.com Inc.’s Rule 12(b)(6) motion to dismiss is GRANTED.
IT IS FURTHER ORDERED that the EFF Defendants’ Rule 12(b)(6) motions to dismiss are GRANTED IN PART and DENIED IN PART. While Ford’s ACPA claim may proceed, its infringement, unfair competition, and dilution claims must be dismissed.
Notes
. Defendant Gapmount Ltd. is the listed registrant of the domain name “jaguarcen-ter.com"; John Hall is the listed billing contact; both are named as defendants. Because the pertinent motion to dismiss is filed with reference to John Hall, the court will refer to both defendants under that name.
. EFF refers to the Electronic Frontier Foundation, which is assisting the defense of the listed individual defendants. The EFF Defendants account for only seven of more than eighty defendants in this case.
. For example, the domain name "fordsthea-tre.org” — the homepage of the renowned Ford's Theatre in Washington, D.C. — incorporates the FORD mark with the addition of the generic word "theatre” but, from its context, ís not "confusingly similar to” the FORD mark. No reasonable person could conclude that such a site was "used or approved” by the Ford Motor Company.
. "Warehousing" refers to the act of register ing but neither using nor attempting too sell a domain name.
. A transfer is `the conveyance of right title or interest in either real or personal property from one person to another by sale gift or other process." Webster's Third New International Dictionary 2427 (1981). Similarly "receipt" is "the act or process of receiving" something that has been transferred. Id. at 1894.
. Title 15 of the United States Code § 1125(a) — the “unfair competition” provision — provides the same protection to unregistered trademarks that the "infringement provision” of § 1114 provides to registered marks. Because the unfair competition and infringement elements are, in relevant part, identical, the court will refer to them collectively as “infringement.”
. The EFF Defendants undoubtedly would hasten to point out that a website is not "trasmit[ted] instantaneously on a worldwide basis.” Rather, a website can be thought of as "sitting” passively in a computer server until another computer "telephones” and requests that the website be sent over. Nevertheless, it has not been disputed that the EFF Defendants' offers to sell domain names over the Internet have traveled in interstate commerce.
. This requirement likewise may be inferred from the FTDA’s requirement that the “use in commerce” be “commercial.” See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:76 at 25-229 (4th ed. 2001) ("While the statute does not require that there be advertising or a sale of goods or services, 'commercial use' implies a place where some business is carried on or goods or services are sold, distributed or advertised for sale.”).
. In
Intermatic Inc. v. Toeppen,
. If, for example, the Ford surname had been among those registered as domain names by Sumpton, there can be little doubt, based upon the court's experience in this
. Incidentally, the court defined both "blurring” and "tarnishment” as requiring use of the mark in connection with goods or services.
Blurring occurs when a defendant uses a plaintiff's trademark to identify the defendant's goods or services, creating the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiffs product. Tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service.
Panavision,
. While the existence of a competing legitimate use probably lowers the likelihood that a domain name registrant would intentionally defame the mark holder, the mark holder still loses control over whatever message is broadcast from the webpage. That message is controlled by the registrant and potentially can be harmful, whether intentionally or only incidentally so.
. The court further observes that even mere registration of a trademark as domain name, which most courts — including the Panavision court — have found non-actionable under the FTDA, has the same "dilutive” effect described in Panavision with regard to trafficking.