Petronas v.

Affirming the district court’s grant of summary judgment in an action under the Anticybersquatting Consumer Protection Act, the panel held that the ACPA does not provide a cause of action for contributory cybersquatting.

Petroliam Nasional Berhad, a Malaysian oil and gas company that owned the trademark to the name “PETRONAS,” alleged that, Inc., a domain name registrar, engaged in contributory cybersquatting when a registrant used GoDaddy’s domain name forwarding service to direct the domain names “” and” to an adult web site hosted on a web server maintained by a third party.

The panel held that neither the plain text nor the purpose of the ACPA provided support for a cause of action for contributory cybersquatting. It held that the ACPA created a new and distinct cause of action, and Congress did not incorporate the common law of trademark, including contributory infringement, into the ACPA. The panel therefore affirmed the judgment of the district court.

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Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom. The evidence sufficiently supported the jury’s verdict that Nahum did so, causing $152,000 in damages to DSPT.



Lahoti v. VeriCheck, Inc.

David Lahoti appeals the district court’s bench trial judgment that his use of the “VeriCheck” Georgia state service mark owned by Vericheck, Inc. violated the Anti- Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), the Lanham Act, 15 U.S.C. §§ 1051 et seq., the Washington Consumer Protection Act (“WCPA”), Wash. Rev. Code § 19.86, and various Washington common law doctrines. Lahoti, who has previously been found liable for cybersquatting activities, obtained the domain name “vericheck. com,” but did not use the website to offer any goods or services. We conclude that the district court’s factual decision that the “VeriCheck” mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court’s conclusion. Because we believe the district court should decide the issue of distinctiveness in light of the principles we explain, we vacate the district court’s opinion and remand for further proceedings not inconsistent with this opinion.

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Southern Grouts & Mortars v. 3M Company

Southern Grouts & Mortars, Inc. sells swimming pool finishes under the trademark DIAMOND BRITE and would like to register and use the domain name,, to advertise and sell its products. The problem for Southern Grouts is that its competitor in the swimming pool finishing industry, 3M Company, owns the registration. When 3M obtained the registration for, it also had trademark rights in the DIAMOND BRITE mark but not for use with pool finishing products. Instead, the mark was registered for use in connection with “electronically controlled display panels and signs.” Those trademark rights have lapsed, but 3M has continued to re-register the domain name. 3M displays no content on the website and has no intention of doing so. Southern Grouts sued 3M in district court, alleging that 3M’s continued registration of the domain name violated the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), and constituted unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). The district court granted summary judgment in favor of 3M. Southern Grouts appeals that judgment as well as the district court’s denial of its motion to amend its second amended complaint.

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Singer Keith Urban sues painter Keith Urban over Web address, claiming trademark violation


 By John Gerome

11:26 a.m. February 6, 2007

NASHVILLE, Tenn. – Keith Urban, the country singer, has filed a lawsuit against Keith Urban, the painter from New Jersey, claiming the painter's Web site violates federal trademark laws.

The lawsuit, filed Friday in U.S. District Court, says Keith D. Urban of Wayne, N.J., is using his domain in a deceptive manner and for commercial purposes.

The Web site includes the statement: “You have reached the site of Keith Urban. To those who don't know, oil painting is one of my hobbies.” It then directs viewers to a gallery of paintings and offers a limited edition of prints for sale.

Urban – whose Web address is – argues that the New Jersey man is misleading people into believing the Web site belongs to him and is selling merchandise as if it were produced or endorsed by him.

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No fame, no domain gain

By Published Sunday 4th February 2007 08:02 GMT

Only famous people who trade on their name have any chance of winning control of internet addresses containing their name, according to a decision by the World Intellectual Property Center (WIPO).

Publishing executive David Pecker lost the right to gain control of in a case judged by the WIPO Arbitration and Mediation Center. It found that Pecker failed to demonstrate that he had rights to the name other than "broad assertions".

The domain name is currently held by a Mr Ferris of California. The domain name redirects traffic to a 'parking' service at, where adverts are displayed based on keywords and the domain name owner is paid for clicks. The page for displayed pornographic adverts. "This is because the word ‘pecker’ is within the domain name, and uses that as a keyword to try and display relevant ads," Ferris told the arbitration panel. 'Pecker' is a US slang term for penis.

. . .

In order to gain control of a domain a person or company has to prove three things. They have to show that the domain is the same or confusingly similar to a trade mark or service mark in which the person has rights; that the other party has no legitimate interests or rights in the domain, and that it was registered or is being used 'in bad faith'.

In order to gain control of a domain you must fulfil all three conditions, so if the Panel finds one step which you fail it rarely considers the other two.

The Panel found that Pecker could not show that he had a trade mark or service mark right in the name David Pecker, so could not gain control of the domain. Other Panels had found in the cases of famous people that being famous, and therefore trading under your name, did sometimes qualify for that step.

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Kick those 'squatters' off your domain



Q: I just received a trademark in two classes. My domain name is the same as the brand name for my business. Now that I have my trademark in hand, can I go after the domain name imitators who are poaching my Web site traffic? One of them is operating an index site that is just one letter different from my own domain name. What are my legal rights?

-- Bruce T., Ann Arbor, Mich.

A: Entrepreneurs spend a lot of time worrying that their best ideas will be unfairly copied by better-funded big corporate competitors. But it seems that some of the most challenging competition can come from agile, upstart entrepreneurs, too.

Matthew Schneller, a trademark expert with the law firm of Perkins Coie LLP, said there are two effective ways to challenge domain owners who operate in "bad faith."

Assuming you received a federal trademark, you can file a lawsuit under the federal Anti-Cybersquatting Consumer Protection Act. You'll need an attorney's assistance every step of the way, which is costly and time-consuming. However, if you are successful in presenting your case, you may be able to receive statutory damages of up to $100,000.

A more affordable, faster route to dispute resolution is through arbitration. Here, you have two options.

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Audi AG v. D'Amato

BOYCE F. MARTIN, JR., Circuit Judge. Defendant Bob D’Amato, who is unaffiliated with Audi, used the domain name to sell goods and merchandise displaying Audi’s name and trademarks. Audi claims that D’Amato’s website infringes and dilutes its world famous trademarks “AUDI,” the “AUDI FOUR RING LOGO,” and “QUATTRO,” as well as the distinctive trade dress of Audi automobiles. Audi also claims that D’Amato violated the AntiCybersquatting Consumer Protection Act. The district court granted summary judgment and injunctive relief to Audi on all claims. The district court also granted Audi attorneys’ fees, but refused to award Audi statutory damages under 15 U.S.C. § 1117(a). D’Amato appeals the grant of summary judgment and injunctive relief and award of attorneys’ fees to Audi. He also appeals the district court’s denial of his Rule 56(f) motion for additional discovery. For the reasons below, we AFFIRM the district court.

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