Q1 2016 Quick Links, Part 1 (Trademarks and Domain Names)

Photo credit: 3D Quick Link Crossword // ShutterStock

Photo credit: 3D Quick Link Crossword // ShutterStock

* Academy of Motion Picture Arts and Sciences v. GoDaddy.com, Inc., 2015 WL 5311085 (C.D. Cal. Sept. 10, 2015). A major win for GoDaddy—and domain name parking programs generally—against a long-running cybersquatting suit by the Motion Picture Academy. This ruling deserved a full blog post but I ran out of time. Here are some of the best excerpts:

According to AMPAS, GoDaddy was legally obligated to implement a filter that would automatically block any domain name from its Parked Pages Program simply because that domain shared a string of characters with a famous or distinctive mark, even if that mark was unregistered…. the Court takes judicial notice that many other common English suffixes double as registered trademarks, including “TION,” “TIC,” and “ISH.”…By AMPAS’s logic, GoDaddy had an affirmative legal obligation to disbelieve a registrant’s certification that the registrant had the lawful right to use, for example, the domain FISH.NET or OSCARDELAHOYA.COM, and keep those domains out of the Parked Pages Program, unless and until GoDaddy independently assured itself that the registrant was telling the truth….

courts applying the ACPA’s bad faith requirement should be wary of finding bad faith under the ACPA where the unique circumstances of the case place the defendant’s conduct well outside the ACPA’s heartland of ransoming a domain name or diverting Web traffic from the mark-holder’s legitimate website….

It is not sufficient under the ACPA for AMPAS to prove that GoDaddy had an intent to profit from its Parked Page Programs. Nor is it sufficient for AMPAS to prove that infringing domains were sometimes registered by GoDaddy’s customers and automatically enrolled by GoDaddy in the Parked Page Programs if no DNS was entered by the registrant for their domain name at the time of registration. Congress did not enact strict liability or a negligence standard in the ACPA. It required proof that a defendant registered, used, or trafficked in a domain name with the specific, subjective intent to profit in bad faith off a person’s trademark….

every time a registrant agreed to the legally binding DNRA (including with each of the 293 Accused Domains): with GoDaddy as the licensee of a registrant who GoDaddy reasonably believed to be the rightful owner of a domain name that did not violate any third-party trademark rights. To the extent GoDaddy intended to profit off of any such domain (or the marks contained therein) by enrolling the domain in the Parked Pages Program, GoDaddy did so in good faith….

The automated nature of the registration by third-party registrants and the routing and parked page processes for the Accused Domains refutes a finding of bad faith intent to profit from the AMPAS Marks….

GoDaddy did not engage in any volitional conduct specific to AMPAS or its marks…

Given the entirely automated nature of GoDaddy’s parked page system, GoDaddy lacked the subjective intent necessary to support a finding that it had any intent to profit from the specific AMPAS Marks at issue in this litigation, let alone a bad faith intent to do so with respect to any of the Accused Domains. Any inadvertent use by GoDaddy of domain names that are confusingly similar or identical to the AMPAS Marks via its automated processes was unintentional and not indicative of the specific intent required for liability under the ACPA.

Moreover, since GoDaddy did not select the domain names containing character strings corresponding to the AMPAS Marks and did not select the third-party advertisements from Google containing AMPAS Marks, AMPAS has failed to prove that GoDaddy had the required specific bad faith intent to profit from the AMPAS Marks. …

GoDaddy’s efforts to assist brand owners, including AMPAS, in protecting their intellectual property rights; the industry-leading nature of GoDaddy’s trademark dispute resolution procedure; the speed and efficiency of its notification and override processes; and general brand owner satisfaction with the operation of GoDaddy’s trademark dispute resolution process….

By adopting a DMCA-style notice and takedown procedure to help address alleged instances of trademark infringement, GoDaddy filled the gap left by Congress, managing to streamline enforcement efforts for tens of thousands of claims by trademark holders and to simplify the process for the removal of problematic material upon notice….If anything, GoDaddy’s notice and take-down process invites abuse from trademark holders by “incentiviz[ing] ‘false positives,’ in which the lawful use of a domain name is restricted by a risk-averse third party service provider that receives a seemingly valid take-down request.”…

The parallels between the evidence presented in the instance action and that in Tiffany are hard to avoid: (a) GoDaddy generates revenue by way of its provision of parked page services; (b) GoDaddy was aware that “unscrupulous domain name registrants” may register domain names containing third party trademarks with an intent to profit from those trademarks; (c) GoDaddy has an interest in eliminating any possibility of trademark infringement, not only to preserve its relationships with trademark owners but also to ensure its quality score with Google was not negatively affected; (d) GoDaddy’s ability to identify potentially infringing domain names was limited due to the inherent difficulties in ascertaining a registrant’s intent in registering a domain name, especially in those circumstances where the domain name contained a trademark that is also a common name, such as Oscar Hernandez or Oscar Sagastume; (e) despite this fact, GoDaddy established a robust Trademark Protection Policy, which included a VIP program for brandowners with frequent concerns of potential infringement; and (f) during the time period relevant to the litigation, GoDaddy never refused to redirect a domain name identified by AMPAS and acted in good faith in responding to AMPAS’s complaints, often responding to AMPAS’ complaint within one business day.

* Doug Isenberg: The much-maligned Uniform Rapid Suspension System (URS) is not only failing to catch on — it’s actually starting to fade.

* TorrentFreak: Inside Mpaa’s Piracy Deal With The Donuts Domain Registry. EFF: MPAA May Like Donuts, but They Shouldn’t Be the (Copyright) Police

* Vision Information Technologies, Inc. v. Vision It Services USA, Inc., 2016 WL 126058 (E.D. Mich. Jan. 12, 2016) (cites omitted)

Plaintiff provides evidence of both initial-interest confusion and actual confusion. Plaintiff relies on PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243 (6th Cir. 2003) (abrogated on other grounds), for the premise that ‘[a]n infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark.‘ ‘This ‘initial interest confusion‘ is recognized as an infringement under the Lanham Act.‘ Plaintiff shows that a search for Plaintiff’s trademark VISIONIT on bing.com, aol.com and google.com return Defendants’ website www.visionitusa.com as the third, sixth and eighth hits, respectively. Plaintiff also shows that on Glassdoor, www.glassdoor.com, an American website where companies and their management are reviewed by former and current employees, a ‘screen shot of the demographics of candidates who looked at Plaintiff’s company’s profile on Glassdoor shows that candidates who visit Plaintiff’s profile also commonly viewed the profile of Defendant Vision IT Services.‘…

These examples are more than mere speculation. Plaintiff has shown one instance of actual confusion, albeit approximately a decade ago, that occurred by what was probably a sophisticated user of Plaintiff’s services: Dell. The evidence of initial-interest confusion also adds weight to this factor in favor of finding a likelihood of confusion.

PSA reminder: initial interest confusion is stupid.

* Select Comfort Corporation v. John Baxter, 2016 WL 158516 (D. Minn. January 13, 2016) (cites omitted)

The Court notes that the Eighth Circuit in Sensient neither rejected nor adopted the initial interest confusion doctrine. Rather, it declined to formally adopt the doctrine because it would not apply to the facts of that case. Similarly, even if the initial interest confusion doctrine is recognized in the Eighth Circuit after Sensient, this is not an appropriate case for its application. Not only are Personal Comfort and Select Comfort beds expensive (the average Select Comfort bed costs between $1,600 and $2,300), they are specialty mattresses, and they are purchased online. These factors lead to the conclusion that consumers would exercise a high degree of care in purchasing such a mattress. Therefore, Plaintiffs’ trademark infringement claim will require Plaintiffs to establish a likelihood of actual confusion at the time of purchase.

* Rebecca: Reading list: dilution fails an empirical test. Our 2007 conference on the justifications for dilution.

* Free Kick Master LLC v. Apple Inc., 2016 WL 777916 (N.D. Cal. Feb. 29, 2016). App stores aren’t contributorily liable for trademark-infringing apps. Prior blog post.

* Emerald City Management v. Khan, No. 15-40446 (5th Cir. March 8, 2016). Shutting down and blocking administrator access to a Facebook account isn’t a trademark use in commerce.