Re: [ga-udrp] TM not infringed on by registering a domain name

["William S. Lovell" <wsl@cerebalaw.com>]

Here's an excerpt from the case:
______
A defendant does not encroach on a mark registrant’s rights under §32(1)
of the Lanham Act, 15 U.S.C. §1114(1), when it merely registers a
domain name
likely to be confused with the registered mark, the U.S. District Court
for the Southern District of New York held May 25.  Cline v. 1-888-PLUMBING
Group Inc., 7 ILR (P&F) 3121 [SD NY, 2001].

In so holding, the court rejected the argument that the mere registration of a domain name similar to the plaintiff’s mark was a “use in commerce” that mark.

In an opinion by Judge Robert J. Ward, the court held that 1-888-PLUMBING Group Inc. and Frank Campisi’s mere registration of domain names that
were likely to be confused with Beth Cline’s registered mark, 1-800-PLUMBING, is not enough to encroach on Cline’s rights in the mark.  However, the
court held that issues of material fact existed because there was not enough evidence before it to determine whether 1-888-PLUMBING had a role in
Tele-Name Communications Inc.’s posting a web site advertising 1-888-PLUMBING’s services.

In denying both Cline and 1-888-PLUMBING’s motions for summary judgment under §32(1) of the Lanham Act, the court also held that issues of material
fact existed regarding the defendant’s claim that Cline had abandoned the mark and the plaintiff’s assertion that the defendants’ use of 1-888-PLUMBING
or of one of the eight Internet domain names they registered, is likely to be confused with her registered mark.

In addition, the court held that since Cline’s mark is “a descriptive mark without inherent distinctiveness” it was not entitled to protection under the Federal
Trademark Dilution Act.  Finally, the court denied Cline’s motion for summary judgment under the Anticybersquatting Consumer Protection Act, finding
issues of material fact existed over whether the defendants had registered the allegedly infringing domain names in bad faith

NameCritic wrote:

> Court
> finds that just registering a domain name does NOT infringe upon the TM
> of the same or similar name. Only USE of the domain name to compete could
> be an infringement. Finally somebody gets the point. http://www.pf.com/cgi-bin/om_isapi.dll?clientID=1857285&advquery=%5bGroup%20NEWS2157%5d&infobase=ilr&recordswithhits=on&softpage=ILRNews  
>  
>  
>  Chris McElroy aka NameCritic

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