Re: [wg-b] Reality checks [the grateful dead(hits)]

[Greg Phillips <gdp@HPALAW.com>]

Independent Porsche repair shops may certainly advertise on their website that
they repair Porsche automobiles, but they should not be allowed to use the
trademark "Porsche" in their Internet address as a source of their services.  If
one accepts the ruling of the Eastern District of Virginia that “a domain name is
more than a mere internet address.  It also identifies the internet site to those
who reach it, much like . . . a company’s name identifies a specific company.”
Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va. 1997),
aff’d, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark “cardservice,”
“or any variation thereof, including but not limited to ‘csi’ or ‘csimall’”), one
must also accept the proposition that it is not fair use to use a trademark or
variation of a trademark in a company name.  Manny’s Porshop, 972 F.Supp. at 1131
(N.D.Ill. 1997) (enjoining use of “Manny’s Porshop” as a business name).   Accord
Volkswagenwerk Aktiengesellschaft v. Brewer,  170 U.S.P.Q. 560 (D.  Ariz. 1971)
(use of “VOLKCITY SERVICE CENTER” enjoined); Volkswagenwerk Aktiengesellschaft v.
Karadizian,  170 U.S.P.Q.  565  (C.D. Cal. 1971) (use of “VOLKSWAGEN VILLAGE” in
name enjoined; usage not vitiated by use  of the phrase “Used cars only; not  a
franchised Volkswagen dealer). The FTDA “prohibits even innocuous use” of a
famous trademark.  Manny’s Porshop, 972 F.Supp. at 1132 (citing Intermatic, Inc.
v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)).  In short, it is not “fair
use” to use a trademark in a domain name.  Brookfield Communications, Inc. v.
West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).

In the real world we don't allow independent repair shops to use the trademark
"Porsche" in their business names or on signs, and we don't allow the independent
repair shops to list themselves under Porsche in the telephone directories.  The
same rules should apply to the Internet.  Thus, an independent repair shop may
advertise in an advertisement or on a website that "We repair Porsche
automobiles," but shouldn't use one of the world's most famous trademarks to
indicate the source for its services.


KathrynKL@aol.com wrote:

> HartmanS@Nabisco.com writes:
> >  For the sake of completeness, I would add that I can find nothing improper
> >  on the face of it with Porsche objecting to porschebank.com or
> >  porschelynn.com, or the Academy objecting to theoscars.com. Nothing in
> these
> >  domain name is a clear message.
>
> Based on your message, I fear you are setting an new standard for protection
> of marks.  Rather than requiring the trademark owner to show infringement
> (with the shorthand version being proof of "likelihood of confusion") or
> rather than having the famous mark owner show dilution under by the Paris
> Convention (shorthand version:  that the diluter is using the mark on
> "identical or similar goods"), you would like the trademark owner to show
> only that someone is using "their word" and leave the burden of proof to the
> domain name holder to prove their innocence e.g,  not infringing or diluting.
>
> Such an approach is clean and easy, but it will create tremendous problems
> with all the independent Porsche Repair Garages and with independent Oreo
> distributors.  Under law, they have rights to use even famous marks and even
> in commercial settings.   Needless to say, it creates tremendous problems for
> free speech by making someone the monitor upfront for what is a legitimate
> communicative message using the word "oreo" or "porsche" in it.
>
> Also, the approach is not consistent with the equities built into current
> law. The burden of proof, and the showings, under both sovereign laws and
> treaties, rests with the trademark owner.
>
> Kathy Kleiman
>
> >