Re: [wg-b] Second Circuit on First Amendment Analysis of DomainNames

[Mikki Barry <ooblick@netpolicy.com>]

>In the context of our discussion of exclusion of the form [famous
>mark].[tld] (and not [any other mateiral plus][famous mark].[tld]), the
>following language, in my opinion, suggests that there is virtually no
>scenario where [famous mark].[tld] would not be treated as a source
>identifier (and therefore an exclusion would be appropriate).


Oh really?  Regardless of the gTLD?  I find that rather overreaching, 
especially if the claimed "famous mark" is something like "blue" 
(claimed by Blue Cross and Blue Shield) or "pink" claimed by Owens 
Corning, or "apple" claimed by both Apple Records and Apple computer.

>
>"We do not view Planned Parenthood Federation of America v. Bucci as holding
>to the contrary. See No. 97 Civ. 0629, 1997 WL 133313, at *10-11 (S.D.N.Y.
>Mar. 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (unpublished table
>decision). In Bucci, a trademark infringement case, the court held that the
>defendant's particular use of the domain name "plannedparenthood.com" was
>as a "source identifier" rather than a "communicative message," while
>leaving open the possibility that a domain name could constitute such a
>message under other circumstances. See id. In reaching this conclusion, the
>Bucci court conducted precisely the kind of particularistic,
>context-sensitive analysis that is appropriate here, including analyses of
>the domain name itself, the way the domain name is being used, the
>motivations of the author of the website in question, the contents of the
>website, and so on. See id. Domain names and gTLDs per se are neither
>automatically entitled to nor excluded from the protections of the First
>Amendment, and the appropriate inquiry is one that fully addresses
>particular circumstances presented with respect to each domain name."
>

The fact pattern in Planned Parenthood included actual confusion 
based on the web page itself, not simply the domain name.  In the 
Planned Parenthood case, commercial use was also found.