Domain Name Caselaw
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Before the passage of the Anticybersquatting Consumer Protection Act, courts applied traditional trademark law to various categories of domain name disputes.


One of the “pioneer cybersquatters” who brought public attention to the phenomenon of abusive domain name registration was Dennis Toeppen, who registered hundreds of domain names and then demanded large ransoms from the actual trademark holders. Some of his exploits included “,” “,” “,” “,” and “”

His registrations were brought to a halt when the Ninth Circuit in Panavision v. Toeppen declared his actions to violate the Federal Tradmark Dilution Act. The plaintiff Panavision International L.P., owner of the trademarks “Panavision” and “Panaflex,” manufactured and sold cameras and other equipment for the movie and television industry. Before Panavision established an online presence, Toeppen registered the domain name “” and displayed photographs of Pana, Illinois on the site. Toeppen asked Panavision for $13,000 in exchange for the domain name. When they refused, he responded by registering “” The site merely displayed the word “hello.”

Generic Terms

Some early cases ruled that free speech rights prevail in the registration of generic or common words. In 1996, Hasbro, the makers of the children’s board game Clue, sued a computer consulting company in Colorado named Clue Computing for rights to the domain name “” The District Court of Massachusetts ruled in favor of the computing company in September 1999, declaring, “Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly.” The Court of Appeals for the First Circuit affirmed the decision in November 2000.

In Avery Dennison Corp. v. Sumpton, Avery Dennison, the trademark owner, sued Jerry Sumpton for registering and using the names “” and “” Sumpton had registered thousands of domain names and leased them to people who wanted e-mail addresses matching their domain names. The Ninth Circuit ruled in favor of the defendant, holding that a mark must be truly prominent and renowned to qualify as famous.

Competing Use

The registration of a domain name with an adversary’s trademark for competitive purposes demonstrates some of the more traditional applications of trademark law. In Playboy Enterprises, Inc. v. Calvin Designer Label and Playboy Enterprises, Inc. v. Asiafocus Intern, Inc., the publishers of Playboy Magazine succeeded against competitors using their mark in a domain name. Another such case was Green Products Co. v. Independence Corn By-Products Co. (ICBC), in which both companies were direct competitors. ICBC registered “” though did not operate a website at the address. The court directed the defendant to transfer ownership of the domain name to its competitor.

Non-Competing Use

A New York district court ruled against Toys R Us in its challenge against a firearms dealer who had registered “” in Toys R Us, Inc. v. Feinberg. The court noted that the two parties represent highly differentiated markets and consumers would unlikely be confused as to the source or sponsorship of the website. In Gateway 2000 v., Inc., the court ruled in favor of, which had registered the domain name six years earlier, long before domain names became such a common marketing tool and before the large computer company had become a well-known trademark.

Reverse Domain Name Hijacking

Reverse domain name hijacking refers to the bad faith attempt of a trademark holder to deprive a registered domain name holder of a domain name. Two famous examples regarding the sites “” and “” underscore the potential of trademark holders to intimidate and leverage their economic power over innocent domain name registrants. To obtain control of the “” domain name, the owner of the Pokey trademark (from the cartoon of Gumby and Pokey) sent a cease-and-desist letter to a 12-year-old boy nicknamed Pokey. Following a barrage of bad publicity, the trademark holder allowed the boy to keep the name. In a similar scenario, Archie Comics sent a cease-and-desist letter to David Sams, who had registered the domain name “” for his one-year-old baby daughter. Again, the company relented after being inundated with bad publicity.

Free Speech and Product Commentary

Free speech has proven to be a tough defense in alleged cybersquatting cases. In Planned Parenthood Federation of America, Inc. v. Richard Bucci, the court ruled that the defendant’s sale of books at the anti-abortion site constituted commercial use and thus could not be protected by the First Amendment. The court in Jews for Jesus v. Brodsky ruled against the defendant, who registered the domain name “” in an attempt to dissuade potential converts.

The district judge ruled in favor of a site named “” that was devoted to consumer complaints about the fitness center. In Bally Total Fitness Holding Corporation v. Andrew S. Faber, 29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998), the court refused to grant a motion for summary judgment to Bally and reportedly suggested that the defendant file a summary judgment motion for dismissal of the case.