Trade Marks on the Internet copyright 1996-2003; last updated August 14, 2003




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Personality Rights


Cases in which celebrity names are registered as domain names by someone other than the celebrity usually involve applications by celebrities under the UDRP. For example, Julia Roberts successfully argued that she had common law trade mark rights in her name and was able to recover juliaroberts.com. Madonna recovered madonna.com on the basis that her name has also been registered as a trade mark. Sting and Bruce Springsteen were not so lucky. newsbytes.com reports that California, land of the stars, is contemplating special legislation to fill the gaps in the UDRP and ACPA.

PROTECTING YOUR TRADE MARKS


Trade mark owners should register their important trade marks in as many domain name registries as possible. They should periodically search the Internet for infringers using as many of the commercial search engines as possible.

The domain name registries are not static. Originally, the length of domain names was limited to 22 characters but domain names can now be up to 63 characters long in the commercial TLDs. Trade mark owners need to keep abreast of changes in registration parameters to protect their rights. For example the owner of the trade mark WORLD WRESTLING FEDERATION may have registered wwf.com when registrations were limited to 22 characters, but when the number of characters permitted in a domain name was expanded, if the trade mark owner didn't register its full name, someone else could. This did, in fact, happen to the WWF but it was lucky enough to get its name back in the first cybersquatting case decided by the World Intellectual Property Organization. Unfortunately for the wrestlers, an English court recently found that the World Wildlife Fund had a better claim to the domain name wwf.com and took it away.

Applying for an interlocutory injunction is a quick way of protecting a domain name. Recent cases suggest that interlocutory injunctions will be available to help resolve domain name disputes. In Saskatoon Star Phoenix Group Inc. v. Norton54 the plaintiff was the publisher of “The StarPhoenix”, a daily newspaper, in Saskatchewan. The plaintiff also operated a website at thestarphoenix.com which displayed news stories and banner ads. The defendant registered the domain name saskatoonstarphoenix.com and displayed the same material as found on the plaintiff’s site except that the defendant replaced the plaintiff’s banner ads with its own. The Court found that the defendant was in the business of registering domain names. One of the defendant’s other web sites had a “courtesy link” to “The StarPhoenix” which took a browser to the defendant’s web site. The plaintiff commenced an action in passing off. The plaintiff had evidence, in the form of emails, of browsers actually being confused by the defendant’s site. The plaintiff was granted an interlocutory injunction. The defendant did not defend the passing off action, was noted in default, and the court ordered $5000.00 in damages (despite no actual loss being shown), a permanent injunction, transfer of the domain name registrations and costs against the defendant. The Court considered, but refused to award punitive damages because domain name actions were relatively new. The Court did find that, in the future, punitive damages could be awarded on the facts of this case. However, in Molson Breweries v. Kuettner55 the Court would not accept deposit of the domain name into Court to ensure its “safekeeping” pending trial.

In Vulcan Northwest Inc. et al. v. Vulcan Ventures Corp.56 the plaintiffs, two venture capital firms affiliated with Paul Allen, billionaire and former partner of Bill Gates, brought a passing off action against a penny stock mining exploration company that traded on the CDNX. The plaintiffs applied for an interlocutory injunction restraining the defendant from identifying itself as Vulcan Ventures. The plaintiff had applied for, but not yet registered the trade mark VULCAN VENTURES. In granting the interlocutory injunction, the Court found that: “[t]he potential for confusion is obvious and much of it may never come to the plaintiffs’ attention thus making the damages unknown and irreparable.” The Court specifically found that the defendant “has investor Internet site, Stockhouse.com” that contained links to news about the plaintiffs. The affiliation between Stockhouse.com and the defendant was unclear. This case seems to have lowered the threshold for an interlocutory injunction.

In Northern Lights Expeditions Ltd. v. Spirit Wind Expeditions Ltd. et al.57 the Court granted an interlocutory injunction preventing the defendant from using the words “Lost Islands” as meta-tags on its website because it had previously agreed to remove them. The parties had previously entered into Minutes of Settlement in which the defendant had agreed to refrain from using or disseminating in any way the name “Lost Islands”, including disseminating the Lost Islands meta-tags in the Web site source code. In June, 2001, the plaintiff discovered that the defendant had maintained the Lost Islands meta-tags in the Web site source code and continued to maintain Web sites describing their Lost Islands tours, contrary to the Minutes of Settlement. The court in this case was satisfied that the plaintiff had met the criteria for granting an interim interlocutory injunction. The court ordered the defendant to make the necessary changes on the Web site and the meta-tags since they could be done with relatively little expense.

Irreparable harm was not made out in Toronto.com v. Sinclair (c.o.b. Friendship Enterprises)58 and toronto2.com was not prevented from using its domain name pending trial.

The Court did grant an interlocutory injunction in Itravel2000.com Inc. (c.o.b. Itravel) v. Fagan59 which prevented the defendant from transferring the domain name itravel.ca pending trial. Although the defendant was an admitted cybersquatter, of particular interest in this case was the fact that there were numerous potential legitimate claimants to the domain name. Presumably, the plaintiff could not recover the domain name from one of these third parties and so used the interlocutory injunction to make sure that it was first in line for the domain name. If these orders become commonplace, then it will be imperative to file suit as early as possible to prevent other legitimate claimants to the domain name in question from gaining an advantage.

Summary judgment can also be used to expedite domain name litigation. In Bell ExpressVu Limited Partnership v. Tedmonds & Co. Inc.60 the Court refused to grant summary judgment enjoining the defendant from using the domain name expressvu.org on the basis that there was no evidence that the defendant was making a “commercial use” of the plaintiff’s trade mark. The defendant was allegedly selling U.S. satellite decoding technology in Canada. The plaintiff held the registered trade mark EXPRESSVU and had registered the domain name expressview.com. The defendant was using expressvu.org to post information relating to the legal action. Of significant interest for future disputes, the Court found authority for its reasons in an administrative decision issued under the UDRP implicitly recognizing the value of these decisions as precedent.


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