CYBER-SQUATTING CONTINUED
July 7, 2000 In perhaps an aggressive application of the Anti-Cyber Piracy Act, the
U.S. District Court for the Eastern District of Virginia ruled the company
Virtual Works, Inc., violated the Act by registering the Internet domain
name “VW.net.” The basis of the decision was the finding that Virtual
Works had offered to sell the domain name, which the court found to have
been derived from the trademark of Volkswagen of America, Inc., to Volkswagen
after receiving warnings of claimed trademark infringement.
Although the company was incorporated under the name Virtual Works (and
for which VW obviously comprises the company’s initials), the court found
it determinative that Virtual Works never conducted business under the
initials “VW”. Further, Virtual Works had not trademarked the initials
or registered “VW” as an assumed name for the purpose of transacting business.
The corporation also had not incorporated any subsidiary division with
the “VW” name. The court also found that there was a likelihood of
confusion in the public, not withstanding the fact that there was no similarity
in the goods or services of Virtual Works and Volkswagen.
In a very interesting statement, the court decided that “holder of a
domain name should give up that domain name when it is an intuitive domain
name that belongs to another.” (Emphasis added) The court resolved
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 the company.
If this rationale is to be widely adopted, it may be a wise strategy
to offer a link (for a reasonable price) to a non-competitor that also
has a public identity, trademark or service mark that is similar to the
domain name. It will also be wise to trademark the domain name whenever
possible or otherwise be able to show use of the exact name in the business
of the domain name owner. This will be problematic due to the special
rules of the US PTO regarding the trademarking of domain names. The
USPTO will not allow a domain name to be trademarked if it only an Internet
address. The USPTO obviously does not share the court’s view that
a domain name is more than a domain name. (Note that this rule is
published on the USPTO web site, www.uspto.gov.)
© David McEwing, 2000
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