INTERNET AND TRADEMARKS

The Federal District Court in California recently permanently enjoined or stopped the defendant Atlanticnet Media Corp., from using the Internet domain name gaynet.com upon a showing that “Gay.net” was the registered trademark of Online Partners.com and was a famous mark within the gay community.  

Gay.net is registered on the USPTO Principal Register and had been used in commerce since 1994.  In noting that the trademark Gay.net was valid, the court stated that the fact that Gay.net was registered on the Principal Register provided evidence of the mark’s validity.  The court also found that the extensive marketing of the mark on the Internet and in various publications had made it a famous mark within the gay community.  (As a famous mark, it would be afforded protection under the non-dilution provisions of the Lanham Act, see the article on Trademarks also at this site.)

The court specifically found that the defendant’s use of the “gaynet dot com domain name” and the inclusion of the words “gaynet” within the domain name “is likely to cause confusion, mistake, or deception of persons familiar with the plaintiff’s Internet website and other publication or with its federally registered trademark.  In addition, the court found that the defendants use of gaynet diluted the distinctive quality of the plaintiff’s mark and possible tarnishment through association with an inferior or offensive product of service.  The court further ordered the defendant to transfer the domain name to the plaintiff.