Federal Court Rules Against Toyota In Domain Case...

[Ms Domainer]

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...Buy-A-Lexus.com; BuyorLeaseLexus.com

As reported in The Domains, an important and positive decision handed down:

Federal Court Rules Against Toyota In Domain Case: Buy-A-Lexus.com; BuyorLeaseLexus.com | The Domains

A game changer?

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[TestCase]

WOW!!! Great find, MD.

Really could be THE game changer.

I think allowing the use of the sort of domains involved in this case in a reasonable manner really is fair use and does not create any point of confusion with the end consumer.

I have a few domains that I've been sitting on for a while that fit this bill. It would be terrific to them put to use without the fear of get slapped with a C&D -- or worse...

 

[Sigur Ros]

It's a great achievement. Corporate giants are going to whimper and claw back, but there's no harm done if the owners aren't trying to trick the customers/visitors.

How many appraisal threads are met with "TM violation?" Granted one won't be able to buy "Apple.co" and get away with acting as direct competition, but all those "ipod" and "windows" [...] [.extension] can enter the market unhindered.

I'll wait a few months to make sure the decision isn't changed.

 

[enlytend]

Kudos to these folks for taking up their own defense ... and winning!!!

Things to note: These people were using the domain for their own business, brokering Lexus vehicles. Using a tm in a domain when you're an authorized representative of a brand is generally OK, these people were essentially doing just that, but not through a formal relationship.

Selling a domain for profit, selling a competitor's goods, or any other "bad faith" usage won't get any protection from this decision. It's not a license to go on a typosquatting spree . Also...

UDRP and WIPO panels have a different standard then federal courts

Lose in UDRP, take the company to court to get the domain back?

 

[fm1234]

It will be very interesting to see where this goes from here, but it's hardly a "game changer." As noted in the article the particular part of the case which pertains to the domains is to be retried in district court, because the federal judge found that nominative use was permissable. I'm pretty suprised by this given the body of precedent (both in court and in the auto industry) surrounding auto manufacturer-distributor relationships and trademarks. Given that the defendants clearly infringed on Toyota's IP with the use of pictures and the logo, it's actually suprising that the judge ruled as he did.

As I said, it will be interesting to see how the case is resolved, but I think that the precedents are on the side of Toyota even without the indisputed infringement which occurred separately from the disputed domain issue. If this ends up being a "game changing" case I'd be suprised.


Frank

 

[DU]

The more INTERESTING question is whether the UDRP Panels will be forced to read this ruling before any future decisions are to be made.

 

[enlytend]

Why would they? Two different jurisdictions - UDRP panels are international, not bound to US law.

Given that the defendants clearly infringed on Toyota's IP with the use of pictures and the logo, it's actually suprising that the judge ruled as he did.

Yeah, infringing copyright with the pix definitely wasn't a point in their favor. It will be very interesting to see what happens in district court... I doubt Toyota will take this lying down.

 

[nightshad]

Most of the time, people that purchase these domains know exactly what they're doing, and I'm willing to bet that most, if not all, of them are doing so in bad faith, despite their protests to the contrary.

 

[jberryhill]

Given that the defendants clearly infringed on Toyota's IP with the use of pictures and the logo, it's actually suprising that the judge ruled as he did.

Believe it or not, the law doesn't work the way UDRP panels do. If they were making an unlawful use of the pictures and logo, then the court can enjoin them from using the pictures and logo. Just because someone did something wrong, doesn't mean you get to kick their pet dog or do whatever you want to them. If the problem is copyright infringement, then the copyright infringement can be stopped. That doesn't translate into "take away the domain name".

The result here is no different from Ty v. Perryman in the 7th Circuit.

Yes, if you are selling stuff, you are allowed to identify the stuff you are selling. That is not infringement - it is identifying the stuff you are selling.

 

[enlytend]

@jberryhill - Thanks for explaining - I was fairly sure that the copyright part was a completely different matter than the tm/domain issues, but not 100% certain.

The result here is no different from Ty v. Perryman in the 7th Circuit.

I'm such a geek I just looked that up and read about it. So even though she was selling 20% competing merchandise it wasn't considered diluting the brand? Although ...

Lastly, the Seventh Circuit affirmed so much of the decision of the court below which prohibited Perryman from using the phrase "Other Beanies" to describe the products of competitors sold on her site. Such a description was "false advertising" and hence actionable.

 

[RTM]

Interesting case and discussion clarifying the difference between copyright and TM ... so I wonder if we'll see Toyota go after them for the domain through UDRP...

Rob

 

[nightshad]

Believe it or not, the law doesn't work the way UDRP panels do. If they were making an unlawful use of the pictures and logo, then the court can enjoin them from using the pictures and logo. Just because someone did something wrong, doesn't mean you get to kick their pet dog or do whatever you want to them. If the problem is copyright infringement, then the copyright infringement can be stopped. That doesn't translate into "take away the domain name".

The result here is no different from Ty v. Perryman in the 7th Circuit.

Yes, if you are selling stuff, you are allowed to identify the stuff you are selling. That is not infringement - it is identifying the stuff you are selling.

If there's trademark/copyright infringement in the domain name, then absolutely the trademark/copyright holder should have the right to seize the domain name under UDRP or civil court rules.

If, however, the infringement is strictly content related, then you are correct.

 

[jberryhill]

If there's trademark/copyright infringement in the domain name, then absolutely the trademark/copyright holder should have the right to seize the domain name under UDRP or civil court rules.

If, however, the infringement is strictly content related, then you are correct.

A domain name isn't going to infringe a copyright - unless there is some complete work of authorship that can be protectibly expressed in 64 characters.

Copyright is a site content issue. The domain name is a trademark issue.

What a court can do, which a UDRP panel cannot do, is enjoin the use of a domain name in connection with specified content.

That's the problem that some UDRP panelists don't understand. If the question is site content, the answer is not "take the domain name away", but that is the only remedy that can be implemented by the UDRP.

 

[fm1234]

posted by jberryhill:

Believe it or not, the law doesn't work the way UDRP panels do. If they were making an unlawful use of the pictures and logo, then the court can enjoin them from using the pictures and logo. Just because someone did something wrong, doesn't mean you get to kick their pet dog or do whatever you want to them.

I know that, John. I would imagine that most other people do as well.

If the problem is copyright infringement, then the copyright infringement can be stopped. That doesn't translate into "take away the domain name".

Enjoining a defendant against using a domain name for a given purpose is not much different, in terms of practical effect, from simply taking away the domain name.

... if you are selling stuff, you are allowed to identify the stuff you are selling. That is not infringement - it is identifying the stuff you are selling.

But the issue as pertains specifically to domain names is a little more complex than that, isn't it? Having a sign in front of one's business or even a big red square on the front page of one's website which reads "We sell Lexus motorcars" does not tend to make the same impact on consumers as owning the domain name BuyALexus.com ... this fact is sort of the cornerstone of the domain name/IP debate isn't it? ie. the difficulty in pinning down just where the URL falls along the lines of expression, advertisement, IP et al. is the whole reason these sort debates occur, if I'm reading the issue correctly. Being able to just say "Sure, you can say you sell Lexii!" would end the argument just as neatly as being able to say "Absolutely no trademarks in domain names!" would, but neither of these positions are uniformly applied in UDRP or in court.


Frank

 

[labrocca]

Fair use is often misunderstood but I was retailer (video games) and what choice do you have but to advertise items you sell with the name and sometimes even the logo of the item. Review any circular from large retailers for examples. A domain if used fairly represents that same fair-use imho.

 

[jberryhill]

Enjoining a defendant against using a domain name for a given purpose is not much different, in terms of practical effect, from simply taking away the domain name

The difference can be huge. In this case, for example, simply saying "You can't use their photographs and logos on the site" is a big difference from saying "you can't use the domain name to trade in their stuff."

---------- Post added at 08:37 PM ---------- Previous post was at 08:36 PM ----------

I know that, John. I would imagine that most other people do as well.

This is NamePros, Frank. What folks don't know here is sometimes astounding.

 

[fm1234]

posted by jberryhill:

posted by fm1234:

Enjoining a defendant against using a domain name for a given purpose is not much different, in terms of practical effect, from simply taking away the domain name

The difference can be huge. In this case, for example, simply saying "You can't use their photographs and logos on the site" is a big difference from saying "you can't use the domain name to trade in their stuff."

Well sure ... but what I said was, enjoining against a given use of a domain can have the same practical effect as taking the domain; ie. if the domain was acquired for that purpose and it has no or limited other practical value to the registrant.


Frank