UnIntellectual Property (UnIP): Trademark Rights in the United States

The United States District Court for the Eastern District of Virginia had to determine the following issue: “whether Plaintiff fails to state a claim for direct trademark infringement and contributory trademark infringement when Plaintiff does not assert (1) trademark rights in the United States, and (2) effect on United States commerce.”  Does the way this issue was framed by the Court give away the answer? (YES).  The Court granted Defendants’ Motions to Dismiss Plaintiff’s Complaint for failure to state a claim because Plaintiff failed to plead facts to establish recognized trademark rights in the United States.

Plaintiff, the owner of a Canadian trademark for LANDCRUISE that rents motor homes in Canada and a pending USPTO application in the United States, operates from its website landcruise.com.  Plaintiff alleged that Defendant, a resident of the United Kingdom who uses the “Landcruise” mark in connection with her motor home rental business in the UK and registered landcruise.co.uk, has infringed his trademark.  The Court analyzed Plaintiff’s trademark rights.  In doing so, it found that the Plaintiff had not alleged sufficient facts to assert that he operates his business or uses his mark in the United States.  Moreover, “to the extent that his business operates exclusively in Canada, there can be no confusion among American consumers because Dunabin’s use of Landcruise is limited solely to the United Kingdom.”

Most tellingly, the Court went on to state:

 

Plaintiff erroneously relies on his use of the Landcruise mark in Canada and his registration of Landcruise.com domain name to confer trademark rights in the United States. Plaintiff alleges such conduct gives him worldwide rights to the Landcruise mark, as well as exclusive rights over all second-level domain names and subdomain names, including Dunabin’s Landcruise.uk.com. However, operating a website available on the Internet is not equivalent to use in United States commerce. See Specht v. Google Inc., 758 F.Supp.2d 570, 593 (N.D.Ill.2010)(finding a website that merely advertises products and fails to offer consumers any information regarding pricing and sales does not constitute a bona fide use in commerce under the Lanham Act.). “Courts have noted that anyone may register any unused domain name upon payment of a fee,” but this registration in no way trumps federal trademark law. Newborn v. Yahoo!, Inc., 391 F.Supp.2d 181, 190 (D.D.C.2005)(internal citations omitted). Therefore, the mere registration of Plaintiffs Landcruise.com domain name is insufficient to confer trademark protection under the Lanham Act.

 

Based upon the above, the Court granted dismissal finding that Plaintiff had not established trademark rights in the United States.  The decision raises several questions for me, and likely for trademark attorneys and domain name lawyers alike:

1. Once again, how much would a USPTO trademark registration have helped, especially given the Court’s strict interpretation of the geographic scope of trademark rights?

2. While the mere registration of a domain name is not enough to establish trademark rights, if Plaintiff had established actual trademark use on its website or in some other marketing material and could point to a US customer, would that have changed the ruling?

3. Was there not a cybersquatting claim under the ACPA?

4. Could all of this change if Plaintiff can successfully register its mark with the USPTO?

Schreiber v. Dunabin, 1:12-CV-852 GBL-JFA, 2013 WL 1457834 (E.D. Va. Mar. 29, 2013).

 

One Response to United States Trademark Rights Require More Than Domain Registration

  1. Hi Brian, of traverselegal.com.

    Here are a few observations, regarding above; and yes I’m the Plaintiff.

    1st. The Judge, sadly & almost blindly followed the written submissions of the Defendant’s Attorney’s and in his Order, wrote almost verbatim the words of the Defendants.

    2nd. Any “Application” within the USPTO is automatically granted a “TM” statues, once taken onboard, for completion. Many applications are turned-down, never being positioned for completion, finally securing the ultimate designation, for a Trademark, which is the “R”.

    My Trademark is now “R” = REGISTERED; and this is not pleasing news for CentralNic, Network Solutions, VeriSign, ICANN or eNom / Demand Media, who are struggling to keep the Appeal from surviving in the United States Court of Appeals for the Fourth Circuit, see file # 13 – 1812.

    3rd. Distressingly, the Judge completely ignored the source of the problem, being Contributory Infringement, whose source is the UK.com a US Regulated – domain name.

    As presented: A Domain Name, is not granted the same Rights & Privileges of a TLD or ccTLD.

    Should you investigate; and read the transcripts from October 19th, I believe you’ll plainly see that the verbal presentation clearly communicated this. Certainly, from my position watching the Defendants Attorneys all important body language, at the Hearing, they writhed, having very foolishly anticipated an ill prepared Pro Se.

    CentralNic are liable under 15 USC § 1125 – False designations of origin, false descriptions, and dilution forbidden – because under ICANN’s flaccidly enforced Rules, CentralNic “license” the use of their Domain Name, into “Subdomains” most of which have a long history as “Bad Actors”.

    Sadly, the NTIA have horrendously failed the United States Consumer, as they’ve idly sat-by and let WIPO aid CentralNic, with their – FAKE COUNTRY CODE TLD’s – by isolating a US Regulated business tool, the “.com” from US Courts.

    This activity can be traced to … before … ICANN’s existence, when the NTIA, worked with Network Solutions {and VeriSign} who were the exclusive guardians of the “.com” TLD as ICANN came into being.

    Brian, I ask you: How many “.com” ~ “.net” or “.org” … Domain Name Holders do you know of who are above and beyond the United States Law?

    CentralNic, is a Domain Name Holder, subject to the ICANN Rules, in addition to United States Law, who’ve brilliantly seduced WIPO into being a for a profit enterprise, protecting a repetitive – bad actor – domain name holder, in vastly clear contravention of ICANN’s Rules.

    Really, shame on the US Department of Commerce, NTIA; and the IP luminaries who derive an income from Intellectual Property Law, for letting this be so, for so long.

    Known – artificial ccTLD’s granted special sanction by WIPO; screwing with both International & US businesses, with Lanham Act protections and better, with comprehensive US Protection, under USPTO, the underlying result of which has – “harmed United States consumers” – with exposure to vast amounts of fraudulent activity.

    Another fact: I’ve learned, is that Jones Day, are not able to accurately represent ICANN as exclusively “Outside Council” as they’ve done in this Case.

    4th. Beyond the simple Registration of a Domain Name, Trademark rights in the United States are secured in part by “continuous & systematic contact” within a municipality, in this case Virginia.

    What Network Solutions don’t know, or foolishly failed to consider is … When they – Host – a website who’s activity meets the criteria for USPTO, as they are in a “commercial business relationship” with the Domain Name owner, therefore the Domain Name & Business enterprise have the “continuous & systematic contact” with Virginia, sufficient – in part – for State Law Rights & Protection under the Lanham Act.

    At your convenience, I look forward to reading your observations to above.

    Regards,
    Graham Schreiber.

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