© 1999, Deeth Williams Wall LLP. All Rights Reserved. By: Michael Erdle

WIPO Tackles Domain Name and Trademark Conflicts:   The World Intellectual Property Organization [WIPO] is currently studying a series of recommendations aimed at improving domain name registration procedures, avoiding and resolving conflicts between domain name holders and trademark owners, and protecting internationally famous marks from "cyber pirates".

Examples of domain name cases in Canada and other countries:

  • British Telecommunications Plc, Virgin Enterprises Ltd., J. Sainsbury Plc, Marks & Spencer Plc, Ladbroke Group Plc. v. One in a Million Ltd. and Ors (Court of Appeal, Civil Division, 23 July 1998. The registration by One in a Million Ltd. of domain names including trade names of Marks & Spencer, Ladbrokes, J. Sainsbury and Virgin Enterprises, constituted passing-off and erosion of the goodwill in the names. Injunctive relief was appropriate remedy to prevent use of the domain names for a fraudulent purpose and to prevent them from being transferred to others.
  • Panavision Internation, L.P. v Toeppen, No 97-55467 (9th Cir. April 1998). Registering trademarks as domain names and attempting to sell them constitutes "commercial use" and dilution under United States law.
  • Avery Dennison Corporation v. Sumpton, 999 F.Supp.1337 (C.D Cal. 1998). Summary judgment granted on the basis of trademark dilution against a person who had registered over 12,000 domain names in order to sell them to the owners of the various trademarks.
  • Citroen, District Court of Frankfurt, January 7, 1997 (2/06 O 711/96). The German court granted a preliminary injunction against a person who had registered "citöen.de" as a domain name.
  • Honda, District Court of Frankfurt, April 4, 1997, (2/06 O 194/97). Another case in which the German court granted a preliminary injunction against a person who had registered "honda.de" as a domain name.
  • Oggi Advertising, Ltd. v. McKenzie and Ors, CP147/98 (unreported, Baragwanath J., High Court of Auckland, 5 June 1998, available online at http://aardvark.co.nz/n357.htm). The New Zealand court ordered the reassignment of a domain name as a result of passing off, and found that the defendant had conspired to appropriate the plaintiff's reputation or prevent the plaintiff from exploiting its intellectual property.
Contact Michael Erdle or any other members of our Information Technology Group for more information on the protection of domain names.

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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