Inside ICANNWatch  
Submit Story
Lost Password
Site Messages
Top 10 Lists
Latest Comments
Search by topic

Our Mission
ICANN for Beginners
About Us
How To Use This Site
Slash Tech Info
Link to Us
Write to Us

  Useful ICANN sites  
  • ICANN itself
  • Bret Fausett's ICANN Blog
  • Internet Governance Project
  • UN Working Group on Internet Governance
  • Karl Auerbach web site
  • Müller-Maguhn home
  • UDRPinfo.com;
  • UDRPlaw.net;
  • CircleID;
  • LatinoamerICANN Project
  • ICB Tollfree News

  •   At Large Membership and Civil Society Participation in ICANN  
  • icannatlarge.com;
  • Noncommercial Users Constituency of ICANN
  • NAIS Project
  • ICANN At Large Study Committee Final Report
  • ICANN (non)Members page
  • ICANN Membership Election site

  • ICANN-Related Reading
    Browse ICANNWatch by Subject

    Ted Byfied
    - ICANN: Defending Our Precious Bodily Fluids
    - Ushering in Banality
    - ICANN! No U CANN't!
    - roving_reporter
    - DNS: A Short History and a Short Future

    David Farber
    - Overcoming ICANN (PFIR statement)

    A. Michael Froomkin
    - When We Say US™, We Mean It!
    - ICANN 2.0: Meet The New Boss
    - Habermas@ discourse.net: Toward a Critical Theory of Cyberspace
    - ICANN and Anti-Trust (with Mark Lemley)
    - Wrong Turn in Cyberspace: Using ICANN to Route Around the APA & the Constitution (html)
    - Form and Substance in Cyberspace
    - ICANN's "Uniform Dispute Resolution Policy"-- Causes and (Partial) Cures

    Milton Mueller
    - Ruling the Root
    - Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN's UDRP
    - Dancing the Quango: ICANN as International Regulatory Regime
    - Goverments and Country Names: ICANN's Transformation into an Intergovernmental Regime
    - Competing DNS Roots: Creative Destruction or Just Plain Destruction?
    - Rough Justice: A Statistical Assessment of the UDRP
    - ICANN and Internet Governance

    David Post
    - Governing Cyberspace, or Where is James Madison When We Need Him?
    - The 'Unsettled Paradox': The Internet, the State, and the Consent of the Governed

    Jonathan Weinberg
    - Sitefinder and Internet Governance
    - ICANN, Internet Stability, and New Top Level Domains
    - Geeks and Greeks
    - ICANN and the Problem of Legitimacy

    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Lawsuits and Judicial Decisions 6 of One, Half Dozen of the Other
    posted by DavidP on Wednesday February 12 2003, @12:53PM

    Within days of one another, the Sixth Circuit Court of Appeals has handed down two different and important 'cybersquatting' decisions. Though they are not inconsistent with one another, technically speaking, they surely point in very different directions.

    First came Paccar v Telescan, on Feb 5. The defendant there had a "truck locator" site, where consumers could find vendors of trucks and truck equipment, and used plaintiffs' trademark ("Peterbilt") in a domain name (peterbilt.com) where suppliers for Peterbilt trucks could be found. There was a disclaimer on the www.peterbilt.com site -- disclaiming any relationship to the Peterbilt company -- but the court held that was not sufficient to eliminate the "initial interest confusion" arising out of use of the trademark in the domain. Initial interest confusion, the court wrote, "occurs when a consumer is lured to a product by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before consummating a purchase."
    "The district court found that TeleScan's disclaimer does not remedy the confusion caused by the use of PACCAR's trademarks in its domain names. An infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late."
    While plaintiffs were applauding, along came Taubman v. Webfeats. This case involved a number of "gripe" sites directed at plaintiff's shopping center, and defendant won a resounding victory. In particular, with respect to the use of the word "sucks" in the domain names appended to plaintiff's trademarks, the court wrote:
    "We find that Mishkoff's use of Taubman's mark in the domain name "taubmansucks.com" is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act. In fact, Taubman concedes that Mishkoff is "free to shout 'Taubman Sucks!' from the rooftops. . . ." Brief for Respondent, at 58. Essentially, this is what he has done in his domain name. The rooftops of our past have evolved into the internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it."

      ICANNWatch Login  


    [ Don't have an account yet? Please create one. It's not required, but as a registered user you can customize the site, post comments with your name, and accumulate reputation points ("karma") that will make your comments more visible. ]

      Related Links  
  • Paccar v Telescan
  • Taubman v. Webfeats
  • More on Lawsuits and Judicial Decisions
  • Also by DavidP
    This discussion has been archived. No new comments can be posted.
    6 of One, Half Dozen of the Other | Log in/Create an Account | Top | 2 comments | Search Discussion
    Click this button to post a comment to this story
    The options below will change how the comments display
    Check box to change your default comment view
    The Fine Print: The following comments are owned by whoever posted them. We are not responsible for them in any way.
    Same direction
    by phoffman@proper.com on Friday February 14 2003, @07:45AM (#11156)
    User #2063 Info
    These two cases appear to point in the same direction. In the first case, if the site was called "wheretobuypeterbilt.com" or "perterbilt.wheretobuytrucks.com", the confusion would have been less. Of course, the site would have gotten much less traffic, but the ability to get traffic isn't a right. In the case of "wheretobuypeterbilt.com", Peterbilt could make a case that the site was initially confusing, but their case would be much weaker than for the current decision.
    [ Reply to This | Parent ]

    Search ICANNWatch.org:

    Privacy Policy: We will not knowingly give out your personal data -- other than identifying your postings in the way you direct by setting your configuration options -- without a court order. All logos and trademarks in this site are property of their respective owner. The comments are property of their posters, all the rest © 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008 by ICANNWatch.Org. This web site was made with Slashcode, a web portal system written in perl. Slashcode is Free Software released under the GNU/GPL license.
    You can syndicate our headlines in .rdf, .rss, or .xml. Domain registration services donated by DomainRegistry.com