Godaddy In Suit For Cybersquatting & Contributory Cybersquatting

A Federal Court has held that Godaddy.com was not liable to a trademark holder although the domain was being “forwarded” by Godaddy to the registrants hosting company.

The case is of Berhad v. GoDaddy,  and the decision was handed down by the Northern District of California on Jan. 3, 2012.

We will let the court describe the facts of the case and its findings.

Having read through the 20 page opinion I would say the court came to the right conclusion and the Plaintiff simply went well in the wrong direction suing the domain name registrar rather than registrant in federal court.  We also have to applaud Godaddy for defending this case, which you can tell from the opinion was not cheap, rather than caving in to the demand of the Plaintiff.

Here is the court statement of the Facts:

“This is a case brought under the Lanham Act, alleging cybersquatting and contributory cybersquatting, and also alleging state law claims of unfair competition. Plaintiff Petroliam Nasional Behad (“Petronas”) is the national oil company of Malaysia, and is wholly-owned by the Government of Malaysia. (Its official website is www.petronas.com.my).”

“Petronas asserts that two domain names,  www.petronastower.net and www.petronastowers.net (the “Disputed Domains”),  which were registered by Go Daddy, were used by one or more non-parties to violate its trademark rights by cybersquatting.”

“Petronas seeks to hold Go Daddy liable for cybersquatting and for contributory cybersquatting, on the basis that the non-party registrant used Go Daddy’s automated systems to point the domain names to a pornographic website that was hosted elsewhere.”

“The court noted that a registrant of a domain name can configure the nameserver so that it routes either to a “record not found” error message, or to a newly created website on a server hosted by the registrar or some third party, or to an existing website already associated with another domain name. This last form of routing is referred to as “domain name forwarding.”

“In May 2003, a third party registered two domain names, www.petronastower.net and www.petronastowers.net (the “Disputed Domains”), with the domain registrar eNom.com (“eNom”), and also pointed – or “forwarded” – the Disputed Domains to a preexisting website featuring pornography.

“For most of the time between May 29, 2003 and November 11, 2006, at least one of the Disputed Domains was directed to a website displaying pornography. On April 1, 2007, the then-registrant – Heiko Schoenekess – changed registrars from eNom to Go Daddy.”

Schoenekess used Go Daddy’s online “dashboard” to automatically forward the Internet traffic for the Disputed Domains to the same pornographic website with which they had previously been associated.

“It was not until November 26, 2009 that Petronas learned that the domain name petronastower.net had been registered with GoDaddy.com, by a third party. Petronas asserts that it immediately advised Go Daddy of the unauthorized use of the “petronastower” name, and requested that Go Daddy cease its “direct and contributory infringement” of Petronas’ mark.”

“Go Daddy responded on November 30, 2009, stating that it would not tolerate illegal content on its customers’ websites, and would cooperate with law enforcement to get any such websites taken down.”

“Go Daddy further informed Petronas that any disputes over the ownership or wording of the domain name itself will need to be sent to either the registrant, through an arbitration forum such as World Intellectual Property Organization . . . or the local court system.”

“Per ICANN regulations, domain registrars are prohibited from becoming involved in domain ownership disputes.”

“Nevertheless, instead of utilizing an arbitration procedure, which it had successfully used previously, Petronas submitted a trademark claim to Go Daddy on December 16, 2009.”

read more: http://www.thedomains.com/2012/01/07/federal-court-holds-in-favor-of-godaddy-in-suit-for-cybersquatting-contributory-cybersquatting/

 

Malaysia Among Countries Worldwide Posting Double-digit Growth In IP Filings

Malaysia is one of the four Asean member states to register double-digit growth in intellectual property (IP) filings.

The others are Singapore, the Philippines and Vietnam.

Colombia, Russia and Ukraine also posted double-digit IP filings.

Intellectual property filings rose significantly worldwide in 2010, underscoring global innovation initiatives driven mainly by the United States and China despite the global economic crisis, according to the latest report released by the United Nations World Intellectual Property Organisation (WIPO).

The report provides an indication of strong growth in intellectual property filings worldwide in 2010 despite the global economic crisis plaguing advanced nations and developing countries.

The report highlights the strong rebound in IP filings after the 2009 slump.

Patent application filings were 7.2 per cent higher in 2010 over the previous year. This was the highest growth rate in five years compared to a 3.6 per cent decline in the previous year.

WIPO director-general Francis Gurry said the increase in IP filings showed companies across the globe have continued to innovate despite the difficult economic conditions.

“This can help create new jobs and generate prosperity once macro-economic stability is restored,” he said in the report’s foreword.

Gurry also cautioned that “if economic conditions were to deteriorate sharply in the short term as happened in 2009, companies might be forced to abandon their investments in innovation, stifling an essential source of growth.”

Total number of patent applications worldwide rose by 7.2 per cent, reaching 1.98 million, while trademark filings increased by 11.8 per cent, touching 3.66 million, both all-time high figures according to WIPO.

Computer technology, electrical machinery, audio-visual technology and medical technology accounted for the largest share of patent filings worldwide.

source from : http://www.bernama.com.my/bernama/v6/newsbusiness.php?id=638263

 

Apple loses China iPad trademark case

Apple has lost a long-running legal battle against a Taiwanese-owned company that it claimed was illegally using its iconic iPad trademark in China, court officials and state media said.

A court in the southern Chinese city of Shenzhen ruled that Apple lacked “supporting facts and evidence” for its claim that Proview Technology (Shenzhen) was infringing the US company’s iconic tablet computer trademark.

Apple declined to comment when contacted.

Proview Technology (Shenzhen) is owned by a Taiwanese company that registered the trademark name “ipad” in several countries including China as early as 2000, years before Apple began selling the iconic tablet.

Apple paid 35,000 pounds ($53,400) for the global trademark right in 2009, but Proview Technology (Shenzhen) retained the Chinese rights, the official Xinhua news agency said.

The companies have been embroiled in a legal battle ever since, it said.

A company charged with restructuring the debts of Proview Technology (Shenzhen), which is on the brink of bankruptcy, said after the ruling that Proview would seek 10 billion yuan ($1.5 billion) from Apple for copyright infringement, Xinhua said.

read more: www.abc.net.au/news/2011-12-08/apple-loses-china-ipad-trademark-case/3721268?section=world

 

Chicken Chain Says Stop

In 2009, the Rock Art Brewery, in Morrisville, Vt., received a letter from Hansen Beverage Company, which owns Monster Energy drinks, saying the microbrewery’s Vermonster beer violated their trademark.

Matthew Nadeau, the brewery’s president and co-founder, said one of the state’s largest beverage stores immediately boycotted Hansen’s beverages. “This is the biggest store in the state and they’re standing behind us, so we knew we weren’t going to fight alone,” Mr. Nadeau said.

That story spread on social and traditional media and Vermont’s senators, Bernard Sanders and Patrick J. Leahy, got involved. Mr. Leahy wrote legislation that required the government to survey how trademark law is used by large corporations, though Mr. Nadeau lamented that it was not distributed widely enough to solicit many responses from small businesses. The two sides eventually came to an agreement without litigation, and Rock Art continued to use the Vermonster name.

Chick-fil-A sent Mr. Muller-Moore a warning once before, in 2006, but did not pursue that matter. Now, Mr. Muller-Moore and Mr. Richardson are awaiting a response from the company, and they plan to continue with their trademark application.

In a statement, Chick-fil-A said, “We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.”

read more : http://www.nytimes.com/2011/12/05/us/eat-more-kale-t-shirts-challenged-by-chick-fil-a.html

 

Trademark on Maker’s Mark wax seal

Trademark on Maker’s Mark wax seal

The red wax seal atop a Maker’s Mark bottle makes the bourbon stand out on store shelves. Whether the bourbon company can keep that distinction is up to a panel of three federal judges.

The U.S. 6th Circuit Court of Appeals on Thursday stepped into the sticky arguments over whether Maker’s Mark can keep a trademark on the wax seal and enforce an injunction stopping any other liquor company from using a similar top.

Maker’s Mark won an order in 2010 awarding it exclusive rights to the dripping wax seal. U.S. District Judge John G. Heyburn II in Louisville granted Maker’s Mark an injunction prohibiting any other company from using a similar seal and look, saying the bourbon maker held a valid trademark.

The order ended a seven-year long lawsuit between Deerfield, Ill.-based Fortune Brands, which owns Maker’s Mark, and London-based Diageo North America and Casa Cuervo of Mexico, which used a dripping red wax seal on special bottles of its Reserva tequila. Fortune Brands has since split its liquor business into a new company called Beam Inc.

The appeals court did not give a timeline for deciding the case.

Maker’s Mark attorney Edward T. Colbert said the seal serves no purpose other than to make the bourbon bottles distinctive and that Cuervo doesn’t need to use it.

“What they have here is a competitive desire to use the wax, not a competitive need to use wax,” said Colbert, the brother of comedian Stephen Colbert.

Attorneys for Diageo and Cuervo argued that using a wax seal wouldn’t cause customers to confuse the company’s tequila with the bourbon or believe the two companies were affiliated.

“Wouldn’t it be a logical assumption that the same company made the two products because of the red wax seal?” asked Judge Karen Nelson Moore, looking at a bottle of Maker’s Mark and a bottle of Cuervo brought into the courtroom.

“They know exactly where that comes from,” Cuervo attorney Michael Aschen said of the tequila. “They’re not going to get confused and think it comes from Kentucky.”

The Samuels family, which created Maker’s Mark in 1958, trademarked the distinctive seal, which serves only a decorative purpose.

Cuervo opted to include a dripping wax seal on bottles in 1997 as part of an effort to create an artisan look. The bottles of Reserva with the new seal entered the U.S. market in 2001 in a limited production of 3,000-to-4,000 bottles. The bottles remained on sale in the U.S. for about three years.

Maker’s Mark, bottled in Loretto in central Kentucky, sued over the seal in 2003, claiming it violated the long-standing trademark. Cuervo dropped the dripping wax seal six years ago.

source : http://www.google.com/hostednews/ap/article/ALeqM5iqCDKniz_s9utK-P-MbBerlWrczw?docId=3d612c0b15bc44f2b15c24e6b4a572cd

 

Samsung grabs trademark for Samsung Galaxy Sleek

Samsung has field for a new trademark that hints at a new line of smartphones and tablets that may be coming to market reports Fusible. Granted simply filing for a trademark isn’t a guarantee that a new product is coming to market. The trademark that Samsung grabbed is for Samsung Galaxy Sleek. We can imagine the name being used on a family of thin tablets and smartphones.

The trademark was field for on November 23. According to Fusible, the serial number for the trademark app is 85480030. The trademark covers a gamut of geek products including telephones, smartphones, mobile phones, and tablet computers. That seems to cover just about anything that Samsung might want to make.

There has been no official comment form Samsung on the trademark app. We are left to our own devices to figure out what the gadgets might be like. I would like to see a very thin tablet rocking a high-resolution display and Tegra 3 power on Android 4.0. That would be a very interesting tablet in deed. I would bet this is the name of the next Galaxy device to land after the Galaxy Nexus launches.

source: http://fusible.com/2011/11/samsung-files-trademark-for-samsung-galaxy-sleek-smart-phones-and-tablets/

 

Trademark Infringement : Sneakers firm digs in heels over name

SNEAKERS manufacturer New Balance has taken two Chinese companies to court over an alleged trademark infringement.

The US-based sportswear manufacturer claims they used a trademark similar to its “N” design and that one of the companies had a brand name that sounds similar to “New Balance,” the Huangpu District People’s Court said yesterday.

New Balance said it registered the trademark in China in 1983, with N representing the capital letter of the company’s name and a major part of its unique trademark pattern.

It sued the Niubanlun Sportswear Company from Quanzhou, Fujian Province, for using a similar trademark and claimed Niubanlun had produced and sold counterfeit shoes around the country since 2007.

New Balance also sued Shanghai Tibo Business Consulting Company, claiming Tibo was involved in selling counterfeit New Balance shoes produced by Niubanlun in Shanghai’s Qingpu District and Pudong New Area.

In court, Niubanlun said its trademark was legally registered.

But New Balance claimed the trademark Niubanlun had registered should not be used on sports shoes.

The two parties also argued over the Chinese brand name in the court.

New Balance claimed Niubanlun used its former Chinese brand name that had been widely known on the Chinese market since 1995.

While New Balance started using a new Chinese brand name in 2003, it still used the former name on packaging in China until 2006.

But Niubanlun said the Chinese brand name was not registered by New Balance and could be used without infringement risk.

Under the suit, New Balance asked the two companies to stop infringing its trademark and the former Chinese brand name of New Balance.

source : http://english.eastday.com/e/111116/u1a6207086.html

 

Trademark case : Cadbury secures favourable HC

Cadbury India Ltd, the domestic arm of U.S. confectionery major Kraft Foods Inc, has secured a relief from the Delhi High Court which restrained a local garment manufacturer from promoting its apparel under the phonetically identical trademark ‘Cadbeery’.

Kraft Foods promoted Cadbury UK Ltd and its Indian subsidiary had moved the High Court accusing nondescript entity Lodha Garments of adopting a deceptively identical name to promote its product.

Justice Manmohan Singh passed an ex-parte interim order in favour of the chocolate major holding that it has prima facie made out a case that its reputation was being used by the Delhi-based firm to pass off their goods as those of the international brand.

“The plaintiff (Cadbury UK Ltd) prima facie have been able to make out a strong case for the grant of an ex-parte interim injunction (restriction) in their favour, Hence, till the next date of hearing, the defendant (Lodha Garments) are restrained from using the trademark ‘Cadbeery’ or any other mark similar to the plaintiffs’ trademark ‘Cadbury’,” the judge said.

“The trademark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends worldwide,” the judge observed.

The chocolate manufacturer had sought court’s order to restrain Lodha Garments from using ‘Cadbeery’ as trademark for jeans, trousers, shirts and pants.

Cadbury has also sought imposition of “punitive and exemplary damages” of Rs 20 lakh on the garment manufacturer.

It alleged Lodha Garments was trying to mislead consumers as the trademark used by the garment manufacturer sounded similar and the font used was also the same.

Cadbury sought a permanent restriction on the garment manufacturer from using the trademark saying it was “blatant misuse” of its trademark.

source: http://www.thehindu.com/business/companies/article2603545.ece

 

trademark ‘Occupy Wall St.’

An injured Long Island ironworker is trying to trademark “Occupy Wall St.” with the hope the nebulous namesake movement will turn into a global brand.

Robert Maresca, 44, said he was busy making homemade “Occupy” tee shirts with a Magic Marker last Tuesday when he grabbed his wife’s credit card and paid $975 for the trademark application on a whim.

He’s not exactly a leader of the protests in lower Manhattan, but he already has visited Zuccotti Park seven times, addressed the crowd once and said he’s “appalled” by the country’s growing income gap.

“People are calling this a crass attempt to profiteer off a social movement, but that’s not it,” Maresca, a member of Ironworkers Local 361, told the Daily News.

“When I checked, it was available for anyone to trademark. And if I didn’t file, who’s to say who else might have grabbed it? Everybody had a right to it, and it’s important to keep it away from people who would try to use it for negative,” he said.

“I do believe there’s a possibility it could become a global brand. I could maintain control to keep it from someone trying to undercut the 99%,” he said, describing himself as a pro-union, socially liberal independent who likes “to balance my checkbook and not have people telling me how to live my life.”

He said the trademark “isn’t about me getting rich. If it turns into a big moneymaker, I would like some of it to go back to the group.”

Maresca had an annual salary of about $62,000 before his injury. He has three kids, mounting healthcare costs and a wife who just went back to work to support the family, he said.

“She just finished a degree in occupational therapy. If not for that, we would have had to pick up and leave. I was really destined to get smushed,” he said.

He’s now putting the finishing touches on a new order of “Occupy Wall St.” hats and tee shirts in the hope it will help his trademark application and bring in some extra cash.

“Even though I’m a very, very small person, I’m hoping I get it,” he said of his pending application. “Then if the name goes somewhere, I can protect it. It will be up to me to decide what’s right or wrong.”

Maresca isn’t alone in the rush to cash in on the protest movement – he’s not even the first.

A Brooklyn man named Ian McLaughlin filed a trademark application for the phrase “We Are The 99%” on Oct. 7.

McLaughlin used a lawyer and plans to churn out bumper stickers, tote bags, hats, clothing and umbrellas with the social slogan, according to his filing with the U.S. Patent and Trademark Office.

Read more: http://www.nydailynews.com/ny_local/2011/10/24/2011-10-24_ironworker_attempts_to_trademark_occupy_wall_st_to_cash_in_on_protests.html

 

Trademark Database

The Domestic Trade, Cooperatives and Consumerism Ministry launched a database system today, called the “Basket of Brand” (BOB), which will facilitate the listing of registered trademark owners.

Minister Datuk Seri Ismail Sabri Yaakob said the database would be used in detecting trademark infringements including those related to copyright, and in prosecuting the offenders.

Through the database, he said, the ministry would be able to prioritise on the investigations and seizure of items if the trademark owners agree to appear in court and help the prosecution prove copyright infringement.

Prior to this, he said, the ministry had problems in getting a conviction in such cases because trademark owners were unable to show proof of trademark ownership.

“Trademark owners should come forward to identify the infringed items and show proof of ownership,” he said when opening the Intellectual Property Enforcement Convention at Kuala Lumpur Convention Centre, here.

source : http://www.bernama.com/bernama/v5/newsgeneral.php?id=621276