Intellectual Property Law

Chapter 7 Discussion Answers

1. A client, Furniture Barn, wishes to ensure that no one registers the domain name
“FurnitureBarnSucks.com.” What should the client do?
It will need to register the domain defensively and incur the costs
associated therewith (something that many trademark owners
complained about before the introduction of the new gTLDs).

2. Emma Kraft registered the domain www.kraftqueen.com in 2013 for her catering
business. Kraft Foods Group, Inc. later applied to register the domain name
www.kraftqueen.com and could not do so, due to Emma’s preexisting domain
registration. Kraft Foods would like to challenge Emma’s registration. Discuss the
likelihood of Kraft Foods prevailing under ACPA.
The likelihood of Kraft Foods prevailing is low. Emma is a legitimate
first user (her name is Kraft, thus she has a valid reason for using the
domain with that portion). Moreover, for a plaintiff to prevail under
ACPA, it must show that the domain name was registered or used in
bad faith, which is often shown by diversion of customers or attempts
by the domain registrant to sell the domain to a rightful owner. None
of these factors is present.

3. Nike has discovered that domainer Jack Andrews has registered www.nike.xxx
and www.nike.porn and has received a letter from Andrews offering to sell the
domains to Nike for $20,000 each. Discuss the likelihood of Nike being able to
prevail under ACPA.
Nike’s chances of prevailing are high. To prevail, it must show the
defendant’s bad faith intent to profit from the plaintiff’s mark and
that the defendant has registered, used, or trafficked in a domain
name that is identical or similar to a distinctive or famous mark.
Nike’s NIKE mark is famous; Andrews’s registrations include Nike’s
actual NIKE marks; and Andrews has offered to sell the domains to
Nike for an exorbitant amount (showing his bad faith intent to profit
from Nike’s mark). Thus, Nike should prevail under ACPA.

4. Starbucks has discovered that after Sarah Harris had a bad experience at a
Starbucks store she registered the domain name www.ihatestarbucks.com. No
goods are offered at the site, and Sarah uses it purely to vent her feelings about
Starbucks. Discuss Starbucks’s likelihood of prevailing in a trademark
infringement case and under ACPA.
Sarah has established a legitimate “gripe” site. It is permissible to
complain about a product or service so long as there is no consumer
confusion (and consumers are unlikely to think that Starbucks itself
would be the owner of the site). Under the Bally case, Sarah’s remarks
(so long as they are neither false nor defamatory) are protected
expression. She is not associating Starbucks with unsavory activities
(such as drugs) and is using the site solely for free speech purposes,
with no effort to sell goods through the site. Trademark law cannot be
used to suppress free speech.

5. Michael Miller operates a freelance computer consulting business in Portland,
Oregon. His website describes his services and allows potential customers to fill
out and submit a form describing the services they need. Michael then calls the
potential customers and schedules in-home consultations, primarily in the
Portland area.

a. Can Michael be sued in Portland?
Yes. Michael is clearly doing business in Portland and thus he
is subject to jurisdiction there.

b. Can Michael be sued in Seattle?
It would seem highly unlikely that Michael could be sued in
Seattle, Washington. Under the Zippo spectrum, Michael’s
website is either totally passive or it occupies the “middle”
portion of the spectrum in that it offers some limited
interaction with users. Michael, however, does not enter into
contracts with website users and always does his consultations
in person. His website doesn’t function much differently than a
telephone—potential customers merely use it to contact him.
Thus, the amount of contact he has with Seattle residents is
minimal rather than significant and he should thus not be
subject to jurisdiction in Seattle.

6. Assume that you are trying to locate the website of Dunkin Donuts. You mistype
a few letters and are taken to a porn site.

a. What is this practice called?
This practice is called “typosquatting.” It is a form of
cybersquatting used to lure visitors to a site when they mistype
a website address.

b. Is it actionable? Discuss.
This act of cybersquatting is actionable under a variety of
theories. It is likely trademark infringement (use of a
confusingly similar mark); it is actionable under ACPA as
cybersquatting or dilution (specifically, dilution by
tarnishment by associating Dunkin Donuts’s famous mark
with unsavory activity); and an action could be brought to
recover the domain name under the UDRP.

7. A client registered a domain name with the new gTLD “.broker.” Its domain is
www.fidelity.broker. It has now discovered that there is another domain name
registered as www.fidelitee.broker. The client seeks an expeditious remedy and
does not wish to go to court. What might it do?
The client should initiate a proceeding under the Uniform Rapid
Suspension System, implemented by ICANN after it introduced its
new gTLDs. No monetary recovery is possible and the domain will not
be transferred to its rightful owner. However, the domain will likely
be suspended fairly quickly—often within three weeks.

8. Gap Inc. has discovered that when consumers search for “Gap” on the Internet,
they also see ads for Abercrombie & Fitch, J. Crew, and Polo Ralph Lauren along
the right side of the screen in a box labeled “You might also like.”

a. Is this practice permissible? Discuss.
Yes. There is no diversion here. The situation is similar to
walking into a store to buy one brand of shirt and seeing other
brands and deciding to buy one of them. There is no confusion
here. The other marks are displayed in a separate section and
are clearly labeled.

b. Would your answer be different if when consumers typed in www.gap.net,
they were taken to the website Polo Ralph Lauren? Discuss.
Yes. This would be actual diversion of customers and it is
actionable as infringement.