Actually the GOPED case is a good illustration, where idiosync.com/goped
was a non-infringing use of go-ped. JOHN DOE'S PARTS as the name on the
shop awning, WE SELL PORSCHE PARTS in the window is ok, PORSCHE PARTS as
the name on the shop awning is probably not ok, as it probably suggests a
connection or endorsement. By analogy, www.porscheparts.com suggests a
relationship to porsche in a way that www.johndoe.com/porscheparts does not.
I keep on typing prosche. i note that prosche.com is one of the domain
names named in the suit.
At 08:11 PM 2/2/99 -0500, you wrote:
>Marty--
>
>Let's not forget the GOPED case, which is well-served by Bob Cumbow's
>abstract at
><http://www.perkinscoie.com/resource/ecomm/netcase/Cases-08.htm>:
>
>>>"Patmont Motor Works Inc. v. Gateway Marine Inc., 96-2703 (N.D. Cal.
>12/18/97): Use of another's trademark in the non-domain name portion of a
>Web site url is a "nominative fair use" that does not give rise to a
>likelihood that consumers will be confused as to the source of the Web
>site's content. Defendant dealer had agreed not to use plaintiff's "Go-Ped"
>motor scooter trademark "in any email address, or any key word designation
>on any Internet server." When dealer used the term in the url of a back
>page of his Web site -- "www.idiosync.com/goped" -- Patmont sued, alleging
>trademark infringement; but the court found that: "The text that follows
>the domain name in a URL -- in other words, the text that comes after the
>slash -- serves a different function" from that of a domain name. "Nothing
>in the post-domain path of a URL indicates a Web site's source of origin,
>and [plaintiff] has cited no case in which the use of a trademark within a
>URL's path formed the basis of a trademark violation." Opinion at:
>http://www.Loundy.com/CASES/Patmont_v_Gateway.html"
>
>Some of the defendants in Porsche v. Porsch.com may cite this case as
>authority that use of PORSCHE or variations of the mark in the domain name
>itself are a fair use, but that is not what the case says.
>
>Best regards,
>
>--Fred
>
>Frederic M. Wilf
>Intellectual Property & Technology Law
>Email [EMAIL PROTECTED]; URL http://www.saul.com/laywers/5082.html
>Saul Ewing Remick & Saul, 1055 Westlakes Drive, Berwyn, PA 19312, U.S.A.
>
>
>______________________________ Reply Separator
_________________________________
>Subject: Re: [Fwd: [ifwp] NSI Domain Name Dispute Stats]
>Author: [EMAIL PROTECTED] (Martin B. Schwimmer) at INTERNET
>Date: 2/2/99 6:48 PM
>
>
>Yeah, let's play the home version of the law game.
>
>Without a knowledge of the pre-existing law, it's just a popularity contest
>about Porsche. The following is a quick list of the some of the law
>perhaps relevant to a US analysis of these DNs. Foreign law varies on some
>of these points. McCarthy's is a good source on this. Also a book called
>"The Use of Another's Trademark" by Burshtein and others.
>
>Of course you would want to know how the DN owners are using the DN, what
>relationship they may or may not have to Porsche, other factors that are
>not available to our contestants.
>
>btw, when doing your 43(c) dilution analysis, keep in mind that PORSCHE is
>not JUNO. I believe there were four or five third parties who had federal
>registrations for JUNO.
>
>There are zero third parties who have federal registrations for PORSCHE.
>
>Here goes:
>
>Independent dealers who specialize in selling or servicing a particular
>brand of product are generally free to use the mark to truthfully inform
>the public of this fact, so long as the use does not cause confusion about
>the affiliation of the user with the owner of the mark. General Electric
>v. A-ALL Appliance Parts, 224 USPQ 1054 (1984).see Mobil Oil v. Mobile
>Mechanics, 192 USPQ 744 (`976) (MOBILE MECHANICS enjoined for auto repair
>shop).
>
>A third party may use a mark to refer to the owner of the mark, provided
>such use does not attempt to promote or capitalize on consumer confiusion or
>to appropriate the cachet of one product for a different one. Use isfair if
>it does not imply sponsorship or endorsement by the trademark holder. New
>Kids on the Block v. News America Publishing, 971 F.2d 302 (1992)
>(defendant's phone-in poll referred to pop group without falsely implying
>endorsement). See also the Joe Montana poster case.
>
>A seller of replacement parts may legally advertise that the parts are made
>to fit a trademarked product so long as the customer is not confused as to
>the source of the replacement parts. Piper Aircraft v. Wag-Aero, 553
>F.Supp. 136 (1982).
>
>A seller of replacement parts may not give the impression that the
>replacement parts are made or sponsored by the trademark owner. Id.
>
>With compatible products, excessive prominence of the original mark may
>cause confusion as to the source of the products. Plasticolor Molded
>Products v. Ford, 698 F. Supp. 199 (1988).
>
>The heart of dilution, as distinguished from unfair competition (which is
>tested by likelihood of confusion) is the destruction of the selling power
>of the mark. Deere & Co. v. MTD, 41 F.3d 39 (1994).
>
>ok, porschecar.com, let's see . . .
>
>
>
><snip>
>
>
>
>
