A federal district court in California has recently opined on a "
<famousmarks>sucks.com" cite.
Bally Total Fitness Holding Corp. v. Faber, C.D. Cal., No. CV 98-1278 DDP
(MANx), 12/21/98 ). (sorry, the only URL I have is a BNA subscription site,
but I think the fed courts in CA have their decisions online).
The court awarded summary judgment to the nameholder.
The court concluded that the use was clearly not commercial, noting
in passing that the Internet is a communications medium and not merely
a medium of commerce. Assuming that the the eight factor test for
likelihood of confusion applied, the court found that the goods were substantially
different (physical fitness v. consumer commentary), that the marketing channels
were *not* identical (mere use of the Internet did not establish identical
marketing channels, an important point IMO), and, most importantly, no
reasonably consumer could conclude that "ballysucks.com" was the
officialBally's site, given (a) that the site contained a prominent disclaimer
and (b) that the word "sucks" is clearly pejorative.
The court also found against the plaintiff on dillution and tarnishment
counts, noting that the name-holder's first-amendment right and
non-commercial use defeat the plaintiff's claims.
The only downside, IMO, was that the court noted the lack of a link
between the ballysucks.com page and the nameholder's commercial
page devoted to web design. Lamentably, this continues to give credence
to the expansive adoption of speech principle ennunciated by the
District Court of N.J. in Jews for Jesus v. Brodsky (DNRC's amicus
brief in support of Brodsky's appeal may be found at www.domain-name.org).
This seems to me to be an utterly right result. The court looked not merely
to a famous element in the name, but to the whole string and the
content of the page.
This case also provides a splendid example of how the WIPO process could
muck things up. Consider-
a) There is no assurance whatsoever that the WIPO process would have engaged
in an identical analysis.
b) The WIPO process would add a layer of expense to the process easily
borne by the TM holder but burdensome to the name holder.
c) If the TM holder lost before WIPO, it remained in the identical position
as before the WIPO adjudication (and apparently need not pay the nameholder's
costs) and may now file in court.
d) By contrast, if the TM holder won, the nameholder would be shut out
from its site and forced to sue to regain the name.
e) The court's analysis would be clouded by the need to interpret the WIPO
adjudication.
f) Valuable and publicized precedent would be lost.
Harold
