[re-threaded]
At 06:12 PM 2/11/99 -0500, Harold Feld wrote:
>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
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