TulipTools Internet Business Owners and Online Sellers Community

Quote:There was a time when it seemed that powerful trademark holders generally prevailed when they sought the transfer of Internet domain names that contained their trademarks. However, recent decisions show that domain name registrants have a fighting chance under certain circumstances.

Rather than go to federal court, many trademark holders proceed with arbitration in their efforts to seek the transfer of domain names. While they cannot obtain damages and attorney’s fees in arbitration, as they could in federal court, a final decision can be obtained in a matter of just a few months, rather than years for final court resolution...

...the WarGames.com and Pig.com arbitration results stand for the recent proposition that domain registrants can try to fight off trademark holders when they can show a legitimate uses for their domain names and lack of bad faith...

Quote:Starbucks filed suit in federal court in New York against Wolfe's Borough Coffee. Starbucks claimed that Wolfe's sale of coffee under the name of "Mister Charbucks" or "Mr. Charbucks" infringed and diluted the "Starbucks" famous trademark for coffee.

The trial judge concluded that Starbucks had failed to meet its burden of proving trademark infringement and trademark dilution under the Federal Trademark Dilution Act (FTDA). Not surprisingly, Starbucks appealed.

The U.S. Supreme Court previously had construed the FTDA to require a showing of actual dilution rather than a likelihood of dilution. In response to that construction, Congress amended the FTDA, effective as of October 6, 2006, to entitle the owner of a famous mark to an injunction against a user of that mark that is "likely to cause dilution" of the famous mark...