e-Commerce Docket Sheet

The likelihood of confusion resulting from a Web operator's domain names incorporating a manufacturer's trademarks is not remedied by Web site disclaimers disavowing affiliation with the manufacturer. PACCAR Inc. v. TeleScan Technologies, L.L.C., No. 00-2183 (6th Cir. Feb. 5, 2003). The Sixth Circuit affirmed a preliminary injunction against the defendant's use of the plaintiff's trademarks Peterbilt and Kenworth in the 'manufacturer-specific' domain names of their truck locator services, even though the defendant included a disclaimer on each site disavowing affiliation with that manufacturer. Such a disclaimer, according to the court, 'comes too late' to remedy the initial interest confusion that could have led consumers to the sites in the first place.

Kentucky single publication rule applied to Internet defamation

Under Kentucky law, libel claims based on statements posted on the Internet more than one year before the filing of the complaint are barred by the statute of limitations. Mitan v. Davis, Civ. No. 3:00 CV-841-S (W.D. Ky. Feb. 3, 2003). Applying the single publication rule ' an exception to the common law rule that a defamatory statement is published each time it is delivered to a third person ' to claims arising from nine allegedly defamatory statements published on the defendants' private Web site, the district court dismissed them as time-barred. The court reasoned that a statement located on a server that is called up when a Web page is accessed is no different from a statement on a page in a book that is accessed when the book is taken off the shelf and opened.

No Wiretap Act violation when e-communications accessed during storage

An electronic communication accessed during storage ' even if the storage is only temporary ' is not intercepted within the meaning of the federal Wiretap Act. United States v. Councilman, No. 01-CR-10245-MAP (D. Mass. Feb. 12, 2003). The defendant was charged with, among other things, a conspiracy to violate the Wiretap Act, 18 U.S.C. '2511, for 'intercepting' electronic communications traveling through his e-mail service and attempting to use them for commercial gain. The district court dismissed this charge. The court rejected the government's position that the Wiretap Act should apply because the communications were in transit at the time they were accessed, noting that electronic communications traveling the Internet were often in transit and in storage simultaneously.

Sucks domains might be 'confusingly similar' to Net users not fluent in English

The mere addition of the word sucks to a well known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the well-known trademark. Bayer Aktiengesellschaft v. Dangos & Partners, Case No. D2002-1115 (WIPO, Feb. 3, 2003). Acknowledging that there was a split in authority on this point, the World Intellectual Property Organization (WIPO) panelist transferred three 'bayersucks' domain names to the complainant. The panelist noted that Internet users not fluent in English would not recognize the word sucks immediately as a pejorative term that would disassociate the resulting domain name from the trademark owner.

Anticybersquatting Act doesn't limit 'Registration' to 'creation registration'

For purposes of determining applicability of the Anticybersquatting Consumer Protection Act (ACPA), registration of a domain name is not limited to its initial creation date, and may include re-registrations. Schmidheiny v. Weber, No. 02-1668 (3d Cir. Feb. 11, 2003). The district court granted summary judgment to the defendants, holding that because the initial registration of the domain name at issue occurred before the effective date of the ACPA, it fell outside the act's coverage. The Third Circuit reversed, concluding that the language of the statute did not limit 'registration' to 'creation registration.'

Hacker subject to personal jurisdiction in forum where servers are located

Allegations that a nonresident defendant hacked into a server located in the forum state, misappropriated customer information and sent fraudulent e-mails to forum residents are sufficient to establish personal jurisdiction over the defendant within the forum state. D.C. Micro Development, Inc. v. Lange, Civ. No. 3:02-CV-225(H) (W.D. Ky. Jan. 28, 2003). After a dispute over software ownership, the defendant allegedly hacked into plaintiff's servers, stole a list of customers from plaintiff's database and attempted to solicit at least 150 residents of the forum state to purchase fraudulent software. Such conduct, according to the court, supported a finding of personal jurisdiction over the defendant under the purposeful availment test.

Internet information brokers may be liable in stalked woman's death

Private investigators or so-called information brokers who sell information to a client regarding a third party have a cognizable legal duty to that third party, and may be liable for harm caused by the sale of that party's personal information. Remsburg v. Docusearch, Inc., No. 2002-255 (N.H. Feb. 18, 2003). The mother of a stalked murder victim sued an Internet-based information broker and several private investigators who sold the victim's personal information, including her Social Security number and work address, to the murderer. Ruling on five questions of law certified to it by the trial court, the New Hampshire Supreme Court held, among other things, that the information broker's actions created an unreasonable risk of identity theft and stalking, and that 'pretextual' phone calling to obtain information by trickery can violate state consumer protection laws.

Sixth Circuit finds noncommercial, nonconfusing sites beyond Lanham Act

If use of another's trademarks in a domain name is noncommercial and not likely to cause consumer confusion, then the domain name falls outside the proscriptions of the Lanham Act and is entitled to First Amendment protection. The Taubman Co. v. Webfeats, Nos. 01-2648/2725 (6^th Cir. Feb. 7, 2003). The Sixth Circuit held that a domain name that was almost exactly identical to one of plaintiff's marks was noncommercial because it contained no links to businesses, and was not likely motivated by an intent to resell the name. Also, the domain was not confusing, largely because of a disclaimer on the site indicating that it was not plaintiff's official Web site.

The Docket Sheet was written by Julian S. Millstein, Edward A. Pisacreta and Jeffery D. Neuberger, partners in the New York office of Brown Raysman Millstein Felder & Steiner.

UDRP proceeding not 'arbitration' under Federal Arbitration Act

A dispute resolution proceeding under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) is not entitled to the highly deferential standard of judicial review set forth in the Federal Arbitration Act (FAA). Dluhos v. Strasberg, No. 01-3713 (3rd Cir. Feb. 20, 2003). The Third Circuit held that the district court improperly applied the FAA in dismissing the appellant's challenge to a UDRP decision, finding that a UDRP proceeding is not an 'arbitration' under the FAA because it is not a binding proceeding likely to 'realistically settle the dispute.' In this regard, the court noted the 'relative hollowness' of UDRP outcomes, as well as that UDRP proceedings were never intended to replace formal litigation.

Notable quote: 'A UDRP proceeding settles a disputed proceeding only to the extent that a season-finale cliffhanger resolves a sitcom's storyline ' that is, it doesn't.'

Chance of domain name confusion not remedied by disclaimer of affiliation

The likelihood of confusion resulting from a Web operator's domain names incorporating a manufacturer's trademarks is not remedied by Web site disclaimers disavowing affiliation with the manufacturer. PACCAR Inc. v. TeleScan Technologies, L.L.C., No. 00-2183 (6th Cir. Feb. 5, 2003). The Sixth Circuit affirmed a preliminary injunction against the defendant's use of the plaintiff's trademarks Peterbilt and Kenworth in the 'manufacturer-specific' domain names of their truck locator services, even though the defendant included a disclaimer on each site disavowing affiliation with that manufacturer. Such a disclaimer, according to the court, 'comes too late' to remedy the initial interest confusion that could have led consumers to the sites in the first place.

Kentucky single publication rule applied to Internet defamation

Under Kentucky law, libel claims based on statements posted on the Internet more than one year before the filing of the complaint are barred by the statute of limitations. Mitan v. Davis, Civ. No. 3:00 CV-841-S (W.D. Ky. Feb. 3, 2003). Applying the single publication rule ' an exception to the common law rule that a defamatory statement is published each time it is delivered to a third person ' to claims arising from nine allegedly defamatory statements published on the defendants' private Web site, the district court dismissed them as time-barred. The court reasoned that a statement located on a server that is called up when a Web page is accessed is no different from a statement on a page in a book that is accessed when the book is taken off the shelf and opened.

No Wiretap Act violation when e-communications accessed during storage

An electronic communication accessed during storage ' even if the storage is only temporary ' is not intercepted within the meaning of the federal Wiretap Act. United States v. Councilman, No. 01-CR-10245-MAP (D. Mass. Feb. 12, 2003). The defendant was charged with, among other things, a conspiracy to violate the Wiretap Act, 18 U.S.C. '2511, for 'intercepting' electronic communications traveling through his e-mail service and attempting to use them for commercial gain. The district court dismissed this charge. The court rejected the government's position that the Wiretap Act should apply because the communications were in transit at the time they were accessed, noting that electronic communications traveling the Internet were often in transit and in storage simultaneously.

Sucks domains might be 'confusingly similar' to Net users not fluent in English

The mere addition of the word sucks to a well known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the well-known trademark. Bayer Aktiengesellschaft v. Dangos & Partners, Case No. D2002-1115 (WIPO, Feb. 3, 2003). Acknowledging that there was a split in authority on this point, the World Intellectual Property Organization (WIPO) panelist transferred three 'bayersucks' domain names to the complainant. The panelist noted that Internet users not fluent in English would not recognize the word sucks immediately as a pejorative term that would disassociate the resulting domain name from the trademark owner.

Anticybersquatting Act doesn't limit 'Registration' to 'creation registration'

For purposes of determining applicability of the Anticybersquatting Consumer Protection Act (ACPA), registration of a domain name is not limited to its initial creation date, and may include re-registrations. Schmidheiny v. Weber, No. 02-1668 (3d Cir. Feb. 11, 2003). The district court granted summary judgment to the defendants, holding that because the initial registration of the domain name at issue occurred before the effective date of the ACPA, it fell outside the act's coverage. The Third Circuit reversed, concluding that the language of the statute did not limit 'registration' to 'creation registration.'

Hacker subject to personal jurisdiction in forum where servers are located

Allegations that a nonresident defendant hacked into a server located in the forum state, misappropriated customer information and sent fraudulent e-mails to forum residents are sufficient to establish personal jurisdiction over the defendant within the forum state. D.C. Micro Development, Inc. v. Lange, Civ. No. 3:02-CV-225(H) (W.D. Ky. Jan. 28, 2003). After a dispute over software ownership, the defendant allegedly hacked into plaintiff's servers, stole a list of customers from plaintiff's database and attempted to solicit at least 150 residents of the forum state to purchase fraudulent software. Such conduct, according to the court, supported a finding of personal jurisdiction over the defendant under the purposeful availment test.

Internet information brokers may be liable in stalked woman's death

Private investigators or so-called information brokers who sell information to a client regarding a third party have a cognizable legal duty to that third party, and may be liable for harm caused by the sale of that party's personal information. Remsburg v. Docusearch, Inc., No. 2002-255 (N.H. Feb. 18, 2003). The mother of a stalked murder victim sued an Internet-based information broker and several private investigators who sold the victim's personal information, including her Social Security number and work address, to the murderer. Ruling on five questions of law certified to it by the trial court, the New Hampshire Supreme Court held, among other things, that the information broker's actions created an unreasonable risk of identity theft and stalking, and that 'pretextual' phone calling to obtain information by trickery can violate state consumer protection laws.

Sixth Circuit finds noncommercial, nonconfusing sites beyond Lanham Act

If use of another's trademarks in a domain name is noncommercial and not likely to cause consumer confusion, then the domain name falls outside the proscriptions of the Lanham Act and is entitled to First Amendment protection. The Taubman Co. v. Webfeats, Nos. 01-2648/2725 (6^th Cir. Feb. 7, 2003). The Sixth Circuit held that a domain name that was almost exactly identical to one of plaintiff's marks was noncommercial because it contained no links to businesses, and was not likely motivated by an intent to resell the name. Also, the domain was not confusing, largely because of a disclaimer on the site indicating that it was not plaintiff's official Web site. PACCAR Inc.

The Docket Sheet was written by Julian S. Millstein, Edward A. Pisacreta and Jeffery D. Neuberger, partners in the New York office of Brown Raysman Millstein Felder & Steiner.