Volume III

Issue : 3: February 10, 2005

• Court Decides Internet Users More Likely to Confuse Trade-marks
• English Courts Are Not an International Libel Tribunal
• Greek Privacy Regulator Declares Employees' Emails to be Private
• Appellate Court Considers a Discussion Forum's Right to Rely on Section 230 of the CDA
• Piracy Bill Targets Camcorders in Movie Theatres
• Canadian Doctor Suspended for Prescribing Drugs for U.S. Patients
• Quebec Company Fined for Failing to Provide Bilingual Website

Home > Volume III > Issue 3: February 10, 2005 > Court Decides Internet Users More Likely to Confuse Trade-marks

Court Decides Internet Users More Likely to Confuse Trade-marks

On January 20, 2005, the District Court of Minnesota held that a preliminary injunction should be made permanent enjoining the Defendants from registering, using, owning, holding and trafficking in any domain name that incorporates, or is identical with or confusingly similar to the Plaintiff's famous and protected marks. The Defendants in this case had already registered sixty Internet Domain names that incorporated the Plaintiffs' famous marks, which consequently diverted traffic to their sites that displayed pictures of aborted fetuses and various associated links.

In deciding whether the preliminary injunction should be made permanent, the Court acknowledged that the preliminary injunction was warranted under the Anticybersquatting Consumer Protection Act, and noted that no court considered whether similar relief could be granted under a trade-mark infringement claim. In its analysis, the Court surveyed the various factors that will support a trade-mark infringement claim. In coming to the conclusion that there is enough evidence to support a finding that there is a likelihood of confusion between the registered marks and the alleged infringing use, the Court acknowledged that the quick and effortless nature of "surfing" the Internet makes it unlikely that consumers can avoid confusion through the exercise of due care - specifically, the court stated that:

In the internet context, in particular, entering a website takes little effort - usually one click from a linked site or search engine's; thus, Web surfers are most likely to be confused as to ownership of a web-site than traditional patrons of a brick-and-mortar store would be of a store's ownership.

For a copy of the decision, visit:

http://law.marquette.edu/goldman/purdyperminjunction.pdf