Bodum court gives trademark law a jolt

A senior federal judge in the US District Court for the Eastern District of Pennsylvania has issued an opinion with major ramifications for the application of trademark law to domain names.

Judge Ludwig dismissed a trademark infringement case filed by Chatam International Inc, the makers of Chambord liqueur, against Bodum Inc, a company that markets coffee makers under the trademark CAFETIERE CHAMBORD, for registering the domain name ''. He ruled that the longstanding trademark concept of 'initial interest confusion' does not apply to web sites because surfers have become used to visiting numerous sites before finding the one they seek.

Filed under the Anticybersquatting Consumer Protection Act, Chatam's complaint alleged that its mark would be diluted by the use of the word 'chambord' in a domain name held by another registrant. However, unlike the situation in so many other cases, in this case both parties had legitimate rights in the mark, albeit for different products.

Ludwig found that Bodum's registration had not been made in bad faith - the primary requirement for the transfer of a domain name to an aggrieved plaintiff under the act - because Bodum held rights in the word for identifying its coffee makers. Ludwig further held that Bodum had "reasonably believed the use of the name was fair or otherwise lawful". As a result, Bodum was not guilty of cybersquatting.

Douglas Wood and Linda Goldstein, Hall Dickler Kent Goldstein & Wood, New York

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