Cybersquatters fail to DODGE summary judgment

In DaimlerChrysler v The Net Inc, the US Court of Appeals for the Sixth Circuit has affirmed a decision under the Anti-cybersquatting Consumer Protection Act (ACPA), which ordered the transfer of the domain name 'ForADodge.com' to the plaintiff.

Automobile manufacturer DaimlerChrysler brought a trademark infringement action against The Net Inc following its registration of the domain name 'ForADodge.com'. DaimlerChrysler moved for summary judgment on its claim.

Before the US District Court for the Eastern District of Michigan, DaimlerChrysler established that (i) it had used the DODGE mark since 1924 for its automotive vehicles, repair parts, accessories and services, and (ii) the DODGE mark had been a registered trademark for goods and services since 1934. Moreover, DaimlerChrysler provided evidence that, since at least as early as 1994, it had used the domain name '4ADodge.com'. DaimlerChrysler also established that The Net had registered myriad other domain names consisting of well-known marks, such as 'cnn.org', 'msnbc.org' and 'ups.net'.

The district court upheld the claim and ordered The Net to transfer the disputed domain name to DaimlerChrysler. It also issued an injunction enjoining The Net from any further use of the name ForADodge. The Net appealed.

It argued that:

• it had registered the domain name 'ForADodge.com' and other variations of that name for asset protection services and not in relation to automobiles;
  
  
• DaimlerChrysler did not use 4ADODGE as a trademark but merely as an address; and
  
  
• the ACPA provided for an unlawful governmental taking in violation of the Fifth Amendment of the US Constitution.

The Sixth Circuit summarily dismissed The Net's arguments, affirming the district court's grant of summary judgment and issuance of an injunction. Regardless of whether DaimlerChrysler had used 4ADODGE as a trademark, the Sixth Circuit agreed with the district court that 'ForADodge.com' was confusingly similar to DaimlerChrysler's DODGE mark. In coming to this conclusion, the court relied on past decisions that have held that "slight differences between domain names and registered marks, such as the addition of minor or generic words … are irrelevant".

The court went on to hold that there was no improper taking. A regulatory taking only occurs when the government prevents a property owner from a particular use of property that otherwise would be permissible. Here the use of the property was not permissible. It constituted trademark infringement. Thus, the injunction ordered could not and did not constitute an impermissible taking. This reasoning followed the findings of district court decisions, such as E & J Gallo Winery v Spider Webs Ltd, 129 F Supp 2d 1033, 1047 (SD Tex 2001) and Shields v Zuccarini. The Sixth Circuit's decision now provides a court of appeals decision to the same effect.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco