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Lifestyle Management Ltd v Frater: domain names and instruments of fraud

McDermott Will & Emery
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United Kingdom
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February 28 2011

Pointing domain names, which are similar to a former principal's website, to websites that closely resembled the home page of the former principal has been found to be an act of passing off

Paris appeals court confirms eBay’s liability for selling counterfeit and unauthorized LVMH perfumes on auction website

McDermott Will & Emery
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France
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November 30 2010

In sharp contrast to the outcome of a similar lawsuit has resolved in the United States, the Paris Court of Appeal has upheld a 2008 verdict holding that online auctioneer eBay is liable for the sale of counterfeit goods or goods that are selected for special distribution via its online auction website

Once legitimately registered, domain name held for ransom costs kidnapper $150k

McDermott Will & Emery
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USA
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November 30 2010

Illustrating the significant recovery available to trademark owners under the Lanham Act’s Anti-Cybersquatting Consumer Protection Act (ACPA) versus the arbitration process pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the U.S. Court of Appeals for the Ninth Circuit upheld a jury’s damages verdict of over $150,000 to a trademark owner whose domain name was held for ransom by a former employee

“Internet trinity” no longer holy in internet trademark cases

McDermott Will & Emery
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USA
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March 31 2011

In a decision that will limit the ability of trademark owners to challenge competitors’ keyword advertising, the U.S. Court of Appeals for the Ninth Circuit vacated a preliminary injunction issued by a district court barring a defendant’s purchase of a competitor’s trademark as a keyword to trigger internet advertisements

Non-UK website infringement of UK trade marks

McDermott Will & Emery
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United Kingdom
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May 31 2011

In Yell Ltd v Louis Giboin 2011 EWPCC 9 the Patents County Court found that use of the word mark TRANSPORT YELLOW PAGES and the “walking fingers” logo on a non-UK website infringed Yell Ltd’s well-known registered trade marks in the United Kingdom

Nominet decisions may be subject to appeal to the High Court

McDermott Will & Emery
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United Kingdom
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November 29 2011

In Michael Toth v Emirates 2011 EWPCC 18, his Honour Judge Birss QC, refused to strike out an application seeking to overturn a decision of a Nominet appeal panel that the registration of a domain name was abusive within the Nominet Dispute Resolution Service (DRS) Policy

WIPO refuses to order the transfer of worldcup2011.com to the International Rugby Board

McDermott Will & Emery
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Global
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January 12 2012

In Rugby World Cup Ltd v Andreas Gyrre WIPO D2011-1520 (1 November 2011) sole panellist Robert Badgely dismissed the complaint by the International Rugby Board (IRB) against ticket reseller Euroteam AS on the basis that the domain name could not be considered confusingly similar to the IRB’s trade marks RUGBY WORLD CUP and RUGBY WORLD CUP 2011, essentially because the dominant term “rugby” was lacking in the domain name

Domain name registrant found to lack bad faith in UDRP proceeding later loses against ACPA claim

McDermott Will & Emery
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USA
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May 28 2011

Considering whether a domain name registrant who prevailed in a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding possessed legitimate rights in the domain name in a subsequent court action for federal cybersquatting, the U.S. Court of Appeals for the Fourth Circuit affirmed a grant of summary judgment to plaintiff, finding that the defendant domain name registrant ceased to possess rights in the underlying domain name when it changed the content of its website to content concerning a geographical location referenced by the mark to content targeting the same type of products sold by a trademark owner under the mark

Personal jurisdiction lacking despite twenty internet users from forum state signing up for defendant’s website

McDermott Will & Emery
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USA
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May 28 2011

Considering whether a New Jersey website operator was subject to personal jurisdiction in Illinois, the U.S. Court of Appeals for the Seventh Circuit held that for personal jurisdiction to arise, a defendant must in some way target the forum state’s market in addition to operating an interactive website that is accessible from the forum state

Court of Justice of the European Union provides further guidance on circumstances in which keyword advertising constitutes trademark infringement

McDermott Will & Emery
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European Union
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October 31 2011

The Court of Justice of the European Union has provided further guidance on circumstances in which use of a registered trademark as a keyword in internet advertising by a third party advertiser may constitute trademark infringement

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