A registered domain name must be providing goods and services in order for it to receive trademark protection, a federal court ruled late last week.
The ruling, made by a panel from the Ninth Circuit U.S. Court of Appeals in San Francisco, comes from a dispute involving the domain name Moviebuff.com. Brookfield Communications, a movie industry vendor, sued video rental chain West Coast Entertainment for infringing on its trademarked software database by registering Moviebuff.com.
Even though West Coast had registered the domain name almost two years before Brookfield used the Moviebuff name on the Web, the three-member panel agreed that Brookfield used the name in commerce first, and therefore was entitled to trademark protection online.
“Registration with Network Solutions, however, does not in itself constitute “use” for purposes of acquiring trademark priority,” wrote the panel in its opinion. “. . .We must therefore conclude that Brookfield is the senior user because it marketed “Moviebuff” products well before West Coast began using “moviebuff.com” in commerce. . .”
West Coast did not begin using its domain name for commerce until October 1998, more than one year after Brookfield began its commerce site, Moviebuffonline.
The court cited the Lanham Act, which “grants trademark protection only to marks that are used to identify and to distinguish goods or service in commerce–which typically occurs when a mark is used in conjunction with the actual sale of goods or services.” The decision reversed a ruling previously made by U.S. District Court in California.
As a result of the court’s ruling, West Coast may no longer use the Moviebuff.com, nor may it use the moviebuff name in its metatags.
“Using another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s story,” the panel wrote.