Internet Trademark Case Summaries
Pinehurst v. Wick
2002 U.S. Dist. LEXIS 19527 (M.D.N.C. May 15, 2002), 256 F. Supp. 2d 424 (M.D.N.C. 2003)
Plaintiff, owner of the federally registered mark PINEHURST and the famous Pinehurst golf resort, sued defendants for dilution and cybersquatting. Defendant, who has a long history of registering and selling domain names containing famous marks, registered the name “pinehurstresort.com.” After plaintiff filed suit, defendant also registered "pinehurstresorts.com" and plaintiff amended its complaint to include this name. Several weeks later defendant registered "pinhurst.com" but plaintiff did not amend its first amended complaint to include this name. The court granted plaintiff’s motion for summary judgment on both claims. Regarding plaintiff’s cybersquatting claim, the court found that there was no dispute that plaintiff’s PINEHURST mark was famous or that defendant’s domain names were confusingly similar. The court also held that defendant registered the PINEHURST-formative domain names in bad faith because: (1) defendant had no intellectual property rights to PINEHURST prior to registering the domain names, (2) the domain names were not the legal names of defendant or any other name used to identify defendant, (3) there was no evidence that defendant used the domain names with any bona fide offering of goods or services, (4) there was no evidence of a noncommercial or fair use of plaintiff’s mark—defendant's parody argument failed because the domain names themselves did not convey the parody, (5) defendant admittedly intended to divert customers looking for plaintiff’s website, (6) defendant offered to sell the domain names to plaintiff and defendant's registration of the domain names in the name of "NameIsForSale.com" gave rise to a reasonable inference of intent to sell the domain names for a profit as it did in Morrison & Foerster v. Wick, (7) defendant did not provide a contact name when registering the domain names, (8) defendant had registered thousands of domain names containing famous trademarks, and (9) defendant admittedly registered the domain names of large corporations, law firms, and golf facilities to “mess” with “corporate America.” Regarding plaintiff’s dilution claim, the court held that defendant's registration and use of the PINEHURST domain names actually diluted plaintiff’s marks as required by the Supreme Court in Moseley v. V Secret Catalogue. Specifically, defendant’s actions prevented plaintiff from using these domain names and engaging in electronic commerce under them. The court thus ordered defendant to transfer to plaintiff the two domain names at issue and any other domain names containing the term PINEHURST or any confusingly similar names or terms, and permanently enjoined defendant from: (a) advertising, promoting, or selling goods or services using the mark PINEHURST, (b) taking any action that would dilute the distinctive quality of or tarnish plaintiff’s PINEHURST marks, and (c) adopting or using a domain name, whether commercial or not, that includes PINEHURST or a confusingly similar term. The court awarded plaintiff statutory damages of $100,000—$50,000 for “pinehurstresort.com" and $50,000 for "pinehurstresorts.com." This award was warranted generally in view of defendant’s continued and persistent cybersquatting activities despite several prior adverse rulings in other cases and specifically here based on defendant’s registration of additional PINEHURST domain names after plaintiff filed this suit and defendant’s registration of domain names similar to the name of plaintiff’s counsel. Because plaintiff did not amend its complaint to include the domain name “pinhurst.com,” however, the court did not award statutory damages for that name. Finally, the court awarded attorney's fees, finding this case to be exceptional due to defendant’s willful and deliberate conduct described above.