Internet Trademark Case Summaries
General Media Communications, Inc. v. Crazy Troll, LLC
2007 WL 102988 (S.D.N.Y. Jan. 16, 2007)
Plaintiff published "Penthouse" magazine and used the PENTHOUSE mark in various ways including on the Internet at its "penthouse.com" website. Plaintiff also licensed the PENTHOUSE mark to a number of e-commerce sites, including "penthousestore.com" (adult products), "penthousejewelry.com," and "penthouselingerie.com." Plaintiff also licensed its federally registered mark PENTHOUSE BOUTIQUE for retail clothing and footwear stores. Defendants operated Internet businesses that offered web design, hosting, and domain name registration services. Defendants also registered domain names for profit, including trademark-related names like "smithbarney.com," "remingtonshotgun.com," "avoncn.com," "gmportal.com," "foxv.com," and "t-mobiledealer.com." Defendant registered the domain name "penthouseboutique.com" after plaintiff's bankruptcy trustee allowed plaintiff's registration of the domain name to lapse. Defendant originally promoted its Internet services and offered the domain name for rent or sale, and later used it for a pay-per-click page that included links to the licensed Penthouse Boutique stores. When plaintiff discovered defendant's ownership of the domain name, it sent a demand letter to defendant and defendant redirected the name so it did not connect to any web page. Plaintiff then filed a UDRP Complaint. The UDRP panelist, however, declined to transfer the domain name to plaintiff, finding that plaintiff acted in bad faith and had engaged in reverse domain name hijacking. Plaintiff then filed this suit and moved for summary judgment on its declaratory judgment claim to establish that it did not bring the UDRP proceeding in bad faith and did not engage in reverse domain name hijacking. The court initially noted that reverse domain name hijacking constituted the bad faith use of the UDRP to "deprive a registered domain-name holder of a domain name." It then analyzed the UDRP proceeding applying the UDRP's requirements. The court first found that the "penthouseboutique.com" domain name was "legally identical" to plaintiff's PENTHOUSE BOUTIQUE mark. It next found that defendant had no legitimate rights or interests in the domain name, noting that defendant never made a bona fide offering of goods under the mark, defendant was never known by the mark, defendant's actions did not qualify as noncommercial fair use, and defendant used the domain name to profit from diverted web traffic. The court then found, without elaborating, that "abundant evidence" existed to show that defendant acted in bad faith according to "several" of the nine non-exhaustive factors provided in the UDRP. Accordingly, because there was evidence that plaintiff was actually entitled to relief under the UDRP, plaintiff did not act in bad faith in bringing its UDRP proceeding and thus did not engage in reverse domain name hijacking. Finally, the court examined the two provisions in the ACPA that apply to reverse domain name hijacking, but found they had no application here (15 U.S.C. § 1114(2)(D)(iv) and 15 U.S.C. § 1114(2)(D)(v)).