Internet Trademark Case Summaries
Atlas Copco AB, et. al. v. atlascopcoiran.com
533 F. Supp. 2d 610 (E.D. Va. 2008)
Atlas Copco AB, an industrial equipment manufacturer and owner of the registered mark ATLAS COPCO, filed an in rem ACPA action against eleven domain names, including atlascopcoiran.com, atlascaspianir.com, atlascaspianiran.com, atlascaspian.com/net/org/biz/cc/tv, atlascasp1an.us, and atlas-caspian.com (the “Domain Names”). Atlas perfected service under 15 U.S.C. § 1125(d)(2)(B) and the owners of the domain names did not respond. Atlas then moved for summary judgment. The court granted the motion, finding the three requirements of an in rem ACPA action satisfied, as the domain name registrations were located in the judicial district, the court could not obtain in personam jurisdiction over the defendants who were located in Iran, Afghanistan or India and lacked sufficient contacts with the U.S., and Atlas established the cybersquatting claim as a matter of law. In establishing cybersquatting, Atlas demonstrated the domain name registrants’ bad-faith intent to profit from use of the ATLAS COPCO mark in conjunction with a “phishing” scheme to obtain sensitive information from unsuspecting Internet users. The court also determined that the ATLAS COPCO mark was distinctive and strong when the Domain Names were registered based on “many decades of use in commerce throughout the United States and the world” and the incontestable status of the trademark registration. Finally, the court ruled that the Domain Names were confusingly similar to the ATLAS COPCO mark because the dominant portion of each domain name, the ATLAS COPCO mark or the “ATLAS” portion, was paired with the generic geographic terms CASPIAN and IRAN that did not distinguish the Domain Names from the registered ATLAS COPCO mark. The court declared that “[a]n Internet user might reasonably assume that the geographic term[s] . . . were added to the ATLAS COPCO trademark by the Plaintiffs to identify its geographic location.” Confusing similarity was further confirmed by viewing the “copy-cat” website displayed at each address, which contained an “ATLAS CASPIAN” logo confusingly similar to the ATLAS COPCO trademark and which linked to a phishing site containing the actual ATLAS COPCO trademark. The court ordered the three registries of the Domain Names (VeriSign, Public Interest Registry, and NeuStar) to change the registrar of the Domain Names to Network Solutions, and for Network Solutions to register the Domain Names in the name of Atlas.