Internet Trademark Case Summaries
HQM, Ltd. v. Hatfield
71 F. Supp. 2d 500 (D. Md. 1999)
Plaintiff owned the federally registered trademark HATFIELD. When it discovered that defendant, William B. Hatfield, registered “hatfield.com,” it sued him, alleging trademark infringement, dilution, and unfair competition. Defendant moved to dismiss for failure to state a claim. The court dismissed plaintiff’s trademark-infringement and unfair-competition claims, because plaintiff failed to allege that defendant used the mark in connection with any goods or services. Plaintiff alleged only that defendant registered the “hatfield.com” domain name and activated it for e‑mail purposes. Defendant did not operate a website using the disputed domain name. The court also dismissed the dilution claim, finding that plaintiff failed to allege facts sufficient to plead the statutory element of “commercial use.” Plaintiff argued that the “.com” in the domain name stood for “commercial business” and thus satisfied the requirement. Rejecting this argument, the court noted that such a theory “would create an immediate and indefinite monopoly to all famous marks holders on the Internet, by which they could lay claim to all .com domain names which are arguably ‘the same’ as their mark.” The court also rejected plaintiff’s allegation that defendant’s purpose in registering the domain name was to hold it hostage. Distinguishing the Toeppen cases cited by plaintiff, the court found that unlike Toeppen, Hatfield did not register hundreds of domain names and never offered to sell the “hatfield.com” name to plaintiff. The court also rejected plaintiff’s theory of dilution by blurring, namely, that Internet users searching for plaintiff on the Web would find no website at “hatfield.com” and would fail to continue searching, believing that plaintiff had no website.