Internet Trademark Case Summaries
Albert Furst von Thurn und Taxis v. Karl Prince von Thurn und Taxis
2006 WL 2289847 (S.D.N.Y. Aug. 8, 2006)
Plaintiff, Prince of the Regensburg branch of the Thurn und Taxis Family, sued the business entities surrounding and including Karl Prince von Thurn und Taxis, a member of the “Tsheck” (or “Moravian”) branch of the Thurn und Taxis Family. Defendant was a “distant cousin” of plaintiff’s father. Plaintiff alleged that defendant “engaged in a scheme to capitalize on the good will associated with the Thurn Family in international business circles, by using the family name and referring prominently to its rich history, particularly in business matters.” Plaintiff owned trademarks registered with the German Trademark Office including FURST THURN UND TAXIS and THURN UND TAXIS. Plaintiff did not own any U.S. trademark registrations but it did own pending U.S. applications for the same marks. Plaintiff also owned the domain name “thurnundtaxis.de.” Starting in 2003, plaintiff sent numerous cease-and-desist letters to the various incarnations of defendant’s investment business whenever they registered domain names that allegedly infringed plaintiff’s marks, including “thurn-taxis.com,” “thurntaxisitalia.com,” “kpthurntaxis.com,” “thurntaxisgp,” “thurn-taxis.com,”“thurn-taxis-immo.com,” and “thurn-taxis-immo.de.” Most of the corresponding websites included information about the success and prominence of the Thurn und Taxis Family. Plaintiff sued for cybersquatting and false endorsement under the Lanham Act. Defendants moved to dismiss plaintiff’s false endorsement claim because plaintiff could not establish trademark rights in the U.S. Reading the complaint in the light most favorable to plaintiff, the court held that plaintiff successfully alleged a claim for false endorsement based on plaintiff’s alleged “celebrity status.” The court also noted in a footnote that a “quick search on the Internet for the Thurn and Taxis family yielded close to 200,000 results.” Defendant also moved to dismiss the cybersquatting claim because it did not register the domain names in bad faith, but plaintiff’s complaint sufficiently alleged bad faith by defendants. The court thus denied defendant’s motion to dismiss.