Internet Trademark Case Summaries
Continental Airlines, Inc. v. continentalairlines.com
390 F. Supp. 2d 501 (E.D. Va. 2005)
Plaintiff Continental Airlines filed this in-rem action for cybersquatting against the domain names “continentalairlines.com” and “continentalexpressairlines.com,” both of which were registered by South Korean registrants through a South Korean register Neptia.com. Midal Park owned “continentalairlines.com” and an unnamed registrant owned the other name, although both registrants listed the e-mail address “email@example.com” in their contact information. Starting in 2003, plaintiff began to receive complaints from customers about the domain name “continentalairlines.com,” which automatically redirected customers (sometimes unknowingly) to “flightreservationsonline.com,” a site selling airplane tickets on plaintiff’s and other airlines. This third-party site charged a $15 fee that customers would not pay if they used plaintiff’s “continental.com” website. Before bringing this action, plaintiff filed a UDRP complaint against the domain name “continentalairlines.com.” The UDRP Panel found for plaintiff in June 2004, and the registrant filed a lawsuit in South Korea to overturn the UDRP decision. Plaintiff then filed this action against both domain names and moved for summary judgment on its cybersquatting claim based on a likelihood of confusion. As an initial matter, the court addressed whether plaintiff’s motion was premature because plaintiff had not yet served the complaint by publication or obtained a judicial waiver of the publication requirement. The court stated that it was “well-settled . . . that waiver of the publication requirement is appropriate where the domain name registrant has actual notice of the action against his property.” The court accepted plaintiff’s argument that it was entitled to a judicial waiver of the publication requirement because the registrants of the domain names had actual notice of this lawsuit. Plaintiff mailed the complaint to the mailing addresses for the two registrants and e-mailed the complaint to “firstname.lastname@example.org.” Shortly thereafter, plaintiff received an email response from Mr. Park using the “email@example.com” email address, stating that he owned “continentalairlines.com” but not the other name. The issue was thus whether Mr. Park was also the registrant of “continentalexpressairlines.com,” such that his e-mail response regarding “continentalairlines.com” could be considered proof of actual notice to the owner of “continentalexpressairlines.com.” The court held that the “collective force” of the following facts warranted the conclusion that Mr. Park and the anonymous registrant were the same: (1) Mr. Park and the anonymous registrant both resided in South Korea; (2) both registered domain names containing famous airline trademarks to divert internet users to travel-reservation services; (3) at different times both linked their respective domain names to the “flightreservationsonline.com” website; and (4) both used the “firstname.lastname@example.org” email address. The court then turned to the merits of plaintiff’s summary-judgment motion and granted the motion. The plaintiff established likelihood of confusion and thus trademark infringement under ACPA by showing that the incontestable CONTINENTAL AIRLINES and CONTINENTAL EXPRESS marks were famous and thus strong marks; the marks were substantially identical to the domain names; air-travel services and air-travel ticket sales were closely related; plaintiff and the registrant both used the Internet to market their services; the intent of Mr. Park “points decisively in the direction of confusion, as the record leaves little doubt that Park’s purpose in registering the domain names . . . . was to capitalize on consumer confusion” and “there [was] no other explanation for his practice of claiming domain names identical to the trademarks of famous airlines . . . . to forward Internet users to websites of travel reservations services”; and evidence of actual confusion existed as to the name “continentalairlines.com” in the form of consumer emails sent to plaintiff. The court ordered the registry (VeriSign) to change the registrars of record for the domain names to a registrar located in the U.S. so that plaintiff could register the domain names in its own name.