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Internet Trademark Case Summaries

Dluhos v. Strasberg

321 F.3d 365 (3d Cir. 2003) (reversing and remanding district court’s decision); 2005 U.S. Dist. LEXIS 34385 (D. N.J. June 23, 2005) (defendant’s motions for summary judgment)

Dluhos, an actor and graduate of the Lee Strasberg Theatre Institute, registered the domain name “leestrasberg.com.”  The estate of Lee Strasberg, a renowned actor (“Strasberg”), filed a UDRP Complaint and the UDRP panelist ordered transfer of the domain name to Strasberg.  Dluhos filed this action to stay the UDRP decision.  The district court reviewed the UDRP decision under both Federal Arbitration Act (“FAA”) standards of review—“evident partiality or corruption in the arbitrator” and if “the arbitrators were guilty of misconduct…in refusing to hear evidence pertinent and material to the controversy—and the judicially created “manifest disregard of the law” standard.  The district court upheld the UDRP decision.  On appeal, the Third Circuit held that UDRP proceedings did not constitute arbitration under the FAA because:  (a) UDRP proceedings were never intended to replace formal litigation; (b) trademark owners are not required to use the UDRP before pursuing civil litigation, and (c) the ACPA provides a cause of action to challenge UDRP decisions.  Accordingly, the Third Circuit reversed and remanded the case to the district court for further proceedings consistent with its opinion.  The Third Circuit was careful to note, however, that its decision “in no way reflects an intimation that the [UDRP] panel erred in its judgment….”

Strasberg filed an answer to Dluhos’s remanded cybersquatting claim and also counterclaimed for trademark infringement, unfair competition, dilution, and cybersquatting based on its ownership of the mark LEE STRASBERG and other STRASBERG marks. The court granted Strasberg’s motion for summary judgment on its counterclaims and on Dluhos’s claim for return of the name under the ACPA. It held that the “Strasburg” marks were valid and legally protectable and that all of the likelihood-of-confusion factors weighed in favor of Strasberg. Dluhos alleged that the “intent of the domain name was Lee’s Trasberg, a parody of the name Lee Strasberg.” The court, however, noted that Internet users wanting to find information on Lee Strasberg would type “leestrasberg.com” and instead find Duhlos’s website, and found this conduct to be “indicative of an intent to lure internet users to his own website.” The court also held that Duhlos’s actions diluted the Lee Strasberg marks by blurring and had a commercial effect on Strasberg. Strasberg was also entitled to summary judgment on its counterclaim for cybersquatting under the ACPA, based on the court’s finding that Dluhos had a bad-faith intent to profit from the Strasberg marks. In particular, Dluhos’s use of the domain name “leestrasberg.com” did not constitute a parody because it did not convey the two required contradictory messages required to establish a parody (i.e., that it is the original but also that it is a parody and not the original). Finally, based on its grant of summary judgment in favor of Strasberg on its counterclaims, the court found no error with the UDRP decision and granted summary judgment to Strasberg on Dluhos’s claim for return of the domain name.