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Internet Trademark Case Summaries v. Fisher Controls Int'l, Inc.

2001 U.S. Dist. LEXIS 10002 (S.D. Tex. June 28, 2001)

Defendant, owner of the federally registered trademark FISHER for control valves, registered the domain name “” and used it to promote its business.  Even though defendant paid the renewal fee for its registration, the registrar mistakenly offered the domain name for sale to the public.  Plaintiff, who was in the business of buying expired domain names, reregistered “” and forwarded it to a third-party search engine.  After defendant objected to plaintiff’s registration of the domain name, plaintiff forwarded the name to a web page announcing that the “Fisher Family Genealogy Center” was coming soon.  That site also contained a link entitled “ Being Reverse Domain Hijacked!,” which connected to a page discussing this dispute.  Defendant filed a UDRP complaint and prevailed, and plaintiff filed this suit to stay transfer of the domain name to defendant.  The court granted defendant’s motion for a preliminary injunction against plaintiff, finding that defendant was likely to prevail on the merits of its dilution claim under the Texas Anti-Dilution Act.  The court found that the FISHER mark had acquired secondary meaning through extensive use and advertising and annual sales of about one billion dollars.  Plaintiff’s use of the “” domain name diluted defendant’s mark because it prevented defendant from using its mark as a domain name and defendant had no control over plaintiff’s use of the name.  Additionally, plaintiff’s accusatory “reverse hijacking” message, which the court described as “words descriptive of criminal activity,” tarnished the goodwill and reputation of defendant’s trademark.   Defendant was also likely to prevail on its claim under the ACPA, because plaintiff acted in bad faith in registering “”  The court found plaintiff’s contention that the “” site would eventually provide genealogical services for the Fisher surname to be “a pretense and unworthy of belief,” noting that plaintiff’s website made no mention of genealogical services until after commencement of the UDRP action.  Plaintiff also registered other domain names identical or confusingly similarly to well-known third-party marks (e.g., “,” “”), and registered “” and “” when they mistakenly became available.