A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Holds that Mere Registration of Domain Names Does Not Constitute "Use in Commerce" Under the Lanham Act

In an August 26, 2013 ruling, Judge Deborah A. Batts granted in part defendants' motion to dismiss Courtalert.com, Inc.'s complaint asserting. Courtalert.com and defendant e-law.com both supply alerts about court filing to lawyers and others users.  Courtalert.com alleged that e-law.com registered five domain names incorporating Courtalert.com's trademarks in full.  e-law.com cancelled the domain names following Courtalert.com's objection, but Courtalert.com sued anyway, asserting five Lanham Act claims (trademark infringement, unfair competition, false designation of origin, cybersquatting and dilution), and a state unjust enrichment claim.

The Court dismissed the trademark infringement claim, holding that Courtalert.com had failed to allege use of the infringing marks in commerce.  Judge Batts noted that there are circumstances under which a defendant's use of a mark can satisfy the "use in commerce" standard if it has an impact on the plaintiff's commercial activities, but found that Courtalert.com's complaint did not claim such use.  In particular, Judge Batts wrote:
The Complaint does not claim, for instance, that when typed into the address bar, any of the five domain names at issue directs visitors to Defendants' commercial website.  Nor does Plaintiff allege that the domains names, when typed in, lead users to information opposing Plaintiff's products or service.  In fact, Plaintiff does not allege that any message at all results when the domain names are typed in.  As such, a critical component of the "classically competitive" behavior is missing here, and Defendants' behavior seems to amount to nothing more than mere registration of a domain name.
The Court dismissed the Lanham Act unfair competition and false designation of origin claims on the same ground -- i.e., that there is no allegation of use in commerce.

Judge Batts also dismissed the trademark dilution claim because of the marks' lack of fame and the lack of any allegations that defendants' use of the marks in an actual operational website.  Without such use, defendants' conduct could not dilute the strength of Courtalert.com's marks, even if the complaint had adequately alleged their fame.

The Court, though, did decline to dismiss the cybersquatting claim.  Judge Batts considered the nine factors listed in the Anticybersquatting Consumer Protection Act, and concluded that "[b]ased upon the balance of factors as enumerated under 15 U.S.C. § 1125(d)(1)(B)(i), Plaintiff has sufficiently alleged that Defendants registered the domain names with 'bad faith intent to profit.'"  
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