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US appeal court breaks trademark/domain name link

Avery trademark too 'diluted', apparently

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The US Court of Appeals has reversed a District Court decision to give domain-name protection to a well-established registered trademark. Avery Dennison, a manufacturer of office products and industrial fasteners with sales in excess of $3 billion, had registered trademarks for Avery in 1963 and Dennison in 1908. It also has the domain name avery.com. Jerry Sumpton of Mailbank, a service that offers vanity email addresses like bill@avery.net, had registered avery.net and dennison.net as part of its sfamily name archive. Avery Dennison sued Sumpton and registrar NSI in the District Court for the Central District of California, which gave summary judgement to NSI and Avery Dennison, and entered an injunction ordering Sumpton to transfer the domain names to Avery Dennison for $300 each. Sumpton appealed and won because of the Federal Trademark Dilution Act. Previously, federal law gave protection to the infringement of a registered trademark, while unregistered trademarks were protectable with the law of unfair competition. Trademark dilution had been recognised in many US states, and became federal law in 1995. It is not necessary to establish that there is competition between the parties in a dilution case, whereas previously "passing off" had to be proved. The appellate court unanimously held that Avery Dennison had failed to establish that its marks were "famous", in the sense required by law, because the proof required a greater showing than "mere distinctiveness". Avery Dennison faced the problem that there were several other trademark registrations for "Avery" and "Dennison" in other business sectors, so that the appellate court could not consider that Avery Dennison's trademarks were "famous" in the legal sense. The family name "Avery" is the 775th most common in the US, and Dennison the 1768th (and not at lot of people know that). There were no overlapping channels of trade, it was decided. The decision does not do much to help cybersquatters who register domain names in bad faith. In Mailbank's case, it has registered thousands of family names, and other names, and runs what appears to be a legitimate business licensing the aliases. Tomorrow, the Internet Corporation for Assigned Names and Numbers (ICANN) meeting in Santiago, Chile, will be debating what to do about cybersquatters. Denying registration of trademarks to other than the trademark holders would be one possibility, but there are too many complications with such an approach. Meanwhile, there is a bill before the US Senate which could result in fines of up to $100,000 for cybersquatters acting in bad faith. The problem of course will be that, despite some delusions, the US courts have no jurisdiction outside the US, so that some agreement will be necessary to resolve international disputes. Ironically, many an Avery label has been used on junk mail, so perhaps there is some justice that vanity mailers like bill@avery.net can get a measure of revenge. ® Daily Net finance news from The Register

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