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Atlas Copco AB, et al. v. ATLASCOPCOIRAN.COM, et al.
Civil Action No. 1:07cv1208 (GBL/TCB), 2008 WL 149128 , E.D.Va., 01/08/2008
Holding
The U.S. District Court for the Eastern District of Virginia ruled that ATLASCOPCOIRAN.COM” and other similarly named internet domain names were confusingly similar to plaintiffs' “ATLAS COPCO” trademark. The dominant portion of each of the domain names was “ATLAS COPCO” or “ATLAS,” which defendants combined with generic terms “CASPIAN” and “IRAN." As such, there was failure to distinguish the domain names from plaintiffs’ “ATLAS COPCO” trademark. In so holding, the district court concluded that the use of infringing domain names by defendants done in conjunction with a “phishing” scam established a “bad faith intent” to profit from the “ATLAS COPCO” trademark. The district court thus issued a summary judgment in favor of plaintiffs on their in rem cyberpiracy claim brought under the Anticybersquatting Consumer Protection Act (ACPA).
Detailed Summary
Plaintiffs Atlas Copco AB and Atlas Copco North America LLC (collectively “Plaintiffs”) filed their verified complaint instituting this in rem action under the ACPA, 15 U.S.C. § 1125 et seq. against ATLASCOPCOIRAN.COM, ATLASCASPIAN.COM, ATLASCASPIAN.NET, ATLASCASPIAN.ORG, ATLASCASPIAN.BIZ, ATLASCASPIANIR.COM, ATLASCASPIANIRAN.COM, ATLASCASPIAN.US, ATLASCASPIAN.CC, ATLASCASPIAN.TV, and ATLAS-CASPIAN.COM (the “Defendant Domain Names”). Defendant Domain Names failed to respond to the complaint as the time for doing so eventually expired. Plaintiffs filed their motion for summary judgment pursuant to Fed.R.Civ.P. 56 and Local Civil Rule 56.
The ACPA, the law applicable in this case, provides: “A person shall be liable in a civil action by the owner of a mark ... if, without regard to the goods or services of the parties, that person-(i) has a bad faith intent to profit from that mark ...; and (ii) registers, traffics in, or uses a domain name that-(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark....” 15 U.S.C. § 1125(d)(1)(A).
The issue for resolution in this case was whether plaintiffs were able to establish the foregoing elements of their cyberpiracy claim under the ACPA of the Lanham Act. The court resolved this issue in favor of plaintiffs. Particularly, the court found that Defendant Domain Names were being used with “a bad faith intent to profit” from the ATLAS COPCO trademark pursuant to 15 U.S.C. § 1125(d)(1)(B)(i)(V), (VII) & (VIII). In so holding, the court stated that the use of the Defendant Domain Names in conjunction with a “phishing” scam established “a bad faith intent to profit” from the ATLAS COPCO trademark. Defendant Domain Names were being used to deceive and divert Internet users seeking genuine Atlas Copco-brand products or services.
It is well established that intent to confuse gives rise to a presumption of confusion. Quoting the Fourth Circuit, the court held that it could be presumed “that the person who sets out to infringe on another’s trademark has more brains than scruples and will likely succeed.” Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 38 U.S.P.Q.2d 1449, 1456 (4th Cir.1996). Even without a presumption of confusion, the court found that Defendant Domain Names were “confusingly similar to the ATLAS COPCO trademark.” The similarity of two marks is determined by examining the “dominant or salient portions of the marks.” Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 936 (4th Cir.1995).
Here, the dominant portion of each of the domain names was “ATLAS COPCO” or “ATLAS,” which defendants combined with generic terms “CASPIAN” and “IRAN.” As such, there was failure to distinguish the domain names from plaintiffs’ “ATLAS COPCO” trademark. An internet user might reasonably assume that the geographic term “CASPIAN” and “IRAN” were added to the ATLAS COPCO trademark by plaintiffs to identify its geographic location. Accord Prime Publishers, Inc. v. Am.-Republican, Inc., 160 F.Supp.2d 266, 280 (D.Conn.2001).
Given the foregoing discussion, the court granted plaintiffs’ motion for summary judgment, and ordered that the registrar of Defendant Domain Names be changed to Network Solutions, LLC.
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