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21-496: For example, in Panavision Int'l L.P. v. Toeppen , 141 F.3d 1316 (9th Cir. 1998), Dennis Toeppen registered the domain name Panavision.com. Panavision, the trademark owner, learned that Toeppen had registered its trademark when it attempted to register the trademark "Panavision" as a domain name. Toeppen was using the domain panavision.com to display photographs of Pana , Illinois, and, when asked to cease, he offered to sell

42-561: A domain name registrant who: A trademark is famous if the owner can prove that the mark "is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner". "Trafficking" in the context of domain names includes, but is not limited to "sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration". The ACPA also requires that

63-557: A domain name, but only when the domain name is registered for profitable resale. The Ninth Circuit Court of Appeals caused a stir in 2013 when it held, in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com , 737 F.3d 546 (9th Cir. 2013), petition for cert. denied 135 S.Ct. 55 (2014), that there is no cause of action for contributory cybersquatting, i.e. secondary liability under the ACPA. It so held notwithstanding

84-957: A novel approach not subject to regulation as a public utility. By 1985, Toeppen had captured approximately 50% of Greyhound's ridership. Toeppen also started Allerton Charter Coach, Inc., a charter bus company with three buses and four vans as of 2014. It operated as a subcontractor for Suburban Express. Suburban Express and Allerton Charter Coach stopped operating in May 2019. Said Toeppen, "I stopped enjoying this business around 2001, and I think it's beginning to show." In 1995, Toeppen registered about 200 internet domain names including some which were similar to well known companies and popular trademarks. Some of them included panavision.com ( Panavision ), deltaairlines.com ( Delta Air Lines ), neiman-marcus.com ( Neiman Marcus ), eddiebauer.com ( Eddie Bauer ) and yankeestadium.com ( New York Yankees ). Some of these companies, like Delta Air Lines, paid Toeppen to acquire

105-667: A term that was first used by a court in 1998. In November 1999, after the Panavision case had ended, and while Intermatic Inc. v. Toeppen was still pending, the United States gave trademark holders a cause of action against registrants of domain names containing trademarks, in the Anticybersquatting Consumer Protection Act . By 2023, Toeppen's domain sales from the initial domain registrations totaled more than USD 2 Million. Domaining Too Many Requests If you report this error to

126-443: Is the business of registering a domain name and parking it or placing pay-per-click ads on it. Domainers rely on type-in traffic , which is when Internet surfers type in the domain name rather than using a search engine . Domainers can make a lot of money by buying and selling domain names. Some domainers relied on domain tasting , which involves placing pay-per-click ads on the domain for five days (or less) to determine whether

147-1014: The University of Illinois at Urbana–Champaign , majoring in electrical engineering. He later changed his major to business, and graduated with a BS in Finance in 1987. Thereafter, he attended the University of Illinois at Urbana–Champaign, where he earned a BS in Economics, Northwestern University , where he earned an MS in Transportation, and University of Chicago , where he earned an MBA, and Parkland College , where he earned an AS in Construction Management. In 1983, Toeppen founded Suburban Express to provide transportation from University of Illinois to Chicago Suburbs. Toeppen attacked monopolist Greyhound Lines using

168-631: The ACPA, a trademark owner can choose to pursue an administrative proceeding under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows a trademark owner to challenge domain name registrations in expedited administrative proceedings. A UDRP proceeding can be faster and cheaper for trademark owners than an ACPA lawsuit. Also, UDRP outcomes tend to be pro-plaintiff because many UDRP arbitrators are trademark lawyers. However, some trademark owners prefer to bring ACPA claims because they offer more remedies than

189-465: The ads will make more than the annual cost of the domain. If the domain is dropped within the five-day grace period, no fee is incurred. An industry has grown up out of this business with domainers taking part in these mass registrations. This practice was largely eliminated by 2009, when ICANN began raising fees to registrars with excessive domain tasting. In Verizon California, Inc. v. Navigation Catalyst Systems , 568 F. Supp. 2d 1088 (C.D. Cal. 2008),

210-431: The cancellation or transfer of the domain name (the only remedies available under UDRP proceedings) and a court ruling can lead to a final resolution of the matter. Also, a suit under the ACPA may deter future cybersquatters more effectively than a UDRP proceeding. While the ACPA contemplated the purchase of domain names for resale to trademark owners, it did not contemplate the more modern practice of domaining . Domaining

231-475: The confusingly similar domain names with a bad faith intent to profit. Dennis Toeppen Dennis Toeppen (born 1964) is an American entrepreneur and owner of bus company Suburban Express. He was a party to two cases of first impression relating to domain name registration. Dennis Eric Toeppen grew up in Mount Prospect, Illinois . He graduated from Prospect High School in 1982 and enrolled at

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252-613: The court found Defendant had a bona fide noncommercial use of the mark, therefore, the ACPA claim failed. "Defendant's motive for registering the disputed domain names was to express his customer dissatisfaction through the medium of the Internet." The domain name registrar or registry or other domain name authority is not liable for injunctive or monetary relief except in the case of bad faith or reckless disregard. While § 1125 protects trademark owners, 15 U.S.C. § 1129 protects any living person from having their personal name included in

273-419: The court found that the first two prongs of Mayflower's ACPA claim were easily met because (1) their registered trademark was distinctive and (2) Defendant's "mayflowervanline.com" was confusingly similar to Plaintiff's Mayflower trademark. However, when the court was examining the third prong of Plaintiff's ACPA claim, whether Defendant registered its domain name with the bad faith intent to profit from Plaintiff,

294-405: The domain be transferred to Intermatic but ruled Intermatic had not proven willful trademark infringement or unfair competition. Both the Panavision and Intermatic cases were matters of first impression for the U.S. Courts in dealing with trademarks and domain registrations. The practice of registering trademarked words as domains for sale to trademark holders became known as " cybersquatting ",

315-462: The domain name to Panavision for $ 13,000. After Panavision refused to buy the domain name from Toeppen, he registered its other trademark, Panaflex, as a domain name. The Court held that the FTDA could be violated without the traditional tarnishing or blurring the courts had required. Rulings like this extended the FTDA substantially. Under the ACPA, a trademark owner may bring a cause of action against

336-444: The domain names from him. In 1996, Panavision , a camera manufacturing company, sued Toeppen for trademark infringement instead of paying him $ 13,000 for the domain. In 1998, the court ruled that Toeppen had to relinquish the domain name to Panavision. In a similar case brought in 1996, Intermatic Inc., a timer manufacturing company, sued Toeppen rather than pay him $ 5,000 for the domain name intermatic.com. The court ruled that

357-505: The domainer lost under the ACPA. One of the defendants, Basic Fusion, Inc. argued that they were not cybersquatters, but as an Internet registrar accredited by ICANN they could register domain names on behalf of its customers and it specialized in "bulk registration". Navigation Catalyst Systems , another defendant and a customer of Basic Fusion, used their "proprietary automated tool" to find domain names that were not already registered and then registered them using Basic Fusion. Navigation used

378-709: The extensive body of case law permitting such liability where a registrar is shown to have acted outside the normal ministerial bounds of domain registration. It also relied on Central Bank of Denver v. First Interstate Bank of Denver and premised on the Circuit Court's determination that the ACPA is not part of the Lanham Act and therefore not included in the rule permitting secondary liability for trademark infringement enunciated in Inwood Labs v. Ives Labs , 456 U.S. 844 (1982). The ACPA also provides that

399-404: The five days following the registration (the "advertisement grace period") to put advertisements on the websites making money from the advertisements even when they dropped the domain name registration before the five-day window closed. Plaintiff Verizon argued that defendants "registered" 1,392 domain names that were confusingly similar to plaintiff's trademarks. The Court found that defendants used

420-506: The mark be distinctive or famous at the time of registration. In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute: The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment , which includes gripe sites . In Mayflower Transit, L.L.C. v. Prince , 314 F. Supp. 2d 362 (D.N.J 2004),

441-459: The trademark owner can file an in rem action against the domain name in the judicial district where the domain name registrar, domain name registry, or other domain name authority registered or assigned the domain name is located if: This provision is rarely used, however, because many trademark owners can achieve the same results through a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding. Instead of suing in federal court under

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