Phonespell, L.L.C. v. Rugh, No. C-00-3025-MJJ (N.D. Cal. Nov. 27, 2001).
Factual Background Edit
Plaintiff provides services under the mark and name PHONESPELL to assist others in selecting and obtaining vanity telephone numbers based upon the words that the numbers spell. Plaintiff offers these services on the Internet at its "phonespell.org" website. Defendant, engaged in the same business, registered and used the domain names "phonespell.com," "phonespell.net," "phonesspell.com," "phonespel.com," and "phonespel.org" after a failed attempt to purchase the domain name "phonespell.org" from plaintiff. Defendant acquired the "phonespell.com" name from a third party, Taka Communications ("Taka").
Trial Court Proceedings Edit
Among other claims, plaintiff asserted that defendant's registration and use of these domain names violated the ACPA . Defendant filed a motion to dismiss arguing that plaintiff failed to allege that its PHONESPELL mark was distinctive at the time that the domain name "phonespell.com" was initially registered by Taka. Defendant asserted that the initial registration date of the domain name by Taka was the critical date under the ACPA for which plaintiff must allege and eventually prove that its mark had acquired distinctiveness.
The ACPA provides in pertinent part that liability exists when someone registers, traffics in, or uses a domain name that is identical or confusingly similar to a mark that was "distinctive at the time of registration of the domain name." According to defendant, the term "registration" in the ACPA refers to initial registration of a domain name and not to "downstream" transfers of ownership.
Plaintiff countered that the ACPA does not distinguish between prior registrants or initial registrants or the point in time when a domain name is registered. The court agreed with plaintiff and denied defendant's motion to dismiss, holding that the ACPA may apply to subsequent registrants of allegedly infringing or dilutive domain names. According to the court, the term "registration" as used in the ACPA is not ambiguous and the lack of temporal restrictions on the term "registration" was consistent with the court's view that Congress was also concerned about "downstream" cybersquatting when enacting the ACPA.
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