Date:         Fri, 30 Apr 1999 09:32:31 -0700
Reply-To:     Steve <sxs@CONCENTRIC.NET>
Sender:       Vanagon Mailing List <vanagon@gerry.vanagon.com>
From:         Steve <sxs@CONCENTRIC.NET>
Subject:      Infringing Domain Names
Comments: To: "vanagon@vanagon.com" <vanagon@vanagon.com>
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For those with URLs that may infringe trademarks, this just
hot off the press from the 9th Circuit court of appeals (one
level below U.S. Supreme Court)

"MOVIEBUFF" TRADEMARK CLAIM TRUMPS "MOVIEBUFF.COM"
DOMAIN REGISTRATION

The Ninth Circuit has instructed a federal district
court to enjoin use of a domain name that infringes
on a senior user's trademark. The underlying dispute
involved two companies that provide searchable
entertainment databases.

Brookfield Communications began offering software
and services for entertainment industry
professionals in 1987. It expanded into the broader
consumer market for entertainment industry
information in December 1993, using the "MovieBuff"
trademark. It obtained California trademark
registration for the mark in 1994. In August 1997,
it began using "MovieBuff" in association with
Internet-based products and services. It also
applied for federal trademark registration, which
issued in September 1998.

West Coast Entertainment, a national video rental
store chain, obtained federal registration for "The
Movie Buff's Movie Store" in 1991. That registration
covered video sales and rentals. It registered the
"moviebuff.com" domain with Network Solutions in
February 1996. In November 1998, West Coast
announced plans to launch an entertainment database
web site at its domain.

The district court denied Brookfield's motion for a
preliminary injunction against West Coast's use of
"MovieBuff" to market its services. The Ninth
Circuit reversed.

Brookfield was the senior user of the "MovieBuff"
mark, because it first associated the mark with
Internet-based products and services in August 1997.
West Coast did not do so until its November 1998
announcement. Its 1996 domain registration was not a
sufficient commercial use of the mark to confer
trademark rights.

There was sufficient likelihood of confusion to
enjoin West Coast's use of the "moviebuff.com"
domain and of the term "moviebuff" in any meta tags
on its web pages. West Coast may still use the
descriptive term "movie buff" with a space to
describe a motion picture enthusiast.

Brookfield Communications, Inc. v. West Coast
Entertainment Corp., No. 98-56918 (9th Cir.