

| Subject: | Infringing Domain Names |
| From: | Steve |
| Date: | Fri, 30 Apr 1999 09:32:31 -0700 |
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.
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