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Sixth Circuit finds no trademark violation in post-domain paths
Posted by Steven Wu on Saturday, April 12 @ 00:58:05 EDT Trademark
In the case of Interactive Products Corp. v. a2z Mobile Office Solutions, Inc. [PDF], No. 01-3590, the Sixth Circuit has ruled that the use of a registered trademark in the post-domain path of a URL does not violate trademark law because it is unlikely to create customer confusion regarding the origins of the goods offered at the website.

The post-domain path of a URL is everything after the domain name, e.g. anything after "nytimes.com" or "lawmeme.org."

Read the opinion here. (Link via How Appealing.) Or, if you're short on time, read a summary of the case inside.

Facts

Plaintiff Interactive Products Corp. (IPC) manufactures and sells a portable computer stand called the Lap Traveler, which is a registered trademark of IPC. Defendant a2z sells the Lap Traveler on its website at the URL a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm.

In 1998 the partners who formed IPC split up; the defecting partner, Douglas Mayer, agreed that the remaining partner, Mark Comeaux, would retain the exclusive right to use the "Lap Traveler" name. Mayer subsequently formed a new company, Mobile Office Enterprise, Inc. (MOE), which soon developed a portable computer stand called the Mobile Desk.

Around the same time, IPC told a2z to stop selling Lap Travelers. a2z complied and began selling Mobile Desks instead, but at the same URL (a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm).

Shortly thereafter, Comeaux (of IPC) realized that Internet searches of the word "Lap Traveler" consistently listed a2z's Mobile-Desk-selling page as one of the results. IPC then brought suit against a2z for, among other things, "a2z's use of the term 'laptraveler' in the post-domain path of the URL for a2z's portable-computer-stand web page."

Argument

Here are excerpts from the opinion that basically summarize the relevant holding.

"[T]o succeed on any of its trademark claims at issue in this appeal, IPC must show that the presence of its trademark in the post-domain path of a2z's portable-computer-stand web page is likely to cause confusion among consumers regarding the origin of the goods offered by the parties."

"[I]n this case, there is a preliminary question about whether defendants are using the challenged mark in a way that identifies the source of their goods. If defendants are only using IPC's trademark in a 'non-trademark' way--that is, in a way that does not identify the source of a product--then trademark infringement and false designation of origin laws do not apply."

"Stated another way, the issue is whether a consumer is likely to notice 'laptraveler' in the post-domain path and then think that the Mobile Desk may be produced by the same company (or a company affiliated with the company) that makes the Lap Traveler."

Previously, courts have ruled that "the use of another's trademark in one's website domain name violates trademark law." "But these courts have all relied on the fact that domain names usually signify source. . . . The post-domain path of a URL, however, does not typically signify source. The post-domain path merely shows how the website's data is organized within the host computer's files."

"Typically, web pages containing post-domain paths are not reached by entering the full URL into a browser; instead, these secondary pages are usually reached via a link from the website's homepage, which does not contain a post-domain path. For example, a consumer wanting to purchase a Lap Traveler product would probably not enter 'a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm' into a browser. The consumer would more likely enter 'LapTraveler.com,' which would bring the consumer to IPC's website, which sells the Lap Traveler."

"Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate trademark law. For purposes of the present case, however, it is enough to find that IPC has not presented any evidence that the presence of 'laptraveler' in the post-domain path of a2z's portable-computer-stand web page is likely to cause consumer confusion regarding the source of the web page or the source of the Mobile Desk product, which is offered for sale on the web page."

(The court then deals with the search-engine problem in the footnotes. It cites the plaintiff's expert witness's testimony that "the path name does not bias a search engine," but it dismisses any argument regarding search-engin results largely because (1) there was no evidence that the defendant did anything "nefarious" to boost its search-engine rankings, and (2) there was no evidence about why the defendant's web page came up when a search for "laptraveler" was performed.)

 
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Re: Sixth Circuit finds no trademark violation in post-domain paths (Score: 1)
by markgritter on Monday, April 14 @ 14:23:52 EDT
(User Info | Send a Message) http://www-cs-students.stanford.edu/~mgritter/
I think this decision actually raises more questions than it answers, and may not be a good precedent. For one, it assumes domain names are always two levels. What about trademark.mydomain.net? Does mydomain.net convey "source" sufficiently to override the trademark in its subdomain? It's hard for a me to see any difference between this and mypage.net/trademark, and I'd dislike having the legal system enforce such a difference. If domain names were written TLD-first, would the court have ruled differently? (com.microsoft, like file paths, instead of microsoft.com, like postal addresses.) But maybe that's why I'm an academic, not a lawyer. It also seems incorrect that the path part of the URL "serves a different function" (quoted in this opinion from Patmount Motor Works). That's probably true if you type URLs in at random, but not if you're using a search engine; seeing the entire URL can help make a determination of the relevance of the link. Certainly if somebody searched for "Lap Traveller" and saw "laptraveller" in the URL, it's probably going to be viewed as more relevant than one which has "mobiledesk". So, I'm not convinced this was the correct decision at all; I think there is a good argument that using a trademark in this way is misleading. If I saw a URL which was http://bargainbasementlaptops.com/ibmthinkpad, I'd consider it trademark violation to be selling something that wasn't an IBM ThinkPad on that page. We need to fight such arbitrary syntactic distinctions and really push for a policy where infringing and non-infringing use is clearly distinguished; the entire URL is (at least potentially) expressive and needs to be treated as such.


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