In a decision that will likely help define the boundaries of
trademark owners' rights in domain names, the Ninth Circuit Court of
Appeals recently reversed and remanded a district court's broad
injunction prohibiting any use of the trademark LEXUS in domain names
used by an independent auto broker legally helping to sell LEXUS
automobiles. In Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et
al., No. 07-55344 (9th Cir. July 8, 2010), a unanimous panel robustly
applied the doctrine of nominative fair use to domain names. The
decision was authored by Chief Judge Alex Kozinski, who invented the
nominative use defence in the New Kids on the Block case 18 years ago,
write Andrew Baum and Jeffrey A. Kobulnick in this article published on
Mondaq, the online IP and technology legal blog.
Nominative fair use, the article notes, “provides protection to those
who use another's trademark for the purpose of identifying the brand
without suggesting affiliation or sponsorship with the brand owner.”
The case centred around Toyota claiming that the use of “Lexus” in the
domain names buy-a-lexus.com and buyorleaselexus.com infringed its
trademark rights. Originally the district court supported Toyota “that
prohibited the Tabaris (the registrants) from using ‘any ... domain
name, service mark, trademark, trade name, meta tag or other commercial
indication of origin that includes the mark LEXUS.’ The Ninth Circuit
reversed in light of the nominative fair use doctrine and First
Amendment concerns.”
To read this article in full, free registration is required, but go
to mondaq.com/unitedstates/article.asp?articleid=105948.
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