Nonlawyer at 9th Circuit Beats Toyota on : buy-a-lexus.com and buyorleaselexus.com

[companyone]

Hi

Very nice victory for the "small guy"...

_____

Nonlawyer at 9th Circuit Beats Toyota on Trademark Law

A pro se litigant took on Toyota and won Thursday when the 9th U.S. Circuit Court of Appeals held that her family business's domain names, buy-a-lexus.com and buyorleaselexus.com, did not infringe on the auto giant's trademark.

The trial court's injunction barring Lisa and Farzad Tabari from using the word Lexus in their brokerage's website address was "plainly overbroad," Chief Judge Alex Kozinski wrote for the majority.

"It prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement," Kozinski wrote. "The Tabaris are prohibited from doing business at sites like independentlexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn't believe Toyota sponsors the websites using those domains."

The three-judge panel remanded the case to the district court where "the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris."

Reached at her Mission Viejo, Calif., home Thursday, Lisa Tabari said she was "in shock," as she was focused on preparing for her 12-year-old daughter's birthday party, not a court ruling. "This was the best gift in the world." Source with much more

[draggar]

So they don't have permission from Toyota to use their TM "Lexus" and have it in their domain names. They don't even work for Toyota or a dealership.

They're a brokerage that "links potential Lexus buyers to dealers" (why can't people go to the dealerships themselves?).

Lexus is not a generic and they were using the name to clearly make money off of Toyota's trademart / products without selling them.

Sounds like a new level of domain "parking" to me and it looks to me like they were infringing on the TM.

While I do agree many companies have gone way beyond with WIPO cases in the past (and present) - I think Toyota was in the right with this one.

[TwoStep420]

Did you read the whole opinion?

So they don't have permission from Toyota to use their TM "Lexus" and have it in their domain names. They don't even work for Toyota or a dealership.

They're a brokerage that "links potential Lexus buyers to dealers" (why can't people go to the dealerships themselves?).

Lexus is not a generic and they were using the name to clearly make money off of Toyota's trademart / products without selling them.

Sounds like a new level of domain "parking" to me and it looks to me like they were infringing on the TM.

While I do agree many companies have gone way beyond with WIPO cases in the past (and present) - I think Toyota was in the right with this one.

[enterpryzman]

sounds good to me, this is just some creative domaining to beat search. I agree with what I read, not that it matters and am somewhat shocked the judges did this.
Enterpryzman

[draggar]

Did you read the whole opinion?

Yep, including this part:

The panel held that the Tabaris' use of the word Lexus did not suggest the company sponsored or endorsed the brokerage. The word was descriptive, Kozinski wrote, and a nominative fair use not subject to an infringement claim.
"The wholesale prohibition of nominative use in domain names ... would be unfair," the court held. "The only winners would be companies like Toyota, which would acquire greater control over the markets for goods and services related to their trademarked brands, to the detriment of competition and consumers."

So does this mean I can register a domain like Buy-Microsoft-Software.com and fill it with Amazon.com links?

Technically it would be the same thing - I'm setting up a brokerage for people to buy MS products. I highly doubt the defendants in this case did it for free so Amazon affiliate comissions would be my fee for the site. Accoridng to this I should be safe as long as I have the "this site is not affiliated with Microsoft" disclaimer? How about if I also had a contact form for people to email me questions about MS products and just pointed them to local stores where I got kickbacks?

Let's go one step further - I'll park the domain at Parked.com and add in the disclaimer in the customizeable text field. How many times have we seen complainants claim that parking a page is cybersquatting / infringing?

How many people have lost similar sites in the past? How much money have they lost though this?

Yet then we see cases like Nissan.com where the owner is legitemate (he's using his family name - so what if he fixed cars in the past and now does computer work?) have to spend tens of thousands of dollars defending their own rights. (In fact, Nissan motors filed for a TM on computers and related items using the name Nissan long after the suit started).

I would have a different stance if they worked at or or owned a Lexus dealership and used the site for the dealership (since they of have agreements on that).

It's also not something that would be hard to find. We're talking about a Lexus - I'm sure people can find local dealerships though Toyota's site and Lexus' site or at least pick up the phonebook. Heck, most people could just drive down their local "auto sales strip" (most areas have these) and find a Lexus dealership and they can also look online for reviews.

I think this judgement will come up in many WIPO cases in the future, and possibly even ones going on now.

I'll agree with enterpryzman - that was very creative. They found a little niche that really wasn't needed and made people think they needed it. That's brilliant and I'm sure they had a great marketing strategy, too. What they did was very difficult.

[Banned: adonivideo]

wipo trumps 9th circuit, so wipo won't use it IMO

it's not precedent setting case law for wipo to use, wipo is international tribunal IP law, and maybe a USSC case has some weight, but a 9th circ. ruling that is so new won't do much at WIPO imo

they have their case law on TM's and domains now at wipo

why lexus used 9th circuit is the issue

or was the TM user doing the 9th Circ. play?

yep, USA TM law is probably easier on this, and 9th circ. is easiest CA in US courts

the 9th circuit in legal realms is a known fruit loop circuit, they make their own laws, they're known for this type of crap, judicial legislation, they don't interpret law, they try to create it, a bunch of loons in 9th CA

so if lexus appeals which they will, then the USSC should rule and decide if 9th was right

then if USSC agrees, yeah, wipo may weigh it on their own use rules

wipo would look at this as fair use probably

lexus sells cars, their dealers resell, so it probably infringes on lexus dealers rights, but the dealers don't have the TM, lexus does, so the core issue is, does lexus have the right to protect what they sell to dealers as to use of their TM, they should in this case, now if they said LexusLemons.com and had a rant page on how lexus stinks, that's fair use, IMO and such sites can use a TM, a rant or fan site is fair use IMO and wipo case law has allowed limited fair use of TM's in combos, and of course if a business has a TM somehow in their name they have clear rights to reg TM's

this isn't over

ussc will weigh in

so 12 or 18 months from now you will know if it sticks

lexus has big money to go to next step, been in USSC 6 times so far, so they'll go, I would if I were lexus and I would not have allowed this to be in 9th CA, no way, so the lexus lawyers should of had this moved to a better CA

I haven't read the argument that won, but it probably went like this

anyone can resell any car they want in USA and you don't have to a licensed lexus dealer to resell lexus' so they don't have absolute control over who can resell a lexus, so it's 'fair use' for a used car dealer outside the lexus dealership world to use lexus IF they specialize in lexus vehicles as long as they do not say they are an authorized lexus dealer or lexus themselves

usedfordtruckengines.com

fair use probably legit

does ford have a monopoly right to used ford truck engines?

nope

anyone can resell anything they want

now if they say they're ford or authorized by ford, that's not fair

ford would definitely send a C&D on the above example, but would they pursue it

you can use TM's for some uses for sure, I do on a some, I don't like to, but my own TM is not connected to big monopolies so one of my TM's with combos we register and use all the time

I have yet to get one c&d on them

I did in mid 90's get c&d's on some fan TM's we had, so we turned them over or let them expire

normally it's not worth the aggravation

but in my case now, my main TM is part of my industry terminology where everyone says MY TM and other huge companies all the time

so I OWN THE .com of those phrases and trade as them

MYTRADEMARKfamoustrademark.com

it just so happens in one of my core industries, I have a generic name that describes the key way to sell the industry, and that generic word is always tied to huge companies

I'm gonna laugh at the first C&D that comes in saying I can't use my own TM connected to a phrase that is now common use in my industry

LOL

And they won't get the name and I will sue to protect it and if I get sued, I'll counter sue and get a ton of press and I'll win

use of TM's is not advised, but sometimes others have rights to use a TM

I know I do

generally I would advise against any TM useage, but sometimes TM's collide and if you don't compete with each other, combo TM's is a legit use, some generic terms with a TM is allowed, you know how many TM repair of GEO there are in business today, so if you can say look this company fixes that auto TM and they use the TM with auto repair, so why can't I say whatever I do, dealers fix and sell cars, yet auto repair shops can say they are TM auto repair of whereever and I can't say TM auto reseller .com?

or whatever

so sometimes TM's are allowed to be used

like I said I don't recommend it

but if you specialize in work on a TM you do a have right to say what you do IMO like TM auto repair of wherever

now if a TM owner goes after every auto repair shop in big markets using their TM's then maybe it's protected

but most don't go after ever TM use from what I've seen in the auto industry and I've been dealing with auto guys in business for almost 30 years

I've got a ton of clients with mercedes benz and jaguar and toyota in their names with auto repair and a geo and I've never seem them be harassed

but they could be eventually if the TM owner wants to blow money on it