5. Panavision International v. Toeppen

Panavision International v. Toeppen
a. Facts: D created websites w/ domain names that are the trademark of Panavision. He had also registered hundreds of marks of other businesses. On the panavision.com site he showed pictures of Pana, Illinois.
b. Procedural History: district court found that under the effects doctrine, D was subject to personal jurisdiction in CA. District court granted summary judgment in favor of P for violating the trademark dilution act and the California anti-dilution statute.
c. Rule: in order to prove a violation of the federal trademark dilution act, a P must prove
i. The mark is famous;
ii. The D is making a commercial use of the mark in commerce;
iii. The D's use began after the mark became famous; and
iv. The D's use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish gods and services.
d. Commercial Use:
i. Reason: D's "business" is to register trademarks as domain names and then sell them to the rightful trademark owners.
1. D traded on the value of P's marks. So long as he held the internet registrations, he curtailed P's exploitation of the value of its trademarks on the internet, a value which D then used when he attempted to sell the panavision.com domain name to D.
ii. Held: D made a commercial use of P's trademarks. It does not matter that he did not attach the marks to a product. D's commercial use was his attempt to sell the trademarks themselves.
e. Dilution:
i. Definition: dilution is defined as the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of
1. Competition between the owner of the famous mark and other parties, or
2. Likelihood of confusion, mistake or deception.
ii. Reason: a significant purpose of a domain name is to identify the entity that owns the website. The customer who is unsure about a company's domain name will often guess that the domain name is also the company's name. A domain name mirroring a corporate name may be a valuable corporate asset.
1. Potential customers may be discouraged if they can't find the P's website they're looking for.
f. Held: D's registering of the P's trademark dilutes the trademarks w/in the meaning of the acts.

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