Porsche Cars North America, Inc. v. Porsche.Net
| Decision Date | 23 August 2002 |
| Docket Number | No. 01-2028.,No. 01-2073.,01-2028.,01-2073. |
| Citation | 302 F.3d 248 |
| Parties | PORSCHE CARS NORTH AMERICA, INCORPORATED; Dr. Ing. H.C.F. Porsche AG, Plaintiffs-Appellants, v. PORSCHE.NET; Porscheclub.Net; Porscheloans.Com; Porschelease.Com; Porscheloan.Com, Defendants-Appellees, and Porsch.Com, an internet domain name and the following internet domain names: Porschecar.Com; Porschagirls.Com; 928 Porsche.Com; Accessories4porsche.Com; Allporsche.Com; Beverlyhillsporsche.Com; Boxster.Com; Boxster.Net; Boxsters.Com; Buyaporsche.Com; Calporsche.Com; E-Porsche.Com; Everythingporsche.Com; Formulaporsche.Com; Iansporsche.Com; Idoporsche.Com; Laporsche.Com; Lynchporsche.Com; Myporsche.Com; Newporsche.Com; Parts4porsche.Com; Po[Zero]Rsche.Com; Passion-Porsche.Com; Porsche.Org; Porsche-911.Com; Porsche-911.Net; Porsche-944.Com; Porsche-Accessories.Com; Porsche-Autos.Com; Porsche-Books.Com; Porsche-Carrera.Com; Porsche-Cars.Com; Porsche-City.Com; Porsche-Classic.Com; Porsche-Exchange.Com; Porsche-Leasing.Com; Porsche-Lynn.Com; Porsche-Modellclub.Com; Porsche-Munich.Com; Porsche-Net.Com; Porsche-NI.Com; Porsche-Online.Com; Porsche-Rs.Com; Porsche-Sales.Com; Porsche-Service.Com; Porsche-Supercup.Com; Porsche-Web.Com; Porsche356.Com; Porsche4me.Com; Porsche4sale.Com; Porsche911.Com; Porsche911.Net; Porsche911.Org; Porsche911parts.Com; Porsche914.Com; Porsche924.Com; Porsche944.Com; Porsche993.Com; Porsche996.Com; Porscheag.Com; Porscheaudiparts.Com; Porschebooks.Com; Porscheboxter.Com; Porschecarrera.Com; Porschecars.Com; Porschecarsales.Com; Porschecarsforsale.Com; Porschecasino.Com; Porschechat.Com; Porscheclassified.Com; Porscheclub.Org; Porscheconnection.Com; Porschedealer.Com; Porschedealer.Net; Porschedealers.Com; Porschedealers.Net; Porschedirect.Com; P[Orschedirect.Net]; Porschedoctor.Com; Porschefans.Com; Porschefleet.Com; Porscheformula.Com; Porschefx.Com; Porschegt.Com; Porschehaus.Com; Porschelynn.Com; Porschemail.Com; Porschenow.Com; Porschenut.Com; Porscheonline.Com; Porscheowner.Com; Porscheowners.Com; Porscheownersclub.Com; Porscheparts.Com; Porscheparts.Net; Porschephiles.Org; Porscheproducts.Com; Porscheracing.Com; Porscherims.Com; Porsches.Com; Porschesales.Com; Porschesalestoday.Com; Porschescape.Com; Porscheservice.Com; Porschesplayhouse.Com; Porschestore.Net; Porschestore.Com; Porschestuff.Com; Porschesucks.Com; Porschetoday.Com; Porschetrader.Com; Porscheweb.Com; Porscheworld.Com; Porschezentrum.Com; Porschezentrum.Net; Porsche.Com; Pristineporsche.Com; Porsche.Com; Ultimateporsche.Com; Usedporsche.Com; Usedporsches.Com; Winaporsche.Com, Defendants. Porsche Cars North America, Incorporated; Dr. Ing. H.C.F. Porsche AG, Plaintiffs-Appellees, v. Porsche.Net; Porscheclub.Net, Defendants-Appellants, and Porsch.Com, an internet domain name and the following internet domain names: Porschecar.Com; Porschagirls.Com; 928Porsche.Com; Accessories4porsche.Com; Allporsche.Com; Beverlyhillsporsche.Com; Boxster.Com; Boxster.Net; Boxters.Com; Buyaporsche.Com; Calporsche.Com; E-Porsche.Com; Everythingporsche.Com; Formulaporsche.Com; Ianporsche.Com; Idoporsche.Com; Laporsche.Com; Lynchporsche.Com; Myporsche.Com; Newporsche.Com; Parts4porsche.Com; Po[Zero]Rsche.Com; Passion-Porsche.Com; Porsche.Org; Porsche-911.Com; Porsche-911.Net; Porsche-944.Com; Porsche-Accessories.Com; Porsche-Autos.Com; Porsche-Books.Com; Porsche-Carrera.Com; Porsche-Cars.Com; Porsche-City.Com; Porsche-Classic.Com; Porsche-Exchange.Com; Porsche-Leasing.Com; Porsche-Lynn.Com; Porsche-Modellclub.Com; Porsche-Munich.Com; Porsche-Net.Com; Porsche-NI.Com; Porsche-Online.Com; Porsche-Rs.Com; Porsche-Sales.Com; Porsche-Service.Com; Porsche-Supercup.Com; Porsche-Web.Com; Porsche356.Com; Porsche4me.Com; Porsche4sale.Com; Porsche911.Com; Porsche911.Net; Porsche911.Org; Porsche911parts.Com; Porsche914.Com; Porsche924.Com; Porsche944.Com; Porsche993.Com; Porsche996.Com; Porscheag.Com; Porscheaudiparts.Com; Porschebooks.Com; Porscheboxter.Com; Porschecarrera.Com; Porschecars.Com; Porschecarsales.Com; Porschecarsforsale.Com; Porschecasino.Com; Porschechat.Com; Porscheclassified.Com; Porscheclub.Org; Porcheconnection.Com; Porschedealer.Com; Porschedealer.Net; Porschedealers.Com; Porschedealers.Net; Porschedirect.Com; Porschedirect.Net; Porschedoctor.Com; Porschefans.Com; Porschefleet.Com; Porscheformula.Com; Porschefx.Com; Porschegt.Com; Porschehaus.Com; Porschelease.Com; Porscheloan.Com; Porscheloans.Com; Porschelynn.Com; Porschemail.Com; Porschenow.Com; Porschenut.Com; Porscheonline.Com; Porscheowner.Com; Porscheowners.Com; Porscheownersclub.Com; Porscheparts.Com; Porscheparts.Net; Porschephiles.Org; Porscheproducts.Com; Porscheracing.Com; Porscherims.Com; Porsches.Com; Porschesales.Com; Porschesalestoday.Com; Porschescape.Com; Porscheservice.Com; Porschesplayhouse.Com; Porschestore.Com; Porschestore.Net; Porschestuff.Com; Porschesucks.Com; Porschetoday.Com; Porschetrader.Com; Porscheweb.Com; Porscheworld.Com; Porschezentrum.Com; Porschezentrum.Net; Porsche.Com; Pristineporsche.Com; Porsche.Com; Ultimateporsche.Com; Usedporsche.Com; Porschestore.Com; Usedporches.Com; Winaporsche.Com, Defendants. |
| Court | U.S. Court of Appeals — Fourth Circuit |
Before WILKINSON, Chief Judge, MOTZ, Circuit Judge, and BOBBY R. BALDOCK, Senior Circuit Judge of the United States Court of Appeals for the Tenth Circuit, sitting by designation.
Affirmed in part, dismissed in part, and vacated and remanded in part by published opinion. Judge MOTZ wrote the opinion, in which Chief Judge WILKINSON and Senior Judge BALDOCK joined.
Porsche Cars North America, Incorporated and Dr. Ing. h.c.F. Porsche AG, a German company, brought this in rem action against certain Internet domain names related to the name "Porsche" or another Porsche trademark, seeking an injunction that would transfer the right to use the domain names. The Porsche companies contend that some of the domain names violated their rights under the Anticybersquatting Consumer Protection Act, 15 U.S.C.A. § 1125(d)(1) (West Supp.2002), and that all of the domain names diluted their trademark in contravention of 15 U.S.C.A. § 1125(c) (West 1998 & Supp 2002). The district court dismissed both claims. Because the district court rejected the anticybersquatting claims against some domain names on the basis of a challenge to in rem jurisdiction raised only three days before trial without excuse for the delay, we vacate the order dismissing those claims. However, because federal trademark-dilution law does not authorize the remedy Porsche seeks under 28 U.S.C.A. § 1655 (West 1994), we affirm the order dismissing the trademark-dilution claims.
The Internet is an "international computer network of both Federal and non-Federal interoperable packet switched data networks": a network of computers all around the world through which people communicate information to each other. 47 U.S.C.A. § 230(f)(1) (West 2001); see also 15 U.S.C.A. § 1127 (West Supp.2002) (); 47 U.S.C.A. § 231(e)(3) (West 2001) ().
Federal law defines a domain name as "any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet." 15 U.S.C.A. § 1127. Also known colloquially as a "Web address," a domain name is a combination of characters that a person types into a computer software program called a browser, in order to gain access to a Web site, a set of computer files through which another person provides information over the Internet. See Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 492-93 (2d Cir.2000).
A person seeking the right to use a particular domain name may register with one of a number of registrar organizations that assign domain names on a first-come first-served basis. See id. at 493. Many consumers look for a given company's Web site by checking to see if the company uses a domain name made up of the company's name or brand name with the suffix ".com." A person might, for example, look for information about Baltimore's major-league baseball team by typing "www.baltimoreorioles.com". For this reason, "companies strongly prefer that their domain name be comprised of the company or brand trademark and the suffix.com." Id.; see also Brookfield Communications, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1044-45 (9th Cir.1999).
On January 6, 1999, the two Porsche companies (collectively "Porsche") filed a trademark-dilution action under 15 U.S.C.A. § 1125(c) against 128 domain names related to Porsche trademarks. Porsche alleged that consumers' discovery on the Internet of domain names including Porsche's trademarks or their variants diluted its marks in violation of § 1125(c). In its complaint, Porsche sought only one form of relief — "[t]hat the Domain Names be preliminarily and permanently transferred ... to Porsche" — and asserted a single basis for in rem jurisdiction — 28 U.S.C.A. § 1655.
Few of the domain names offered any defense. The district court entered default judgments against many of them, and Porsche voluntarily dismissed its claims against many others. Five domain names did remain in the action. Christian Holmgreen, a British citizen, had registered two of them: porsche.net and porscheclub.net (collect...
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