Fame, "Nien! It's mine!" is just his line
To bind your time, it drives you to, crime
Fame

Could it be the best, could it be?
Really be, really, babe?
Could it be, my babe, could it, babe?
Really, really?

Is it any wonder I reject you first?
Fame, fame, fame, fame
Is it any wonder you are too cool to fool
Fame

Fame
What's your name?

- “Fame” by David Bowie ? 1975

Abstract

I. The Rights Generally Enjoyed by Celebrities under State Right of Publicity Statutes and Federal Trademark Law Do Not Become Rights in Gross

II. Celebrities in Cyberspace: Rights Against Cybersquatters Before and After the ACPA

III. Post-ACPA: Its Effects on Celebrities and Others Using Name Marks and Personal Names as Domain Names

Endnotes

 This paper will look at the aggregate rights which are afforded to celebrities as owners of valuable personal names resulting from the intersection of the recently enacted Anticybersquatter Consumer Protection Act (ACPA)  and rights held under state right of publicity statutes and federal trademark law.  Because Congress specifically extended the anti-cybersquatting provisions of the ACPA to protect personal names marks and personal names which are used as domain names, celebrities now have more protection under the Lanham Act  to prevent unscrupulous use of their names on the Internet.

Despite disclaimers by Congress in the statute’s legislative history stating that the ACPA is not intended to establish federal right of publicity rights to celebrities, application of the ACPA by the courts will be telling about how far celebrities can control the use of their marks on the Internet.  Even more importantly, a key issue will be whether or not these new protections lean towards creating rights in gross for a personal name mark of a celebrity or push the limits of that celebrity’s publicity rights.

 This paper will address three main points.  In the first section, I will outline the current rights which celebrities generally hold under state right of publicity statutes and under federal trademark law when celebrities’ names are used as trademarks or service marks.  When a celebrity’s publicity rights converge with trademark rights that person has acquired considerable protection against infringement even before his or her or her name is used on the Internet as a domain name.  Yet under the notion of “sweat equity” these publicity and trademark rights increase only as the celebrity works to increase the publicity rights in his or her persona or the business goodwill attached to his or her name mark.

Second, I will discuss the ACPA as it applies to celebrity name marks and personal names when, after being registered as domain names on the Internet, come under attack by cybersquatters.  Here, Congress’ intentions for application of the ACPA and the limits of its application, gleaned from the legislative history behind the Act suggest that because the ACPA are important in judging the rights celebrities have under the statute.  Here, analysis of statutory factors like intent, fame or distinctiveness, and traditional trademark defenses such as fair use, parody, and free speech concerns become crucial to balancing celebrity name protection with freedom of trade and freedom of expression on the Internet.

Last, in the third section, I will briefly summarize means by which some scholars believe can more efficiently accommodate both famous and unknown domain name registrants in their concurrent use of personal names as Internet addresses and whether the ACPA allows a celebrity to control his or her “fame” on the Internet indefinitely.

I. A. An Overview of Celebrity Publicity Rights

The right of publicity has been defined as the inherent right of every person to control the commercial use of his or her identity and is grounded in the right of privacy.  Though the right of publicity is applicable to any person, famous or not, who has commercial value in their identity, it is most often asserted by celebrities who wish to prevent the commercial misappropriation of his or her persona without their consent.   Celebrities now have several protectable aspects of their identities and can protect their personas from unauthorized use, although the unauthorized use must be commercial in nature such as wrongful use in advertising or endorsements.   Generally, a celebrity’s “persona” contains a broad array of commercially valuable components of his or her identity.  Though this paper is chiefly concerned with the rights a celebrity maintains in his or her name or nickname,  other protectable aspects of a celebrity’s persona include: use of a celebrity’s likeness  or use of something that evoke the likeness of a person,  voice,  performing style, distinctive character, and other indicia closely identified with a person.  In some states, the right of publicity is considered a descendable and transferable property right and can also be licensed.  In short, celebrities currently maintain a formidable array of protectable aspects of persona under state right of publicity statutes.

I. B. Rights Available if the Celebrity Has Trademark Rights in a Personal Name Mark.

When a celebrity establishes his or her name as a trademark or service mark to identify and distinguish a source of goods or services then their name mark becomes protectable as such.  Trademark infringement claims for registered marks are governed by Section 32 of the Lanham Trademark Act where one must show a “likelihood of confusion” between two disputed trademarks.   Also, Section 43(a) of the Lanham Act provides broad protection for both registered and unregistered trademark holders “...against confusion, or likelihood of confusion, as to the source of origin, sponsorship or association...” caused by an infringing mark.   Further, under this same section, the Federal Trademark Dilution Act (FTDA) allows holders of famous marks protection against dilution of their mark and only requires proof of a lessening of the capacity of a “famous” mark to identify and distinguish goods and services.

While a person can concurrently retain both publicity rights and trademark rights in their name, these rights are parallel and distinguishable.   When a celebrity asserts trademark rights in a personal name mark, that person gains the exclusive rights that reside in the “secondary meaning” of the customer meaning that has been built up by the level of the mark’s ability to act as a symbol of the good will of the marks’ commercial source.  Subsequently, the celebrity can then bring a trademark infringement action against those who intrude on this “secondary meaning.”   In other words, what is being infringed is “the personal name as a symbol of good will of a commercial enterprise [which] is addressed by trademark law”  and not by rights of publicity.

However, a celebrity still maintains the right of publicity in the “primary meaning” of his or her personal name.  Here, infringement occurs only when the celebrity’s “identifiability” is exploited without their consent.  Thus, a celebrity plaintiff whose name is also a personal name mark could bring claims for both trademark and publicity rights infringement.

For a celebrity name mark holder, protection against infringement of publicity rights and trademark rights flows through two different tests for infringement, each with a different level of proof.  First, to bring a claim of infringement against their publicity rights, a celebrity plaintiff need only show that he or she owns an enforceable right in their identity and that the defendant has infringed upon the person’s “identifiability.”   Contrast this test with what is required to prove trademark infringement.  Here, a celebrity plaintiff must show that the junior user’s use of his or her personal name mark created “likelihood of confusion” of source or sponsorship of goods or services.  For instance, a celebrity name mark holder like actor Paul Newman can potentially bring both types of infringement claims against alleged trespassers on his “Newman’s Own” line of food products since he has substantial commercial value in his name and uses his name as a source identifier for goods or services.

I. C. Looked at From the Concept of “Sweat Equity,” Celebrity Publicity and Trademark Rights for Personal Name Marks Do Not Lead to the Creation of Rights in Gross.

As discussed above, even before a celebrity has used his or her name as a domain name on the Internet, that celebrity can maintain a substantial “bundle” of publicity and trademark rights.  However, one might question whether the extensive protection afforded to a celebrity who uses their name to accumulate publicity and trademark rights approaches a level of “rights in gross” which is discouraged under both publicity and trademark law.  However, the justification for such broad potential publicity and trademark protection exists in the notion of “sweat equity.”  This labor theory is based on the idea that “the person who expends labor creating intellectual property is morally entitled to the fruits of that labor.”

  On the one hand, under this notion of sweat equity, since the rights being protected are that celebrity’s commercial value in his or her persona, the better known the celebrity is the more commercial value is created since their identifiability is strengthened.  On the other hand, if the same celebrity extends his or her famous name outwards to function as a source indicator for goods or services then he or she also maintains the right to protect the goodwill accumulated in the secondary meaning of their personal name mark.  It follows then that the more labor expended by a celebrity in promoting either his or her persona or the goodwill inherent in his or her personal name mark, the more rights are accrued in their name and the more protection should be afforded to that celebrity.  In sho . . .

[Nine lines of material have been lost at this point because of a faulty floppy disk.]

[The next, lost, heading was to be: II. Celebrities in Cyberspace: Rights Against Cybersquatters Before and After the ACPA]

. . .  ccessful attempts courts made in dealing with cybersquatting evidenced by courts stretching theories of trademark infringement and dilution in order to reach cybersquatters.  This section will briefly look at the old judicial approach to domain name cybersquatting and how it led to the creation of the ACPA.  It then examines the impact this new regime has on celebrity rights in personal names as domain names, the limits imposed on these rights under the ACPA, and how courts have applied the ACPA to recent cybersquatting cases.

II. A. Background on Domain Names and Cybersquatting Cases Before the ACPA: The Old Regime

Under the existing domain name system , one of the most serious issues facing owners of famous name marks has been “cybersquatting” or domain name piracy.  First coined in Intermit Inc. v. Toepen,  cybersquatters register domain names of famous companies, persons or products and then either attempt to extort money from the original trademark owner or capitalize on the chance misspellings of a popular domain name to promote their own endeavors.

 In cybersquatting’s relatively brief history, courts have struggled to apply traditional trademark law when deciding cybersquatting cases in spite of the fact that Congress intended for the FTDA to help trademark owners prevent domain name piracy.   Generally, courts have held that using another’s trademark as a domain name constitutes either trademark infringement.  More frequently, though, courts held that cybersquatting constitutes dilution by tarnishment, which can be either the linking of a mark to shoddy goods or in an unwholesome manner, or dilution by blurring, described as the lessening of the capacity of the mark to distinguish goods and services.

However, as more suits against cybersquatters emerged, especially those brought by owners of famous marks, it became clearer that cybersquatting actions could not fit into these traditional theories of trademark infringement and dilution.  Consequently, courts created a new extended theory of dilution which was applicable to cybersquatting.  First articulated in Panavision Int’l v. Toeppen  and recently acknowledged by the Ninth Circuit in Avery Dennison v. Sumpton , one of the last cybersquatting cases to be decided under the FTDA, “dilution by elimination” occurs when, by sitting on the famous mark, the cybersquatter eliminates the mark’s use by its owner to identify goods or services on the Internet.

 Many critics of the “dilution by elimination” were quick to point out the deficiencies of this approach.  Most notably, by applying dilution analysis to cybersquatting cases courts often struggled with statutory requirements of commercial use  and determining the requisite level of fame necessary for the mark’s protection under the FTDA.   Moreover, according to the legislative history to the ACPA, Congress viewed the legal remedies available in cybersquatting cases under the FTDA to be inadequate and uncertain.   In short, some legislative response was necessary to overcome the shortcomings of the application of the FTDA in cybersquatting cases.

II. B. The ACPA and the Rights it Affords to Personal Name Marks and Personal Names as Domain Names in Cybersquatting Cases

When creating the new federal remedy for cybersquatting, Congress not only learned from the misapplication of the FTDA to cybersquatting, but also extended the reach of the ACPA by granting protection to personal names when used as domain names.  Specifically, the ACPA governs both personal name marks as domain names and also protects individuals who use their personal names as domain names.  First, a key section of the ACPA, 15 U.S.C. § 1125(d)(1)(A), explicitly pertains to personal name marks as domain names and reads:

“A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name is identical or confusingly similar or dilutive or that mark;...”

Next, when individuals with personal names without trademark rights use their names as domain names, then protection against cyberpiracy is provided in 15 U.S.C. § 1125(d)(2)(D)(ii)(b)(1)(A) and reads:

“Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling [it]...shall be liable...”

An important exception follows this section which allows registering personal names of others which was apparently intended to protect record producers from potential liability, if they register the personal names of their recording artists as domain names in order to promote the sale of their records.  This section reads as follows:

“A person who in good faith registers a domain name consisting or the name of another living person...shall not be liable...if such name is used in...a work of authorship protected [by copyright]...and if the person registering the domain name is the copyright owner or licensee of the work. The person intends to sell the domain name in conjunction with the lawful exploitation of the work...”

Compared to the old regime of cybersquatting by dilution under the FTDA, the ACPA extends protection to personal name marks and personal names used as domain names.  Most importantly, a celebrity with a personal name mark which is also registered as a domain name gains protection under the ACPA without having to first establish that the name mark is “famous.”  Instead, the name mark holder need only show that the mark is distinctive and is confusingly similar to the infringing mark.   As shown below in Part II. D., following the Second Circuit’s application of the ACPA in Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc. , this is a lower standard than was required under the cybersquatting by dilution cases which required a showing of “fame” before a federal remedy for cybersquatting could be granted. Thus, if a personal name mark is registered as a domain name, the threshold for acquiring ACPA protection is only a showing of that the name mark is “distinctive” regardless of the level of fame of the mark.

II. C. Limits on the Rights Afforded Under the ACPA to Holders of Personal Name Marks and Personal Names Used as Domain Names

It is important to compare the protection the ACPA affords celebrities with personal names as domain names with the range of publicity and trademark rights which these celebrities may also hold.  Stringent limits on the applicability of the ACPA exist within the statute and its accompanying legislative history.  For instance, language within the ACPA attempts to balance legitimate use of a personal name mark or personal domain name and cybersquatting by requiring findings of specific bad-faith intent to profit from the cyberpiracy.  Moreover, these statutory limits coupled with Congress’ intent behind the enactment of the ACPA suggest that the rights afforded to celebrities with either personal name marks or with names having significant publicity rights are not significantly extended by the protections against cybersquatting afforded under the ACPA.  One could argue that, regardless of the publicity or trademarks rights held in a personal name, when a celebrity registers his or her name as a domain name then that person merely earns the right to have their name serve as a source indicator on the Internet.  In other words, as is arguably true of all domain names, the celebrity’s personal name merely functions as an address on the Internet.  By protecting against misappropriation of such addresses, the ACPA only serves to remedy a specific encroachment to the preexisting rights of a celebrity in cyberspace.

The legislative history of the ACPA sheds light on the ways Congress intended to limit the statute’s protection of those personal name marks and personal names which are used as domain names.  Congress emphasized its desire for the statute to balance narrow yet effective protection against cyberpiracy with legitimate on-line trademark usage and free-speech concerns.   Also, as can be seen in the sections of the statute quoted above, Congress’ careful and repeated inclusion of language in the statute focuses on the bad-faith or abusive intent of the alleged cybersquatter.  The protection against cyberpiracy of personal names as domain names afforded by the ACPA is restrained by the fact that the alleged cybersquatter’s specific bad faith intent to profit from the mark through its registry, trafficking or use on the Internet in order for that person liable for cybersquatting.  The House made it clear that the key factor in the ACPA’s extension of cyberpiracy protection for individuals was to be the finding of specific intent to profit from the domain name by selling it for financial gain.

However, a problem arises when the ACPA applies to those famous names which already enjoy significant publicity rights outside cyberspace. Specifically, when this situation occurs the statutory rights granted to celebrities come closest to stepping on the toes of those legitimate users of personal names as domain names.  Under the existing domain name system, under which it is most desirable to register a personal name as a domain name with a “.com” first-level domain, inevitable conflicts result when a person wishes to register a legitimate personal name or nickname which is similar to a well-known name mark or personal name.   Here, Congress recognized the right each person has to be identified by his or her name or nickname on a web site.

Further, when a celebrity registers his or her personal name as a domain name that person will naturally want to protect against encroachment by cybersquatters against his or her publicity rights in their name as it exists in their web site.  Here, one must question whether the ACPA anticybersquatter provisions too greatly increase a celebrity’s publicity rights on the web.  First, the House stated that the curtailment of cybersquatting of personal names which are used as domain names was to be the only goal of the statute and “[n]either this section [15 U.S.C. § 1125(d)(2)(D)(ii)(b)(1)(A) and (B)] nor any other section is intended to create a right of publicity of any kind with respect to domain names...[n]or any new property rights [in personal names used as domain names].”

Second, and more importantly, under the notion of sweat equity the publicity rights in a celebrity’s name have every right to exist in cyberspace when that person wishes to use their name as a domain name.  As discussed above, the theory of sweat equity allows the right of publicity to protect fame which results from labor.  Clearly, those persons who wish to register personal names as domain names do not all enter cyberspace with equal publicity rights since attaining commercial value in one’s persona depends on the labor spent developing this value.   Under the “intent to profit” test, the absence of a fame requirement for protection suggests the existence or absence of publicity rights in a name is irrelevant to gain protection under the statute.  Moreover, under section 15 U.S.C. § 1125(d)(2)(D)(ii)(b)(1)(A), the ACPA protects famous and unknown personal names alike regardless of the publicity rights which may exist in a personal name.  Thus, the publicity rights which a name may already carry with it are not expanded under the statute when a celebrity’s personal name is used as a domain name and that celebrity wishes to protect this domain name against cyberpiracy.

II. D. Application of the ACPA by the Courts: The First Wave of Cases

While no case has yet addressed the issue of the potential overextension of celebrity rights under the ACPA, the Second Circuit was the first court to apply the ACPA to a cybersquatter case in Sporty’s Farm.  Moreover, in Sporty’s Farm and more recently in Shields v. Zuccarini,  these courts have had to apply the statutory factors of the ACPA and interpret Congress’ intent behind the statute in order to correctly apply this new federal remedy for cybersquatting.  In Sporty’s Farm, after finding the disputed mark “sportys” as used in “sportys.com” to be “distinctive” but not “famous” and “confusingly similar” to the plaintiffs mark, the court held that the defendant acted with the requisite “bad faith intent to profit” from the mark when it registered the domain name sportys.com.   Though the mark “sportys” was not a name or nickname, the Second Circuit based its decision on a careful application of the multi-factored “bad faith” test which established solid precedent for future application of the ACPA to trademarks and name marks used as domain names.  For example, the court in Shields relied on the Second Circuit’s analysis in Sporty’s in reaching its conclusion that the plaintiff is likely to prevail on the merits of his ACPA claim.   Still it remains to be seen how celebrity plaintiffs will fare under the ACPA in order to protect their name marks or their personal names against cybersquatters.

As discussed in the section above, at the time of the writing of this article, no court has faced the issue of whether the aggregate rights of a celebrity name mark holder or a person with a famous name with intrinsic publicity rights are extended too far when that celebrity wishes to prevent the abuse of his or her domain name under the ACPA.   Yet it is clear from the language of the statue and from the legislative history that Congress was mindful of the statute’s application to name marks and famous personal names and wanted to narrow the applicability of the ACPA to such domain names accordingly.   Also, as the discussion of Sporty’s Farm shows, courts have already started down a much more assured path of fairly establishing liability in cybersquatter cases governed by the ACPA than through the old regime of cybersquatting by dilution under the FTDA.

 Additionally, more and more experts are calling for a restructuring of the current domain system in response to the rapid growth of the Internet and also in response to the continuing clashes between trademark and publicity rights and domain names.  Most importantly, many have called for the creation of additional first-level domain names which may be an effective solution to certain celebrity name mark issues on the Internet.  For example, some of the proposed first-level domains include “.firm” for businesses or firms, “.per” or .”nom” for personal web pages, and several others for more specific business and non-business activities.   However, the impact of such changes to the domain name system will have on domain name owners’ protection against cyberpiracy will take place in the courts since the ACPA does not consider variations in top level domains names. For now, though, the ACPA does not seem to expand the rights of celebrities with name marks or personal names as domain names.

[NOTE: The word processor version of this paper numbers the endnote calls in the text and the endnotes. Although the endnotes are here, the numbering of endnote calls, and endnotes, was lost in the transposition to HTML.]

15 U.S.C. § 1125(d) (1999).

  See id. § 1051-1127 (1996).

  J. Thomas McCarthy, Melville B. Nimmer and the Right of
Publicity: A Tribute, 34 U.C.L.A. L. REV. 1703, 1704 (1987). See
also, J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, § 28:1 (4th ed. 1996).

  See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46 (1995) (“One who appropriates the commercial value of a person’s identity by using without consent the person’s name, likeness or other indicia of identity for purposes of trade is subject to liability.”).

  See id. §§ 46-49.

  See J. Thomas McCarthy, THE RIGHTS OF PUBLICITY AND PRIVACY §§ 4.9-4.15 (1997).

  See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 845 (6th Cir. 1983) (holding that the phrase “Here’s Johnny” used for portable toilets violated Johnny Carson’s right of publicity).

  See, e.g., Allen v. National Video, Inc., 610 F. Supp. 612,  226 U.S.P.Q. 483 (S.D. N.Y. 1985) (finding that the use of a Woody Allen look alike in a television commercial violated Woody Allen’s publicity rights).

  See White v. Samsung Electronics America, Inc., 971 F.2d 1395, 23 U.S.P.Q.2d 1583 (9th Cir. 1992) (the use of a robot dressed in an evening gown on game show was held to be the likeness of the hostess from Wheel of Fortune).

  See, e.g., Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988)(use of a sound alike who was told to sound like Bette Midler violated Midler’s publicity rights), Waits v. Frito-Lay, Inc., 978 F.2d 1093, 23 U.S.P.Q.2d 1721 (9th Cir. 1992).

  See, e.g., CAL. CIV. CODE § 990(g) (West 1996) (providing post-mortem right of publicity for 50 years); IND. CODE ANN. § 32-13-1-16 (West 1997) (right of publicity is freely transferable in part or in whole, by contract, license, gift or trust).

  15 U.S.C. § 1114 (1996).

  Id. § 1125(a) (1996)(allows civil liability for false designation of origin).

  Id. § 1125(c)(1) (1996).

  J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 28:8 (4th ed. 1996).

  Id. § 28:12

  Id.

  Id. “[A]n infringement of one’s right of publicity is triggered if a more than insignificant number of people identify the object person from the defendant’s unpermitted commercial use.”

  See McCarthy, supra note 6, at § 3.4.

  See McCarthy, supra note 15, at § 28:12 (citing University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1376, 217 U.S.P.Q. 505 (Fed. Cir. 1983)).

  Kristine M. Boylan, The Corporate Right of Publicity in Federal Dilution Legislation Part II, 82 J. PAT. & TRADEMARK OFF. SOC’Y 1, 18 (2000) (citing A. Samuel Oddi, TRIPS-Natural Rights and A Polite Form of Economic Imperialism, 29 VANDERBILT JOURNAL OF TRANSNAT’L LAW, 415, 427 (1996)(explaining that one line of reasoning for patent prosecution is a labor justification for natural rights treatment)).

  Web domain names consist of a top-level and secondary level component where the top-level is a category such as “.com,” “.net,” or “.gov,” and the second level domain, which appears before the top-level domain, is the identifier for the web page. For example, for the domain name “excite.com” the second level domain is “excite” and the top-level domain is “.com.”  For general information about the operation of the domain name system, see Panavision Int’l v. Toeppen, 945 F. Supp. 1296, 1299 (C.D. Cal. 1996); G. Peter Albert, Jr., Eminent Domain Names: The Struggle to Gain Control of the Internet Domain Name System, 16 J. MARSHALL J. COMPUTER & INFO. L. 781 (1998); World Intellectual Property Organization, Geneva, Issues Relating to Trademarks and Internet Domain Names, (visited March 1, 2000) <http://www.wipo.org/eng/internet/domains/tdn/cm/cm_i_2.htm>.

  947 F. Supp. 1227 (N.D. Ill. 1996).

  Rebecca W. Gole, Playing the Name Game: A Glimpse at the Future of the Internet Domain Name System, 51 FED. COMM. L.J. 403, 410-11 (1999).

  See 210 CONG. REC. S19312 (daily ed. Dec. 29, 1995) (statement of Sen. Leahy) (“Although no one else has yet considered this application, it is my hope that this antidilution statute can help stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputations of others.”).

  See, e.g., Panavision Int’l v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 306-07 (D.N.J. 1998), Hasbro, Inc. v. Internet Entertainment Group Ltd., 40 U.S.P.Q.2d (BNA) 1479, 1480 (W.D. Wash. 1996); Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836, 1838 (N.D. Cal. 1996).

  See Jennifer Golinveaux, What’s in a Domain Name: Is “Cybersquatting” Trademark Dilution?, 33 U.S.F. L. REV. 641, 656-57 (1999) (“Dilution by tarnishment will generally not be available in a cybersquatting case because the cybersquatter typically makes no use or minimal use of the Web site after reserving the mark, and so there is no opportunity for tarnishment...[T]he cybersquatter makes no use of the mark in association with any goods and services. The mere reservation of a trademark and attempt to sell it to the trademark owner causes no blurring of the mark in the minds of the consumer.”); See also, Panavision Int’l v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998).

  945 F. Supp. 1296, 1304 (C.D. Cal. 1996).

  999 F. Supp. at 1341.

  See Golinveaux, supra note 27, at 659-671, for her excellent discussion of the commercial use issue in dilution by cybersquatting cases, (concluding that “[m]ere reservation of a domain name which contains another’s trademark, with no additional use of either the trademark of the Web site, should not be considered dilution [by cybersquatting]...By labeling the cybersquatter’s use “dilution by elimination,” courts are trying to sidestep the statutory requirements of commercial use in commerce.”).

  See, e.g., Avery Dennison Corp. v. Sumpton, ___F.3d___, 1999 WL 635767 (9th Cir. 1999) (The Ninth Circuit reversed a district court finding of cybersquatting and directed entry of summary judgment in favor of defendants. The court noted that dilution is a claim “invented and reserved for a select class of marks” and found the plaintiff’s marks “avery” and “dennison” were highly distinctive yet not “famous” within the meaning of the Dilution Act.  Importantly, the Ninth Circuit, the court which decided the first cybersquatting cases, echoed concerns of other courts that dilution protection comes “very close” to creating rights in gross in a trademark.).

  See S.REP. NO. 106-140, at 7 (1999), “While the [FTDA] has been useful in pursuing cybersquatters [they] have become increasingly sophisticated as the case law has developed and now take necessary precautions to insulate themselves from liability...This uncertainty as to the trademark law’s application to the Internet has produced inconsistent judicial decisions and created extensive monitoring obligations...and uncertainty for consumers and trademark owners alike.”

  15 U.S.C. § 1125(d)(1)(B)(i); See, also, S.REP. NO. 106-140, at 13-16 (1999).

  Id. § 1125(d)(2)(D)(ii)(b)(1)(B).

  See Joel Voelzke. New Cybersquatting Law Gives Trademark Owners Powerful New Weapons Against Domain Name Pirates, 17 COMPUTER LAW. 3, 4 (2000).

  See The Britney Spears website (visited March 20, 2000) <www.britney.com>.

  15 U.S.C. § 1125(d)(1)(A)(ii)(I) (1999).

  No. 98-7452(L), 2000 WL 124389 (2nd Cir.(Conn.) Feb. 2, 2000).

  See S.REP. NO. 106-140, at 8-9, 11 (1999) (“[T]he bill, as amended, balances the property interests of trademark owners with the interests of Internet users who would make fair use of others’ marks or otherwise engage in protected speech online...the bill does not affect traditional trademark defenses, such as fair use (allowing a person to be identified by their own name), or a person’s first amendment rights...”).

  See H.REP. NO. 106-464, at 109, 115 (1999).

  Id. at 110 (“...[A] person may bear a legitimate nickname [or name] that is identical or similar to a well-known trademark, such as in the well-publicized [and unreported] case of the parents who registered the domain name “pokey.org” for their young son who goes by that name, and these individuals should not be deterred by this bill from using their name online.”).

  Id. at 100 (“[A] court may consider the extent to which the domain name is the same as the registrant’s own legal name or nickname...This factor recognizes, again as the concept of fair use in trademark law, that a person should be able to be identified by their own name, whether in their business or on a web site.”).

  Id. at 116.

  See Boylan supra note 21, at 28.

  No. CIV.A. 00-494, 2000 WL 298300 (E.D. Pa. March 22, 2000).

  Sporty’s Farm, supra note 38, at *6-9.

  Shields, supra note 45, at *4-7.

  See Gole, supra note 24; Angela Proffitt, Drop the Government, Keep the Law: New International Body For Domain Name Assignment Can Learn From United States Trademark Experience, 199 LOY. L.A. ENT. L.J. 601, 622 (1999).