In this recent trademark-infringement lawsuit, Plaintiff Toyota brought suit against Farzad and Lisa Tabari for using the Toyota’s mark ‘LEXUS’ in 2 domain names that advertised the Defendants’ auto brokerage services (buy-a-lexus.com and buyorleaselexus.com). The court of appeals ruled in favor of Defendants’ and against the injunction preventing their use of ‘LEXUS’ anywhere in the domain names used for their auto brokerage service.
The district court found trademark infringement and ordered the defendants to cease using the domain names (buy-a-lexus.com and buyorleaselexus.com) and enjoined them from future use of the ‘LEXUS’ trademark in connection with any other domain name.
On appeal, the U.S. Court of Appeals for the Ninth Circuit vacated and remanded the district court’s decision. It held that the district court’s injunction was overbroad because the court failed to properly apply the nominative ‘fair use’ doctrine.
As an Internet Lawyer will tell you, the ‘fair use’ doctrine provides that any use of a third party’s trademark does not constitute infringement if; the plaintiff’s product or service is not readily identifiable without use of the mark, no more of the mark is used than is necessary, and the use of the mark does not falsely suggest a sponsorship or endorsement.
The Ninth Circuit Court of Appeals held, “at the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris.”
The July 20, 2010 article “Use of another’s trademark in domain name may be permissible as a nominative fair use” provides a useful tip to Website owners wishing to employ the use of a third party trademark without incurring a trademark infringement lawsuit;
“TIP: When using a third party’s trademark to refer to the third party’s goods or describe your own goods, be sure that the goods are not readily identifiable without use of the mark, that you use no more of the mark than necessary, and that you do not falsely suggest a sponsorship or endorsement by the trademark holder.”
For important related articles on the fair use doctrine;