History, it has been said, repeats itself. The same can be said of domain name disputes, as demonstrated by a pair of cases involving the same trademark ("Panavision") filed more than 20 years apart with remarkably similar facts.
I can't hear the name "Panavision" without thinking about the origins of domain name disputes, so a decision involving <panavision.org> — coming more than two decades after litigation commenced over <panavision.com> — immediately made me nostalgic.
The <panavision.com> case in the mid-1990s pre-dated the creation of the Uniform Domain Name Dispute Resolution Policy (UDRP), the popular legal tool now used by trademark owners — including in the new <panavision.org> case. Indeed, the original Panavision domain name lawsuit probably was partly responsible for the creation of the UDRP, which is a less-expensive and quicker alternative to litigation.
The New Panavision Case (UDRP)
Panavision International, L.P. (a photographic equipment company) won the recent UDRP dispute over <panavision.org>. In the decision, the panel seemed largely influenced by the fact that the registrant of the domain name apparently offered to sell it to Panavision for $5 million. Also, the panel found the registrant's explanation that it obtained the domain name to offer a "view of Panama" was "not credible."
Interestingly, although the UDRP decision does not discuss any history of the <panavision.org> domain name, it appears that it has changed hands through the years since the registrant in the UDRP case registered it only in 2017. But a search of the Internet Archive's Wayback Machine shows that the domain name existed for many years prior to that.
Indeed, a website using the domain name in 2001 contains an email sent by Panavision to the then-current registrant of the domain name, requesting a transfer! Whatever became of that dispute is unclear, but apparently, Panavision decided (correctly) that it could obtain a winning UDRP decision to transfer the domain name 16 years later.
The Original Panavision Case (U.S. Federal Court)
The original <panavision.com> case — litigated in federal courts in California — was incredibly similar to the new <panavision.org> case. In the earlier case, the defendant, Dennis Toeppen, used the domain name to display aerial views of Pana, Illinois and offered to sell it to Panavision for $13,000.
Toeppen also had registered other domain names containing well-known trademarks (many of which resulted in other lawsuits against him), including <deltaairlines.com>, <neiman-marcus.com>, and <yankeestadium.com>.
The <panavision.com> case was unprecedented at the time and paved the way for many domain name disputes that followed. Interestingly, because domain name disputes (and even the Internet) was new, the 1996 district court decision went to great lengths to explain what the Internet was, noting that "businesses have begun to use the Internet to provide information and products to consumers and other businesses."
The <panavision.com> case ultimately reached the U.S. Court of Appeals for the Ninth Circuit, which affirmed a district court decision that Toeppen had violated the new Federal Trademark Dilution Act, writing, "We reject Toeppen's premise that a domain name is nothing more than an address." The court concluded:
Using a company's name or trademark as a domain name is also the easiest way to locate that company's web site. Use of a "search engine" can turn up hundreds of web sites, and there is nothing equivalent to a phone book or directory assistance for the Internet ...
Moreover, potential customers of Panavision will be discouraged if they cannot find its web page by typing in "Panavision.com," but instead are forced to wade through hundreds of web sites. This dilutes the value of Panavision's trademark. We echo the words of Judge Lechner, quoting Judge Wood: "Prospective users of plaintiff's services who mistakenly access defendant's web site may fail to continue to search for plaintiff's own home page, due to anger, frustration or the belief that plaintiff's home page does not exist." ...
Toeppen's use of Panavision.com also puts Panavision's name and reputation at his mercy.
Other Panavision UDRP Cases
The old <panavision.com> case and the new <panavision.org> dispute are not the only domain name disputes that Panavision has pursued. The company has filed at least nine other UDRP complaints through the years, for such domain names as <panavision.net> (which it won); <panavisions.com> (which it also won); and, <pannavision.net> and <pannavision.org> (which it lost).
In the decision that Panavision lost, the panel wrote that it was "satisfied based on the record before it that the Respondent presented credible evidence that the Domain Names were chosen because of their connection to the name of the Respondent's founder [Panna Jaroch] and that while the Respondent was aware of the Complainant's trademark rights, it acted on a good faith belief that its use of the Domain Names in connection with services that are not related to the Complainant's goods and services did not violate the Complainant's rights."
Differences and Similarities
Obviously, much has changed in the two decades since the original <panavision.com> case. For example, Google, which was launched in 1998 while the Panavision case was still active, certainly today could be considered "a phone book or directory assistance for the Internet." Plus, the UDRP has overtaken trademark law as the chosen method for resolving domain name disputes.
But also, as the new <panavision.org> decision illustrates, much has not changed through the years: A domain name registrant can still register a well-established trademark in a popular top-level domain, create a website under a pretext of establishing legitimacy, and offer to sell the domain name to the rightful trademark owner for an exorbitant amount.
Plus ça change, plus c'est la même chose.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm