Lockheed v. NSI (2)

Citation: Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001).

Factual Background
Plaintiff sued defendant Network Solutions, alleging that (1) defendant registered infringing domain names with a bad-faith intent to profit from the trademarks contained in its registry in violation of the ACPA, and (2) that such registration activities constituted dilution under the Texas antidilution statute.

Trial Court Proceedings
Plaintiff moved for partial summary judgment on the ACPA claim, and defendant moved for summary judgment on both claims. The court held that defendant was not subject to liability under the ACPA because none of the factors for determining “bad faith intent to profit” was applicable to “a person functioning solely as a registrar or registry of domain names.” Moreover, an appropriate defendant under the ACPA is a person that “registers, traffics in, or uses a domain name. . . .”

According to the court, “registers,” in this context, obviously refers to a person seeking registration of a domain, not to the registrar. Moreover, as a registrar, defendant neither trafficked in nor used domain names. The ACPA did not require registrars to act as “gate keepers” to prevent unlawful registration of trademarks, because the “sheer volume alone would prohibit defendant performing the role plaintiff would assign.” The UDRP was developed specifically to resolve the disputes raised by plaintiff. The Texas antidilution statute also did not apply to defendant because the registration of domain names did not constitute “use” of plaintiff’s mark, nor did it reflect a bad faith intent to profit from the mark.

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.