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Finding ATLAS COPCO and ATLAS CASPIAN confusingly similar, court awards in rem ACPA relief to unopposed plaintiff

By Evan Brown

Atlas Copco AB v. Atlascopcoiran.com, No. 07-1208, 2008 WL 149128 (E.D. Va. January 8, 2008)

Unable to hail the overseas registrants of domain names, including atlascaspian.com and atlascopcoiran.com into a U.S. court, plaintiff Atlas Copco AB sought in rem relief against the domain names under 15 U.S.C. §1125(d)(2)(a). After the defendants failed to answer the complaint, Atlas Copco moved for summary judgment, relying on the allegations of its verified complaint.

The court granted the motion and ordered the domain names transferred.

In finding that the defendants had engaged in cyberpiracy, the court looked at the ?dominant or salient portions of the marks? at issue ? the plaintiff?s mark and the marks comprising the offending domain names.

For you trademark experts out there, query whether you might characterize the following analysis as a bit of a stretch:

The dominant portion of each of the Defendant Domain Names is ?ATLAS COPCO? or ?ATLAS.? These ?dominant? terms are paired with the generic terms ?CASPIAN? and ?IRAN,? which are generic geographic terms that do not distinguish the Defendant Domain Names from the ATLAS COPCO trademark. An internet user might reasonably assume that the geographic term ?CASPIAN? and ?IRAN? were added to the ATLAS COPCO trademark by the Plaintiffs to identify its geographic location.

It looks like another motivation for the court?s finding was some of the subterfuge on the sites at the offending domain names. Turns out some of them pointed to ?copycat? websites bearing ?Atlas Caspian? logos confusingly similar to the plaintiff?s trademark, and linked to phishing sites bearing the actual Atlas Copco mark.

Full post as published by InternetCases.com on January 30, 2008 (boomark / email).