Subscribe to the Tech LawJournal Daily E-Mail AlertTech Law JournalNews, records, and analysis of legislation, litigation, andregulation affecting the computer and Internet industryHome | Calendar | Subscribe | Back Issues | ReferenceOpinion of the U.S. Court of Appeals for the Ninth Circuit.Case: Panavision v. Dennis Toeppen, D.C. Case No. CV-96-03284-DDP, Appeal No. 97-55467.Re: Cybersquatting and trademark dilution.Date Issued: April 17, 1998.Editor's Notes:• Source: U.S. Courts for the Ninth Circuit.• This document has been edited for HTML, but not for content.• Double spacing and pagination was eliminated.• Footnotes were converted into sidenotes.• Fonts were changed, and underlining of case names and similar items was added.• Copyright Tech Law Journal 1999. All rights reserved.UNITED STATES COURT OF APPEALSFOR THE NINTH CIRCUITAppeal from the United States District Courtfor the Central District of CaliforniaDean D. Pregerson, District Judge, PresidingPANAVISION INTERNATIONAL, L.P., aDelaware Limited Partnership,Plaintiff-Appellee,v.DENNIS TOEPPEN; NETWORKSOLUTIONS, INC., a District ofColumbia Corporation,Defendants-Appellants.)))) No. 97-55467)) D.C. No. CV-96-03284-DDP-JRx)) OPINION))))Page1of13Document: Ninth Circuit Opinion in Panavision v. Toeppen re cybersquatting, 3/17/98.9/18/2007file://C:\CMU\LawCourse2007\readings\DomainNames\Document Ninth Circuit Opinion in P...Argued and SubmittedMarch 3, 1998--Pasadena, CaliforniaFiled April 17, 1998Before: Melvin Brunetti, David R. Thompson andThomas G. Nelson, Circuit Judges.Opinion by Judge ThompsonCOUNSELJoseph D. Murphy, Meyer, Capel, Hirschfeld, Muncy, Jahn & Aldeen, P.C., Champaign, Illinois, for thedefendant-appellant.William E. Thomson, Kaye, Scholer, Fierman, Hays & Handler, Los Angeles, California, for the plaintiff-appellee.OPINIONTHOMPSON, Circuit Judge:This case presents two novel issues. We are asked to apply existing rules of personal jurisdiction to conductthat occurred, in part, in "cyberspace." In addition, we are asked to interpret the Federal Trademark DilutionAct as it applies to the Internet.Panavision accuses Dennis Toeppen of being a "cyber pirate" who steals valuable trademarks andestablishes domain names on the Internet using these trademarks to sell the domain names to the rightfultrademark owners.The district court found that under the "effects doctrine," Toeppen was subject to personal jurisdiction inCalifornia. Panavision International, L.P. v. Toeppen, 938 F. Supp. 616, 620 (C.D. Cal. 1996). The districtcourt then granted summary judgment in favor of Panavision, concluding that Toeppen's conduct violatedthe Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c), and the California Anti-dilution statute,California Business & Professions Code § 14330. Panavision International, L.P. v. Toeppen, 945 F. Supp.1296, 1306 (C.D. Cal. 1996).Toeppen appeals. He argues that the district court erred in exercising personal jurisdiction over him becauseany contact he had with California was insignificant, emanating solely from his registration of domainnames on the Internet, which he did in Illinois. Toeppen further argues that the district court erred ingranting summary judgment because his use of Panavision's trademarks on the Internet was not acommercial use and did not dilute those marks.We have jurisdiction under 28 U.S.C. § 1291 and we affirm. The district court's exercise of jurisdiction wasproper and comported with the requirements of due process. Toeppen did considerably more than simplyregister Panavision's trademarks as his domain names on the Internet. He registered those names as part of ascheme to obtain money from Panavision. Pursuant to that scheme, he demanded $13,000 from Panavisionto release the domain names to it. His acts were aimed at Panavision in California, and caused it to sufferinjury there.Page2of13Document: Ninth Circuit Opinion in Panavision v. Toeppen re cybersquatting, 3/17/98.9/18/2007file://C:\CMU\LawCourse2007\readings\DomainNames\Document Ninth Circuit Opinion in P...We also conclude Panavision was entitled to summary judgment under thefederal and state dilutionstatutes. Toeppen made commercial use of Panavision's trademarks and his conduct diluted those marks.IBACKGROUNDThe Internet is a worldwide network of computers that enables various individuals and organizations toshare information. The Internet allows computer users to access millions of web sites and web pages. A webpage is a computer data file that can include names, words, messages, pictures, sounds, and links to otherinformation.Every web page has its own web site, which is its address, similar to atelephone number or street address. Every web site on the Internet hasan identifier called a "domain name." The domain name oftenconsists of a person's name or a company's name or trademark. Forexample, Pepsi has a web page with a web site domain nameconsisting of the company name, Pepsi, and <.com>, the "top level"domain designation: <Pepsi.com>.1The Internet is divided into several "top level " domains: <.edu> for education; <.org> for organizations;<.gov> for government entities; <.net> for networks; and <.com> for "commercial" which functions as thecatchall domain for Internet users.Domain names with the <.com> designation must be registered on the Internet with Network Solutions, Inc.("NSI"). NSI registers names on a first-come, first-served basis for a $100 registration fee. NSI does notmake a determination about a registrant's right to use a domain name. However, NSI does require anapplicant to represent and warrant as an express condition of registering a domain name that (1) theapplicant's statements are true and the applicant has the right to use the requested domain name; (2) the "useor registration of the domain name . . . does not interfere with or infringe the rights of any third party in anyjurisdiction with respect to trademark, service mark, trade name, company name or any other intellectualproperty right"; and (3) the applicant is not seeking to use the domain name for any unlawful purpose,including unfair competition.A domain name is the simplest way of locating a web site. If a computer user does not know a domainname, she can use an Internet "search engine." To do this, the user types in a key word search, and thesearch will locate all of the web sites containing the key word. Such key word searches can yield hundredsof web sites. To make it easier to find their web sites,
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