Panavision Wins Panavision.Com Domain Name

Panavision Inc., the wide-screen movie lens and film equipment company, has been told it can use the Panavision name for its Internet site even though an Illinois man registered the "panavision.com" domain name ahead of them. The Ninth Circuit Court of Appeals decision was widely seen as broadening US trademark law to apply to Internet domain names.

Woodland Hills, California-based Panavision has now posted a World Wide Web announcement at http://www.panavision.com that a Panavision PanaStore will arrive soon, featuring camera bags, fashions, and accessories. Previously, the site at that address showed a picture of the city of Pana, Illinois.

The practice of registering domain names using the name of commercial firms and then selling the rights has become widely viewed as a form of cyber-piracy.

The appellate court decision supported a lower court ruling that Dennis Toeppen, of Champaign, Illinois, diluted Panavision’s trademark, that is, weakened the name’s identification with the firm.

Toeppen argued that registering a domain name does not violate a trademark and merely hews to current practice. The current procedure is that domain names get registered on a first-come, first-served basis, and Toeppen was first to request the Panavision name. However, he has also registered more than 100 other well-known company identifiers including Delta Airlines, Eddie Bauer, Neiman Marcus and Lufthansa, reports said. He also registered a Panaflex.com domain name — another trademark of Panavision Inc. — and posted a site that simply said "Hello," reports said.

When Panavision tried to register a panavision.com Web site, it discovered the name was already taken. When it protested to Toeppen, he offered to sell the name back to the firm for $13,000 and suggested the asking price would be cheaper than filing suit. Panavision refused.

The court said Toeppen’s registering the domain name in itself may not have violated trademark law but his attempting to sell the name back to the company went beyond registration. It said Toeppen violated both federal and state trademark dilution laws.

"A domain name is similar to a ‘vanity number’ that identifies its source," the court wrote. "We reject Toeppen’s premise that a domain name is nothing more than an address. A significant purpose of a domain name is to identify the entity that owns the Web site."

The court said that by taking over Panavision’s corporate names on the Internet, Toeppen had the company’s "name and reputation at his mercy."