Legislation passed last year to protect companies from cybersquatters passed a critical test July 13, when a judge from the Southern District of New York ordered a pornographic Web site to stop using Mattel's trademark "Barbie" as part of its domain name.
Mattel Inc. in El Segundo, Calif., sued the porn site's parent company, Internet Dimensions Inc. in Fort Lauderdale, Fla., for trademark infringement when it discovered the site called Barbiesplaypen.com. The judge issued a cease-and-desist order and the site has shut down.
A Mattel spokeswoman said the company will defend its brand names, even if no complaints have been made by customers.
"For us, it really is about enforcing our rights," said spokeswoman Lisa Marie Bongiovanni. "We have incredible equity in our brands."
While she said she knew of no specific complaints by customers regarding Barbiesplaypen.com, Bongiovanni said Mattel won't risk a customer thinking it sponsors a porn site, or any non-Mattel site. The company will go after anyone who uses a Mattel trademark, she said.
Phone calls and e-mail sent to Benjamin Schiff, Internet Dimensions' sole officer, director and employee, weren't returned.
"The case strengthens the ability of the mark owner to protect its mark from tarnishment from uses on the Web," said Houston-based lawyer Robert Lytle, a legal expert on cybersquatting at Washington-based firm Howrey, Simon, Arnold & White LLP.
The Anti-Cybersquatting Consumer Protection Act, passed last year, adds protection to brand names and trademarks on the Internet. The law is intended to prevent or provide relief from cybersquatting -- the practice of using someone else's name or brand to market other merchandise. It also helps individuals and companies whose names are "held hostage" for a fee, Lytle said.
The law also provides immediate relief for victims of cybersquatting, Lytle said. A company or person can get an injunction on a Web site if the owner can't be found. The injunction forces the Web site's Internet service provider to deactivate the site.
While recovering damages may be more difficult, the court order prevents further damage to a name brand, he said. Sites such as Barbiesplaypen.com, "have the effect of tarnishing [the trademarked brand's] image," Lytle said.