Panavision International, L.P. v. Toeppen

141 F.3d 1316 (9th Cir. 1998)

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Nature of the Case

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Facts

P holds registered trademarks to the names 'Panavision' and 'Panaflex' in connection with motion picture camera equipment. P promotes its trademarks through motion picture and television credits and other media advertising. In December 1995, P attempted to register a web site on the Internet with the domain name Panavision.com. It could not do that, because D had already established a website using Panavision's trademark as his domain name. D's web page for this site displayed photographs of the City of Pana, Illinois. On December 20, 1995, P's counsel sent a letter from California to D in Illinois informing him that P held a trademark in the name Panavision and telling him to stop using that trademark and the domain name Panavision.com. D responded by mail to Panavision in California, stating he had the right to use the name Panavision.com on the Internet as his domain name. D then offered to 'settle the matter' if P would pay him $13,000 in exchange for the domain name. Additionally, D stated that if P agreed to his offer, he would not 'acquire any other Internet addresses which are alleged by Panavision Corporation to be its property.' P refused D's demand, and P then registered P's other trademark with NSI as the domain name Panaflex.com. D's web page for Panaflex.com simply displays the word 'Hello.' D has registered domain names for various other companies including Delta Airlines, Neiman Marcus, Eddie Bauer, Lufthansa, and over 100 other marks. D has attempted to 'sell' domain names for other trademarks such as intermatic.com to Intermatic, Inc. for $10,000 and americanstandard.com to American Standard, Inc. for $15,000. P sued D and alleged claims for dilution of its trademark under the Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c), and under the California Anti-dilution statute, California Business and Professions Code § 14330. P alleged that D was in the business of stealing trademarks, registering them as domain names on the Internet and then selling the domain names to the rightful trademark owners. The district court determined it had personal jurisdiction over D, and granted summary judgment in favor of P on both its federal and state dilution claims. D appealed. He argues that the district court erred in exercising personal jurisdiction over him because any contact he had with California was insignificant, emanating solely from his registration of domain names on the Internet, which he did in Illinois. D further argues that the district court erred in granting summary judgment because his use of P's trademarks on the Internet was not a commercial use and did not dilute those marks.