German automaker Porsche lost a round of its battle against 138 Internet domain names it says infringes on its trademark, when a U.S. District Court in Virginia dismissed the company’s attempt to sue the domain names rather than the individuals who registered the names.
In a ruling handed down Tuesday, the court said it could not allow Porsche to sue the domain names, despite acknowledging that “the mere act of registration creates an immediate injury by preventing Porsche from utilizing those domain names itself to channel consumers to its own Web site.” Porsche said Thursday it will appeal the ruling. The company called its in rem (Latin for “against the thing”) lawsuit a groundbreaking suit and said that it believes that many issues raised by the suit will be addressed in appellate courts. “We are obviously disappointed the Court dismissed the in rem lawsuit,” said Porsche Cars North America General Counsel, Patricia Britton. “As many Web site operators use fictitious names and addresses in registering the pirated domain names or register the domain names through offshore corporations, it is impossible for famous trademark holders to find and sue each of the registrants individually.” Classic Internet Struggle The lawsuit strikes a familiar chord to many famous trademark holders who have seen all sorts of variations of their name appear on the Web. When Porsche filed the suit back in January, it said that trademark infringement puts a huge burden on famous trademark holders to police domain names. The company’s Web site has a prominent legal notice reminding that trademark infringement is a punishable offense and it vigorously prosecutes those who violate it. Porsche America was unavailable for comment as to the names of the domains it included in its lawsuit. The company filed the suit in the Eastern District of Virginia because the domain names were registered with Network Solutions, Inc. of Herndon, Virginia, it said. Some 50 of the 138 domain names listed in the lawsuit have agreed to cancel their registrations, Porsche said.