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Date: 04-19-2000

Case Style: Morrison & Foerster v. Brian Wick and American Distribution Systems, Inc.

Case Number: 00-cv-465

Judge: Lewis T. Babcock

Court: United States District Court for the District of Colorado

Plaintiff's Attorney: Roxanne Jensen, Tarek F.M. Saad and William R. Wade-Gery of Morrison & Foerster, L.L.P., Denver, Colorado

Defendant's Attorney: Ronald G. Rossi of Rossi & Maricle, P.C., Denver, Colorado

Description: Anticybersquatting Consumer Potection Act, 15 U.S.C. 1125, action brought by Morrison & Foerster against Brian Wick and American Distribution Systes, Inc. seeking injunctive and monteary damage against defendants for cybersquatting and cyberpiracy. Cybersquatting involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners.

The law firm of Morrison & Foerster was founded in 1883. Since November 1991, it has owned and maintained federal registration of the trademark MORRISON & FOERSTER® for legal services. In 1999, the firm's advertising and marketing budget was approximately $1 million. Morrison & Foerster is the registered owner of the domain name www.mofo.com. The firm utilizes its Internet web site to market and promote its services, and to provide a point of contact for customers and attorneys seeking employment.

On October 24, 1999, Brian Wick, using the names NameIsForSale.com and Morri, Son & Foerster, registered the domain names www.morrisonfoerster.com, www.morrisonandfoerster.com, www.morrisonforester.com, and www.morrisonandforester.com through the online registrar, www.register.com. On October 27, 1999, Morrison & Foerster registered the domain names www.morrisonfoerster.org, www.morrisonfoerster.net, www.morrisonandfoerster.net, and www.morrisonanfoerster.org. At the same time, it attempted to register the domain names www.morrisonfoerster.com and www.morrisonandfoerster.com. However, because Mr. Wick had already registered these domain names three days earlier, the names were unavailable to Morrison & Foerster.

Morrison and Foerster brought suit alleging Cybersquating in violation of the ACPA; Unfair Competition and False Designation of Origin in violation of 15 U.S.C. 1125(a); Trademark Infringement in violation of 15 U.S.C. 1114; Dilution in Violation of 15 U.S.C. 1125(c); Trademark Infringement & Unfair Competition; Intentional Interference with Current Prospective Economic Advantage; Defamation and Business Disparagement. Plaintiff sought a preliminary injunction against defendants. It claimed that the names registered by Mr. Wick were identical or confusingly similar to Morrison & Foerster's mark. It also claimed that Wick's web sites would harm the goodwill represented by Morrison & Foerster's mark.

Outcome: Injunction granted. Wick was ordered to transfer, at his own cost, the two domain names with the correct spelling of the firm(www.morrisonfoerster.com and www.morrisonandfoerster.com) to Morrison & Foerster. The court also ordered that the other registrations be cancelled and permanently enjoined Mr. Wick from taking any action to prevent and/or hinder Morrison & Foerster from obtaining these domain names.

Plaintiff's Experts: Unknown

Defendant's Experts: Unknown

Comments: Additional information about this case can be obtained from 94 F.Supp.2d 1125 (D.Colo. 2000). Reported by Kent Morlan



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