Court rules trademark violation in Internet domain name case
By JESSICA BUJOL
Associated Press

NEW ORLEANS — A company that registered an Internet domain name using the trademarked name of Ernest and Julio Gallo Winery, then used it to call the company the “Whiney Winery” violated the wine maker’s trademark, the 5th U.S. Circuit Court of Appeals ruled Wednesday.

The case began when Spider Webs Ltd. registered the domain “ernestandjuliogallo.com”. The California-based wine company asked them to transfer the name, but the company refused. The winery filed suit in February 2000 and six months later Spider Webs began posting information on the dangers of alcohol consumption.

The decision marks the first time the 5th Circuit has applied the federal Anti-Cybersquatting Consumer Protection Act, said Craig Weinlein, the attorney for the winery.

It is also the first time the court has applied Texas’ anti-dilution law to cybersquatting, meaning a domain name cannot be registered, then not used simply to keep it out of the hands of its namesake and force them to pay for rights to the site, Weinlein said.

“Many laypeople think that the regular laws don’t apply to the Internet. The courts are confirming what I’ve always believed, that the trademark and copyright laws apply to the Internet just like they apply to everything else,” Weinlein said.

The attorney for Spider Webs Ltd., Bernard Mathews III, was not available for comment, his office said.

The case also made an important distinction between the content of a Web site and a domain name, the address used to get there, Weinlein said.

“You may have First Amendment rights to say what you want on your Web site, but you don’t have the right to use a trademarked domain name to lure people to your Web site and force them to pay for it,” he said.

Spider Webs has the option to file for a re-hearing at the appeals court or petition the U.S. Supreme Court. In the meantime, there is an injunction preventing the company from registering any domain name that might be associated with Ernest and Julio Gallo Winery, and the domain name ernestandjuliogallo.com has been shut down pending the final outcome of the case.

The case was filed in the 5th Circuit because Spider Webs’ proprietors, Steve Thumann and his sons Pierce and Fred, all live in Houston.

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