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In a battle over an Internet domain name, a federal judge has ruled that the makers of Chambord, a raspberry liqueur, cannot claim exclusive rights to the “chambord.com” Web site because the owner of the site has a right to use the Chambord trademark for its line of coffee makers. Senior federal Judge Edmund V. Ludwig of the U.S. District Court for the Eastern District of Pennsylvania found that the dispute amounted to a claim of “initial interest confusion.” But on the Internet, Ludwig found, such confusion is a minor problem. “Here, a consumer attempting to access an upscale liqueur product is unlikely to be dissuaded, or unnerved, by the sight of coffee makers and other housewares, having first brought up the coffee maker’s screen,” Ludwig wrote in Chatam International Inc. v. Bodum Inc. “Internet surfers are inured to the false starts and excursions awaiting them in this evolving medium. And while more governmental and industry-driven regulation could make it easier on the public, what this case may represent is that the traditional commercial advantage of getting out ahead at the front of the marketplace is not confined to competitive products.” Ludwig said that the two companies have been using the Chambord trademark in different markets for more than 20 years without any confusion among consumers. The plaintiff, Chatam International, uses the Chambord mark to sell a liqueur, fruit preserves, milk chocolate and cake. In 1981, Bon Jour Imports Corp. began selling French-press coffee makers under the mark “Cafetiere Chambord” and coffee under the mark “Cafe Chambord Coffee.” Chatam filed suit and the case later settled with a consent decree that allowed Bon Jour Imports to continue selling coffee makers under the Chambord mark, but barred its sale of coffee. In 1996, Bon Jour Import’s successor, Bodum Inc., registered the domain name “chambord.com” with Network Solutions. The Web site, which is not yet open to Internet surfers, consists of advertisements of the Chambord line of coffee and tea makers and a link to the Bodum.com Web site. Last year, Chatam filed suit under the Anticybersquatting Consumer Protection Act, claiming that its strong mark would be diluted by Bodum’s use of the chambord.com domain name. But Ludwig found that the law calls for proof of “bad faith” and that Chatam had no such proof against Bodum. “There is no evidence that defendant misrepresented itself in the registration of the domain name, or that it registered other confusing domain names,” Ludwig wrote. As a result, he said, any claim of bad faith “would be speculative and remote with little support.” Ludwig found that Bodum’s use of the Chambord mark is limited to a line of products and to a particular model within that line, and that Chatam’s use is also attached to particular products. But the law, Ludwig said, “does not differentiate between categories of goods and services or the various applications or uses of a trade name.” Ludwig concluded that Bodum “appears to be exculpated from cyberpiracy on the basis that it reasonably believed the use of the name was fair or otherwise lawful.” Congress, Ludwig said, “could have required the sharing of a Web site directory screen for this kind of same-name situation, with links to each of the individual registrant’s Web sites, but it did not do so.” When both parties have legally protectable marks but the products are noncompeting, Ludwig said, courts apply a 10-factor inquiry to determine if there is a likelihood of confusion. Applying the test, Ludwig found there was no likelihood of confusion. “Coffee as a beverage may be associated in some minds with liqueur; and plaintiff conceivably might market a line of coffee designed to be served, or flavored with, Chambord Liqueur,” he wrote. “However, the 1982 consent decree restrained defendant from continuing to sell coffee under the Chambord name, and there is no evidence that it intends to sell or otherwise market coffee, as distinguished from coffee makers, on Chambord.com, or any site to which it is linked.” Ludwig concluded that “a consumer would be unlikely to associate a liqueur and a housewares product or expect plaintiff to enlarge its business to include coffee and tea makers.” And the “commercial styles and approaches” the two companies use are “substantially different,” Ludwig found, because Chatam’s advertising “appeals to romance and elegance,” while Bodum’s “emphasizes functionality and contemporary design.” But Ludwig also found that the 10-factor test was not enough to decide the case, because “the question remains whether defendant’s registration of Chambord, as a domain name … creates a substantial likelihood of non-pre-existing confusion.” In trademark law, he said, “the technicalities of Internet addresses still have little, if any, importance.” But since only one of the two companies can hold the exclusive rights to the domain name, Ludwig said he was forced to consider “the effect on the public and the marketplace of the initial and exclusive access to defendant’s products — as well as the potential for dilutional effect on plaintiff’s mark.” Ordinarily, Ludwig said, confusion analysis “focuses on post-sale consequences — in which the customer is likely to be confused about the source of goods even after they have been purchased.” But courts have also recognized the possibility of “pre-sale confusion, involving initial interest,” he said. Ludwig concluded that there is no real likelihood of confusion because Internet surfers are accustomed to finding that a Web site is not exactly what they were seeking. But the Chambord.com case, he said, points up that the law may need to evolve to address disputes between companies whose products don’t compete. “In this sense, the Internet, in its presently exclusive construct, is itself a form of product — and more regulatory protection may well be advisable,” Ludwig wrote.

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