Compared this letter to the very first email that was received in regard to my registration and use of the 'scientology.com.au' domain name. You can also read the letter from Davies Collison Cave Solicitors that was received on 25-Aug-2003.
From: AMPaquette@aol.com
Received: from AMPaquette@aol.com
by imo-r04.mx.aol.com (mail_out_v36.3.) id k.113.24a12181 (3842);
Wed, 11 Jun 2003 16:48:30 -0400 (EDT)
Message-ID: <113.24a12181.2c18ef9d@aol.com>
Date: Wed, 11 Jun 2003 16:48:29 EDT
Subject: Unauthorized Use of Federally Registered Trademark
To: craig@zeta.org.au
Cc: AMPaquette@aol.com
Dear Mr. Dewick:
As you know, our office represents Religious Technology Center
("RTC"), the owner of the federally registered trademark and service
mark "SCIENTOLOGY". The mark "SCIENTOLOGY" is registered with
the United States Patent and Trademark Office under registration numbers
1,755,441; 1,540,928; 1,342,353; 1,329,474; 1,318,717; 1,306,997; and
0898018. We also represent the Church of Scientology International
("CSI"), which is the licensee of the "Scientology" trademark.
Both CSI and RTC are non-profit religious organizations. CSI and its
sub- licensees use the registered trade and service mark
"SCIENTOLOGY" in connection with providing religious and humanitarian
services and counseling, seminars, books, classes, and lectures, among
others. Many of these are promoted through various web sites, including
"scientology.org", "dianetics.org", etc.
We have been advised that you have registered our client's federally
registered trademark "SCIENTOLOGY" in the following domain name:
"correctscientology.info"
You are hereby on notice that the registration and use of our client's
federally registered trademark in this manner has caused your name and the
corresponding web site to be falsely associated with our client's registered
mark as owner and creates a likelihood of confusion as to the source or
sponsorship of this domain name and web site in violation of United States
state and federal law, including the Lanham Act, 15 U.S.C. 1125(a).
Likewise, this registered trademark is famous, distinctive and unique.
You are using our client's mark in this domain name and for this web site to
promote pornography and violence. Thus, your use of the Scientology mark in
this manner dilutes and tarnishes the distinctiveness of the mark by
improper negative associations inconsistent with the positive and spiritual
accomplishments and humanitarian efforts of the Scientology religion and its
parishioners, in violation of the federal trademark antidilution statute, 15
U.S.C. 1125(c) and California's antidilution statute. See, Archdiocese of
St. Louis v. Internet Entertainment Group, Inc., 34 F.Supp.2d 1145 (E.D. Mo.
1999); Mattel, Inc. v. Internet dimensions, Inc., 55 U.S.P.Q.2d 1620
(S.D.N.Y. 2000); Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 43 (2nd Cir.
1994).
Your use of our client's mark in this manner also constitutes an
unlawful false designation of origin and as such, violates 43(a) of the
Lanham Trade-Mark Act. This prohibits any use of another's trademarks that
is "likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person." America Online,
Inc. v. IMS, 24 F.Supp.2d 548, 551 (E.D.Va. 1998). Here, there is no
question that these elements are met as you are using our client's
registered mark for the purpose of diverting persons from the official
Scientology web site to a web site that has nothing whatsoever to do with
Scientology and in fact, represents the very antithesis of the good promoted
by the Scientology religion. See also, OBH, Inc. v. Spotlight Magazine,
Inc., 86 F.Supp.2d 176 (W.D. New York 2000); (trademark infringement and
trademark dilution found against infringer for use of registered trademark
in domain name to divert Internet users to his web site); People for the
Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)
(defendant held liable for trademark infringement for using another's
registered trademark in domain name for purpose of diverting Internet users
to infringer's web site); Jews v. Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J.
1998) (injunction issued against user of trademark mark in domain name
because domain name was confusingly similar to federally registered
trademark and such use diluted trademark owner's mark by improperly
"luring" Internet users to infringer's web site which was completely
unrelated to trademark owner).
The Anticybersquatting Consumer Protection Act ("ACPA") is also
implicated by your registration of this domain name. The Act makes it
illegal for a person to register or to use, an Internet domain name, that is
"identical or confusingly similar" to the distinctive or famous
trademark of another person or entity. Shields v. Zuccarini, 254 F.3d 476
(3rd Cit. 2001). Statutory damages can be awarded for violation of the Act
in an amount not less than $1,000 and not more than $100,000 for each domain
name. 15 U.S.C. Section 1117(d). The court in Shields imposed a $30,000
statutory damage award against a cybersquatter under the Act.
Lastly, a similar situation occurred in which a Hungarian infringer of
one of RTC's trademarks did exactly as you are doing now used one of RTC's
registered trademarks for a domain name, for use with pornography. He was
arrested and indicted arising out of this conduct. The Hungarian court, in
convicting him of extortion ruled that the use of the Church's trademark in
connection with pornographic content, could "cause very serious moral
damage to the Church" by creating a seriously false impression of the
Church's beliefs.
Accordingly, we request that you immediately cease and desist the use
of this domain name and transfer it to our client, CSI.
Thank you for your anticipated courtesy and cooperation with this
matter.
Sincerely,
Ava Paquette
Moxon & Kobrin
3055 Wilshire Boulevard
Suite 900
Los Angeles, California 90010
Tel: (213) 487-4468
Fax: (213) 487-5385
I never replied to this letter, and nothing was heard until the letter from Davies Collison Cave Solicitors arrived in August 2003.
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