TechLaw

A trademark dilution claim might not be much more helpful than an infringement claim in going after a gripe site, or so it seems from a recent decision by the district court of Arizona. Best Western Int'l Inc. v. Doe, No. 06-1537 (D. Ariz. Oct. 24, 2006).

Best Western International hoped that its dilution claim against a gripe site frequented by its franchisees might succeed where BWI's infringement claim failed. Section 1125(c)(1), the section of the Lanham Act dealing with dilution, does not explicitly require that the mark be used in connection with goods or service. Instead, what is required is "use in commerce."

BWI sought to establish use in commerce by pointing to the competitive injury it suffered as the result of anonymous, allegedly defamatory postings featured on the gripe site. That was apparently the best argument it could muster; there was no allegation that the anonymous posters benefited financially from the site or that they otherwise used the BWI marks on any goods or services.

"The dangers the Lanham Act was designed to address are not at issue in this case," Judge David G. Campbell concluded.

While acknowledging that the dilution claim is a "closer question" than the infringement claim, the court held that the dilution claim failed because competitive injury is not a use in commerce. BWI's reliance on PETA Inc. v. Doughney, 263 F.3d 359 (4th Cir. 2001) ,to support its theory is "misplaced," said the court. Both Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004), and Bosley Med. Inst. Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), have rejected the proposition that harm to the plaintiff's business is use in commerce.

The court granted H. James Dial's motion to dismiss the common law trademark infringement and dilution claims; it denied BWI's motion to amend the complaint to allege use in commerce.