Dennis Toeppen Domain Speculation: In 1995, I registered about 200 domain names. It was clear to me at the time that domain names were valuable, undeveloped virtual real estate. There was absolutely no statutory or case law regarding trademarks in the context of Internet domain names. It seemed to be an excellent opportunity to do the virtual equivalent of buying up property around a factory -- eventually the factory owner would realize that he needed the scarce resource which I possessed. Some of the domain names I registered were generic English words, like hydrogen.com. Others corresponded with trademarks that were shared by more than one company, like americanstandard.com. And some corresponded with trademarked coined words, like panavision.com. Let me say that again: There were three types of domain names in my portfolio. I sat on my virtual real estate and waited for offers and threats. Many even-tempered folks purchased domain names and went on their way. Others sued me. I litigated Panavision because I wanted the court to rule whether or not a trademark holder had a preemptive right to a domain name. Winning Panavision would have bestowed infinite value on my portfolio of domain names. Losing Panavision suit would mean that I'd have to abandon the domains in my portfolio that corresponded with trademarks. Litigating Panavision was a sensible high-risk gamble. Unfortunately, Federal Courts sided with trademark holders in Intermatic and Panavision. Rather than accepting my real estate analogy, the courts likened my actions to taking a lollipop from a child. The ruling in Panavision contained some nonsensical conclusions. For instance, to find confusion, the court essentially ruled that if Panavision were to buy the domain name panavision.com from me, they might mistake the source of the domain name as being Panavision -- themselves. Did you get that? It makes no sense whatsoever. They also had to find "commercial use" - that the domain name was being used for a commercial purpose like selling or promoting a product or service. But it was not. So they did some mental gymnastics and found that selling a domain name constituted a commercial use. That, of course, is totally incorrect as far as trademark law goes. Shortly after the court ruled, I abandoned all domain registrations corresponding with known US trademarks. In the years since the Panavision ruling, I've sold domain names from the original batch for about $2m, total. The three largest transactions wre $800k, $175k, and $120k. The Panavision and Intermatic cases formed the foundation of modern Internet trademark law. Both unreasonably and incorrectly favored trademark holders. In the years since, more sensible rulings have come out of the courts. It's worth noting that a well-known letter which I sent to Panavision in 1996 was not an extortive demand, as it was mischaracterized by Panavision's attorney. Rather, it was a taunt, designed to ensure that the matter would be litigated. I grew impatient and had my attorney prepare a declaratory judgement action for filing in Chicago Federal Court. I instructed him to file it after I completed my June 1996 bicycle ride from Chicago to LA on Route 66. But then, Panavision beat us to the punch and filed in LA. They had a bit of a home-court advantage in LA. As a result of domain litigation, I appear in most introductory business law texts and virtually all trademark law texts. Most of the time, I'm cast as a villian. But now and then I encounter thoughtful people who are intrigued that I successfully divined the value of domain names much earlier that others did. Dennis Toeppen May, 2023 Images and Text Copyright Dennis Toeppen 1996-2025 Dennis Toeppen Home Excerpt from Guzman Ruling on Intermatic.com matter: WILLFULNESS OF TOEPPEN'S DILUTION Having found no infringement or unfair competition, it is not necessary to consider the appropriate remedies for Intermatic under those counts. However, the controversy still at issue in this case is whether Toeppen's conduct was willful, thus justifying an award of attorneys fees to Intermatic under the provisions of 15 U.S.C. $51 125(c)(2) and 11 17. Intermatic asserts that Toeppen acted with willful intent to hinder Intermatic's commercial exploitation of the Internet. Toeppen maintains that he was merely asserting and defending his position that trademark owners do not have a preemptive right to register their trademarks as domain names. As in Panavision International, L.P. v. Toeppen, 945 F. Supp. 1296 we find that an award of attorneys' fees in this case would be inappropriate. The particular issues dealt with in this case were primarily issues of first impression and at the relevant period there was a lack of legal precedent regarding issues arising from the intersection of trademark law and the Internet. Furthermore, the remedies available under the Anticybersquatting Consumer Protection Act ( "ACPA"), 15 U.S.C. 5 1 125(d)(2)(D)(i) depend on when the unlawful activity took place. A person who unlawfully registers, traffics in, or uses a domain name after the ACPA's date of enactment, November 29, 1999, can be liable for monetary damages under 15 U.S.C. 5 1 1 17(d) and can have the domain name transferred to the owner of the mark or canceled under 15 U.S.C. 8 1 125(d)(2)(D)(i). The only remedy available for ACPA violations that occurred before November 29, 1999, however, is to have the domain name transferred to the owner of the mark or canceled. Anticybersquatting Consumer Protection Act, Pub. L. No. 106-1 13,s 3010, 1 13 Stat. 1536. Toeppen's alleged cybersquatting occurred before the ACPA's date of enactment. Nor do we find willful mess. It is apparent that defendant neither damaged nor intended to damage plaintiffs reputation. It is also apparent that he did not in any way deceive or intend to deceive the purchasing public. He did no more than what entrepreneurs and businessmen do or try to do every day. He used his particular legitimately gained knowledge, in this case of a new technology, to position himself, before others did so, so as to attempt to make a profit with very little work. At the time he did this there was a vacuum in both statutory and case-law regarding the degree to which, if any, the law of trademarks and unfair competition protected trademarks from being used in this manner. In addition, when plaintiff objected the defendant immediately did all he could do to ensure that he was not damaging plaintiffs reputation in any way. He professed a willingness not to use the domain name in question to sell any product or service. Thus eliminating any potential for product confusion. In short, he did everything but give up his right to the use of the domain name. This he did not have to do as it was not at all clear that he was legally bound to do so. CONCLUSION This Court hereby enters final judgment for defendant, and against plaintiff as to plaintiffs willfulness allegations in Count 111; plaintiffs trademark infringement allegations (Count I); plaintiffs federal unfair competition claims (Count 11); plaintiffs common law unfair competition claims (Count V); plaintiffs Illinois Deceptive Trade Practices claim (Count VI); and plaintiffs Illinois Consumer Fraud Act claim (Count VII). Judge Williams previously entered judgments of permanent injunctive relief on Counts I11 and IV. All parties are to bear