Brookfield Communications, Inc. v. West Coast Entertainment Corp., No. 98-56918 (Ninth Circuit, Apr. 22, 1999)
In Brookfield Communications, Inc.,the Ninth Circuit Court of Appeals held that the plaintiff, Brookfield, was entitled to a preliminary injunction against defendant West Coast's use of its planned "moviebuff.com" web address.
Brookfield claimed that the domain name infringed its trademark "MovieBuff," which it used in selling software and services for professionals in the entertainment industry, including a searchab Brle database of industry information. West Coast countered that it had used the slogan "The Movie Buff's Movie Store" as a service mark since 1986, and had registered the "moviebuff.com" domain name in 1996, and was thus a senior user of the mark.
The Court rejected West Coast's effort at "tacking" its domain-name use onto its earlier slogan use. It also held that the mere registration of the domain name, which was not ready for actual "launching" until November 1998, did not establish West Coast's seniority. Finally, the Court held that West Coast would create a likelihood of consumer confusion not only by using the "moviebuff.com" domain name, but even by using the term "moviebuff" as a metatag--though it would be permitted to use the term with a space inserted ("movie buff").