The costs of confusion in cyberspace.

Author:Oram, Jon H.
Position:Case Note

Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629 (KMW), 1997 WL 133313 (S.D.N.Y. Mar. 24, 1997).

Despite the Second Circuit's recent admonition that attempting to apply traditional trademark law principles to the rapidly developing online world is "like trying to board a moving bus,"(1) the federal district courts have wasted no time adjudicating disputes over ownership of Internet domain names.(2) While judges are often called upon to decide cases involving highly technical fields in which they possess little or no knowledge or experience,(3) rarely have they been asked to venture into "uncharted territory" amidst such widespread pressure from politicians, multinational corporations, and private citizens.(4)

This Case Note argues that by manipulating and finessing traditional trademark principles to fit Internet disputes, as was done in Planned Parenthood Federation of America, Inc. v. Bucci,(5) courts we likely to misallocate the "costs of confusion" incurred by users surfing the World Wide Web.(6) Judges should instead recognize the effect that newly refined legal doctrines will inevitably have on the development of Internet technologies. In doing so, they will appreciate the potential for private, industry-oriented solutions.(7) Judicial myopia of the type displayed in Bucci threatens to hinder the Internet's vigorous potential for growth.


Bucci arose after Planned Parenthood discovered that a radio talk show host had been using "" as the address for a Web site promoting an anti-abortion book. The site greeted users with the message "Welcome to the PLANNED PARENTHOOD HOME PAGE" displayed across the top of the screen.(8) Though the parties disputed the defendant's motive in selecting Planned Parenthood's registered mark as its domain name, some "`unwitting users of the Internet'"(9) were duped into believing that the defendant's site was Planned Parenthood's actual home page.(10) Its official Web site, however, had been located at "" since 1994.(11)

Employing long-established Lanham Act principles,(12) Judge Wood found that Bucci had infringed the plaintiff's mark.(13) In reaching this conclusion, she made findings about "the nature of domain names and home page addresses,"(14) and found Bucci liable based on the "likelihood of confusion" his site had engendered. First, because ".com" is a popular designation for domain names, the court found that an Internet user is "likely to assume that `.com' after a corporation's name will bring her to that corporation's home page."(15) Second, Internet users face temporary delays between the time they type a domain name into their browsers and the time they actually get to view the page, and again each time they follow a link to retrieve more information about the site.(16) According to the court, these "lengthy" delays between an attempt to access a page and the realization that one has specified the wrong address raise the possibility of user confusion.(17) Finally, in gauging the sophistication of Internet users, the court determined that some "may not be so immediately perspicacious" as to recognize their failure to reach their intended destination.(18) Based on these factors, the court found a likelihood of confusion sufficient to enjoin Bucci's use of the domain.

The holding in Bucci is arguably in conflict with applicable precedent from cases involving traditional communications media. By assuming that Internet users are naive, credulous, and unable to recognize the "historic enmity" between pro-life and pro-choice forces, the opinion suggests the judiciary should hold them to an extremely low standard of sophistication, particularly in comparison to the level expected of those who rely on conventional media.(19) More importantly for the purposes of this Case Note, however, the decision conflicts with the fundamental purpose of trademark law.


Trademark law is designed to protect the interests of consumers by denoting the sources of particular goods and services. Trademarks simplify the process through which consumers acquire product information, thus lowering the "search costs"(20) involved in distinguishing among different sellers and differentiating among goods the consumers may never have seen before.(21) By relying on trademarks to signal various product characteristics, the consumer need not scrutinize each individual good every time he or she makes a purchase. Moreover, since consumers benefit from lower search costs, sellers can capture some of this surplus by charging higher prices.(22) Confusion in the marketplace, however, eliminates these economic gains, for when trademarks convey misinformation, consumers' search costs rise substantially. Thus the benefits that trademarks generate relate to the efficiency of the marketplace and consumers' ability to find what they are looking for.

Domain names were intended to offer a user-friendly means by which to identify and locate particular Internet sites.(23) Many commentators have debated whether domain names serve the trademark function of identifying the source of particular products or services.(24) Yet the right question is not whether domain names can perform this...

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