Cybertelecom Federal Internet Law & Policy An Educational Project

Notes: Domain Names and Trademarks

ACPA *

Trademrk Infringement

Section 43(a) of the Lanham Act states:

The Court finds that Virtual Works infringed the trademark of Volkswagen. Under Fourth Circuit law, "a domain name is more than a mere internet address. It also identifies the internet site to those who reach it, much like ... a company's name widentifies a specific company." Cardservice International, Inc. v. McGee, 950 F.Supp. 737, 743 (E.D.Va.1997), aff'd, 129 F.3d 1258 (4th Cir.1997). The holder of a domain name should give up that domain name when it is "an intuitive domain name" that belongs to another. See Washington Speakers Bureau v. Leading Authorities, 33 F.Supp.2d 488, 499 (E.D.Va.1999). "VW" is the "intuitive domain name" of Volkswagen.

• Virtual Works, Inc., v. Network Solutions, Inc., Volkswagen Of America, Inc., No. Civ.A. 99-1289-A. 106 F.Supp.2d 845, 847 (E.D. Va Feb. 24, 2000).

Trademark law seeks to prevent one seller from using a "mark" identical or similar to that used by another seller in a way that confuses the public about the actual source of the goods or services in question. Star Fin. Services, Inc. v. Aastar Mortgage Corp., 89 F.3d 5, 9 (1st Cir.1996). Such confusion may prevent the buyer from obtaining the goods he seeks or may endanger the reputation of the first user of the mark by association with the subsequent user. DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 605 (1st Cir.1992), cert. denied, 509 U.S. 923, 113 S.Ct. 3039, 125 L.Ed.2d 725 (1993).

- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 121 (DMA Sept. 2, 1999).
 
 

Types of Marks

The four judicially-developed categories of trademarks, listed in ascending order of their strength are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391 (2d Cir.1995); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). A generic mark can never be protected, but a descriptive mark can obtain registration if it has acquired "secondary meaning." See Lane Capital, 192 F.3d at 344. "Fanciful, arbitrary and suggestive marks are deemed inherently distinctive. Their intrinsic nature serves to identify a particular source of a product, so they will be automatically protected" without a showing of secondary meaning. Id. A term is descriptive if it "tells something about a product, its qualities, ingredients or characteristics." Estee Lauder Inc., 108 F.3d at 1509. In contrast, a term is suggestive if it "requires imagination, thought, and perception to reach a conclusion as to the nature of the goods" or services it represents. Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir.1992).

-- Bihari v. Gross, No. OO Civ. 1664 (SAS), 7 (SDNY Sept 25, 2000) .
 
 

First, PETA owns the PETA Mark and Defendant admits the PETA Mark's validity and incontestability. The PETA Mark is thus presumed to be distinctive as a matter of law. Jews for Jesus v. Brodsky, 993 F.Supp. 282, 295 (D.N.J.1998), aff'd 159 F.3d 1351 (3rd Cir.1998); Sporty's Farm, L.L.C. v. Sportman's Market, Inc., 202 F.3d 489, 497(2nd Cir.).

-- People For The Ethical Treatment Of Animals, Inc., v. Doughney, No. CIV.A. 99-1336-A., 2000 WL 943353, 3 (E.D.Va. June 12, 2000)

Service Mark

^{11.Service marks are essentially trademarks used in the sale of services, instead of goods. Both service marks and trademarks are governed by identical standards. See, e.g., Lane Capital Management v. Lane Capital Management, 192 F.3d 337, 344 n. 2 (2d Cir.1999). A service mark includes words used "to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown." 15 U.S.C. § 1127.}

^{-- Bihari v. Gross, No. OO Civ. 1664 (SAS), 7 (SDNY Sept 25, 2000) .}
 
 

Suggestive Mark

Generally, personal names used as trademarks are regarded as descriptive terms, protected only if they have acquired distinctive and secondary meaning. See Lane Capital, 192 F.3d at 345; Abraham Zion Corp. v. Lebow, 761 F.2d 93, 104 (2d Cir.1985). However, "Bihari Interiors" is a suggestive rather than a descriptive mark because it suggests Bihari's services. The mark requires an imaginative leap to correctly identify Bihari's services. The word "interiors" does not immediately identify interior design services. It could as easily describe a company producing home furnishings, seat covers for automobiles¹² or services such as carpet cleaning or wall painting. As a suggestive mark, "Bihari Interiors" is inherently distinctive and entitled to protection.

-- Bihari v. Gross, No. OO Civ. 1664 (SAS), 7 (SDNY Sept 25, 2000) .
 
 

Descriptive Mark

Plaintiff's "GREENPOINT" mark is "descriptive of the geographic origin of a product," here Greenpoint, Brooklyn, and "will not receive trademark protection absent proof of secondary meaning." Forschner Group, Inc. v. Arrow Trading Co., Inc., 30 F.3d 348, 348 (2d Cir.1994); (Humphrey Decl).  The "term has acquired a secondary meaning in its particular market [if] the consuming public primarily associates the term with a particular source." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir.1992).
        Six factors have been identified to help establish secondary meaning. They are (a) advertising expenditures¹; (b) consumer studies linking the mark to a source; (c) unsolicited media coverage of the product; (d) sales success; (e) attempts to plagiarize the mark; and (f) the length and exclusivity of the mark's use. See Centaur Communications, Ltd.v. A/S/M/ Communications, 830 F.2d 1217, 1222. While each factor does not have to be proved and no single factor is determinative (id.), Plaintiff must satisfy a "heavy" burden because "[p]roof of secondary meaning entails vigorous evidentiary requirements." 20th Century Wear Inc., v. Sanmark -Stardust Inc., 747 F.2d 81, 90 (2d Cir.1984), cert. denied, 470 U.S. 1052 (1985) (quoting Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F.Supp. 129, 134 (S.D.N.Y.1972)).

Elements of Causes of Action

To prevail on a claim for infringement under the Lanham Act, a plaintiff must show that (1) it has a distinctive mark subject to protection; and (2) the defendant's mark results in a likelihood of confusion. Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1508 (2d Cir.1997).

• Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 2 (S.D.N.Y. Sept. 20, 2000))

To prevail on its trademark infringement action, plaintiff must demonstrate (1) ownership of an enforceable right in a trademark and (2) that defendants' use of the mark creates a likelihood of consumer confusion. See Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir.1985) (en banc). In determining whether or not there is a likelihood of confusion, the Court is to weigh the following factors: (1) the strength of the mark; (2) proximity of the goods; (3) similarityof the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979).

• Quokka Sports, Inc., v. Cup Int'l Ltd., No. C-99-5076-Dlj, 99 F.Supp.2d 1105, 1109-10 (NDCA Dec. 13, 1999).

Commercial Use

        The plain language of the Lanham Act makes apparent that § 43(a) is only applicable to commercial uses of another's mark. First, the statute only applies to actions taken by individuals "in connection with any goods or services." 15 U.S.C. § 1125(a)(1); see also Int'l Ass'n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 914 F.Supp. 651, 654, n. 2 (D.Me.) (the statutory language "in connection with goods or services" serves the purpose of keeping most applications of the Lanham Act "within the realm of 'commercial speech" ' so that "conflicts with the First Amendment are minimized"), aff'd, 103 F.3d 196 (1st Cir.1996). Second, § 43(a) is limited to uses likely to cause confusion "as to the origin, sponsorship, or approval of [the defendant's] goods, services, or commercial activities ...." 15 U.S.C. § 1125(a)(1)(A) (emphasis added). Third, § 43(a) is limited by 15 U.S.C. § 1125(c)(4)(B), which states that "[n]oncommercial use of a mark" is not actionable under the Lanham Act. See 15 U.S.C. § 1125(c)(4)(B); Planned Parenthood Federation of America, Inc. v. Bucci, 97 Civ. 0629, 1997 WL 133313, at *7 (S.D.N.Y. Mar. 24, 1997).
        The commercial use requirement in § 43(a) tracks the commercial speech doctrine as developed by the United States Supreme Court. See Central Hudson Gas & Elec. Corp. v. Public Serv. Comm. of New York, 447 U.S. 557, 561 (1980). Following the Supreme Court's precedent, the Second Circuit has explained that "[t]he 'core notion' of commercial speech includes 'speech which does no more than propose a commercial transaction." ' Bad Frog Brewery, Inc. v. New York State Liquor Authority, 134 F.3d 87, 97 (2d Cir.1998) (quoting Bolger v. Youngs Drug Prod. Corp., 463 U.S. 60, 66 (1983)).
        "The mere use of another's name on the Internet ... is not per se commercial use." Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161, 1166 (C.D.Cal.1998). Nor do the Gross websites offer any "commercial transaction." Defendants are not interior designers and do not sell visitors any products or services. However, the Gross websites contain hyperlinks to other websites which promote the services of other interior designers. See supra Part II.D. The Gross websites effectively act as a conduit, steering potential customers away from Bihari Interiors and toward its competitors, thereby transforming his otherwise protected speech into a commercial use. See Jews For Jesus v. Brodsky, 993 F.Supp. 282, 308 (D.N.J.1998) (defendant's site devoted to criticizing the Jews for Jesus movement is commercial because it includes a hyperlink to another Internet site which sells certain merchandise).

• Bihari v. Gross, No. OO Civ. 1664 (SAS), 8 (SDNY Sept 25, 2000) .

The fourth element requires that Defendant's use of the PETA Mark be made in connection with the sale, distribution, or advertising of goods or services. This does not require that Defendant actually caused goods or services to be placed into the stream of commerce. Jews for Jesus, 993 F.Supp. at 309. The term "services" has been interpreted broadly to include the dissemination of information, including purely ideological information. United We Stand America, Inc. v. United We Stand America New York, 128 F.3d 86, 89-90 (2nd Cir.1997) (citations omitted). Defendant's use of the PETA Mark was "in connection" with goods and services because the use of a misleading domain name has been found to be "in connection with the distribution of services" when it impacts on the Plaintiff's business:

Likelihood of Confusion

Second, § 43(a) is limited to uses likely to cause confusion "as to the origin, sponsorship, or approval of [the defendant's] goods, services, or commercial activities ...." 15 U.S.C. § 1125(a)(1)(A) (emphasis added). . . ¹³. The likelihood of confusion question generally requires analysis of the classic eight factor test established in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961).
-- Bihari v. Gross, No. OO Civ. 1664 (SAS), 8 (SDNY Sept 25, 2000) .
 
 

In order to succeed in a trademark infringement suit, Plaintiff must also prove that "there is a likelihood of confusion, or, in other words, that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark." Gruner, 991 F.2d at 1077. There must be an "appreciable number" of confused purchasers to sustain this burden. Mushroom Makers, 580 F.2d 44, 47 (2d Cir.1978).
        Courts analyzing likelihood of confusion must consider the eight-factor Polaroid test articulated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir1961). The factors are a) strength of mark; b) degree of similarity between the marks; c) the proximity of the products; d) the likelihood that the senior user of mark will bridge the gap; e) evidence of actual confusion; f) the junior user's bad faith vel non in adopting the mark; g) the quality of the junior user's product; and h) the sophistication of the relevant consumer group.
        In the context of the Internet, the Ninth Circuit has considered three factors: (1) the virtual identity of the marks; (2) the relatedness of plaintiff's and defendant's goods; and (3) the simultaneous use of the web as a marketing channel, as "most important." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-58 (9th Cir.1999).
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 3-4 (S.D.N.Y. Sept. 20, 2000))
 
 

Last, Defendant's use of PETA's Mark did cause confusion. Doughney copied the Mark identically. This creates a presumption of likelihood of confusion among internet users as a matter of law. New York State Society of Certified Public Accountants v. Eric Louis Associates, Inc., 79 F.Supp.2d 331, 340 (S.D.N.Y.1999). In addition, there was evidence of actual confusion by those using the internet who were trying to locate PETA and instead found Doughney's web site.
-- People For The Ethical Treatment Of Animals, Inc., v. Doughney, No. CIV.A. 99-1336-A., 2000 WL 943353, 3 (E.D.Va. June 12, 2000)

The likelihood of confusion as to a product's source is evaluated by balancing the eight factors set forth in Judge Friendly's seminal opinion in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). In considering plaintiff's claim here, this Court thus must examine the

The fact that Volkswagen and Virtual Works offer different products is irrelevant since "both parties use the Internet as a facility to provide goods and services." Playboy Enterprises v. Asiafocus International, 1998 WL 724000, *7 (E.D.Va.1998). See also, Cardservice International v. McGee, 950 F.Supp. 737, 741 (E.D.Va.1997), aff'd 129 F.3d 1258 (4th Cir.1997) (similar market channels exist because "both parties are using the internet as the facility to provide their services").
        Under Fourth Circuit law, evidence of actual confusion is not required but, it if present, is considered of "paramount importance" since it is "the best evidence of likely confusion." Resorts of Pinehurst, Inc. v. Pinehurst National Corp., 148 F.3d 417, 423 (4th Cir.1998); see also Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 937 (4th Cir.1995). There has been actual confusion in this case. Virtual Works admitted that email communications directed to Volkswagen were received by Virtual Works. This evidence of actual confusion is determinative of infringement.
--Virtual Works, Inc., v. Network Solutions, Inc., Volkswagen Of America, Inc., No. Civ.A. 99-1289-A. 106 F.Supp.2d 845, 847 (E.D. Va Feb. 24, 2000).
 

The Court finds that the operation of the website at www.americascup.com is likely to cause consumer confusion. The website appears for all intents and purposes to be masquerading as an official site associated with the America's Cup event. The domain name americascup.com is virtually identical to the registered mark "America's Cup." The same type of information is offered at both americascup.com and americascup.org. See Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036, 1053-61 (9th Cir.1999) (finding moviebuff.com similar to mark MovieBuff); Interstellar Starship Services Ltd. v. Epix Inc., 184 F.3d 1107, 1110-12 (9th Cir.1999) (finding epix.com similar to mark EPIX).
-- Quokka Sports, Inc., v. Cup Int'l Ltd., No. C-99-5076-Dlj, 99 F.Supp.2d 1105, 1114 (NDCA Dec. 13, 1999).
 

With respect to the element of confusion, the First Circuit has held:

- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 121-22 (DMA Sept. 2, 1999).
 
 

Strength of Mark

A mark's strength is assessed by (1) the degree to which it is inherently distinctive; and (2) the degree to which it is distinctive in the marketplace. W.W.W. Pharmaceutical Co. v. Gillette Co., 808 F.Supp. 1013, 1022 (S.D.N.Y.1992), aff'd, 984 F.2d 567 (2d Cir.1993). The strength of a mark should be examined in its commercial context. Centaur Communications, 830 F.2d at 1226, and the geographic scope of Plaintiff's mark will impact its strength of mark. See W.W.W. Pharmaceutical, 984 F.2d at 567.
        The GreenPoint mark is not inherently distinctive because it is a descriptive geographic term used by many businesses in the same geographic area. (Decl. Garrod, Ex. 3 (98% of the 214 active New York corporations using the "Greenpoint" name belonged to unrelated third party users); Def's Court Ex. J (identifying use of "Greenpoint" name by three insurance companies located in Brooklyn and Queens)). Further, as previously stated, Plaintiff has failed to established its secondary meaning. Use of Plaintiff's mark is primarily limited to the New York metropolitan area. Finally, there has been no showing that use of the term "GreenPoint," without the modifier "Bank" triggers an association with the Bank for any significant percentage of the public.
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 4 (S.D.N.Y. Sept. 20, 2000))
 
 

Strength of the Mark. The strongest marks are those which are "arbitrary and fanciful," Calamari, 698 F.Supp. at 1006, a category which clearly does not apply to the common word "clue." Neither is the plaintiff's mark "generic," the weakest type of mark, id., despite being a common word. "Generic" terms are those which refer to a category of good or service, without distinguishing the source or origin of the specific product. Id. CLUE (R) clearly does not refer to a general category of goods. Hasbro's mark may be characterized as "descriptive," meaning that it "portrays a characteristic of the article or service to which it refers" (in this case, a game involving clues and mystery), but it appears to fit most readily into the category of "suggestive" marks, which "connote rather than describe a particular product or service and require the consumer's imagination to reach a conclusion as to the nature of the product or service." Id. at 1006-07. The mark CLUE suggests mystery or detective work but requires the consumer's imagination to conclude that it refers to a mystery game.
        In any case, Hasbro has fully demonstrated that the mark has secondary meaning, which refers to an association by consumers between the trade name and a single provider of the good or service, and which strengthens the mark. See id. at 1008. Secondary meaning can be established by evidence of long and exclusive use, the prominence of the plaintiff's enterprise, extensive advertising and promotion of the mark, and recognition of secondary meaning among the public. Id.; Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 816 (1st Cir.1987). Hasbro has provided evidence of all of these factors. (Riehl Decl. ¶¶ 3-12, Exs. A-D.) Thus, while CLUE (R) is not in the most protected category of trademarks, it is clearly a strong mark.
        Nonetheless, the strength of a trademark is not decisive in an infringement inquiry. "[T]he muscularity of a mark, in and of itself, does not relieve the markholder of the burden to prove a realistic likelihood of confusion." IAM, 103 F.3d at 206. Here, Hasbro has not done so. Hasbro has produced evidence proving similarity of the marks and strength of its mark, but it has failed to produce any adequate evidence indicating intent to confuse, common channels of trade and advertising, common prospective purchasers, and the crucial categories of similarity of the products and actual confusion. Overall, Hasbro has failed to demonstrate, as a matter of law, that there is a likelihood that consumers will confuse Clue Computing's computer consulting Web site with Hasbro's game. Thus, Hasbro has failed to show a genuine issue of material fact on a crucial element of its federal trademark infringement claim, and Clue Computing is entitled to summary judgment on that claim.
-- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 125-26 (DMA Sept. 2, 1999).
 
 

Degree of Similarity Between the Marks

Similarity is weighed in light of whether (1) the marks appear in connection with other identifying information, and (2) the total effect of the designation. W.W.W. Pharmaceutical, at 573. Where a similar mark is used in conjunction with a company name, the likelihood of confusion is lessened. McGregor-Doniger v. Drizzle, 599 F.2d 1126, 1134 (2d Cir.1979).
        When comparing similar domain names the "proper starting point should be the parties' respective trademarks, rather than domain addresses. The trademarks provide a broader dimension for analysis. Website addresses themselves, characterized by the style of uniformly lower case lettering and compressed wording, do not adequately express certain nuances of common meaning and understanding of words in the marks at issue in this case." Big Star Entertainment, Inc. v. Next Big Star Inc, 54 U.S.P.Q.2d 1685, 1698 (S.D.N.Y.2000).
        In terms of similarity between the marks, at least the proposed trademark "Green Points" is similar to Plaintiff's stylized "GreenPoint." Defendants have not demonstrated that the company name S & H always precedes the "Green Points" mark. Furthermore, "greenpoint.com" and "greenpoints.com" are similar. However, to the degree that some confusion may inevitably arise from the proximity of the party's domain names, the Court believes the confusion would not be actionable because of the weakness of the other Polaroid factors.
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 4 (S.D.N.Y. Sept. 20, 2000))
 

    Similarity of the marks. The marks at issue are essentially identical. Hasbro owns the trademark for CLUE (R), while Clue Computing's web domain is "clue.com." However, "otherwise similar marks are not likely to be confused if they are used in conjunction with clearly displayed names, logos or other source-identifying designations of the manufacturer." International Ass'n of Machinists and Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 204 (1st Cir.1996) (hereinafter "IAM "). Here, Clue Computing's Web site is clearly headed "Clue Computing," contains a description of Clue Computing's business, and features a logo noticeably different from that of the Hasbro game (even though the logo contains a magnifying glass, as does some of the promotional material for the CLUE game). (See Levin Decl., Ex. C; compare Levin Decl.,Ex. B.) These surrounding conditions mitigate somewhat the similarity of the marks, although they do not change the fact that the domain name itself, without necessarily going to the Web page, is identical to Hasbro's mark. "Still, similarity is determined on the basis of the designation's total effect, and infringement 'does not exist, though the marks be identical and the goods very similar, when the evidence indicates no [likelihood of confusion].' " IAM, 103 F.3d at 203-04 (quoting James Burrough Ltd. v. Sign of the Beeffeater, Inc., 540 F.2d 266, 274) (7th Cir.1976)) (citation omitted). Ultimately, the similarity of the marks here will not be decisive if other factors indicate a lack of confusion.
- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 122 (DMA Sept. 2, 1999).

Proximity of the Products

"This factor addresses whether and to what extent the parties compete with each other." Conopco, Inc. v. Cosmair, Inc., 49 F.Supp.2d 242, 251 (S.D.N.Y.1999) (citing W.W.W. Pharmaceutical Co., 984 F.2d at 573). "In making this assessment 'the court may consider whether the products differ in content, geographic distribution, market position, and audience appeal." ' Id. (quoting W.W.W. Pharmaceutical Co at 573).
        S & H Greenpoints is a program allowing consumers to earn points toward a variety of merchandise and services. GreenPoint Financial is a banking and mortgage lending service. Although both operate on the Internet, the diversity of services offered, precludes a finding of likelihood of confusion.
        Plaintiff attempts to mask the inherent differences between the two companies. While Plaintiff alleges in its brief that the parties provide similar products as Plaintiff provides "online banking ... while Defendants offer online services," see Mem. Law at 17, the services offered by the two companies are truly apples and oranges.
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 5 (S.D.N.Y. Sept. 20, 2000))
 

Similarity of Goods and Services. I find very little similarity between Hasbro's products and Clue Computing's services. Hasbro's CLUE is promoted, even in its CD-ROM form, as "The Classic Detective Game." (See Larson Sept. 25 Aff., Ex. S.) Clue Computing, according to its Web site, "offers a wide array of computing consulting services for businesses needing dependable, high quality work done at a reasonable price." (Levin Decl., Ex. C.) These products as presented on the Internet--the arena at issue in this case--could scarcely be more different.
        Hasbro, however, attempts to show that their product and Clue Computing's product do in fact have substantial overlap. Hasbro provides on-line technical support to users of its CLUE (R) CD-ROM game, (Puffer Decl. ¶ 2), which it alleges is similar to the support services that Clue Computing provides. (Pl. Hasbro, Inc.'s Mem. in Opp'n to Def.'s Mot. for Summary Judgment ("Pl.'s Opp'n") at 16.) First, it is an extraordinary stretch to assert that Hasbro's technical support to game users is similar in any meaningful way to the "computing consulting services" provided by Clue Computing. Second, even to the extent that Hasbro may provide similar services, these services are at most a small component of the CLUE product and are entirely subordinate to its nature as a game. CLUE players seeking on- line support services will be seeking Web sites dedicated to the game, not to computer services in general. I do not find Hasbro's argument to be persuasive.
        Hasbro also asserts that Clue Computing's inclusion of "The Land of the Faerie, a recently-released album by Darrah Nagle," (Levin Decl., Ex. C at H0067) in their Web site shows that Clue Computing provides entertainment services similar to those at Hasbro's CLUE-related Web sites. "The Land of the Faerie" appears completely irrelevant to this dispute; it is not prominently featured on Clue Computing's site and in any case has no particular connection to the game CLUE.
        Courts have generally required far stronger showings than those present here to find similarity of goods. The First Circuit, for example, found two products dissimilar even though both were cameras because "[t]heir appearances are strikingly different so much so that one could not be mistaken for the other." Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981).
-- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 122-23 (DMA Sept. 2, 1999).
 
 

This factor refers to the likelihood of Plaintiff's entry into Defendants' area of commerce.  Plaintiff deals in personal savings accounts, specialized mortgages and financing of manufactured housing. Plaintiff issues credits cards. Defendants provide no banking services and provide redemption of points for consumers who purchase products and services at institutions that are clients of the Defendant. One such client, includes a bank based in Boston that provides credit cards. The Court does not foresee, on the evidence presented, that the Plaintiff will engage in point redemption for consumer merchandise.
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 5 (S.D.N.Y. Sept. 20, 2000))

Channels of Trade

Channels of Trade; Advertising; Classes of Prospective Purchasers. In accordance with First Circuit precedent, see IAM, 103 F.3d at 204; Star, 89 F.3d at 10 n. 3, I will here consider these three categories together. Clue Computing conducts most of its business, including publicizing its services, through the Internet. (Def.'s Facts ¶ 5.) Hasbro has advertised the game CLUE in many different forums, including promotional trade catalogs, television commercials, and promotional literature included in the packaging of other Hasbro games, (Riehl Decl. ¶ 8),⁵ and has sold many copies of the game through retail stores, among other outlets. (Riehl Decl., Ex. B.) Hasbro has also in recent years begun advertising and selling its CLUE products over the Internet, creating some overlap with Clue Computing in advertising and channels of trade. (Puffer Decl. ¶¶ 2, 4-5.)

Actual Confusion

Actual confusion means "consumer confusion that enables a seller to pass off his goods as the goods of another." See Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 963 (2d Cir.1996) (quoting W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 574 (2d Cir.1993)). To show actual confusion the senior user must demonstrate that the alleged infringing party " 'could inflict commercial injury in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation." ' Sports Authority, Inc., 89 F.3d at 963.
        "[T]he relevant confusion is that which affects 'the purchasing and selling of the goods or service in question." ' See Lang v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir.1991). As such, a suit for "trademark infringement protects only against mistaken purchasing decisions and not against confusion generally." Lang, 949 F.2d at 583.
        Evidence supporting existence of actual confusion, includes "mistaken orders, complaints from customers or website visitors, market surveys or other signs of uncertainty reflecting actual consumer confusion." See Big Star Entertainment, Inc. v. Next Big Star Inc., 54 U.S.P.Q.2d at 1705.
        Plaintiff's counsel concedes that the purpose of the survey evidence was to demonstrate dilution rather than actual confusion. Plaintiff's counsel states that the survey is "strictly a dilution study within the geographic area that was surveyed among the respondents that were surveyed."
        For the reasons stated above, under the likelihood that the senior user will bridge the gap, the Court finds no evidence of the existence of actual confusion despite random e-mails to Plaintiff's bank from potential customers whom, in the Court's opinion, they would be better off without, inquiring about gift redemption.
-- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 5-6 (S.D.N.Y. Sept. 20, 2000))
 
 

Actual Confusion. From the more than four years since Clue Computing began using the "clue.com" domain name, Hasbro has produced only a few scraps of evidence of actual confusion between Clue Computing's Web site and Hasbro's trademark. Plaintiff has produced three emails, including two sent three minutes apart by the same person, directed to the email address link on Clue Computing's Web site asking about the game CLUE. (Levin Decl., Ex. G.) There is no way to verify the source or authenticity of two of the emails, so they are of limited value as evidence. Hasbro has produced an affidavit from the author of the third email saying that she was confused by the defendant's Web site and thought that it was connected to technical support for Plaintiff's CLUE CD-ROM. (Magestro Decl.) Hasbro also submitted an affidavit from one other customer who contacted the company after apparently searching for Hasbro's Web site without success and briefly becoming confused by Clue Computing's "clue.com" site. (Britt Decl.)
        The fact that one, two or three people over four years may have expressed confusion between Clue Computing's Web site and Hasbro's game does not constitute the level of actual confusion necessary to support a general finding of likelihood of confusion. "[A] single misdirected communication is very weak evidence of consumer confusion." Pignons, 657 F.2d at 490. Indeed, several cases in this circuit have held similar evidence inadequate to show confusion. See id. at 489-91 (finding that a misdirected order for a camera and a deposition suggesting an instance of possible customer confusion over a four year period did not constitute a likelihood of confusion); Black Dog, 823 F.Supp. at 56 (finding that, when plaintiff produced evidence of a comment confusing the two products and at least one request to plaintiff for defendant's product in a two year period, "the absence of more evidence of actual confusion weighs against a finding of likelihood of confusion"); IAM, 103 F.3d at 205-06 (finding that several alleged inquiries as to whether plaintiffs authored defendants' letter were insufficient and did not change the fact that "no person of ordinary prudence" would have been confused). By contrast, cases in which courts in this circuit found actual confusion contained significantly more evidence. See Calamari Fisheries, Inc. v. The Village Catch, Inc., 698 F.Supp. 994, 1003-04, 1011 (D.Mass.1988) (evidence including a newspaper article confusing the plaintiff's and defendant's restaurants and numerous affidavits from staff people and customers detailing many instances of confusion between the restaurants); Edison Brothers Stores, Inc. v. National Dev. Group, Inc., 1992 WL 55465, at *3 (D.Mass. Mar.6, 1992) ("plaintiff has made a strong demonstration by submitting uncontradicted affidavits" with numerous instances of confusion).
        Furthermore, to the extent that Ms. Magestro's and Mr. Britt's affidavits show actual confusion, they do not show reasonable confusion, which is required to find infringement. "[T]he law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care. This means, of course, that confusion resulting from the consuming public's carelessness, indifference, or ennui will not suffice." IAM, 103 F.3d at 201 (citations omitted). Considering the vast difference between Clue Computing's services and Hasbro's game and the explicitness of Clue Computing's Web site as to the nature of its business, any confusion shown by Hasbro seems to fit into the latter category of "carelessness, indifference, or ennui." ⁷

Initial Interest Confusion

Even if actual confusion is unlikely, Plaintiffs argue that there is a likelihood of "initial interest confusion." See Pl. Sup. Mem. at 7-10. Accepting, arguendo, the concept of initial interest confusion in an Internet case,¹⁴ Bihari has failed to prove a likelihood of initial interest confusion.

The Ninth Circuit recently provided a useful metaphor for explaining the harm of initial interest confusion in cyberspace:

Furthermore, users are unlikely to experience initial interest confusion when searching the Internet for information about Bihari Interiors. In support of their motion, Plaintiffs' counsel provided a typical search result when "Bihari Interiors" is entered into the search field. See MetaCrawler Search Results from March 16, 2000 ("3/16/2000 Search Results"), Ex. C to 3/16/00 Letter from Brian Maas, Esq., Counsel for Bihari, to Court ("3/16/00 Maas Letter"). The search revealed twelve websites, eight of which appear to be the Gross websites. Of those eight, five bear the heading "Manhattan Interior Design Scam--Bihari Interiors." Each website with that heading contains the following description underneath the title: "This site deals with the problems experienced when hiring a New York City (Manhattan) designer. It discusses Marianne Bihari[,] fraud and deceit and...." 3/16/2000 Search Results, Ex. C to 3/16/2000 Maas Letter, at 1 (ellipses in original). An Internet user who reads this text, and then sees the domain name of "designscam.com" or "manhattaninteriordesign.com", is unlikely to believe that these websites belong to Bihari Interiors or Bihari.¹⁶ See Brookfield Communications, 174 F.3d at 1062 (relying on search engine results and different domain names to show that level of confusion is less severe when mark is included as a metatag as compared to mark's inclusion in domain name).

Similarly, in Playboy Enters., Inc. v. Asiafocus Int'l, Inc., No. Civ. A. 97- 734-A, 1998 WL 724000, at *3,*6- *7 (E.D.Va. Apr. 10, 1998), the court enjoined use of the marks "Playboy" and "Playmate" in the domain name and metatags of defendant's website. The defendant provided adult nude photos on webpages located at "asian-playmates.com" and "playmates-asian.com". The "Playboy" and "Playmate" trademarks were embedded in the metatags such that a search for Playboy Enterprises Inc.'s ("Playboy") website would produce a list that included "asian-playmates.com". See id. at *3,*5- *6; see also Playboy Enters., Inc. v. Calvin Designer Label, 985 F.Supp. 1220, 1221 (N.D.Cal.1997) (preliminarily enjoining defendant's website, "www.playboyxxx.com" and repeated use of the "Playboy" trademark in defendant's metatags). Defendants in these cases were clearly attempting to divert potential customers from Playboy's website to their own.

Even Brookfield Communications, where initial interest confusion was first applied to metatags, presents convincing proof of diversion. Brookfield sought to protect its trademark in its "MovieBuff" software, which provides entertainment-industry information. Brookfield had created a website offering an Internet-based searcheable database under the "Moviebuff" mark. The defendant, West Coast, a video rental store chain, registered a site at "moviebuff.com" which also contained a searchable entertainment database. The court held that defendant's use of the "moviebuff.com" domain name constituted trademark infringement. See id. at 1061. The court also enjoined West Coast from using any term confusingly similar to "moviebuff" in the metatags based on the initial interest confusion caused by the use of Brookfield's mark, which would redound to West Coast's financial benefit. See id. at 1065.

In each of these cases, the defendant was using the plaintiff's mark to trick Internet users into visiting defendant's website, believing either that they were visiting plaintiff's website or that the defendant's website was sponsored by the plaintiff. As more fully discussed below, see infra Part IV.A.3.e, Gross's use of the "Bihari Interiors" mark in the metatags is not a bad-faith attempt to trick users into visiting his websites, but rather a means of cataloging those sites.

• Bihari v. Gross, No. OO Civ. 1664 (SAS), 9-10 (SDNY Sept 25, 2000).

• Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 125 (DMA Sept. 2, 1999).

Intent. Plaintiff has produced no evidence that Clue Computing intended to create confusion among consumers between its services and Hasbro's game. The fact that Clue Computing's founders knew of the existence of the game (Levin Decl., Ex. K at 7, Ex. L at 4) does not in any sense mean that they intended for their company to infringe upon or benefit from Hasbro's mark. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F.Supp. 605, 620 (E.D.Va.1997), aff'd, 170 F.3d 449 (4th Cir.1999) (hereinafter "Ringling 1 ") ("Utah's adoption and use of its mark notwithstanding its knowledge of Ringling's famous mark cannot, without more, demonstrate predatory intent."). Similarly, Hasbro's opinion that Clue Computing chose a logo "suspiciously similar" to the graphics for the CLUE game is not persuasive in showing intent. (Pl.'s Opp'n at 21; Levin Decl., Ex. E.) Both logos use a magnifying glass, but the word 'clue' has long been associated with detectives and magnifying glasses, independent of Hasbro's game. Hasbro has produced no evidence that gives rise to an inference of intent. I note, however, that the First Circuit recently commented that courts should not give great weight to a finding of lack of intent in determining likelihood of confusion because the presence or absence of intent does not impact the perception of consumers whose potential confusion is at issue. See Lund, 163 F.3d at 44.

- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 125 (DMA Sept. 2, 1999).

Registration Not Required

Registration is not a prerequisite to protection under § 43(a) of the Lanham Act. See Forschner Group, Inc. v. Arrow Trading Co., 124 F.3d 402, 407 (2d Cir.1997).

• Bihari v. Gross, No. OO Civ. 1664 (SAS), 7 (SDNY Sept 25, 2000).

-- Bigstar Entertainment, Inc., v. Next Big Star, Inc., No. 00 Civ. 0911 VM, 105 F.Supp.2d 185, 191 (SDNY April 17, 2000).

Discriptive Sense

The requirement that a trademark be used in its descriptive sense is met where the mark is used in an index or catalog, or to describe the defendant's connection to the business claiming trademark protection. See Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 73-74 (2d Cir.1999) (permitting fair use defense where defendant, a company that gathers news articles and sells "abstracts" summarizing the articles, routinely used the plaintiff's mark in the reference line of its abstracts to identify the source of the article abstracted by the defendant); Restatement (Third) of Unfair Competition § 28 cmt. a (1995) (fair use defense protects a subsequent user's use of a personal name designation "if the name is used solely to indicate truthfully the named person's connection with the goods, services, or business."). Applying this general rule to the metatag context, Professor McCarthy states: "[T]he fair use defense applies ... if another's trademark is used in a meta tag solely to describe the defendant or defendant's goods or services...." 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ("McCarthy"), § 25:69 at 25-137 (4th ed.1999). This position finds support in recent cases. In Playboy Enters., Inc. v. Welles, 7 F.Supp.2d 1098 (S.D.Cal.1998), Playboy sought to enjoin Terri Welles, a former "Playmate of the Month" and "Playmate of the Year", from utilizing the trademarked terms "Playboy" and "Playmate" in the metatags of Welles's website. The court denied the injunction, holding that use of the trademarked terms in the metatags is a fair use. The court stated:

Here, Gross has included "Bihari Interiors" in the metatags of his websites because the websites provide information about Bihari Interiors and Marianne Bihari. Gross has not used the terms "Bihari Interiors" and "Bihari" in the metatags as a mark, but rather, to fairly identify the content of his websites. In short, Gross uses the "Bihari Interiors" mark in its descriptive sense only.

Moreover, use of the "Bihari Interiors" mark in the metatags of his websites is the only way Gross can get his message to the public. See Bally Total Fitness, 29 F.Supp.2d at 1165 ("Prohibiting [the defendant] from using Bally's name in the machine readable code would effectively isolate him from all but the most savvy of Internet users."). A broad rule prohibiting use of "Bihari Interiors" in the metatags of websites not sponsored by Bihari would effectively foreclose all discourse and comment about Bihari Interiors, including fair comment. Courts must be particularly cautious of overextending the reach of the Lanham Act and intruding on First Amendment values. Cf. Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.1989) (holding that movie titles using a celebrity's name will not be actionable under the Lanham Act unless the title has no artistic relevance to the underlying work or if the title misleads as to the source or the content of the work); 4 McCarthy, § 27:91 at 27-140 ("Whether through the use of statutory interpretation or concern for free speech, traditional protections for commentators and critics on business and commercial affairs must not be jettisoned. It is important to create critical breathing space for legitimate comment and criticism about products and services."). The Second Circuit's warning in a recent Internet case to proceed cautiously when dealing with the frontier of expressive speech on the Internet is particularly instructive:

• Bihari v. Gross, No. OO Civ. 1664 (SAS), 12-13 (SDNY Sept 25, 2000).

To benefit from the defense of fair use, Gross must have acted in good faith. The inquiry into a defendant's good faith focuses on whether "the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 583 (2d Cir.1991).

Bihari argues, in a conclusory fashion, that Gross did not adopt the "Bihari Interiors" mark in good faith. Rather, Gross intended to divert individuals searching for information about Bihari Interiors to his websites. See Pl. Mem. at 33; Pl. Sup. Mem. at 8. This argument is not persuasive. Metatags serve as a cataloging system for a search engine. Gross has the right to catalog the contents of his websites. Furthermore, the fact that Gross knew of the prior use of the "Bihari Interiors" mark does not in itself prove a lack of good faith. "[P]rior knowledge of [plaintiff's] trade name does not give rise to a necessary inference of bad faith, because adoption of a trademark with actual knowledge of another's prior registration ... may be consistent with good faith." Lang, 949 F.2d at 583-84; Restatement (Third) of Unfair Competition § 28 cmt. d ("Knowledge of a prior trademark use of the term does not in itself prove a lack of good faith.").

In addition, the domain names of the Gross websites and the disclaimer prove that Gross is using "Bihari Interiors" in good faith. The domain names of his websites in no way confuse Internet users into believing that his site is actually that of Bihari Interiors. See, e.g., Planned Parenthood, 1997 WL 133313, at *8- *10 (defendant's anti-abortion website violates the Lanham Act because, among other reasons, it was registered at "www.plannedparenthood.com", and the site greeted users with "Welcome to the PLANNED PARENTHOOD HOME PAGE"). Moreover, the Gross websites include a disclaimer: "Keep in mind that this site reflects only the view points and experiences of one Manhattan couple...." See Amended Complaint ¶ 92. Although a disclaimer cannot insulate Gross from liability, it indicates good faith use of the service marks and weighs in Gross's favor. See Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1053 (2d Cir.1983) ("Disclaimers are a favored way of alleviating consumer confusion as to source or sponsorship"); Welles, 7 F.Supp.2d at 1104. Even if the Gross websites are mean-spirited and vindictive, bad faith cannot be imputed as well to Gross's use of the "Bihari Interiors" mark in the metatags. See Nihon Keiza Shimbun, 166 F.3d at 74 (holding that use of plaintiff's mark is in good faith even though "other aspects of defendants' behavior may have evidenced bad faith.").

-- Bihari v. Gross, No. OO Civ. 1664 (SAS), 13 (SDNY Sept 25, 2000).

Federal Trademark Dilution Act

Federal Trademark Dilution Act of 1995, Pub.L. No. 104-98, 109 Stat. 985 (codified at 15 U.S.C. §§ 1125, 1127 (Supp.1996)).

The Second Circuit recently outlined the five necessary elements to a claim of federal dilution: (1) the senior mark must be famous; (2) it must be distinctive; (3) the junior use must be a commercial use in commerce: (4) it must begin after the senior mark has become famous; and (5) it must cause dilution of the distinctive quality of the senior mark. Nabisco, Inc v. PF Brands, Inc, 191 F.3d 208 (2d Cir.1999).

• -- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 7 (S.D.N.Y. Sept. 20, 2000))

-- People For The Ethical Treatment Of Animals, Inc., v. Doughney, No. CIV.A. 99-1336-A., 2000 WL 943353, 4 (E.D.Va. June 12, 2000)
 
 

Remedy

But Sportsman's might, nonetheless, be eligible for damages under the FTDA since there is nothing in the ACPA that precludes, in cybersquatting cases, the award of damages under any pre-existing law. See 15 U.S.C § 1125(d)(3) (providing that any remedies created by the new act are "in addition to any other civil action or remedy otherwise applicable"). Under the FTDA, "[t]he owner of the famous mark shall be entitled only to injunctive relief unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark." Id. § 1125(c)(2) (emphasis added). Accordingly, where willful intent to dilute is demonstrated, the owner of the famous mark is--subject to the principles of equity--entitled to recover (1) damages (2) the dilutor's profits, and (3) costs. See id.; see also id. § 1117(a) (specifying remedies).
-- Sporty's Farm L.L.C., V. Sportsman's Market, Inc., 202 F.3d 489, 500 (2^nd Cir. 2000)
 
 

Elements of Cause of Action

The FTDA states:

- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 130 (DMA Sept. 2, 1999).
 

 Commercial Use

[t]he owner of a famous mark shall be entitled ... to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and cuases dilution of the dnstinctive quality of the mark.

Similarly, in Jews for Jesus v Brodsky, 993 FSupp 282 (DNJ) aff'd 159 F3d 1351 (3d Cir 1998), the United States District Court for the District of New Jersey found that the defendant's use of plaintiff's mark in the domain name "jewsforjesus.com" constituted "commercial use" because the site was "a conduit" to another of the defendant's webpages, which conducted fund raising through the sale of merchandise.  Looing beyond this fact, however, the court added that

[t]he conduct of the Defendant also contitutes a commercial use of the MArk and the Name of the Plaintiff Organization because it is designed to harm the Plaintiff Organization commercially by disparaging it and preventing the Plaintiff Organization from exploiting the Mark and the Name of the Plaintiff Organization.  In addition, the Defendant Internet site has and will continute to inhibit the efforts of Internet users to locate the Plaintiff organization Intenret site.

 Famous Marks

Dilution is "the lessening of the capacity of a famous mark to identify and distinguish goods or services." 15 U.S.C. 1127.

As Professor McCarthy has stated:

. . . . .

Concerning federal dilution, the term "fame" is used in its "ordinary English language sense." Nabisco, 191 F.2d at 215. "The geographic fame of the mark must extend throughout a substantial portion of the U.S." HRRep No. 374, 104th Cong., 1st Sess.1995, 1996 U.S.C.C.A.N. 1029, 1030-31 (cited in Star Markets Ltd. v. Texaco, Inc., 950 F.Supp. 1030, 1034 (D.Haw 1996)).

While one district court has granted federal dilution protection for alleged fame within a several county area, see Gazette Newspapers, Inc. v. New Paper, Inc., 934 F.Supp. 688 (D.Md.1996), the Court concludes that opinion is in conflict with Congressional intent. Operation within a five state region is the next smallest geographical extent found protected under the dilution statute. Star Markets, 950 F.Supp. at 1034 (citing WAWA, Inc. v. Haaf, 1996 WL 460083 (E.D.Pa. Aug 7, 1996)).

Here, Plaintiff has conceded that it lacks fame outside of the tri-state, New York, Connecticut, and New Jersey area. Accordingly, Plaintiff cannot meet the fame requirement for federal dilution protection.

• -- Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 6 (S.D.N.Y. Sept. 20, 2000))

The FTDA provides a non-exhaustive list of factors to consider in order to determine whether a mark is "distinctive and famous":

Two of the statutory factors deserve slightly more consideration: the distinctiveness of the mark⁹ and third party uses of it. The factors discussed above--the widespread recognition of Hasbro's mark and its longtime use and advertising--suggest "acquired distinctiveness," which is recognized by the FTDA. However, as Clue Computing points out, "clue" is a common word with a variety of meanings, and at least one court has indicated that a mark may not be entitled to protection from dilution by use consistent with that mark's usage as a common word. See Polo Ralph Lauren L.P. v. Schuman, 1998 WL 110059, at *12 (S.D.Tex. Feb.9, 1998) (finding that defendant's use of the word 'Polo' in the name of his adult entertainment club traded on the plaintiff's mark, rather than on the common meaning of the word). Here, defendant's use of the word 'clue' is entirely consistent with the common usage of the word.

To be sure, some courts appear to have found marks to be famous in situations roughly analogous to this one. See Lozano Enterprises v. La Opinion Publishing Co., 44 U.S.P.Q.2d 1764, 1769 (C.D.Cal.1997) (finding that the Spanish phrase "la opinion" is subject to FTDA protection as a famous mark). In Johnson Publishing Co. v. Willitts Designs Int'l, Inc., 1998 WL 341618, at *7 (N.D.Ill. June 22, 1998), the court found the relatively common word "ebony" to be a famous mark, noting that "[t]hough there is some evidence of substantial third-party use of marks with the term 'Ebony' or with similar terms, this is not sufficient to overcome other factors indicating that the EBONY mark is famous." Id.

I find more persuasive, however, the opinions of other courts faced with marks consisting of relatively common terms and with use of the same terms by third parties, which have concluded that the contested marks were not sufficiently famous to warrant FTDA protection. See Columbia, 964 F.Supp. at 750 (finding that "any acquired distinctiveness" of Columbia University's mark for the name Columbia "in connection with medical or healthcare services has been seriously undermined by third party use of the same or similar marks"); Sports Authority, Inc. v. Abercrombie & Fitch, Inc., 965 F.Supp. 925, 941 (E.D.Mich.1997) (finding that the Sports Authority's trademark for "authority" has been diminished by third party use and was "not so famous as to deserve protection under the federal dilution statute"). More importantly, the First Circuit has set out a high standard for district courts to find that a mark is famous for the purposes of the FTDA. In Lund, the First Circuit wrote that "courts should be discriminating and selective in categorizing a mark as famous" and noted the "rigorous standard of fame." 163 F.3d at 46-47. Given this high standard, I find Hasbro has failed to establish that its mark, which is a common word that numerous third parties use, is famous and thus entitled to protection from dilution. I will, nonetheless, proceed to the substantive dilution analysis.

• Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 130-32 (DMA Sept. 2, 1999).

Blurring

Defendant is guilty of "blurring" the famous PETA Mark because (1) Defendant used the identical PETA Mark to mentally associate PETA.ORG to the PETA Mark; and (2) such use caused; (3) actual economic harm to the PETA Mark by lessening its selling power as an advertising agent for PETA's goods and services. Ringling Bros., 170 F.3d at 458. Doughney's site included materials antithetical to the purpose and message of PETA in that "PETA.ORG" included links to commercial enterprises engaged in conduct directly contrary to PETA's animal protection efforts.

• People For The Ethical Treatment Of Animals, Inc., v. Doughney, No. CIV.A. 99-1336-A., 2000 WL 943353, 4 (E.D.Va. June 12, 2000)

Judge Sweet, in a widely cited Second Circuit concurring opinion, identified six concrete factors for courts to consider in determining whether the vague concept of 'blurring' applies to a specific case: "(1) similarity of the marks (2) similarity of the products covered by the marks (3) sophistication of consumers (4) predatory intent (5) renown of the senior mark (6) renown of the junior mark." Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1035 (2d Cir.1989) (Sweet, J., concurring). Although this list was initially drafted in the context of a state dilution statute, several courts have accepted Judge Sweet's test for determining dilution by blurring under the FTDA. See, e.g., Ringling 3, 937 F.Supp. at 211; Clinique Laboratories, Inc. v. DEP Corp., 945 F.Supp. 547, 562 (S.D.N.Y.1996).

The First Circuit, however, recently rejected the "Sweet factors," agreeing with commentators that these factors "are the offspring of classical likelihood of confusion analysis and are not particularly relevant or helpful in resolving the issues of dilution by blurring." Lund, 163 F.3d at 49 (quoting 3 McCarthy § 24:94.1). More specifically, the First Circuit accepted McCarthy's analysis that four of the factors--intent, similarity of the products, sophistication of customers, and renown of the junior mark--"work directly contrary to the intent of a law whose primary purpose was to apply in cases of widely differing goods, i.e. Kodak pianos and Kodak film." Id. (citing 3 McCarthy § 24:94.1). The First Circuit noted McCarthy's conclusion that only two of the factors--the similarity of the marks and the renown of the senior mark--are relevant to dilution analysis. Id.See also Ringling 2, 170 F.3d at 464 (The 4th Circuit agreed with the 1st Circuit and commentators that "by and large, the Mead-factor analysis simply is not appropriate for assessing a claim under the federal Act.")

The First Circuit concluded, " 'The familiar test of similarity used in the traditional likelihood of confusion test cannot be the guide [for dilution analysis], for likelihood of confusion is not the test of dilution.' ... Instead, the inquiry is into whether target customers are likely to view the products 'as essentially the same.' " Id. at 50 (quoting 3 McCarthy § 24:90.1). The First Circuit provided no further analysis of the appropriate dilution standard, concluding that a broad reading of dilution would create constitutional problems under the Patent Clause in the context of a trade dress for a product design, which was at issue in Lund, and further concluding that the plaintiff had not shown a likelihood of success on its dilution claim under the standard set out in Lund. Id. I note, however, that the First Circuit did assert that "the dilution standard is a rigorous one." Id. at 33.

Because the First Circuit in Lund undertook to provide only limited guidance regarding what the test for dilution ought to be--as opposed to what the test should not be--I look to McCarthy, upon whom the First Circuit heavily relied. McCarthy states that for blurring, "the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same."¹¹ 3 McCarthy § 24:90.1. As noted above, he describes blurring as "one mark seen by customers as now identifying two sources." Id. Further, "[t]he plaintiff must prove that the capacity of the mark to continue to be strong and famous will be endangered by the defendant's use" even if the defendant's use is too small or minor to actually weaken the plaintiff's mark. Id. at § 24:94 (emphasis in original). Finally, McCarthy cautions:

The analysis here is different from but similar to infringement analysis, in which Clue Computing was found entitled to summary judgment. There, the crucial factor of a lack of actual confusion, which is not part of the blurring analysis, also weighed in Clue Computing's favor. In addition, to be sure, the dissimilarity of the products, which benefits Clue Computing, takes on much greater significance in infringement analysis because similarity of products can lead to a likelihood of confusion, which is required for infringement but not for blurring. In the infringement analysis, those crucial factors led me to conclude that Hasbro had not proven any genuine issue of material fact that would allow a rational factfinder to find for them on confusion. Parallel findings satisfy me as the factfinder under the FTDA that Hasbro has not demonstrated dilution.

-- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 134-36 (DMA Sept. 2, 1999).

Cybersquatting per se dilution

Recent case law holds that internet cyperpiracy constitutes per se trademark dilution. See Panavision Int'l., L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir.1998) (holding that misappropriating domain name "panavision.com" and attempting to sell that domain name to the rightful owner of Panavision mark constituted dilution). Dilution is "the lessening of a capacity of a famous mark to identify and distinguish go`ods and services, regardless of the presence or absence of--(1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception. 15 U.S.C. § 1127." Washington Speakers Bureau, 33 F.Supp.2d at 502 (E.D.Va.1999). Courts have held that dilution may be done by "blurring" which is described as "if the defendant uses the word as its own trademark for goods that are so different that no confusion of source or sponsorship can occur." 3 McCarthy on Trademarks and Unfair Competition § 24:103 at 24-188 (4th ed.1998). For example, "the use of DuPont shoes, Buick aspirin and Kodak pianos would be actionable" under the law of trademark dilution. Washington Speakers Bureau, 33 F.Supp.2d 488 at fn. 32. VW being associated with Virtual Works instead of Volkswagen constitutes trademark dilution. Volkswagen has experienced economic harm as a result of not being able to use VW.NET and as a result of this dilution by Virtual Works.

• Virtual Works, Inc., v. Network Solutions, Inc., Volkswagen Of America, Inc., No. Civ.A. 99-1289-A. 106 F.Supp.2d 845, 847-48 (E.D. Va Feb. 24, 2000).

I join those courts finding that, while use of a trademark as a domain name to extort money from the markholder or to prevent that markholder from using the domain name may be per se dilution, a legitimate competing use of the domain name is not. Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark. I reject Hasbro's request for a per se dilution rule and instead turn to whether Clue Computing has diluted Hasbro's CLUE (R) mark under existing dilution standards.

-- Hasbro, Inc., v. Clue Computing, Inc., No. CIV. A. 97-10065-DPW, 66 F.Supp.2d 117, 132-33 (DMA Sept. 2, 1999).

False Origin

15 U.S.C. § 1125(a) provides, inter alia, a "federal cause of action for false representation as to the origin of goods. The Polaroid factors, which are used to evaluate confusion in infringement cases, are also applicable in cases under 43(a). Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

• Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., No. 00 CIV. 4681(DAB), 2000 WL 1364363, 8 (S.D.N.Y. Sept. 20, 2000))

Anticybersquatting Consumer Protection Act ("ACPA"), Pub.L. No. 106-113 (1999), see HRRep No. 106-479 (Nov. 18, 1999)

15 U.S.C. § 1125(d)(1)

On November 29, 1999, Congress adopted the ACPA "to remedy the perceived shortcomings of applying the FTDA [Federal Trademark Dilution Act] in cybersquatting cases." Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 495 (2d Cir.2000). To establish a claim of cybersquatting, a plaintiff must show: (1) that she had a distinctive mark at the time of the registration of the domain name; (2) that the defendant "registers, traffics in, or uses a domain name" that is identical or confusingly similar to that mark; and (3) that the defendant has "a bad faith intent to profit from that mark." 15 U.S.C. § 1125(d)(1).⁹ A preliminary injunction is a remedy authorized by the ACPA. See 15 U.S.C. § 1116(a).

 Caselaw

• Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2nd Cir. Feb 02, 2000), cert. denied 120 S.Ct. 2719, 147 L.Ed.2d 984 (Jun 26, 2000)
• Northland Ins. Companies v. Blaylock, 115 F.Supp.2d 1108 (D.Minn. Sep 25, 2000)
• People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F.Supp.2d 915 (E.D.Va. Jun 12, 2000), appeal pending
• Banco Inverlat, S.A. v. www.inverlat.com, 112 F.Supp.2d 521 (E.D.Va. Sep 08, 2000)
• Caesars World, Inc. v. Caesars-Palace.Com, 112 F.Supp.2d 505 (E.D.Va. Aug 25, 2000)
• Harrods Ltd. v. Sixty Internet Domain Names, 110 F.Supp.2d 420 (E.D.Va. Aug 15, 2000)
• Amberson Holdings LLC v. Westside Story Newspaper, 110 F.Supp.2d 332 (D.N.J. Aug 22, 2000)
• Heathmount A.E. Corp v. Technodome.Com, 106 F.Supp.2d 860 (E.D.Va. Jul 24, 2000)
• America Online, Inc. v. Huang, 106 F.Supp.2d 848 (E.D.Va. Jul 13, 2000)
• Virtual Works, Inc. v. Network Solutions, Inc., 106 F.Supp.2d 845 (E.D.Va. Feb 24, 2000)
• BroadBridge Media, L.L.C. v. Hypercd.com, 106 F.Supp.2d 505 (S.D.N.Y. Jul 07, 2000)
• McRae's, Inc. v. Hussain, 105 F.Supp.2d 594 (S.D.Miss. Jun 30, 2000)
• Quokka Sports, Inc. v. Cup Intern. Ltd., 99 F.Supp.2d 1105 (N.D.Cal. Dec 13, 1999)
• Lucent Technologies, Inc. v. Lucentsucks.Com, 95 F.Supp.2d 528 (E.D.Va. May 03, 2000)
• Bargain Bid LLC v. uBid, Inc., 2000 WL 978706 (E.D.N.Y. Jan 03, 2000)
• Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 89 F.Supp.2d 464 (S.D.N.Y. Mar 06, 2000)
• Deleo v. Zconnexx Corp., 2000 WL 1610668 (W.D.N.Y. Oct 25, 2000)
• Dostana Enterprises LLC v. Federal Express Corp., 2000 WL 1170134 (S.D.N.Y. Aug 16, 2000)
• Electronics Boutique Holdings Corp. v. Zuccarini, 2000 WL 1622760 (E.D.Pa. Oct 30, 2000)
• Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., __ F.Supp.2d __, 2000 WL 1370835 (S.D.N.Y. Sep 19, 2000)
• Mattel, Inc. v. Internet Dimensions Inc., 2000 WL 973745, (S.D.N.Y. Jul 13, 2000)
• Morrison & Foerster, LLP v. Wick, 94 F.Supp.2d 1125 (D.Colo. Apr 19, 2000)
• Peterson's Publishing v. Blue Gravity Communications (Teen Magazine) --CV-78 (D.N.J. Jan 6, 2000).
• Porsche Cars North America, Inc. v. Spencer, 2000 WL 641209 (E.D.Cal. May 18, 2000)
• Shields v. Zuccarini, 2000 WL 1053884 (E.D.Pa. Jul 18, 2000)
• Shields v. Zuccarini, 2000 WL 1056400 (E.D.Pa. Jun 05, 2000)
• United Greeks, Inc. v. Klein, 2000 WL 554196 (N.D.N.Y. May 02, 2000)
• Yahoo, Inc. v. Wu, --00-CV-0002 (N.D.N.Y. May 1, 2000).

As we noted above, while this appeal was pending, Congress passed the ACPA. That law was passed "to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks--a practice commonly referred to as 'cybersquatting'." S.Rep. No. 106-140, at 4. In particular, Congress viewed the legal remedies available for victims of cybersquatting before the passage of the ACPA as "expensive and uncertain." HRRep No. 106-412, at 6. The Senate made clear its view on this point: