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GREEN PRODUCTS CO., Plaintiff,
v.
INDEPENDENCE CORN BY-PRODUCTS CO., Defendant.
No. C-97-177-MJM.
United States District Court,
N.D. Iowa,
Cedar Rapids Division.
Sept. 25, 1997.
Mark T. Hamer, Charles A. Meardon, Meardon Sueppel Downer & Hayes, Iowa City, IA, Ralph H. Lane, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago, IL, for Plaintiff.
Donald G. Thompson, Bradley & Riley, Cedar Rapids, IA, for Defendant.
OPINION AND ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
MELLOY, Chief Judge.
The sole issue before the Court is whether to compel Independence Corn By-Products Co. (ICBP) to convey the domain name "greenproducts.com" to the plaintiff, Green Products Co. (Green Products), for its use during the pendency of this litigation.
Green Products claims that ICBP violated Section 43(a) of the
Lanham Trademark Act, 15 U.S.C. § 1125(a), as well as state laws,
when ICBP registered the domain name "greenproducts.com" as one of its
own domain names on the internet. [FN1] Green Products moved for
a preliminary injunction: (1) to enjoin ICBP from using the domain
name "greenproducts.com", (2) to enjoin ICBP from using the expressions
"green products" and "green pet products" as the whole or part of a trademark,
trade name, or domain name, and (3) to compel ICBP to convey the ownership
of the domain name "greenproducts.com" to Green Products.
FN1. As of August 6, 1997, an internet domain search of all web sites owned by ICBP revealed that ICBP had registered a total of nine domain names. Carter Decl. (Doc # 6)....
In response, ICBP agreed to the first and second parts of Green
Products' request, but it resisted the third part. During the pendency
of the litigation, ICBP has consented (1) not to use the domain name "greenproducts.com",
and (2) not to use the expressions "green products" and "green pet products"
as the whole or part of any trademark, trade name, or domain name, but
ICBP will continue to use those names "in ways that do not constitute trademark
infringement, such as comparative advertising." (See Def.'s Mem., at 7,
Doc # 15.) In order to analyze the merits of Green Products' motion
to compel ICBP to transfer ownership of the domain name "greenproducts.com"
during the pendency of the litigation, the Court will begin with a brief
background of relevant language and information.
Background
...
In the case before this Court, Green Products and ICBP are direct
competitors in the corncob by-products industry. On May 30, 1997,
ICBP registered two domain names, "icbp.com" and "bestcob.com", with
the goal of eventually designing a web site that users could find through
either domain name. On June 9, 1997, ICBP registered seven other
domain names--five of which are formed by using the trade names of ICBP's
competitors: e.g., "greenproducts.com." On July 16, 1997, Green Products
tried to register "greenproducts.com" and "freshnest.com" (a sister company's
name), but was told that ICBP had already registered those two domain names.
Green Products then filed a complaint and a motion for a preliminary injunction
against ICBP.
Discussion
A. Preliminary Injunction Standards
...
B. Analysis of Dataphase Factors
1. Probability that Green Products will succeed on the merits
In deciding whether to grant a preliminary injunction, the Court's initial estimation of the strength of the plaintiff's case plays a role, but it is not determinative. The probability of success does not require that the party seeking relief prove a greater than fifty percent likelihood that it will succeed on the merits. Dataphase Sys. Inc., 640 F.2d at 113. Instead of a rigid measuring stick, the Court flexibly weighs the particular circumstances of the case to determine "whether the balance of equities so favors the movant that justice requires the court to intervene to preserve the status quo until the merits are determined." Calvin Klein, 815 F.2d at 503, quoting Dataphase, 640 F.2d at 113.
An essential element to a trademark infringement action is that
the plaintiff must prove that a defendant's use of a particular name "
'creates a likelihood of confusion, deception, or mistake among an appreciable
number of ordinary buyers as to the source or association' between the
two names." Maritz, Inc. v. Cybergold, Inc., 947 F.Supp. 1338, 1339 (E.D.Mo.1996)
(quoting Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1096 (8th
Cir.1996)). Factors relevant to determine the likelihood of confusion
or deception are:
(1) the strength of the trademark;
(2) the similarity between the plaintiff's and defendant's marks;
(3) the competitive proximity of the parties' products;
(4) the alleged infringer's intent to confuse the public;
(5) evidence of any actual confusion; and
(6) the degree of care reasonably expected of the plaintiff's potential
customers.
Maritz, 947 F.Supp. at 1340, citing Anheuser-Busch, Inc. v. Balducci
Publications, 28 F.3d 769, 774 (8th Cir.1994), cert. denied, 513 U.S. 1112,
115 S.Ct. 903, 130 L.Ed.2d 787 (1995). The Court will next examine
each of these factors in turn, although not all of the factors are applicable
in this case.
... Here, the Court finds that Green Products' trademark--the
name "Green Products"--is at least suggestive. The name "Green Products"
requires at least some imagination to connect it with corncob by- products.
[FN8]
FN8. In addition, the Court also finds that the name Green Products has acquired second meaning meriting trademark protection. See Duluth News- Tribune, 84 F.3d at 1096. ...
The next factor requires the Court to consider the similarity between
the plaintiffs and defendant's marks. ICBP concedes that its domain
name "greenproducts.com" is "undisputedly similar to the mark Green Products
Co." (Def.'s Mem., at 15, Doc # 15.) However, ICBP also argues that
its use of the mark must be viewed in the context of the marketplace, and
that the "domain name only has meaning as an Internet address linking to
ICBP's future web site and the web site will take every precaution to ensure
there is no consumer confusion." (Def.'s Mem., at 15.)
In essence, ICBP's argument is that the Court should only compare the similarity of domain names and web sites linked to those domain names--not the similarity of ICBP's domain name and Green Products' trademark--because ICBP is not "selling a product on store shelves using the mark 'greenproducts.com'." (Def.'s Mem., at 15.)
The Court finds ICBP's argument clever, but ultimately unpersuasive. ICBP's argument is analogous to saying that ICBP has the right to hang a sign in front of its store that reads, "Green Products." When customers enter the store expecting to be able to see (and possibly, to buy) products made by Green Products, ICBP then announces, "Actually, this store isn't owned by Green Products; it's owned by ICBP. We don't sell anything made by Green Products, but as long as you're here, we'll tell you how our products are better than Green Products." In essence, ICBP is capitalizing on the strong similarity between Green Products' trademark and ICBP's domain name to lure customers onto its web page.
Turning to the third factor, the competitive proximity of the parties' products, ICBP concedes that ICBP and Green Products are both competitors in the corncob byproducts industry. (Def.'s Mem., at 16.) Despite being direct competitors, ICBP argues that this Court should not focus on their similar corn by-products, but on domain names and their respective web sites: "the relevant 'products' for the likelihood of confusion analysis are not corncob products because ICBP does not sell any corncob products with the mark 'greenproducts.com' on a label or package design." (Def.'s Mem., at 16.) Instead, ICBP suggests, the Court should analyze whether a web site located at "greenproducts.com" is proximate to a web site located at "green-products.com" or "greenproductsco.com." (Def.'s Mem., at 16.) ICBP believes that these domain names are not proximate, because anyone who knows Green Products' domain name can use that name to go directly to Green Products' web site and "will likely never even see ICBP's web site." (Def.'s Mem., 16.) ICBP does, however, concede that the web sites are "proximate in the sense that a person guessing at Green Product Co.'s domain name might access ICBP's web site if it first tries 'greenproducts.com' ...." (Def.'s Mem., at 16.)
ICBP's argument basically boils down to the idea that the Court should view the domain names as mere addresses which--along with the web sites attached to each name--are products in and of themselves. The Court disagrees. There is a close competitive proximity between the products that the two companies sell, and there is also a close competitive proximity between the domain name "greenproducts.com" and the trademark "Green Products". The domain name "greenproducts.com" identifies the internet site to those who reach it, "much like a person's name identifies a particular person, or, more relevant to trademark disputes, a company's name identifies a specific company." Cardservice, 950 F.Supp. 737, 42 U.S.P.Q.2d at 1853. Because customers who do not know what a company's domain name is will often guess that the domain name is the same as the company's name, a "domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." MTV Networks, 867 F.Supp. at 203-204 n. 2.
Alternatively, even if this Court were persuaded that it should only compare the alphanumeric domain names (and not the products that each company sells, nor the similarity between ICBP's domain name and Green Products' trademark), this Court would still find a close proximity between the domain name "greenproducts.com" and any of the alternative domain names that ICBP suggests, such as "green-products.com", "greenproductsco.com", or "greenproducts-co.com." Under either analysis, there is a close competitive proximity, and that close competitive proximity further increases the opportunity of consumer confusion. See Maritz, 947 F.Supp. at 1341.
Fourth, this Court examines whether ICBP intended to cause consumer confusion by creating an ICBP web site accessed through the domain name "greenproducts.com." ICBP maintains that it had no intent to "pass off" its products as those of Green Products, and that its only intent was to distinguish ICBP's products from those of Green Products through comparative advertising. McMorris, Aff. 7-8. ICBP believes that there will be no consumer confusion because internet users will immediately know that the web site belongs to ICBP once the actual web page appears on the screen (after users have typed the domain name "greenproducts.com"). To support this argument, ICBP distinguishes its planned web site from that in Planned Parenthood Fed. of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y.1997), where an anti-abortion activist who registered the domain name "plannedparenthood.com" to lure pro-abortion internet users onto his web site designed a web page that deceptively announced that it was "Planned Parenthood's" site--instead of clearly announcing that the Planned Parenthood Federation of America had nothing to do with it.
While it is true that the Planned Parenthood court discussed how
the graphics and design of the web page misled users into believing that
the Planned Parenthood Federation was operating an anti-abortion web page,
see 42 U.S.P.Q.2d at 1432, ICBP overlooks the fact that the Planned Parenthood
court also found that a disclaimer would not have cured the confusion caused
by the domain name:
Due to the nature of Internet use, defendant's appropriation of plaintiffs
mark as a domain name and home page address cannot adequately be remedied
by a disclaimer. Defendant's domain name and home page address are
external labels that, on their face, cause confusion among Internet users
and may cause Internet users who seek plaintiffs web site to expend time
and energy accessing defendant's web site. Therefore, I determine
that a disclaimer on defendant's home page would not be sufficient to dispel
the confusion induced by his home page address and domain name.
Planned Parenthood, 42 U.S.P.Q.2d at 1441.
Because ICBP's web site has not been designed yet, this Court will make no finding as to whether ICBP's web page is likely to cause consumer confusion between the products of ICBP and those of Green Products. However, based on the briefs, affidavits, and evidence presented at the hearing, this Court finds that the use of plaintiff's trademark as defendant's own domain name is likely to cause consumer confusion as to who owns the site. Just as customers entering a store that advertises "Green Products" as its store name would be initially confused to find, upon entering the store, that ICBP actually owned it, so will customers typing the domain name "greenproducts.com" be initially confused to find that ICBP owns the web site.
The Court acknowledges that such an interpretation of "consumer confusion" is somewhat different than that typically used to find consumer confusion in trademark infringement cases. Typically, the courts examine whether a company intended to confuse consumers into thinking that its own products were made by a competitor company. See, e.g., SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.1980) ("Intent on the part of the alleged infringer to pass off its goods as the product of another raises an inference of likelihood of confusion, but intent is not an element of a claim for trademark infringement.").
Here, ICBP did not intend to sell its corn by-products by passing them off as having been made by Green Products. However, ICBP did intend to pass off its domain name as though it belonged to Green Products. As a result of the confusion in thinking that Green Products' web site could be found through the "greenproducts.com" domain name, ICBP could deceptively lure potential customers onto its own turf, where customers would be told how ICBP is better than Green Products. This Court finds that such a deceptive use of a competitor's trademark as a way to lure customers away from the competitor is a kind of consumer confusion.
Moreover, even if such an interpretation of "consumer confusion" is not the relevant mode of inquiry, this Court also finds that ICBP's ownership of the domain name "greenproducts.com"--even without an adjoining web site--could cause consumer confusion about the corporate status of Green Products. Currently, if internet users browsing the web type the domain name "greenproducts.com", they are told that "[n]o documents match the query." After reading this message, users might randomly input other domain names, guessing that Green Products is registered under some variation of its trademark. Other users might try to find out who owns the domain name "greenproducts.com" by using various functions on the web where people can type specific domain names and find out who owns them. (See Carter Decl., attached exhibit; discussed in further detail at the hearing held Sept. 11, 1997.) Users who do this will learn that ICBP owns the "greenproducts.com" web site, and they will also learn the address and phone number of ICBP. Potential customers who see this information may be confused into thinking that ICBP has taken over Green Products, or that Green Products has merged into ICBP. As a result, customers may decide to buy from ICBP, believing that Green Products no longer exists or that ICBP now owns it. The consumer confusion thereby caused by ICBP's ownership of the domain name "greenproducts.com" during the pendency of litigation would cause Green Products to lose customers.
The fifth factor is incidents of actual confusion. Green Products concedes that because the web site is not yet operational, there have been no incidents of actual confusion (Pl.'s Mem., at 6, Doc # 4), so the Court need not examine this factor further.
The last factor is the degree of care reasonably expected of Green Products' potential customers. To determine this, the Court looks at the "ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods." General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir.1987) (quotation omitted). In contrast to focusing on how ordinary purchasers buy products, Green Products and ICBP speculate about the care with which ordinary internet users will search for Green Products' web site-- presumably as a means by which to decide whether to buy its products. Green Products argues that customers "who would like to use Green Products' Internet services but do not know its domain name are likely to assume that 'greenproducts.com' belongs to Green Products." (Pl.'s Mem., at 7.) In response, ICBP argues that even though an internet user "may have some reasonable expectation that typing in a famous mark of a huge corporation like 'nike.com' or 'ibm.com' will lead to those corporate web sites, the same cannot be said for 'greenproducts.com', which is not a famous mark and which is made up of common generic words that are used in many contexts." (Def.'s Mem., at 17.)
ICBP's argument fails in its analysis of the relevant market,
as well as in its insistence that Green Products is not a famous mark.
This Court has found that Green Products' trademark is not generic, and
is at least suggestive. (See discussion, supra.) Furthermore, Green
Products presented evidence at the hearing that within the corncob by-products
industry, Green Products and ICBP are two of approximately five major players,
and ICBP did not dispute this evidence. [FN9] Thus within the relevant
market (i.e., the corncob by-products industry), Green Products' trademark
is well known.
FN9. Moreover, ICBP maintains that one of the main purposes of its web page will be to distinguish itself from Green Products. (Def.'s Mem., at 16.) If Green Products were not a major competitor, ICBP would probably not expend so much energy trying to establish a web site to distinguish itself from Green Products.
...
Based on all the evidence before it at this point in the proceedings--
including the finding that Green Products is at least a suggestive mark
and that within the corncob by-products industry, Green Products' name
is well known--this Court finds that ordinary internet users do not undergo
a highly sophisticated analysis when searching for domain names.
Because of the low level of care used to search for domain names, an ordinary
internet user trying to find Green Products' web site would likely guess
that Green Products' domain name was the same as its trademark, and thus
type "greenproducts.com"....
In summary, despite the fact that neither Green Products nor ICBP can present or refute evidence of actual consumer confusion because ICBP's web site is not yet operational, this Court also considers the strength of Green Products' trademark, the strong similarity between Green Products' trademark and ICBP's domain name "greenproducts.com", the close competitive proximity, the likelihood that ICBP intended to capitalize on consumer confusion as a strategy to lure potential customers onto ICBP's web site (even though the actual web site will announce that Green Products does not own the site), and the degree of care that Green Products' potential customers will reasonably exercise in browsing the web to find Green Products' site. Based on this overall balancing, this Court finds a substantial probability that Green Products will prevail on the merits.
2. Irreparable harm to Green Products
The Court next analyzes the degree of harm, if any, that Green Products would suffer if not granted a preliminary injunction. The Eighth Circuit has held that a district court can presume irreparable injury from a finding of probable success on the merits of a Section 43(a) Lanham Trademark Act case. Sports Design, 871 F.Supp. at 1165, citing Sanborn Mfg., 997 F.2d at 489. While this Court could thus presume irreparable injury based on its finding of probable success on the merits, it will also examine the specific circumstances of this case in order to decide whether allowing ICBP to retain ownership of the domain name "greenproducts.com" during the pendency of litigation would cause irreparable harm to Green Products.
Although ICBP has consented to putting the domain name "greenproducts.com" on hold until the final merits are determined, Green Products is concerned that even though ICBP would not have an actual web site that could be viewed by typing the domain name "greenproducts.com", customers could use other functions on the web to discover that ICBP owns that domain name. (Hearing, Sept. 11, 1997.) As a result, potential or actual customers might mistakenly conclude that ICBP has purchased the Green Products corporation, or that Green Products has merged with ICBP. This confusion could result in Green Products losing both customers and revenue during the pendency of the litigation, and it would be impossible to calculate how much money or how many customers were lost.
For these reasons, in addition to the fact that the Court believes that Green Products is likely to succeed on the merits, the Court finds that it would cause Green Products irreparable harm if ICBP were allowed to retain ownership of the domain name "greenproducts.com" during the pendency of the litigation.
3. Balance between this harm and the injury that granting the injunction
will
inflict on other parties
ICBP has not finalized what its web page will look like, has not advertised that it owns a web page that can be viewed by typing the domain name "greenproducts.com", and has not listed "greenproducts.com" as one of its domain names in the Thomas Register. If ICBP is compelled to relinquish ownership of the domain name "greenproducts.com" to Green Products during the pendency of the litigation, ICBP would still be able to launch its own web site via its registered domain names "icbp.com" or "bestcob.com". Furthermore, the act of transferring ownership of "greenproducts.com" would not hinder ICBP's ability to launch a web site that compares its products to those of Green Products: ICBP could still design and implement a web site that compares the products of ICBP to those of Green Products, and internet users could access this web site through ICBP's other registered domain names.
...
While these factors weigh in support of compelling ICBP to transfer
ownership of the domain name, there are also certain factors that weigh
against the transfer. For example, if ICBP were to prevail at trial,
Green Products would have to transfer the "greenproducts.com" domain name
back to ICBP. This could cause some initial confusion, and possibly hostility,
from customers who might have become accustomed to accessing Green Products'
web site through the "greenproducts.com" domain name. In addition,
because Green Products would like to advertise its domain name "greenproducts.com"
in the Thomas Register, and because final changes to the printed version
of the Thomas Register must be made by November 1, 1997, neither Green
Products nor ICBP will be able to change the 1998 edition of the printed
Thomas Register if ICBP prevails at trial. [FN12] As a result, ICBP
worries that it "would risk incurring the anger of these customers if that
domain name was suddenly switched...." (Def.'s Mem., at 13.)
FN12. At the hearing held September 11, 1997, ICBP also said that the Thomas Register is available on-line on the web, and that ICBP presumes that on-line Thomas Register information can be updated more frequently than information can be updated in the printed version.
After weighing the potential harm that ICBP would experience
by not being able to use its competitor's trademark as its own domain name,
against the harm Green Products would experience by not being able to use
its own trademark as its domain name, this Court finds that the harm to
Green Products is more extensive and severe than the harm to ICBP. ...
For all of the above reasons, and especially considering the fact that the transfer of ownership is not irreversible because the Court will order the domain name transferred back to ICBP if ICBP prevails in litigation, the Court finds that the harm to Green Products is more extensive and severe than the harm to ICBP.
4. Public interest
...
Based on the above analysis of the Dataphase factors, the Court concludes that Green Products has shown a probability that it will succeed on the merits at trial, that Green Products would suffer irreparable harm if it were not allowed to use its trademark as its domain name during the pendency of the litigation, that the harm that Green Products would experience if it cannot own the domain name "greenproducts.com" is more severe than any harm ICBP would experience in being forced to relinquish it, and that the public interest is best served by compelling ICBP to relinquish ownership of the domain name "greenproducts.com" during the pendency of litigation. Within this analysis, the Court has also considered that the transfer of ownership of the domain name is not irreversible, so if ICBP does prevail at trial, the Court can order Green Products to transfer ownership back to ICBP.
Additionally, the Court finds that Green Products has met a "heavy" burden of proof in establishing that not only will Green Products probably win at trial, but that the harm that Green Products would suffer if it were not allowed to use its own trademark as its domain name during the pendency of the litigation is severe enough to warrant affirmative action to compel ICBP to transfer ownership of the domain name.
Accordingly, it is ORDERED:
Green Products' motion for a preliminary injunction shall be GRANTED,
as follows:
During the pendency of litigation,
(1) ICBP shall not use the domain name "greenproducts.com";
(2) ICBP shall not use the expressions "green products" and "green
pet products" as the whole or part of a trademark, trade name, or domain
name; and
(3) ICBP shall transfer the ownership of the domain name "greenproducts.com"
to Green Products.
To transfer the domain name "greenproducts.com" to Green Products,
this Court will provide an additional certified copy of this Order to Green
Products, so that Green Products may send the Order to Network Solutions,
Inc., thereby informing Network Solutions of the Court's judgment and authorizing
Network Solutions to transfer ownership of the domain name to Green Products.