Avlon Indus. v. Robinson, 69 U.S.P.Q.2d (BNA) 1254 (N.D. Ill. 2003) (denying motion to dismiss), 2005 U.S. Dist. LEXIS 5552 (N.D. Ill. Feb. 8, 2005) (full-text) (granting plaintiff's motion for summary judgment on dilution).
Factual Background Edit
Plaintiff sold hair-care and beauty products under the trademarks KERACARE, AVALON, and AFFIRM. Defendant registered at least 15 variations of the KERACARE mark as domain names, including "keracarecom," "kerecare.com," "keracarehair.com," "keracarehairproducts.com," and "kerakare.net," and directed them to his website at which he sold plaintiff's products, products made by plaintiff's competitors, and his own products.
Trial Court Proceedings Edit
Plaintiff sued for trademark infringement, dilution, and cybersquatting. In the first decision, the court denied defendant's motion to dismiss after defendant argued that he could not be liable for dilution because he was selling genuine goods of the plaintiff. The court rejected defendant's fair-use argument, noting that defendant was not using plaintiff's marks to advertise legitimate products and defendant's use of plaintiff's marks as domain names could cause initial-interest confusion. Because defendant could possibly be liable for trademark dilution, the court denied defendant's motion to dismiss.
The next decision addressed plaintiff's motion for summary judgment on its claim for dilution, which the court granted. Defendant, appearing pro se, argued that plaintiff's marks were not famous. According to the court, however, "[i]f the marks were indeed unfamiliar to the vast majority of shoppers, [defendant] would not have registered at least fifteen variants of the word KeraCare as domain names in connection with his website."
In addition, the KERACARE mark was registered and incontestable, and plaintiff sold millions of dollars of KERACARE products annually. Defendant also argued that plaintiff failed to show actual dilution under Moseley v. V Secret Catalogue, but the court disagreed. Relying on the Supreme Court's statement in Moseley that "direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can be reliably proved through circumstantial evidence — the obvious case is where the junior and senior marks are identical," the court found actual dilution because defendant used domain names containing plaintiff's "exact marks."
Defendant's actions also prevented plaintiff from "identifying its own website and products using its marks." And defendant's use of plaintiff's marks allowed the defendant "to decide what messages and goods are associated with his web site and by extension, with [plaintiff's] marks." The court concluded that "[defendant's] control of all the possible variants of [plaintiff's] marks on the internet, prevents [plaintiff] from using its marks to identify its goods and thus dilutes the marks." The court distinguished between permissible use of another's mark when a business has an innocent and legitimate reason for using a famous mark as or in her domain name (e.g., a used-car dealer using the mark TOYOTA to indicate that it sells Toyota automobiles) and "taking over the mark" like defendant did here.
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