Aztar Corp. v. MGM Casino, 2001 WL 939070, 59 U.S.P.Q.2d (BNA) 1460 (E.D. Va. Mar. 12 & Apr. 9, 2001).
Factual Background Edit
Plaintiff operated hotels and casinos under the federally registered mark TROPICANA. Defendant, a foreign corporation based in Antigua, operated an interactive gambling website under the name "Tropicana Casino" located at the domain name "tropicanacasino.com." Defendant also used the TROPICANA mark as a metatag.
Among other claims, plaintiff sued defendant for false designation of origin, trademark infringement, counterfeiting, dilution, and cybersquatting. Plaintiff served defendant under the Hague Convention, but defendant failed to file an answer.
Trial Court Proceedings Edit
The Magistrate judge recommended granting plaintiff's motion for default. Initially, the court held that it had personal jurisdiction over defendant based on its interactive gambling site. Turning to the merits, the court held that plaintiff established that defendant's "Tropicana Casino" website and the "tropicanacasino.com" domain name were certain to cause confusion among consumers and thus constituted infringement because defendant used plaintiff's mark in its entirety for identical services. Internet users seeking plaintiff's services by typing "tropicanacasino.com" in a browser or by entering the term "Tropicana or "tropicanacasino.com" into a search engine were likely to find defendant's site.
Turning to plaintiff's dilution claim, the court held that defendant's use of these words in its domain name on its website lessened the TROPICANA mark's power to exclusively identify plaintiff because Internet consumers would assume that defendant's online gambling website was connected to the world-famous Tropicana Casinos.
Further, defendant registered the name "tropicanacasino.com" with the bad-faith intent to profit from plaintiff's mark and thus violated the ACPA. Among other things: (1) defendant had no intellectual-property rights in the TROPICANA mark; (2) "tropicanacasino.com" was not comprised of defendant's legal or commonly known name; (3) defendant did not use its domain name before plaintiff's registration and use of the TROPICANA mark; (4) defendant intended to divert Internet users seeking plaintiff's websites to its own by causing consumer confusion; and (5) defendant registered multiple domain names containing other famous and distinctive marks.
As to relief, the Magistrate judge recommended: (1) issuance of a permanent injunction against use of the TROPICANA or any other confusingly similar marks or names; (2) transfer of the "tropicanacasino.com" domain name to plaintiff; (3) an award of $100,000 in statutory damages under the ACPA; (4) an award of attorney’s fees because the case was "exceptional" under the Lanham Act; and (5) an order requiring defendant to disseminate within 20 days after its entry "corrective advertisements in a form approved by the Court to acknowledge its violations . . . of the Lanham Act . . . , and to ameliorate the false and deceptive impressions produced by such violations."
On April 9, 2001, the court adopted the Magistrate judge's report and recommendations in their entirety.
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