C.V. Starr & Co. v. American Int’l Group, Inc., 2006 WL 1230266 (S.D.N.Y. May 9, 2006).
Factual Background Edit
Plaintiffs and defendant had a business relationship for more than thirty years. Plaintiffs, owner of a federal trademark registration for the mark C.V. STARR & CO., registered the domain name “cvstarr.com” in 1995. Plaintiffs transferred the domain name to defendant in 2002. Plaintiffs alleged that it made this transfer to give defendant access to the website to complete a redesign project, whereas defendant asserted that the transfer followed a standing policy to consolidate affiliated trademarks into defendant’s “Corporate eBusiness” department.
The “cvstarr.com” website contained contact information for plaintiffs’ employees and noted that plaintiffs wrote insurance for defendant; the site had no other information about defendant. Plaintiff also maintained a website at “cvstarrco.com.” The parties disputed ownership of the cvstarr.com domain name and the C.V. STARR mark.
Trial Court Proceedings Edit
Shortly before the parties’ relationship ended, plaintiffs sued for trademark infringement and cybersquatting and sought a preliminary injunction transferring control of the “cvstarr.com” site to plaintiffs. Defendant counterclaimed for trademark infringement.
The court granted plaintiffs’ motion on its infringement claim, finding that an injunction preventing defendant from operating the site would effectively maintain the status quo. In reaching this decision, the court did not find it necessary to determine which party owned the “cvstarr.com” domain name. The court found that plaintiff demonstrated irreparable harm, the existence of serious questions going to the merits of the litigation, and a balance of hardships in its favor.
Although the court found that a transfer of control of the “cvstarr.com” site to plaintiffs would change the status quo, an injunction preventing defendant from using the site would not because: (1) the site had no information about defendant, (2) defendant maintained numerous other websites, and (3) plaintiffs maintained a separate site at “cvstarrco.com.”
Comparing the respective company names to the website at issue, the court held that Internet users seeking plaintiffs, C.V. Starr, would more likely end up confused at “cvstarr.com” instead of at “cvstarrco.com,” than customers searching for defendant, “AIG.” The court thus granted plaintiffs’ motion and ordered defendant to “remove all content” from and cease operating the “cvstarr.com” site pending further order of the court.
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