Cline v. 1-888-Plumbing Group, Inc., 146 F.Supp.2d 351 (S.D.N.Y. 2001) (full-text).
Factual Background Edit
Plaintiff registered the service mark "1-800-PLUMBING" in connection with her Maryland-based plumbing business. Defendants, New York-based plumbers, contracted with a telecommunications company for use of the 1-888-PLUMBING telephone number. The telecommunications company, for an additional fee, also posted a website that promoted the 1-888-PLUMBING telephone number. Defendants also registered the following domain names: "www.1-800-plumbing.com," www.800-plumbing.com," "www.800plumbing.com," www.888-plumbing.com," "www.888plumbing.com," "www.1-888plumbing.com," www.tripleeightplumbing.com," and "www.triple8plumbing.com." Plaintiff sued defendants for trademark infringement, dilution, and cybersquatting under the ACPA.
Trial Court Proceedings Edit
The parties filed cross-motions for summary judgment. Regarding plaintiff's trademark infringement claim, the court noted that in the context of domain names parties infringe a registrant's rights not when they register a domain name likely to be confused with the registered mark, but when they use it. Plaintiff contended that defendants did more than merely register the domain names by launching and promoting a website advertising the 1-888-PLUMBING number. The undisputed evidence, however, led only to the conclusion that the website had been posted by the telecommunications company. Defendants' role in posting the website was unclear. Accordingly, the court denied the parties' cross-motions as to whether defendants' actions constituted the use in commerce required for an infringement claim.
The court also denied plaintiff's motion for summary judgment on its dilution claim. Because plaintiff's 1-800-PLUMBING mark was "a descriptive mark without inherent distinctiveness," it could not be protected under the FTDA.
Regarding plaintiff's ACPA claim, defendants argued they did not possess the requisite bad-faith intent to profit. Plaintiff argued that bad-faith intent to profit was established by a telephone call made to 1-800-PLUMBING phone number from defendants' residence just ten days before they registered the disputed domain names. Although the court noted that this evidence supported plaintiff's position, it was not conclusive. Accordingly, the court denied the parties' cross-motions for summary judgment on plaintiff's ACPA claim.
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