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DaVinci Technology v. Rubino

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Citation Edit

DaVinci Technology Corp. v. Rubino, 2005 WL 1249462 (D.N.J. May 25, 2005) (full-text).

Factual Background Edit

Plaintiff and defendants both provided technology consulting services. Plaintiff worked for defendants' company until defendants gained control of the company and ousted plaintiff. On October 18, 2004, plaintiff purchased the domain name "" and immediately began offering technology consulting services under the DaVinciTek mark. Plaintiff incorporated as DaVinci Technology Corporation in New Jersey on October 20, 2004, and two days later registered "DaVinciTek" as a corporate alternate name. In mid-December 2004, plaintiff mailed approximately 300 holiday cards bearing the "DaVinciTek" name and mark.

On December 23, 2004, the same day of a hearing in state court regarding the parties' failed business relationship, defendants incorporated in New Jersey as DaVinciTek Corporation and filed an intent-to-use trademark application for the mark DAVINCITEK. Defendants registered the domain name "" on December 28, 2004, and launched the site a week later.

Trial Court Proceedings Edit

Plaintiff filed suit for infringement, dilution, and cybersquatting and requested a preliminary injunction. Regarding infringement, the court initially rejected defendants' claim of ownership of the mark because simply conceiving of a trademark and not using it in commerce, does not create a trademark right.

Regarding plaintiff's cybersquatting claim, the court looked at the distinctiveness of plaintiff's mark, the likelihood of confusion, and the bad faith intent of the defendant. The court held that the DAVINCITEK mark was fanciful and therefore distinctive. The court then held that defendants' virtually identical domain name "" was confusingly similar to plaintiff's mark and plaintiff's domain name ""

In determining the defendant's bad faith intent to profit from plaintiff's mark, the court focused on five of the nine statutory factors provided in ACPA. The court held that: (1) defendants had no intellectual property rights in the domain name prior to registering it; (2) the domain name did not include the legal name of any of the defendants; (3) defendants' website had neither a noncommercial or fair use; (4) defendants created an inference that they intended to divert customers away from plaintiff's website by deciding to wait to use the DaVinci name until after plaintiff used it; and (5) defendants posted incorrect information on its website, including a non-working phone number and an email address containing a domain name plaintiff owned.

Having also found that defendants' actions caused irreparable injury and that the balance of harms favored plaintiff, the court granted a preliminary injunction to plaintiffs, preventing defendants from maintaining, transferring or using the domain name "," the name "DaVinciTek Corporation," or any confusingly similar names.

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