Eglen v. America Online, Inc., 2003 WL 21508343, 2003 U.S. Dist. LEXIS 11206 (S.D. Ind. June 12, 2003).
Factual Background Edit
Plaintiff owned the domain name “hometown.net,” and operated a "Hometown.Net" website. That site was a “local,” “community-oriented” website that provided a variety of information of interest to local residents of the Wabash Valley area in Indiana as well as e-mail, chat, and bulletin board services. Plaintiff also briefly provided ISP services to a handful of customers.
Defendant AOL offered a service called "Hometown AOL" at the URL "hometown.aol.com" that enabled users to create free home pages. Defendant One Main used the slogan ONEMAIN.COM YOUR HOMETOWN INTERNET and the URL "hometown.onemain.com" to market its ISP services.
Trial Court Proceedings Edit
Plaintiff sued defendants, arguing that defendants' respective uses of "HOMETOWN" infringed his trademark rights. Defendants moved for summary judgment that plaintiff did not have a valid mark because it was either generic or merely descriptive without secondary meaning.
In granting defendants’ motion, the court ruled that “hometown.net” was not protectable because it was descriptive and without secondary meaning. Plaintiff did not provide any direct evidence of secondary meaning in the form of consumer testimony or consumer surveys showing an association between “hometown.net” and plaintiff's services. Moreover, plaintiff’s advertising expenditures, sales revenues, and number of customers were minimal; plaintiff's use of “hometown” was not exclusive—there were numerous uses of "Hometown" on the Internet, including for ISP services; plaintiff's site was not prominent in the marketplace (the number of hits to plaintiff's site did not establish that plaintiff's services were "purposefully sought after" in the marketplace); and there was no proof that defendants copied plaintiff's domain name. According to the court, "there is no reasonable explanation for a decision by either [defendant] to copy [plaintiff's] URL because there simply was little to no customer base or advertising that would benefit [defendants] if they appropriated the mark."
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