FieldTurf, Inc. v. Triexe Mgmt. Group, Inc., 69 U.S.P.Q.2d (BNA) 1861 (N.D. Ill. Dec. 11, 2003).
Factual Background Edit
Plaintiff offers synthetic turf products under the federally registered trademark FIELDTURF. Defendant, a direct competitor of plaintiff, registered the domain names "FieldTurf.net" and "FieldTurf.info."
Trial Court Proceedings Edit
Plaintiff sued for trademark infringement, dilution, and cybersquatting. The court denied defendant's motion to dismiss all claims. The court first rejected defendant's argument that merely registering or warehousing domain names is not enough to constitute use in commerce required for infringement and dilution based on plaintiff's allegation in its complaint (which the court must accept as true for purposes of a motion to dismiss) that defendant used the domain names in commerce.
Regarding plaintiff's cybersquatting claim, the court rejected defendant's arguments that the claim should be dismissed because plaintiff did not allege that it suffered any damage due to registration of the domain names and that statutory damages should not be awarded because any recovery would be de minimis when compared with the cost of litigation.
Because plaintiff elected in its complaint to recover statutory damages, it was not required to allege any actual damages. Moreover, defendant failed to present any authority for its position that statutory damages could not be recovered if de minimis to the litigation costs.
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