First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d (BNA) 1838 (S.D.N.Y. 2000).
Trial Court Proceedings Edit
Plaintiff, a jewelry wholesaler and owner of the federally registered trademark FIRST JEWELLERY, obtained a preliminary injunction against defendant’s use of the domain name “firstjewelry.com” for a website selling jewelry. Weighing each of the Polaroid factors, the court concluded that the plaintiff had made a sufficient showing of a probability of confusion. The court did note, however, that if defendant’s domain name were only “partially similar” to plaintiff’s mark rather than “substantially identical,” the relative weakness of the mark might have dictated a different result.
Moreover, although it found no intent by defendant to capitalize on plaintiff’s goodwill, the court noted that defendant’s failure to engage in the “very obvious and simple precaution of a trademark search . . . even one limited to federally registered marks” was relevant to the issue of good faith. Because of defendant’s showing that it would be expensive and time-consuming to change its domain name, the court granted defendant sixty days to change the name. In the meantime, however, defendant was required to include on its home page next to the name “First Jewelry” a disclaimer stating in substance “not affiliated with the wholesaler First Jewellery.”
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