Lozano Enterprises v. La Opinión Publishing Co., 44 U.S.P.Q.2d (BNA) 1765 (C.D. Cal. 1997).
Factual Background Edit
Plaintiff published the well-known Spanish-language newspaper La Opinión and owned a federal registration for the LA OPINIÓN mark, which it had used since 1926. When plaintiff tried to establish a website for the newspaper using its trademark as the domain name, it discovered that defendant was publishing a Spanish-language newspaper called La Opinión de San Antonio and had registered domain names incorporating plaintiff’s mark, including “laopinion.com” and “laopinion.net.”
Trial Court Proceedings Edit
After plaintiff sued for trademark infringement and dilution, defendant domain name registration “laopinion-sa.com,” on the mistaken belief that the addition of the geographic designation “sa” meant that he was not infringing plaintiff’s LA OPINIÓN mark. The court rejected defendant’s argument and granted summary judgment in favor of plaintiff on its infringement and dilution claims. The court enjoined defendant’s use of LA OPINION as a domain name and as part of the name of a Spanish-language newspaper, and further ordered defendant to transfer all of its “laopinion” formative domain-name registrations to plaintiff.
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