Mashantucket Pequot Tribe v. Redican, 403 F.Supp.2d 184 (D. Conn. 2005) (full-text).
Factual Background Edit
Plaintiff is an Indian tribe that operated the Foxwoods Casino since 1992 under the federally registered marks FOXWOODS, FOXWOODS CASINO, and FOXWOODS RESORT CASINO. Plaintiff also owned and used various domain names including “foxwoods.com,” “foxwoodscasino.com,” “pequotcasino.com,” and “mashantucket.org.” Defendant at one time owned the domain names “foxwood.org” and “foxwood.net,” but at the time this case was decided it maintained only a website at “www.foxwood.com,” which provided cultural, historical, tourism, and demographic information related to communities that contained “Foxwood” in their name. Defendant also owned other domain names consisting of actual cities and towns.
Defendant derived income from “foxwood.com” by providing links to advertisers’ websites and, until June 2002, the links included gambling websites. Defendant’s trademark application to register “foxwood.com,” filed in 1999, was rejected due to a likelihood of confusion with plaintiff’s mark. Defendant testified that he contacted over 50 “foxwood” organizations, including plaintiff several times, in attempts to sell the “foxwood.com” domain name. Plaintiff sent defendant a cease-and-desist letter in 1997, followed by a demand to transfer the domain name in August 2001. In June 2002, defendant sent an email to a number of plaintiff’s employees offering to sell “foxwood.com” for $19,999,999 and a 30% commission to the employee who could affect the sale. Ten days later, defendant sent another email promising a commission of $3.5 million for selling the domain name to plaintiff for $20 million. In 2002, plaintiff sued defendant for trademark infringement, dilution, cybersquatting, and unfair trade practices under state law.
Trial Court Proceedings Edit
Following a bench trial, the court first found that plaintiff failed to prove that defendant “used” the FOXWOODS mark, and held for defendant on the infringement claims. The court found that defendant’s “foxwood.com” was materially different than using plaintiff’s mark FOXWOODS. The court also rejected plaintiff’s dilution claim. Although plaintiff’s FOXWOODS mark was famous based on its inherent distinctiveness and consistent use, advertising and marketing expenditures exceeding $26 million in the preceding three years, and no evidence of third-party usage in connection with gambling or casinos, the court held that plaintiff failed to prove “use” in commerce and actual dilution. There was no presumption of actual dilution because FOXWOODS and “foxwood.com” were not identical. Moreover, plaintiff failed to prove that defendant’s use actually weakened customers’ association of FOXWOODS with plaintiff’s products and services.
However, the court held for plaintiff on its cybersquatting claim. Having already found that plaintiff’s mark was inherently distinctive and famous, it noted that the “confusingly similar” element of an ACPA claim was different than the likelihood-of-confusion standard for an infringement claim. Because the only difference between the parties’ domain names was the letter “s,” the court found that defendant’s “foxwood.com” domain name was confusingly similar to plaintiff’s “foxwoods.com.” It then concluded defendant had a bad faith intent to profit from plaintiff’s mark because defendant intended to divert consumers from plaintiff’s website to its own site for commercial purposes; defendant offered to sell the domain name to plaintiff for $20 million; defendant did not “use” domain names in a bona fide way to offer goods or services; and defendant obtained multiple domain names using the word “foxwood.”
Finally, the court held for plaintiff on its unfair trade practices claim because defendant’s conduct towards plaintiff and the public was unethical and unscrupulous because it used “foxwood.com” to sell online advertising while attempting to sell the domain name to plaintiff at an exorbitant price. The court denied defendant’s laches defense even though plaintiff knew of defendant’s website since 1997 and failed to bring its cybersquatting claim until 2002, because damages from defendant’s website were ongoing and plaintiff sought only “prospective relief.” Further, defendant offered no evidence that plaintiff’s delay prejudiced defendant. The court also denied defendant’s unclean hands defense because defendant failed to offer any evidence that plaintiff acted fraudulently in obtaining its trademark rights or gained any financial advantage by deceit or any other unfair means. As for remedies, the court ordered defendant to assign the “foxwood.com” domain to plaintiff, but it also ordered plaintiff to reimburse defendant for its costs in obtaining and maintaining that domain name.
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