Pennsylvania Business Bank v. Biz Bank Corp., 330 F.Supp.2d 511 (E.D. Pa. 2004) (full-text).
Factual Background Edit
Plaintiff, a Pennsylvania state-chartered bank, owned an incontestable registration for the mark BIZBANK for financial and business services. Defendants, a South Korean corporation located in Seoul and its apparent principal, operated a website at "bizbank.com." At the time suit was filed, defendants' website described their services as an "exporter of many kinds of Korean products." A few months later, defendants altered the website to describe it as a "world business contents portal" and a "business contents bank portal website like Yahoo," and listed available categories of information such as accounting, consulting, business services, economics, investing, and venture capital. Defendants changed the website again several months later, this time under the title "World Government Guide," and provided links to various embassies, consulates, and government agencies of a number of countries.
Trial Court Proceedings Edit
Plaintiff sued for trademark infringement, unfair competition, and cybersquatting. After a trial the court ruled in plaintiff's favor on all claims. Because the defendants consisted of a foreign corporation and an individual who did not speak English, the parties agreed to a bench trial without live testimony or other live proceedings. Instead, they submitted direct testimony and written answers to cross-examination questions by sworn affidavits and could file proposed findings of fact and conclusions of law.
Both parties submitted evidence but only plaintiff filed proposed findings of fact and conclusions of law. Regarding trademark infringement, the court found that plaintiff owned a protectable mark because BIZBANK was descriptive but had acquired secondary meaning. The court also found a likelihood of confusion, finding that virtually all factors favored plaintiff. In particular, the court found that defendants' revision of their original commercial website to their current website featuring governmental information was made only for purposes of the litigation and thus was done in bad faith. Also, in discussing the factor of actual confusion, the court found that, because defendants' domain name and plaintiff's mark were identical, "consumers, in all likelihood, will visit defendant's website while searching for plaintiff and thus may experience 'initial interest confusion.'"
The court also found the defendants liable for cybersquatting. According to the court, defendants' changes to their website discussed above raised an "inference of bad faith." However, the court rejected plaintiff's assertion that defendants' use of a ".com" domain name was deceptive because it gave the impression that defendants were located in the United States, noting that use of the ".com" domain was unrestricted. It also disagreed with plaintiff that defendants had a duty to investigate American trademark registrations before registering the "bizbank.com" domain name.
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