Rasmussen v. General Growth Properties, Inc., 2005 WL 3334752 (D. Utah Dec. 7, 2005).
Factual Background Edit
Defendants owned the PROVO TOWNE CENTRE shopping mall in Provo, Utah, which broke ground in a highly publicized ceremony in June 1997. During this period of publicity, plaintiff registered the domain names “provotownecentre.com,” “provotowncentre.net,” and “provotowncentre.biz.” Plaintiff stated that he wanted to make an online or Internet shopping mall, but his efforts were unsuccessful. Defendants’ mall was a significant commercial success and one of the largest malls in Utah. Defendants promoted their mall online at “shopprovotownecentre.com,” which received nearly 300,000 page views since August 2001.
After plaintiff refused to transfer the domain names, defendants filed a UDRP Complaint. The UDRP Panel ordered plaintiff to transfer all three domain names to defendants, finding that plaintiff registered them in bad faith. Plaintiff filed this action to stay the UDRP decision. Defendants counterclaimed for infringement under Section 43(a) of the Lanham Act, state trademark infringement, deceptive trade practices, and unfair competition.
Trial Court Proceedings Edit
The court granted defendants’ motion for summary judgment on all of their counterclaims. Although the court held that the mark PROVO TOWNE CENTRE was escriptive, it had acquired secondary meaning and was thus protectable. The court also held that plaintiff’s domain names were confusingly similar to defendants’ PROVO TOWNE CENTRE marks because defendants’ mark and plaintiff’s domain names were virtually identical with the only difference being the “.com” on the end; the UDRP Panel found that plaintiff registered the domain names in bad faith and no evidence in the record made the court think otherwise; plaintiff’s attempt to establish an Internet shopping mall overlapped with the Internet presence of defendants’ mall; the affected consumers were not sophisticated; and the overwhelming strength of defendants’ mark versus the weakness of plaintiff’s domain names.
The court rejected plaintiff’s affirmative defenses. Regarding laches, the court held that defendants asserted their claims “in a reasonably expeditious manner” and, even if there was a delay, there was no evidence that plaintiff was prejudiced by it. Nor was there any evidence that defendants acted with unclean hands.
The court ordered plaintiff to transfer all three domain names to defendants. But the court declined to grant defendants’ request for a permanent injunction preventing plaintiff from owning or using any mark, trade name, or domain name containing PROVO TOWNE CENTRE or any confusingly similar terms. According to the court, an injunction was unnecessary because it had already ordered transfer of the infringing domain names to defendants and this suit presumably “taught [plaintiff] that defendants are willing to spend time, energy, and money to protect their intellectual property” such that “it is unlikely he will incorporate [defendants’ mark] into his future business ventures, online or otherwise.” The court granted defendants’ requests for attorneys’ fees because this was an exceptional case due to plaintiff’s bad faith. But the court limited them to $1,000 because plaintiff was a pro se litigant with limited resources.
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