Teen Challenge International USA v. Elleson, 2006 U.S. Dist. LEXIS 85006 (D. Haw. Nov. 21, 2006).
Factual Background Edit
Plaintiff offered juvenile outreach counseling services throughout the country under the registered mark TEEN CHALLENGE. Defendant was the former director of Teen Challenge Hawaii, plaintiff’s branch office in Hawaii, from 1999 until he was fired in 2002. Before being fired, but without plaintiff’s knowledge, defendant registered the domain name “teenchallenge.us,” which he referenced on his personal ministries website.
In 2003, after first learning of the websites, plaintiff asked defendant to stop using the mark TEEN CHALLENGE in any format, which the defendant failed to do. Plaintiff then sued for trademark infringement and cybersquatting.
Trial Court Proceedings Edit
The court granted plaintiff’s motion for summary judgment on its claims of infringement and unfair trade practices. Plaintiff did not seek summary judgment on its cybersquatting claim. There was no dispute that plaintiff’s mark was distinctive, that defendant used the mark on his website for similar counseling services, or that the use was likely to cause confusion. The court also independently determined that there was a likelihood of confusion.
However, defendant argued that through previous use he had gained rights to the name “Teen Challenge Hawaii” and that the plaintiff had abandoned its mark. But the court dismissed defendant’s “evidence,” which consisted solely of defendant’s self-serving statement, as insufficient and granted summary judgment in favor of plaintiff.
The court then permanently enjoined defendant from using “Teen Challenge,” “Teen Challenge Hawaii,” “teenchallenge.us,” or any confusingly similar designation, trademark, or trade name. The court awarded attorney’s fees because defendant knowingly violated plaintiff’s mark and willfully continued to do so after receiving plaintiff’s demand letter.
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