Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp.2d 488 (E.D. Va. 1999) (full-text), aff’d, 2000 U.S. App. LEXIS 14669 (4th Cir. June 27, 2000).
Factual Background Edit
Plaintiff, a prominent lecture agency located in the Washington, D.C. area, sued one of its competitors for registering and using the domain names “washingtonspeakers.com,” “washington-speakers.com,” “washingtonspeakers.net,” and “washington-speakers.net.” After a failed attempt to acquire the domain names from defendant, plaintiff filed suit, alleging trademark infringement and dilution of its unregistered trademark WASHINGTON SPEAKERS BUREAU.
Trial Court Proceedings Edit
The court first held that plaintiff’s mark was descriptive but found it was entitled to protection because plaintiff established secondary meaning. In analyzing whether there was a likelihood of confusion between the marks, the court noted the heightened potential for consumer confusion that exists on the Internet, where people often guess the addresses of the websites they wish to visit when they are not sure of the domain names. Partly for this reason, the court found that defendant’s use of the domain names was likely to cause confusion.
The fact that defendant had also registered domain names resembling the names of other competing speaker bureaus and lecture agencies weighed heavily against defendant. Although defendant used only a segment of plaintiff’s mark, its intentional appropriation of the mark led to the conclusion that consumer confusion was likely. The court rejected defendant’s fair-use argument because it domain name registrations in bad faith. As to plaintiff’s dilution claim, the court denied protection to the mark WASHINGTON SPEAKERS BUREAU because the mark was not famous.
As a result of its finding of trademark infringement, however, the court ordered defendant to “relinquish” all rights in the four domain names at issue. The court refused to award any damages given the short time in which defendant actually used the domain names.
Defendant appealed the decision and requested a stay of the judgment pending appeal. The court initially granted the stay in an order issued April 15, 1999, and then in a decision issued May 19, 1999, vacated that order, and required defendant to relinquish the domain names to NSI.
Appellate Court Proceedings Edit
On appeal, the Fourth Circuit issued a per curium affirmance, concluding that the district court’s factual findings were supported by “substantial evidence,” and that the district court did not abuse its discretion in denying an award of attorney’s fees to plaintiff. Finally, the affirmance of the district court’s finding of trademark infringement rendered moot plaintiff’s cross-appeal regarding the denial of its dilution claim.
- ↑ See 49 F. Supp. 2d 496 (E.D. Va. 1999).
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