Designer Skin LLC v. S & L Vitamins, Inc., et al.
Washington Speakers Bureau, Inc. v. Leading Authorities, Inc.
33 F. Supp. 2d 488 (E.D. Va., Feb. 2, 1999)
Plaintiff and defendant are each engaged in the business of supplying speakers for lectures. Plaintiff Washington Speaker Bureau has for the past 18 years represented many well-know speakers. During this period of time, plaintiff has spent considerable time, effort and money advertising its common law trade name the "Washington Speaker Bureau." Over the last 5 years alone it has spent at least $1 million dollars on advertising. As a result of these efforts, the name "Washington Speakers Bureau" has become widely known among those who regularly look to engage high profile business and political speakers. Plaintiff had not obtained federal trademark registration for its trade name at the time the law suit was commenced.
Defendant Leading Authorities is a competitor of plaintiff. While it also represents a handful of well-known speakers, it principally co-brokers with other speaker agencies to arrange for speaker appearances.
In March 1998, Leading Authorities registered the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net and www.washington-speakers.net with NSI. At approximately the same time, Leading Authorities also obtained registration for a series of domain names using the word "speakers" preceded by either a geographic location (e.g. floridaspeakers.com, californiaspeakers.com), an area of expertise (e.g. salesspeakers.com, sportsspeakers.com) or by a laudatory adjective or generic term (e.g. famousspeakers.com, guestspeakers.com). Additionally, within weeks of these initial registrations, Leading Authorities also registered a series of domain names that "bore close resemblance to the names of other speakers' bureaus and lecture agencies around the world."
Plaintiff objected to defendant's registration of domain names listed containing the phrase "Washington speakers." When defendant refused to transfer these names to plaintiff, plaintiff brought suit, charging defendant, inter alia, with trademark infringement and dilution in violation of the Lanham Act.
The court found that defendant's use of the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net and www.washington-speakers.net infringed plaintiff's common law mark in "Washington Speakers Bureau" and accordingly directed defendant to relinquish ownership of those names. It found that plaintiff's dilution claim was without merit, in part, because plaintiff's mark was not famous.
The court found that the mark "Washington Speakers Bureau" was a descriptive mark entitled to protection because it had developed secondary meaning and great prominence in the speaking engagement industry. The court held that the mark was not suggestive because it operates to describe the services offered by the plaintiff. It was, however, descriptive, because of the addition of the geographic term "Washington." Said the court:
As a descriptive mark that had developed secondary meaning, plaintiff was entitled to prevail on its infringement claim if it could establish that "Leading Authorities made use of a 'colorable imitation' of (plaintiff's) trademark that is likely to cause confusion among consumers." After an extensive analysis, the court determined that plaintiff had made a sufficient showing of a likelihood of consumer confusion to prevail on its infringement claim.
The court engaged in an analysis of a number of factors to determine a likelihood of consumer confusion. Defendant, as noted above, did not use plaintiff's mark "Washington Speakers Bureau" in the domain names at issue -- instead it only used the phrase "Washington Speakers." While the evidence on this point was close, the court concluded that the public did not associate this phrase, descriptive of services offered by a number of entities including both parties to the lawsuit, with the plaintiff.
Nonetheless, the court found that plaintiff had proved a likelihood of consumer confusion. In reaching this conclusion, the court relied on the fact that the services the parties offered to the public were virtually identical, the parties advertised in the same medium (the Internet), the mark was used in a domain name, which gives rise to a particular potential for confusion, and the fact that, in the court's opinion, defendant adopted the domain names at issue in a bad faith effort to attract business otherwise headed for plaintiff. This latter finding was premised in large part on the fact that defendant, at the time it registered the domain names at issue, had also registered the domain names of a number of its competitors, and was aware of plaintiff and its tradename. This finding of bad faith drove the court to conclude the requisite likelihood of consumer confusion was present.
The court also noted that "the special nature of the Internet and the particular manner in which domain names function within the Internet may also heighten the potential for confusion." This was true because consumers often attempt to locate companies on the web by guessing that they have used their names and/or marks as their domain name.
The court rejected plaintiff's dilution claim, finding that plaintiff's mark was not famous enough to qualify for protection under the Lanham Act. In passing, the court questioned whether a mark that is only famous in a niche market, but not with the general public, could be entitled to such protection. This question was left unanswered, however.
The full text of the court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.