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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Desktop Technologies, Inc. v. Coloworks Reproduction & Design, Inc.

Civ. Act. No. 98-5029, 1999 U.S. Dist. Lexis 1934 (D. Pa., February 24, 1999)

Court holds that it lacks personal jurisdiction over a non-resident defendant in a trademark infringement suit arising out of defendant's use of plaintiff's trademark in its domain name. Plaintiff and defendant both prepare and print color reproductions. Plaintiff is the owner of the federally registered mark "Colorworks" while defendant is the owner of a subsequently registered Canadian mark "ColorWorks."

Defendant is a Canadian-based corporation that only does business in Canada. At the time the suit was commenced, defendant had neither transacted business with, nor provided services in Pennsylvania. Nonetheless, plaintiff, a Pennsylvania corporation, sued the defendant in Pennsylvania. Plaintiff argued that the court could exercise personal jurisdiction over the defendant as a result of its operation of a website on the Internet. As noted above, plaintiff's trademark infringement claim arose out of the operation of this site.

Defendant's site contained several pages advertising both its services and various employment opportunities with defendant's company. While an order form was made available on the site, it could not be filled out and sent to defendant via the Internet. Instead, to complete an order, the form had to be printed, filled out, and sent via fax or mail to defendant in Canada. Defendant would not accept the order until defendant confirmed it in a subsequent telephone call with the customer. The site permitted users to communicate with defendant via both e-mail and file transfer protocol ("ftp"). Users were also provided telephone numbers that could be used to contact the defendant.

The court held that this passive web site advertising defendant's services was insufficient to permit it to exercise either general or specific personal jurisdiction over the defendant. Said the court:

Upon review of recent cases that have addressed the issue of whether a forum can exercise specific jurisdiction over a non-resident defendant based upon a claim that the defendant's web site or domain name infringes the trademark rights of a resident plaintiff, a basic principal emerges:

Simply registering someone else's trademark as a domain name and posting a web site on the Internet is not sufficient to subject a party domiciled in one state to jurisdiction in another . . . There must be "something more" to demonstrate that the defendant directed his activity towards the forum state.

The "something more" required to permit the exercise of jurisdiction was not found in either the ability to communicate with defendant via e-mail or ftp. Said the court:

The Internet FTP is merely a system which allows a user to transfer a file to Defendant via the Internet. The e-mail links are, as stated by the court in Grutkowski, "the electronic equivalents of advertisements' response cards" and are insufficient to make these pages more than advertisements.

The court accordingly dismissed the suit for want of personal jurisdiction.

The full text of the court's decision can be found on a web site maintained by the United States District Court for the Eastern District of Pennsylvania.

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