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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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Data Concepts, Inc. v. Digital Consulting, Inc.

Civ. No. 3-96-0429 (M.D. Tenn., Jan. 31, 1997) reversed in part, affirmed in part, 150 F.3d 620 (6th Cir., August 4, 1998)

Defendant, the owner of a federal trademark in "DCI®", claimed that plaintiff's use of "DCI.COM" in its address constituted, inter alia, trademark infringement and unfair competition in violation of 15 U.S.C. sections 1125(a) and 1114(1)(a) and (b). The Magistrate Judge agreed, and issued a preliminary injunction, enjoining plaintiff's further use of DCI in upper case letters in its domain name. The court did, however, permit plaintiff to continue to use as its domain name "" in lower case letters, finding such use would neither cause consumer confusion, nor, apparently, infringe on defendant's mark.

Plaintiff provides software, data management and processing controls to its clients. It had, since 1982, used the letters dci, in lower case, to advertise its products. Defendant primarily provides high technology educational services. In connection with this business, defendant utilizes its trademark "DCI" in upper case letters, which mark it registered in 1987. Plaintiff first used DCI.COM for its domain name in 1993. Defendant operates a website at

To establish its unfair competition and trade mark infringement claims, defendant was required to and did show that plaintiff was using defendant's mark, DCI, in commerce in connection with the sale of its goods and services. Defendant also demonstrated that such use was likely to cause consumer confusion. The court reached this conclusion notwithstanding the different services sold by the parties, their differing clientele, the lack of any evidence of actual customer confusion, and the relative big ticket price and therefor attendant higher degree of care consumers would exercise in purchasing the services at issue. The court based its determination on the fact that plaintiff had previously used lower case letters to market its services but had switched to upper case letters in its domain name, the fanciful nature of the defendant's mark, the fact that plaintiff's domain name used the identical mark and the use by both parties of the as a marketing channel. Having found the requisite showing of unfair competition and trade mark infringement, the court directed the issuance of injunctive relief.

Plaintiff argued that its use of DCI in its domain name was permitted under Federal law because of plaintiff's use of the letters "dci" in connection with its marketing efforts prior to defendant's registration of its trademark. The court rejected plaintiff's prior use defense on the ground that the prior use in question was of lower case letters, and not the upper case letters chosen for the domain name, which upper case letters mirrored defendant's trademark.

Of note, in analyzing the likelihood of consumer confusion, the court stated:

While there if no evidence of actual customer confusion here, given the description of the whereby individuals, organizations and businesses "surf the Net" for information about various products, the use of a registered trademark for an address, and the evidence that Digital Consulting is an international business, can give rise to a prospect that Date Concepts' use of the DCI® registered trademark as its domain name may well cause confusion. Yet, in the Magistrate Judge's view, without other proof, Digital Consulting's use of a different address may dissipate this fact to an unknown degree.

And, as stated above, the court permitted plaintiff to continue to use in lower case letters as its domain name.

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