Designer Skin LLC v. S & L Vitamins, Inc., et al.
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 "dci.com" 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 dciexpo.com.
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:
And, as stated above, the court permitted plaintiff to continue to use dci.com in lower case letters as its domain name.