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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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Interactive Products, Corporation v. A2Z Mobile Office

326 F.3d 687, No. 01-3590 (6th Cir., April 10, 2003)

The Sixth Circuit Court of Appeals affirms the District Court's dismissal of trademark infringement and false advertising claims arising out of defendants' use of plaintiff's trademark in the path of the domain name of one of the pages of defendant a2z's website, and out of a statement posted on defendant a2z's web site concerning the invention of the product plaintiff sold under the mark at issue.  As to the former, the Court held that a domain name's path, unlike the domain name itself, normally does not signify the source of the website.  As such, use of the mark in the path of a site would not confuse users as to the source of the products sold thereon, and thus would not typically serve as the basis for a trademark infringement claim.  The false advertising claims were dismissed because the statements in question were either true or non-actionable opinion.

A domain name is composed of a top level domain name signifying the type of site in question, such as .com (commercial) or .edu (education), and a second level domain, usually signifying the site's source (the IBM in Ibm.com).  A domain name's path, typically found on web pages contained in a web site's interior, are the characters in the URL to the right of the top level domain name, which characters normally signify the manner in which the site is organized.   For example, my complete analysis of the California Supreme Court's recent decision in Intel v. Hamidi can be found in the Internet Library at the following url - http://www.phillipsnizer.com/library/cases/lib_case324.cfm.  The letters to the right of .com in the url are the domain's path, and indicate that the decision in question has been assigned number 324, can be found in the Internet Library section of the site, in a database containing all of the complete descriptions found on the site, which database is called "cases."

Plaintiff Interactive Products Corporation is the owner of the federally registered trademark 'Lap Traveler' which it uses to market a portable computer stand for use in automobiles.  The Lap Traveler was originally developed by Mark Comeaux, plaintiff's president, and Douglas Mayer.  The Lap Traveler was at one time sold by defendant A2Z Mobile Office Solutions Inc. ("a2z") on its web site with plaintiffs' permission.  The web page a2z set up for this purpose used the 'Lap Traveler' mark in the path of the page's URL - "a2zsolutions.com/desks/floor/laptraveler/dkf1-lt.htm."

Plaintiffs subsequently had a falling out with both a2z and Mayer.  As a result, a2z stopped selling plaintiffs' 'Lap Traveler' and replaced it instead with a new portable computer stand designed by Mayer called the 'Mobile Desk.'  a2z sold this product on the same web page at which it formerly sold plaintiffs' 'Lap Traveler,' which page continued to have the same URL, including the mark 'Lap Traveler' in its path.

For approximately 2 years, a2z also posted the following statement on the web page at which it sold the "Mobile Desk" 

Important Announcement about the Lap Traveler Product.  The original Lap Traveler was co-developed by Doug Mayer and his ex-partner.  They have split.  a2z carries the redesigned and improved product the Mobile Desk. 

This statement was subsequently removed from a2z's site.

Search engine results for 'Lap Traveler' included a2z's site, and the page on which it offered the 'Mobile Desk' for sale.  Interestingly, plaintiffs' expert testified that this was not caused by the use of plaintiff's mark in the path of the web page's domain name.

Plaintiffs commenced suit, asserting that defendant a2z's use of their mark in the domain's path constituted trademark infringement and false designation of origin in violation of the Lanham Act, while the posting of the statement quoted above concerning the invention of the 'Lap Traveler' constituted false advertising.  On defendants' motion for summary judgment, the District Court rejected these claims, and dismissed plaintiffs' Complaint.  The 6th Circuit agreed, and affirmed the decision of the court below.

To establish either a trademark infringement or false designation of origin claim, a plaintiff must show that defendant's use of his mark is likely to confuse consumers as to the source of goods or services.  "The post domain path of a URL, however, does not typically signify source.  The post-domain path merely shows how the web site's data is organized within the host computer's files."

As a result, the Sixth Circuit held that the presence of plaintiff's mark in the path of the domain name was unlikely to cause consumer confusion as to the source of the goods found thereon, and affirmed the dismissal of plaintiffs trademark infringement claim.  Said the Court:

Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL, would ever violate trademark law.  For purposes of the present case, however it is enough to find that IPC has not presented any evidence that the presence of "laptraveler" in the post-domain path of a a2z's portable computer stand web page is likely to cause consumer confusion regarding the source of the web page or the source of the Mobile Desk product which is offered for sale on the web page.

Importantly, the Court reached this result even though defendant a2z was not selling plaintiff's product on its site and was selling a competing product instead.

The Sixth Circuit also affirmed the dismissal of plaintiffs' false advertising claim, finding that the statements made in the advertisement in question were either true or non-actionable opinion.

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