Designer Skin LLC v. S & L Vitamins, Inc., et al.
Cardservice International Inc. v. McGee.
950 F. Supp. 737 (E.D.Va. Jan. 16, 1997)
In Cardservice, the court issued a permanent injunction, enjoining the defendant from using "cardservice" in its domain name. The court found such use to constitute infringement of plaintiff's trademark in the mark "cardservice international." The court further awarded plaintiff attorneys fees under the Lanham Act to compensate plaintiff for its efforts in stopping defendant from continuing this conduct.
Plaintiff was the owner of a federal trademark in the mark "Cardservice International." Plaintiff was in the business of credit and debit card processing. Defendant, in a competing business, registered the domain name "cardservice.com" with NSI without plaintiff's permission. The user who accessed this URL was taken to defendant's website, which advertised merchant card services through a company called "EMS-Card Service on the Caprock."
After defendant refused to discontinue this conduct despite notification of plaintiff's mark, plaintiff commenced this action, seeking a permanent injunction and other relief. Plaintiff alleged that defendant's conduct constituted trademark infringement, unfair competition, misappropriation and unjust enrichment. The court agreed, and issued a permanent injunction, enjoining defendant from further use of "cardservice" in its domain name or site.
Of interest is the court's discussion of the requirement that plaintiff prove not only that defendant had infringed its mark, but also that such use "is likely to cause confusion among consumers." Effectively, the court held that because the defendant engaged in a competing business, its mere use of the mark in its domain name was sufficient evidence to establish the requisite likelihood of consumer confusion, because people surfing the net and looking for plaintiff on the Internet and not being aware of its address, would be likely to do so by inserting plaintiff's mark in a domain name, and, upon arriving at defendant's site (instead of plaintiff's) would assume it was indeed plaintiff's site. Said the court: