Designer Skin LLC v. S & L Vitamins, Inc., et al.
Green Products Co. v. Independence Corn By-Products Co.
992 F. Supp. 1070 (N.D. Iowa, Sept. 25, 1997)
Plaintiff and defendant are competitors in the corn by-products industry. Defendant registered the domain name "greenproducts.com" which was markedly similar to plaintiff's federally registered trademark "Green Products." Defendant alleged that it intended to post a website at "greenproducts.com" that would "distinguish [defendant's] products from those of [plaintiff] Green Products through comparative advertising." As of the date of suit, however, defendant had not operated a website at "greenproducts.com."
Plaintiff, alleging that defendant's conduct constituted trademark infringement in violation of the Lanham Act, sought a preliminary injunction, directing defendant both to stop using Green Products in its domain name, and to transfer ownership of the domain name "greenproducts.com" to plaintiff during the pendency of the lawsuit. The Court found that plaintiff was likely to prevail on the merits and granted the relief sought.
To establish trademark infringement, it is necessary to show that defendant's conduct is likely to cause consumer confusion. The court found that the requisite showing needed for injunctive relief had been made, even though defendant had not yet operated a website. Defendant argued that its website would not confuse the public because it would prominently state that the site was not affiliated with, nor sponsored by Green Products. In rejecting this argument, the court said:
The Court directed defendant to transfer the domain name to plaintiff during the pendency of the lawsuit because of the risk of irreparable injury plaintiff faced should the name remain in defendant's hands. Mindful that Internet users could look up the identity of a domain name's owner, the Court stated:
The full text of the court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.