United States District Court, District
of New Jersey.
decided
March 6, 1998
OPINION
Lechner, District Judge.
This action involves, in the words of the defendant, a "bogus"
Internet site and, again, in the words of the defendant, his use of "deceit
and trickery." As a result, there is a dispute (1)
between the plaintiff, Jews for Jesus (the "Plaintiff" or the "Plaintiff
Organization"), and the defendant, Steven Brodsky (the "Defendant"),
in connection with the use by the Defendant of the Internet (2)
domain names (3) "jewsforjesus.org" and "jews-for-jesus.com".
(4)
On 23 January 1998, the Plaintiff filed a complaint (the
"Complaint"). The Plaintiff contends the deliberate diversion by
the Defendant of Internet users to the Internet site established by the
Defendant "has caused and is causing irreparable harm to [P]laintiff, in
violation of federal, state and common laws governing trademark and unfair
competition." Complaint 12. Specifically, the Plaintiff
Organization seeks, among other things, a preliminary injunction enjoining the
Defendant from (1) diluting the federally-registered service mark, "Jews
f<<StarOfDavid>>r Jesus" and the common law service mark,
"Jews for Jesus" (2) infringing the registered mark of the Plaintiff
Organization, (3) unfairly competing and falsely designating, describing and
representing the origin of the Internet Web (5) sites
maintained by the Defendant, (4) diluting the Plaintiff's mark pursuant to state
statutory law, (5) infringing Plaintiff's rights in its name and registered mark
in violation of state statutory law and (6) unfairly competing in violation of
common law. See Complaint. Jurisdiction is alleged pursuant to 15
U.S.C. § 1121, 28 U.S.C. § 1331, 1338 and 1367. See id. 1.
Currently before the court is an order to show cause (the "Order to Show
Cause") seeking a preliminary injunction (6) filed by the
Plaintiff. For the reasons set forth below, the request for a preliminary
injunction is granted. (7)
I. Background
A. Procedural History
On 28 January 1998, the Plaintiff Organization filed the Order to Show Cause.
The Defendant appears to have been initially served with the Order to Show Cause
via electronic mail on 27 January 1998. (8) See Winick
Affidavit 7. At the 28 January Hearing, decision was reserved on the Order
to Show Cause and a return date was initially set for 10 February 1998 to allow
the Defendant an opportunity to file opposition. The return date was
adjourned to 13 February 1998 to allow the Plaintiff Organization an opportunity
to file a brief in reply to the Defendant Brief.
At the 13 February Hearing, the parties were heard on the issue of whether a
preliminary injunction should be issued. The parties declined, however, to
treat the 13 February Hearing as a hearing for a permanent injunction. See
13 February Hearing Tr. at 4.
B. Facts
1. The Parties
a. The Plaintiff Organization
The Plaintiff Organization is a non-profit, international outreach ministry
that was founded in 1973. See Perlman Amended Aff. 4. It is
organized under the laws of the State of California and maintains its principal
place of business in San Francisco, California. See Complaint 5. The
Plaintiff Organization teaches Jesus is the Messiah of Israel and the Savior of
the World; its mission includes advocacy, education and religious
camaraderie for both Gentiles and Jews. See id. 4; Perlman Amended
Aff. 4. The Plaintiff Organization employs approximately 145 staff members,
has twelve permanent branches worldwide and an additional sixty-eight chapters
which perform voluntary activities on its behalf. See id. 7.
The Plaintiff Organization asserts it has used the name "Jews for
Jesus" continuously in interstate commerce for more than twenty-four years.
See Complaint 13-14; Perlman Amended Aff. 4. As such,
throughout the Complaint it is asserted that the phrase "Jews for
Jesus" is a common law service mark. See, e .g., Complaint
11-14, 16, 37-39, 47-49, 63, 70, 74 and 75. The Plaintiff also asserts it
owns the rights to the stylized service mark "Jews
f<<StarOfDavid>>r Jesus" (the "Mark") that was
registered (U.S.Reg. No. 1,252,889) on the Principal Register of the United
States Patent and Trademark Office (the "PTO") on 4 October 1983 (the
"Registration"). (9) See id. 15;
Perlman Amended Aff. 6. According to the Plaintiff, the Mark has been
maintained since that date and is now incontestable pursuant to 15 U.S.C. §
1065 ("Section 1065"). See Plaintiff Brief at 6; Plaintiff Reply
Brief at 4-5. The Registration indicates the Mark fits within
International Classification 16 ("Class 16") and is for "Religious
Pamphlets." See Exhibit A to the Complaint, at 2.
The Plaintiff Organization distributes throughout the United States four
publications in connection with its ministry and a catalog of merchandise.
See Perlman Amended Aff. 8. The Plaintiff Organization has fulfilled its
"mission by providing education and information through classes, lectures,
meetings, television, radio and the dissemination of information through
magazines, brochures, newspapers and the Internet to millions people in the
United States and abroad." Id. 4. As well, the Plaintiff
"has conducted annual advertising campaigns since 1982." Id. The
Plaintiff Organization "has expended a substantial amount of money
publishing ads in national publications like the New York Times, the Washington
Post, the Wall Street Journal, Newsweek, Parade, and TV Guide." Id.
In addition, the Plaintiff Organization has conducted annual advertising
campaigns (10) on New Jersey- based radio stations and in
numerous local and national newspapers and has advertised on billboards and in
the transit system in the New York/New Jersey metropolitan area. See id.
9-10, 14; Exhibit 2 to Perlman Supplemental Aff. 6; see also
Complaint 63.
Representatives of the Plaintiff Organization have appeared on numerous radio
and television programs and have distributed throughout New York City pamphlets
regarding the teachings of the Plaintiff Organization. (11)
See Perlman Amended Aff. 12. The Mark appears on most of the
Plaintiff Organization advertisements and on its Internet Web site. See
id. 11; Perlman Supplemental Aff. 6. At the 13 February
Hearing, counsel for the Plaintiff Organization acknowledged some of the
advertisements and literature distributed by the Plaintiff Organization does not
contain the stylized letter "O" ("<<StarOfDavid>>")
in the word "for" when referring to the Plaintiff Organization.
See 13 February Hearing Tr. at 35. Nevertheless, the Plaintiff has
established it "has continuously used the name Jews for Jesus in its
publications, media ads and other communications throughout the United States
during the past 24 years." Perlman Amended Aff. 5-6.
It is the position of the Plaintiff Organization "[t]hat by virtue of
its extensive national use of the name Jews for Jesus and, particularly, its use
in the New York/New Jersey Metropolitan area, Jews for Jesus has developed
significant recognition and good will. The name Jews for Jesus has come to
be recognized by the public as identifying [the Plaintiff Organization] and its
mission, message and services." See id. 24. "Furthermore,
the dissemination of the name on the Internet through Jews for Jesus' Web site
has established the name among people who use the Internet as being synonymous
with the mission and message of the [Plaintiff O]rganization." Id. It
appears the Plaintiff Organization has extensively advertised its "mission,
message, and services, in national and local publications" over the past
ten years. Perlman Supplemental Aff. 4. A year-by-year breakout of
these expenditures is located in Exhibit 1 to the Perlman Supplemental Aff. See
id.
In March 1995, the Plaintiff Organization established an Internet site with
the domain name "jews-for-jesus.org". See Perlman Amended Aff.
16. This domain name does not contain the stylized letter "O"
("<<StarOfDavid>>") in the word "for".
During the 13 February Hearing, counsel for the Plaintiff Organization indicated
the domain name omits spaces before and after the word "for," and does
not contain the stylized letter "O" ("<<StarOfDavid>>")
in that word, because such characters are not recognized in domain names.
See 13 February Hearing Tr. at 4 (incorporating arguments set forth in papers
submitted in support of Order to Show Cause). The "jews-for-jesus.org"
Internet site contains information about, among other things, the mission and
message of the Plaintiff Organization. See Perlman Amended Aff. 17.
Significantly, the Plaintiff Organization Internet site also contains electronic
versions of many of its publications. See id. None of these
publications, however, can be downloaded. See Plaintiff Reply Brief at 10.
The Plaintiff Organization Internet site offers various items for sale, see
Perlman Amended Aff. 17; it is commercial in nature.
b. The Defendant
The Defendant is a professional Internet site developer. See Brodsky
Certif. 3. The Plaintiff Organization contends the Defendant is also an
attorney who is "a vocal opponent" of its mission, teachings, message
and services. See Plaintiff Brief at 6.
The Defendant admits he has critical things to say about the Plaintiff
Organization which he asserts are protected by the First Amendment. See
Defendant Brief at 5, 32-34. The following statements (12)
about the Plaintiff Organization have been attributed to the Defendant:
The Jews for Jesus cult is founded upon deceit and distortion of fact.
See Exhibit E to the Complaint; Exhibit 2 to Perlman Amended Aff.
[T]he whole program [of Jews for Jesus] is based on deceit and trickery, preying
on people who are confused. Two can play at that game. See Exhibit 3
to Perlman Amended Aff., at 1.
In mid-to-late December 1997, the Defendant "posted" the
Internet site "jewsforjesus.org" that is the subject of this
action. See Brodsky Certif. 1. The Defendant Internet site consists
of approximately one page of text (13) and refers to
the Plaintiff Organization by its common law service mark "Jews for
Jesus" and not by its federally-registered service mark "Jews
f<< StarOfDavid>>r Jesus." See Exhibit E to the
Complaint; Perlman Amended Aff. 28. The Defendant Internet
site contains a "hyperlink" (14) to the Outreach
Judaism (the "Outreach Judaism Organization") Internet site. See
id.
The Outreach Judaism Organization is also a vocal opponent of the views
espoused by the Plaintiff Organization. See Perlman Amended Aff. 28.
The Internet site for the Outreach Judaism Organization offers for sale certain
items, including audio tapes and books. See id.; Complaint 33;
see also Exhibit F to the Complaint. It is commercial in nature.
The Defendant appears to have been aware of the existence of the Plaintiff
Organization and the extensive advertising efforts of the Plaintiff Organization
prior to the registration of his domain name. He was quoted as stating:
I was seeing their ads all over the place on the subways and in the newspapers
with their obscene messages, and I noticed they were heavily promoting their
websites....
See Complaint 42 (citing 9 January 1998 Jewish Week article).
It also appears the Defendant was aware of the federally-registered and common
law service marks of the Plaintiff Organization.
The Defendant reportedly stated that he started his Internet site because the
Plaintiff Organization "rubs [him] the wrong way." See Exhibit I
to the Complaint. In addition, the Defendant has been reported as stating
that the
intent behind my bogus "Jews for Jesus" site (www.jewsforjesus.org) is
to intercept potential converts before they have a chance to see the obscene
garbage on the real J4J site.
See Exhibit J to the Complaint. He also was quoted as stating "I
thought I could provide an educational counterpoint against [the Plaintiff
Organization's] lies." See Complaint 42. In the Defendant
Brief, it is argued that the intent of the Defendant Internet site is "to
engage Jewish people who are interested in the topic of missionary Christians
who describe themselves as Jews for Jesus and to expose these seekers to a
pro-Judaism website." See Defendant Brief at 5. Presumably, the
pro-Judaism Web site contemplated by the Defendant is the site maintained by the
Outreach Judaism Organization. (15)
At the 13 February Hearing, counsel for the Defendant stated the Defendant
did not choose to register the domain name "Jews for Jesus for Judaism"
because there is a registered trademark for that name. See 13 February
Hearing Tr. at 34-35. This response is somewhat peculiar considering the
Defendant chose to use the name of the Plaintiff Organization in his domain name.
The Defendant acknowledges the Plaintiff Organization has certain rights to
the service mark "Jews f<<StarOfDavid>>r Jesus." See
Defendant Brief at 1, 3-4. The Defendant contends, however, that the
Plaintiff Organization does not have any rights to the phrase "Jews for
Jesus" (without the symbol "<<StarOfDavid>>" in the
word "for") because those words are not amenable to trademark or
service mark protection. See id. at 1-2, 12-19. As such, the Defendant
argues that, because his domain name does not contain a stylized letter
"O" ("<<StarOfDavid>>"), the use of the phrase
"jewsforjesus" in his domain name does not infringe upon the Mark. See
id. at 1-2.
2. The Efforts of the Plaintiff Organization to Stop the
Defendant from Using the Disputed Domain Names
In December 1997, the Plaintiff Organization learned the Defendant was
operating an Internet site with the domain name "jewsforjesus.org".
See Byrne Aff. 4; Perlman Amended Aff. 18-19. On 23
December 1997, the Plaintiff Organization sent a letter (the "Plaintiff's
23 December Letter") to the Defendant notifying him it was the holder of
the Mark and requesting he immediately cease using the domain name "jewsforjesus.org".
See Exhibit L to the Complaint, at 1. On 23 December 1997, the Defendant advised
the Plaintiff he did not believe his domain name infringed upon the Mark because
"there are numerous and substantial differences between your alleged
trademark and the domain name." Id. at 2. Interestingly, the
Defendant apparently registered a second domain name, "jews-for-jesus.com",
(16) after receiving the Plaintiff's 23 December Letter.
See Exhibit I to the Complaint. In addition, after receiving the
Plaintiff's 23 December Letter, the Defendant apparently added a disclaimer (17)
(the "Disclaimer") to his Internet site. Compare Exhibit D of the
Complaint (24 December 1997 home page for "jewsforjesus.org" without
disclaimer) with Exhibit E of the Complaint (21 January 1998 home page for
"jewsforjesus.org" with disclaimer).
On 16 January 1998, the Plaintiff sent a second letter (the "Plaintiff's
16 January Letter") to the Defendant demanding that he cease using the
domain names "jewsforjesus.org" and "jews-for-jesus.com".
See Exhibit M to the Complaint. The Plaintiff's 16 January Letter advised
the Defendant his continued use of these domain names constituted a violation of
the rights of the Plaintiff Organization and subjected him to penalties,
including treble damages and attorney's fees. See id.
The Defendant contends his understanding of the legal issues involved led him
to believe the claims set forth in the Plaintiff's 23 December Letter and the
Plaintiff's 16 January Letter "were legally unfounded, spurious and
intended to harass" him. Brodsky Certif. 2.
II. Discussion
Standard of Review for Preliminary Injunctions
Injunctive relief is an extraordinary remedy which should be granted only if
the Plaintiff Organization produces evidence sufficient to demonstrate the
following four factors:
(1) the likelihood that the Plaintiff Organization will prevail on the merits at
final hearing;
(2) the extent to which the Plaintiff Organization is being irreparably harmed
by the conduct complained of;
(3) the extent to which the Defendant will suffer irreparable harm if the
preliminary injunction is issued; and
(4) the public interest.
See, e.g., AT & T Co. v. Winback and Conserve Program, Inc., 42 F.3d 1421,
1427 (3d Cir.1994), cert. denied, 514 U.S. 1103, 115 S.Ct. 1838, 131 L.Ed.2d 757
(1995); Gerardi v. Pelullo, 16 F.3d 1363, 1373 (3d Cir.1994); S
& R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371, 374 (3d Cir.1992);
Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 191-92 (3d
Cir.1990); Alessi v. Pennsylvania, Dep't of Pub. Welfare, 893 F.2d 1444,
1447 (3d Cir.1990); Instant Air Freight Co. v. C.F. Air Freight, Inc., 882
F.2d 797, 799 (3d Cir.1989); Fechter v. HMW Indus., Inc., 879 F.2d 1111,
1116 (3d Cir.1989); Genovese Drug Stores, Inc. v. TGC Stores, Inc., 939
F.Supp. 340, 343 (D.N.J.1996); Apollo Techs. v. Centrosphere Indus., 805
F.Supp. 1157, 1191 (D.N.J.1992); Glenside West Corp. v. Exxon Co., U.S.A.,
761 F.Supp. 1118, 1132 (D.N.J.1991); CPC Int'l, Inc. v. Caribe Food
Distribs., 731 F.Supp. 660, 664 (D.N.J.1990); Bascom Food Prods., Corp. v.
Reese Finer Foods, Inc., 715 F.Supp. 616, 624 (D.N.J.1989). The grant or
denial of a preliminary injunction lies within " 'the sound discretion of
the district judge, who must balance all of these factors in making a decision.'
" FM 103.1, Inc. v. Universal Broad. of N.Y., Inc., 929 F.Supp. 187,
193 (D.N.J.1996) (citing Kershner v. Mazurkiewicz, 670 F.2d 440, 443 (3d
Cir.1982); Atlantic Coast Demolition v. Board of Chosen Freeholders of
Atlantic Cty., 893 F.Supp. 301, 307 (D.N.J.1995)).
Of these four requirements, the Third Circuit has placed particular emphasis
on the likelihood of success on the merits and the probability of irreparable
harm, stating: " '[W]e cannot sustain a preliminary injunction
ordered by the district court where either or both of these prerequisites are
absent.' " Hoxworth v. Blinder, Robinson & Co., 903 F.2d 186, 197
(3d Cir.1990)(quoting In re Arthur Treacher's Franchisee Litig., 689 F.2d 1137,
1143 (3d Cir.1982)); see also Instant Air, 882 F.2d at 800; Morton
v. Beyer, 822 F.2d 364, 367 (3d Cir.1987); Sky Vue, 759 F.2d at 1098-99;
Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 151 (3d
Cir.1984). In addition, before a preliminary injunction may be issued, the
applicant for the injunction usually must give security in such sum as the court
deems proper, for the payment of such costs and damages as may be incurred or
suffered by any party who is found to have been wrongfully enjoined or
restrained.
Fed. R. Civ. Pro. 65; Elliott v. Kiesewetter, 98 F.3d 47, 59-60 (3d
Cir.1996) (stating security must be given unless balance of equities weighs
overwhelmingly in favor of party seeking injunction and then district court has
discretion to waive Rule 65(c) bond requirement after proper finding).
A. Likelihood the Plaintiff Organization Will Prevail on
the Merits
Several federal courts presented with an Internet domain name dispute have
granted an application for a preliminary injunction where the plaintiff was able
to satisfy factors similar to those previously discussed. See, e.g.,
Teletech Customer Care Management (Cal.) v. Tele-Tech Co., Inc., 977 F.Supp.
1407 (C.D.Cal.1997); Green Products Co. v. Independence Corn By-Prods.
Co., 992 F.Supp. 1070, 1081 (N.D.Iowa 1997); Planned Parenthood, 1997 WL
133313, at *12; Playboy Enters., Inc. v. Calvin Designer Label, 985 F.Supp.
1220, 1221 (N.D.Cal.1997) ("Playboy "); Cardservice Int'l v.
McGee, 950 F.Supp. 737, 739 (E.D.Va.), aff'd, 129 F.3d 1258 (4th Cir.1997) (discussing
previous issuance of preliminary injunction); Comp Exam'r Agency, Inc. v.
Juris, Inc., No. 96-213, 1996 WL 376600, at *1 (C.D.Cal. Apr. 26, 1996)
("Juris "); Hasbro, Inc. v. Internet Entertainment Group, Ltd .,
No. 96- 130, 1996 WL 84853, at *1 (W.D.Wa. Feb. 9, 1996) ("Hasbro").
In those cases, the court found the plaintiff had a likelihood of success on the
merits and determined that the use by the defendant in its domain name of the
asserted trademark created a likelihood of confusion.
For example, in Planned Parenthood the plaintiff was a non-profit,
reproductive services organization that owned the rights to the service mark
"Planned Parenthood." See Planned Parenthood, 1997 WL 133313, at
*1. The plaintiff had facilities throughout the United States and operated an
Internet site with the domain name "ppfa.org". See id. In August
1996, the defendant, an outspoken opponent of the plaintiff, registered the
domain name "plannedparenthood.com". See id. A preliminary
injunction was issued after a finding that the domain name and Internet site of
the defendant were likely to cause confusion and that the plaintiff demonstrated
a likelihood of prevailing on its claims of, inter alia, unfair competition,
dilution and false designation of origin. See id. at *7.
A similar result occurred in Playboy where the plaintiff owned rights to the
registered marks "Playboy" and "Playmate." See
Playboy, 985 F.Supp. 1220, 1221. The defendant used the words "Playboyxxx"
and "Playmatelive" in its domain names without permission. See
id. An injunction was granted after a finding that the plaintiff was
likely to succeed on its claims of, inter alia, trademark infringement, unfair
competition and false designation of origin because the use of the marks
"Playboy" and "Playmate" in the domain names of the
defendant was likely to cause confusion. See id.
In Hasbro, the plaintiff was the owner of the federally registered trademark
"CANDY LAND". See Hasbro, 1996 WL 84853, at *1. The defendants
operated a sexually explicit Internet site with the domain name "candyland.com".
See id. A preliminary injunction was issued after a finding that the
plaintiff demonstrated a probability that the conduct of the defendants violated
the federal and Washington state anti-dilution statutes. See id. In
addition, the court found that the use by the defendants of the "CANDY
LAND" mark in their domain name was causing irreparable injury to the
plaintiff. See id.
In Juris, the plaintiff owned the incontestable, federally registered
trademark "JURIS." See Juris, 1996 WL 376600, at *1. The
defendant used the mark "juris" as a second level domain name. See id.
A preliminary injunction was granted after a finding the plaintiff demonstrated
a likelihood of success on the merits. It was found that the use by the
defendant of the mark constituted trademark infringement because it was likely
to cause confusion as to the source or sponsorship of those goods and services.
See id. It also was found that the use of the mark by the defendant in
connection with its Internet site was causing irreparable injury to the
plaintiff. See id.
Other courts have granted a motion for full or partial summary judgment and/or
issued a permanent injunction where the use in a domain name of a trademark
constituted, among other things, trademark infringement, false designation of
origin and/or dilution of the trademark. See, e.g., Lozano Enter. v. La
Opinion Publ'g Co., No. 96-5969, 1997 WL 745036, at *1 (C.D.Cal. July 31, 1997);
Intermatic, 947 F.Supp. at 1227; Panavision Int'l v. Toeppen, 945 F.Supp.
1296 (C.D.Cal.1996); ActMedia, Inc. v. Active Media Int'l, Inc., No.
96-3448, 1996 WL 466527, at *1 (N.D.Ill. July 17, 1996); see also
Cardservice, 950 F.Supp. at 741; but see Interstellar, 983 F.Supp. at
1331; Juno Online Servs., L.P. v. Juno Lighting, Inc., 979 F.Supp. 684
(N.D.Ill.1997).
1. Service Mark Infringement Claim
The Complaint alleges the Defendant is liable for trademark
infringement pursuant to 15 U.S.C. § 1114 ("Section 1114") because he
is using the Mark in his domain name. Section 1114 of states, in relevant
part,
(1) Any person who shall, without the consent of the registrant-
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation
of a registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to deceive;
or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and
apply such reproduction, counterfeit, copy, or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended to be
used in commerce upon or in connection with the sale, offering for sale,
distribution, or advertising of goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter
provided. Under subsection (b) hereof, the registrant shall not be
entitled to recover profits or damages unless the acts have been committed with
knowledge that such imitation is intended to be used to cause confusion, or to
cause mistake, or to deceive....
15 U.S.C. § 1114.
In order for a party to prevail on a claim of trademark (18)
or service mark (19) infringement under Section 1114 and the
common law, the party must establish that (1) the mark is valid and legally
protectable, (2) the mark is owned by the plaintiff and (3) use of the
same mark by the defendant is likely to create confusion among the relevant
consumers. See Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d
466, 472 (3d Cir.1994); Ford Motor Co. v. Summit Motor Prods. Inc., 930
F.2d 277, 291 (3d Cir.), cert. denied, 502 U.S. 939, 112 S.Ct. 373, 116 L.Ed.2d
324 (1991); Opticians, 920 F.2d at 192 (citing Pedi-Care, Inc. v. Pedi-A-
Care Nursing, Inc., 656 F.Supp. 449, 453 (D.N.J.1987)); One World
Botanicals Ltd. v. Gulf Coast Nutritionals, Inc., 987 F.Supp. 317, 331
(D.N.J.1997); Genovese, 939 F.Supp. at 343; FM 103.1, 929 F.Supp. at
194 (citing Scott Paper Co. v. Scott's Liquid Gold, Inc. ., 589 F.2d 1225, 1228
(3d Cir.1978); Birthright v. Birthright, Inc., 827 F.Supp. 1114, 1135- 37
(D.N.J.1993)).
a. Validity and Legal Protectability of the Mark
It appears the Mark has become incontestable pursuant to Section 1065. (20)
See Complaint 16; Exhibit A to Coleman Aff. Once a mark becomes
incontestable, the registration of that mark is "conclusive evidence of the
validity of the registered mark and of the registration of the mark, of the
registrant's ownership of the mark, and of the registrant's exclusive right to
use the registered mark in commerce." 15 U.S.C. § 1115. In
order to challenge the validity of an incontestable mark in an infringement
action, only certain defenses or defects, none of which have been raised in this
case, can be asserted. See id. Because the Mark was registered and appears
to be incontestable, the validity and legal protectability of the Mark has been
established. See Fisons, 30 F.3d at 472; Ford Motor Co., 930 F.2d at
292.
As mentioned, the Defendant does not challenge the validity or legal
protectability of the Mark but rather argues that his domain name does not
infringe upon the Mark because the domain name does not contain a letter
"O" that is stylized as a "<<StarOfDavid>>". (21)
See Defendant Brief at 4, 12. The central issue, therefore, is whether the
Plaintiff has rights to the phrase "Jews for Jesus" even though the
letter "O" is not depicted as a "<<StarOfDavid>>".
The Defendant acknowledges that, because of technical reasons, domain names
cannot contain stylized letters. See Defendant Brief at 19 (stating it
"is technically impossible for the word "F<<StarOfDavid>>R",
with the Star of David in the middle to be used in a domain name.") (emphasis
in original). The Plaintiff, therefore, has no option but to use a domain name
that does not contain a "<<StarOfDavid>>" as a stylized
letter "O". Accordingly, the only course for the Plaintiff
Organization was to use a domain name that most resembles its Mark, either
"jewsforjesus", or "jews_for_jesus" or "jews-for- jesus".
For whatever reason, the Plaintiff chose to use the last option as its domain
name. Simply because the Plaintiff chose not to use one or both of the
other options, however, does not entitle the Defendant to use them as his own.
If the position of the Defendant were accepted, it would enable a party to
use the mark of another where factors, outside the control of the party with the
mark, make it impossible to adequately depict the mark. Because the
Internet recognizes only certain types of characters (e.g., letters, dashes
("-"), underlines ("_")), those registered marks with unique
characteristics, such as script lettering or symbols, would be fair game for
anyone who wished to use such mark, but without the unique characteristic, as a
domain name.
In order to constitute infringement, exact similarities are not required
between the allegedly confusing marks. See Fisons, 30 F.3d at 477.
Rather, it is sufficient that enough of the mark is confusingly similar or has
been used to deceive the public. See id.; Cardservice, 950 F.Supp.
at 741 (domain name dispute case stating "minor difference between the
registered mark and the unauthorized use of the mark do not preclude liability
... when the unauthorized use is likely to cause confusion");
Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33, 21 S.Ct. 7, 45 L.Ed.
60 (1900). Marks are confusingly similar if ordinary consumers are likely
to conclude that they share a "common source, affiliation, connection or
sponsorship." Fisons, 30 F.3d at 477.
Considering the domain name used by the Defendant is nearly identical to the
Mark and the name of the Plaintiff Organization, it is likely that Internet
users will conclude that the Mark, the name of the Plaintiff Organization and
the domain name used by the Defendant share a "common source, affiliation,
connection or sponsorship." As such, under the facts of this case,
the phrase "jewforjesus" in the domain name used by the Defendant
appears to be confusingly similar to the Mark.
(2) Common Law Service Mark
The Complaint alleges the Plaintiff Organization has common law rights to the
phrase "Jews for Jesus," see, e.g., Complaint 8, 11-14, 16,
37-39, 47-49, 63, 70, 74 and 75, and it appears the Plaintiff Organization has a
common law service mark for "Jews for Jesus."
"Common law rights are acquired in a service mark by adopting and using
the mark in connection with services rendered." Caesars World, Inc.
v. Caesar's Palace, 490 F.Supp. 818, 821 (D.N.J.1980) (citing Hanover Star
Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916)); Ford
Motor Co., 930 F.2d at 289 (citing Caesars World, 490 F.Supp. at 821);
First Bank v. First Bank Sys., Inc., 84 F.3d 1040, 1044 (8th Cir.1996).
Such rights "include the right to prevent the subsequent use by another
person of the same or similar name or mark, when the business or service for
which the name or mark is subsequently used, is likely to cause confusion as to
the origin of the business or the services." Caesars World, 490
F.Supp. at 823. The extent of the protection afforded depends upon the
distinctiveness of the mark itself. See id. at 821.
Service marks are often classified in the following categories, with the
first category being the most distinctive and the last being the least
distinctive: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive
and (5) generic. See Fisons, 30 F.3d at 478; Dranoff-Perlstein
Assocs. v. Sklar, 967 F.2d 852, 858-59 (3d Cir.1992); FM 103.1, 929 F.Supp.
at 194 (citing Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct.
2753, 120 L.Ed.2d 615 (1992)). Fanciful, arbitrary and suggestive terms
exhibit the greatest amount of distinctiveness and generally qualify for service
mark protection. See id. Generic terms, on the other hand, are
not protectable. See A.J. Canfield, 808 F.2d at 297; FM 103.1, 929
F.Supp. at 194.
The Defendant argues the phrase "Jews for Jesus" is generic and
therefore is not protectable. See Defendant Brief at 13-14. In the
alternative, the Defendant argues the phrase is merely descriptive, and, thus is
not protectable because the Plaintiff Organization has not established that the
phrase has achieved a secondary meaning. See id. at 14-19.
(i) Distinctiveness of the Service Marks
A term is "generic" if that term has "so few alternatives (perhaps
none) for describing the good [or service] that to allow someone to monopolize
the word would debilitate competitors." Duraco Prods., Inc. v. Joy
Plastic Enters., Ltd., 40 F.3d 1431, 1442 (3d Cir.1994). Generic words
which cannot "individually become a trademark may become one when taken
together." Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d
1035 (D.C.Cir.1989) (citing Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d
366, 379 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94
(1976)).
In support of his position that the phrase "Jews for Jesus" is
generic, the Defendant places heavy emphasis on the Blinded Veterans decision.
In Blinded Veterans, the unregistered mark "blinded veterans" was
found to be generic because the plaintiff organization repeatedly used that term
to denote formerly sighted soldiers, not the organization itself. See id.
at 1041. In so holding the court stated "[i]t is difficult to imagine
another term of reasonable conciseness and clarity by which the public refers to
former members of the armed forces who have lost their vision." See
id. In addition, it was observed "blinded veterans simply designates
the twice-circumscribed category of people who are both blinded and veterans."
See id.
The facts of this case are distinguishable from those in Blinded Veterans.
First, although the Plaintiff Organization sometimes refers to its members as
"Jews" who are "for Jesus," during the past twenty-four
years the Plaintiff Organization has consistently used the phrase "Jews for
Jesus" to refer to the organization itself. See, e.g., Exhibit 5 to
Perlman Supplemental Aff.; Exhibits K-L to Coleman Aff. More importantly, there
are several other names that could be used to refer to individuals of Jewish
heritage who believe in Jesus, for example, "Messianic Jews," "Hebrew
Christians," "Jews for Christ," or "Jews for Christianity."
See Exhibit K to Coleman Aff., at 6. The use by the Plaintiff Organization
of the phrase "Jews for Jesus" does not leave so few alternatives so
as to monopolize the concept and debilitate potential competitors. See
Duraco Prods., 40 F.3d at 1442. The phrase is not generic. See id.
Unlike a generic mark, a descriptive mark "leaves a larger but finite
set of equivalent alternatives, and therefore still can be protected (because
there are adequate alternatives for competitors) but only if it has acquired
secondary meaning." See id. "A term is descriptive if it
forthwith conveys an immediate idea of the ingredients, qualities or
characteristics of the goods [or services]." A.J. Canfield, 808 F.2d
at 297.
When determining whether a mark is descriptive or suggestive, five factors
should be considered: (1) the level of imagination required of potential
customers in trying to cull a direct message from the mark about the quality or
characteristics of the service; (2) whether the mark so closely tells
something about the service that other sellers of similar services would likely
want to use in connection with their services; (3) evidence other sellers
are using this term to describe their products; (4) whether the mark
conjures up some other, purely arbitrary connotation separate from what the mark
conveys about the services; and (5) whether consumers are likely to regard
the mark as a symbol of origin. See FM 103.1, 929 F.Supp. at 194-95 (citing
Trustco Bank, 903 F.Supp. at 342; 1 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition §§ 11.21, 11.22 (3d ed. 1992)
("McCarthy on Trademarks")).
Application of these criteria to the phrase "Jews for Jesus"
suggests the phrase is descriptive rather than suggestive because the phrase
does not require much imagination or thought to cull a direct message from the
mark and the phrase does not conjure up a purely arbitrary connotation.
Descriptive marks are protectable if they acquire secondary meaning.
See Sklar, 967 F.2d at 858; FM 103.1, 929 F.Supp. at 194-95 (citing Two
Pesos, 505 U.S. at 769; Birthright, 827 F.Supp. at 1137). The burden
of proving secondary meaning is on the party seeking protection of the mark.
See FM 103.1, 929 F.Supp. at 194-95 (citing Boston Beer v. Slesar Bros. Brewing
Co., 9 F.3d 175, 181 (1st Cir.1993); Bristol-Myers Squibb Co. v..
McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir.1992)).
(ii) Secondary Meaning
" 'Although there are numerous cases determining secondary meaning,
there is no consensus on its elements.' " Ford Motor Co., 930 F.2d at
292 (citations omitted). A non-exclusive list of factors which may be
considered includes the extent of sales and advertising leading to buyer
association, the fact of copying, customer testimony, the use of the mark in
trade journals, the size of the company, the number of customers and actual
confusion. See id. Other factors include (1) advertising expenditures, (2)
consumer studies linking the mark to a source, (3) unsolicited media coverage of
the services and the mark, (4) sales success, (5) attempts to plagiarize the
mark and (6) the length and exclusivity of the use of the mark. See Sklar,
967 F.2d at 858-59; FM 103.1, 929 F.Supp. at 194-95 (citing Centaur
Communications v. A/S/M Communications, 830 F.2d 1217, 1222 (2d Cir.1987);
Trustco Bank, 903 F.Supp. at 342).
Secondary meaning is demonstrated when the primary significance of the term
in the minds of the consuming public is not the product but the producer. See FM
103.1, 929 F.Supp. at 194-95 (citing Scott Paper, 589 F.2d at 1228; 20th
Century Wear, Inc. v. Sanmark-Stardust Inc., 815 F.2d 8, 10 (2d Cir.1987)).
Application of these factors to this case indicates the phrase "Jews for
Jesus" appears to have acquired a secondary meaning. First, the
Plaintiff Organization has expended a considerable amount of money on
advertising. See supra, note 10; see also Perlman Amended Aff.
9-10. Since 1988, the Plaintiff Organization has expended an average of
$497,679.70 per year on advertising. See Exhibit 1 to Perlman Supplemental
Aff. The Defendant acknowledges the success of these efforts, stating: I was
seeing their ads all over the place on the subways and in the newspapers with
their obscene messages, and I noticed they were heavily promoting their websites....See
Complaint 42 (citing 9 January 1998 Jewish Week article).
Second, the Plaintiff Organization has received extensive media coverage in
connection with its teachings and mission. See Perlman Amended Aff.
12; Exhibits 2-3 to Perlman Amended Aff.; see also Exhibit I and K to the
Complaint. It appears that, since 1992, more than 857 news articles have
been written about the Plaintiff Organization and more than 2300 Web site pages
contain some discussion of the Plaintiff Organization. See supra, note 11;
Complaint 18. In addition, representatives of the Plaintiff
Organization have appeared on numerous radio and television programs. See
Perlman Amended Aff. 12. Furthermore, it appears the Plaintiff
Organization has distributed more than 35,000,000 pamphlets in public venues
throughout the United States. See Perlman Amended Aff. 4; see also
supra, note 11.
Third, the Plaintiff Organization has been successful in its marketing
efforts and maintains a data base in excess of one million addresses of
individuals to whom mailings are sent. See Perlman Supplemental Aff.
5; see also supra, note 11.
Fourth, the Plaintiff Organization and/or its predecessor organizations
appear to have used the mark continuously since 1973 when the Plaintiff
Organization was incorporated. See Perlman Amended Aff. 4;
Plaintiff Reply Brief at 2 n.1.
The Plaintiff Organization appears to have demonstrated that the phrase
"Jews for Jesus" is a common law mark because it has acquired a
secondary meaning in the minds of the public. The primary significance of
the phrase "Jews for Jesus" is not merely the beliefs of messianic
Jews generally but the identification of the Plaintiff Organization and, as
such, its teachings and message.
The Plaintiff Organization appears not only to have a valid and protectable
federally registered service mark but also appears to have a valid and
protectable common law service mark (the common law service mark will be
referred to as the "Name of the Plaintiff Organization").
b. Ownership of the Mark and the Name of the Plaintiff
Organization
The party asserting ownership of a mark must make a showing of clear
entitlement to it. See Natural Footwear, 760 F.2d at 1397. The
Defendant contends the Plaintiff Organization does not, and cannot, own rights
to the phrase "Jews for Jesus". As explained, however, under the
facts of this case, the ownership by the Plaintiff of the Mark may be expanded
to include the phrase "Jews for Jesus" for Internet use because there
is no adequate way to depict the Mark as a domain name. As discussed, the
Plaintiff Organization also appears to have common law rights to the phrase
"Jews for Jesus." Because it appears the Plaintiff owns the Mark
and the Name of the Plaintiff Organization, it is entitled to the rights
associated with each.
The Defendant argues that, even if the Mark is owned by the Plaintiff, it may
be used in connection with only those kinds of materials designated in the
federal registration. See Defendant Brief at 19-20; the 16 February
Letter. The registration indicates the Mark falls within Class 16 (23)
and is for "Religious Pamphlets." See Exhibit A to the
Complaint, at 2. The Defendant asserts, therefore, that the Plaintiff cannot
expand the registration to include the use of the Mark on the Internet because
the scope of registration is limited to "religious pamphlets."
See Defendant Brief at 19- 20; 16 February Letter. Moreover, the
Defendant contends that, in order for the Mark to be protected in connection
with use on an Internet site, it needs to have been registered in International
Classification 42 (24) ("Class 42"). See
Defendant Brief at 20 n.9. Because the Mark is not classified in that manner and
this action involves the use of a domain name and not "religious pamphlets,"
the Defendant asserts he may use the phrase "Jews for Jesus" in his
domain name. See id.
In support of his position, the Defendant relies on Natural Footwear, 760
F.2d 1383. In Natural Footwear, the registration issued to the plaintiff
by the PTO indicated the trademark at issue was to be used for "FOOTWEAR--NAMELY,
SHOES, SLIPPERS AND BOOTS." See id. at 1396-97. The Circuit
held that, because the complaint sought relief based on the federal registration
of the trademark, the plaintiff was only entitled to relief under federal
trademark law in regard to its marketing of footwear, not accessories and
clothing. See id. In so holding, the court stated the purpose of the
trademark law
is best served by limiting the impact of a registered mark to only the specific
terms of the registration so as to allow parties interested in marketing
products with a new mark to rely as fully as possible on the registry.
This rule ... will appropriately encourage registrants who wish to receive the
full scope of the [Lanham] Act's protection in regard to the new use of the mark
to file a new application covering the new products and making reference to the
earlier registration once they begin to sell a new line of products under their
registered mark.
Id. at 1396. (25) McCarthy on Trademarks explains
that the classifications in a trademark registration are "only for the
administrative convenience of the PTO and neither limit nor extend the scope of
protection of the registered mark." 3 McCarthy on Trademarks, §
24:66, at 24-115. As such, this treatise argues that "[t]he fact that
the infringer's goods fall within a different classification from the
registrant's goods is not determinative of a likelihood of confusion."
See id.
Natural Footwear is not applicable to this case because, unlike in
Natural Footwear, the category of goods the Plaintiff Organization seeks to
protect is identical to those listed in the Registration, i.e., "Religious
Pamphlets." The Plaintiff Organization Internet site contains, among
other things, electronic versions of many of its pamphlets and publications,
none of which can be downloaded. See Perlman Amended Aff. 17;
Plaintiff Reply Brief at 10. The use of the Mark in connection with
Plaintiff Organization Internet site is not an attempt by the Plaintiff to
expand the scope of the Registration, but rather is a natural extension of it in
view of the new technology of the Internet. As such, it is properly
categorized in Class 16. (26)
The contention advanced by the Defendant that the Mark should have been
registered in Class 42 is also without merit. According to the PTO, Class
42
covers those services provided by entities such as America OnLine (R), Prodigy
(R) and CompuServe (R). They provide the computer service (often using the
telecommunications services of other entities as described above in Class 38)
that enable computer users to access data bases and home pages of others. These
entities are considered "link providers" in that they provide the
computer/server connection required for computer users to access a content
provider. The word "access" should be limited to these services
and should not be used in describing the service of a content provider.
Identification and Classification of Certain Computer Related Goods and
Services (visited 5 March 1998) <http://www.uspto. gov/web/offices/tac/domain/domcl.html>
(em-phasis added). The PTO defines a "content provider" as a party
"who furnishes information via the Internet, i.e., offer[s] the service of
providing information." Trademark Examination of Domain Names (last
modified 16 January 1998) <http:// www.uspto.gov/web/offices/tac/domain/tmdomain.htm>.
In this case, the Plaintiff Organization is a "content provider" and
therefore does not qualify for registration in Class 42. See id.
Even if the Natural Footwear holding were applicable to this case and the
Plaintiff Organization should have registered the Mark in Class 42, it would not
affect the common law rights of the Plaintiff Organization to prevent the use by
the Defendant in his domain name of the name of the Plaintiff Organization.
As stated in Natural Footwear:
The discussion of the scope of rights flowing from federal registration must not
be read to apply as well to common law rights in a trademark. These latter
rights are based on the actual use of a product in an area and, as we discuss
infra, are not necessarily limited to the product originally identified by the
trademark. Rather, protection from the date of the first use of the mark
may extend to related products that are later sold under the common law mark.
Natural Footwear, 760 F.2d at 1396 n. 27 (emphasis added). The
common law rights of the Plaintiff Organization encompass more than "religious
pamphlets" because it has used the phrase "Jews for Jesus" for
more than twenty-four years as its trade name, on billboards, news letters,
publications, radio programs, etc. See, e.g., Perlman Amended Aff.
8-10, 12.
Based on the foregoing, the Plaintiff Organization appears to be the owner of
the Mark and the Name of the Plaintiff Organization.
c. Likelihood of Confusion
To prevail on a claim for infringement, the Plaintiff Organization need
demonstrate only a likelihood of confusion, not proof of actual confusion. See
AT&T Co., 42 F.3d at 1442; Fisons, 30 F.3d at 473 (quoting Ford Motor
Co., 930 F.2d at 292). A likelihood of confusion exists "when the
consumers viewing the mark would probably assume that the product or service it
represents is associated with the source of a different product or service
identified by a similar mark." Ford Motor Co., 930 F.2d at 292 (quoting
Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d
Cir.1978)).
In determining whether a likelihood of confusion exists, the following
factors (the "Scott Factors") should be considered:
(1) the degree of similarity between the owner's mark and the alleged infringing
mark;
(2) the strength of owner's mark;
(3) the price of the goods and other factors indicative of the care and
attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence of
actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are marketed through the same
channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties' sales efforts are the same;
(9) the relationship of the goods in the minds of the public because of the
similarity of function;
(10) other facts suggesting that the consuming public might expect the prior
owner to manufacture a product in the defendant's market.
Scott Paper, 589 F.2d at 1229; see Fisons, 30 F.3d at 473. In
this case, the majority of relevant factors indicate a likelihood of confusion
exists.
(1) Similarity of the Mark, the Name of the Plaintiff Organization and the
Defendant Internet Site
The degree of similarity of the marks usually is the most important of the
Scott Factors. See Fisons, 30 F.3d at 476. Where an infringer uses
the exact mark of the holder of a mark, a great likelihood of confusion exists.
See S & R. Corp., 968 F.2d at 375. Similarly, "if the overall
impression created by [the] marks is essentially the same, 'it is very probable
that the marks are confusingly similar.' " Opticians, 920 F.2d at
195. " 'Where the trademark owner and alleged infringer deal in competing
goods or services, the court need rarely to look beyond the mark itself.' "
Securacomm Consulting, Inc. v. Securacom Inc., 984 F.Supp. 286, 299 (D.N.J.1997)
(citing Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir.1983)).
When examining the confusing similarity of two marks, the overall impression of
the marks, not their individual component parts, must be taken into account.
See Genovese, 939 F.Supp. at 346.
As mentioned, the Mark is "Jews f<<StarOfDavid>>r
Jesus," the common law service mark is "Jews for Jesus", while
the domain name used by the Defendant is "jewsforjesus". The
only difference between the Mark and the domain name of the Defendant, therefore,
is the fact that spaces are omitted from the Defendant's domain name and the
letter "O" replaces the "<<StarOfDavid>>"; other
than the absence of capitalization and a space between the words, the domain
name of the Defendant is identical to the Name of the Plaintiff Organization.
These minor differences are necessary for the domain name used by the Defendant
to be functional and do not alleviate the likelihood of confusion between the
marks.
The Defendant argues that his domain name is not too similar to the Mark
because "[u]nlike competing products on a grocery store shelf wearing
confusingly similar trade dress, in the digital world of computers one either
lands on the desired website or not." Defendant Brief at 21.
The Defendant then makes the unsupportable leap in logic that "[s]imilarity,
then, is not shown." Id. at 22.
On their face, the Mark, the Name of the Plaintiff Organization and the
domain name of the Defendant are virtually identical. As observed in
Planned Parenthood, defendant's use of plaintiff's mark is ... likely to prevent
some Internet users from reaching plaintiff's own Internet web site.
Prospective users of plaintiff's services who mistakenly access defendant's web
sit may fail to continue to search for plaintiff's own home page, due to anger,
frustration, or the belief that plaintiff's home page does not exist. Planned
Parenthood, 1997 WL 133313, at *4.
The Plaintiff has established that the domain name used by the Defendant is
substantially similar to the Mark and the Name of the Plaintiff Organization,
which similarity increases the likelihood of confusion among Internet users.
See, e.g., id. at *8 (finding similarity between trademark and offending domain
name where only differences were that domain name did not contain spaces and
contained initial capitalization); Hasbro, 1996 WL 84853, at *1 (finding
similarity between mark "CANDY LAND" and domain name "candyland.com"
even though domain name did not contain spaces or capitalization);
Playboy, 985 F.Supp. at 1221 (finding similarity between domain names "Playboyxxx"
and "Playmatelive" where marks were "Playboy" and "Playmate");
Cardservice, 950 F.Supp. at 741 (finding similarity between trademark "Cardservice
International" and domain name "cardservice.com"). "To
stress a point made several times already, the [domain name of the Defendant]
and the [Mark and the Name of the Plaintiff Organization] are almost identical.
This fact alone gives rise to a strong inferrence [sic] of confusion."
Ford Motor Co., 930 F.2d at 297.
(2) Strength of the Mark and the Name of the Plaintiff
Organization
The term "strength," as applied to trademarks or service marks,
refers to the commercial strength or marketplace recognition of the mark, as
well as the distinctiveness of the mark. Fisons, 30 F.3d at 479;
Genovese, 939 F.Supp. at 346 (citation omitted).
The Defendant argues that the phrase "Jews for Jesus" is either
generic, and therefore not entitled to protection, or descriptive and therefore
entitled to only the weakest protection. See Defendant Brief at 22.
As mentioned, however, the Mark has become incontestable. Accordingly, the
Defendant cannot argue that the Mark is descriptive or that it lacks secondary
meaning because it is conclusively presumed that the Mark either is
non-descriptive, or if descriptive, has acquired secondary meaning. See
Ford Motor Co., 930 F.2d at 292; see also Park 'N Fly, Inc. v. Dollar Park
and Fly, 469 U.S. 189, 205, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985).
The Name of the Plaintiff Organization appears to have achieved a secondary
meaning. The Name of the Plaintiff Organization and the Mark have been
used for many years and have been extensively advertised. The Plaintiff
Organization has advertised heavily and disseminated data through magazines,
brochures, newspapers and the Internet in the United States and abroad.
See Perlman Amended Aff. 8. In addition, the Plaintiff Organization has
conducted an annual advertising campaign since 1982 in national publications
such as the New York Times, the Washington Post, the Wall Street Journal,
Newsweek, Parade, and TV Guide. See id. 14. These campaigns have had
a price tag of almost $500,000 per year. See supra, note 10. In
addition, the Plaintiff Organization has distributed more than 35,000,000
pamphlets in public venues throughout the United States. See Perlman
Amended Aff. 14; see also supra, note 11.
The advertising efforts of the Plaintiff have apparently paid off. It appears
that, since 1992, more than 857 news articles and 2300 Web site pages of
discussion have been written about the Plaintiff Organization. See supra,
note 11. The Defendant has not disputed the contention that the Plaintiff
Organization has received extensive media coverage. Indeed, the Defendant
has stated: I was seeing their ads all over the place on the subways and in the
newspapers with their obscene messages, and I noticed they were heavily
promoting their websites.... See Complaint 42 (citing 9 January 1998
Jewish Week article). There appears little doubt that the Name of the
Plaintiff Organization and the Mark are strong.
(3) Level of Sophistication of Internet Users
"It is well-established that likelihood of confusion 'should be
determined by viewing the two marks from the perspective of an ordinary consumer
of the goods or services.' " Ford Motor Co., 930 F.2d at 293.
The Defendant appears to argue that, if Internet users are able to access his
Internet site, then those users are sophisticated enough to realize that his
Internet site is not affiliated with the Plaintiff Organization. See
Defendant Brief at 22. This argument ignores the fact that an individual
may be a sophisticated user of the Internet but may be an unsophisticated
consumer of information about religious organizations. Such a user may
find his or her way to the Defendant Internet site and then may be confused;
the Defendant Internet site advocates views antithetical to those of the
Plaintiff Organization. See Green Products, 992 F.Supp. at 1077 (stating
that use of plaintiff's trademark as defendant's domain name is likely to cause
confusion as to who owns Internet site much like if store had competitor's name
on it). The Disclaimer does not alleviate this problem.
As observed by the court in Planned Parenthood, "[d]ue to the nature of
Internet use, defendant's appropriation of plaintiff's mark as a domain name and
home page address cannot adequately be remedied by a disclaimer." Planned
Parenthood, 1997 WL 133313, at *12. In addition, considering the vastness
of the Internet and its relatively recent availability to the general public,
many Internet users are not sophisticated enough to distinguish between the
subtle difference in the domain names of the parties. See Green Products,
992 F.Supp. at 1078 (finding Internet users do not undergo a highly
sophisticated analysis when searching for domain names). Unlike the
disputed Internet sites in Teletech and Interstellar which contained information
completely different from the services offered by the trademark owner, in this
case the information provided by the Defendant is related to the information
disseminated by the Plaintiff Organization. Accordingly, unlike in
Teletech and Interstellar, a reading of the Defendant Internet site will not
eliminate the likelihood of confusion between the Defendant Internet site and
the Mark and/or the Name of the Plaintiff Organization. This is the so
even with the addition of the Disclaimer. (27)
(4) Length of Time the Defendant has Used the Mark or the
Name of the Plaintiff Organization Without Causing Confusion
The Defendant Internet site became operational in mid-to-late December
1997. See Brodsky Certif. 1. The Plaintiff Organization submitted
three affidavits which state the affiants became confused on 15, 16 and 18
January 1998, when they inadvertently accessed the Defendant Internet site while
attempting to access the Plaintiff Organization Internet site. See
Chellathurai Amended Aff. 4; Sanchez Aff. 6; Kalstein
Aff. 5.
The Defendant contends the Plaintiff Organization has not submitted competent
evidence on the issue of how long the Defendant has used his Internet site
without causing confusion. Specifically, the Defendant argues that the
affidavits submitted by the Plaintiff are self-serving because the individuals
who submitted them are supporters of the Plaintiff Organization. The
Defendant has offered nothing to contest the reliability or accuracy of these
affidavits. Moreover, the Defendant has offered nothing to establish that
his domain name and/or Internet site is not confusing.
Notwithstanding the assertions of the Defendant, actual confusion appears to
have been caused shortly after the Defendant Internet site went into operation.
If supporters of the Plaintiff Organization were confused by the domain name
used by the Defendant and his Internet site then, in all likelihood, individuals
who are not familiar with the views of the Plaintiff Organization also have been
and will continue to be confused. Moreover, the domain name used by the
Defendant is virtually identical to the domain name used by the Plaintiff
Organization.
(5) The Intent of the Defendant in Using the Mark and the
Name of the Plaintiff Organization
The Defendant has been publicly vocal about his intent and purpose in
registering and using his domain name. As mentioned, the Defendant
characterized his Internet site as a "bogus 'Jews for Jesus' " site
and stated the intent of this site is to "intercept potential converts"
to the beliefs of the Plaintiff Organization. See Exhibit J to the
Complaint. The Defendant also stated he intended to use "deceit and
trickery" to direct persons to his Internet site. See Exhibit 3 to
Perlman Amended Aff. These statements demonstrate the actions by the Defendant
were wilful and undertaken in bad faith, with full knowledge of and the intent
to cause confusion and to infringe on the rights of the Plaintiff Organization.
See Green Products, 992 F.Supp. at 1078 (stating deceptive use of another's
trademark in domain name to lure customers away from competitor is kind of
consumer confusion). The Defendant is not only appropriating the Name of
the Plaintiff Organization and the Mark but also is using them to leach off the
extensive efforts the Plaintiff Organization has undertaken during the past
twenty-four years to give currency to its name and to disseminate its teachings.
The intent of the Defendant is similar, if not identical, to the conduct the
Planned Parenthood court found to be wilful infringement. Like the
defendant in Planned Parenthood, the Defendant has "demonstrated full
knowledge of plaintiff's name and activities," and has admitted to an
understanding that using the Mark or the Name of the Plaintiff Organization as
his domain name would attract viewers to his Internet site "because of
their misapprehension as to the site's origin." Planned Parenthood,
1997 WL 133313, at *9.
(6) Manner in Which Marketed
Both the Plaintiff and the Defendant use the Name of the Plaintiff
Organization in their domain names and both domain names can be accessed from
any Internet browser. Accordingly, both are marketed in the same
manner--i.e., through the Internet. See, e.g., Planned Parenthood, 1997 WL
133313, at *8; Interstellar, 983 F.Supp. at 1336.
(7) Audience to Which Marketed
The Defendant contends his Internet site is designed to reach only potential
Jewish apostates, not gentiles. See Defendant Brief at 26-27.
Accordingly, he argues the audience for his Internet site is different from the
audience for the Plaintiff Organization Internet site, which seeks to attract
persons of any religious persuasion who are interested in "Jews
f<<StarOfDavid>>r Jesus". See id.
This assertion is curious, at best. The audience for both the Plaintiff
Organization and the Defendant Internet sites are those individuals using the
Internet to find information about the teachings of the Plaintiff Organization.
Accordingly, the audience both parties seek is identical. See, e.g.,
Planned Parenthood, 1997 WL 133313, at *8 (finding both parties were competing
for same audience--"namely Internet users who are searching for a web site
that the plaintiff's mark as its address"); Playboy, 985 F.Supp.
1220, at 1221 (finding both parties competing for market of individuals
searching for "Playboy"); Juris, 1996 WL 376600 at *1 (finding
both parties competing for same target audience--lawyers and law firms).
The Plaintiff Organization has demonstrated a likelihood of success on its
claim of federal and common law service mark infringement.
2. Federal Dilution Claim Under 15 U.S.C. § 1125(c)
Count I of the Complaint alleges trademark dilution pursuant to
15 U.S.C. § 1125(c) (28) ("Section 1125(c)").
Section 1125(c) entitles an owner of a trademark to injunctive relief if the
mark is "famous" and use by another party of that mark "in
commerce" causes dilution of the distinctive quality of the mark. See
15 U .S.C. § 1125; S Industries, Inc. v. Diamond Multimedia Systems,
Inc., 991 F.Supp. 1012, 1020 (N.D.Ill.1998) (stating under federal dilution act
plaintiff must show mark is famous and defendant's use of same or similar mark
creates a likelihood of dilution through tarnishment or blurring). The
owner of a famous mark is also entitled to monetary damages where the person
against whom the injunction is sought "willfully intended to trade on the
owner's reputation or to cause dilution of the famous mark." (29)
See 15 U.S.C. § 1125. In order to succeed on a dilution claim, the
plaintiff need not demonstrate a likelihood of consumer confusion. See
Genovese, 939 F.Supp. at 349. All that needs to be proven is that the mark
is famous and the use by the offending party of the mark is commercial and in
commerce. Intermatic, 947 F.Supp. at 1238. The mark may be either a
common law mark or federally-registered one. See id. at 1237.
The purpose of the dilution law is to protect "distinctive" or
"famous" trademarks from certain unauthorized uses of the marks
regardless of a showing of competition or likelihood of confusion. See
Genovese, 939 F.Supp. at 349; Panavision, 945 F.Supp. at 1301.
a. The Mark and the Name of the Plaintiff Organization are
Famous
In determining whether a mark is distinctive and famous, a court may consider
the following factors:
(1) the degree of inherent or acquired distinctiveness of the mark;
(2) the duration and extent of use of the mark in connection with the goods or
services with which the mark is used;
(3) the duration and extent of advertising and publicity of the mark;
(4) the geographical extent of the trading area in which the mark is used;
(5) the channels of trade for the goods or services with which the mark is used;
(6) the degree of recognition of the mark in the trading areas and channels of
trade used by the marks' owner and the person against whom the injunction is
sought;
(7) the nature and extent of use of the same or similar marks by third parties;
and
(8) whether the mark was registered under the Act of March 3, 1881, or the Act
of February 20, 1905, or on the principal register.
15 U.S.C. § 1125; Genovese, 939 F.Supp. at 349. The Defendant
contends the Plaintiff has not shown that the Mark or the Name of the Plaintiff
Organization is entitled to protection, or that the Mark or the Name of the
Plaintiff Organization is famous. See Defendant Brief at 29. A
consideration of the above factors, however, indicates otherwise. See
Teletech, 977 F.Supp. at 1413; Panavision, 945 F.Supp. at 1302-03.
The Name of Plaintiff Organization has been used by the Plaintiff for more
than twenty-four years and has been publicized worldwide in the media. See
Perlman Amended Aff. 5; see also supra, note 11. The Mark has
been registered and used since 1983. The Plaintiff Organization has
expended a considerable amount of money on advertising to publicize its name and
its message. See supra, note 10. The Mark and the Name of the
Plaintiff Organization have come to identify one organization--the Plaintiff.
Media coverage has been extensive, and, as the Defendant has himself explained,
the advertisements by the Plaintiff Organization have been "all over the
place"--on the subways and the newspapers. As well, the Plaintiff has
extensively promoted its Web site. Moreover, there does not appear to be a
mark in use by a third party that is the same as or similar to the Mark or the
Name of the Plaintiff Organization. All of the examples cited by the
Defendant of other entities that use the mark "Jews for Jesus" or the
Name of the Plaintiff Organization either are or were owned by Plaintiff or its
predecessors and/or affiliates. See Plaintiff Reply Brief at 2 n.1.
Finally, the Mark is incontestable.
b. The Use by the Defendant of the Mark and the Name of the
Plaintiff Organization Causes Dilution
The term "dilution" is defined as the "lessening of the
capacity of a famous mark to identify and distinguish goods or services"
and encompasses traditional state law doctrines of blurring (30)
and tarnishment. (31) See 15 U.S.C. § 1127; see
also Intermatic, 947 F.Supp. at 1240; Panavision, 945 F.Supp. at 1304.
The Defendant contends the Plaintiff has not shown that his Internet page
will dilute the value of the Mark or the Name of the Plaintiff Organization.
This contention is without merit. In Intermatic, the defendant had diluted
the plaintiff's mark solely by virtue of his use of the mark on his Internet
site, even though the site contained nothing more than a map, and did not
contain any material concerning the products of plaintiff. The court stated:
[I]f [defendant] were allowed to use "intermatic.com", Intermatic's
name and reputation would be at [defendant's] mercy and could be associated with
an unimaginable amount of messages on [defendant's] web page.... Attaching
Intermatic's name to a myriad of possible messages ... is something that the [Lanham]
Act does not permit. Intermatic, 947 F.Supp. at 1240.
In this case, the Defendant is using the Mark and the Name of the Plaintiff
Organization to lure individuals to his Internet site where he makes disparaging
statements about the Plaintiff Organization. His site then refers these
individuals, via a hyperlink, to the Internet site maintained by the Outreach
Judaism Organization which also contains information critical of and contrary to
the teachings of the Plaintiff Organization. Such conduct amounts to
"blurring" and "tarnishment" of the Mark and the Name of the
Plaintiff Organization. See Panavision, 945 F.Supp. at 1304.
In Planned Parenthood, it was found the conduct of the defendant caused
dilution where he was using the plaintiff mark as his domain name and was
advancing views contrary to those of the plaintiff. See Planned Parenthood,
1997 WL 133313, at *6; see also Hasbro, 1996 WL 84853, at *1.
In this case, the use by the Defendant in his domain name of the Mark and the
Name of the Plaintiff Organization has resulted in not only the loss of control
over the Mark and the Name of the Plaintiff Organization, but also in the
reality that views directly contrary to those of the Plaintiff Organization will
be disseminated through the unauthorized use of the Mark and the Name of the
Plaintiff Organization. As such, irreparable harm has resulted
because [the use of the Mark and the Name of the Plaintiff Organization] is
likely to prevent some Internet users from reaching plaintiff's own Internet web
site. Prospective users of plaintiff's services who mistakenly access
defendant's web sit[e] may fail to continue to search for plaintiff's own home
page, due to anger, frustration or the belief that plaintiff's home page does
not exist.
Planned Parenthood, 1997 WL 133313, at *4. Dilution of the Mark and the Name of
the Plaintiff Organization, therefore, has been demonstrated.
c. The Use by Defendant of the Mark and the Name of the
Plaintiff Organization Constitutes Commercial Speech
The Defendant contends his conduct is exempted from the dilution law because
it is "non-commercial speech." See Defendant Brief at 30 (quoting
28 U.S.C. § 1125(c)(4) ("Section 1125(c)(4)")). (32)
Specifically, the Defendant claims his speech is non-commercial because "it
is meant to call attention to issues of public importance." Id. at
32.
"The non-commercial use of a domain name that impedes a trademark
owner's use of that domain name does not constitute dilution" because such
use is excluded from Section 1125(c). Lockheed Martin Corp. v. Network
Solutions, Inc., 985 F.Supp 949, 959 (C.D.Cal.1997); see 28 U.S.C. §
1125(c)(4). As such, the mere registration of a domain name, without more,
is not a "commercial use" of a trademark. See, e.g., Academy of
Motion Picture Arts and Sciences, 989 F.Supp. 1276, 1278; Juno, 979 F.Supp.
at 691; Panavision, 945 F.Supp. at 1303. "The exception for non-commercial
use of a famous mark is intended to prevent courts from enjoining
constitutionally protected speech. That is, the exclusion encompasses
conduct such as parodies and consumer product reviews." Panavision,
945 F.Supp. at 1303.
In Planned Parenthood, the use by the defendant of the plaintiff's mark was
found to be "commercial" for three reasons: (1) the defendant
was engaged in the promotion of a book, (2) the defendant was a non-profit
political activist who solicited funds for his activities, and (3) the
defendant's actions were designed to harm the plaintiff commercially. See
Planned Parenthood, 1997 WL 133313, at *5. In so finding, the court stated:
[D]efendant has appropriated plaintiff's mark in order to reach an audience of
Internet users who want to reach plaintiff's services and viewpoint,
intercepting them and misleading them in an attempt to offer his own political
message. Second, defendant's appropriation not only provides Internet
users with competing and directly opposing information, but also prevents those
users from reaching plaintiff and its services and message. In that way,
defendant's use is classically competitive: he has taken plaintiff's mark
as his own in order to purvey his Internet services--his web site--to an
audience intending to access plaintiff's services. Id. at *6 (emphasis
added).
In this case, the Defendant has done more than merely register a domain name.
He has created, in his words, a "bogus 'Jews for Jesus' " site
intended to intercept, through the use of deceit and trickery, the audience
sought by the Plaintiff Organization. Moreover, the Defendant Internet
site uses the Mark (33) and the Name of the Plaintiff
Organization as its address, conveying the impression to Internet users that the
Plaintiff Organization is the sponsor of the Defendant Internet site.
Although the Defendant Internet site does not solicit funds directly like the
defendant's site did in Planned Parenthood, the Outreach Judaism Organization
Internet site (available through the hyperlink) does do so through the sale of
certain merchandise. The Defendant does not argue that the Outreach
Judaism Organization site is not commercial in nature. Considering the
limited nature of the Defendant Internet site and its hyperlink to the Outreach
Judaism Organization Internet site, it is apparent the Defendant Internet site
is a conduit to the Outreach Judaism Organization Internet site, notwithstanding
the statement in the Disclaimer that "[t]his website ... is in no way
affiliated with the Jewish organization Outreach Judaism...." See supra,
note 17; see also supra, note 15.
The conduct of the Defendant also constitutes a commercial use of the Mark
and the Name of the Plaintiff Organization because it is designed to harm the
Plaintiff Organization commercially by disparaging it and preventing the
Plaintiff Organization from exploiting the Mark and the Name of the Plaintiff
Organization. See Panavision, 945 F.Supp. at 1303. In addition, the
Defendant Internet site has and will continue to inhibit the efforts of Internet
users to locate the Plaintiff Organization Internet site. See id.
The Plaintiff Organization has demonstrated a likelihood of success on
its claim of dilution under Section 1125(c).
3. Unfair Competition and False Designation of Origin
Claims
Count III of the Complaint alleges unfair competition and false designation
of origin pursuant to 15 U.S.C. § 1125(a) ("Section 1125(a)").
Section 1125(a) states, in relevant part,
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
which-
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable in a civil
action by any person who believes that he or she is or is likely to be damaged
by such act.
15 U.S.C. § 1125 (emphasis added). The test for unfair competition
under Section 1125(a) is essentially the same as that for trademark
infringement under Section 1114, namely whether there is a likelihood of
confusion between the marks. Fisons, 30 F.3d at 473. As discussed
above, the Plaintiff Organization has demonstrated there is a likelihood of
confusion if the Defendant is permitted to maintain his Internet site.
In order to prevail on a false designation of origin claim, the Plaintiff
Organization must prove by a preponderance of the evidence that:
(1) the defendant uses a false designation of origin, as defined in the Act;
(2) that such use of a false designation occurs in interstate commerce in
connection with goods and services;
(3) that such false designation is likely to cause confusion, mistake or
deception as to the origin, sponsorship, or approval of the defendant's goods or
services by another person; and
(4) that the plaintiff has been or is likely to be damaged.
See AT & T Co., 42 F.3d at 1427 (emphasis added).
a. False Designation of Origin
The Defendant stated that he intended for his "bogus"
Internet site to intercept persons looking for the Plaintiff Organization
Internet site. See Exhibit J to the Complaint. The Defendant also
stated he intended to use "deceit and trickery" to direct persons to
his Internet site. See Exhibit 3 to Perlman Amended Aff. The Defendant
Internet site was designed to be a false designation of origin.
b. Use in Interstate Commerce in Connection with Goods and
Services
The Defendant contends, without any explanation or analysis, that the
Plaintiff has not demonstrated that his activities are done "in connection
with any goods or services." See Defendant Brief 27-28. This
contention is without merit.
The requirement that the activities of an infringer be done "in
connection with any goods or services," does not require the infringer to
actually cause goods or services to be placed into the stream of commerce. See
Juno, 979 F.Supp. at 691 (finding mere acquisition of domain name constituted
"in connection with goods and services"). Rather, all that is
needed is that the trademark violation be "in connection" with any
goods or services. See id.
The activities of the Defendant are "in connection" with goods and
services for several reasons. First, the hyperlink in the Defendant
Internet site to the Outreach Judaism Organization Internet site is designed to
promote the viewpoint of the Outreach Judaism Organization and to encourage the
purchase of the products and services offered by that organization.
Second, as explained in Planned Parenthood, the
defendant's use of plaintiff's mark is "in connection with the distribution
of services" because it is likely to prevent some Internet users from
reaching plaintiff's own Internet web site. Prospective users of
plaintiff's services who mistakenly access defendant's web site may fail to
continue to search for plaintiff's own home page, due to anger, frustration, or
the belief that plaintiff's home page does not exist.... Therefore, defendant's
action in appropriating plaintiff's mark has a connection to plaintiff's
distribution of its services.
Planned Parenthood, 1997 WL 133313, at *4 (discussing "in connection with
goods or services" requirement in context of Section 1114 claim). In
this case, because of the similarity of the domain name used by the Defendant
with the Mark and Name of the Plaintiff Organization, the conduct of the
Defendant is not only designed to, but is likely to, prevent some Internet users
from reaching the Internet site of the Plaintiff Organization; as well it
diverts visitors to the Outreach Judaism Organization site which is commercial
in nature. As such, the conduct of the Defendant is "in connection
with goods and services" as that term is used in Section 1125(a).
c. Likelihood of Confusion
As discussed, the maintenance of the Internet site by the Defendant is
likely to cause confusion.
d. Likelihood of Injury
The Defendant asserts the Plaintiff Organization has not proved, nor can it,
that it has been or will be damaged by his activities. See Defendant Brief
at 28. In support of this conclusory assertion, the Defendant states that
the affidavits filed on behalf of the Plaintiff Organization demonstrate how
readily users can switch out of his Internet site if they so desire. As
such, the Defendant contends the Plaintiff is no worse off than when there was
no Internet site associated with his domain name in question because individuals
can still access the Plaintiff Organization Internet site. See id. at 28-
29. The Defendant admits, however, that the "reputation" of the
Plaintiff Organization is being harmed by him, but, he asserts, in a
constitutionally protected way. See Defendant Brief at 29.
As explained later in this opinion, the Plaintiff Organization has
demonstrated that it has and will suffer irreparable injury through the use of
the Mark and the Name of the Plaintiff Organization by the Defendant in his
domain name.
e. Non-Commercial Speech
The Defendant contends his conduct is exempted from Section 1125(a)
because it is "non-commercial speech." See Defendant Brief at
28. As discussed, however, the conduct of the Defendant is commercial in
nature.
Based on the foregoing, the Plaintiff Organization has demonstrated a
likelihood of success on its claims of unfair competition and false designation
of origin.
4. State Law and Common Law Claims
Counts IV, V and VI of the Complaint allege the Defendant is liable for
trademark infringement and dilution under New Jersey law, as well as liable for
common law unfair competition. The Defendant contends the Plaintiff
Organization has failed to make out a prima facie case under New Jersey law
because its claims under state law are no better than those under federal law.
See Defendant Brief at 32.
a. Infringement
Section 56:4-1 of the New Jersey Statutes ("Section 56:4-1")
provides:
No merchant, firm or corporation shall appropriate for his [, her] or their own
use a name, brand, trade-mark, reputation or goodwill of any maker in whose
product such merchant, firm or corporation deals.
N.J.S.A. 56:4-1. Section 56:4-1 is the state-law equivalent of
Section 1125(a). See Apollo Distrib. Co. v. Jerry Kurtz Carpet Co., 696
F.Supp. 140, 143 (D.N.J.1988). In New Jersey, therefore, the statutory and
common law test for trademark infringement is whether a likelihood of confusion
exists. See id.; Christian Science Bd. of Dirs. v. Evans, 191
N.J.Super. 411, 419, 467 A.2d 268, 272 (Ch.Div.1983), aff'd in part and rev'd in
part on other grounds, 199 N.J.Super. 160, 169, 488 A.2d 1054, 1058
(App.Div.1985), aff'd, 105 N.J. 297, 520 A.2d 1347 (1987). As discussed, a
likelihood of confusion exists.
b. Dilution
Section 56:3-13.20 of the New Jersey Statutes ("Section
56:3-13.20") provides:
The owner of a mark which is famous in this State shall be entitled, subject to
the principles of equity, to an injunction, commencing after the owner's mark
becomes famous, against another person's use of the mark which causes dilution
of the distinctive quality of the owner's mark, and to obtain other relief
provided in this section. In determining whether a mark is famous, a court
may consider factors such as, but not limited to:
a. The degree of inherent or acquired distinctiveness of the mark in this State;
b. The duration and extent of use of the mark in connection with the goods and
services;
c. The duration and extent of advertising and publicity of the mark in this
State;
d. The geographical extent of the trading area in which the mark is used;
e. The channels of trade for the goods or services with which the registrant's
mark is used;
f. The degree of recognition of the registrant's mark in its and in the other's
trading areas and channels of trade in this State; and
g. The nature and extent of use of the same or similar mark by third parties.
The owner of a famous mark shall be entitled only to injunctive relief in this
State in an action brought under this section, unless the subsequent user
willfully intended to trade on the owner's reputation or to cause dilution of
the owner's mark. If willful intent is proven, the owner shall also be
entitled to any other remedies set forth in this act, subject to the discretion
of the court and the principles of equity.
N.J.S.A. 56:3-13.20. Section 56:3-13.20 appears to be the state-law equivalent
of Section 1125(c). For the reasons previously discussed, the use by the
Defendant of his domain name likely will cause dilution of the Mark and the Name
of the Plaintiff Organization under state law.
c. Common Law Unfair Competition
Count VI of the Complaint alleges the use by the Defendant of
his domain name is actionable under the New Jersey common law of unfair
competition. The test for unfair competition under New Jersey law is
identical to the test for unfair competition under Section 1125. See AT
& T Co., 42 F.3d at 1433. As discussed, it is likely that the use by
the Defendant of his domain name constitutes unfair competition.
B. Extent to Which the Plaintiff Organization Will Suffer
Irreparable Injury if a Preliminary Injunction is Not Issued
In order to obtain injunctive relief, a party must make a clear showing of
"immediate irreparable injury" or a "presently existing actual
threat." Acierno v. New Castle County, 40 F.3d 645, 655 (3d Cir.1994).
The mere risk of irreparable harm or the possibility of a remote future injury
is not enough. See id. The word irreparable "connotes 'that
which cannot be repaired, retrieved, put down again [or] atoned for.' "
Id. at 653. As such, the Plaintiff Organization must demonstrate that,
absent the issuance of a preliminary injunction, it will suffer harm which
cannot be redressed sufficiently following a trial of the matter. See id.
at 652; One World Botanicals Ltd., 987 F.Supp. 317, 336 (quoting Instant
Air Freight Co. v. C.F. Air Freight, Inc., 882 F.2d 797, 801 (3d Cir.1989)).
In other words, the issuance of a preliminary injunction must be the only way to
protect the Plaintiff Organization from injury or harm. See id.; see
also Opticians, 920 F.2d at 195 (quoting Morton v. Beyer, 822 F.2d 364, 372 (3d
Cir.1987)). Economic loss does not constitute "irreparable harm."
See Acierno, 40 F.3d at 652 (quoting Sampson v. Murray, 415 U.S. 61, 90, 94 S.Ct.
937, 39 L.Ed.2d 166 (1974)).
A party's " 'mark is his [or her] authentic seal; by it he [or she]
vouches for the goods which bear it; it carries his [or her] name for good
or ill.' " See Opticians, 920 F.2d at 195 (quoting Ambassador East,
Inc. v. Orsatti, Inc., 257 F.2d 79 (3d Cir.1958)). Where one party
misappropriates the trademark of another, the offending party is using the
reputation of the trademark owner for self gain. Such unauthorized use
causes injury and harm, even if the offending party has not tarnished the mark
or diverted any sales by its use. See Opticians, 920 F.2d at 195.
Trademark infringement, therefore, "amounts to irreparable injury as a
matter of law." S & R. Corp., 968 F.2d at 378.
A party also may demonstrate "irreparable injury" where it shows it
has lost control of its reputation and goodwill by another's use of its mark.
See id. (citing Opticians, 920 F.2d at 195). In addition, where a
plaintiff makes a strong showing of a likelihood of confusion, irreparable
injury follows as matter of course. See Opticians, 920 F.2d at 196;
S & R. Corp., 968 F.2d at 378; One World Botanicals, 987 F.Supp. at
336.
The Plaintiff Organization has demonstrated a likelihood that the Defendant
is infringing upon the Mark and the Name of the Plaintiff Organization.
Irreparable injury, therefore, is established. See S & R. Corp., 968
F.2d at 378. Furthermore, the Plaintiff Organization has demonstrated a
likelihood of success on each of its claims. The use of the Mark and the
Name of the Plaintiff Organization by the Defendant has interfered with the
ability of the Plaintiff to control the Mark and the Name of the Plaintiff
Organization. This in turn creates the potential for damage to the
reputation of the Plaintiff Organization, especially in light of the disparaging
comments the Defendant and the Outreach Judaism Organization have made.
See One World Botanicals, 987 F.Supp. at 336. The Plaintiff Organization
should not be required to leave its reputation in the hands of the Defendant,
especially when the Defendant intends to destroy the reputation of the Plaintiff
Organization. See Caesars World, 490 F.Supp. at 828.
The Plaintiff Organization has made a strong showing of a likelihood
confusion if the Defendant is permitted to maintain his Internet site. It
follows that the Plaintiff Organization will suffer irreparable injury if a
preliminary injunction is not issued. See Opticians, 920 F.2d at 196;
One World Botanicals, 987 F.Supp. at 336; see also S & R. Corp., 968
F.2d at 378. Finally, money damages cannot compensate the Plaintiff for its
potential injuries because the injuries involve incalculable harm to the
reputation of the Plaintiff. See Opticians, 920 F.2d at 196; One
World Botanicals, 987 F.Supp. at 336 (citing Chips N. Twigs, Inc. v. Chip-Chip,
Ltd., 414 F.Supp. 1003, 1019 (E.D.Pa.1976)). This factor strongly favors
of the issuance of a preliminary injunction. See, e.g., Playboy, 985
F.Supp. 1220, 1997 WL 605377, at *1; Hasbro, 1996 WL 84853, at *1;
Juris, 1996 WL 376600 at * 1.
C. Extent to Which the Defendant Will Suffer Irreparable
Harm if a Preliminary Injunction is Issued
The Defendant cannot complain he will suffer irreparable injury if a
preliminary injunction is issued because he misappropriated the Mark and the
Name of the Plaintiff Organization with full knowledge of the rights of the
Plaintiff. See S & R. Corp., 968 F.2d at 379 (stating self-inflicted
harm is outweighed by injury to trademark owner where infringement is occurring);
Opticians, 920 F.2d at 197 (by virtue of its recalcitrant behavior, party cannot
"hardly claim to be harmed, since it brought any and all difficulties
occasioned by the issuance of an injunction upon itself.").
Even if the Defendant could so complain, he is unable to demonstrate that he
will suffer irreparable harm if a preliminary injunction is issued. First, the
Defendant has not expended a considerable amount of time or money maintaining
his Internet site because it contains very little information and functions
primarily as a link to the Outreach Judaism Organization Internet site.
Second, the Defendant is able to continue his speech about the Plaintiff
Organization on another Internet site, provided the new domain name does not
create a likelihood of confusion with the Name of the Plaintiff Organization or
the Mark. This task should be easy considering the Defendant is a professional
Internet site developer. See Brodsky Certif. 3.
Based upon the foregoing, this factor also favors of the issuance of an
injunction. See, e.g., Playboy, 985 F.Supp. 1220, 1221; Hasbro, 1996
WL 84853, at *1; Juris, 1996 WL 376600 at *1.
D. Extent to Which the Public Interest Favors the Plaintiff
Where a party demonstrates both the likelihood of success on the merits and
irreparable injury, "it almost always will be the case that the public
interest will favor" the issuance of an injunction. AT & T Co.,
42 F.3d at 1427 n. 8.
In trademark cases, "the public interest is 'most often a synonym for
the right of the public not to be deceived or confused.' " S & R.
Corp., 968 F.2d at 379 (quoting Opticians, 920 F.2d at 197); One World
Botanicals, 987 F.Supp. at 337. As explained in Transfer Print Foils v.
Transfer Print Am., 720 F.Supp. 425 (D.N.J.1989), [t]he public is entitled to
rely on valid mark as identifying the products it has come to associate with
that mark.... [T]he public is entitled to not be confused or deceived by
improperly appropriated marks. Id. at 441.
In the case at bar, because the Plaintiff Organization has demonstrated both
a likelihood of success on the merits and irreparable injury, the public
interest favors the issuance of an injunction. AT&T Co., 42 F.3d at
1427 n. 8. The issuance of an injunction will protect the public from the
deceptive and confusing use of the Mark and the Name of the Plaintiff
Organization by the Defendant. See, e.g., Playboy, 985 F.Supp. 1220, 1997
WL 605377, at *1; Hasbro, 1996 WL 84853, at *1; Juris, 1996 WL 376600 at
*1. Moreover, the public will not be deprived of the content of the comments
from the Defendant because he is free to publish on an Internet site that does
not infringe upon the Mark or the Name of the Plaintiff Organization.
III. Conclusion
For the reasons stated, the Order to Show Cause seeking a Preliminary
Injunction is granted.
FOOTNOTES:
1. In essence, this dispute
involves the validity of, and alleged infringement and dilution by the defendant
of, the service marks "Jews f<< StarOfDavid>>r Jesus" and
"Jews for Jesus." The dispute does not implicate rights granted
by the First Amendment of the United States Constitution.
The content of the speech of the defendant is not at issue in this action. See
Memorandum of Law of Steven C. Brodsky in Opposition to Plaintiff's Application
for a Temporary Restraining Order and Order to Show Cause (the "Defendant
Brief") at 32-34; Plaintiff's Memorandum in Support of Application
for Temporary Restraining Order and Order to Show Cause Re Preliminary
Injunction (the "Plaintiff Brief") at 4; Plaintiff's Revised
Reply Memorandum to Defendant's Memorandum in Opposition of Motion for Temporary
Restraining Order and Order to Show Cause (the "Plaintiff Reply
Brief") at 14-15; see also Planned Parenthood Fed'n of Am. v. Bucci,
No. 97-629, 1997 WL 133313, at *10 (S.D.N.Y. March 24, 1997) ("Planned
Parenthood "), aff'd by Summary Order (2d Cir. Feb. 9, 1998) (finding use
by defendant of plaintiff's service mark in domain name was not protected by
First Amendment because it was not part of communicative message but
instead was source identifier).
2.
"The 'Internet' is a general term for the modern development of
communications among the nationwide and indeed worldwide network of computers.
'The Internet is not a physical or tangible entity, but rather a giant network
which interconnects innumerable smaller groups of linked computer networks.
It is thus a network of networks.' " SF Hotel Co. v. Energy Invests., Inc.,
No. 97-1306, 1997 WL 749498, at *3 (D.Kan. Nov.19, 1997) (quoting ACLU v. Reno,
929 F.Supp. 824, 830 (E.D.Pa.1996)).
3.
"Domain names are used to locate information on the Internet. Each
computer or network linked to the Internet has a unique numerical address called
an Internet Protocol number ("IP number"). An IP number is four groups
of digits separated by decimal points, for example, '013.917.114.41.' These IP
numbers are converted into a more user-friendly, letter based format called a 'domain
name' by specialized computers called 'domain name servers.' Academy of
Motion Picture Arts and Sciences v. Network Solutions Inc., 989 F.Supp. 1276,
1281 n. 1 (C.D.Cal.1997). A domain name 'consists of two parts: a
host and a domain.... The Internet is divided into several domains, for example:
com--commercial business; net--network or communications organization;
edu--educational institution; org--non-profit organization;
gov--government.' Interstellar Starship Servs., Ltd. v. Epix, Inc., 983 F.Supp.
1331, 1335 (D.Or.1997). In the case of 'jews-for-jesus.org', the host is 'jews-
for-jesus' and the domain is 'org' ". See id.
4. The
Defendant asserts that, on 1 February 1998, he contacted Network Solutions, Inc.
("NSI"), an entity responsible for registering domain names, and
requested that it delete his registration of the domain name "jews-for-jesus.com".
See Certification of Steven C. Brodsky (the "Brodsky Certif."), dated
6 February 1998, 1. It is unclear whether the request by the Defendant was
triggered by the institution of this action which was commenced on 23 January
1998. It appears that this domain name has been deleted. As such,
the only domain name that appears to be disputed is "jewsforjesus.org".
5. "The
'Web' or 'World Wide Web' refers to the collection of sites available on the
Internet." Zippo Manuf. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119,
1121 (W.D.Pa.1997).
6. The
Plaintiff initially sought a temporary restraining order (a "TRO")
as well as a preliminary injunction. At a hearing on 13 February 1998 (the
"13 February Hearing"), the Plaintiff agreed to treat the hearing as
one seeking a preliminary injunction rather than one seeking a TRO. See 13
February Hearing Transcript (the "13 February Hearing Tr.") at 3-4.
7. In
support of the Order to Show Cause, the Plaintiff submitted: the Plaintiff
Brief; Affidavit of Susan G. Perlman (the "Perlman Aff."), dated
26 January 1998, attaching unnumbered exhibits; Affidavit of Vijay
Chellathurai (the "Chellathurai Aff."), dated 26 January 1998;
Affidavit of Michael B. Kalstein (the "Kalstein Aff."), dated 24
January 1998; Affidavit of Sheri A. Byrne (the "Byrne Aff."), dated 26
January 1998; Affidavit of Paul A. Winick (the "Winick Aff."), dated
28 January 1998, attaching Exhibits A through B; Amended Affidavit of
Vijay Chellathurai (the "Chellathurai Amended Aff."), dated 3 February
1998; Amended Affidavit of Susan G. Perlman (the "Perlman Amended Aff."),
dated 3 February 1998, attaching Exhibits 1 through 5; Affidavit of Donald
Sanchez (the "Sanchez Aff."), dated 9 February 1998, attaching
unnumbered exhibits; the Plaintiff Reply Brief; Supplemental
Affidavit of Susan G. Perlman (the "Perlman Supplemental Aff."), dated
9 February 1998, attaching Exhibits 1 through 5; and a letter, dated 17
February 1998.
In opposition to the Order to Show Cause, the Defendant submitted: the
Defendant Brief; the Brodsky Certif.; Affidavit of Ronald D.
Coleman, Esq. (the "Coleman Aff."), dated 6 February 1998, attaching
Exhibits A through N; a letter, dated 16 February 1998 (the "16
February Letter"); a letter, dated 17 February 1998; and a
letter, dated 19 February 1998 (the "19 February Letter").
8. The
Defendant alleges he did not receive notice of the intention by the Plaintiff to
file the Order to Show Cause. See Brodsky Certif. 4. At a hearing on
28 January 1998 (the "28 January Hearing"), the Plaintiff was directed
to serve the Defendant with the Order to Show Cause. It appears the
Plaintiff complied with this directive; the Defendant filed opposition to
the Order to Show Cause.
9. The
Registration for the Mark indicates that its "Last Listed Owner" is
"Hineni Ministries." See Exhibit A to Coleman Aff. The Plaintiff
is listed on the registration as "Assignee." See id.
Despite this fact, the Defendant half-heartedly argues there is no evidence that
the Plaintiff Organization is the current owner of the Mark. See 13 February
Hearing Tr. at 27-28. The Defendant, however, has not presented any
evidence to refute the contents of its own exhibit (Exhibit A to Coleman
Aff.) or to suggest that the Plaintiff Organization is not the owner of the
Mark. See id. at 28.
10.
Since 1988, the Plaintiff Organization has expended an average of $497,679.70
per year on advertising. See Exhibit 1 to Perlman Supplemental Aff.
11. The
Plaintiff Organization contends its representatives have distributed more than
35,000,000 pamphlets in public venues throughout the United States. See
Perlman Amended Aff. 4. The Complaint states that a search on LEXIS/NEXIS
in the ALLNEWS file reveals that, since 1992, more than 857 news articles have
been written about the Plaintiff Organization. See Complaint 18. In
addition, the Complaint states that a search on the Internet reveals more than
2300 Web site pages containing some discussion of the Plaintiff Organization.
See id. The Defendant has not disputed that the Plaintiff Organization has
received extensive coverage by the media.
12.
Some of the statements attributed to the Defendant and which concern the
Plaintiff Organization and the intent of the Defendant Internet site appear in
various newspapers. The Defendant has not denied making these statements.
At the 13 February Hearing, counsel for the Defendant acknowledged the Defendant
made these statements but stated that they may have been taken out-of-context.
See 13 February Hearing Tr. at 31.
13.
The following text appears on the Internet site maintained by the Defendant:
Jews for Jesus?
Are you interested in learning about Jews and Jesus?
Want to know why one cannot believe in Jesus and be a Jew?
The answers you seek already exist within your faith.
Come home to the truth and beauty of Judaism.
Don't be fooled.
Click here to learn
more about how the Jews for Jesus cult is founded upon deceit and distortion of
fact.
PLEASE NOTE
This website is an
independent project which reflects the personal opinion of its owner, and is in
no way affiliated with the Jewish organization Outreach Judaism, or the
Christian organization Jews for Jesus. Send all correspondence to stevebro@worldnet.att.net
See Exhibit E to the Complaint (emphasis in original). An effort was made
to depict in this footnote the text of the Defendant Internet site, as
accurately as possible.
14. A
"hyperlink" is a " 'highlighted text or images that, when
selected by the user, permit[s] him [or her] to view another, related Web
document.' " Bensusan Restaurant Corp. v. King, 126 F.3d 25, 27 n. 1 (2d
Cir.1997); see Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1232
(N.D.Ill.1996) (discussing purpose of hyperlinks).
15.
When an Internet user visits the Defendant Internet site, he or she is invited
to "click here to learn more about how the Jews for Jesus cult is founded
upon deceit and distortion of fact." See supra, note 13. If the
invitation is accepted, the Internet user is connected via a hyperlink to the
Internet site for the Outreach Judaism Organization.
16. The
registration for this domain name appears to have been deleted after it was
registered. See supra, note 4.
17.
The Disclaimer provides
PLEASE NOTE
This website is an independent project which reflects the personal opinion of
its owner, and is in no way affiliated with the Jewish organization Outreach
Judaism, or the Christian organization Jews for Jesus.
See Exhibit E to the Complaint (emphasis in original).
18. A
"trademark" is defined as
any word, name, symbol, or device, or any combination thereof-
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to
register on the principal register established by this chapter, to identify and
distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even if
that source is unknown.
15 U.S.C. § 1127.
19. A
"service mark" is defined as
any word, name, symbol, or device, or any combination thereof-
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to
register on the principal register established by this chapter, to
identify and distinguish the services of one person, including a unique service,
from the services of others and to indicate the source of the services, even if
that source is unknown.
15 U.S.C. § 1127.
20.
Section 1065 states, in relevant part, that
Except ... the right of the registrant to use such registered mark in
commerce for the goods or services on or in connection with which such
registered mark has been in continuous use for five consecutive years subsequent
to the date of such registration and is still in use in commerce, shall be
incontestable: Provided, That-
(1) there has been no final decision adverse to registrant's claim of ownership
of such mark for such goods or services, or to registrant's right to register
the same or to keep the same on the register; and
(2) there is no proceeding involving said rights pending in the Patent and
Trademark Office or in a court and not finally disposed of; and
(3) an affidavit is filed with the Commissioner within one year after the
expiration of any such five-year period setting forth those goods or services
stated in the registration on or in connection with which such mark has been in
continuous use for such five consecutive years and is still in use in commerce,
and the other matters specified in paragraphs (1) and (2) of this section;
and
(4) no incontestable right shall be acquired in a mark which is the generic name
for the goods or services or a portion thereof, for which it is registered....
15 U.S.C. § 1065.
21. The
Defendant asserts that NSI would not recognize the challenge by the Plaintiff
Organization to the domain name of the Defendant under NSI's Domain Name Dispute
Policy, effective 25 February 1998, because the Policy states that "Trademarks
incorporating a design will not be accepted." See 19 February Letter.
This fact is not relevant to the issues discussed herein because the policy of
NSI "cannot trump federal law." Cardservice, 950 F.Supp. at 740.
"Holders of valid trademarks under federal law are not subject to [NSI's]
policy, nor can the rights of those trademark holders be changed without
congressional action." See id. "Anyone who obtains a domain name
under [NSI's] ... policy must do so subject to whatever liability is provided
for by federal law." See id.
22.
Consumers are benefitted by the registration of a trademark "because such
registration helps to prevent confusion about the source of products sold under
a trademark and to instill in consumers the confidence that inferior goods are
not being passed off by use of a familiar trademark." Natural Footwear Ltd.
v. Hart, Schaffner & Marx, 760 F.2d 1383, 1395 (3rd Cir.1985), cert. denied,
474 U.S. 920, 106 S.Ct. 249, 88 L.Ed.2d 257 (1985).
23.
Class 16 provides as follows:
16. Paper and paper articles, cardboard and cardboard articles; printed
matter, newspaper and periodicals, books; bookbinding material;
photographs; stationery, adhesive materials (stationery); artists'
materials; paint brushes; typewriters and office requisites (other
than furniture); instructional and teaching material (other than apparatus);
playing cards; printers' type and cliches (stereotype).
37 C.F.R. § 6.1 (1998).
24. Class
42 provides as follows:
The service of: (1) Providing multiple-user access to a global computer
information network for the transfer and dissemination of a wide range of
information; or, (2) Leasing or providing access time to computer data
bases/web sites/home pages of others in the field(s) of [indicate specific
field(s) or subject matter ] by means of a global computer network, is
classified in International Class 42.
Identification and Classification of Certain Computer Related Goods and Services
(visited 5 March 1998) <http:// www.uspto.gov/web/offices/tac/domain/domcl.html>.
25. McCarthy
on Trademarks has criticized the Natural Footwear decision stating
[i]n a confused and internally inconsistent opinion, the Third Circuit said at
one point that the 'impact' of a registered mark should be limited 'to only the
specific items of the registration.' It is not clear whether the court
meant limiting the presumptive validity of the mark (which is the law), or
limiting infringement remedies to only defendant's goods which are identical to
those in the plaintiff's registration (which is not the law anywhere.).
3 McCarthy on Trademarks, § 24:65 at 24-114 n.3.; see also E. Remy Martin
& Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525 (11th Cir.1985)
(remedial rights of an owner of a registered mark are extended to any goods
which are likely to cause confusion, and not just limited to the goods in the
registration). Nevertheless, Natural Footwear remains the law of this
Circuit.
26.
There appears to be a gap in the classification of certain trademarks. The
PTO states
[o]nly hard copy publications, e.g., printed magazines and books, are considered
to be Class 16 goods.... Magazines or books that are downloadable from a
computer network are not considered to be "hard goods" and they are
classified in International Class 42 rather than Class 16.
Identification and Classification of Certain Computer Related Goods and Services
(visited 5 March 1998) <http: // www.uspto.gov/web/offices/tac/domain/domcl.html>.
(emphasis added). Class 42, however, does not apply to a "content
provider." Id. The question arises then within what classification
does a "content provider" fall if that provider offers books,
magazines or pamphlets that are not downloadable. The PTO indicates that
such information "should be classifiable according to the information
provided." Specifically, the PTO has stated: Most applicants
will be "content" providers who furnish information via the Internet,
i.e., offer the service of providing information. In such cases, the
service offered is an information service classifiable according to the
information provided, e.g., a service that offers business information is
classified in Class 35, a service that offers financial information is
classified in Class 36, and a service that offers building construction, repair
or maintenance information is classified in Class 37.
Trademark Examination of Domain Names (last modified 16 January 1998) <
http://www.uspto. gov/web/offices/tac/domain/tmdomain.htm> (emphasis added).
In this case, the "services" to be provided are religious in nature.
None of the classifications expressly cover such service. See 37 C.F.R. §
6.1 (1998). As such, it appears appropriate to classify the services
provided in the category which most closely resembles the "products"
used by the service, i.e., Class 16.
27. At
the 13 February Hearing, it was observed the Defendant Internet site did not
contain a hyperlink to the Plaintiff Organization Internet site. In the 16
February Letter, counsel for the Defendant indicated that such a hyperlink would
violate the religious beliefs of the Defendant by rendering "assistance to
plaintiff's missionary efforts." 16 February Letter, at 2.
28. Section
1125(c) states, in relevant part, as follows:
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled ... to an injunction against
another person's commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive
quality of the mark, and to obtain such other relief as is provided in this
subsection.
15 U.S.C. § 1125 (emphasis added).
29.
Section 1125(c)(2) states
(2) In an action brought under this subsection, the owner of the famous mark
shall be entitled only to injunctive relief unless the person against whom the
injunction is sought willfully intended to trade on the owner's reputation or to
cause dilution of the famous mark. If such willful intent is proven, the
owner of the famous mark shall also be entitled to the remedies set forth in
sections 1117(a) and 1118 of this title, subject to the discretion of the court
and the principles of equity.
28 U.S.C. § 1125(c)(2).
30. "Blurring"
occurs when the selling power and value of a mark is whittled away by the
unauthorized use of the mark. Panavision, 945 F.Supp. at 1304. This
occurs where a prospective customer sees the plaintiff's mark used by other
persons to identify different sources of different goods and services, thus
weakening the distinctive significance of the mark to identify and distinguish
the source. 3 McCarthy on Trademarks on Trademarks and Unfair Competition,
§ 24:94, at p. 24-160 (4th ed.1997).
31.
"Tarnishment" arises where a party's unauthorized use of a famous mark
is linked to products of poor quality or is portrayed in an unwholesome manner
and therefore degrades the positive associations and the distinctive quality of
the mark. Panavision, 945 F.Supp. at 1304; 3 McCarthy on
Trademarks, § 24:95, at 24-165.
32. Section
1125(c)(4) states
The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative advertising or
promotion to identify the competing goods or services of the owner of the famous
mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.
28 U.S.C. § 1125(c)(4) (emphasis added).
33. To
the extent possible, the Defendant copied the Mark as his domain name.
As explained, a stylized letter "O" ("<<StarOfDavid>>")
in the word "for" cannot be used in a domain name.