Southern Grouts & Mortars v. 3M Corporation

Mark Anthony Romance

Case Conclusion Date:September 17, 2008

Practice Area:Intellectual Property

Outcome:Summary Judgment for 3M Corporation

Description:Richman Greer, P.A. attorneys Mark A. Romance and Ethan J. Wall successfully defended 3M Corporation ("3M") against claims of cybersquatting and unfair competition brought by Southern Grouts & Mortars ("SGM") involving an inactive domain name 3M acquired over seven years ago. United States District Court Judge Marcia G. Cooke granted 3M’s motion for final summary judgment in a 36 page opinion entered on September 17, 2008. In 2000, 3M purchased the assets of American Electronic Sign Company ("AESC"), which included various intellectual property rights including the trademark DIAMOND BRITE, and its corresponding domain name "diamondbrite.com." During the brief time that 3M transitioned AESC’s business into 3M’s traffic safety systems division, visitors to www.diamondbrite.com were re-directed to 3M’s traffic safety systems webpage. By early 2002 the domain name was not in use. SGM, a manufacturer of swimming pool finishes who owns trademark rights to DIAMOND BRITE for use in connection with swimming pool finish products, became aware of 3M’s ownership and non-use of the diamondbrite.com domain name in early 2002. SGM sued 3M in 2007 alleging, inter alia, that 3M’s re-registration and "use" of the inactive domain infringed SGM’s DIAMOND BRITE trademark and constituted unfair competition under the Lanham Act and "cybersquatting" under the Anti-Cybersquatting Consumer Protection Act. In her decision, U.S. District Court Judge Marcia G. Cooke ruled that SGM’s claims for cybersquatting and unfair competition were untimely and thus barred. The Court also ruled that SGM’s claim of unfair competition failed because SGM offered no proof that 3M used the domain in commerce as required by the Lanham Act or that any purported use was likely to cause consumer confusion. The Court also held that SGM’s cybersquatting claim failed because SGM failed to prove that 3M used or registered the domain name with a bad faith intent to profit. This decision reinforced 3M’s ownership rights with respect to the diamondbrite.com domain name. Mark A. Romance maintains a trial and appellate practice concentrating on commercial and complex litigation including intellectual property litigation. Ethan J. Wall also practices complex commercial litigation with an emphasis on intellectual property and domain name disputes.