Best Vacuum Inc. v. MH Vacuum & Sewing Machine
N/AOUTCOME: Successful injunction against infringer
In May of 1996 Plaintiff registered an Internet Domain Name and since then actively promoted the use of the mark on the Internet by advertising on Internet search engines and directories and in magazin ... es and newspapers. On March 6, 2007 we successfully registered Plaintiff’s domain name with the United States Patent & Trademark Office. In the Summer of 2007, Defendant began to advertise and promote itself and its competing products under a strikingly and confusingly similar domain name. On May 22, 2007, June 11, 2007 and July 10, 2007, Plaintiff sent Defendant cease and desist letters demanding that Defendant cease use of the infringing domain name. Defendant never replied to any of the letters and failed to comply with Plaintiff’s demand to cease use of the domain name. Defendant continued to offer competing products and accessories for sale directly to consumers using the infringing domain name. Plaintiff sued Defendant contending hat Defendant ’s use of the infringing domain name in direct competition with Plaintiff’s domain name, for the identical type of goods distributed through the same channels of trade, was likely to confuse consumers. The similarity between the marks led some to conclude that the competing web site was exclusively or jointly developed by, licensed or certified by, or is otherwise associated or affiliated with Plaintiff. Indeed, customers of Plaintiff had been actually confused by the similarity due to the proximity of the web sites in Internet Search Engine results. Consumers, especially those first-time buyers who are not sophisticated, or who learned about Plaintiff by word of mouth, are likely to be misled as to the source, sponsorship, or affiliation with the infringing domain name. In this action Plaintiff enjoined Defendant from using anything confusingly similar to the Plaintiff’s trade name and trademark for the marketing and sale of a directly competing products. The unfair competition laws do not allow a latecomer to copy a famous mark and “free ride” on the goodwill associated with it.
