Bayer v. Custom School Frames

Citation: Bayer Corp. v. Custom School Frames, LLC, 259 F. Supp. 2d 503 (E.D. La. 2003)(full-text).

Factual Background
Plaintiff sold flea-control products globally under the registered mark ADVANTAGE and promoted those products at its “nofleas.com” website. Defendant sold gray-market versions of plaintiff’s ADVANTAGE products made for the U.K. and Australia markets and promoted them on its “no-fleas.com” website.

Trial Court Proceedings
Plaintiff sued defendant for federal and state trademark infringement, dilution, and unfair competition. Defendants consented to the entry of a permanent injunction, pursuant to which the court made the following conclusions of law. First, defendant’s sale of ADVANTAGE gray-market products infringed plaintiff’s trademark rights because they were materially different from plaintiff’s authorized U.S. products. Plaintiff easily met the low threshold for determining whether gray goods and authorized goods are materially different by showing, among other things, (1) the labels on the foreign products did not have an EPA registration number, (2) the foreign products failed to comply with various federal and state laws, and (3) defendant did not distribute the foreign products through veterinarians as plaintiff did.

Second, the court held that defendant’s sale of materially different gray-market products tarnished the reputation of plaintiff and the goodwill of the ADVANTAGE mark in violation of federal and Louisiana anti-dilution laws. Third, regarding defendant’s website, the court held that defendant’s prominent use of the ADVANTAGE mark on its website and in the site’s metatags infringed plaintiff’s trademark rights. In particular, defendant’s use of ADVANTAGE in its metatags created initial-interest confusion. Although the court made no express finding that plaintiff had proprietary rights in the domain name “nofleas.com” or that defendant’s use of the domain name “no-fleas.com” violated plaintiff’s rights to “no fleas.com” in any way, the court noted that the likelihood of confusion caused by defendant’s use of ADVANTAGE on its website was “exacerbated” by defendant’s use of the nearly identical “no-fleas.com” domain name.

The court permanently enjoined defendant from: (1) using the mark ADVANTAGE with any goods or services, (2) selling plaintiff’s ADVANTAGE products through any channels of trade, (3) registering or using any domain name similar to the ADVANTAGE mark, the “nofleas.com” domain name, or any other mark or domain name owned by plaintiff, and (4) committing any act that dilutes or tarnishes plaintiff’s mark or business reputation.

The court also ordered defendant to transfer the “no-fleas.com” domain name to plaintiff and to remove any records or registrations of his website and plaintiff’s mark and associated search terms and keywords from specific Internet search engines.

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