International Profit Associates v. Paisola

Citation: International Profit Associates Inc. v. Paisola, 461 F.Supp.2d 672 (N.D. Ill. Nov. 14, 2006).

Factual Background
Plaintiff provided business consulting services and operated a website at the domain name “iapopinions.com.” Defendant became aware of a dispute between plaintiff and one of its former customers, and later began publishing allegations and critical information about plaintiff on two websites, including “ipaopinion.com.” Defendant also represented a former customer of plaintiff with whom plaintiff had a collection dispute.

Defendant’s websites included “logos, trademarks, and copyrighted material of [plaintiff]”; transcripts and recordings of calls defendant made to plaintiff’s employees and agents that defendant taped without their knowledge or consent; personal information about plaintiff’s management, including home addresses; and false and misleading information about plaintiff.

Defendant also purchased plaintiff’s mark INTERNATIONAL PROFIT ASSOCIATES as a search-engine keyword from Google to increase traffic to his “ipaopinion.com” criticism website.

Trial Court Proceedings
Plaintiff filed suit asserting numerous claims, including trademark infringement and cybersquatting. Plaintiff claimed that it could not locate defendant, and the court granted plaintiff’s motion for an ex parte temporary restraining order on some of plaintiff’s claims. In particular, the court held that plaintiff established a likelihood of success on its infringement and cybersquatting claims.

Regarding infringement, the court held that defendant’s purchase of the INTERNATIONAL PROFIT ASSOCIATES trademark from Google and its use of the “ipaopinion.com” domain name were both likely to cause confusion. Although the Seventh Circuit had not yet decided whether the purchase of trademark-related search-engine keywords satisfied the Lanham Act’s use requirement, it noted that other courts had done so, citing the New Jersey district court’s decision in ‘’Buying For The Home.’’

Plaintiff also “sufficiently shown” a “reasonable likelihood” that defendant registered the “ipaopinioncom” domain name “with the intent to profit from the confusion.” The court thus temporarily enjoined defendant from “making content available” at the domain name “ipaopinion.com”; “conducting further advertising” using plaintiff’s trademarks; and using plaintiff’s marks as keywords for any Internet advertising service, including Google and Yahoo!.

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