Prime Publishers v. American-Republican

Citation: Prime Publishers, Inc. v. American-Republican, Inc., 160 F.Supp.2d 266 (D. Conn. 2001).

Factual Background
Plaintiff published a local newspaper in parts of Connecticut under the mark VOICES. Defendant published a local newspaper in the same area of Connecticut under the name Waterbury Republican-American. A few months after conclusion of a copyright infringement litigation between the parties, defendant registered the domain name "ctvoices.com" and used the site as "a modified discussion board where users can express their opinions." However, defendant rarely updated "ctvoices.com" and, at the time of trial, no longer maintained the website.

Trial Court Proceedings
Plaintiff sued defendant for cybersquatting under the ACPA, dilution, and false designation of origin. Following a bench trial, the court held that defendant's registration and use of the domain name "ctvoices.com" violated the ACPA, finding that: (1) plaintiff's VOICES mark was distinctive, (2) the domain name "ctvoices.com" was confusingly similar to plaintiff's mark because "[a]n Internet user might reasonably assume that 'ct' was added to the Plaintiff's mark by Plaintiff to identify its geographic location," and (3) defendant acted with a bad-faith intent to profit from plaintiff's mark. The evidence of bad faith included defendant's lack of effort in maintaining the "ctvoices.com" site and defendant's registration of that domain name knowing that it incorporated a competitor's mark. The fact that defendant did not offer to sell the domain name to plaintiff was not significant because a registrant "might benefit equally from warehousing &mdash; holding and keeping inactive &mdash; a domain name incorporating a competitor's mark, thereby reducing potential advertising or sales revenue, as well as from selling the domain name."

Defendant's fair use arguments failed because defendant's use of "ctvoices.com" was neither a nominative use of plaintiff's mark nor descriptive of defendant's services. There was "no particular need for the Defendant to use the word 'voices' to describe the features or qualities of its bulletin board service." Accordingly, the court ordered defendant to transfer the "ctvoices.com" domain name to plaintiff and permanently enjoined defendant from "use of the word 'voices,' whether standing alone or in combination with any geographic or generic terms, in connection with a website, domain name, metatag, search term, or search engine."

Plaintiff was not entitled to statutory damages under the ACPA, however, because defendant registered the domain name prior to ACPA 's effective date. The court did not address the possibility of awarding statutory damages based on defendant's use of the domain name after ACPA's enactment.

Regarding plaintiff's other claims, plaintiff did not prevail on its federal dilution claim because its VOICES mark was not a famous mark and was known only locally in Connecticut. However, defendant's use of plaintiff's mark in its domain name constituted a false designation of origin that entitled plaintiff to the injunctive relief awarded under its ACPA claim. But plaintiff was not entitled to costs and attorney's fees due to the "unexceptional" nature of the case.

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.