Newport Electronics v. Newport Corp.

Citation
Newport Elecs., Inc. v. Newport Corp., 157 F.Supp.2d 202 (D. Conn. 2001) (full-text).

Factual Background
Plaintiff sold a variety of measuring, testing, and laboratory equipment under the mark NEWPORT and operated a website at the domain name "newportus.com." Defendant sold optical, motion, and automation systems for science and industry under the mark NEWPORT and operated a website at "newport.com."

Trial Court Proceedings
Plaintiff brought suit for trademark infringement and unfair competition, and moved for summary judgment, arguing that the parties' sales of overlapping products were likely to cause consumer confusion. Defendant countered that there was no product overlap and that the parties competed in different markets and served different customers. Agreeing with defendant, the court denied plaintiff's motion because genuine issues of material fact existed about whether there was product overlap.

Defendant also sought summary judgment on its ACPA counterclaim, which alleged that plaintiff, in bad faith, registered five domain names consisting of shortened versions of defendant's corporate name "Newport Corporation" "newportcorp.org," "newportcorp.net," "enewportcorp.com," "enewportcorp.org," and "enewportcorp.net") as well as "newportoptics.com." Defendant argued that plaintiff registered these domain names "solely for litigation purposes and to use as 'bargaining chips'" in this litigation. Plaintiff failed to use any of these domain names and registered them only after initiation of the lawsuit.

Plaintiff countered that it registered the domain names as part of its efforts to enforce rights in its mark NEWPORT, that the names "were just variations of the mark it already owned," and that it never diverted customers from defendant's site.

The court initially noted that the case was atypical, because both parties had legitimate rights to the "NEWPORT" portion of the domain names in question. It then denied defendant's motion for summary judgment. Although plaintiff's multiple domain-name registrations seemed excessive to the court, there were genuine issues of material fact on each of the ACPA elements, especially bad faith.

Defendant also sought summary judgment on the scope of relief, arguing that even if plaintiff prevailed, it was not entitled to injunctive relief that would prevent defendant from using the "newport.com" domain name or any other NEWPORT-formative domain name. The court denied defendant's motion as premature because liability had yet to be determined.

Source

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