ImOn v. ImaginOn

Citation: ImOn, Inc. v. ImaginOn, Inc., 90 F.Supp.2d 345 (S.D.N.Y. 2000).

Factual Background
Defendant had been using “IMON” since January 1999 as its NASDAQ stock-ticker symbol, and in June 1999 registered the domain name “imon.com.” In July 1999, defendant announced its intention to introduce a portal product at its “imon.com” website. Those plans changed, however, in October 1999, when defendant’s website began offering a product called “IMON.COMTV,” an Internet television delivery tool costing over $30,000.

In or around June 1999, plaintiff developed a business strategy that would provide free Internet access and Internet portal services to big businesses and their customers. In late June 1999, plaintiff learned that defendant owned the “imon.com” domain name. In July 1999, just two days before defendant announced its intention to launch a portal product, plaintiff filed an intent-to-use trademark application for the mark IMON for Internet services.

Within the following month, plaintiff obtained the domain name “imon.net” that had been used by a small ISP. In January 2000, plaintiff filed suit and sought a preliminary injunction against defendant for trademark infringement.

Trial Court Proceedings
The court declined, however, to grant the preliminary-injunction motion. Although there was a “real question” as to whether plaintiff or defendant was the senior user, plaintiff in any event could not satisfy the preliminary-injunction standards. Initially, the court noted that defendant advertised its product as “IMON.COMTV,” which was easily distinguishable from plaintiff’s “IMON” mark.

Regarding the parties’ services, the court found that defendant’s Internet-television software and services were different from plaintiff’s Internet portal and dial-up access service, and would not be confused by sophisticated corporate customers.

Although defendant’s IMON.COMTV software contained a link to its Internet-search software, that link did not convert “the entire program into a portal so as to be competitive with the plaintiff’s portal services.” Although Internet users looking for plaintiff’s portal site could accidentally reach defendant’s site (i.e., initial interest confusion), the court believed that those consumers would quickly realize that defendant’s site was for an expensive online-television service, not an Internet portal. The court stated “anytime a person visits a wrong website, in which the information on the site does not correspond to the presentation given, questions are going to be raised. I do not find that the above come close to supporting a finding of a likelihood of confusion.”

Finally, defendant’s prior knowledge of plaintiff’s mark did not constitute bad faith, particularly here where “[p]laintiff, as a start-up, had no reputation or goodwill for defendant to capitalize on.”

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