Juno Online Services v. Juno Lighting

Citation
Juno Online Services L.P. v. Juno Lighting Inc., 979 F. Supp. 684 (N.D. Ill. 1997) (full-text).

Factual Background
Plaintiff, Juno Online, an online service and e‑mail provider and registrant of the domain name "juno.com," filed this declaratory-judgment action against NSI and Juno Lighting, a manufacturer of recessed and track lighting, in response to Juno Lighting's filing of an NSI protest to the "juno.com" domain name based on its ownership of two federal registrations for the trademark JUNO for electric-lighting fixtures.

Trial Court Proceedings
Juno Online sought an injunction against NSI's interference with the “juno.com” domain name, but later dismissed its claims against NSI after NSI agreed not to put the "juno.com" domain name on hold pending the outcome of the litigation. Juno Lighting then registered the domain name "juno-online.com," hoping that its reservation of this name could help resolve the dispute. But Juno Online instead amended its complaint against Juno Lighting to include a count for unfair competition under the Lanham Act, in addition to existing counts for trademark misuse, state unfair competition, and declaratory relief that its use of the "juno.com" domain name did not infringe or dilute Juno Lighting's trademarks.

Juno Lighting moved to dismiss all of the claims except for the declaratory-relief count. The court granted Juno Lighting's motion. In rejecting Juno Online's allegation that Juno Lighting had misused its trademarks by attempting to put Juno Online out of business, the court held that such a "novel" affirmative claim for trademark misuse should not be recognized in this case where no factual allegations or evidence showed that Juno Lighting's purpose in filing the NSI protest was to derive a competitive advantage over Juno Online.

The court also dismissed plaintiff's claim of unfair competition arising from Juno Lighting's registration of the “juno-online.com” domain name because Juno Lighting had made no use of the domain name on the Internet. According to the court, the mere registration and warehousing of a domain name without use of the Internet did not satisfy the Lanham Act's "use in commerce" requirement.

Source
This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).