Omega S.A. v. Omega Engineering

Citation: Omega S.A. v. Omega Engineering, Inc., 396 F.Supp.2d 166 (D. Conn. 2005)

Factual Background
Plaintiff sold watches under the federally registered mark OMEGA. Defendant sold scientific equipment under the federally registered mark OMEGA. Both defendant and plaintiff's parent company, Swatch, applied for the "omega.us" domain name during the ".us" gTLD "sunrise" application period reserved for owners of U.S. trademark registrations. Because multiple trademark owners applied for the "omega.us" name, the name was randomly assigned and Swatch was awarded the "omega.us" name.

Trial Court Proceedings
In this lawsuit between these perennial litigants, defendant filed a counterclaim for cybersquatting relating to the "omega.us" domain name and the parties cross-moved for summary judgment. The court examined whether plaintiff had a bad-faith intent to profit from defendant's mark as required under the ACPA. Defendant argued that because plaintiff, and not Swatch, owned the U.S. trademark registration for OMEGA for watches, Swatch's domain name application was in bad faith. The court rejected this argument because the application indicated that Swatch applied for the domain name on behalf of plaintiff, the U.S. trademark owner and its subsidiary.

Defendant also argued that the act of a Swiss company seeking registration of a ".us" domain name constituted bad faith. But the court held that nationality did not matter because the application process for ".us" domain names permitted owners of U.S. trademark registrations to apply regardless of their nationality.

Finally, plaintiff's lack of use of the "omega.us" domain to date did not constitute bad faith. The court thus held that defendants failed to present sufficient evidence upon which a reasonable jury could find that plaintiff did not have reasonable grounds to believe that its domain name use was a fair use or otherwise lawful under ACPA 's "safe harbor" provision, and granted summary judgment in favor of plaintiff.

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