Bayer Healthcare v. Nagrom

Citation: Bayer Healthcare, LLC v. Nagrom, Inc., 2004 U.S. Dist. LEXIS 19454, 72 U.S.P.Q.2d (BNA) 1751 (D. Kan. Sept. 7, 2004).

Factual Background
Plaintiff sold pet flea-control products under the federally registered trademark ADVANTAGE. Plaintiff promoted its products at its ”nofleas.com” website but did not sell products over the Internet. Defendant operates several websites (tjspetshop.com, 4fleacontrol.com, fleadrops.com) that sold gray-market versions of Bayer’s ADVANTAGE products made for the UK market. Defendant made prominent use of plaintiff’s ADVANTAGE mark on its website, including as part of the titles of the site. Defendant also portrayed plaintiff’s product packaging on its website and used plaintiff’s ADVANTAGE mark in its metatags. Defendant paid at least one search engine to obtain a more prominent placement for its “fleadrops.com” website in search results than plaintiff’s website when users conducted searches using terms like “ADVANTAGE FLEA” or “ADVANTAGE FLEA CONTROL.”

Trial Court Proceedings
Plaintiff sued for trademark infringement and unfair competition. Defendant consented to a permanent injunction, and the parties stipulated to findings of fact and conclusions of law.

The court held that the sale of plaintiff’s gray-market goods violated the Lanham Act because of the extensive material differences between domestic ADVANTAGE products and those sold in the U.K. The court also found that the use of plaintiff’s ADVANTAGE mark on defendant’s websites created a likelihood of confusion and that defendant’s use of plaintiff’s mark as metatags and search keywords created initial-interest confusion.

The court permanently enjoined defendant from selling gray-market ADVANTAGE products and from using the ADVANTAGE mark or any similar mark “as part of any web site, metatags, keywords in pay-for-placement or pay-for-rank search engines, computer code or otherwise in connection with the retrieval of data or information through the Internet or in connection with the advertising or promotion of any goods, services or web sites.” The court also enjoined defendant from reproducing or using plaintiff’s graphics and images, and ordered defendant to request the removal “of the ADVANTAGE mark and any search terms and keywords. . . with all Internet search engines….”

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