Hotline Communications v. Techton

Citation: Hotline Communications, Ltd. v. Techton, LLC, CV-00-00774 LGB(JWJx) (C.D. Cal. Mar. 29, 2000)

Factual Background
Plaintiff sought to preliminarily enjoin defendant from using the domain names “hotline.com” and “hotlinechat.com,” alleging that they infringed plaintiff’s unregistered trademark HOTLINE. Plaintiff used its HOTLINE trademark for Internet-related communications software and services since 1996. In mid-1997, defendant registered the domain names “hotline.com” and “hotlinechat.com” and began using “hotline.com” for an adult-content website.

Defendant became aware of plaintiff’s website in late 1997. It continued to operate its adult-content website at “www.hotline.com” until late 1999 when it changed its business strategy and began offering e-mail services, chat services, online storage, personals, online shopping, and other Internet services at its websites. Additionally, defendant’s sites displayed the HOTLINE.COM and HOTLINECHAT.COM marks in red letters against a mustard-yellow colored background—the same colors in which plaintiff displayed its HOTLINE mark.

Trial Court Proceedings
The court granted plaintiff’s motion for a preliminary injunction as to the domain name “hotline.com,” finding that: (1) plaintiff was the prior user of the HOTLINE mark in connection with Internet-related communications services, even assuming that defendant was the prior user for adult-related content, as defendant could not “tack on” its use of the HOTLINE mark for adult-content because Internet communications services were not a natural “zone of expansion”; (2) plaintiff’s HOTLINE mark was protectable because it was only suggestive of Internet-related communications software and services; (3) the marks were nearly identical and were used for closely related goods and services as “both companies operate on the Internet only; both offer users the ability to communicate with other users, store files, and leave messages”; and (4) the intent factor weighed in favor of plaintiff, because defendant knew about plaintiff’s HOTLINE mark well before defendant changed its business to mimic plaintiff’s.

Defendant argued “unclean hands” as an affirmative defense on the ground that plaintiff allegedly allowed its “HOTLINE NETWORK to be used as a supplier of pirated software and other copyrighted materials.” In response, plaintiff pointed out the numerous and predominantly legitimate uses of its software and argued that it could not be held responsible for how users used its software after they had downloaded it. The court did not have to address the merits of defendant’s unclean-hands defense, however, because the complained-of conduct did not relate to the subject matter of plaintiff’s infringement claims.

Finally, the court did not enjoin defendant from using the “hotlinechat.com” domain name, finding that the addition of the term “chat” sufficiently distinguished the name from plaintiff’s HOTLINE mark and “hotline.com” domain name. The court did acknowledge that defendant’s use of the HOTLINECHAT.COM mark in red lettering against a mustard-yellow background may constitute infringement due to the similarities in “sight and meaning.”

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