Shade's Landing v. Williams

Citation
Shade's Landing, Inc. v. Williams, 76 F.Supp.2d 983 (D. Minn. 1999) (full-text).

Factual Background
Plaintiff hosted a website at the domain name "home-market.com," from which it offered homeowners various referral services such as real estate agents, mortgage brokers, and landscaping services. This site was tangentially related to plaintiff's primary business promoted at its "shadeslanding.com" website, which focused on website development for real estate agents. Plaintiff's "shadeslanding.com" site was entirely separate from its "home-market.com" site and was targeted at businesses in the real-estate industry rather than consumers.

Defendant was in the business of designing and hosting websites for real estate agents. Defendant hosted the sites he designed for his clients on his website at "home-market.net" (e.g., a site designed for John Doe would be located at home-market.net/JDoe).

Trial Court Proceedings
Plaintiff alleged, inter alia, that defendant's use of the "home-market.net" domain name infringed its trademark rights under Section 43(a) of the Lanham Act. The court denied plaintiff's motion for a preliminary injunction because plaintiff failed to show a probability of likelihood of success on the merits.

First, the court held that plaintiff's unregistered mark "home-market.com" was merely descriptive and plaintiff had not presented sufficient evidence that the mark had acquired distinctiveness. The court was unpersuaded by plaintiff's evidence that its site had received 1,500 hits in a two-week period. The fact that plaintiff's website received a high placement in search engines results was irrelevant to whether consumers had come to associate the domain name with plaintiff.

Second, even if plaintiff had a protectable trademark, there was no likelihood of confusion. Although the similarity of the domain names favored a finding of a likelihood of confusion, other factors, such as the weakness of the mark, the lack of an intent to deceive by defendant, and minimal evidence of actual confusion did not.

Finally, the court determined that there was a relatively low level of irreparable harm to plaintiff, noting that defendant’s “home-market.net” site was simply an inactive host site for the web pages he developed for his clients. In contrast, requiring defendant to change his domain name would not only force all his clients to reprint their marketing materials with references to their current website address, but might also cause them to lose business during the transition from one address to another.

Source
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