Santa Fe Properties v. French & French Fine Properties

Citation: Santa Fe Properties v. French & French Fine Properties, 2005 U.S. Dist. LEXIS 21922 (D.N.M. Aug. 9, 2005)

Factual Background
Plaintiff, Santa Fe Properties, was a real-estate agency that focused on Santa Fe, New Mexico. Defendant was also a real-estate agency with operations in Santa Fe. Plaintiff filed suit for trademark infringement to prevent use of certain metatags as well as the domain name “prestigesantafeproperties.com.” The parties submitted and the court entered a Stipulated Order and Judgment for Permanent Injunction (“the Order”). The Order identified two of plaintiff’s registered trademarks—Santa Fe Properties and Santa Fe Living—and permanently enjoined defendant from using “Santa Fe Properties’ marks” and the domain name “prestigesantafeproperties.com.” The Order, however, allowed defendant to use the words “Santa Fe” and “properties” in lower-case letters but only in descriptive text and not in juxtaposition.

Plaintiff later discovered that real-estate agents associated with defendant maintained a website at “santafefinerproperties.com.” Plaintiff notified defendant of this alleged violation of the Order, but defendant refused to cure or resolve the alleged violation. Plaintiff then moved for a show-cause order why defendant should not be held in contempt of the Order. Plaintiff also requested the court to order defendant to cease use of the domain name and the mark “Santa Fe Finer Properties”; to assign the domain name “santafefinerproperties.com” to plaintiff; to pay plaintiff’s reasonable attorney’s fees and costs in connection with this motion; and to enjoin defendant from continuing with its action to cancel plaintiff’s federal trademark registration for the SANTA FE PROPERTIES mark.

Trial Court Proceedings
The court ordered defendant to show cause why it should not be held in contempt. As an initial matter, the court addressed the meaning of the Order’s prohibition against use of the terms “Santa Fe” and “properties” in “juxtaposition.” Because “juxtaposition” means “placing close together or side by side,” the court held that the domain name “santafefinerproperties.com” violated this prohibition.

As its primary defenses, defendant collaterally attacked the validity of the Order and raised defenses that it did not raise earlier. For example, defendant argued that plaintiff’s registered marks were invalid because they contained highly descriptive words. But the court held that defendant’s arguments were an “impermissible collateral attack on the Court’s valid and binding [O]rder.” Defendant also argued that plaintiff did not allege actual confusion from defendant’s use of the domain name. The Order, however, did not require plaintiff to prove or even allege actual confusion.

Defendant next argued that the Order restricted only defendant’s use of plaintiff’s marks in metatags. The court disagreed, noting that the Order applied to “any media, including but not limited to metatags for website pages,” and that the Order also enjoined defendant’s use of a similar domain name. The court thus held defendant in contempt for violating the Order and ordered defendant to cease all use of the domain name “santafefinerproperties.com” and the name “Santa Fe Finer Properties,” and to pay plaintiff’s reasonable attorney’s fees and costs incurred in connection with the motion.

Plaintiff argued for the first time that the court should enjoin defendant from continuing to prosecute its action before the PTO to cancel plaintiff’s registered marks as an attempt to “run around” the Order. Because the Order did not contain an admission of infringement, defendant argued that it did not preclude defendant from seeking to cancel plaintiff’s mark. The court declined to enjoin the cancellation action, holding that the PTO was a more appropriate forum to address whether the Order precluded defendant’s attempts to cancel plaintiff’s mark.

Finally, the court denied plaintiff’s request that the court order defendant to transfer the domain name “santafefinerproperties.com” to plaintiff “[b]ecause there is a possibility that the domain name has some value, and the parties have not bargained for this transfer. . . .”

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.