A.B.C. Carpet Co. v. Naeini, 2002 U.S. Dist. LEXIS 1129 (E.D.N.Y. Jan. 22, 2002).
Plaintiff provides retail-store services offering carpets, rugs, and other home goods. Plaintiff offered these services under the marks ABC and A.B.C. CARPET since 1961, and under ABC CARPET & HOME since 1992. Defendant registered the domain name "abccarpetandhome.net" for his carpet and home-restoration business, which has offered carpet-cleaning services under the "American Basic Craft" name since 1980. Defendant had previously conducted business with plaintiff and knew of its use of the marks ABC and ABC CARPET & HOME. Plaintiff sued defendant, alleging infringement, unfair competition, dilution, cybersquatting under the ACPA, and several state claims.
Trial Court Proceedings
The court denied plaintiff's motion for summary judgment on its federal claims. The court held that plaintiff was not entitled to summary judgment on its infringement and unfair competition claims because a genuine issue of fact existed on defendant's intent in registering the domain name "abccarpetandhome.net," as defendant claimed that he adopted his business name long before registering the domain name.
Similarly, the court concluded that summary judgment was inappropriate on plaintiff's cybersquatting claim because there was a genuine issue of fact on whether defendant registered the domain name in bad faith. Finally, the court also denied summary judgment on plaintiff's dilution claim, holding that plaintiff failed to establish that its marks were "famous" under the FTDA. Plaintiff did not establish the type of national "household" name recognition required by the FTDA and its sales and advertising expenditures were lower than other those of companies whose marks were found insufficiently famous.
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