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Keywords

plaintiffmotionsummary judgmenttrademarkconsumer protectionmotion for summary judgment
plaintiffmotionsummary judgmenttrademarkconsumer protectionmotion for summary judgment

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Philbrick v. eNom, Inc., 593 F.Supp.2d 352, 2009 DNH 010

Facts

Daniel J. Philbrick owns Dover Sports, Inc., a sporting goods retailer in New Hampshire, operating under the name 'Philbrick's Sports' since 1983. The plaintiffs allege that eNom, a domain name registration service, violated the Anti-Cybersquatting Consumer Protection Act and the Lanham Act by registering domain names similar to their trade name. The plaintiffs have used the 'Philbrick's Sports' mark for over twenty-five years and have invested significantly in advertising. However, they failed to establish that 'Philbrick's Sports' is a famous mark or that it has acquired secondary meaning necessary for trademark protection.

Since 1983, Philbrick has done business at that location under the name 'Philbrick's Sports,' which was registered as a trade name with the New Hampshire Secretary of State in 1992.

Issue

Did eNom's registration of domain names similar to 'Philbrick's Sports' violate the Anti-Cybersquatting Consumer Protection Act and the Lanham Act?

Did eNom's registration of domain names similar to 'Philbrick's Sports' violate the Anti-Cybersquatting Consumer Protection Act and the Lanham Act?

Rule

To establish a claim under the Anti-Cybersquatting Consumer Protection Act, a plaintiff must show that the mark is distinctive or famous and that the domain name is confusingly similar to the mark. Under the Lanham Act, a descriptive mark requires proof of secondary meaning to secure trademark protection. The likelihood of confusion is determined by various factors, including the strength of the mark and the similarity of the marks.

Retail plaintiffs' use of 'Philbrick's Sports' mark for twenty-five years and its sales to customers in all 50 states was insufficient to establish mark as a famous mark under the Anti-Cybersquatting Consumer Protection Act (ACPA).

Analysis

The court found that 'Philbrick's Sports' was not a famous mark under the ACPA and was merely descriptive, requiring proof of secondary meaning. The plaintiffs failed to demonstrate that the mark had acquired secondary meaning or that there was a likelihood of confusion among consumers regarding the domain names registered by eNom. The evidence presented did not support the claim that consumers were misled or confused by the domain names.

Retail plaintiffs' descriptive term, 'Philbrick's Sports,' had not acquired secondary meaning at the times provider of domain name registration services registered domain names similar to 'Philbrick's Sports,' as required to entitle mark to protected trademark status under the Anti-Cybersquatting Consumer Protection Act (ACPA); court could not infer, solely from similarities between the text of the links and the retailer's wares, that any of provider's 'philbricks' sites were part of an effort at 'passing off' someone else as the retailer.

Conclusion

The court granted eNom's motion for summary judgment, concluding that the plaintiffs did not meet the necessary legal standards to prevail on their claims.

The court grants eNom's motion for summary judgment and denies the plaintiffs' motion for summary judgment.

Who won?

eNom, Inc. prevailed in this case as the court found that the plaintiffs failed to establish that their trade name 'Philbrick's Sports' was a famous mark or that it had acquired secondary meaning. The court determined that the plaintiffs did not provide sufficient evidence to show a likelihood of confusion among consumers regarding the domain names registered by eNom, leading to the dismissal of the plaintiffs' claims under both the ACPA and the Lanham Act.

eNom, Inc. prevailed in this case as the court found that the plaintiffs failed to establish that their trade name 'Philbrick's Sports' was a famous mark or that it had acquired secondary meaning.

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