Opinion
Civil Action No. 01-72819
November 26, 2001
ROBERT C.J. TUTTLE, MARIA F. ANGILERI, BROOKS KUSHMAN P.C., Southfield, Michigan, and GREGORY D. PHILLIPS, SCOTT R. RYTHER, HOWARD, PHILLIPS ANDERSEN, Salt Lake City, Utah, Attorneys for Plaintiff.
John R. Benefiel, LAW OFFICES OF JOHN R. BENEFIEL, Birminham, Michigan, and Phillip C. Samouris, HIGGS, FLETCHER MACK LLP, San Diego, California, Attorneys for Defendants.
FINAL JUDGMENT AND PERMANENT INJUNCTION
I. INTRODUCTION
Plaintiff General Motors Corporation ("GM") brought this action against defendants E-Publications LLC ("E-Publications"), John Bennett ("Bennett"), and Al Peterson ("Peterson) (collectively "Defendants") to enjoin Defendants from: (1) misappropriating and using the Internet domain names RESTOREGM.COM and RESTOREGMMUSCLE.COM, (2) misappropriating and using the world-famous "GM" logo and trademark on the Internet and otherwise, and (3) misappropriating and using the names "Restore GM" and "Restore GM Muscle" in their business name or dba for their business specializing in parts for GM vehicles. Pursuant to Rule 41(a)(1), the parties hereby stipulate to the dismissal without prejudice of GM's claims against Bennett and Peterson.
In this lawsuit, GM asserts claims for trademark dilution, trademark infringement, false designation of origin, false advertising, and cyberpiracy under the Lanham Act ( 15 U.S.C. § 1051 et seq.), including the amendment to the Lanham Act known as the Anticybersquatting Consumer Protection Act enacted on November 29, 1999. The parties stipulate to the following findings of fact and conclusions of law, and consent to entry of a permanent injunction as set forth below. Accordingly, the Court enters the following:
II. FINDINGS OF FACT
GM is a Delaware corporation with its principal place of business in Detroit, Michigan. Defendant E-Publications LLC is a California Limited Liability Company with its principal place of business in San Diego, California.
For many years, GM and its predecessors in interest have used various trademarks, service marks, and trade dress in connection with the advertisement and sale of automobiles and related products and services, including automobile maintenance and repair services.
GM has obtained numerous trademark registrations for the trademark GM® and the logo "GM" from the United States Patent and Trademark Office (hereinafter collectively the "GM Marks"). These registrations are valid, unrevoked, subsisting, and have become incontestable in accordance with 15 U.S.C. § 1065 and 1115(b).
GM and its predecessors have spent hundreds of millions of dollars and have expended significant effort in advertising and promoting authorized GM products and services and in developing the GM Marks throughout the world. As a result of such advertising and expenditures, GM has established considerable goodwill in the GM Marks, and the GM Marks have become famous and distinctive. The GM Marks have become widely known and recognized as the symbols of high quality vehicles and services.
GM and its authorized dealers and licensees are the only parties authorized to use the GM Marks in connection with the sale, distribution, or advertising of any automotive products and services.
Defendant E-Publications is not in any way affiliated with, authorized, or sponsored by GM and has no authority to use the GM Marks. Despite its lack of affiliation, authorization, or sponsorship, and despite objection by GM, E-Publications has used and continues to use the GM Marks.
E-Publication's use of the GM Marks is in connection with its advertisement and sale of parts and services for GM® automobiles. GM itself also offers parts and services for GM® automobiles.
III. CONCLUSIONS OF LAW
The Court has subject matter jurisdiction over this lawsuit under 28 U.S.C. § 1331 and 1338(a) as such claims for relief are brought under federal trademark laws, specifically sections of the Lanham Act, 15 U.S.C. § 1051 et. seq.
GM's registration and use of each of the GM Marks in connection with the automotive products and services it offers establishes GM's exclusive right to use such trademarks for such automotive products and services. 15 U.S.C. § 1115 (a); Ford Motor Company v. Ford Financial Solutions, Inc., 103 F. Supp.2d 1126, 1128 (N.D.Iowa 2000); United We Stand America, Inc. v. United We Stand, American New York, Inc., 128 F.3d 86, 93 (2d Cir. 1997). This exclusive right empowers GM to prevent third parties from using any name or mark that is likely to cause confusion with the GM Marks. 15 U.S.C. § 1114 and 1116; Ford Motor, 103 F. Supp. at 1128.
An automobile manufacturer has the right to prohibit the use of its trademarks in the business name of a business providing parts and/or services for its automobiles such as the business names "Restore GM" and "Restore GM Muscle." See Porsche Cars North America, Inc. v. Manny's Porshopine, Inc. 972 F. Supp. 1128 (N.D.Ill. 1997) (enjoining use of the name "Porshop" in name of automobile repair shop specializing in repair of Porsche cars); Volkswagenwerk A.G. v. Brewer, 170 U.S.P.Q. 560 (D.Ariz. 1971) (enjoining use of term "Volkscity Service Center" in name of repair shop specializing in servicing Volkswagens); Volkswagenwerk A.G. v. Karadizian, 170 U.S.P.Q. 565 (C.D.Cal. 1971) (enjoining use of the name "Volkswagen Village" on used car outlet, despite the fact that defendant used a disclaimer stating "Used cars only; not a franchised Volkswagen dealer"); Ford Motor Co. v. Helms, 25 F. Supp. 698 (E.D.N.Y. 1938) (enjoining use of the trademark "Ford" on signage of independent dealer); Ford Motor Co. v. Benjamin E. Boone, Inc., 244 F. 335 (9th Cir. 1917) (enjoining use of the name "Ford Auto Agency" on signage of independent dealer). "[C]ourts have repeatedly held . . . repair shops to be guilty of trademark infringement or unfair competition where . . . such establishments use or imitate the manufacturer's name or mark in their trade names," Porsche Cars, 972 F. Supp. 1128, 1131 (quoting Dr. Ing. h.c.F. Porsche AG v. Zim, 481 F. Supp. 1247, 1250 (N.D.Tex. 1979)), because consumers naturally assume that the independent shop is affiliated with or somehow sponsored by the manufacturer. Here, consumers will assume that a business that uses the GM Marks in offering parts and services for GM automobiles is affiliated with or sponsored by GM.
Moreover, E-Publications' use of a script and logo that is confusingly similar to the script used by GM further violates GM's trademark rights. One may not use the distinctive script of a trademark holder. Porsche Cars North America, Inc. v. Manny's Porshop, Inc., 972 F. Supp. 1128, 1130-32 (N.D.Ill. 1997) (enjoining defendant from using Porsche's stylized script in signage, advertisements, and otherwise). Courts consistently have held that "the use of another's style or script constitutes presumptive evidence of deliberate copying and an intent to confuse." Id. at 1132.
In addition, E-Publications' use of the Internet domain names RESTOREGM.COM and RESTOREGMMUSCLE.COM violates GM's trademark rights. Courts consistently have held that a defendant violates a plaintiff's trademark in registering a domain name that incorporates the plaintiff's famous mark, particularly where the defendant has no intellectual property rights in the mark and the defendant offers the same products or services offered by the plaintiff trademark holder. E.g., Harrods Limited v. Sixty Internet Domain Names, ___ F. Supp. ___, 2001 WL 739885 (E.D.Va. June 27, 2001) (holding that variations of domain names using the trademark HARRODS do "not diminish the similarity of the defendant Domain Names to the HARRODS mark" and "noting that among the various forms of cybersquatting is the registration of `another's mark or name as part of a domain name, such as "dellspareparts.com" for a business selling spare parts for Dell computers") (quoting Steven R. Borgman. The New Federal Cybersquatting Laws, 8 Tex.Intell.Prop.L.J. 265, 266 (2000)). See also, Washington Speakers Bureau v. Leading Authorities, 33 F. Supp.2d 488, 499 (B.D.Va. 1999); Green Products v. Independence Com By-Products, 992 F. Supp. 1070 (N.D.Iowa 1997). Under such circumstances, the consumer confusion noted by the courts arises from the fact that "a domain name is more than a mere internet address"; it "identifies the internet site to those who reach it, much like . . . a company's name identifies a specific company." Cardservice International, Inc. v. MeGee, 950 F. Supp. 737, 741 (B.D.Va. 1997), aff'd, 129 F.3d 1258 (4th Cir. 1997). A domain name is analogous to a billboard on the information superhighway or an indexed listing in a telephone directory. As noted in detail above, the law is well-settled that Defendant could not list itself under "GM" in a telephone directory or use the trademark "GM" on a billboard in such a way as to suggest affiliation with or sponsorship by GM. See Porsche Cars North America v. Manny's Porshop, 972 F. Supp. 1128, 1129 (N.D.Ill. 1997) (holding that defendant's use of the name "Manny's Porshop" on his signage, business name, and telephone listing constituted infringement and dilution, despite the fact that defendant was in the business of servicing Porsche automobiles); American Airlines. Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp. 673 (N.D.Ill. 1985) (holding that defendant's use of telephone number 1-800-AMERICAN constituted infringement of American Airlines' trademark even though defendant sold American Airlines tickets).
Accordingly, E-Publications' use of the GM Marks is likely to cause potential purchasers of E-Publications' products and services, as well as the public at large, to believe that E-Publications' services and products are affiliated with, authorized, sponsored by, or endorsed by GM.
Finally, E-Publications' use of the GM Marks also dilutes the distinctive quality of the GM Marks. Dilution is the "lessening of the capacity of a famous mark to identify and distinguish goods or services," 15 U.S.C. § 1125 (c). See Ford Motor, 103 F. Supp.2d at 1129, Because GM has spent hundreds of millions of dollars in advertising and marketing the GM Marks, there can be no doubt that the trademark GM ® is one of the most famous marks in the world. Indeed, the trademark GM ® is one of the prototypically "famous" marks that Congress had in mind when it expanded federal trademark protection to encompass protection from dilution. See Michael Caruso Co., Inc., v. Estefan Enterprises, Inc., 994 F. Supp. 1454, 1463 (S.D.Fla. 1998) (concluding that Congress intended to protect from dilution marks that "rise to the level of `Buick' or `Kodak.'"), aff'd 166 F.3d 353 (11th Cir. 1998).
B-Publications' use of a disclaimer does not excuse E-Publications' violations of GM's trademark rights. Bven where disclaimers are conspicuous, courts have recognized that they are:
insufficient to avoid consumer confusion in the marketplace. Indeed, courts are so skeptical about the effectiveness of disclaimers that the burden has been shifted from the mark owner to show how a disclaimer would not prevent confusion, to the infringer to show that the disclaimer would prevent confusion. Furthermore, disclaimers will never remedy dilution because consumer confusion is irrelevant in establishing a dilution claim.Liquid Glass Enterprises, Inc., v. Dr. Ing. h.c.F. Porsche AG and Porsche Cars North America, Inc., 8 F. Supp.2d 398, fn 5. (D.N.J. 1998) (citations omitted). As another court has noted:
ICBP's argument is analogous to saying that ICBP has the right to hang a sign in front of its store that reads, "Green Products." When customers enter the store expecting to be able to see (and possibly, to buy) products made by Green Products, ICBP then announces, "Actually, this store isn't owned by Green Products; it's owned by ICBP. . . ." In essence, ICBP is capitalizing on the strong similarity between Green Products' trademark and ICBP's domain name to lure customers onto its web page.Green Products Co. v. Independence Com By-Products Co., 992 F. Supp. 1070, 1076. (N.D.Iowa 1997).
Thus, B-Publications' use of the GM Marks as discussed above, constitutes trademark dilution, trademark infringement, false designation of origin, false advertising, and cyberpiracy. For the reasons set forth above, GM is entitled to injunctive relief, and it is hereby Ordered that B-Publications, its employees, agents, successors and assigns, and all those in active concert and participation with them, are permanently enjoined from: (1) misappropriating and using the Internet domain names RESTOREGM.COM and RESTOREGMMUSCLE.COM; (2) misappropriating and using the world-famous "GM" logo and trademark on the Internet, in advertisements, and otherwise; (3) misappropriating and using the names "Restore GM" and "Restore GM Muscle" as the "d.b.a. name for the business" specializing in parts for GM vehicles; and (4) otherwise violating GM's trademark rights except for fair uses of GM's trademarks as set forth in the settlement agreement between the parties. B-Publications is further ordered to transfer to GM the registrations for the domain names RESTOREGM.COM and RESTOREGMMUSCLE.COM, and any other domain names that use the GM Marks, or that use words confusingly similar to any of the GM Marks. B-Publications is further ordered to pay GM's attorneys' fees and costs incurred in this action in the amount of $13,646.34.
SO ORDERED AND ADJUDGED.