Court Denies Preliminary Injunction in Domain Name Trademark Case

This is a recently published opinion in a trademark case involving a dispute over the use of the name “Jupiter Hosting” by Santa Clara, California-based Internet firm Jupiter Hosting, Inc. The name “Jupiter Hosting” is similar to the trademark “JUPITER” registered with the U.S. Patent and Trademark Office (PTO) by Jupitermedia Corporation, an Internet research company based in Darien, Connecticut. On May 7, 2004, Jupiter Hosting filed a complaint in U.S. District Court for the Northern District of California seeking a declaratory judgment that it was not violating Jupitermedia Corp.’s intellectual property rights by conducting business under the name “Jupiter Hosting” and maintaining the website “www.jupiterhosting.com.” On July 16, 2004, Jupitermedia filed a motion for a preliminary injunction against Jupiter Hosting, alleging its use of that name violated the Lanham Act, the Anticybersquatting Consumer Protection Act (ACPA), and California’s Unfair Competition Law. The court denied the motion, finding that Jupitermedia did not have a high probability of success on the merits and that it failed to show it would suffer irreparable injury without the injunction.To obtain a preliminary injunction, the court stated, a party must show either (1) probable success on the merits and the possibility of irreparable harm or (2) serious questions on the merits and a showing that the balance of hardships weighs heavily towards the moving party. The court then analyzed whether these criteria could be met under the Lanham Act, the ACPA, or California’s Unfair Competition Law.
The Lanham Act, in relevant part, imposes civil liability for the commercial use of any “reproduction, counterfeit, copy, or colorable imitation of a registered mark” where such use “is likely to cause confusion, or to cause mistake, or to deceive.” In examining the likelihood of confusion, the court first looked primarily to three factors identified by the Ninth Circuit to be of particular importance in Internet cases: (1) similarity of the marks, (2) relatedness of the goods and services, and (3) use of the Internet as a marketing channel. The court found that these factors suggested that Jupiter Hosting’s name was likely to cause confusion under the Lanham Act; however, these factors were balanced by another factor, strength of mark, because the market was saturated by many firms that were using variants of the name “Jupiter.” Thus, Jupitermedia could not show a probability of success on the merits. Having found that serious questions on the merits were raised, however, the court then looked to the balance of hardships. The court found that an injunction might impose a serious burden on Jupiter Hosting, while Jupitermedia could not show that similar injury might occur. Thus, the balance of hardships did not heavily weigh in Jupitermedia’s favor.
The court next examined the Anticybersquatting Consumer Protection Act (ACPA), which holds a person civilly liable for a “bad faith intent to profit from” a registered mark coupled with registration of a domain name that is either identical or “confusingly similar” to the registered mark. The court held that the “confusingly similar” clause of the ACPA was close to the meaning of the “likelihood of confusion” standard used in the Lanham Act, and therefore Jupitermedia was no more likely to succeed in its claim under the ACPA than under the Lanham Act.

Finally, the court examined California’s Unfair Competition Law, which borrows violations from other laws and makes them actionable as unfair business practices. Because Jupitermedia had not shown a substantial probability of success under other laws, the California Unfair Competition Law could not be used to make a state law claim. The court thus denied the motion for preliminary injunction. In August 2005 the parties stipulated to dismissal of all claims and counterclaims.