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CHATAM INTERN., INC. v. BODUM

August 7, 2001

CHATAM INTERNATIONAL, INC.
v.
BODUM, INC.



The opinion of the court was delivered by: Ludwig, District Judge.

  MEMORANDUM

In this action for violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125, trademark infringement, and trademark dilution, defendant Bodum, Inc. moves for summary judgment. Fed. R.Civ.P. 56(c).*fn1 Jurisdiction is federal question. 28 U.S.C. § 1331. The dispute involves competing claims for the use of the Internet domain name "Chambord" — in particular, defendant's registration and projected use of "Chambord.com." The motion will be granted, and this action will be dismissed.

Background

Plaintiff Chatam International, Inc., through its wholly owned subsidiary, Charles Jacquin et Cie., Inc., sells a raspberry liqueur as well as fruit preserves under the trademark "Chambord." Pltf. mem. at 4. Plaintiff also licenses the distribution of milk chocolate and cake under the Chambord mark. Id. October 31, 1975, is the date on which it first used the mark "Chambord Liqueur Royale" commercially. Pltf. exh. C. On February 8, 1977, it registered the mark "Chambord Liqueur Royale" with the U.S. Patent and Trademark Office, and the trademark certificate itself states that it "expressly asserted no claim" to the individual word "Chambord." Id. However, in 1984, it registered the mark "Chambord" for liqueur and for milk chocolate and, in 1986 and 1988, for fruit preserves and cake. Id.

As of 1981, Bon Jour Imports Corporation, defendant's predecessor in interest, sold French-press coffee makers under the mark "Cafetiere Chambord" and coffee under the mark "Café Chambord Coffee." Joint submission ¶ 24.*fn2 In that year, plaintiff instituted a trademark infringement action against Bon Jour in this court, which eventually was terminated by a consent decree. Id. ¶¶ 25-26, 29; Chatam International Inc. v. Bon Jour Imports, Civ. A. No. 81-5185 (E.D.Pa. March 11, 1982). The decree prohibited Bonjour's use of the mark "Café Chambord Coffee" for the sale of coffee as unfair competition, but accorded defendant the "right to continue to use the mark `Chambord' in connection with the sale and offering for sale of coffee makers."*fn3 Joint submission ¶¶ 29-31; pltf. exh. H(B). On May 17, 1983, defendant registered the mark "Cafetiere Chambord" for non-electric coffee makers, noting that commercial use had first occurred on September 8, 1980. Joint submission ¶ 33. On March 19, 1991, it registered "Chambord" for non-electric coffee makers, also dating the first commercial use back to 1980. Id. ¶ 36.

I. Anticybersquatting Consumer Protection Act

On November 29, 1999, the Anticybersquatting Consumer Protection Act, which amended the Lanham Act, became law. 15 U.S.C. § 1125(d). Under the Act, it is illegal to register a domain name that is the subject of trademark protection; and a private cause of action is created for "cyberpiracy."*fn7 The Act's predicate is bad faith. Id. The statute lists factors to be considered in determining bad faith. These include: the registrant's trademark or other intellectual property rights in the domain name; its prior use of the name for the bona fide offering of goods or services; its intent to divert consumers from the mark owner's online location; its offer, if any, to sell the domain name for financial gain without having used, or intended to use, the domain name for the bona fide offering of any goods or services; its having given false or misleading identifying information when registering the name; its registration of other domain names that are confusingly similar to other distinctive marks; and the fame of the owner's mark. 15 U.S.C. § 1125(d)(1)(B)(i). See also Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001) (finding bad faith); Northern Light Technology v. Northern Lights Club, 236 F.3d 57 (1st Cir. 2001), cert. denied, ___ U.S. ___, 121 S.Ct. 2263, 150 L.Ed.2d 247 (2001) (finding bad faith in light of numerous domain name registrations, disregarding cease and desist letters, and offering to sell the domain name "at the right price").

The statute demarcates a safe harbor: "Bad faith intent . . . shall not be found in any case in which the court determines that the [registrant] believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful." 15 U.S.C. § 1125(d)(1)(B)(ii).

Here, as of 1991, defendant Bodum, Inc. obtained a valid, subsisting trademark of the name "Chambord" relative to non-electric coffee makers. Joint submission ¶¶ 36-37. The 1982 consent decree can also be read to have authorized the use of the mark for that purpose, id. ¶¶ 29-31; and the proposed site for Chambord.com is confined to the sales and advertising of coffee and tea makers. http://212.59.148.138. There is no evidence that defendant misrepresented itself in the registration of the domain name, or that it registered other confusing domain names. Under the Act, a triable issue of bad faith would be speculative and remote with little support in Rule 56 proffers.*fn8 While defendant's use of "Chambord" is limited to a line of products and to a particular model, or type, within that line, plaintiff's use of the same name is also attached to particular products. The Act does not differentiate between categories of goods and services or the various applications or uses of a trade name. If anything, defendant appears to be exculpated from cyberpiracy on the basis that it reasonably believed the use of the name "was fair . . . or otherwise lawful." 15 U.S.C. § 1125(d)(1)(B)(ii); see e.g., Hartog & Co. AS v. SWIX.com, 136 F. Supp.2d 531, 542 (E.D.Va. 2001) (finding no ACPA bad faith violation where defendant operated a legitimate business at the website and had some Swiss trademark rights to the name).

As structured, the Act leaves open the present combination of circumstances — in which both parties can invoke legitimate grounds for the registration of the same domain name for their respective products.*fn9 The Act could have required the sharing of a website directory screen for this kind of same-name situation, with links to each of the individual registrant's websites, but it did not do so.

II. Federal and State Trademark Infringement and Unfair Competition

The elements of trademark infringement are (1) the mark is valid and legally protectable; (2) the ownership of the mark by plaintiff; and (3) defendant's use of the mark to identify goods or services is likely to produce confusion as to the origin of the goods or services. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000); Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 472 (3d Cir. 1994). Likelihood-of-confusion is the essence of federal and Pennsylvania trademark infringement as well as unfair competition. A & H Sportswear, 237 F.3d at 210 ("We measure federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15 U.S.C. § 1125(a)(1)(A), by identical standards."); Fisons, 30 F.3d at 473 (likelihood-of-confusion is the test under both the trademark infringement and unfair competition sections of the Lanham Act); Patient Transfer Systems, Inc. v. Patient Handling Solutions, Inc., 1999 WL 54568, *4 (E.D.Pa. Jan.29, 1999) (Pennsylvania unfair competition and trademark infringement have the same elements as Lanham Act violations except that goods need not have traveled in interstate commerce) (citing Fisons).

Where, as here, both parties have legally protectable marks but the products are non-competing, our Court of Appeals has formulated the following non-exhaustive, 10-factor inquiry as to likelihood-of-confusion:*fn10

(1) degree of similarity between the owner's mark and the ...

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