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Internet Trademark Case Summaries

Edgar Online v. Parisi

CV-99 2288 (D.N.J. June 4, 1999)

Plaintiff used the unregistered trademark EDGAR ONLINE and the domain name “edgar-online.com” since 1995 for a fee-based service relating to the SEC’s EDGAR database.  Plaintiff’s use of “EDGAR” was under license from the SEC.  Defendant registered the domain name “edgaronline.com” in 1996, but did not commence his free, less-sophisticated online service also concerning the EDGAR database until April 1999.  The court rejected defendant’s argument that plaintiff’s EDGAR ONLINE mark was generic, instead finding that at worst it was descriptive and likely had acquired secondary meaning.  The court then found a likelihood of confusion and thus a violation of Section 43(a) of the Lanham Act because the names were virtually identical; the services, channels of trade, and customers were similar; and defendant intended to cause confusion.  The court rejected defendant’s fair-use argument that the “edgar-online.com” domain name was an accurate description of his services, finding no legitimate purpose for his purchase and unlicensed use of the domain name.  Finally, defendant’s First Amendment argument was rejected because the domain name indicated a source of origin, not a communicative message.