Both parties provided student tour and travel services. Plaintiff owned the federally registered mark ET EDUCATIONAL TOURS, INC and used the domain name “et-educationaltours.com” to promote its business. Defendants later registered the domain names “et-educationaltours.net,”
“et-educationaltours.us,” “e-educationaltours.com,” and “e-educationaltours.net.” Plaintiff sued for infringement and cybersquatting (typosquatting in particular). Defendant moved to dismiss, arguing that the “Educational Tours” part of plaintiff’s mark was generic and that the validity of plaintiff’s mark should be based on the prefixes “et” or “e.” The court denied defendants' motion, noting that a trademark must be evaluated as a whole and not based on its parts. Moreover, because genericness is a question of fact, it was not appropriate for disposition on a motion to dismiss. Further, the court found that plaintiff had sufficiently alleged that defendants’ registration and use of the disputed domain names infringed plaintiff’s trademark and that defendants engaged in typosquatting. The court also rejected defendants’ argument that plaintiff’s claims were moot because they orally accepted plaintiff’s demand to relinquish two of the domain names and voluntarily stopped using the websites, but that plaintiff refused these offers. The court noted that defendant failed to comply with plaintiff’s demands (e.g., plaintiff’s demands applied to three domain names, not two; plaintiff asked for a written response, not an oral one). Accordingly, because defendant failed to agree to plaintiff’s terms and plaintiff did not agree to defendant’s counteroffer, plaintiff’s claims were not moot.