Internet Trademark Case Summaries
Investools, Inc. v. Investtools.com
2006 WL 2037577 (E.D. Va. July 17, 2006)
Plaintiff offered investor information and training services under the registered mark INVESTOOLS and operated a website at “investools.com.” Plaintiff brought an in rem action for cybersquatting against the domain names “investtools.com” and “investtool.com,” both of which were owned by a Canadian company and which linked to websites that promoted and sold investor training services. After filing suit, plaintiff sent copies of the complaint to the registrant’s e-mail and postal addresses. Plaintiff filed a motion for summary judgment, and the registrant did not file any response. The court denied the motion because plaintiff established only three of the four required elements. Plaintiff established: (1) that jurisdiction was proper in this court because the registry for .com domain names was located in this district, (2) that it was unable to obtain personal jurisdiction over the registrant, and (3) the elements of trademark infringement under 15 U.S.C. § 1125(a), noting that the registrant used “virtually identical” domain names for the same services to create a “significant likelihood of confusion.” However, plaintiff failed to establish the “service of process” requirement of 15 U.S.C. § 1125(d)(2)(A)(ii)(II). Although plaintiff satisfied subpart (aa) by sending the complaint to the registrant at both its postal and email addresses, it took no steps to satisfy the “mandatory” publication requirement of subpart (bb). The court thus denied plaintiff’s motion and indicated it would not grant it until plaintiff published a notice of this action in Canada where the registrant resided. It does not appear that plaintiff moved for a waiver of the publication requirement, which this court had granted in earlier cases, including Continental Airlines and Harrods.