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Podcasts, Inc. v. Communication House Int'l, Inc.

Plaintiff operated an Internet telephone directory site under the federally registered mark “”  Plaintiff alleged that defendant’s registration of the domain name “” infringed plaintiff’s trademark.  On the parties’ cross-motions for summary judgment, the court granted defendant’s motion on the issues of validity and infringement.  Defendant successfully rebutted the presumption of validity provided by plaintiff’s federal registration by showing that “555-1212” was widely recognized for nonlocal directory assistance and 123 domain names existed that contained the characters 555 and 1212. Defendant argued that “” was generic or, alternatively, that it was descriptive and had not acquired secondary meaning. The court was unable to make a finding of genericness because defendant failed to present “any substantial” evidence illustrating consumer perception of the domain name.  The court did find, however, that “” was merely descriptive of plaintiff’s nonlocal directory assistance services and that plaintiff failed to establish secondary meaning.  The court rejected plaintiff’s secondary-meaning evidence, which consisted primarily of the ranking of its “” website as one of the most frequently visited websites and defendant’s offer to sell its domain name to plaintiff.  The fact that a large number of Internet users visited plaintiff’s site did not establish that consumers “perceive plaintiff’s domain name as a brand name instead of a merely descriptive Internet address.”  Similarly, defendant’s offer to sell the domain name to plaintiff, an inadmissible settlement communication, was not “probative of consumer perception.”  Even if plaintiff’s mark was valid, plaintiff failed to prove its infringement claim on two grounds. First, plaintiff submitted no evidence that defendant used the domain name “” in commerce. The mere registration of a domain name “without use in connection with any commercial enterprise” was not sufficient to establish infringement.  Second, plaintiff failed to provide sufficient evidence of likelihood of confusion.  Although plaintiff alleged widespread actual confusion and the lack of third-party use of similar marks, it failed to submit any evidence to support these allegations.