Internet Trademark Case Summaries
Spear, Leeds & Kellogg v. Rosado
122 F. Supp. 2d 403 (S.D.N.Y. 2000).
Plaintiff, a prominent securities-brokerage firm, owned the federally registered trademark REDI for electronic-securities services and the common-law mark REDIBOOK for online stock-trading services. Defendant registered numerous domain names, including “redibook.com” and various “redi”-formative names, and used the “redibook.com” domain name for an online stock-trading website, which displayed the logos of, and hyperlinks to, a number of plaintiff’s competitors. Plaintiff brought suit for trademark infringement, false designation of origin, and cybersquatting. The court held that defendant’s actions constituted trademark infringement, false designation of origin, and cybersquatting, finding that the REDI and REDIBOOK marks were distinctive, and defendant’s domain names were confusingly similar to plaintiff’s marks. Regarding the bad-faith element of plaintiff’s ACPA claim, the court noted that defendant lacked intellectual-property rights in the REDI or REDIBOOK mark, defendant never used either of these marks before plaintiff, and defendant had registered numerous domain names consisting of third-party trademarks. The court permanently enjoined defendant from using the name “redibook.com,” any designation including the mark REDI, and any confusingly similar designation, and ordered defendant to transfer to plaintiff all of his domain names containing “REDI” or “REDIBOOK.”