Internet Trademark Case Summaries
Rohr-Gurnee Motors, Inc. v. Patterson
71 U.S.P.Q.2d (N.D. Ill. 2004)
Plaintiff, a car dealership, sold defendant a car that developed a number of mechanical problems. Defendant registered the domain names “gurneevolkswagen.com” and “gurneevolkswagon.com” and used them for a website to exercise her First Amendment rights and to inform people about her experience with plaintiff so that others could learn from it. The website indicated that it was not affiliated with Volkswagen Corporation or plaintiff and provided a link to plaintiff’s website for consumers who were looking for plaintiff but reached defendant’s site in error. Plaintiff sued defendant for cybersquatting and moved for a preliminary injunction. Plaintiff did not assert any infringement claims. The court denied plaintiff’s motion, finding that plaintiff did not have a better than negligible chance of success on the merits of its cybersquatting claim. Specifically, the court found that the name GURNEE VOLKSWAGEN was not entitled to trademark protection because it was merely descriptive and had not acquired secondary meaning. Plaintiff did not own “Gurnee” because it is the name of a municipality in Illinois so that the name GURNEE VOLKSWAGEN “describes the brand of automobile and the location where the product can be obtained.” Moreover, Volkswagen Corporation owned the trademark VOLKSWAGEN. Regarding secondary meaning, plaintiff did not submit any consumer surveys, and its inconsistent advertising over a five-year period was insufficient to prove secondary meaning. Even if the mark were protectable, the court ruled that plaintiff’s motion would still fail because defendant “reasonably believed that her use of the domain names was a fair use or otherwise lawful.” Plaintiff thus failed to show that defendant had the bad-faith intent to profit from plaintiff’s mark required to prove cybersquatting. In particular, defendant never used her website to extort plaintiff; there was no showing that the statements on her site were untruthful; she made clear that she was commenting only as one consumer; and she posted a link to plaintiff’s site on her site for any users who were looking for plaintiff and instead reached defendant’s site. A few months later, the court granted plaintiff’s motion to dismiss the complaint with prejudice. At issue in this decision was defendant’s motion for attorney’s fees. The court awarded defendant attorney’s fees, noting that plaintiff’s continuation of the suit for four months after the denial of the preliminary injunction was “oppressive” because it was clear that plaintiff’s motion case lacked merit when the court denied plaintiff’s motion for preliminary injunction.