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Internet Trademark Case Summaries, Inc. v. Nvest, L.L.P.

32 Fed. Appx. 207 (9th Cir. 2002).

Plaintiff, owner of the mark NVST and the domain names "" and "," offered research services and investment opportunities for angel investors and others tracking merger and acquisition opportunities. Defendant offered mutual fund and other investment services for individual consumers, brokers, and dealers under the name Nvest. Before adopting the Nvest name, defendant negotiated a consent agreement with plaintiff that would permit defendant to use the name Nvest. In exchange for plaintiff's consent to defendant's use of Nvest, defendant agreed to: (1) give serious consideration to use plaintiff to establish defendant's website, (2) not use the domain name "," and (3) consult with plaintiff before establishing an Nvest-formative domain name so it would not conflict or cause confusion with plaintiff's "" name. After the consent agreement was executed, the parties did discuss the possibility of plaintiff creating and hosting defendant’s website, but defendant ultimately chose another vendor. Also after the agreement, defendant registered the domain names "" and "" Plaintiff sued defendant for trademark infringement and breach of the consent agreement for failing to seriously consider using plaintiff's services in establishing defendant's web presence and for failing to consult with plaintiff prior to registering the allegedly infringing domain names. The district court denied plaintiff's motion for preliminary injunction, holding that plaintiff was unlikely to prevail on both claims. The Ninth Circuit affirmed, holding that the district court did not abuse its discretion in denying plaintiff's motion for preliminary injunction. Regarding the breach-of-contract claim, plaintiff's own editorial changes to the consent agreement stated that defendant may use the "nvest" letter string in any manner it saw fit, "except as the Internet domain name" The record also established that defendant kept its promise to "give most serious consideration" to using plaintiff's Internet services. Moreover, because defendant promised only to consult with plaintiff before using any Nvest-formative domain names, there was no evidence that defendant would have acquiesced to any of plaintiff's objections to the chosen domain names or that plaintiff suffered any damage from any delayed notification. On the issue of trademark infringement, plaintiff complained on appeal that the district court did not consider all of the likelihood of confusion factors. The Ninth Circuit noted, however, that at the preliminary-injunction stage, the trial court was not required to consider all of the likelihood of confusion factors. It held that the district court correctly applied the three most important likelihood of confusion factors. First, the marks were dissimilar because plaintiff's NVST mark lacked the "e" found in defendant's Nvest mark, plaintiff's NVST mark typically appeared in all capital letters whereas defendant's Nvest mark usually appeared in title case, and defendant's domain names contained additional words alongside the "nvest" string. Second, the parties provided very different services to different clienteles. Third, although both parties used the Internet to market their services, their respective web pages looked considerably different and offered different products. Even when the court considered some of the other likelihood-of-confusion factors (actual confusion, degree of care exercised by purchasers, and likelihood of bridging the gap), plaintiff still failed to show a likelihood of confusion. Finally, plaintiff failed to show any evidence of irreparable harm.