Internet Trademark Case Summaries
Euromarket Designs, Inc. v. Crate & Barrel Ltd.
96 F. Supp. 2d 824 (N.D. Ill. 2000) (defendant’s motion to dismiss); 57 U.S.P.Q.2d 1094 (N.D. Ill. 2000) (plaintiff’s motion for contempt)
Plaintiff, owner of the popular Crate & Barrel retail home-furnishings chain, filed suit against the Irish-based defendants for federal and state trademark infringement. Defendant operated a retail home-furnishings store named “Crate & Barrel” in Dublin, Ireland, which was modeled after plaintiff’s business, and operated a website at the domain name “crateandbarrel-ie.com.” Defendant moved to dismiss the suit for lack of subject-matter jurisdiction and/or personal jurisdiction, and alternatively moved for a stay of this suit pending disposition of related litigation in Ireland and the U.K. The court denied the motion to dismiss, finding that subject-matter jurisdiction existed because defendant used the “Crate & Barrel” trademark “in connection with goods” offered for sale over the Internet. Furthermore, defendant used the “Crate & Barrel” trademark “in commerce” by contracting to sell goods offered at its website to an Illinois customer, by using plaintiff’s trademark in defendant’s domain name “crateandbarrel-ie.com,” by prominently displaying plaintiff’s trademark on several pages of their website, and by marking their labels and tags with plaintiff’s trademark. The court also denied defendant’s motion to stay, finding that: (1) the United States forum was convenient as demonstrated by defendant’s prior trips to Illinois to market its business and develop relationships with suppliers; (2) the separate suits did not amount to piecemeal litigation as each case involved claims under different countries’ trademark laws; (3) the United States suit was the first-filed suit; (4) the legal precedent for Lanham Act statutory and state statutory rights derived from federal case law; (5) plaintiff’s Lanham Act and Illinois state-law claims were not before the Irish and U.K. courts; (6) the United States has a strong interest in adjudicating the dispute; and (7) exercising jurisdiction would not interfere with the principles of international comity.
On June 21, 2000, the court permanently enjoined defendant from using the CRATE & BARREL mark, the “crateandbarrel-ie.com” and “crateandbarrel.ie” domain names, and any other confusingly similar marks or names in the United States and “on any website on the Internet.” The court entered a final judgment on August 3, 2000. Several weeks later, plaintiff brought a motion for contempt based on defendant’s continued use of the “crateandbarrel.ie” domain name and the CRATE AND BARREL mark on its website. Because defendant had actual knowledge of the injunction and final judgment, the court found defendant to be in “flagrant contempt.” The court imposed a $5,000 per day fine for so long as the contempt continued, and ordered the arrest of defendant’s president, and any others in active concert or participation with defendant, who enter the United States.