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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Garden of Life, Inc. v. Barry Letzer, et al.

Case No. CV 04-2619AHM (MANx) (C.D. Ca., May, 2004)

Plaintiff Likely To Prevail On Trademark Infringement And Anticybersquatting Consumer Protection Act Claims As A Result Of Defendant's Registration Of Domain Name Containing Plaintiff's Trademark

Finding plaintiff likely to prevail on claims of trademark infringement and cybersquatting, Court issues preliminary injunction directing defendants, purported competitors operating a business under the same name as plaintiff, to transfer to plaintiff 74 domain names which contain plaintiff's trademarks or variations thereof, during the pendency of this suit.  The Court further directed plaintiff to remove the existing content on the sites found at those domains and replace it with an "under construction" notification, and pay all registration fees for these domains which may become due.  The Court reached this result notwithstanding the fact that defendants had registered the main domain at issue,, before plaintiff commenced its use of that mark in commerce.  On this motion, the Court rejected defendants' claim that they had been using the mark "gardenoflife" in commerce continuously since 1974.  The Court found instead that defendants' use of the mark did not commence until after plaintiff's.  As a result, and because defendants registered many of the domains at issue after plaintiff had entered into negotiations with defendants for the purchase of the name, which domains contained variations of plaintiffs marks unrelated to defendants' business, the court found plaintiff likely to prevail on claims of trademark infringement and cyberquatting.

Defendant Registers Domain Name Before Plaintiff Commences Use Of Trademark

Plaintiff, Garden of Life, Inc., a Florida corporation, is the owner of a registered Federal trademark in "Garden of Life," which mark it has used since May 2000 to market both nutritional supplements and information about human health.  Plaintiff was incorporated by Jordan Rubin, author of 'The Maker's Diet," a New York Times best seller.  Plaintiff has sold over $40 million worth of products since May 2000 under the "Garden of Life" mark, and expended over $6 million promoting the mark.  Plaintiff sells its products through a number of marketing channels, including the Internet, on which it operates a web site at

Defendants are the owners of a Washington corporation of the same name as plaintiff, Garden of Life Inc., which was incorporated some five years earlier, in 1995.  In July 1997, defendants registered the domain name  Notwithstanding defendants' claims to the contrary, the court found, on this motion, that defendants did not continuously use the "garden of life" mark in commerce prior to May 2000, when plaintiff commenced its use.  Significantly, defendants did not operate a web site at its "" domain before February 2004 (prior to that time the site reported simply that it was "under construction") and filed declarations with the State of Washington in 2000 and 2001 which stated that the corporation had not done any business since its incorporation.

Defendant Registers Additional Domains With Variations Of Plaintiff's Trademark

In November 2000, plaintiff contacted defendants in the hopes of acquiring the gardenof domain.  During the pendency of these ultimately unsuccessful negotiations, in late 2003, defendants registered 74 additional domain names, which contained variations of both its domain, as well as plaintiff's name, and the Maker's Diet.  In February 2004, defendants commenced operation of a web site at gardenof, promoting their company as one which "provide[d] holistic living and vibrant health" but apparently not offering any products or services for sale.

In April, 2004, defendants redesigned their site, posting a banner ad which linked to sites selling plaintiff's products, as well as articles critical of plaintiff's products and links to sites selling competitors' products.

In response to a cease and desist letter, defendants removed the banner ad and some of the negative articles.

Plaintiff thereafter commenced this suit, charging defendants, inter alia, with trademark infringement and violation of the Anticybersquatting Consumer Protection Act ("ACPA").  Plaintiff sought a preliminary injunction, enjoining defendants from continuing to use the mark to market health products or services, and directing them to take down their web sites and transfer the disputed domains to plaintiff.

Plaintiff Senior User Of Trademark

The Court found that plaintiff was likely to prevail on its claim that it was the senior user of the "garden of life" mark.  "To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services."  For a user of the mark to prevail over a registered trademark holder, the user must show "that it was the first to use the mark in commerce and that it has made continuous use of the mark since then. …  Trademark rights are not created by sporadic, casual, and nominal shipments of goods bearing a mark.  There must be a trade in the goods sold under the mark or at least an active and public attempt to establish such a trade." 

For the purpose of this motion, the Court found that defendants had not met this burden.  Defendants claimed that they had used "Garden of Life" in commerce since 1974 in various ventures, including a business that sold both devices for growing "sprouts" at home and health food products (1974-78 and sporadically thereafter); offered seminars on sprouting (1974-84) sold water purifiers (on and off until 1988) and ran health and wellness seminars (1992 - 2003).  However, defendants' evidentiary showing was not supported by advertisements, invoices or tax returns, and was contradicted by the evidence recited above, which supported a finding that defendants did not start using the mark before plaintiff's use in March 2000.

Likely To Prevail On Trademark Infringement And Anitcybersquatting Consumer Protection Act Claims

As a result of its senior use, the Court found that plaintiff was likely to prevail on both its trademark infringement claims (the parties' marks were identical, were used to market products in the same health care arena via the same market channel, as to which use there was evidence of actual consumer confusion) and its ACPA claims (defendants' registration of a host of names geared solely to plaintiff's business, including domains containing variations of The Makers Diet, "reeks of bad faith.")  The Court accordingly issued a preliminary injunction, directing defendants, during the pendency of the suit, to transfer the disputed domains to plaintiff, under the proviso that plaintiff remove all existing content therefrom and replace it with an 'under construction' site and pay all registration fees that might come due during the pendency of the suit.  Additional injunctive relief would be determined either by stipulation of the parties or, failing that, by order of the Court.

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