Internet Library of Law
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Green Products Co. v. Independence Corn By-Products Co.

Plaintiff and defendant are competitors in the corn by-products industry. Defendant registered the domain name "greenproducts.com" which was markedly similar to plaintiff's federally registered trademark "Green Products." Defendant alleged that it intended to post a website at "greenproducts.com" that would "distinguish [defendant's] products from those of [plaintiff] Green Products through comparative advertising." As of the date of suit, however, defendant had not operated a website at "greenproducts.com."

Plaintiff, alleging that defendant's conduct constituted trademark infringement in violation of the Lanham Act, sought a preliminary injunction, directing defendant both to stop using Green Products in its domain name, and to transfer ownership of the domain name "greenproducts.com" to plaintiff during the pendency of the lawsuit. The Court found that plaintiff was likely to prevail on the merits and granted the relief sought.

To establish trademark infringement, it is necessary to show that defendant's conduct is likely to cause consumer confusion. The court found that the requisite showing needed for injunctive relief had been made, even though defendant had not yet operated a website. Defendant argued that its website would not confuse the public because it would prominently state that the site was not affiliated with, nor sponsored by Green Products. In rejecting this argument, the court said:

[Defendant's] argument is analogous to saying that [defendant] has the right to hang a sign in front of its store that reads "Green Products." When customers enter the store expecting to be able to see (and possibly, to buy) products made by Green Products, [defendant] then announces 'Actually this store isn't owned by Green Products; it's owned by [defendant]. We don't sell anything made by Green Products, but as long as you're here, we'll tell you how our products are better than Green Products." In essence, [defendant] is capitalizing on the strong similarity between Green Products' trademark and [defendant's] domain name to lure customers onto its web page. ... This Court finds that such a deceptive use of a competitor's trademark as a way to lure customers away from the competitor is a kind of consumer confusion.

The Court directed defendant to transfer the domain name to plaintiff during the pendency of the lawsuit because of the risk of irreparable injury plaintiff faced should the name remain in defendant's hands. Mindful that Internet users could look up the identity of a domain name's owner, the Court stated:

Users who do this will learn that [defendant] owns the "greenproducts.com" web site ... Potential customers who see this information may be confused into thinking that [defendant] has taken over Green Products, or that Green Products has merged into [defendant]. As a result, customers may decide Green Products no longer exists or that [defendant] now owns it. The consumer confusion thereby caused by [defendant's] ownership of the domain name "greenproducts.com" during the pendency of litigation would cause Green Products to lose customers.

The full text of the court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.