Injunction is No Great Leap for Court in “Skydive Arizona” Case

On April 29, 2010, the United States District Court for the District of Arizona granted, in part, Plaintiff’s request  to enjoin the Defendants' use of certain trademarks and domain names related to skydiving in Arizona.  Skydive Arizona, Inc. v. Quattrocchi, 2010 WL 1743189 (D. Ariz. April 29, 2010)

Plaintiff operates a skydiving business in Arizona (“Skydive Arizona”) with numerous jump centers in the state.  Defendants operate a website that offers information on skydiving and skydiving gift certificates that are redeemable at participating skydiving centers across the country, but does not operate any actual skydiving centers.  In fact, the Defendants operated various websites implying that Defendants owned skydiving centers in numerous cities in Arizona, where none existed. 

Plaintiff was not one of the participating skydiving businesses in Defendants' gift certificate program, but the Defendants used domain names that led customers to believe that they were affiliated with Skydive Arizona.  Defendants also used the trademark “Skydive Arizona” on its website, as well as photographs of the Plaintiff’s business on its website.  At trial in October, 2009, the jury found the Defendants liable for trademark infringement, false advertising, and cybersquatting, but the issue of injunctive relief was postponed for consideration by the court.

Plaintiff requested a broad injunction that would prohibit Defendants from using the "Skydive Arizona" trademark, as well as the word “Arizona” in any combination with “Skydive” or “Skydiving” on any website or advertising materials.  Specifically, Plaintiff requested that the court enjoin the Defendants' use of the “Skydive Arizona” trademark or other confusingly similar marks in links or keywords on their websites.  The court granted the injunction holding that “[p]ersons searching for Plaintiff’s business should not be erroneously led to Defendant’s website due to these marks placement in a meta tag or other link on Defendant’s websites." [citations omitted].  

The court acknowledged Defendants' concerns that such a prohibition might unfairly prevent the Defendants from conducting their business, because the words “skydive” and “Arizona” are so generic that it would preclude the Defendants from advertising in Arizona.  The court holds, however, that there is a difference between using those words as a proper noun (e.g. “Skydive Arizona”) and using them as individual words or in a sentence (e.g. “Skydiving in Arizona”).  The injunction, the court clarified, merely prohibits the Defendants' use of those words as a proper noun. 

Plaintiff also requested that the court enjoin Defendants from “operating any website or using any domain name that utilizes the word ‘Arizona’ or the name of any Arizona city as part of its business or domain name,” because it is a false misrepresentation of geographic origin.  The court rejected this argument and held that Defendants' ownership or usage of domain names was not a violation the Lanham Act, only false statements made on those websites were a violation.  Such a prohibition, the court held, would unfairly limit the Defendants' ability to conduct their online business in Arizona. 

However, the court granted Plaintiff’s request for an injunction as to certain domain names relating to Defendants' cybersquatting (i.e. Lanham Act §43(d)).  In the jury trial, the jury found that six websites were a violation of §43(d) (<arizonaskydive.net>, <arizonaskydiving.com>, <skydivingarizona.com>, <skydivingaz.com>, <skydivearizona.net>, and <arizonaskydive.com>).  Section 43(d) specifically provides that a court may order “forfeiture or cancellation of the domain name or transfer of the domain name to the owner of the mark.”  Thus, the court ordered transfer of the domain names listed, but refused to issue an injunction enjoining Defendants from owning or using domain names that are a combination of the words “skydive” and “Arizona,” because such a prohibition would limit the Defendants' ability to conduct legitimate business in Arizona.

Photo Credit:  http://www.flickr.com/photos/divemasterking2000/ / CC BY-NC 2.0 

Comments

[Joseph Marchelewski]

That could really just turn out to be punctuation or capitalization errors when people are looking up skydiving in Arizona, though. What a weird way to split hairs.