*1 Disposition D. of the Instant Case CONCEPTS, INC., DATA a Tennessee matter, In the the district court corporation, Plaintiff-Appellant,
erroneously ruling labeled favor of the summary as one for judgment. defendants v. Nevertheless, properly the district court ad- CONSULTING, INC., DIGITAL judicated by action conducting Wilkins’s a de corporation, Massachusetts novo review LINA’s solely decision based Defendant-Appellee. upon record, the administrative and found no objective evidenсe supporting Wilkins’s claim No. 97-5802. disability. agree We with the district court’s determination and therefore concur in Appeals, United States Court of affirming entry judgment in favor of Sixth Circuit.
LINA, notwithstanding the label attached to Submitted June 1998. disposition of the action. Decided Aug. Judge
While Cole sug- our characterizes gested guidelines having no bearing on the bar,
resolution of case at he acknowl-
edges argument summary Wilkins’s
judgment appropriate is not for deciding an
ERISA action because such an action should
generally be decided in a proceeding resem-
bling a bench Rather than ignore trial. Wil- argument,
kins’s applied we have well-settled
precedent conclude a district court
should employ neither summary judgment
nor a bench in deciding trial actions. ERISA
In so doing, recognized we have that both
methods of disposition have been uncritically
but erroneously utilized.
Moreover, Judge Cole claims that we are
devising procedure that “has neither been by Congress
mandated nor recognized by
any other court.” To contrary, sug-
gested guidelines enumerated above are sim-
ply a restatement application princi-
ples previously espoused by this court and Supreme Indeed, Court. our conclusion
that ERISA ought actions not be decided in (thus
bench trials rendering summary judg- inapposite)
ment perfectly consistent with
Congress’s goal ERISA, in enacting i.e., to
provide workers and with an beneficiaries
inexpensive expeditious method re-
solving disputes. Perry, benefits
F.2d at 967.
BOGGS, J., opinion delivered the court, SUHRHEINRICH, J., in which joined. MERRITT, 627-628), (pp. J. separate concurring opinion. delivered a *3 BOGGS, Judge. Circuit (“Data”), Appellant, Concepts, Data Inc. (“Di- Appellee, Digital sued Consulting, Inc. (“NSI”) gital”), Solutions, and Network Inc. enjoin reassigning Digital NSI from Internet using, “DCI. sought declaratory COM.” Data also judg- ment that unreg- its Internet address was its istered trademark and that such use of that unregistered infringe trademark did not on Digital’s registered Digital trademark. counterclaimed, alleging infringe- trademark Act, ment under section 32 of the Lanham 1114, 43(a) § U.S.C. violation of section Act, 1125, § the Lanham 15 U.S.C. dilution pursuant of a mark to Tenn.Code Ann. sec- 47-25-512, tion and common law unfair com- petition. Digital requested injunction also an against Data’s use of the “DCI.COM” Inter- net address. and each filed motions for
summary judgment respective on their claims. The motions mag- were referred to a judge, report istrate who issued and recom- (“R R”) mendation recommending & that the deny district court grant Data’s motion and Digitаl’s enjoin motion to Data’s use of the “DCI.COM” Internet address and find that infringed Digital’s Data had on adopted trademark. The district court magistrate judge’s R & R. Data timely filed a appeal. notice of I (briefed), Walter H. Crouch James W. A. The Dispute Parties and Their (briefed), White E. Andrew Norwood (briefed), Waller, Lansden, Davis, Dortch & corporation is Tennessee with its Nashville, Tennessee, Defendant-Appel- principal place Nashville, of business in Ten- lant. provides рerformance nessee. Data software management process for data and control. (briefed), Charles G. Walker Scott K. 1982, mark, In began using stylized (briefed), Baker, Haight Donelson, Bearman allegedly comprised which is of the letters Caldwell, Tennessee, Memphis, & for Defen- “d,” “c,” “i” in and lower case. When Data dant-Appellee. transacting started business over the Inter- MERRITT, BOGGS, Before: and net in it registered the Internet ad- SUHRHEINRICH, Judges. Circuit dress “DCI.COM” with NSI. corporation, eration of the address of DCI.COM on the a Massachusetts Internet.” place of business And- principal with
over, provides con- Massachusetts. man- II sulting training related to database computer development, agement, software appeal, argues On the district networks, computing, mobile granted Digital court should have sum- technologies. world wide web mary judgment and that the district court regis- Digital obtained a federal trademark by concluding erred mark is Digital also con- tration for the mark “DCI.” superior unregistered stylized to Data’s through the on the Internet ducts business mark. Data claims it is the senior user of “DCIEXPO.COM.” Internet address stylized “DCI” because used *4 corporation mark, a District of Columbia allegedly NSI is lower consists of the Herndon, Virginia. “d,” All operating “c,” “i,” out of elec- Digital case letters before must “DCI,” mail for the Internet registered tronic addresses the mark which consists of 1996, April registered “D,” “C,” In Data capital be with NSI. the lettеrs and “I.” Data stating Digi- a letter from NSI received also contends that the district court did not allowing complained to NSI about properly apply tal had eight the factors used to de- the address to use termine likelihood of consumer confusion. “DCI.COM,” Digital claimed because Digital’s registered A. Data is not a infringed
this on Senior User letter, mark DCI. In this informed NSI Digital registered Since the “DCI” policy, that under the NSI domain name 1987, mark Data’s claim that is the (1) following optiоns: it could Data had the of mark relies on its senior user the “DCI” provide of if it retain use “DCI.COM” could ability prior to its use of the mark “tack” copy federally-registered trade- of a valid from 1982 until 1993 onto its use of the mark mark that was the same as or service part “DCI” mark as of its Internet address (2) name; the relinquish it could the domain an beginning 1993. The use of earlier Digital get a new “DCI.COM” address to of a subse mark can be tacked onto use (3) one; placed on or “DCI.COM” cоuld be quent previously mark if the used mark that no one could use it until the hold so ques mark in legal equivalent is “the of the dispute resolved. The action such indistinguishable tion or therefrom” parties agreed to dismiss NSI followed. The that consumers “consider both as the same appeal. purposes of this Dyne-Crotty, Inc. v. mark.” Van Wear- (Fed.Cir. Corp., F.2d 1159 Guard 926 Ruling B. The District Court’s 1991). Furthermore, per tacking should be at “only in rare circumstances.” Id. mitted opinion adopting the conсlusion of R, magistrate judge’s R & the district court that “the trademark of held legal a later mark is the Whether superior unregistered trade- is to the question of equivalent of an earlier one is Data, mark and that Data’s use of the of Legal equivalence for law. Id. at 1159. infringes upon ‘DCI.COM’ Internet address tacking purposes simply not exist be does Digital’s registered trademark.” The district party seeks to tack cause the two marks Concepts’ court also ruled that “since Rather, “confusingly similar.” Ibid. are Con- Internet address identical create ‘the sought marks to be tacked “must trademark, Concepts pre- sulting’s impression.’” continuing same commercial using Digital Consulting’s from trade- cluded legal equivalence A of Ibid. determination mark in its Internet address.” The district appear or aural may be based on “the visual likely confusion court found that “there is a ance of the marks themselves.” sponsorship initial legal equiva In view of cases which is associated with Internet address exist, cannot find Thus, was held not to we Consulting.” “permanently Data was lence legal equivalent of op- that Data’s mark is a enjoined operating suffering or from 624 (2) with, mark; begin To marks goods
“DCI.”
do not
the relatedness of the
or
the.two
(3)
(4)
services;
marks;
similarity
look alike.
It does
matter that Data’s
(5)
confusion;
unregistered stylized
allegedly
evidence of actual
consists
the market
(6)
“d,” “c,”
used;
ing
regu
likely degree
and “i.”
chаnnels
of the letters
Courts
care; (7)
purchaser
larly reject
to tack the
the defendant’s intent in
efforts
two
(8)
mark;
selecting the
that are much more
For
likelihood of
marks
similar.
expansion
product
example,
lines. Frisch’s
the mark “CLOTHES THAT
Restaurants,
Elby’s
Boy,
v.
held,
law,
Big
Inc.
670
a matter
F.2d
WORK” was
not to
(6th Cir.1982).
642, 648
imply
“These factors
purposes
legal equivalent
tacking
be the
precision,
simply
no mathematical
but are
THAT
of “CLOTHES
WORK FOR THE
guide
help
determine whether confusion is
YOU DO.” Id. at 1160. In anоther
WORK
likely ....
may
and not all of these factors
case, the marks “Pro-Kut” and “Pro-Cuts”
particularly helpful
any given
be
case.”
legal equivalents
were held not to be
Group,
Homeowners
Inc. v. Home Market
could be tacked. Pro-Cuts v. Schilz-Price
Inc.,
1100, 1107(6th
ing Specialists,
F.2d
Enters.,
Inc.,
USPQ2d
1993 WL
Cir.1991). If
appli
the facts relevant to the
1993).
(TTAB
Thus,
we hold that
contested,
cable
findings
factors are
factual
prior
unregistered stylized
Data’s
use of its
respect
must be made with
to each of these
subsequent
mark cannot be tacked onto its
findings
subject
factors and these
to re
use of the “DCI” mark and that Data did not
*5
Caesar,
view for clear error. Little
834 F.2d
begin using
incorpo
the mark “DCI” until it
However,
at 570.
balancing
the
of these
the
its
rated
mark into
Internet address in
findings to determine the ultimate issue of
Digital registered
1993. Since
the mark
question
likelihood of confusion is a
of law.
1987,
in
“DCI”
Data is not a senior user of
mark.
the
To
summary
a motion for
defeat
B. Likelihoоd of Confusion
judgment “in a case [such as this
where
one]
argument
appeal
Data’s
on
second
is that
the
dispositive
likelihood of confusion is the
the district court should not
granted
have
issue,.
nonmoving party
establish,
a
must
Digital summary judgment on
infringe-
through pleadings, depositions, answers to
Data,
According to
ment claim.
the district
interrogatories, admissions and affidavits in
erroneously
court
concluded that Data’s use
record,
the
that
genuine
there are
faсtual
mark in its
of the DCI
Internet address
disputes concerning
[eight]
those of the
fac
created a likelihood of confusion as a matter
may
tors which
be
in
material
the context of
of law. Data contends that the district court
specific
Homeowners,
the
ease”
931 F.2d at
go
did not consider all of the factors that
into
1107.
In determining
genuine
whether a
determining whether
likelihood of confusion
exists,
issue of material fact
a court must
improperly
exists аnd that the district court
review the
in light
evidence
most favorable
applied the likelihood of confusion factors it
to the
Liberty
nonmovant. Anderson v.
Lob
alleged
did consider. These
errors
the
Inc.,
by,
242, 255, 106
477 U.S.
S.Ct.
analysis,
Data,
according
district court’s
(1986).
L.Ed.2d 202
court to
improp-
caused the district
conclude
magistrate judge
The
considered sev
erly that
no
there is
triable issue of fact as to
en of the likelihood of confusion factors in his
and, thus,
likelihood of confusion
as to the
R
R.&
He
following
determined that
the
infringement.
fact of
weighed
factors
finding
favor of
that a
Whether
likelihood of confusion
strength
likelihood of confusion existed:
of
mark,
question
marks,
exists is a mixed
of
similarity
law and fact.
of the
marketing
Enters.,
Caesar,
channels,
Little Caesar
Inc. v. Pizza
and intent in the selection of the
(6th Cir.1987).
Inc.,
834 F.2d
likely degree
This mark. The
purchaser
of
care
eight
court has enumerated
factors that
against
factor was deemed to cut
finding a
to be considered to determine whether a
likelihood of confusion. And the evidence of
eight
likelihood of confusion exists. The
fac
actual confusion and relatedness of services
(1)
tors are:
strength
plaintiffs
the
of the
factors were determined to be inconclusive.
magistrate judge
the
nor the district
separately con-
ther
magistrate judge did not
The
expan-
of the likelihood
court addressed this evidence and whether
sider the factor
sion,
analysis
it in his
presumption
but did discuss
overcame
DCI was
magistrate further
Therefore,
The
marketing
analysis
channels.
strong mark.
of the
balance,
that,
factors
on
these
determined
strength
inadequate.
of the mark was
law,
scales,
a matter of
favor
tipped
Homeowners,
(finding
that Data is involved database out a with the beyond providing magistrate judge’s analysis software them. of- this factor. problem magistrate judge
The is that Similarity 3. of Marks buyer might considered whether a acci- dentally purchase products Data’s and ser- us to The record leads conclude that they mistakenly they vices because believed magistrate judge’s analysis of this issue Digital’s products and services. magis was also flawed. This because the judge appears nothing trate to have done Our case law makes clear that a court “side-by-side comparison” more than a potential buyer must also consider whether a Homeowners, marks. 931 F.2d at might mistakenly believe that the software side-by-side compari this court that a stated through sold its “DCI.COM” Inter similarity son “is not the test” of marks. net Digital. affiliated with Rather we that said marks “must be Club, Champions Champi Inc. v. The Golf entirety viewed their context [and Club, Inc., (6th ons F.3d Golf determine, in light court must of what a] Cir.1996) (explaining court must into inquire marketplace, occurs in the whether the mark buyers both accidentally pur whether would confusing public singly will be to the when company’s product chase other and whether presented.” appear Ibid. It does not that sophisticated purсhaser might be confused as an-analysis such was undertaken this case. affiliation). analysis Since the of this issue incomplete may not favor Data as 4. Evidence of Actual Confusion strongly indicated, magistrate judge accept analysis we cannot his magistrate judge The of this factor. drew no con clusion toas this factor. Review of the rec ord indicates no actual evidence on this issue. Selecting Data’s Intent in the Mark However, clarify we wish tо that Data’s con argument We also find merit in Data’s past tention that the absence of confusion magistrate judge by inferring erred indicates that there is no.likelihood of future intentionally selected mark. DCI’s confusion has no In Wynn, merit. 943 F.2d contends it was the senior user 601-02, at explained this court that the lack prior stylized based on its use of its signifi evidence of actual confusion is not d, c, incorporating the letters and i. It also cant unless the circumstances indicated that that, user, claims even if it was not the senior such evidence should have been available. it was unaware of registration and its appear
This does not to be such a case. *7 of the DCI mark. asserts that Data’s elapsed Little time from the date Data start investigate any failure to whether there were using part ed mark DCI as of web using marks DCI is circumstantial instigation litigation. address and the of this appropriate evidence of Data’s intent to Digi- Thus, only period there was a brief оf time tal’s mark for its advantage. own during opportunity which consumers had the by to be confused Data’s use of this Internet There is no direct evidence in the address before the court considered this is intentionally record that Data selected the sue. This is not a case where the com part DCI as of its Internet address plained-of long period use occurred over a of appropriate an effort to goodwill Digi of complaints time and the lack of about actual can, however, tal’s mark. Intent be estab confusion can implying viewed as that be Champi lished circumstantial evidence. consumers are not fact confused. ons, 78 at example, F.3d 1121. For Champions, indicating jun evidence that the Likely Degree of Purchaser Care ior user of a mark was of aware the senior magistrate prior does not contest the user’s supported use of the mark “an judge’s finding sophisticatiоn that Di of infringement.” inference of intentional gital’s customers Digital’s cost of There is no such evidence this case. The weigh heavily services cause this factor to really record indicates that was un against finding a likelihood of confusion. Di- aware of at the time it decided to use
627
senior user of the “DCI” mark. We reverse
part
as
of its Internet address. Such
DCI
finding
grant
in favor of
the district court’s
of
usually militates
motion
evidence
intent,
weighs against
finding
summary judgment
of a
no
on its counterclaim
Caesar,
infringement
Little
holding
likelihood of confusion. See
based on the
that a
(“[T]here
no
MERRITT, Judge, concurring. Circuit 7. Other Factors I in Judge Boggs’s concur well reasoned opinion, I but believe that there is a serious parties’ arguments Neither the or our own question regarding whether Data any problems mag- with the review indicates use of the dci.com domain name judge’s analysis marketing istrate of chan- constituted place. use of a trademark the first magistrate judge’s analysis nels. The As observed, leading recently commentator expansion quite likelihood of factor was cur- “The because, question is sometimes asked: ‘Is a domain sory. appears It to us that this was juncture name a trademark?’ The correct answer is: litigation, at this in the it is not ‘A any domain name can become a trademark if it great clear that this factor is of rele- McCarthy, as a 1 parties produсe If used trademark.’” J. vance. evidence indi- Competition Trademarks significant cating that this factor is more Unfair (4th ed.1998). § be, 7:17.1 they Courts and other appears than it now to should be generally recognized commentators have permitted to to this evidence an Internet domain name can be used for trier of fact. pur-
both trademark and non-trademark See, 2 poses. e.g., Jeffrey Jerome Gilson & III Samuels, M. Trademark Protection and analy- summary, magistrate judge’s (1997) (distin- Practice, §§ & 5.11[3] 5.11[5] sis of several of the likelihood confusion guishing the technical use of domain names clearly inadequate. factors was Because from the trademark use domain names shortcomings magis- these errors and in the services); identify goods and Lockheed Mar- analysis (upon judge’s trate which the district Inc., Solutions, Corp. tin v. Network 985 relied), apparently court cannot be said (C.D.Cal.1997). F.Supp. 956 When as a that a likelihood confusiоn existed is used to indicate an domain name matter law and was entitled identify on the Internet and not to summary judgment infringement on its services, specific goods the source of Group, claim. See Homeowners Inc. v. functioning name is not trademark. See Inc., Marketing Specialists, Home F.2d Lockheed, 956; F.Supp. McCarthy at (6th Cir.1991). 1100, 1112 When the likeli- *8 7:176.1, § at 7-24. properly ana- hood of confusion factors Although Concepts appears to con- lyzed, light and the reсord is viewed of letters in the domain cede that its use Data, appears most favorable to this ease to trade use of the mark in name constituted question too close a to decide as goods, of its it is not connection with the sale matter law. The clear that this is the ease. record is not exactly developed well on how it used the
IV undisputed It dci.com Internet address. is Concepts not use the dci.com forgoing reasons AFFIRM in that Dаta did For we site” to part, part judgment domain name to establish “web and REVERSE very sell its services. At the of the district court. affirm the denial of advertise and We least, summary Concepts used the domain name judgment Data’s motion for sending receiving e-mail. rejection it as a means for of Data’s claim that was regarding m the record The evidence use of the dci. CAREMORE, INC.,
the extent Altercare d/b/a compa- name is the affidavit the com domain Hartville, Petitioner/Cross- Woodson, CEO, Terry which asserts ny’s Respondent, signifi- now conducts a generally that “DCI v. through the In- portion cant of its business NATIONAL LABOR RELATIONS using ternet address BOARD, Respondent/Cross- year, generated Last business ‘DCI.COM’. Petitioner. through of our Internet resulted use $80,000 in excess of for the com- revenues 96-6114, Nos. 96-6228. pany.” at 98-99. The affidavit also J.A. Appeals, Court of United States Concepts communicates states Sixth Circuit. solely through with some of its clients Id. Internet. Aug. Concepts’ vague assertion that it re- inquiries through the
ceived customer ad- enough
dress that resulted revenue is not that its
to establish dci.com domain
name constituted “use” of the DCI trade- instance,
mark. For there no evidence in indicating Concepts
the record whether Data services
disseminated advertisements of its
displaying the dci.com address or whether company’s employees or sim- customers
ply along passed po- the dci.com address way
tential customers the same someone
might give telephone number. out (domain names, §
McCarthy 7:17.1 like tele- numbers, addresses,
phone street and radio letters, permit
station one to call locate place person,
and communicate with a or a do trademarks).
not, more, without function as
Thus, Concepts unclear whether Data merely
used the domain name as a dei.com
means of communication or whether the com-
pany identify goods name to used the question resolution of this
services. Since case, dispose
could I instruct would
the District this matter on Court consider
remand.