Jews For Jesus v. Brodsky

Several federal courts presented with an Internet domain name dispute have granted an application for a preliminary injunction where the plaintiff was able to satisfy factors similar to those previously discussed. In those cases, the court found the plaintiff had a likelihood of success on the merits and determined that the use by the defendant in its domain name of the asserted trademark created a likelihood of confusion.

For example, in Planned Parenthood the plaintiff was a non-profit, reproductive services organization that owned the rights to the service mark "Planned Parenthood." See Planned Parenthood Fed'n of Am. v. Bucci, No. 97-629, 1997 WL 133313, at *1 (S.D.N.Y. March 24, 1997). The plaintiff had facilities throughout the United States and operated an Internet site with the domain name "ppfa.org". In August 1996, the defendant, an outspoken opponent of the plaintiff, registered the domain name "plannedparenthood.com". A preliminary injunction was issued after a finding that the domain name and Internet site of the defendant were likely to cause confusion and that the plaintiff demonstrated a likelihood of prevailing on its claims of, inter alia, unfair competition, dilution and false designation of origin.

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In Hasbro, the plaintiff was the owner of the federally registered trademark "CANDY LAND". See Hasbro, Inc. v. Internet Entertainment Group, Ltd ., No. 96- 130, 1996 WL 84853, at *1 (W.D.Wa. Feb. 9, 1996). The defendants operated a sexually explicit Internet site with the domain name "candyland.com". A preliminary injunction was issued after a finding that the plaintiff demonstrated a probability that the conduct of the defendants violated the federal and Washington state anti-dilution statutes. In addition, the court found that the use by the defendants of the "CANDY LAND" mark in their domain name was causing irreparable injury to the plaintiff.

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Other courts have granted a motion for full or partial summary judgment and/or issued a permanent injunction where the use in a domain name of a trademark constituted, among other things, trademark infringement, false designation of origin and/or dilution of the trademark. . . .

1. Service Mark Infringement Claim

The Complaint alleges the Defendant is liable for trademark infringement pursuant to 15 U.S.C. § 1114 because he is using the Mark in his domain name. Section 1114 of states, in relevant part,

(1) Any person who shall, without the consent of the registrant-

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. . . .

In order for a party to prevail on a claim of trademark or service mark infringement under Section 1114 and the common law, the party must establish that (1) the mark is valid and legally protectable, (2) the mark is owned by the plaintiff and (3) use of the same mark by the defendant is likely to create confusion among the relevant consumers.

a. Validity and Legal Protectability of the Mark

It appears the Mark has become incontestable pursuant to Section 1065. Once a mark becomes incontestable, the registration of that mark is "conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce." 15 U.S.C. § 1115. In order to challenge the validity of an incontestable mark in an infringement action, only certain defenses or defects, none of which have been raised in this case, can be asserted. Because the Mark was registered and appears to be incontestable, the validity and legal protectability of the Mark has been established.

As mentioned, the Defendant does not challenge the validity or legal protectability of the Mark but rather argues that his domain name does not infringe upon the Mark because the domain name does not contain a letter "O" that is stylized as a "<<StarOfDavid>>". The central issue, therefore, is whether the Plaintiff has rights to the phrase "Jews for Jesus" even though the letter "O" is not depicted as a "<<StarOfDavid>>".

(1) Federally Registered Service Mark

The Defendant acknowledges that, because of technical reasons, domain names cannot contain stylized letters. The Plaintiff, therefore, has no option but to use a domain name that does not contain a "<<StarOfDavid>>" as a stylized letter "O". Accordingly, the only course for the Plaintiff Organization was to use a domain name that most resembles its Mark, either "jewsforjesus", or "jews_for_jesus" or "jews-for- jesus". For whatever reason, the Plaintiff chose to use the last option as its domain name. Simply because the Plaintiff chose not to use one or both of the other options, however, does not entitle the Defendant to use them as his own.

If the position of the Defendant were accepted, it would enable a party to use the mark of another where factors, outside the control of the party with the mark, make it impossible to adequately depict the mark. Because the Internet recognizes only certain types of characters (e.g., letters, dashes ("-"), underlines ("_")), those registered marks with unique characteristics, such as script lettering or symbols, would be fair game for anyone who wished to use such mark, but without the unique characteristic, as a domain name.

In order to constitute infringement, exact similarities are not required between the allegedly confusing marks. Rather, it is sufficient that enough of the mark is confusingly similar or has been used to deceive the public. Marks are confusingly similar if ordinary consumers are likely to conclude that they share a "common source, affiliation, connection or sponsorship." Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477 (3d Cir.1994).

Considering the domain name used by the Defendant is nearly identical to the Mark and the name of the Plaintiff Organization, it is likely that Internet users will conclude that the Mark, the name of the Plaintiff Organization and the domain name used by the Defendant share a "common source, affiliation, connection or sponsorship." As such, under the facts of this case, the phrase "jewforjesus" in the domain name used by the Defendant appears to be confusingly similar to the Mark.

(2) Common Law Service Mark

The Complaint alleges the Plaintiff Organization has common law rights to the phrase "Jews for Jesus," and it appears the Plaintiff Organization has a common law service mark for "Jews for Jesus."

"Common law rights are acquired in a service mark by adopting and using the mark in connection with services rendered." Caesars World, Inc. v. Caesar's Palace, 490 F.Supp. 818, 821 (D.N.J.1980). Such rights "include the right to prevent the subsequent use by another person of the same or similar name or mark, when the business or service for which the name or mark is subsequently used, is likely to cause confusion as to the origin of the business or the services." Caesars World, 490 F.Supp. at 823. The extent of the protection afforded depends upon the distinctiveness of the mark itself.

Service marks are often classified in the following categories, with the first category being the most distinctive and the last being the least distinctive: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive and (5) generic. Fanciful, arbitrary and suggestive terms exhibit the greatest amount of distinctiveness and generally qualify for service mark protection. Generic terms, on the other hand, are not protectable.

The Defendant argues the phrase "Jews for Jesus" is generic and therefore is not protectable. In the alternative, the Defendant argues the phrase is merely descriptive, and, thus is not protectable because the Plaintiff Organization has not established that the phrase has achieved a secondary meaning.

(i) Distinctiveness of the Service Marks

A term is "generic" if that term has "so few alternatives (perhaps none) for describing the good [or service] that to allow someone to monopolize the word would debilitate competitors." Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1442 (3d Cir.1994). . . .

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. . . [T]here are several other names that could be used to refer to individuals of Jewish heritage who believe in Jesus, for example, "Messianic Jews," "Hebrew Christians," "Jews for Christ," or "Jews for Christianity." The use by the Plaintiff Organization of the phrase "Jews for Jesus" does not leave so few alternatives so as to monopolize the concept and debilitate potential competitors. The phrase is not generic. See id.

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. . . "Jews for Jesus" . . . is descriptive rather than suggestive because the phrase does not require much imagination or thought to cull a direct message from the mark and the phrase does not conjure up a purely arbitrary connotation.

Descriptive marks are protectable if they acquire secondary meaning.

(ii) Secondary Meaning

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Secondary meaning is demonstrated when the primary significance of the term in the minds of the consuming public is not the product but the producer.

. . . [T]he phrase "Jews for Jesus" appears to have acquired a secondary meaning. First, the Plaintiff Organization has expended a considerable amount of money on advertising. . . .

Second, the Plaintiff Organization has received extensive media coverage in connection with its teachings and mission. . . .

Third, the Plaintiff Organization has been successful in its marketing efforts and maintains a data base in excess of one million addresses of individuals to whom mailings are sent.

Fourth, the Plaintiff Organization and/or its predecessor organizations appear to have used the mark continuously since 1973 when the Plaintiff Organization was incorporated.

The Plaintiff Organization appears to have demonstrated that the phrase "Jews for Jesus" is a common law mark because it has acquired a secondary meaning in the minds of the public. The primary significance of the phrase "Jews for Jesus" is not merely the beliefs of messianic Jews generally but the identification of the Plaintiff Organization and, as such, its teachings and message.

The Plaintiff Organization appears not only to have a valid and protectable federally registered service mark but also appears to have a valid and protectable common law service mark (the common law service mark will be referred to as the "Name of the Plaintiff Organization").

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c. Likelihood of Confusion

To prevail on a claim for infringement, the Plaintiff Organization need demonstrate only a likelihood of confusion, not proof of actual confusion.

In determining whether a likelihood of confusion exists, the following factors (the "Scott Factors") should be considered:

(1) the degree of similarity between the owner's mark and the alleged infringing mark;

(2) the strength of owner's mark;

(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) the length of time the defendant has used the mark without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties' sales efforts are the same;

(9) the relationship of the goods in the minds of the public because of the similarity of function;

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market.

(1) Similarity of the Mark, the Name of the Plaintiff Organization and the Defendant Internet Site

The degree of similarity of the marks usually is the most important of the Scott Factors. . . .

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On their face, the Mark, the Name of the Plaintiff Organization and the domain name of the Defendant are virtually identical. As observed in Planned Parenthood,

defendant's use of plaintiff's mark is . . . likely to prevent some Internet users from reaching plaintiff's own Internet web site. Prospective users of plaintiff's services who mistakenly access defendant's web sit may fail to continue to search for plaintiff's own home page, due to anger, frustration, or the belief that plaintiff's home page does not exist.

The Plaintiff has established that the domain name used by the Defendant is substantially similar to the Mark and the Name of the Plaintiff Organization, which similarity increases the likelihood of confusion among Internet users. . . .

(2) Strength of the Mark and the Name of the Plaintiff Organization

The term "strength," as applied to trademarks or service marks, refers to the commercial strength or marketplace recognition of the mark, as well as the distinctiveness of the mark.

. . . As mentioned, [] the Mark has become incontestable. Accordingly, the Defendant cannot argue that the Mark is descriptive or that it lacks secondary meaning because it is conclusively presumed that the Mark either is non-descriptive, or if descriptive, has acquired secondary meaning.

The Name of the Plaintiff Organization appears to have achieved a secondary meaning. The Name of the Plaintiff Organization and the Mark have been used for many years and have been extensively advertised. . . .

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(3) Level of Sophistication of Internet Users

. . . The Defendant appears to argue that, if Internet users are able to access his Internet site, then those users are sophisticated enough to realize that his Internet site is not affiliated with the Plaintiff Organization. This argument ignores the fact that an individual may be a sophisticated user of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then may be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization. The Disclaimer does not alleviate this problem.

. . . In addition, considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties. . . . This is the so even with the addition of the Disclaimer.n27

(4) Length of Time the Defendant has Used the Mark or the Name of the Plaintiff Organization Without Causing Confusion

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. . . [A]ctual confusion appears to have been caused shortly after the Defendant Internet site went into operation. If supporters of the Plaintiff Organization were confused by the domain name used by the Defendant and his Internet site then, in all likelihood, individuals who are not familiar with the views of the Plaintiff Organization also have been and will continue to be confused. . . .

(5) The Intent of the Defendant in Using the Mark and the Name of the Plaintiff Organization

The Defendant has been publicly vocal about his intent and purpose in registering and using his domain name. . . . [His] statements demonstrate the actions by the Defendant were wilful and undertaken in bad faith, with full knowledge of and the intent to cause confusion and to infringe on the rights of the Plaintiff Organization. The Defendant is not only appropriating the Name of the Plaintiff Organization and the Mark but also is using them to leach off the extensive efforts the Plaintiff Organization has undertaken during the past twenty-four years to give currency to its name and to disseminate its teachings.

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(6) Manner in Which Marketed

Both the Plaintiff and the Defendant use the Name of the Plaintiff Organization in their domain names and both domain names can be accessed from any Internet browser. Accordingly, both are marketed in the same manner--i.e., through the Internet.

(7) Audience to Which Marketed

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. . . The audience for both the Plaintiff Organization and the Defendant Internet sites are those individuals using the Internet to find information about the teachings of the Plaintiff Organization. Accordingly, the audience both parties seek is identical.

The Plaintiff Organization has demonstrated a likelihood of success on its claim of federal and common law service mark infringement.

2. Federal Dilution Claim Under 15 U.S.C. § 1125(c)

Count I of the Complaint alleges trademark dilution pursuant to 15 U.S.C. § 1125(c).n28 Section 1125(c) entitles an owner of a trademark to injunctive relief if the mark is "famous" and use by another party of that mark "in commerce" causes dilution of the distinctive quality of the mark. The owner of a famous mark is also entitled to monetary damages where the person against whom the injunction is sought "willfully intended to trade on the owner's reputation or to cause dilution of the famous mark."n29 See 15 U.S.C. § 1125. In order to succeed on a dilution claim, the plaintiff need not demonstrate a likelihood of consumer confusion. All that needs to be proven is that the mark is famous and the use by the offending party of the mark is commercial and in commerce. The mark may be either a common law mark or federally-registered one. See id. at 1237.

The purpose of the dilution law is to protect "distinctive" or "famous" trademarks from certain unauthorized uses of the marks regardless of a showing of competition or likelihood of confusion.

a. The Mark and the Name of the Plaintiff Organization are Famous

In determining whether a mark is distinctive and famous, a court may consider the following factors:

(1) the degree of inherent or acquired distinctiveness of the mark;

(2) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(3) the duration and extent of advertising and publicity of the mark;

(4) the geographical extent of the trading area in which the mark is used;

(5) the channels of trade for the goods or services with which the mark is used;

(6) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

(7) the nature and extent of use of the same or similar marks by third parties; and

(8) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

The Name of Plaintiff Organization has been used by the Plaintiff for more than twenty-four years and has been publicized worldwide in the media. The Mark has been registered and used since 1983. The Plaintiff Organization has expended a considerable amount of money on advertising to publicize its name and its message. The Mark and the Name of the Plaintiff Organization have come to identify one organization--the Plaintiff. Media coverage has been extensive, and, as the Defendant has himself explained, the advertisements by the Plaintiff Organization have been "all over the place"--on the subways and the newspapers. As well, the Plaintiff has extensively promoted its Web site. Moreover, there does not appear to be a mark in use by a third party that is the same as or similar to the Mark or the Name of the Plaintiff Organization. All of the examples cited by the Defendant of other entities that use the mark "Jews for Jesus" or the Name of the Plaintiff Organization either are or were owned by Plaintiff or its predecessors and/or affiliates. Finally, the Mark is incontestable.

b. The Use by the Defendant of the Mark and the Name of the Plaintiff Organization Causes Dilution

The term "dilution" is defined as the "lessening of the capacity of a famous mark to identify and distinguish goods or services" and encompasses traditional state law doctrines of blurringn30 and tarnishment.n31

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In this case, the Defendant is using the Mark and the Name of the Plaintiff Organization to lure individuals to his Internet site where he makes disparaging statements about the Plaintiff Organization. His site then refers these individuals, via a hyperlink, to the Internet site maintained by the Outreach Judaism Organization which also contains information critical of and contrary to the teachings of the Plaintiff Organization. Such conduct amounts to "blurring" and "tarnishment" of the Mark and the Name of the Plaintiff Organization.

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In this case, the use by the Defendant in his domain name of the Mark and the Name of the Plaintiff Organization has resulted in not only the loss of control over the Mark and the Name of the Plaintiff Organization, but also in the reality that views directly contrary to those of the Plaintiff Organization will be disseminated through the unauthorized use of the Mark and the Name of the Plaintiff Organization. As such, irreparable harm has resulted

because [the use of the Mark and the Name of the Plaintiff Organization] is likely to prevent some Internet users from reaching plaintiff's own Internet web site. Prospective users of plaintiff's services who mistakenly access defendant's web sit[e] may fail to continue to search for plaintiff's own home page, due to anger, frustration or the belief that plaintiff's home page does not exist.

c. The Use by Defendant of the Mark and the Name of the Plaintiff Organization Constitutes Commercial Speech

The Defendant contends his conduct is exempted from the dilution law because it is "non-commercial speech."n32 Specifically, the Defendant claims his speech is non-commercial because "it is meant to call attention to issues of public importance." Id. at 32.

. . . "The exception for non-commercial use of a famous mark is intended to prevent courts from enjoining constitutionally protected speech. That is, the exclusion encompasses conduct such as parodies and consumer product reviews." Panavision Int'l v. Toeppen, 945 F.Supp. 1296, 1303 (C.D.Cal.1996).

In Planned Parenthood, the use by the defendant of the plaintiff's mark was found to be "commercial" for three reasons: (1) the defendant was engaged in the promotion of a book, (2) the defendant was a non-profit political activist who solicited funds for his activities, and (3) the defendant's actions were designed to harm the plaintiff commercially. 1997 WL 133313, at *5. In so finding, the court stated:

[D]efendant has appropriated plaintiff's mark in order to reach an audience of Internet users who want to reach plaintiff's services and viewpoint, intercepting them and misleading them in an attempt to offer his own political message. Second, defendant's appropriation not only provides Internet users with competing and directly opposing information, but also prevents those users from reaching plaintiff and its services and message. In that way, defendant's use is classically competitive: he has taken plaintiff's mark as his own in order to purvey his Internet services--his web site--to an audience intending to access plaintiff's services.

In this case, the Defendant has done more than merely register a domain name. He has created, in his words, a "bogus 'Jews for Jesus' " site intended to intercept, through the use of deceit and trickery, the audience sought by the Plaintiff Organization. Moreover, the Defendant Internet site uses the Mark and the Name of the Plaintiff Organization as its address, conveying the impression to Internet users that the Plaintiff Organization is the sponsor of the Defendant Internet site. Although the Defendant Internet site does not solicit funds directly like the defendant's site did in Planned Parenthood, the Outreach Judaism Organization Internet site (available through the hyperlink) does do so through the sale of certain merchandise. The Defendant does not argue that the Outreach Judaism Organization site is not commercial in nature. Considering the limited nature of the Defendant Internet site and its hyperlink to the Outreach Judaism Organization Internet site, it is apparent the Defendant Internet site is a conduit to the Outreach Judaism Organization Internet site, notwithstanding the statement in the Disclaimer that "[t]his website . . . is in no way affiliated with the Jewish organization Outreach Judaism. . . ."

The conduct of the Defendant also constitutes a commercial use of the Mark and the Name of the Plaintiff Organization because it is designed to harm the Plaintiff Organization commercially by disparaging it and preventing the Plaintiff Organization from exploiting the Mark and the Name of the Plaintiff Organization. In addition, the Defendant Internet site has and will continue to inhibit the efforts of Internet users to locate the Plaintiff Organization Internet site.

The Plaintiff Organization has demonstrated a likelihood of success on its claim of dilution under Section 1125(c).

3. Unfair Competition and False Designation of Origin Claims

Count III of the Complaint alleges unfair competition and false designation of origin pursuant to 15 U.S.C. § 1125(a). Section 1125(a) states, in relevant part,

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

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a. False Designation of Origin

The Defendant stated that he intended for his "bogus" Internet site to intercept persons looking for the Plaintiff Organization Internet site. . . . The Defendant Internet site was designed to be a false designation of origin.

b. Use in Interstate Commerce in Connection with Goods and Services

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The activities of the Defendant are "in connection" with goods and services for several reasons. First, the hyperlink in the Defendant Internet site to the Outreach Judaism Organization Internet site is designed to promote the viewpoint of the Outreach Judaism Organization and to encourage the purchase of the products and services offered by that organization. Second, as explained in Planned Parenthood, the

defendant's use of plaintiff's mark is "in connection with the distribution of services" because it is likely to prevent some Internet users from reaching plaintiff's own Internet web site. Prospective users of plaintiff's services who mistakenly access defendant's web site may fail to continue to search for plaintiff's own home page, due to anger, frustration, or the belief that plaintiff's home page does not exist. . . . Therefore, defendant's action in appropriating plaintiff's mark has a connection to plaintiff's distribution of its services.

c. Likelihood of Confusion

As discussed, the maintenance of the Internet site by the Defendant is likely to cause confusion.

d. Likelihood of Injury

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As explained later in this opinion, the Plaintiff Organization has demonstrated that it has and will suffer irreparable injury through the use of the Mark and the Name of the Plaintiff Organization by the Defendant in his domain name.

e. Non-Commercial Speech

The Defendant contends his conduct is exempted from Section 1125(a) because it is "non-commercial speech." As discussed, however, the conduct of the Defendant is commercial in nature.

Based on the foregoing, the Plaintiff Organization has demonstrated a likelihood of success on its claims of unfair competition and false designation of origin.

4. State Law and Common Law Claims

Counts IV, V and VI of the Complaint allege the Defendant is liable for trademark infringement and dilution under New Jersey law, as well as liable for common law unfair competition. The Defendant contends the Plaintiff Organization has failed to make out a prima facie case under New Jersey law because its claims under state law are no better than those under federal law.

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B. Extent to Which the Plaintiff Organization Will Suffer Irreparable Injury if a Preliminary Injunction is Not Issued