ACTMEDIA, INC., a Delaware corporation,
ACTIVE MEDIA INTERNATIONAL, INC. an Illinois corporation,
Case No. 96C3448.
July 12, 1996
This matter having come before the Court upon the Complaint For Damages And Injunctive Relief filed by ActMedia, Inc. ("Plaintiff") against Active Media International, Inc. ("Defendant"), the Court having reviewed the Complaint and all other matters of record, and being otherwise knowledgeable of the premises, it is hereby;
FINALLY ORDERED, ADJUDGED, AND DECREED as follows:
Pursuant to 15 U.S.C. Section 1121(a), this Court has original subject matter jurisdiction over this action as it arises under U.S.C., Title 15, Chapter 22 (the "Act"), and involved Defendant's unauthorized use and false designation of origin in commerce of a federally registered trademark owned by Plaintiff. This Court has personal jurisdiction over Defendant because it is a Illinois corporation doing business in the State of Illinois. Pursuant to 28 U.S.C. Section 1391(b)(1), venue is proper before this Court.
Since June of 1972, Plaintiff has provided advertising and promotional services, domestically and internationally, through use and ownership of trademark "ActMedia" ("Mark"), relating to the promotion of goods and services of others through planning, arranging, and designing in-store signage, print displays, video and audio displays, sampling and couponing events, conducting demonstrations, and providing post-event analysis and demonstrations (the "Services"). Plaintiff has become widely known in the marketplace as a preeminent source for such Services. The Services are strongly associated with and identified by Plaintiff's registered Mark, which has been continuously owned and used by Plaintiff in commerce since June of 1972. On April 8, 1986, Plaintiff registered the Mark with the United States Patent and Trademark Office, Registration No. 1389.370. Pursuant to 15 U.S.C. Section 1065, Plaintiff has the incontestable right to use the Mark in commerce in connection with the Services.
The Mark has also been affixed to and used in commerce in connection with a wide variety of promotional and sales items, such as posters, signs, display units, uniforms, and promotional materials. Through great expense and effort incurred by Plaintiff, the Mark has become known in commerce as a strong identifier of the source of the Services and these related consumer items: that source being Plaintiff. As a direct result of Plaintiff's extensive efforts, the Mark has acquired substantial and valuable secondary meaning.
In or about 1995, Plaintiff began implementation of its plan to go "on line" through the Internet. In or about February, 1996, Plaintiff attempted to reserve the Internet domain name, "actmedia.com" ("Domain Name"), as its Internet address. When it attempted to reserve the Domain Name, Plaintiff discovered for the first time that Defendant, without authorization from Plaintiff, had already reserved the Domain Name. Defendant's reservation of the Domain Name has precluded Plaintiff from reserving an Internet domain name incorporating its registered Mark.
Defendant's reservation of the Domain Name violates 15 U.S.C. Section 1125 and Illinois common law because it: (a) constitutes unauthorized use and misappropriation of Plaintiff's Mark; (b) constitutes false designation of origin; (c) is likely to cause confusion in the marketplace that Plaintiff and Defendant are affiliated; and (d) is likely to cause confusion that Plaintiff sponsors or approves Defendant's commercial activities. Further, Defendant's reservation of the Domain Name also violates the Illinois Anti- Dilution Act, III.Rev.Stat ch 140, Section 22, because it creates a likelihood of dilution of the distinctive quality of the Mark. Plaintiff has no adequate remedy at law, and has and will continue to suffer irreparable harm if Defendant continues its unauthorized use and misappropriation of the Mark by precluding Plaintiff from using its Mark as an Internet domain name. The public interest will be served by issuing the injunctive relief requested by Plaintiff.
Plaintiff is hereby granted the following permanent injunctive relief:
So Ordered, in Chambers on this 12th day of July 1996.
(signed) James B. Zagel, United States District Court Judge For The Northern District Of Illinois