Porn site's use of TMs in metatags not confusing

Multifab, Inc. v. ArlanaGreen.com, 122 F. Supp. 3d 1055 (E.D. Wash. 2015)

 

Plaintiff made commercial industrial components and equipment, and used the name “Multifab” for at least 25 years.  It has the multifabinc.com domain name. ArlanaGreen.com features pornographic images and videos, and allegedly caused confusion by using Multifab’s name to promote its services.  Defendants defaulted.  Nonetheless, the court concluded that Multifab failed to show trademark infringement or false advertising under the Lanham Act, cyberpiracy under the Anti–Cybersquatting Consumer Protection Act, or a violation of Washington’s Consumer Protection Act.

 

Infringement: lack of proximity of the goods weighed heavily against a finding of confusion, as did the degree of consumer care and the unlikelihood of any expansion into competing territory. “Sales of pornography and industrial equipment do not target the same class of purchasers in any discernable way, the products are not similar in use or function, nor are they complementary in any sense.”  (Insert your own dirty joke.)  Internet shoppers are accustomed to trial and error, and Multifab’s goods would be bought by buyers likely to be familiar with the commercial industrial equipment market, using a high degree of care. See M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1084 (9th Cir. 2005) (because purchasers of music management databases are highly sophisticated members of the music industry, the possibility that they could be confused about music management products and services “is almost nil” regardless of any trademark).  So the strength of Multifab’s mark (suggestive), the similarity of the parties’ marks (identical), and defendants’ apparent bad intent favored Multifab, but that just wasn’t enough given the factors making confusion unlikely.  There was no evidence of actual confusion.

 

False advertising claims failed for the same reasons, as did state consumer protection law claims.

 

ACPA claims failed because the conduct here didn’t involve use of a domain name, whether at the top or second level.  Instead, defendants were using metatags and website content.