Borescopes R U.S. v. 1800Endoscope.com, LLC

• Decision Date: 26 July 2010
• Docket Number: No. 3-09-00102,3-09-00102
• Citation: 98 U.S.P.Q.2d 1033,728 F.Supp.2d 938
• Parties: BORESCOPES R US, Plaintiff, v. 1800ENDOSCOPE.COM, LLC, Defendant.
• Court: U.S. District Court — Middle District of Tennessee

728 F.Supp.2d 938

98 U.S.P.Q.2d 1033

BORESCOPES R US, Plaintiff,

v.1800ENDOSCOPE.COM, LLC, Defendant.

No. 3-09-00102.

United States District Court,

M.D. Tennessee,

Nashville Division.

July 26, 2010.

Joseph P. Weyant, Clarksville, TN, for Plaintiff.

Amy J. Everhart, Nashville, TN, Matthew A. Becker, Law Office of Matthew A. Becker, PC, Coronado, CA, for Defendant.

MEMORANDUM

WILLIAM J. HAYNES, JR., District Judge.

Plaintiff, Borescopes R US, a Tennessee sole proprietorship, filed this action under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), the federal trademark statute, against Defendant, 1800Endoscope.com, LLC, a Florida limited liability company, asserting claims of trademark-infringement and unfair-competition under federal law, unfair-competition under Tennessee common law, and violations of the Tennessee Consumer Protection Act, Tenn.Code Ann. §§ 47-18-101 et seq.

The parties operate competing businesses selling borescopes and market and sell their product via the Internet. Plaintiff operates under the domain name www. bore scopesrus. com and Defendant under the domain name www. borescopes. us. com. Plaintiff alleges, in essence, that Defendant's use of the domain name www. borescopes. us. com creates a likelihood of confusion among the parties' customers.

Before the Court is Defendant's motion for summary judgment (Docket Entry No. 20), contending that Defendant's domain name is generic, is not a protectable trademark and is not likely to cause confusion in the marketplace. In response (Docket Entry No. 28), Plaintiff argues that a material issue of fact exists as to the genericness of Plaintiff's domain name/mark as well as the likelihood of confusion between the parties' use of their respective domain names.

For the reasons set forth below, the Court concludes that the Defendant's motion for summary judgment should be granted because under the applicable law,Plaintiff's domain name is generic and is not entitled to protection under the Lanham Act and Plaintiff has failed to prove a likelihood of confusion.

I. FINDINGS OF FACT ¹

Plaintiff, Borescopes R Us, has been in the business of marketing the sale and repair of borescopes since 1983 and worldwide, since December 2000. (Docket Entry No. 30, Rodriguez Affidavit at ¶¶ 2, 9). Plaintiff chose the business name Borescopes R Us because the name suggests the nature of the products Plaintiff sells. (Docket Entry No. 22, Defendant's Statement of Undisputed Facts at ¶ 10). A borescope is an instrument using optical fibers for the visual inspection of narrow cavities. Id. at ¶ 2.²

Plaintiff began using its domain name www. bore scopesrus. com in 2004. (Docket Entry No. 34, Defendant's response to Plaintiff's Statement of Undisputed Facts at ¶ 1). Plaintiff selected the domain name www. bore scopesrus. com "for the purpose of product and sales identification," and uses the term "borescope" as the class of products it sells. (Docket Entry No. 22 at ¶¶ 12-13). Approximately, 70% of Plaintiff's business is derived from the Internet. (Docket Entry No. 30 at ¶ 4). Plaintiff's website includes the following text:

A Borescope manufacturer since 1983. We stock a full line of flexible borescopes, rigid borescopes or videoscopes (video borescope). Our borescope & videoscope line is designed for borescope inspection of aircraft engines, powerplants, turbines, law enforcement, castings and like borescope applications. All of our products are of the highest quality and offer a full warranty.

* * *

We customize a borescope or videoscope to meet you [sic] needs.

* * *

The Borescopes & Accessories Repair Facility was established in 1985 due to the need for a U.S. Service and Repair facility that would centralize repair and overhaul of Borescopes and accessories in one location, regardless of manufacturer and/or model of borescope....

(Docket Entry No. 31, Plaintiff's response to Defendant's Statements of Undisputed Fact, at ¶ 8).

Defendant is an Internet-based business that sells borescopes and endoscopes for medical, veterinary and industrial use. Id. at ¶ 1. Defendant began using its domain name, www. borescopes. us. com in January or February 2008. (Docket Entry No. 34 at ¶ 1). Defendant's website features numerous products labeled generically as borescopes. (Docket Entry No. 22 at ¶ 14).

The United States Patent and Trademark Office ("USPTO") records reveal 57 registered and unregistered marks that include the lowercase term "borescope" in the description of goods or services. (Docket Entry No. 22 at ¶ 15). A Google search for the term "borescope" results in approximately 228,000 hits, the results showing use of the term "borescope" as the product Plaintiff and Defendant sell. Id. at ¶ 16. A Nexis search of all news sources for the term "borescope" revealed 2,232 results, the results showing use of the term as the product both parties sell. Id. at ¶ 17.

Defendant has also registered numerous domain names to market its products such as, 1800endoscope.com, 1800endoscope.info, 1800endoscope.net, 1800endoscope.org, bronchofiberscopes.com, colonoscope.net, colonoscope.org, colonoskop.com, e-endoscope.com, endoscope.cc, endoscopy.cc, endoscopic.biz, gastrofiberscope.com, gastrofiberscopes.com, gastroscope.com, gastroscope.org, gastroskop.biz, gastroskope.com, usbendoscope.com, usbendoscopes. com, and usbendoscopy.com. Id. at ¶ 23. Defendant's preference is to register domain names with the most popular extensions, such as ".com" and ".net," when available, because they are the most likely to attract Internet users. Id. at ¶ 25.

Defendant also registered domain names with the domain-name extensions ".us" and ".us.com" or domain names including the phrase "USA," especially where the product name and ".com" is unavailable for a particular product. Id. at ¶ 26. Defendant has registered the domain names bronchoscope.us, endoscope.us.com, endos copy. us. com, endoscopyusa.com and usaendoscopy.com. Id. at ¶ 28.

Defendant was unable to register borescope.com or borescopes.com because those domain names were registered by a third party. Id. at ¶ 29. As a result, Defendant registered the available domain names borescopes.us.com, usbborescope.com, usbborescopes.com and usb-borescope.com with the domain-name registrar Network Solutions. Id. at ¶¶ 30-31.

Network Solutions offers ".us.com" as a featured domain-name extension alongside such extensions as ".com" and ".net". Id. at ¶ 32. The ".us.com" domain name was established in 2000 to offer registrants a new way to register the domain name of their choice with the coveted ".com" extension. Id. at ¶ 33. The addition of ".us" to Defendant's domain name denotes the United States origin of Defendant's goods. Id. at ¶ 35.

Plaintiff has purchased advertisements of its company through Google since 2004. (Docket Entry No. 30 at ¶ 6). According to Plaintiff, Defendant's sponsored Google advertisements have appeared next to or near Plaintiff's Google advertisements on search results, and on a number of occasions Plaintiff has received telephone calls from clients who have mistakenly called Plaintiff's business when trying to reach Defendant's offices. Id. at ¶¶ 7-8.

II. CONCLUSIONS OF LAW

"The very mission of the summary judgment procedure is to pierce the pleadings and to assess the proof in order to seewhether there is a genuine need for trial." Advisory Committee Notes on Rule 56, Federal Civil Judicial Procedure and Rules (West Ed.1989). Moreover, "district courts are widely acknowledged to possess the power to enter summary judgment sua sponte, so long as the opposing party was on notice that [he] had to come forward with all of [his] evidence." Celotex Corp. v. Catrett, 477 U.S. 317, 326, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); accord, Routman v. Automatic Data Processing, Inc., 873 F.2d 970, 971 (6th Cir.1989).

In Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), the United States Supreme Court explained the nature of a motion for summary judgment:

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.

As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.

477 U.S. at 247-48, 106 S.Ct. 2505 (emphasis in the original and added in part). Earlier the Supreme Court defined a material fact for Rule 56 purposes as "[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no 'genuine issue for trial.' " Matsushita Electrical Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citations omitted).

A motion for summary judgment is to be considered after adequate time for discovery. Celotex, 477 U.S. at 326, 106 S.Ct. 2548 (1986). Where there has been a reasonable opportunity for discovery, the party opposing the motion must make an affirmative showing of the need for additional discovery after the filing of a motion for summary judgment. Emmons v. McLaughlin, 874 F.2d 351, 355-57 (6th Cir.1989). But see Routman v. Automatic Data Processing, Inc., 873 F.2d 970, 971 (6th Cir.1989).

There is a certain framework in considering a summary judgment motion as to the required showing of the respective parties, as described by the Court in...