Omega S.A. v. Omega Engineering, Inc.
| Decision Date | 18 October 2002 |
| Docket Number | No. 3:00CV1848 (JBA).,3:00CV1848 (JBA). |
| Citation | 228 F.Supp.2d 112 |
| Court | U.S. District Court — District of Connecticut |
| Parties | OMEGA S.A. v. OMEGA ENGINEERING, INC. Omega Press, Inc., and Omega Scientific, Inc. |
Thomas A. Smart, Richard A. DeSevo, Kaye, Scholer, New York City, Peter W. Peterson, Robert Curcio, DeLio & Peterson, New Haven, CT, A. Jeffrey Somers, Law Offices of Larry Lewis, Meridan, CT, for Defendants.
William A. Zucker, Gadsby & Hannah, Boston, MA, for Movant.
Ruling on Cross Motions for Summary Judgment [Doc. ## 73 & 77]
Plaintiff, Omega S.A. ("OSA"), commenced the present suit on September 27, 2000, alleging only one claim, that defendants Omega Engineering, Inc. ("OE"), Omega Press, Inc. ("OP"), and Omega Scientific, Inc. ("OS"), violated or continue to violate plaintiff's statutory rights under the Anticybersquatting Consumer Protection Act ("ACPA") (15 U.S.C. § 1125(d)) by registering and using the internet domain names OMEGAWATCH.com and OMEGATIME.com. After protracted discovery requiring multiple rulings from Magistrate Judge Joan G. Margolis, the parties cross moved for summary judgment. By order dated September 30, 2002 [Doc. # 96], the Court denied defendants' motion [Doc. # 73], and granted in part and denied in part plaintiff's motion [Doc. # 77], for the reasons that follow.
The following summarizes the undisputed facts in the summary judgment record.2
OSA markets and sells horological products, including watches, clocks, and corresponding accessories.3 The company holds registered trademarks for the name "Omega" and the letter "O" for use in connection with, among other things, watches, horological instruments, electronic time recording devices, and various parts and accessories related to watches.4
OE is a Delaware corporation with its principal place of business in Stamford, Connecticut.5 OE specializes in marketing industrial and scientific products used for, among other things, the control or measurement of temperature, humidity, pressure, strain, force, flow, level, pH, and conductivity.6 OE holds at least one registered trademark for the name "Omega" for use in connection with scientific and industrial apparatus.7
OP is an affiliate of OE, which operates as OE's trade vehicle for selling technical books, software and other printed material.8 OP is the registered owner of the domain name OMEGAWATCH.com.9
OS is an affiliate of OE, which operates as a trade vehicle for the sale of scientific and technical instruments.10 OS is the registered owner of the domain name OMEGATIME.com.11
Throughout the 1980s, OE and OSA had a history of disputing the scope of their respective trademark rights. During that period, the two parties signed several agreements limited to certain countries and trademark registrations. In an effort to end such disputes once and for all, in 1992, OE entered into a worldwide agreement with OSA. In 1994, the agreement was replaced by a new worldwide agreement, which was executed for and on behalf of OSA on May 3, 1994, and OE on August 2, 1994 ("1994 Agreement").12
The 1994 Agreement states, in part, that
both parties hereto are desirous of coming to an arrangement for the avoidance of future interference Worldwide between their respective fields of commercial operation under their Rights in respect of Trademarks consisting of or including the word OMEGA and/or the Greek letter O or containing elements colourably resembling either of thos[e] two elements.13
The 1994 Agreement settled various contested matters around the world involving OE's and OSA's trademarks. Among other things, OE agreed to withdraw certain oppositions against OSA and amend certain definitions of goods in OE's trademark applications and OSA agreed to amend certain definitions of goods in OSA's trademark applications.14
Relevant to the present cross motions, the 1994 Agreement also contains the following provisions:
Henceforth from the signing of this Agreement and effective in all countries of the World:
a. Omega Engineering Incorporated undertakes not to use, register or apply to register any trademark consisting of or containing the word Omega or the Greek letter O or any mark containing elements colourably resembling either of those two elements in respect of computer controlled measuring, timing and display apparatus, unless intended for science or industry.15
Because the disposition of the parties' motions turns largely on the intent underlying OP's and OS's registration and use of OMEGAWATCH.com and OMEGATIME.com domain names, defendants' explanation of their general marketing strategy and the resulting registration and use of the offending domain names is here set out in detail:16
Since [the early 1990s], OE has employed a strategy of registering a variety of OMEGA domain names for marketing and defensive purposes. Although Omega Engineering uses the domain name omega.com as the primary name for entry to its Internet website, OE has also registered and uses other domain names for its marketing purposes. For example, OE uses particular domain names in advertisements to permit potential customers to access directly the web pages for products in which they have an interest, instead of forcing them to navigate from the main entrance to its Internet website.
OE has also used specific domain names to track the effectiveness of its marketing by advertising in different trade journals different domain names, all leading to the same web page for a particular product. By tracking the number of sessions and time spent for each domain name, it can determine which trade journal generated more requests to view the product.
From a marketing point of view, by having a large collection of OMEGA domain names, OE and its affiliates maximize the chance that a customer looking for a particular product, product type or product manual or based on an advertised feature or slogan, will be led to OE's main web page or a particular product page, a particular product manual or specific technical data on a subject, even if the customer does not initially type in omega.com.
In late 1995 and early 1996, OP and OS created advertising campaigns with associated domain names. An advertising campaign was created for technical and scientific books sold under the OP name utilizing the slogan "Watchword on Scientific and Technical Books." Web pages for an Internet website featuring this advertising campaign were created, using the domain name omegawatch.com, which is a combination of the OMEGA trademark and a shortened version of the slogan "Watchword on Scientific and Technical Books." OP registered the domain name OMEGAWATCH.com on or about December 15, 1995, and began using the domain name in approximately May, 1996. The site initially consisted of the slogan "Watchword on Scientific and Technical Books," plus a listing of publications that were available from Omega Press.
At about the same time, in 1995-96, another advertising campaign was developed for the scientific instruments OS sold using the slogan "Timely Introducing Scientific Instruments." Web pages for an Internet website featuring this advertising campaign were also created using the domain name omegatime.com, which is a combination of the Omega trademark and a shortened version of the advertising slogan "Timely Introducing Scientific Instruments."
Omega Scientific registered the domain name OMEGATIME.com on December 15, 1995, and began using the domain name in approximately May, 1996. As originally formulated, the site contained the slogan "Timely Introducing Scientific Instruments" and a listing of scientific instruments available for purchase from Omega Scientific or Omega Engineering.17
On May 28, 1996, Jess M. Collen, counsel of record for OSA in the present suit, wrote Dr. William Drucker, who was apparently at that time outside counsel for OE, requesting an "immediate transfer of the rights to [OMEGAWATCH.com and OMEGATIME.com] to OSA."18 Attorney Collen further wrote, "Had not your client already identified its desire to bring about an immediate fully satisfactory conclusion to this dispute ... we would by now have taken legal steps."19
Sometime after July 17, 1998, defendants replaced the content of the websites located at OMEGAWATCH.com and OMEGATIME.com with the following hyperlinks and corresponding notations:20
If you want to buy a wristwatch, clock, or want to time a sporting event, please contact:
http://www.omega.ch21
If you are looking for Omega Engineering, Inc., world leader in process measurement and control instruments, please contact:
http://www.omega.com
Defendants explain:
More recently, the domain sites omegatime.com and omegawatch.com have provided links to the omega.com website where all of the products and merchandise of Omega Engineering and its affiliates are listed for sale.... This approach is consistent with the marketing strategy, described above, of using multiple domain names and websites as multiple ports of entry to a main website or to pages within the main website.
Thus, defendants have continued to utilize the domain name omegatime.com as a marketing vehicle to attract customers looking for computerized timing devices and to direct them to the omega.com website where such products are sold.
The defendants have also continued to use the omegawatch.com domain name to attract customers familiar with the slogan "Watchword on Scientific and Technical Books" and as a defensive tactic to protect against encroachment on the Omega name on the Web.22
Finally, defendants have not offered to sell OMEGAWATCH.com or OMEGATIME.com to plaintiff or any third party for monetary or other remuneration.23
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