Washington Speakers Bureau v. Leading Authorities, 98-634-A.

• Decision Date: 02 February 1999
• Docket Number: No. 98-634-A.,98-634-A.
• Citation: 33 F.Supp.2d 488
• Parties: WASHINGTON SPEAKERS BUREAU, INC., Plaintiff, v. LEADING AUTHORITIES, INC., Defendant.
• Court: U.S. District Court — Eastern District of Virginia

Page 488

33 F.Supp.2d 488

WASHINGTON SPEAKERS BUREAU, INC., Plaintiff, v. LEADING AUTHORITIES, INC., Defendant.

No. 98-634-A.

United States District Court, E.D. Virginia, Alexandria Division.

February 2, 1999.

COPYRIGHT MATERIAL OMITTED

William H. Bode, Daniel E. Cohen, Bode & Beckman, LLP, Washington, DC, for plaintiff.

Stephen A. Horvath, Trichilo, Bancroft, McGavin, Horvath & Judkins, P.C., Fairfax, VA, for defendant.

MEMORANDUM OPINION

ELLIS, District Judge.

In this suit, an owner of a recognized, but unregistered, trademark sues a competitor for trademark infringement and dilution based on the competitor's registration and use of a substantial portion of the trademark as a domain name. More particularly, plaintiff Washington Speakers Bureau, Inc., the owner of the unregistered mark "Washington Speakers Bureau," brings this federal trademark infringement and dilution action against its competitor, Leading Authorities, Inc., based upon Leading Authorities' registration and use of the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washington-speakers.net, and www.washington-speakers.net.

Set forth here are the Court's findings of fact and conclusions of law pursuant to Rule 52(c), Fed.R.Civ.P., as the parties have submitted the case on the discovery record for decision by the Court without a jury.

I. FACTUAL BACKGROUND

Founded in 1980, Washington Speakers Bureau, Inc., (WSB) is a prominent lecture agency based in Alexandria, Virginia. WSB represents many well-known speakers such as Margaret Thatcher, Colin Powell, and Lee Iacocca exclusively and many other speakers non-exclusively. Over the years, WSB has received considerable press attention in connection with its representation of Ronald and Nancy Reagan, Norman Schwarzkopf, and other famous and sought-after speakers. The speakers WSB represents lecture to audiences around the world in a variety of corporate, trade, and educational fora.

The deposition testimony of WSB founders Bernie Swain and Harry Rhoads establishes that they chose the name "Washington Speakers Bureau" to indicate the general nature and location of their business. Their testimony also establishes that WSB has used the name "Washington Speakers Bureau" continuously for the past eighteen years.¹ During that time, WSB has expended considerable money and effort promoting and advertising its services under this mark, including over $1 million in advertising expenses in the past five years alone.²

Indeed, the record reflects that WSB regularly advertises its services and trademark to over 14,000 customers and prospective customers including trade association executives, corporate executives, college and university officials, and independent promoters. Also clear from the record is that WSB publishes and distributes advertisements, quarterly newsletters, and a comprehensive annual brochure under its trademark. Mark French, Leading Authorities' president, acknowledged in his declaration that he receives advertisements and literature from WSB almost daily. Samples of these advertisements, included in the record, confirm WSB's prominent and ubiquitous use of the trademark "Washington Speakers Bureau."

The record confirms that, in part because of its promotional efforts, WSB has developed substantial recognition of its trademark in the relevant consumer market. Particularly persuasive in this regard are the affidavits submitted by various speakers' bureau consumers and competitors, as well as evidence of favorable press coverage. This evidence suggests that within that segment of society conversant with the world of high-profile business and political speakers, the name "Washington Speakers Bureau" is widely known and understood to refer to WSB. Nevertheless, WSB has not registered "Washington Speakers Bureau" as a trademark, although since bringing suit against Leading Authorities, WSB has commenced the trademark registration process, which is currently ongoing.

The record also discloses that "Washington Speakers Bureau" is not the only trademark associated with WSB in the market. Various affidavits of speakers' bureau customers indicate that, as a result of WSB's prominent position in the industry, some undetermined portion of the relevant market also understands the shorter phrase "Washington Speakers" to refer to WSB, although the deposition testimony of Messrs. Swain and Rhoads establishes that WSB has never called itself "Washington Speakers" in its own advertisements, publicity, or other official communications. Also, the extensive collection of newspaper and magazine articles entered into the record demonstrate that no media coverage of WSB's activities has ever referred to WSB as "Washington Speakers." Perhaps as a result, some portion of the relevant market aware of the activities of WSB does not understand the phrase "Washington Speakers" to refer to WSB, as demonstrated by affidavits offered by the defendant.

From the deposition testimony of Leading Authorities' president, it appears that Leading Authorities' business involves aiding associations, companies, and colleges in staging meetings using outside speakers that include various Washington and political personalities. In this connection, Leading Authorities offers a catalog and database listing hundreds of speakers. Leading Authorities was incorporated in 1990 and began its use of the name "Leading Authorities" in 1993. Rather than exclusively representing speakers, Leading Authorities typically "co-brokers" with other speaker groups or agencies to arrange speaker appearances. Indeed Leading Authorities has co-brokered speaking events with WSB on a number of occasions in the past. In addition to its typical mode of doing business, Leading Authorities also represents a handful of speakers exclusively. The record reflects that speakers co-brokered or represented by Leading Authorities lecture in the same fora as do speakers represented by WSB. In short, Leading Authorities transacts business in the same relevant market as WSB and offers similar, although not always identical, services.

The deposition testimony of Mr. French and David Blevins, Leading Authorities' systems administrator, in combination with the registration records of Network Solutions, Inc., (NSI)³ establish that on or about March, 1998, Leading Authorities applied for the registration of domain names⁴ www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net, and www.washington-speakers.net.

A company may register multiple domain names, just as one individual may have multiple phone numbers or addresses. These domain names may point to the same site, different sites, or different pages⁵ of the same website. According to the deposition testimony of both Mr. Blevins and Mr. French, Leading Authorities concluded in early 1998 that use of multiple domain names would allow it to reach more people through the Internet, potentially generating more business for Leading Authorities, as well as giving existing customers easier access to Leading Authorities' website's resources. According to this testimony, Leading Authorities planned ultimately to have particular domain names point at specialized pages on its website. For example, a user typing in orlandospeakers.com would reach a Leading Authorities webpage with a special focus on Orlando, Florida, and the services Leading Authorities offered there. This page would also provide a link to Leading Authorities' primary webpage or pages. Mr. French and Mr. Blevins testified that they believed that such specialized pages and domain names would allow Leading Authorities to provide its customers more individualized service. Until the specialized pages were created, all the domain names would point at Leading Authorities' primary webpages. The record invites the inference that Leading Authorities believed that even in the absence of specialized pages, the use of multiple domain names would increase the potential use of its website by increasing the odds that an Internet user searching for speakers would likely type in a domain name leading to Leading Authorities' website.

In March, 1998, various Leading Authorities employees brainstormed domain names, creating lists of possible names for registration, several of which appear in the record. Thus, on March 20, 1998, Leading Authorities registered multiple domain names with NSI. These domain names all described in some fashion the services offered by Leading Authorities. Some made use of geographic place names.⁶ Others described speakers by their areas of expertise.⁷ Yet others described in relatively generic or laudatory terms the speakers or services offered by Leading Authorities.⁸ Also at this time, Leading Authorities registered the domain name leading-authorities.com.

In the weeks following this initial, multi-domain name registration, Leading Authorities registered even more domain names. Again, some used geographic locations.⁹ Others were variations on a toll-free "speakers" telephone number¹⁰ or plays on Leading Authorities, Inc.'s "LAI" acronym.¹¹ Leading Authorities also registered two domain names incorporating the word "Blanchard" with the permission of Blanchard Training and Development, Inc., an organization that provides speakers to multiple speakers' bureaus and lecture agencies.¹² In addition, Leading Authorities registered for a variety of other miscellaneous domain names.¹³ Significantly, several of the domain names Leading Authorities registered during this period bore close resemblance to the names of other speakers' bureaus and lecture agencies around the world,¹⁴ such as Keynote Speakers, Inc.; Capital Speakers, Inc.; Florida Speakers Bureau; Celebrity Speakers, Inc.; National Speakers Forum; National Speakers Bureau (located in America); National Speakers Bureau (located in Canada); National Speakers Association; International Speakers Bureau; Meeting Professionals International,...