Plaintiff wins on trademark claim; bad faith is left for trial
David John Carnivale v. Staub Design, LLC, John Staub, David Staub, Civ. No.08-764-SLR, March 31, 2010.
Robinson, J. The court grants-in-part and denies-in-part plaintiff's motion for summary judgment and denies defendants' cross motion for summary judgment.
This is a domain name dispute. Plaintiff is an architect who secured U.S. Trademark and Service Mark THEAFFORDABLE HOUSE for “architectural plans and specifications" and "on-line retail store services featuring books and sets of blue prints" on January 4, 2005, certifying use of the mark in commerce since March 15. 1996. The registration issued on February 14, 2006. Plaintiff published the book "The Affordable House" in 1994, and registered the domain name www.affordablehouse.com on July 20, 1998. Defendants are a residential design company focused on the application of autoclaved aerated concrete ("MC"), a lightweight building material. In May of 2004, defendants registered the domain name www.theaffordablehouse.com and began using it to post information on MC in December of 2004. Defendants used the slogan on their website, as well as on booths at renewable energy conferences held between 2005 and 2007.
The court finds that defendants' domain name is identical or confusingly similar to his mark and rules in favor of Plaintiff on summary judgment. But the court finds that a genuine issue exists on the question of bad faith. Because it is improper to weigh these factors on summary judgment, plaintiff’s motion is denied on this ground and the issue of bad faith must proceed to trial.
