The case is Heavenly Valley, LP, et al., vs. Lake Tahoe Development Company, LLC, CIV. NO. S-09-1533 FCD GGH, U.S. District Court for the Eastern District of California, (July 22, 2010 U.S. Dist. LEXIS 74488) and was heard before U.S. Magistrate Judge Gregory G. Hollows.
Plaintiffs Heavenly Valley filed the complaint on June 3, 2009 alleging that Defendant improperly and without authorization used the ‘HEAVENLY’ trademarks in the name ‘The Chateau at Heavenly Village.’
A quick search through the Trademark Electronic Search System (TESS) revealed that among the myriad ‘HEAVENLY’ federally registered trademarks the Plaintiffs Heavenly Valley, a Delaware corporation limited partnership, are the registered owners of the ‘HEAVENLY VALLEY’ mark, Serial No. 74151462.
Magistrate Judge Hollows noted that jurisdiction was properly asserted over Defendants by the California E.D. court and that Defendants failed to file an answer to the summons and complaint or otherwise failed to appear for this action. Therefore, the Magistrate Judge directed that default judgment be entered against Defendant Lake Tahoe Development Company.
After determining that an entry of default judgment was warranted, Magistrate Judge Hollows then assessed Heavenly Valley’s requests for injunctive relief. Although Hollows did not address how the unfair business practice (non-compete) of false advertising might have played a roll in Defendant Lake Tahoe Development Company’s use of the ‘HEAVENLY’ mark to refer to its product, he did address cybersquatting and trademark infringement claims. After enumerating that the Lanham Act provides injunctive relief to prevent trademark infringement and the Anti-cybersquatting Consumer Protection Act (ACPA) provides for injunctive relief to prevent use of a confusingly similar mark in a domain name, he said;
“The injunctive relief requested is reasonable and specifically tailored. Plaintiffs seeks to permanently enjoin defendant from using the name, “The Chateau at Heavenly Village,” the internet domain name www.chateauheavenlyvillage.com, Heavenly’s trademarks or other confusingly similar designations. Plaintiffs also seeks an order preventing defendant from using or reproducing any of the Heavenly trademarks as part of a brand name for its products or services, including the aforementioned names. Also requested is an order requiring defendant to destroy all items in their possession which contain the Heavenly trademarks or aforementioned names. In regard to the www.chateauheavenlyvillage.com domain name, plaintiffs seek an order requiring defendant to relinquish all interest in it or any confusingly similar domain name and transfer all such domain names to HVLP. Finally, plaintiffs seek a permanent injunction preventing defendant, or others acting in concert with defendant, with actual notice from aiding anyone else in engaging in any of the aforementioned activities.”
Magistrate Hollows determined that all of Plaintiff Heavenly Valley’s requests were reasonable and specifically tailored and resolved to recommend to the U.S. District Judge assigned to the case that Plaintiff’s request for injunctive relief be granted accordingly to the terms set forth in Plaintiff’s proposed judgment (quoted above).
Curiously, Lake Tahoe Development Company is still in possession of the domain chateauheavenlyvillage.com. It will interesting to find out if this Magistrate ruling on cybersquatting and trademark-infringement is implemented by the District Judge. If so, Heavenly Valley will likely immediately change traffic going to chateauheavenlyvillage.com to redirect to the Heavenly Valley Website or change chateauheavenlyvillage.com to advertise Heavenly Valley products/services.
Magistrate Hollows’ full recommendation can be found here, Valley v. Lake Tahoe Dev. Co., 2010 U.S. Dist. LEXIS 74488 (E.D. Cal. July 22, 2010)
Information for Internet Lawyers: more information and related articles on the ACPA, the Lanham Act, and Cybersquatting;