Super-Krete International, Inc. v. Sadleir, 2010 U.S.Dist. LEXIS 50090 (C.D. Cal, 2010)
Plaintiff owns the registered trademark for “Super-Krete,” “Super-Krete Products” and “Super-Crete.” Defendant, plaintiff’s competitor, registered the domain “supercrete.com” which redirected to defendant’s website. Plaintiff filed a complaint under the cybersquatting act (ACPA) and sought a preliminary injunction to prevent defendant from carrying out its threat to sell the domain to a third party.
The court granted the preliminary injunction, holding plaintiff was likely to succeed on the merits and would suffer irreparable harm if the mark was sold to a third party (who could not be compelled to turn over the domain as part of this litigation). Defendant argued he fell under the safe harbor provision of the ACPA because he had reasonable grounds to believe that the mark was descriptive and because he’d prevailed in an earlier WIPO action. The court said defendant could not rely on the potential descriptiveness of the mark when defendant himself did not use the term in any way to describe his products and solely used the web address (a trademark of a direct competitor) to redirect to his own site. Also, defendant could not rely on the WIPO decision because that decision occurred well after defendant began using the mark.