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Court reverses hotel’s cybersquatting conviction

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A dispute over who could use the designation “Visit Michigan City LaPorte” led to a legal battle between LaPorte County’s visitors bureau and an area hotel-resort, with the trial court ruling in favor of the visitors bureau. But the Indiana Court of Appeals reversed Monday, ruling the bureau didn’t prove it held a valid and protectable trademark.

An employee from Serenity Springs attended a public meeting at which the LaPorte County Convention and Visitors Bureau announced that the phrase “Visit Michigan City LaPorte” had been chosen as the branding identifier for the area. Immediately after the meeting, Serenity registered the domain name “visitmichigancitylaporte.com” and redirected traffic from that site to its hotel website. That same day, the bureau attempted to register the same domain name, but discovered it had been purchased and was used by Serenity.

The visitors bureau sought to prevent Serenity from using the domain and slogan, and filed an application with the Indiana Secretary of State to register the slogan and logo as a trademark. It claimed it first used the words in commerce Sept. 9, 2009, the same day Serenity registered the website. When Serenity wouldn’t voluntarily relinquish the domain name, the visitors bureau sued, alleging trademark infringement, cybersquatting and unfair competition.

The trial court ruled in favor of the visitors bureau, permanently enjoined Serenity from using the designation or domain name, and ordered Serenity to transfer the domain to the bureau.

In Serenity Springs, et al. v. The LaPorte County Convention and Visitors Bureau, 46A03-1205-MI-214, the Court of Appeals reversed because it found the “Visit Michigan City LaPorte” slogan is primarily geographically descriptive and not subject to protection as a trademark. In order to be protectable, the slogan must have acquired secondary meaning, but it did not. The judges rejected the visitors bureau’s claim that its registration with the SOS is sufficient proof of distinctiveness or secondary meaning.

“Secondary meaning is acquired through actual use of a mark, and there is simply no evidence in the record supporting a conclusion that the mark became associated with the Bureau in the minds of consumers on September 9, 2009 in the hours prior to Serenity’s registration of the domain name,” Judge Ezra Friedlander wrote.

The COA reversed and remanded with instructions to vacate the judgment and enter judgment in favor of Serenity on the trademark infringement and cybersquatting claims. But the trial court did not rule on other claims the bureau asserted, including common-law unfair competition. The judges ordered the trial court consider the bureau’s other claims and limit its consideration to the claims and evidence already presented by the bureau.  

 

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  1. Im very happy for you, getting ready to go down that dirt road myself, and im praying for the same outcome, because it IS sometimes in the childs best interest to have visitation with grandparents. Thanks for sharing, needed to hear some positive posts for once.

  2. Been there 4 months with 1 paycheck what can i do

  3. our hoa has not communicated any thing that takes place in their "executive meetings" not executive session. They make decisions in these meetings, do not have an agenda, do not notify association memebers and do not keep general meetings minutes. They do not communicate info of any kind to the member, except annual meeting, nobody attends or votes because they think the board is self serving. They keep a deposit fee from club house rental for inspection after someone uses it, there is no inspection I know becausee I rented it, they did not disclose to members that board memebers would be keeping this money, I know it is only 10 dollars but still it is not their money, they hire from within the board for paid positions, no advertising and no request for bids from anyone else, I atteended last annual meeting, went into executive session to elect officers in that session the president brought up the motion to give the secretary a raise of course they all agreed they hired her in, then the minutes stated that a diffeerent board member motioned to give this raise. This board is very clickish and has done things anyway they pleased for over 5 years, what recourse to members have to make changes in the boards conduct

  4. Where may I find an attorney working Pro Bono? Many issues with divorce, my Disability, distribution of IRA's, property, money's and pressured into agreement by my attorney. Leaving me far less than 5% of all after 15 years of marriage. No money to appeal, disabled living on disability income. Attorney's decision brought forward to judge, no evidence ever to finalize divorce. Just 2 weeks ago. Please help.

  5. For the record no one could answer the equal protection / substantive due process challenge I issued in the first post below. The lawless and accountable only to power bureaucrats never did either. All who interface with the Indiana law examiners or JLAP be warned.

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