reputation in the plaintiff’s website that led the user to access the plaintiff’s website in the first
place.^3364
With respect to the issue of confusion, although the court found the survey of the
plaintiff’s expert, which was the same expert as the Wells Fargo case, to be flawed for many of
the same reasons the Wells Fargo court noted, the court nevertheless held that the plaintiff had
established a sufficient showing of likelihood of harm from both “initial interest confusion” and
“source confusion” to support a Lanham Act claim.^3365 The court also ruled that, by registering
the domain name http://www.www1800Contacts.com, the defendant Vision Direct had violated the
Anticybersquatting Consumer Protection Act.^3366
Accordingly, based on the trademark and anticybersquatting claims, the court entered a
preliminary injunction against the defendants, enjoining them from (1) including the 1-800
CONTACTS mark, and confusingly similar terms, as elements in the SaveNow software
directory, and (2) displaying the plaintiff’s mark in the advertising of Vision Direct’s services, by
causing “Vision Direct’s pop-up advertisements to appear when a computer user has made a
specific choice to access or find Plaintiff’s website by typing Plaintiff’s mark into the URL bar
of a web browser or into an Internet search engine.”^3367
On interlocutory appeal of the preliminary injunction, the Second Circuit reversed, ruling
that as a matter of law WhenU did not “use” the plaintiff’s marks within the meaning of the
Lanham Act when it included the plaintiff’s URL in its software directory or when it caused
separate, branded pop-up ads to appear either above, below, or along the bottom edge of the
plaintiff’s website window.^3368 With respect to inclusion of the URL in WhenU’s directory, the
Second Circuit ruled that the URL transformed the plaintiff’s trademark into a word combination
that functioned more or less like a public key to the plaintiff’s website. The only place WhenU
reproduced the address was in its directory, which was not accessible to users and could
therefore not create a possibility of visual confusion with the plaintiff’s mark. In addition, a
WhenU pop-up ad could not be triggered by a computer user’s input of the 1-800 trademark or
the appearance of that trademark on a web page accessed by the user. Accordingly, the court
ruled that WhenU’s inclusion of the 1-800 web address in its directory did not infringe on the
plaintiff’s trademark.^3369
With respect to the pop-up ads, the court noted that they appeared in a separate window
prominently branded with the WhenU mark and had no tangible effect on the appearance or
functionality of the plaintiff’s website. Nor was the appearance of the ads contingent upon or
related to the plaintiff’s trademark, the trademark’s appearance on the plaintiff’s website, or the
(^3364) Id. at 490.
(^3365) Id. at 490-505.
(^3366) Id. at 505-07.
(^3367) Id. at 510.
(^3368) 1-800 Contacts, Inc. v. Whenu.com, Inc., 414 F.3d 400, 403 (2d Cir.), cert. denied, 126 S. Ct. 749 (2005).
(^3369) Id. at 408-09.