St. Louis Auto Glass Shop Takes Fight for Web Space, Internet Use to Court
Two auto glass shops in St. Louis, have found themselves entangled in a lawsuit that mirrors problems battled by larger companies, but may be the first of its kind for the auto glass industry.
Earlier this year, Victoria Lancaster, owner of Lancaster Glass in St. Louis, filed a Petition for Injunctive Relief and Damages against Bachman Auto Glass and its owner, Larry Diesbach, Jr. In the Petition, Lancaster outlined a case against Diesbach and Bachmans Auto Glass, alleging violation of the Anticybersquatting Consumer Protection Act (ACPA), false advertising, trademark infringement and unfair competition, common law trademark infringement and unfair competition, tortuous interference, injurious falsehood and defamation.
The bulk of the arguments revolve around Bachman Auto Glass registration of Internet domain names similar to that of the URL used by Lancasters company, www.lgiglass.com, and the use of the similar domain names. Lancaster alleges that the LGI domain names that Defendants have registered are identical or confusingly similar to LGIs marks and its domain name, and argues that the confusion was and is intentional.
Lancaster also alleges that the defendants have created false websites linked to one or more of the domain names and have used those false sites to publish and disseminate false, misleading and disparaging statements about LGIs business One example Lancaster sites is text that allegedly was posted on the defendants registered site www.lgiautoglass.com, which stated that Lancaster Auto Glass was no longer in business and its owners were moving to Alaska to get away from Bachman Auto Glass because they just cannot take it any more. A copy of the statement, as it appeared on the website not owned by Lancaster or her company, was one of seven exhibits submitted with the Petition.
The Petition also cites examples of incidents in which Lancaster was contacted by customers or insurers inquiring about Lancaster Glass operations, believing the company to be closed or closing.
Lancaster alleges that Defendants knew and/or should have known that the statements posted on their websites and the statements made to customers and potential customers were false and misleading and that they intended that their conduct and statements cause pecuniary harm to LGI and should have recognized that their conduct and statements were likely to cause harm to the interests of LGI. Among the damage Lancaster alleges was caused by the actions of Bachman Auto Glass are loss of business, loss of business opportunities, loss of profits, loss of good will and loss of reputation.
The Petition alleges a violation of the Anticybersquatting Consumer Protection Act, citing the registration of domain names similar to LGIs and that LGI has the exclusive right to use its mark and its marks where distinctive, valuable and protectable at the time of Defendants registration, use and/or trafficking of the LGI Domain Names. According to the petition, the registration was done with the bad faith intent to profit from LGIs marks or/or with the intent to harm LGIs business and was done willfully and deliberately with an intent to engage in cyberpiracy and with the further intent to disparage Plaintiffs and to usurp their business and business opportunities, all at Plaintiffs expanse in violation of Section 43 (d) of the Lanham Act, 15 U.S.C. § 1125 (d).
The Petition also alleges false advertising, citing Defendants registration and use of the LGI Domain Names and its publication of false and misleading statements about LGI on websites linked to the LGI domain names were made in commerce and stating that Defendants conduct and statements in commerce consist of or contain false designation of origin, false or misleading description of fact, or false or misleading representation of fact in commercial advertising or promotion that misrepresent the nature, characteristics, qualities or geographic origin of LGIs and Defendants, goods, services or commercial activities.
Counts three and four allege trademark infringement, common law trademark infringement and unfair competition, citing Defendants unauthorized use of Plaintiffs marks to confuse or deceive customers or potential customers.
Customers and potential customers, as well as all other persons affiliated with the auto glass service and repair industry and the general public who visit Defendants false websites and read or hear Defendants false statements are likely to believe that LGI is out of business or is about to go out of business and that Defendants are somehow legitimately affiliated or connected with or sponsored by LGI, the Petition reads.
The petition further alleges that Defendants duplication and imitation of LGIs markes are unfair business practices likely to deceive and confuse customers and potential customers and was done in order to trade upon Plaintiffs reputation as to the source, origin, sponsorship and approval of the goods and/or services provided and as to the affiliation, connection, false designation of origin and false representation of affiliation, all in violation of the Lanham Act, 15 U.S.C. § 1125 as amended as well as the alleged acts as willful, deliberate, malicious and in reckless disregard of LGIs rights.
In count five, the Petition alleges tortuous interference with business expectancy, noting that LGI had an continues to have a valid expectancy to do business and to continue to do business with its existing and repeat customers and to do business with potential customers who were and are searching for LGI on the internet.
Bachman Auto Glass is alleged to have wrongly interfered with those expectancies by publishing and disseminating false, misleading and disparaging statements about LGIs business, including but not limited to the statement that LANCASTER AUTO GLASS IS NO LONGER IN BUSINESS, and by engaging in cyberpiracy or other improper means.
Count six alleges injurious falsehood directed at LGI, saying that Defendants knew that the statements were false and/or acted in reckless disregard of their truth or falsity, and that by their conduct Defendants have usurped LGIs business and business opportunities and gained profits which should fairly belong to LGI.
The 40 page Petition asked for actual damages, as well as treble damages, punitive damages, prejudgment interest, costs and attorneys fees if appropriate and justified as well as permanent injunctive relief prohibiting Defendants Bachman, Diesbach, either employees, agents, representatives and all those acting on their behalf or in concert with them from: (1) registering, using, operating or trafficking in the domain names www.lgiautoglass.com, www.lancasterautoglass.com, www.lgiglass.net, www.vickilancaster.com, www.dannylancaster.com or any domain names containing the name Lancaster, any name of a member of the Lancaster family, LGI or any variation, abbreviation, combination or obscenity laden version thereof; and (2) making any false, misleading or disparaging statements regarding Plaintiffs character, reputation and/or operation of their business, including but not limited to the statement that Plaintiffs are or will be going out of business, and further ordering Defendants to: (3) remove all statements that Plaintiffs are or will be going out of business or any similar statements from all websites owned, operated or registered by or affiliated with Defendants; (4) transfer all LGI and Lancaster related domain names, including but not limited to the domain names listed previously in the Petition to plaintiffs; (5) post on the home page of all websites associated with Bachman and which are related to auto glass corrective advertising in 10 point bold and capitalized font that Bachman stated, falsely, that LGI had cased doing business; and (6) preserve and refrain from destroying or altering all evidence, whether in paper or electronic form, related to Defendants conduct directed toward LGI and the Lancaster family, including but not limited to all data, computer files, emails, correspondence, the websites mentioned in the Petition, and all documents, records or information pertaining to the registration, operation and use of the LGI related domain names and the disparaging statements concerning LGI and the Lancasters.
A temporary restraining order was issued on May 12 and on June 9, Judge Barbara Crancer issued a preliminary injunction enjoining and restraining Bachman Auto Glass, Diesbach, employees, agents and representatives thereof from registering, using, operating or trafficking the domain names listed in the Petition, including domain names containing the name Lancaster, any name of a member of the Lancaster family, LGI or variations of the companys name or abbreviation, making false, misleading or disparaging statements about Lancaster or her companyincluding statements about the operation of the business. Defendants are also ordered and required to take the necessary steps to transfer to Plaintiffs, if feasible, or abandon or relinquish, as the case may be, all LGI and Lancaster related domain names and any obscenity-containing domain names referring to Lancaster family members or LGI, and promptly report to Plaintiffs counsel compliance with this directive.
From there, Plaintiffs shall retain any records created that indicate the number and origin of any hits on the transferred websites. If either Plaintiff uses or links the domain name to other active websites, and if tracking the number and origin of hits requires software or services not used as of June 1 by Plaintiffs, and if Defendants advance the cost to Plaintiffs of such software, Plaintiffs shall acquire the software or service and preserve the record of hits and origin as described Lancaster, through the attorneys involved in the case, must provide 15 days notice to Bachman Auto Glass for intention of using any of the domain names in question.
The order also requires Bachman Auto Glass and its owners to remove all statements that Lancaster is or will be going out of business from all the websites the company owns, operates or has registered in its name and in its stead post a statement as drafted by the court in 16 point, bold and capitalized letters that PURSUANT TO THE ORDER OF THE ST. LOUIS COUNTY CIRCUIT COURT, WE ARE REQUIRED TO INFORM YOU THAT LANCASTER GLASS, INC. (ALSO KNOWN AS LGI) IS STILL IN BUSINESS. LGIS WEBSITE IS WWW.LGIGLASS.COM. BACHMAN HAD IN THE PAST IMPROPERLY STATED THAT LANCASTER AUTO GLASS IS NO LONGER IN BUSINESS.
Additionally, Preliminary Injunction requires Bachman Auto Glass to create a link that will take visitors from the false website to www.lgiglass.com and said link must be in black letters with a white background. The message must immediately appear and be viewable on the homepage without scrolling or other action and the homepage shall not automatically jump or link to another page or site.
According to the Preliminary Injunction, after six months, if Defendants elect not to utilize any websites associated with Defendants that are related to auto glass advertising, and have given fifteen days notice to Plaintiffs (through counsel) of Defendants intention to discontinue utilization of such websites, then the message and hyperlink can be removed from the Bachman website.
Additionally, the Defendants are ordered to discontinue use of a particular phone number or, alternatively, require those answering the phones to inquire if the caller was trying to reach LGI and provide the caller with LGIs toll free number if they were, in fact, trying to reach the other company. (The preliminary injunction states that an automated system prompting callers to press a particular number for LGI and a different number for Bachman is enough to meet this criteria.)
Bachman Auto Glass and other named defendants in the case are also enjoined and restrained from claiming to be, be associated with or represent LGI in any forum, place or medium, and finally, they are ordered and required to promptly contact Google to request that the cache pages be removed by Google for containing false information.
Stay tuned to glassBYTES.com for more information on this case as it becomes available.
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