UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Granite State Trade School, LLC
v. Civil No. 15-cv-223-LM Opinion No. 2015 DNH 151 The New Hampshire School of Mechanical Trades, Inc.
ORDER
New Hampshire, home to extensive granite formations and
innumerable quarries, has long been known as the Granite State.
The above-captioned dispute raises a novel, but ultimately basic
question: are the terms “New Hampshire” and “Granite State” so
synonymous that the public is likely to be confused by their
interchangeable use in commercial advertising?
The plaintiff, Granite State Trade School, LLC (“Granite
State”), and the defendant, The New Hampshire School of
Mechanical Trades, Inc. (“NHSMT”), are both in the business of
training plumbers, gas fitters, and other tradesmen. Granite
State has brought this lawsuit, alleging that NHSMT’s use of two
website addresses (known as “URLs”)1 is deceptive, and may cause
prospective students to confuse the two schools.
1 “URL” stands for uniform resource locator. 1 Granite State seeks a preliminary injunction barring NHSMT
from using these URLs during the pendency of the litigation.
NHSMT objects, and the court held a full-day evidentiary hearing
on July 7, 2015. For the reasons that follow, Granite State’s
motion for preliminary injunction is denied.
Background
Since its founding in 2006, Granite State has used the URL
www.granitestatetradeschool.com. Through its website, Granite
State advertises its services to prospective students, and
allows students to register for courses online.
NHSMT was founded in 2010, and began offering courses in
2012. Like Granite State, NHSMT uses its website to promote its
services and to allow students to register for courses.
Initially, NHSMT exclusively used the URL www.tnhsmt.com, a
basic acronym of its name. Later, however, NHSMT began using
the URLs www.nhtradeschool.com and www.nhtradeschool.net in its
advertisements. While the content of NHSMT’s website still
appears at www.tnhsmt.com, the www.nhtradeschool.com and .net
URLs automatically redirect users to www.tnhsmt.com.
In this dispute, Granite State seeks to bar NHSMT’s use of
the www.nhtradeschool.com and .net URLs. Granite State
maintains that NHSMT’s use of these URLs is likely to mislead
2 prospective students into confusing the two schools because of
their similarity to www.granitestatetradeschool.com.
The court will summarize the evidence offered at the July 7
hearing before discussing the merits of Granite State’s motion
for preliminary injunctive relief.
I. Granite State’s Evidence
Granite State offered the testimony of three witnesses: (1)
James Fusco, the founder and owner of Granite State; (2) John
Brulotte, a former Granite State student; and (3) Karen Chansky,
an internet marketing professional.
Mr. Fusco testified that he founded Granite State in 2006.
Granite State currently offers four courses in gas heating
installation and maintenance, all of which Mr. Fusco teaches
personally. These are the only live courses that Granite State
offers, though students may register for an online plumbing
training and certification program, for which Mr. Fusco serves
as an in-person mentor.
Mr. Fusco testified that to advertise its services, Granite
State relies primarily on radio advertisements and direct
mailings to prospective students. Since 2007, Granite State has
spent some $58,000 on this type of advertising, or approximately
$7,250 per year. In addition, Mr. Fusco testified that Granite
State has used the URL www.granitestatetradeschool.com
3 continuously since its founding in 2006, and has spent a total
of some $19,000 designing and maintaining its website.
Mr. Fusco also testified regarding Granite State’s
financial performance. According to Mr. Fusco, Granite State
experienced a precipitous downturn in student enrollment
beginning in April of 2015, approximately the same time that Mr.
Fusco first learned that NHSMT was airing a radio advertisement
directing prospective students to the www.nhtradeschool.com URL.
Mr. Fusco explained his belief that the enrollment decline is
attributable to students confusing the two schools, and he noted
that his secretary often receives telephone calls from students
attempting to contact NHSMT.
Next, Granite State offered the testimony of John Brulotte,
the owner of a pipe and gas fitting company. Mr. Brulotte
testified that he had taken courses at Granite State in the past
and had enjoyed working with Mr. Fusco, though he acknowledged
that he could not recall the name of Mr. Fusco’s school. Mr.
Brulotte testified that, in April of 2015, he sought to enroll
in one of Mr. Fusco’s recertification courses at Granite State.
Unsure of the name of Mr. Fusco’s school, Mr. Brulotte conducted
an internet search for “New Hampshire trade school.” Believing
he had found Mr. Fusco’s website, Mr. Brulotte clicked on the
first search result. In fact, Mr. Brulotte had found NHSMT’s
website, and he inadvertently enrolled himself in a similar
4 course that NHSMT was offering. Mr. Brulotte did not discover
his mistake until he arrived at Granite State to find that no
such course was being offered that day. On cross examination,
Mr. Brulotte acknowledged that he had been in a hurry and had
not paid careful attention when conducting his search and
registering for the course.
Granite State’s final witness was Karen Chansky, a
marketing consultant Granite State had hired to increase its web
traffic. Ms. Chansky began her work by analyzing the traffic on
www.granitestatetradeschool.com for the period of February to
June of 2015. See Pl.’s Ex. 10. Reproduced in relevant part,
Ms. Chansky’s web traffic analysis showed the following data:
Feb. 2015 Mar. 2015 Apr. 2015 May 2015 June 2015
Organic Search 596 748 595 439 569
% Organic 73% 57% 55% 32% 31%
Referral 121 409 328 329 423
Direct 96 157 154 616 845
Social 4 4 2 2 3
Total 817 1318 1079 1386 1840
Ms. Chansky explained this data as follows. Internet users
may reach a website through a variety of channels. At the most
basic level, an internet user might reach a website by typing
5 its URL directly into the internet browser. In Ms. Chansky’s
data set, these users would be captured in the “Direct” row.
For example, this data shows that in March of 2015, 157 users
reached Granite State’s website by typing the URL
www.granitestatetradeschool.com directly into their browser.
Second, an internet user might reach a particular website
through a search engine, like Google. Using keyword search
terms, the user will search for relevant websites, then access a
particular website by clicking on a link on the results page.
There is a catch, however, because not all links are created
equal. On a typical Google search results page, for example,
the links at the top are sponsored links placed there by
merchants who have paid for the right to have their website
appear in response to particular keywords. These sponsored
links are known as bid-based “pay-per-click” (or “PPC”) links
because merchants bid on keyword search terms. If a website
owner outbids his competitors, an internet user using those
search terms will find the owner’s website at or near the top of
the sponsored links section.
Just below these sponsored links are non-sponsored, or
“organic” links. Organic links are links that appear in the
search results because the website content matches the keyword
6 search terms, as determined by the search engine’s algorithms.2
In Ms. Chansky’s data set, the top row captures users who
reached Granite State’s website by clicking on an organic link.
Finally, Ms. Chansky’s data captures users who reached
Granite State’s website through a referral or through social
media. A referral simply means that the user clicked on a link
to Granite State’s website posted on some other website. For
example, there was evidence that there are links to Granite
State’s website on the New Hampshire Department of Safety
website. Any user accessing Granite State’s website via one of
these third-party sites would be logged in the “Referral” row.
The final row captures users who accessed Granite State’s
website via a link on a social media site, such as Twitter or
Facebook.
Ms. Chansky testified that she believed NHSMT had
implemented a PPC campaign on Google in or around February of
2015. She explained that NHSMT had bid on certain keywords
(like “New Hampshire trade school”) which, when entered into
Google, would prompt the URL www.nhtradeschool.net to appear at
or near the top of the sponsored links section. She further
2 As an example, if an internet user was to type “car dealers Concord NH” into Google, the top two results would be sponsored links for local Kia and Mazda dealers, and just below those links would be organic links to other area dealerships. 7 explained that, when clicked, this URL would automatically
redirect users to NHSMT’s principal website, www.tnhsmt.com.
Ms. Chansky argued based on her data that NHSMT was
responsible for the decline in enrollment at Granite State. She
focused almost exclusively on the row showing the percentage of
visits to Granite State’s website from organic links. As
depicted in the table above, this percentage steadily declined
from 73% in February to 31% in June. Ms. Chansky attributed
this decline to the fact that NHSMT’s PPC campaign was driving
internet users to NHSMT instead of Granite State.
Finally, Ms. Chansky explained that, in May of 2015, she
and Mr. Fusco decided to implement a PPC campaign for Granite
State. Like NHSMT’s campaign, Granite State’s campaign bids on
relevant search terms. Ms. Chansky testified that the campaign
has been successful and has driven Granite State’s website to
the top of Google’s sponsored links section.3
II. NHSMT’s Evidence
NHSMT’s sole witness was its co-founder, Dean Millard. In
relevant part, Mr. Millard testified as follows. NHSMT was
founded in 2010, and began offering courses in 2012. NHSMT
3Indeed, at the hearing, Granite State’s counsel conducted a Google search for “new hampshire trade school.” The results page placed Granite State’s website atop the sponsored links, one spot above www.nhtradeschool.net. See Pl.’s Ex. 11. 8 currently offers a more extensive curriculum than Granite State,
with live training and certification programs in gas, plumbing,
electrical, oil heat, and HVAC installation and maintenance.
Like Granite State, NHSMT advertises via radio, direct
mailing, and the internet, but unlike Granite State, NHSMT
advertises on a larger scale, also utilizing newspaper and
television advertisements. Compared to Granite State, NHSMT
spends more money on advertising: $31,000 in 2013 and $37,000 in
2014, with $47,000 budgeted for 2015.
Mr. Millard explained that, from 2010 to 2012, while NHSMT
was working toward opening its doors, it used www.tnhsmt.com as
its sole URL. In 2012, however, while working on a television
commercial, Mr. Millard was advised that “tnhsmt” was difficult
to articulate. At the urging of the commercial’s production
director, NHSMT registered the URL www.nhtradeschool.com. Since
2012, NHSMT has used that URL in all of its print, radio, and
television advertising. Mr. Millard explained that NHSMT began
using the URL www.nhtradeschool.net more recently. In June of
2014, NHSMT launched a PPC campaign targeting specific search
terms. In response to those search terms, sponsored links to
the www.nhtradeschool.net URL appear at or near the top of the
search results.
9 Discussion
“A preliminary injunction is an ‘extraordinary and drastic
remedy;’ it is never awarded as of right.” Munaf v. Geren, 553
U.S. 674, 689-90 (2008) (quoting 11A C. Wright, A. Miller & M.
Kane, Federal Practice & Procedure § 2948, at 129 (2d ed. 1995)
(further citations omitted)). Rather, “[a] plaintiff seeking a
preliminary injunction must establish that he is likely to
succeed on the merits, that he is likely to suffer irreparable
harm in the absence of preliminary relief, that the balance of
equities tips in his favor, and that an injunction is in the
public interest.” Winter v. Natural Res. Def. Council, Inc.,
555 U.S. 7, 20 (2008); see also Bl(a)ck Tea Soc’y v. City of
Bos., 378 F.3d 8, 11 (1st Cir. 2004). The court will assess
each of these four elements in turn, mindful that the burden of
satisfying them rests and remains with the party seeking the
injunction. Esso Standard Oil Co. (P.R.) v. Monroig-Zayas, 445
F.3d 13, 18 (1st Cir. 2006).
I. Likelihood of Success on the Merits
“Though each factor is important . . . ‘the sine qua non of
[the] four-part inquiry is likelihood of success on the merits:
if the moving party cannot demonstrate that he is likely to
succeed in his quest, the remaining factors become matters of
idle curiosity.’” Sindicato Puertorriqueño de Trabajadores,
10 SEIU Local 1996 v. Fortuño, 699 F.3d 1, 10 (1st Cir. 2012) (per
curiam) (quoting New Comm Wireless Servs., Inc. v. SprintCom,
Inc., 287 F.3d 1, 9 (1st Cir. 2002) (alteration omitted)). In
cases involving trademarks, as here, the likelihood of success
inquiry “plays an even greater role because resolution of the
other three factors will depend, in large part, on whether the
plaintiff is likely to succeed in establishing infringement.”
Peoples Fed. Sav. Bank v. People’s United Bank, 750 F. Supp. 2d
217, 221 (D. Mass. 2010), aff’d, 672 F.3d 1 (1st Cir. 2012).
“To demonstrate likelihood of success on the merits, plaintiffs
must show more than mere possibility of success – rather, they
must establish a strong likelihood that they will ultimately
prevail.” Sindicato Puertorriqueño, 699 F.3d at 10 (citations
omitted) (internal quotation marks omitted).
Granite State has brought claims against NHSMT for unfair
competition, violation of the New Hampshire consumer protection
statute, N.H. Rev. Stat. Ann. § 358-A, and violation of the
Lanham Act, 15 U.S.C. §§ 1125(a) and (d). While distinct causes
of action, all three require Granite State to show that: (1) its
mark is distinctive; and (2) NHSMT’s alleged infringement is
likely to cause confusion among consumers. See Ligotti v.
Garofalo, 562 F. Supp. 2d 204, 214 (D.N.H. 2008). Therefore,
Granite State must be able to satisfy both of these elements in
order to establish a likelihood of success on the merits.
11 A. Is Granite State’s Mark Distinctive?
A mark is entitled to trademark protection if it is capable
of functioning as a source identifier of goods. Bos. Duck
Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir.
2008). Trademark law categorizes marks along a “spectrum of
distinctiveness, based on their capacity to serve such a source-
identifying function.” Id. (footnote omitted). “A mark is
classified as: (1) generic (least distinctive), (2) descriptive,
(3) suggestive, (4) arbitrary, or (5) fanciful (most
distinctive).” Id. (citations omitted).
Here, Granite State contends that “Granite State Trade
School” is a descriptive mark. A descriptive mark is one that
“convey[s] an immediate idea of the ingredients, qualities or
characteristics of the goods to which they are attached . . .
[but is] not inherently capable of serving as [a] source-
identifier[] . . . .” Id. at 13 (citations omitted) (internal
quotation marks omitted). Generally, a descriptive mark is not
entitled to trademark protection unless it has become associated
with a single commercial source, such that the phrase is said to
have acquired “secondary meaning.” Id. (citing 15 U.S.C. §
1052(f)). “A mark is, therefore, considered distinctive (and,
thus, eligible for trademark protection) if it either is
inherently distinctive or exhibits acquired distinctiveness
gained through secondary meaning.” Id. (quoting Borinquen
12 Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116-17 (1st
Cir. 2006)). Where, as here, the mark is geographically
descriptive, “secondary meaning has been established . . . where
the mark no longer causes the public to associate the goods with
a particular place, but to associate the goods with a particular
source.” Bos. Beer Co. Ltd. P’ship v. Slesar Bros. Brewing Co.,
9 F.3d 175, 181 (1st Cir. 1993).
In assessing whether the phrase “Granite State Trade
School” has acquired secondary meaning, the court considers: (1)
the length and manner of Granite State’s use of the term; (2)
the nature and extent of advertising and promotion of the mark;
(3) the efforts made in the direction of promoting a conscious
connection, in the public’s mind, between the name or mark and a
particular product or venture, id. at 182; and (4) Granite
State’s size and prominence, Peoples Fed. Sav. Bank, 750 F.
Supp. 2d at 223. Establishment of secondary meaning entails
“vigorous evidentiary requirements,” and Granite State bears the
burden of proving that its name has acquired secondary meaning.
Bos. Beer Co., 9 F.3d at 181 (citations omitted) (internal
quotation marks omitted).
Though a close call, the available evidence is sufficient
to support a finding that the mark “Granite State Trade School”
has acquired a level of secondary meaning. As an initial
matter, in assessing the length and manner of Granite State’s
13 use of the mark, Granite State has used the term “Granite State
Trade School” widely and continuously since its founding in
2006. For example, Granite State is registered to do business
in New Hampshire under the name “Granite State Trade School,”
and is listed on the state Department of Safety website as an
accredited program for educational instruction. See Pl.’s Exs.
1, 3. Furthermore, Mr. Fusco testified that, until NHSMT began
offering courses in 2012, Granite State essentially operated
without competition, allowing the local trade community to
become familiar with its brand.
The court also considers the nature and extent of Granite
State’s advertising and promotion of its mark. Mr. Fusco
testified that Granite State has spent some $58,000 on radio and
direct mail advertising since 2007. As an exhibit, Granite
State submitted the text of three of its radio advertisements,
all of which repeatedly reference “Granite State Trade School,”
and its URL, www.granitestatetradeschool.com. See Pl.’s Ex. 5.
This evidence demonstrates not only active advertising and
promotion of Granite State’s brand, but an attempt by Granite
State to create a conscious connection between the mark “Granite
State Trade School” and its particular set of services.
Finally, the court considers Granite State’s size and
prominence. The evidence suggested that Granite State is a
small operation. For example, it only offers four live courses,
14 all of which are taught by Mr. Fusco. Nevertheless, Mr. Millard
of NHSMT candidly admitted that members of the trade community
in New Hampshire associate the term “Granite State” with Granite
State Trade School specifically, rather than with a generic
trade school that happens to be located in New Hampshire. This
concession carried significant weight because of Mr. Millard’s
familiarity with the New Hampshire trade school industry. See
Bos. Duck Tours, 531 F.3d at 18 (noting that “[t]he touchstone
of the analysis remains the phrase’s primary significance to the
relevant public”). In sum, though a close call, the evidence is
sufficient to conclude that “Granite State Trade School” has
acquired a level of secondary meaning entitling it to trademark
protection.
B. Will NHSMT’s Infringement Likely Cause Confusion?
To establish a likelihood of success on the merits – the
first of four elements required to receive a preliminary
injunction – Granite State must prove not only that its mark is
distinctive, but that NHSMT’s alleged infringement is likely to
cause consumer confusion. In assessing whether NHSMT’s alleged
infringement is likely to cause confusion among consumers, the
court considers the eight so-called “Pignons” factors:4 (1) the
4 See Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981).
15 similarity of the marks in question; (2) the similarity of the
services offered; (3) the relationship between the parties’
channels of trade;5 (4) the relationship between the parties’
advertising; (5) the classes of prospective purchasers; (6)
evidence of actual confusion; (7) NHSMT’s intent in adopting its
mark; and (8) the strength of Granite State’s mark. Peoples
Fed. Sav. Bank v. People’s United Bank, 672 F.3d 1, 10 (1st Cir.
2012). “A proper analysis takes cognizance of all eight factors
but assigns no single factor dispositive weight.” Id.
Moreover, it is not enough for Granite State to show a mere
theoretical possibility of confusion; “the allegedly infringing
conduct must create a likelihood of confounding an appreciable
number of reasonably prudent purchasers exercising ordinary
care.” Bos. Duck Tours, 531 F.3d at 12 (citations omitted)
(internal quotation marks omitted).
Several of these factors favor Granite State. NHSMT and
Granite State offer similar services and occupy the same channel
of trade in that both train and accredit tradesmen. They also
use similar channels of advertising in that both rely on radio
advertisements, direct mail marketing, and an internet presence.
Likewise, both target the same prospective purchasers, namely
5 A channel of trade refers to the environment in which the consumer acquires the product. For example, there is a distinction between wholesale and retail channels of trade. 16 New Hampshire residents considering a career in the trades.
Finally, as described above, the evidence established that
Granite State’s mark is fairly well-recognized within its
industry.
Nevertheless, the remaining factors heavily favor NHSMT.
As an initial matter, the marks in question are dissimilar.
Granite State argues that NHSMT’s use of www.nhtradeschool.com
and .net is likely to confuse consumers for two reasons. First,
Granite State notes that it perverts NHSMT’s actual name. NHSMT
is not called The New Hampshire Trade School; it is called The
New Hampshire School of Mechanical Trades. Second, Granite
State argues that prospective students view the terms “New
Hampshire” and “Granite State” as interchangeable, such that
they are likely to believe that www.nhtradeschool.com (or .net)
is affiliated with (or is) a website for Granite State, whose
website is located at www.granitestatetradeschool.com.
This is an unusual URL infringement case. Typically, URL
infringement claims are based on one of two scenarios. In the
first scenario, the infringer intentionally registers a URL that
resembles a well-known URL in the hopes that users will
carelessly click on his website (a practice known as
“typosquatting”). See, e.g., World Mkt. Ctr. Venture, LLC v.
Tex. Int’l Prop. Assocs., No. 2:08-cv-01753-RCJ-GWF, 2009 WL
3303758 (D. Nev. Oct. 14, 2009) (Las Vegas-based owner of the
17 website www.lasvegasmarket.com sued defendant registrant of the
intentionally misspelled www.lasvagasmarket.com).
In the second scenario, the infringer modifies a URL,
typically by pluralizing or adding a word, such that the
resulting URL falsely suggests a connection between his website
and an established brand. See, e.g., Audi AG v. D’Amato, 469
F.3d 534 (6th Cir. 2006) (auto manufacturer and owner of
www.audi.com sued the unaffiliated user of the URL
www.audisport.com); Paccar Inc. v. Telescan Techs., L.L.C., 319
F.3d 243 (6th Cir. 2003) (manufacturer of Kenworth and Peterbilt
trucks sued unaffiliated user of URLs including
www.kenworthusedtrucks.com and www.peterbiltnewtrucks.com); PC
Connection, Inc. v. Crabtree, 754 F. Supp. 2d 317 (D.N.H. 2010)
(electronics manufacturer, PC Connection, sued technology
company that pluralized its name and added a hyphen in its URL,
www.pc-connections.com).
Granite State’s claim is unique. First, the URLs in
question, www.granitestatetradeschool.com and
www.nhtradeschool.com (and .net) are not visually similar.
There is virtually no risk that an internet user would
mistakenly click on one while attempting to click on the other.
Cf. World Mkt. Ctr., 2009 WL 3303758, at *1
(www.lasvegasmarket.com versus www.lasvagasmarket.com). Second,
the only portion of Granite State’s URL that NHSMT has
18 reproduced in its own URL is the non-descript term “trade
school.” This is distinguishable from a scenario in which an
alleged infringer modifies a reputable brand name to falsely
imply an affiliation, like adding “sport” to Audi, or inserting
the word “used” between Kenworth and trucks.
Ultimately, Granite State’s claim is that the terms “New
Hampshire” and “Granite State” are so inextricably intertwined
in the minds of consumers that NHSMT’s use of the abbreviation
“NH” – not even the full name, New Hampshire - in its URL is
likely to mislead the public. While New Hampshire is proudly
known far and wide as the Granite State, the URL
www.granitestatetradeschool.com is simply not similar enough to
www.nhtradeschool.com (or .net) to risk confounding an
appreciable number of reasonably prudent purchasers exercising
ordinary care. Bos. Duck Tours, 531 F.3d at 12.
Next, Granite State’s evidence of actual confusion was
unpersuasive. As outlined above, this evidence consisted of the
following: (1) Mr. Fusco’s indication that his secretary
receives several calls per week from students trying to reach
NHSMT; (2) Mr. Brulotte’s experience inadvertently registering
for a course at NHSMT; and (3) Ms. Chansky’s data showing a
decline in organic site visits to Granite State’s website. None
of this evidence withstands even a cursory challenge.
19 First, the fact that some students have mistakenly called
Granite State while attempting to contact NHSMT is perhaps
evidence of confusion, but it is not the sort of confusion that
Granite State needs to prove its case. If anything, this is
evidence that some consumers have confused Granite State for
NHSMT, not the other way around, as Granite State has alleged.
What is more, Mr. Fusco did not offer any evidence that the
source of this confusion relates to NHSMT’s use of URLs that are
confusingly similar to Granite State’s URL.
Next, Mr. Brulotte’s experience, while no doubt frustrating
for him, is weak evidence of actual confusion. The actual
confusion inquiry focuses on reasonably prudent purchasers who
exercise ordinary care. Id. Mr. Brulotte candidly admitted
that he was in a rush, did not pay attention to his internet
search, and carelessly clicked on the top link without giving
the matter further thought.
The evidence established that, unlike Mr. Brulotte, the
vast majority of prospective students cautiously explore their
options. This is particularly true given that the courses that
Granite State and NHSMT offer are expensive and time-intensive.
Mr. Fusco and Mr. Millard both testified that they regularly
meet with prospective students for tours and to answer
questions. In this context, even if the court were to find a
similarity between the URLs in question (which it has not), the
20 risk of confusion would be mitigated by the nature of the
services being offered. See Heartsprings, Inc. v. Heartspring,
Inc., 949 F. Supp. 1539, 1544 (D. Kan. 1996) (noting that,
unlike with cheap, everyday products, consumers exercise a high
degree of care when purchasing expensive educational services,
decreasing the risk of confusion).
Finally, Ms. Chansky’s testimony and data did not
convincingly establish a likelihood of confusion. For ease of
reference, Ms. Chansky’s data is again reproduced here:
As noted above, Ms. Chansky based her conclusion that
consumers were confused by NHSMT’s URL on the fact that Granite
State saw monthly declines in the number of organic site visits
between February and June of 2015. Critically, Ms. Chansky only
focused on the percentage of organic site visits, rather than
the total number of visits.
21 For example, in February, Granite State’s website received
a total of 817 visits. 596, or 73% of these, were organic; 121
were via a referral; 96 were direct; and four were via social
media. In June, the website received 1840 total visits. 569,
or 31% of these, were organic; 423 were via a referral; 845 were
direct; and three were via social media.
What this data shows, in essence, is that during the period
of time when Ms. Chansky claimed that consumers were being
deceived by NHSMT’s implementation of a PPC campaign using the
URL www.nhtradeschool.net, total traffic to Granite State’s
website in fact more than doubled from 817 in February to 1840
in June. While the percentage of organic site visits declined,
the actual number of organic site visits remained largely
unchanged (596, 748, 595, 439, and 569). Simultaneously, the
number of direct and referral visits skyrocketed. In other
words, the percentage-based decline is attributable not to a
decline in organic visitors, but to a spike in other traffic on
the website. In the court’s view, this is not compelling
evidence of actual consumer confusion.6
6 When the court asked Ms. Chansky about this issue during her testimony, she opined that Granite State should expect to see an increase in overall traffic in the spring, as this corresponds to the period of time in which many of its courses are offered. Ms. Chansky, however, was unable to supply historical data supporting this theory.
22 The last of the Pignons factors calls on the court to
assess NHSMT’s intent in using the challenged URLs. Mr. Millard
testified convincingly that NHSMT had no ill intent whatsoever.
He explained that NHSMT began using www.nhtradeschool.com in
2012 in response to feedback from a television production
manager that its then-current URL, www.tnhsmt.com, was difficult
to articulate and convey in spoken advertising. Granite State
did not produce evidence of any kind that NHSMT intended the
URLs to deceive or mislead.
In sum, the court finds that Granite State is unable to
demonstrate a likelihood of consumer confusion. While Granite
State and NHSMT occupy a similar market niche, the marks in
question are dissimilar, there was virtually no evidence of
actual confusion, and NHSMT did not have an intent to deceive.
Because Granite State cannot establish a likelihood of consumer
confusion, an essential element of all three of its claims,
Granite State is unable to demonstrate a likelihood of success
on the merits – the threshold requirement to obtain preliminary
injunctive relief.
II. Irreparable Harm in the Absence of Relief
Even if the court were to overlook Granite State’s
inability to establish a likelihood of success on the merits,
Granite State cannot satisfy its burden of demonstrating
23 irreparable harm in the absence of relief. The obligation of
the movant to demonstrate irreparable harm is an important
prerequisite to obtaining preliminary injunctive relief. Voice
of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d
26, 32 (1st Cir. 2011). It is not enough that the movant
demonstrate the mere possibility of irreparable harm; rather,
the movant must show that, in the absence of a temporary
injunction, irreparable harm is likely. Respect Maine PAC v.
McKee, 622 F.3d 13, 15 (1st Cir. 2010).
A central premise behind Granite State’s seeking of a
preliminary injunction is the fact that NHSMT had just recently
begun using the www.nhtradeschool.com and .net URLs. For
example, Mr. Fusco testified that Granite State’s student
enrollment was “keeping pace” with 2013 and 2014, until April of
2015 when he experienced a sudden drop-off. Mr. Fusco blamed
the drop-off on NHSMT because at approximately that time he
first heard a radio advertisement in which NHSMT directed
listeners to the www.nhtradeschool.com URL. Separately, based
on her data, Ms. Chansky opined that NHSMT had begun its PPC
campaign using www.nhtradeschool.net in February of 2015.
The evidence established that both Mr. Fusco’s and Ms.
Chansky’s assumptions were incorrect. Mr. Millard testified
that NHSMT has used the www.nhtradeschool.com URL consistently
and exclusively in its television, radio, and print advertising
24 since 2012. He also testified that NHSMT began its PPC campaign
using www.nhtradeschool.net in June of 2014, some eight months
earlier than Ms. Chansky had assumed.
In addition to Mr. Fusco’s testimony that enrollment was
consistent until April of 2015, Granite State submitted
financial records showing that in both 2013, and again in 2014,
it achieved record total revenues. See Pl.’s Ex. 7. Given that
NHSMT was using the www.nhtradeschool.com URL during this entire
period, and was using the www.nhtradeschool.net URL for the
latter half of 2014 and into 2015, Granite State simply cannot
demonstrate a risk of irreparable harm in the absence of
preliminary injunctive relief. This is so because the periods
during which NHSMT was allegedly infringing coincided with
periods of record success and productivity for Granite State.
III. Balance of the Equities and the Public Interest
The remaining elements required for preliminary injunctive
relief call upon the court to assess the balance of the equities
among the parties, and the public interest (if any) in the
issuance of an injunction. The balancing of the equities
inquiry requires the court to weigh “the hardship that will
befall the nonmovant if the injunction issues contrasted with
the hardship that will befall the movant if the injunction does
not issue.” Borinquen Biscuit Corp, 443 F.3d at 115. The First
25 Circuit has noted that, of course, “substantial consumer
confusion . . . is not in the public interest.” Mercado-Salinas
v. Bart Enters. Int’l, Ltd., 671 F.3d 12, 24 (1st Cir. 2011).
For the reasons described above, Granite State has not
established that NHSMT’s use of the www.nhtradeschool.com and
.net URLs has adversely affected it in any way. In fact, the
evidence established not only that NHSMT has been using these
URLs for an extended period of time, but that traffic to Granite
State’s website increased significantly during the relevant
periods. Therefore, Granite State cannot establish that the
balance of the equities tips in its favor. Nor has Granite
State demonstrated substantial consumer confusion that might
implicate the public’s interest in the issuance of an
injunction.
Conclusion
Granite State has not established its right to a
preliminary injunction, relief which the Supreme Court has
characterized as “extraordinary and drastic.” Munaf, 553 U.S.
at 689. Therefore, Granite State’s motion for preliminary
injunction (doc. no. 5) is denied.
SO ORDERED.
__________________________ Landya McCafferty United States District Judge August 3, 2015
26 cc: Gary M. Burt, Esq. Thomas J. Pappas, Esq. Frank P. Spinella, Jr., Esq.