ImaginOn's product, introduced in October of 1999, and called
IMON.COMTV, is essentially a packaged Internet television
delivery tool and is marketed as a "TV station in a box."
IMON.COMTV is a "licensed turnkey [software] package that enables
any website to present interactive television within a standard
browser window on any suitably connected computer." IMON.COMTV
packages a number of ImaginOn's propriety technology products in
one place, and is meant to be customized only with an individual
customer's "logo, colors, website links, and more" and with no
reference to IMON.COMTV.
IMON.COMTV is not marketed to the average Internet user:
startup costs begin at $31,000 (plus an additional $4000 or more
for a host computer server), with additional "hosting" costs that
begin at $7,600 per month. The IMON.COMTV product allows ImaginOn
customers to create and broadcast in their own name alone their
audio-video content over the Internet, and to enhance that
content by allowing viewers to "click" on different areas of the
video and immediately be connected to corresponding e-commerce
pages. The customers control all the content displayed on their
website through IMON.COMTV supplied software. Apparently, what is
unique about this program is that the video may be viewed without
actually being downloaded into the viewer's computer. The video
at all times remains on the Internet. Also provided with the
IMON. COMTV product are video authoring and automated web
research tools. The video authoring tool helps ImaginOn customers
convert existing video into interactive digital video for use
with the IMON.COMTV product. The web research tool, ImaginOn's
Webzinger, allows IMON.COMTV viewers to search the Internet while
viewing digital video feeds. Defendant's "product" is a software
package that would be customized to each purchaser. Through this
software, the purchaser would be allowed to show videos on their
website and would maintain links to ImaginOn's other products.
Turning to plaintiff, ImOn, Inc. was originally incorporated as
Surf Fever, Inc. on May 6, 1999. Sometime in June plaintiff
retained outside counsel to search for potential domain names
registrable in the United States Patent and Trademark Office
(USPTO). On or about June 23, 1999, plaintiff learned that IMON
was a possible name. Plaintiff then targeted the domain names
IMON and I AM ON. The next day on June 24, 1999, plaintiff
requested Thomson & Thomson, an international trademark and
copyright search firm, to provide a common law search on imon.com
or iamon.com relating to an Internet service provider, retail
sales over the Internet, search engine, and advertising services.
Thomson & Thomson responded the same day faxing 31 pages to Ms.
Ruthman, plaintiff's in-house counsel. On or about that day, Ms.
Ruthman, visited the www.imon.com and noted that it was the
website for the North American Cracid Taxonomic Advisory Group,
featuring endangered birds. However, within a week, Ms. Ruthman
learned that www.imon.com had been purchased by ImaginOn.
Apparently, someone from Surf Fever contacted Kristine Miller,
a trademark attorney for the law firm Tucker Flyer located in
Washington, D.C. on or before June 29, 1999, and requested her to
assist Surf Fever in determining the ownership of www.imon.com
and www.imon.net. In turn, Ms. Miller retained James Moy that
same day to investigate the owners of these two domain names.
Though Mr. Moy claims that he prepared a report and responded to
Ms. Miller by June 30, 1999, the contents of that report concerns
events occurring on July 7. Clearly Mr. Moy's report as exhibited
could not have been forwarded to Ms. Miller until July 7, 1999,
at the earliest. As part of Mr. Moy's investigation, he visited
the site www. imon.net. The first page of which displayed the
following: "Your high speed Internet service provider serving
Southern Pennsylvania and coming soon to your
neighborhood." There was also an advertisement for hair, nail,
and skin care and links*fn1 to RollingStone.com and deja.com.
Another page on that website indicated that there had been 91
visitors to the site. On June 30, 1999, Mr. Moy spoke with Mr.
Rick Sundermier, the owner of www. imon.net, learned that Mr.
Sundermier "did not have any services or products called `Imon,'"
and asked Mr. Sundermier to consider selling the domain name to
him. At this time, Mr. Moy knew only that he was negotiating for
an undisclosed principal. Mr. Sundermier said he would think
about the offer. Mr. Moy also learned that Mr. Sundermier had
incorporated Imon.net, Inc. under the laws of Pennsylvania as
recently as June 25, 1999. Presumably, Ms. Miller forwarded this
information to Surf Fever.
Despite being aware of Sundermier's corporation and website
offering high speed Internet service, on July 13, 1999, two weeks
after plaintiff learned that ImaginOn had purchased
www.imon.com and two days before ImaginOn announced its
intention to launch a high bandwidth portal on www.imon.com and
4 weeks before Moy bought www.imon.net, Surf Fever filed an
application to register in the United States Patent and Trademark
Office (USPTO) the mark IMON with regard to Internet services,
indicating on the application that it intended to use the mark in
commerce. I observe, and of this more later, that the application
requires the applicant to sign a declaration which states that
he/she believes the applicant to be entitled to use
such mark in commerce; to the best of his/her
knowledge and belief no other person, firm,
corporation, or association has the right to use the
above identified mark in commerce, either in the
identical form thereof or in such near resemblance
thereto as to be likely, when used on or in
connection with the goods/services of such other
person, to cause confusion, or to cause mistake, or
Also following that application, on July 22, 1999, Surf Fever
requested Thomson & Thomson to provide a state corporate name
search for the mark IMON. On July 28, 1999, Thomson & Thomson
responded and indicated that Imon.net, Inc. was a Pennsylvania