UNITED STATES COURT OF APPEALSFOR THE NINTH CIRCUITBROOKFIELD COMMUNICATIONS, INC.,Plaintiff-Appellant, No. 98-56918v. D.C. No. CV-98-09074-CRMWEST COAST ENTERTAINMENTCORPORATION, OPINIONDefendant-Appellee.Appeal from the United States District Courtfor the Central District of CaliforniaCarlos R. Moreno, District Judge, PresidingArgued and SubmittedMarch 10, 1999--San Francisco, CaliforniaFiled April 22, 1999Before: William C. Canby, Jr., Diarmuid F. O'Scannlain, andKim M. Wardlaw, Circuit Judges.Opinion by Judge O'Scannlain
_____________________________COUNSEL Richard L. Stone (argued), Sheppard, Mullin, Richter &Hampton, Los Angeles, California, for the plaintiff-appellant.Dennis G. Martin (argued), Christina L. Johnson, Willmore F.Holbrow, III, Blakely, Sokoloff, Taylor & Zafman, Los Ange-les, California, for the defendant-appellee.
_____________________________OPINION O'SCANNLAIN, Circuit Judge:We must venture into cyberspace to determine whether fed-eral trademark and unfair competition laws prohibit a videorental store chain from using an entertainment-industry infor-mation provider's trademark in the domain name of its website and in its web site's metatags.IBrookfield Communications, Inc. ("Brookfield") appealsthe district court's denial of its motion for a preliminaryinjunction prohibiting West Coast Entertainment Corporation("West Coast") from using in commerce terms confusinglysimilar to Brookfield's trademark, "MovieBuff. " Brookfieldgathers and sells information about the entertainment indus-try. Founded in 1987 for the purpose of creating and market-ing software and services for professionals in theentertainment industry, Brookfield initially offered softwareapplications featuring information such as recent film submis-sions, industry credits, professional contacts, and future proj-ects. These offerings targeted major Hollywood film studios,independent production companies, agents, actors, directors,and producers.Brookfield expanded into the broader consumer marketwith computer software featuring a searchable database con-taining entertainment-industry related information marketedunder the "MovieBuff" mark around December 1993.1 Brook-field's "MovieBuff" software now targets smaller companiesand individual consumers who are not interested in pur-chasing Brookfield's professional level alternative, The Stu-dio System, and includes comprehensive, searchable,entertainment-industry databases and related software appli-cations containing information such as movie credits, boxoffice receipts, films in development, film release schedules,entertainment news, and listings of executives, agents, actors,and directors. This "MovieBuff" software comes in three ver-sions -- (1) the MovieBuff Pro Bundle, (2) the MovieBuffPro, and (3) MovieBuff -- and is sold through various retailstores, such as Borders, Virgin Megastores, Nobody Beats theWiz, The Writer's Computer Store, Book City, and SamuelFrench Bookstores.Sometime in 1996, Brookfield attempted to register theWorld Wide Web ("the Web") domain name"moviebuff.com" with Network Solutions, Inc. ("NetworkSolutions"),2 but was informed that the requested domainname had already been registered by West Coast. Brookfieldsubsequently registered "brookfieldcomm.com" in May 1996and "moviebuffonline.com" in September 1996. 3 Sometimein 1996 or 1997, Brookfield began using its web sitesto sell its "MovieBuff" computer software and to offer anInternet-based searchable database marketed under the"MovieBuff" mark. Brookfield sells its "MovieBuff" com-puter software through its "brookfieldcomm.com " and"moviebuffonline.com" web sites and offers subscribersonline access to the MovieBuff database itself at its"inhollywood.com" web site.On August 19, 1997, Brookfield applied to the Patent andTrademark Office (PTO) for federal registration of"MovieBuff" as a mark to designate both goods and services.Its trademark application describes its product as "computersoftware providing data and information in the field of themotion picture and television industries." Its service markapplication describes its service as "providing multiple-useraccess to an on-line network database offering data and infor-mation in the field of the motion picture and televisionindustries." Both federal trademark registrations issued onSeptember 29, 1998. Brookfield had previously obtained aCalifornia state trademark registration for the mark"MovieBuff" covering "computer software " in 1994.In October 1998, Brookfield learned that West Coast--one of the nation's largest video rental store chains with over500 stores -- intended to launch a web site at"moviebuff.com" containing, inter alia, a searchable enter-tainment database similar to "MovieBuff." West Coast hadregistered "moviebuff.com" with Network Solutions on Feb-ruary 6, 1996 and claims that it chose the domain namebecause the term "Movie Buff" is part of its service mark,"The Movie Buff's Movie Store," on which a federal registra-tion issued in 1991 covering "retail store services featuringvideo cassettes and video game cartridges" and "rental ofvideo cassettes and video game cartridges." West Coast notesfurther that, since at least 1988, it has also used variousphrases including the term "Movie Buff" to promote goodsand services available at its video stores in Massachusetts,including "The Movie Buff's Gift Guide"; "The Movie Buff'sGift Store"; "Calling All Movie Buffs!";"Good News MovieBuffs!"; "Movie Buffs, Show Your Stuff!";"the PerfectStocking Stuffer for the Movie Buff!"; "A Movie Buff's TopTen"; "The Movie Buff Discovery Program";"Movie BuffPicks"; "Movie Buff Series"; "Movie Buff SelectionProgram"; and "Movie Buff Film Series."On November 10, Brookfield delivered to West Coast acease-and-desist letter alleging that West Coast's planned useof the "moviebuff.com" would violate Brookfield's trademarkrights; as a "courtesy" Brookfield attached a copy of a com-plaint that it threatened to file if West Coast did not desist.The next day, West Coast issued a press release announcingthe imminent launch of its web site full of "movie reviews,Hollywood news and gossip, provocative commentary, andcoverage of the independent film scene and films inproduction." The press release declared that the site wouldfeature "an extensive database, which aids consumers in mak-ing educated decisions about the rental and purchase of" mov-ies and would also allow customers to purchase movies,accessories, and other entertainment-related merchandise onthe web site.Brookfield fired back immediately with a visit to theUnited States District Court for the Central District of Califor-nia, and this lawsuit was born. In its first amended complaintfiled on November 18, 1998, Brookfield alleged principallythat West Coast's proposed offering of online services at"moviebuff.com" would constitute trademark infringementand unfair competition in violation of sections 32 and 43(a)of the Lanham Act, 15 U.S.C. SS 1114, 1125(a).4 Soon there-after, Brookfield applied ex parte for a temporary restrainingorder ("TRO") enjoining West Coast "[f]rom using . . . in anymanner . . . the mark MOVIEBUFF, or any other term orterms likely to cause confusion therewith, includingmoviebuff.com, as West Coast's domain name, . . . as thename of West Coast's website service, in buried code ormetatags on their home page or web pages, or in connectionwith the retrieval of data or information on other goods orservices."On November 27, West Coast filed an opposition brief inwhich it argued first that Brookfield could not prevent WestCoast from using "moviebuff.com" in commerce becauseWest Coast was the senior user. West Coast claimed that itwas the first user of "MovieBuff" because it had used its fed-erally registered trademark, "The Movie Buff's Movie Store,"5since 1986 in advertisements, promotions, and letterhead inconnection with retail services featuring videocassettes andvideo game cartridges. Alternatively, West Coast claimedseniority on the basis that it had garnered common-law rightsin the domain name by using "moviebuff.com" before Brook-field began offering its "MovieBuff" Internet-based search-able database on the Web. In addition to asserting seniority,West Coast contended that its planned use of"moviebuff.com" would not cause a likelihood of confusionwith Brookfield's trademark "MovieBuff" and thus would notviolate the Lanham Act.The district court heard arguments on the TRO motion onNovember 30. Later that day, the district court issued an orderconstruing Brookfield's TRO motion as a motion for a pre-liminary injunction and denying it. The district court con-cluded that West Coast was the senior user of the mark"MovieBuff" for both of the reasons asserted by West Coast.The court also determined that Brookfield had not establisheda likelihood of confusion.Brookfield responded by filing a notice of appeal from thedenial of preliminary injunction followed by a motion in thedistrict court for injunction pending appeal, which motion thedistrict court denied. On January 16, 1999, West Coastlaunched its web site at "moviebuff.com." Fearing that WestCoast's fully operational web site would cause it irreparableinjury, Brookfield filed an emergency motion for injunctionpending appeal with this court a few days later. On February24, we granted Brookfield's motion and entered an orderenjoining West Coast "from using, or facilitating the useof, in any manner, including advertising and promotion, themark MOVIEBUFF, or any other term or terms likely tocause confusion therewith, including @moviebuff.com ormoviebuff.com, as the name of West Coast's web site service,in buried code or metatags on its home page or web pages, orin connection with the retrieval of data or information onother goods or services." The injunction was to take effectupon the posting of a $25,000 bond in the district court byBrookfield. We scheduled oral argument on an expeditedbasis for March 10.West Coast thereupon filed a motion for reconsiderationand modification -- seeking a stay of the injunction pendingappeal and an increase in the bond requirement to $400,000-- which we denied. After oral argument on March 10, weordered that our previously issued injunction remain in effectpending the issuance of this opinion.IITo resolve the legal issues before us, we must first under-stand the basics of the Internet and the World Wide Web.Because we will be delving into technical corners of the Inter-net -- dealing with features such as domain names andmetatags -- we explain in some detail what all these thingsare and provide a general overview of the relevant technol-ogy.The Internet is a global network of interconnected comput-ers which allows individuals and organizations around theworld to communicate and to share information with oneanother. The Web, a collection of information resources con-tained in documents located on individual computers aroundthe world, is the most widely used and fastest-growing part ofthe Internet except perhaps for electronic mail ("e-mail"). SeeUnited States v. Microsoft, 147 F.3d 935, 939 (D.C. Cir.1998). With the Web becoming an important mechanism forcommerce, see Reno v. ACLU, 117 S. Ct. 2329, 2334 (1997)(citing an estimate that over 200 million people will use theInternet in 1999), companies are racing to stake out theirplace in cyberspace. Prevalent on the Web are multimedia"web pages" -- computer data files written in HypertextMarkup Language ("HTML") -- which contain informationsuch as text, pictures, sounds, audio and video recordings, andlinks to other web pages. See id. at 2335; Panavision Int'l,L.P. v. Toeppen, 141 F.3d 1316, 1318 (9th Cir. 1998).Each web page has a corresponding domain address, whichis an identifier somewhat analogous to a telephone number orstreet address. Domain names consist of a second-leveldomain -- simply a term or series of terms (e.g., westcoast-video) -- followed by a top-level domain, many of whichdescribe the nature of the enterprise. Top-level domainsinclude ".com" (commercial), ".edu" (educational), ".org"(non-profit and miscellaneous organizations), ".gov" (govern-ment), ".net" (networking provider), and ".mil" (military). SeePanavision, 141 F.3d at 1318. Commercial entities generallyuse the ".com" top-level domain, which also serves as a catch-all top-level domain. See id. To obtain a domain name, anindividual or entity files an application with Network Solu-tions listing the domain name the applicant wants. Becauseeach web page must have an unique domain name, NetworkSolution checks to see whether the requested domain namehas already been assigned to someone else. If so, the applicantmust choose a different domain name. Other than requiring anapplicant to make certain representations, Network Solutionsdoes not make an independent determination about a regis-trant's right to use a particular domain name. See id. at 1318-19.Using a Web browser, such as Netscape's Navigator orMicrosoft's Internet Explorer, a cyber "surfer " may navigatethe Web -- searching for, communicating with, and retrievinginformation from various web sites. See id.; Microsoft, 147F.3d at 939-40, 950. A specific web site is most easily locatedby using its domain name. See Panavision, 141 F.3d at 1327.Upon entering a domain name into the web browser, the cor-responding web site will quickly appear on the computerscreen. Sometimes, however, a Web surfer will not know thedomain name of the site he is looking for, whereupon he hastwo principal options: trying to guess the domain name orseeking the assistance of an Internet "search engine."Oftentimes, an Internet user will begin by hazarding aguess at the domain name, especially if there is an obviousdomain name to try. Web users often assume, as a rule ofthumb, that the domain name of a particular company will bethe company name followed by ".com." See id.; PlayboyEnters. v. Universal Tel-a-Talk, Inc., No. 96-6961, 1998 WL767440, at *2 (E.D. Pa. Nov. 3, 1998); Cardservice Int'l, Inc.v. McGee, 950 F. Supp. 737, 741 (E.D. Va. 1997), aff'd by,129 F.3d 1258 (4th Cir. 1997). For example, one looking forKraft Foods, Inc. might try "kraftfoods.com," and indeed thisweb site contains information on Kraft's many food products.Sometimes, a trademark is better known than the companyitself, in which case a Web surfer may assume that the domainaddress will be " `trademark'.com." See Panavision, 141 F.3dat 1327; Beverly v. Network Solutions, Inc., No. 98-0337,1998 WL 320829, at *1 (N.D. Cal. June 12, 1998)("Companies attempt to make the search for their web site aseasy as possible. They do so by using a corporate name, trade-mark or service mark as their web site address."). One inter-ested in today's news would do well visiting "usatoday.com,"which features, as one would expect, breaking stories fromGannett's USA Today. Guessing domain names, however, isnot a risk-free activity. The Web surfer who assumes that" `X'.com" will always correspond to the web site of com-pany X or trademark X will, however, sometimes be misled.One looking for the latest information on Panavision, Interna-tional, L.P., would sensibly try "panavision.com. " Untilrecently, that Web surfer would have instead found a web siteowned by Dennis Toeppen featuring photographs of the Cityof Pana, Illinois. See Panavision, 141 F.3d at 1319. Havingregistered several domain names that logically would havecorresponded to the web sites of major companies such asPanavision, Delta Airlines, Neiman Marcus, Lufthansa, Toep-pen sought to sell "panavision.com" to Panavision, whichgives one a taste of some of the trademark issues that havearisen in cyberspace. See id.; see also, e.g., Cardservice, 950F. Supp. at 740-42.A Web surfer's second option when he does not know thedomain name is to utilize an Internet search engine, such asYahoo, Altavista, or Lycos. See ACLU v. Reno, 31 F. Supp.2d 473, 484 (E.D. Pa. 1999); Washington Speakers Bureau,Inc. v. Leading Authorities, Inc., No. 98-634, 1999 WL51869, at *9 (E.D. Va. Feb. 2, 1999). When a keyword isentered, the search engine processes it through a self-createdindex of web sites to generate a (sometimes long) list relatingto the entered keyword. Each search engine uses its own algo-rithm to arrange indexed materials in sequence, so the list ofweb sites that any particular set of keywords will bring upmay differ depending on the search engine used. See NitonCorp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d102, 104 (D. Mass. 1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1231-32 (N.D. Ill. 1996); Shea v. Reno, 930 F.Supp. 916, 929 (S.D.N.Y. 1996), aff'd, 117 S. Ct. 2501(1997). Search engines look for keywords in places such asdomain names, actual text on the web page, and metatags.Metatags are HTML code intended to describe the contents ofthe web site. There are different types of metatags, but thoseof principal concern to us are the "description " and"keyword" metatags. The description metatags are intended todescribe the web site; the keyword metatags, at least in the-ory, contain keywords relating to the contents of the web site.The more often a term appears in the metatags and in the textof the web page, the more likely it is that the web page willbe "hit" in a search for that keyword and the higher on the listof "hits" the web page will appear. See Niton, 27 F. Supp. 2dat 104.With this basic understanding of the Internet and the Web,we may now analyze the legal issues before us.IIIWe review the district court's denial of preliminary injunc-tive relief for an abuse of discretion. See, e.g., Foti v. City ofMenlo Park, 146 F.3d 629, 634-35 (9th Cir. 1998). Under thisstandard, reversal is appropriate only if the district court basedits decision on clearly erroneous findings of fact or erroneouslegal principles. See FDIC v. Garner, 125 F.3d 1272, 1276(9th Cir. 1997), cert. denied, 118 S. Ct. 1229 (1998). "A dis-trict court would necessarily abuse its discretion if it based itsruling on an erroneous view of the law," Cooter & Gell v.Hartmarx Corp.,
496 U.S. 384, 405
(1990), so we review theunderlying legal issues injunction de novo, see, e.g.,Barahona-Gomez v. Reno, No. 97-15952, 1999 WL 61709, at*4 (9th Cir. Feb. 11, 1999); S.O.C., Inc. v. County of Clark,152 F.3d 1136, 1142 (9th Cir. 1998), amended by , 160 F.3d541 (9th Cir. 1998); Foti, 146 F.3d at 635; Garner, 125 F.3dat 1276; San Antonio Community Hosp. v. Southern Cal. Dist.Council of Carpenters, 125 F.3d 1230, 1234 (9th Cir. 1997)."A plaintiff is entitled to a preliminary injunction in atrademark case when he demonstrates either (1) a combina-tion of probable success on the merits and the possibility ofirreparable injury or (2) the existence of serious questionsgoing to the merits and that the balance of hardships tipssharply in his favor." Sardi's Restaurant Corp. v. Sardie, 755F.2d 719, 723 (9th Cir. 1985). To establish a trademarkinfringement claim under section 32 of the Lanham Act or anunfair competition claim under section 43(a) of the LanhamAct, Brookfield must establish that West Coast is using amark confusingly similar to a valid, protectable trademark ofBrookfield's.6 See AMF Inc. v. Sleekcraft Boats, 599 F.2d341, 348 (9th Cir. 1979). The district court denied Brook-field's motion for preliminary injunctive relief because it con-cluded that Brookfield had failed to establish that it was thesenior user of the "MovieBuff" mark or that West Coast's useof the "moviebuff.com" domain name created a likelihood ofconfusion.We review each of the district court's conclusions in turn.7IV[1] To resolve whether West Coast's use of"moviebuff.com" constitutes trademark infringement or unfaircompetition,8 we must first determine whether Brookfield hasa valid, protectable trademark interest in the "MovieBuff"mark. Brookfield's registration of the mark on the PrincipalRegister in the Patent and Trademark Office constitutes primafacie evidence of the validity of the registered mark and ofBrookfield's exclusive right to use the mark on the goods andservices specified in the registration. See 15 U.S.C.SS 1057(b); 1115(a). Nevertheless, West Coast can rebut thispresumption by showing that it used the mark in commercefirst, since a fundamental tenet of trademark law is that own-ership of an inherently distinctive mark such as "MovieBuff"9is governed by priority of use. See Sengoku Words Ltd. v.RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) ("It isaxiomatic in trademark law that the standard test of ownershipis priority of use. To acquire ownership of a trademark it isnot enough to have invented the mark first or even to haveregistered it first; the party claiming ownership must havebeen the first to actually use the mark in the sale of goods orservices."), cert. denied,
521 U.S. 1103
(1997). The first touse a mark is deemed the "senior" user and has the right toenjoin "junior" users from using confusingly similar marks inthe same industry and market or within the senior user's natu-ral zone of expansion. See Union Nat'l Bank of Tex., Laredo,Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839,842-43 (5th Cir. 1990); Tally-Ho, Inc. v. Coast CommunityCollege Dist., 889 F.2d 1018, 1023 (11th Cir. 1990); NewWest Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200-01 (9thCir. 1979).It is uncontested that Brookfield began selling"MovieBuff" software in 1993 and that West Coast did notuse "moviebuff.com" until 1996. According to West Coast,however, the fact that it has used "The Movie Buff's MovieStore" as a trademark since 1986 makes it the first user forpurposes of trademark priority. In the alternative, West Coastclaims priority on the basis that it used "moviebuff.com" incommerce before Brookfield began offering its "MovieBuff"searchable database on the Internet. We analyze these conten-tions in turn.A[2] Conceding that the first time that it actually used"moviebuff.com" was in 1996, West Coast argues that its ear-lier use of "The Movie Buff's Movie Store" constitutes use of"moviebuff.com."10 West Coast has not provided any NinthCircuit precedent approving of this constructive use theory,but neither has Brookfield pointed us to any case law rejectingit. We are not without guidance, however, as our sister cir-cuits have explicitly recognized the ability of a trademarkowner to claim priority in a mark based on the first use dateof a similar, but technically distinct, mark -- but only in theexceptionally narrow instance where "the previously usedmark is `the legal equivalent of the mark in question or indis-tinguishable therefrom' such that consumers `consider both asthe same mark.' " Data Concepts, Inc. v. Digital Consulting,Inc., 150 F.3d 620, 623 (6th Cir. 1998) (quoting Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed.Cir. 1991)); accord Van Dyne-Crotty, 926 F.2d at 1159.This constructive use theory is known as "tacking," as thetrademark holder essentially seeks to "tack" his first use datein the earlier mark onto the subsequent mark. See generally2 J. Thomas McCarthy, McCarthy on Trademarks & UnfairCompetition S 17:25-27 (4th ed. 1998)[hereafter"McCarthy"].[3] We agree that tacking should be allowed if two marksare so similar that consumers generally would regard them asessentially the same. Where such is the case, the new markserves the same identificatory function as the old mark. Giv-ing the trademark owner the same rights in the new mark ashe has in the old helps to protect source-identifying trade-marks from appropriation by competitors and thus furthers thetrademark law's objective of reducing the costs that customersincur in shopping and making purchasing decisions. SeeQualitex Co. v Jacobson Prods. Co.,
514 U.S. 159
, 163-64(1995); Falcon Rice Mill, Inc. v. Community Rice Mill, Inc.,725 F.2d 336, 348 (5th Cir. 1984).Without tacking, a trademark owner's priority in his markwould be reduced each time he made the slightest alterationto the mark, which would discourage him from altering themark in response to changing consumer preferences, evolvingaesthetic developments, or new advertising and marketingstyles. In Hess's of Allentown, Inc. v. National Bellas Hess,Inc., for example, a department store ("Allentown") withtrademark rights in the terms "Hess Brothers" and "Hess" dat-ing from 1899 began promoting itself in 1952 instead as"Hess's," largely because customers and employees com-monly referred to the store as "Hess's" rather than "HessBrothers" or "Hess." See 169 U.S.P.Q. 673, 674-75 (T.T.A.B.1971). Another department store ("Bellas") first used "Hess"in its mark around 1932. In light of the fact that Allentownfirst used "Hess's" after Bellas commenced using "Hess,"Bellas would have priority on the basis of the actual first usedates of those two marks. Even though Allentown hadacquired over a half-century's worth of goodwill in the essen-tially identical marks "Hess" and "Hess Brothers," Allentownno longer had trademark rights in those terms because it hadceased using those marks when it adopted "Hess's. " Never-theless, the Trademark Board allowed the owner of "Hess's"to tack his first use date of "Hess Brothers" and "Hess" onto"Hess's" since those terms were viewed as identical by thepublic. See id. at 677.[4] The standard for "tacking," however, is exceedinglystrict: "The marks must create the same, continuing commer-cial impression, and the later mark should not materially dif-fer from or alter the character of the mark attempted to betacked." Van Dyne-Crotty, 926 F.2d at 1159 (emphasis added)(citations and quotation marks omitted). In other words, "thepreviously used mark must be the legal equivalent of the markin question or indistinguishable therefrom, and the consumershould consider both as the same mark." Id. (emphasisadded); see also Data Concepts, 150 F.3d at 623 (adopting theVan Dyne-Crotty test). This standard is considerably higherthan the standard for "likelihood of confusion, " which we dis-cuss infra.The Federal Circuit, for example, concluded that priority in"CLOTHES THAT WORK. FOR THE WORK YOU DO"could not be tacked onto "CLOTHES THAT WORK." SeeVan Dyne-Crotty, 926 F.2d at 1160 (holding that the shorterphrase was not the legal equivalent of the longer mark). TheSixth Circuit held that "DCI" and "dci" were too dissimilar tosupport tacking. See Data Concepts, 150 F.3d at 623-24. Andthe Trademark Board has rejected tacking in a case involving"American Mobilphone" with a star and stripe design and"American Mobilphone Paging" with the identical design, seeAmerican Paging, Inc. v. American Mobilphone, Inc. , 13U.S.P.Q.2d 2036 (T.T.A.B. 1989), aff'd, 17 U.S.P.Q.2d 1726(Fed. Cir. 1990), as well as in a case involving "PRO-CUTS"and "PRO-KUT," see Pro-Cuts v. Schilz-Price Enters., 27U.S.P.Q.2d 1224, 1227 (T.T.A.B. 1993).[5] In contrast to cases such as Van Dyne-Crotty andAmerican Paging, which were close questions, the presentcase is clear cut: "The Movie Buff's Movie Store" and"moviebuff.com" are very different, in that the latter containsthree fewer words, drops the possessive, omits a space, andadds ".com" to the end. Because West Coast failed to makethe slightest showing that consumers view these terms asidentical, we must conclude that West Coast cannot tack itspriority in "The Movie Buff's Movie Store" onto"moviebuff.com." As the Federal Circuit explained, "it wouldbe clearly contrary to well-established principles of trademarklaw to sanction the tacking of a mark with a narrow commer-cial impression onto one with a broader commercialimpression." Van Dyne-Crotty, 926 F.2d at 1160 (noting thatprior use of "SHAPE UP" could not be tacked onto "EGO,"that prior use of "ALTER EGO" could not be tacked onto"EGO," and that prior use of "Marco Polo could not be tackedonto "Polo").[6] Since tacking does not apply, we must therefore con-clude that Brookfield is the senior user because it marketed"MovieBuff" products well before West Coast began using"moviebuff.com" in commerce: West Coast's use of "TheMovie Buff's Movie Store" is simply irrelevant. Our prioritydetermination is consistent with the decisions of our sister cir-cuits in Lone Star Steakhouse & Saloon, Inc. v. LonghornSteaks, Inc., 106 F.3d 355, 362-63 (11th Cir. 1997), modifiedby, 122 F.3d 1379 (11th Cir. 1997) (per curiam), and J. Wiss& Sons Co. v. W. E. Bassett Co., 462 F.2d 567, 568-69(C.C.P.A. 1972). Like the present case, J. Wiss & Sons is athree-competing-trademark situation in which one companyowned a single mark with a first use date in between the firstuse dates of the two marks owned by the other company. Inthat case, the intervening mark ("Trim") was found to be con-fusingly similar with the later mark ("Trim-Line"), but notwith the earlier mark ("Quick-Trim"); similarly here, theintervening mark ("MovieBuff") is purported to be confus-ingly similar with the later mark "moviebuff.com," see infraPart V, but is not confusingly similar with the earlier usedmark "The Movie Buff's Movie Store," see infra pp. 3739.The Court of Customs and Patent Appeals (now the Court ofAppeals for the Federal Circuit) concluded that prioritydepended upon which of the two confusingly similar markswas used first -- disregarding the first use date of the earlierused mark since it was not confusingly similar with the oth-ers. It thus awarded priority to the holder of the interveningmark, as we do similarly here.Longhorn Steaks, involving the same basic three-competing-trademark situation, is particularly instructive. Thedefendant owned the mark "Lone Star Steaks" with a first usedate between the plaintiff's earlier used mark "Lone StarCafe" and its later used mark "Lone Star Steakhouse &Saloon." In its initial opinion, the Eleventh Circuit awardedpriority to the holder of "Lone Star Steaks" on the basis that"Lone Star Steaks" was used before "Lone Star Steakhouse &Saloon." See Longhorn Steaks, 106 F.3d at 362-63. The Elev-enth Circuit, however, later modified its opinion, stating thatthe conclusion reached in its initial opinion would be correctonly if defendant's "Lone Star Steaks" was not confusinglysimilar to plaintiff's earlier used mark, "Lone Star Cafe." SeeLonghorn Steaks, 122 F.3d 1379 (11th Cir. 1997). 11[7] West Coast makes a half-hearted claim that"MovieBuff" is confusingly similar to its earlier used mark"The Movie Buff's Movie Store." If this were so, West Coastwould undoubtedly be the senior user. See id. "Of course, ifthe symbol or device is already in general use, employed insuch a manner that its adoption as an index of source or originwould only produce confusion and mislead the public, it is notsusceptible of adoption as a trademark." Hanover Star MillingCo. v. Metcalf,
240 U.S. 403, 415
(1916). West Coast, how-ever, essentially conceded that "MovieBuff" and "The MovieBuff's Movie Store" are not confusingly similar when itstated in its pre-argument papers that it does not allege actualconfusion between "MovieBuff" and West Coast's federallyregistered mark. We cannot think of more persuasive evi-dence that there is no likelihood of confusion between thesetwo marks than the fact that they have been simultaneouslyused for five years without causing any consumers to be con-fused as to who makes what. See Libman Co. v. Vining Indus.,Inc., 69 F.3d 1360, 1361 (7th Cir. 1995) ("Vining sold severalhundred thousand of the allegedly infringing brooms, yetthere is no evidence that any consumer ever made such anerror; if confusion were likely, one would expect at least oneperson out of this vast multitude to be confused. . . ."). Thefailure to prove instances of actual confusion is not disposi-tive against a trademark plaintiff, because actual confusion ishard to prove; difficulties in gathering evidence of actual con-fusion make its absence generally unnoteworthy. See EclipseAssocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1118-19 (9thCir. 1990); Sleekcraft, 599 F.2d at 353. West Coast, however,did not state that it could not prove actual confusion; rather,it conceded that there has been none. This is a crucial differ-ence. Although there may be the rare case in which a likeli-hood of future confusion is possible even where it is concededthat two marks have been used simultaneously for years withno resulting confusion, West Coast has not shown this to besuch a case.Our conclusion comports with the position of the PTO,which effectively announced its finding of no likelihood ofconfusion between "The Movie Buff's Movie Store " and"MovieBuff" when it placed the latter on the principal registerdespite West Coast's prior registration of "The Movie Buff'sMovie Store." Priority is accordingly to be determined on thebasis of whether Brookfield used "MovieBuff" or West Coastused "moviebuff.com" first.12BWest Coast argues that we are mixing apples and orangeswhen we compare its first use date of "moviebuff.com" withthe first sale date of "MovieBuff" software. West Coastreminds us that Brookfield uses the "MovieBuff " mark withboth computer software and the provision of an Internet data-base; according to West Coast, its use of "moviebuff.com"can cause confusion only with respect to the latter. WestCoast asserts that we should accordingly determine seniorityby comparing West Coast's first use date of "moviebuff.com"not with when Brookfield first sold software, but with whenit first offered its database online.As an initial matter, we note that West Coast's argument ispremised on the assumption that its use of "moviebuff.com"does not cause confusion between its web site and Brook-field's "MovieBuff" software products. Even though Brook-field's computer software and West Coast's offerings on itsweb site are not identical products, likelihood of confusioncan still result where, for example, there is a likelihood ofexpansion in product lines. See Official Airline Guides, Inc.v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993). As the leadingtrademark commentator explains: "When a senior user of amark on product line A expands later into product line B andfinds an intervening user, priority in product line B is deter-mined by whether the expansion is `natural' in that customerswould have been confused as to source or affiliation at thetime of the intervening user's appearance." 2 McCarthyS 16:5. We need not, however, decide whether the Web waswithin Brookfield's natural zone of expansion, because weconclude that Brookfield's use of "MovieBuff" as a servicemark preceded West Coast's use.[8] Brookfield first used "MovieBuff" on its Internet-basedproducts and services in August 1997,13 so West Coast canprevail only if it establishes first use earlier than that. In theliteral sense of the word, West Coast "used" the term"moviebuff.com" when it registered that domain address inFebruary 1996. Registration with Network Solutions, how-ever, does not in itself constitute "use" for purposes of acquir-ing trademark priority. See Panavision, 141 F.3d at 1324-25.The Lanham Act grants trademark protection only to marksthat are used to identify and to distinguish goods or servicesin commerce -- which typically occurs when a mark is usedin conjunction with the actual sale of goods or services. Thepurpose of a trademark is to help consumers identify thesource, but a mark cannot serve a source-identifying functionif the public has never seen the mark and thus is not meritori-ous of trademark protection until it is used in public in a man-ner that creates an association among consumers between themark and the mark's owner.Such use requirement is firmly established in the case law,see, e.g., Armstrong Paint & Varnish Works v. Nu-EnamelCorp.,
305 U.S. 315, 334
(1938); New West , 595 F.2d at1198-99, and, moreover, is embodied in the Lanham Actitself. See 15 U.S.C. S 1127 ("The term `trademark' includesany word, name, symbol, or device, or any combinationthereof . . . used by a person . . . to identify and distinguishhis or her goods.") (emphasis added); id. ("The term `servicemark' means any word, name, symbol, or device, or any com-bination thereof . . . used by a person . . . to identify anddistinguish the services of one person) (emphasis added). Infact, Congress amended the Lanham Act in 1988 to strengthenthis "use in commerce" requirement, making clear that trade-mark rights can be conveyed only through "the bona fide useof a mark in the ordinary course of trade, and not[use] mademerely to reserve a mark." 15 U.S.C. S 1127. Congress pro-vided more specifically: For purposes of this chapter, a mark shall be deemed to be in use in commerce-- (1) on goods when-- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the ser- vices.Id.The district court, while recognizing that mere registrationof a domain name was not sufficient to constitute commercialuse for purposes of the Lanham Act, nevertheless held thatregistration of a domain name with the intent to use it com-mercially was sufficient to convey trademark rights. Thisanalysis, however, contradicts both the express statutory lan-guage and the case law which firmly establishes that trade-mark rights are not conveyed through mere intent to use amark commercially, see, e.g., Allard Enters. v. Advanced Pro-gramming Resources, Inc., 146 F.3d 350, 356 (6th Cir. 1998);Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 504 (7th Cir.1992) ("[A]n intent to use a mark creates no rights a competi-tor is bound to respect."), nor through mere preparation to usea term as a trademark, see, e.g., Hydro-Dynamics, Inc. v.George Putnam & Co., 811 F.2d 1470, 1473-74 (Fed. Cir.1987); Computer Food Stores, Inc. v. Corner StoreFranchises, 176 U.S.P.Q. 535, 538 (T.T.A.B. 1973).[9] West Coast no longer disputes that its use -- for pur-poses of the Lanham Act -- of "moviebuff.com " did not com-mence until after February 1996. It instead relies on thealternate argument that its rights vested when it began using"moviebuff.com" in e-mail correspondence with lawyers andcustomers sometime in mid-1996. West Coast's argument isnot without support in our case law -- we have indeed heldthat trademark rights can vest even before any goods or ser-vices are actually sold if "the totality of [one's] prior actions,taken together, [can] establish a right to use the trademark."New West, 595 F.2d at 1200. Under New West , however, WestCoast must establish that its e-mail correspondence consti-tuted " `[u]se in a way sufficiently public to identify or distin-guish the marked goods in an appropriate segment of thepublic mind as those of the adopter of the mark.' " Id. (quot-ing New England Duplicating Co. v. Mendes, 190 F.2d 415,418 (1st Cir. 1951)); see also Marvel Comics Ltd. v. Defiant,837 F. Supp. 546, 550 (S.D.N.Y. 1993) ("[T]he talismanic testis whether or not the use was sufficiently public to identify ordistinguish the marked goods in an appropriate segment of thepublic mind as those of the adopter of the mark.") (quotationmarks and citation omitted).[10] West Coast fails to meet this standard. Its purported"use" is akin to putting one's mark "on a business office doorsign, letterheads, architectural drawings, etc." or on a proto-type displayed to a potential buyer, both of which have beenheld to be insufficient to establish trademark rights. See SteerInn Sys., Inc. v. Laughner's Drive-In, Inc., 405 F.2d 1401,1402 (C.C.P.A. 1969); Walt Disney Prods. v. Kusan, Inc., 204U.S.P.Q. 284, 288 (C.D. Cal. 1979). Although widespreadpublicity of a company's mark, such as Marvel Comics'sannouncement to 13 million comic book readers that"Plasma" would be the title of a new comic book, see MarvelComics, 837 F. Supp. at 550, or the mailing of 430,000 solici-tation letters with one's mark to potential subscribers of amagazine, see New West, 595 F.2d at 1200, may be sufficientto create an association among the public between the markand West Coast, mere use in limited e-mail correspondencewith lawyers and a few customers is not.[11] West Coast first announced its web site at"moviebuff.com" in a public and widespread manner in apress release of November 11, 1998, and thus it is not untilat least that date that it first used the "moviebuff.com" markfor purposes of the Lanham Act.14 Accordingly, West Coast'sargument that it has seniority because it used"moviebuff.com" before Brookfield used "MovieBuff" as aservice mark fails on its own terms. West Coast's first usedate was neither February 1996 when it registered its domainname with Network Solutions as the district court had con-cluded, nor April 1996 when it first used "moviebuff.com" ine-mail communications, but rather November 1998 when itfirst made a widespread and public announcement about theimminent launch of its web site. Thus, West Coast's first useof "moviebuff.com" was preceded by Brookfield's first use of"MovieBuff" in conjunction with its online database, makingBrookfield the senior user.For the foregoing reasons, we conclude that the districtcourt erred in concluding that Brookfield failed to establish alikelihood of success on its claim of being the senior user.V[12] Establishing seniority, however, is only half the battle.Brookfield must also show that the public is likely to besomehow confused about the source or sponsorship of WestCoast's "moviebuff.com" web site -- and somehow to asso-ciate that site with Brookfield. See 15 U.S.C. S 1114(1);1125(a).15 The Supreme Court has described "the basic objec-tives of trademark law" as follows: "trademark law, by pre-venting others from copying a source-identifying mark,`reduce[s] the customer's costs of shopping and making pur-chasing decisions,' for it quickly and easily assures a potentialcustomer that this item -- the item with this mark -- is madeby the same producer as other similarly marked items that heor she liked (or disliked) in the past. At the same time, the lawhelps assure a producer that it (and not an imitating competi-tor) will reap the financial, reputation-related rewards associ-ated with a desirable product." Qualitex,
514 U.S. at 163
-64(internal citations omitted). Where two companies each use adifferent mark and the simultaneous use of those marks doesnot cause the consuming public to be confused as to whomakes what, granting one company exclusive rights over bothmarks does nothing to further the objectives of the trademarklaws; in fact, prohibiting the use of a mark that the public hascome to associate with a company would actually contravenethe intended purposes of the trademark law by making it moredifficult to identify and to distinguish between differentbrands of goods.[13] "The core element of trademark infringement is thelikelihood of confusion, i.e., whether the similarity of themarks is likely to confuse customers about the source ofthe products." Official Airline Guides, 6 F.3d at 1391 (quotingE. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280,1290 (9th Cir. 1992)) (quotation marks omitted); accordInternational Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d819, 825 (9th Cir. 1993); Metro Publ'g, Ltd. v. San Jose Mer-cury News, 987 F.2d 637, 640 (9th Cir. 1993). We look to thefollowing factors for guidance in determining the likelihoodof confusion: similarity of the conflicting designations; relat-edness or proximity of the two companies' products or ser-vices; strength of Brookfield's mark; marketing channelsused; degree of care likely to be exercised by purchasers inselecting goods; West Coast's intent in selecting its mark; evi-dence of actual confusion; and likelihood of expansion inproduct lines. See Dr. Seuss Enters. v. Penguin Books USA,Inc., 109 F.3d 1394, 1404 (9th Cir. 1997), petition for cert.dismissed by, 118 S. Ct. 27 (1997); Sleekcraft, 599 F.2d at348-49; see also Restatement (Third) of Unfair CompetitionSS 20-23 (1995). These eight factors are often referred to asthe Sleekcraft factors.A word of caution: this eight-factor test for likelihood ofconfusion is pliant. Some factors are much more importantthan others, and the relative importance of each individualfactor will be case-specific. Although some factors -- such asthe similarity of the marks and whether the two companies aredirect competitors -- will always be important, it is often pos-sible to reach a conclusion with respect to likelihood of confu-sion after considering only a subset of the factors. SeeDreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127,1130-32 (9th Cir. 1998). Moreover, the foregoing list does notpurport to be exhaustive, and non-listed variables may oftenbe quite important. We must be acutely aware of excessiverigidity when applying the law in the Internet context; emerg-ing technologies require a flexible approach.AWe begin by comparing the allegedly infringing mark tothe federally registered mark.16 The similarity of the markswill always be an important factor. Where the two marks areentirely dissimilar, there is no likelihood of confusion."Pepsi" does not infringe Coca-Cola's "Coke." Nothing fur-ther need be said. Even where there is precise identity of acomplainant's and an alleged infringer's mark, there may beno consumer confusion -- and thus no trademark infringe-ment -- if the alleged infringer is in a different geographicarea or in a wholly different industry. See Weiner King, Inc.v. Wiener King Corp., 615 F.2d 512, 515-16, 521-22(C.C.P.A. 1980) (permitting concurrent use of "Weiner King"as a mark for restaurants featuring hot dogs in New Jersey and"Wiener King" as a mark for restaurants in North Carolina);Pinocchio's Pizza Inc. v. Sandra Inc., 11 U.S.P.Q.2d 1227,1228 (T.T.A.B. 1989) (permitting concurrent use of"PINOCCHIO'S" as a service mark for restaurants in Mary-land and "PINOCCHIOS" as a service mark for restaurantselsewhere in the country). Nevertheless, the more similar themarks in terms of appearance, sound, and meaning, thegreater the likelihood of confusion. See, e.g. , Dreamwerks,142 F.3d at 1131; Goss, 6 F.3d at 1392 ("The court assessesthe similarity of the marks in terms of their sight, sound, andmeaning."). In analyzing this factor, "[t]he marks must beconsidered in their entirety and as they appear in themarketplace," Goss, 6 F.3d at 1392 (citing Nutri/System, Inc.v. Con-Stan Indus., Inc., 809 F.2d 601, 605-06 (9th Cir.1987)), with similarities weighed more heavily than differ-ences, see id. (citing Rodeo Collection Ltd. v. West Seventh,812 F.2d 1215, 1219 (9th Cir. 1987)).[14] In the present case, the district court found WestCoast's domain name "moviebuff.com" to be quite differentthan Brookfield's domain name "moviebuffonline.com."Comparison of domain names, however, is irrelevant as amatter of law, since the Lanham Act requires that the alleg-edly infringing mark be compared with the claimant'strademark, see 15 U.S.C. S 1114(1), 1125(a), which here is"MovieBuff," not "moviebuffonline.com." Properly framed, itis readily apparent that West Coast's allegedly infringingmark is essentially identical to Brookfield's mark"MovieBuff." In terms of appearance, there are differences incapitalization and the addition of ".com" in West Coast'scomplete domain name, but these differences are inconse-quential in light of the fact that Web addresses are not caps-sensitive and that the ".com" top-level domain signifies thesite's commercial nature.[15] Looks aren't everything, so we consider the similarityof sound and meaning. The two marks are pronounced thesame way, except that one would say "dot com" at the end ofWest Coast's mark. Because many companies use domainnames comprised of ".com" as the top-level domain with theircorporate name or trademark as the second-level domain, seeBeverly, 1998 WL 320829, at *1, the addition of".com" is ofdiminished importance in distinguishing the mark. The irrele-vance of the ".com" becomes further apparent once we con-sider similarity in meaning. The domain name is more than amere address: like trademarks, second-level domain namescommunicate information as to source. As we explained inPart II, many Web users are likely to associate"moviebuff.com" with the trademark "MovieBuff," thinkingthat it is operated by the company that makes "MovieBuff"products and services.17 Courts, in fact, have routinely con-cluded that marks were essentially identical in similar con-texts. See, e.g., Public Serv. Co. v. Nexus Energy Software,Inc., No. 98-12589, 1999 WL 98973, at *3 (D. Mass. Feb. 24,1999) (finding "energyplace.com" and "Energy Place" to bevirtually identical); Minnesota Mining & Mfg. Co. v. Taylor,21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar StarshipServs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or.1997) ("In the context of Internet use, [`epix.com'] is thesame mark as [`EPIX']."); Planned Parenthood Federa-tion of America, Inc. v. Bucci, No. 97-0629, 1997 WL133313, at *8 (S.D.N.Y. Mar. 24, 1997) (concluding that"plannedparenthood.com" and "Planned Parenthood" wereessentially identical), aff'd by, 152 F.3d 920 (2d Cir. 1998),cert. denied, 119 S. Ct. 90 (1998). As "MovieBuff" and"moviebuff.com" are, for all intents and purposes, identical interms of sight, sound, and meaning, we conclude that the sim-ilarity factor weighs heavily in favor of Brookfield.18[16] The similarity of marks alone, as we have explained,does not necessarily lead to consumer confusion. Accord-ingly, we must proceed to consider the relatedness of theproducts and services offered. Related goods are generallymore likely than unrelated goods to confuse the public as tothe producers of the goods. See Official Airline Guides, 6 F.3dat 1392 (citing Sleekcraft, 599 F.2d at 350). In light of the vir-tual identity of marks, if they were used with identical prod-ucts or services likelihood of confusion would follow as amatter of course. See Lindy Pen Co. v. Bic Pen Corp., 796F.2d 254, 256-57 (9th Cir. 1986) (reversing a district court'sfinding of no likelihood of confusion even though the sixother likelihood of confusion factors all weighed against afinding of likelihood of confusion); Interpace Corp. v. Lapp,Inc., 721 F.2d 460, 462 (3d Cir. 1983). If, on the other hand,Brookfield and West Coast did not compete to any extentwhatsoever, the likelihood of confusion would probably beremote. A Web surfer who accessed "moviebuff.com " andreached a web site advertising the services of SchlumbergerLtd. (a large oil drilling company) would be unlikely to thinkthat Brookfield had entered the oil drilling business or wassponsoring the oil driller. See, e.g., Toys "R" Us, Inc. v.Feinberg, 26 F. Supp. 2d 639, 643 (S.D.N.Y. 1998) (no likeli-hood of confusion between "gunsrus.com" firearms web siteand "Toys `R' Us" trademark); Interstellar Starship, 983 F.Supp. at 1336 (finding no likelihood of confusion between useof "epix.com" to advertise the Rocky Horror Picture Showand "Epix" trademark registered for use with computer circuitboards). At the least, Brookfield would bear the heavy burdenof demonstrating (through other relevant factors) that con-sumers were likely to be confused as to source or affiliationin such a circumstance.[17] The district court classified West Coast and Brookfieldas non-competitors largely on the basis that Brookfield is pri-marily an information provider while West Coast primarilyrents and sells videotapes. It noted that West Coast's web siteis used more by the somewhat curious video consumer whowants general movie information, while entertainment indus-try professionals, aspiring entertainment executives and pro-fessionals, and highly focused moviegoers are more likely toneed or to want the more detailed information provided by"MovieBuff." This analysis, however, overemphasizes differ-ences in principal lines of business, as we have previouslyinstructed that "the relatedness of each company's primedirective isn't relevant." Dreamwerks, 142 F.3d at 1131.Instead, the focus is on whether the consuming public is likelysomehow to associate West Coast's products with Brookfield.See id. Here, both companies offer products and servicesrelating to the entertainment industry generally, and theirprincipal lines of business both relate to movies specificallyand are not as different as guns and toys, see Toys "R" Us,26 F. Supp. 2d at 643, or computer circuit boards and theRocky Horror Picture Show, see Interstellar Starship, 983 F.Supp. at 1336. Thus, Brookfield and West Coast are not prop-erly characterized as non-competitors. See American Int'lGroup, Inc. v. American Int'l Bank, 926 F.2d 829, 832 (9thCir. 1991) (concluding that although the parties were notdirect competitors, they both provided financial services andthat customer confusion could result in light of the similaritiesbetween the companies' services).[18] Not only are they not non-competitors, the competitiveproximity of their products is actually quite high. Just asBrookfield's "MovieBuff" is a searchable database withdetailed information on films, West Coast's web site featuresa similar searchable database, which Brookfield points out islicensed from a direct competitor of Brookfield. Undeniablythen, the products are used for similar purposes."[T]he rightsof the owner of a registered trademark . . . extend to anygoods related in the minds of consumers," E. Remy Martin &Co. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525, 1530(11th Cir. 1985), and Brookfield's and West Coast's productsare certainly so related to some extent. The relatedness is fur-ther evidenced by the fact that the two companies compete forthe patronage of an overlapping audience. The use of similarmarks to offer similar products accordingly weighs heavily infavor of likelihood of confusion. See Sleekcraft , 599 F.2d at348 (concluding that high-speed waterskiing racing boats aresufficiently related to family-oriented recreational boats thatthe public is likely to be confused as to the source of theboats); Fleischmann Distilling Corp. v. Maier Brewing Co.,314 F.2d 149, 153-55 (9th Cir. 1963) (concluding that beerand whiskey are sufficiently similar to create a likelihood ofconfusion regarding the source of origin when sold under thesame trade name); see also Champions Golf Club, Inc. v.Champions Golf Club, Inc., 78 F.3d 1111, 1118 (6th Cir.1996).[19] In addition to the relatedness of products, West Coastand Brookfield both utilize the Web as a marketing and adver-tising facility, a factor that courts have consistently recog-nized as exacerbating the likelihood of confusion. See, e.g.,Public Serv. Co., 1999 WL 98973, at *3; Washington Speak-ers Bureau, Inc. v. Leading Auths., Inc., No. 98-634, 1999WL 51869, at *9 (E.D. Va. Feb. 2, 1999); Jews for Jesus v.Brodsky, 993 F. Supp. 282, 304-05 (D.N.J. 1998), aff'd, 159F.3d 1351 (3d Cir. 1998); Interstellar Starship Servs., 983 F.Supp. at 1336; Planned Parenthood Fed'n of America, 1997WL 133313, at *8. Both companies, apparently recognizingthe rapidly growing importance of Web commerce, aremaneuvering to attract customers via the Web. Not only dothey compete for the patronage of an overlapping audience onthe Web, both "MovieBuff" and "moviebuff.com" are utilizedin conjunction with Web-based products.[20] Given the virtual identity of "moviebuff.com" and"MovieBuff," the relatedness of the products and servicesaccompanied by those marks, and the companies' simulta-neous use of the Web as a marketing and advertising tool,many forms of consumer confusion are likely to result. Peoplesurfing the Web for information on "MovieBuff " may confuse"MovieBuff" with the searchable entertainment database at"moviebuff.com" and simply assume that they have reachedBrookfield's web site. See, e.g., Cardservice Int'l, 950 F.Supp. at 741. In the Internet context, in particular, entering aweb site takes little effort -- usually one click from a linkedsite or a search engine's list; thus, Web surfers are more likelyto be confused as to the ownership of a web site than tradi-tional patrons of a brick-and-mortar store would be of astore's ownership. Alternatively, they may incorrectly believethat West Coast licensed "MovieBuff" from Brookfield, see,e.g., Indianapolis Colts, Inc. v. Metropolitan Baltimore Foot-ball Club Ltd., 34 F.3d 410, 415-16 (7th Cir. 1994), or thatBrookfield otherwise sponsored West Coast's database, see E.Remy Martin, 756 F.2d at 1530; Fuji Photo Film Co. v. Shino-hara Shoji Kabushiki Kaisha, 754 F.2d 591, 596 (5th Cir.1985). Other consumers may simply believe that West Coastbought out Brookfield or that they are related companies.Yet other forms of confusion are likely to ensue. Consum-ers may wrongly assume that the "MovieBuff" database theywere searching for is no longer offered, having been replacedby West Coast's entertainment database, and thus simply usethe services at West Coast's web site. See, e.g. , CardserviceInt'l, 950 F. Supp. at 741. And even where people realize,immediately upon accessing "moviebuff.com," that they havereached a site operated by West Coast and wholly unrelatedto Brookfield, West Coast will still have gained a customer byappropriating the goodwill that Brookfield has developed inits "MovieBuff" mark. A consumer who was originally look-ing for Brookfield's products or services may be perfectlycontent with West Coast's database (especially as it is offeredfree of charge); but he reached West Coast's site because ofits use of Brookfield's mark as its second-level domain name,which is a misappropriation of Brookfield's goodwill by WestCoast. See infra Part V.B.The district court apparently assumed that likelihood ofconfusion exists only when consumers are confused as to thesource of a product they actually purchase. It is, however,well established that the Lanham Act protects against themany other forms of confusion that we have outlined. SeePebble Beach, 155 F.3d at 544; Indianapolis Colts, 34 F.3dat 415-16; Fuji Photo Film, 754 F.2d at 596; HMH Publ'g Co.v. Brincat, 504 F.2d 713, 716-17 & n.7 (9th Cir. 1974);Fleischmann Distilling, 314 F.2d at 155.The factors that we have considered so far -- the similarityof marks, the relatedness of product offerings, and the overlapin marketing and advertising channels -- lead us to the tenta-tive conclusion that Brookfield has made a strong showing oflikelihood of confusion. Because it is possible that the remain-ing factors will tip the scale back the other way if they weighstrongly enough in West Coast's favor, we consider theremaining likelihood of confusion factors, beginning with thestrength of Brookfield's mark. The stronger a mark -- mean-ing the more likely it is to be remembered and associated inthe public mind with the mark's owner -- the greater the pro-tection it is accorded by the trademark laws. See Kenner Par-ker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed.Cir. 1992); Nutri/System, 809 F.2d at 605. Marks can be con-ceptually classified along a spectrum of generally increasinginherent distinctiveness as generic, descriptive, suggestive,arbitrary, or fanciful.19 See Two Pesos,
505 U.S. at 768
. WestCoast asserts that Brookfield's mark is "not terriblydistinctive," by which it apparently means suggestive, butonly weakly so. Although Brookfield does not seriously dis-pute that its mark is only suggestive, it does defend its(mark's) muscularity.[21] We have recognized that, unlike arbitrary or fancifulmarks which are typically strong, suggestive marks are pre-sumptively weak. See, e.g., Nutri/Systems, 809 F.2d at 605.As the district court recognized, placement within the concep-tual distinctiveness spectrum is not the only determinant of amark's strength, as advertising expenditures can transform asuggestive mark into a strong mark, see id., where, for exam-ple, that mark has achieved actual marketplace recognition,see Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743-44 (2d Cir. 1998). Brookfield, however, has not come forthwith substantial evidence establishing the widespread recogni-tion of its mark; although it argues that its strength is estab-lished from its use of "MovieBuff" for over five years, itsfederal and California state registrations, and its expenditureof $100,000 in advertising its mark, the district court did notclearly err in classifying "MovieBuff" as weak. Some weakmarks are weaker than others, and although "MovieBuff" fallswithin the weak side of the strength spectrum, the mark is notso flabby as to compel a finding of no likelihood of confusionin light of the other factors that we have considered. Impor-tantly, Brookfield's trademark is not descriptive because itdoes not describe either the software product or its purpose.Instead, it is suggestive -- and thus strong enough to warranttrademark protection -- because it requires a mental leapfrom the mark to the product. See Self-Realization FellowshipChurch v. Anada Church of Self-Realization, 59 F.3d 902,910-11 (9th Cir. 1995). Because the products involved areclosely related and West Coast's domain name is nearly iden-tical to Brookfield's trademark, the strength of the mark is ofdiminished importance in the likelihood of confusion analysis.See McCarthy P 11:76 ("Whether a mark is weak or not is oflittle importance where the conflicting mark is identical andthe goods are closely related.").We thus turn to intent. "The law has long been establishedthat if an infringer `adopts his designation with the intent ofderiving benefit from the reputation of the trade-mark or tradename, its intent may be sufficient to justify the inference thatthere are confusing similarities.' " Pacific Telesis v. Interna-tional Telesis Comms., 994 F.2d 1364, 1369 (9th Cir. 1993)(quoting Restatement of Torts, S 729, Comment on Clause(b)f (1938)). An inference of confusion has similarly beendeemed appropriate where a mark is adopted with the intentto deceive the public. See Gallo, 967 F.2d at 1293 (citingSleekcraft, 599 F.2d at 354). The district court found that theintent factor favored West Coast because it did not adopt the"moviebuff.com" mark with the specific purpose of infringingBrookfield's trademark. The intent prong, however, is not sonarrowly confined.[22] This factor favors the plaintiff where the allegedinfringer adopted his mark with knowledge, actual or con-structive, that it was another's trademark. See Official AirlineGuides, 6 F.3d at 1394 ("When an alleged infringer know-ingly adopts a mark similar to another's, courts will presumean intent to deceive the public."); Fleischmann Distilling, 314F.2d 149 at 157. In the Internet context, in particular, courtshave appropriately recognized that the intentional registrationof a domain name knowing that the second-level domain isanother company's valuable trademark weighs in favor oflikelihood of confusion. See, e.g., Washington Speakers, 1999WL 51869, at *10. There is, however, no evidence in therecord that West Coast registered "moviebuff.com " with theprincipal intent of confusing consumers.20 Brookfield cor-rectly points out that, by the time West Coast launched itsweb site, it did know of Brookfield's claim to rights in thetrademark "MovieBuff." But when it registered the domainname with Network Solutions, West Coast did not know ofBrookfield's rights in "MovieBuff" (at least Brookfield hasnot established that it did). Although Brookfield asserts thatWest Coast could easily have launched its web site at its alter-nate domain address, "westcoastvideo.com," thereby avoidingthe infringement problem, West Coast claims that it hadalready invested considerable sums in developing its"moviebuff.com" web site by the time that Brookfieldinformed it of its rights in the trademark. Considered as awhole, this factor appears indeterminate.[23] Importantly, an intent to confuse consumers is notrequired for a finding of trademark infringement. SeeDreamwerks, 142 F.3d at 1132 n.12 ("Absence of malice isno defense to trademark infringement"); Daddy's JunkyMusic Stores, 109 F.3d at 287 ("As noted, the presence ofintent can constitute strong evidence of confusion. The con-verse of this proposition, however, is not true: the lack ofintent by a defendant is largely irrelevant in determining ifconsumers likely will be confused as to source.") (internalquotation marks and citations omitted); FleischmannDistilling, 314 F.2d at 157. Instead, this factor is only relevantto the extent that it bears upon the likelihood that consumerswill be confused by the alleged infringer's mark (or to theextent that a court wishes to consider it as an equitable con-sideration). See Sleekcraft Boats, 599 F.2d at 348 n.10. Here,West Coast's intent does not appear to bear upon the likeli-hood of confusion because it did not act with such an intentfrom which it is appropriate to infer consumer confusion.[24] The final three Sleekcraft factors -- evidence of actualconfusion, likelihood of expansion in product lines, and pur-chaser care -- do not affect our ultimate conclusion regardingthe likelihood of confusion. The first two factors do not meritextensive comment. Actual confusion is not relevant becauseBrookfield filed suit before West Coast began actively usingthe "moviebuff.com" mark and thus never had the opportunityto collect information on actual confusion. The likelihood ofexpansion in product lines factor is relatively unimportantwhere two companies already compete to a significant extent.See Official Airline Guides, 6 F.3d at 1394. In any case, it isneither exceedingly likely nor unlikely that West Coast willenter more directly into Brookfield's principal market, or viceversa.Although the district court did not discuss the degree ofcare likely to be exercised by purchasers of the products inquestion, we think that this issue deserves some consideration.Likelihood of confusion is determined on the basis of a"reasonably prudent consumer." Dreamwerks , 142 F.3d at1129; Sleekcraft, 599 F.2d at 353. What is expected of thisreasonably prudent consumer depends on the circumstances.We expect him to be more discerning -- and less easily con-fused -- when he is purchasing expensive items, see, e.g.,Official Airline Guides, 6 F.3d at 1393 (noting that confusionwas unlikely among advertisers when the products in questioncost from $2,400 to $16,000), and when the products beingsold are marketed primarily to expert buyers, see, e.g.,Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1537(9th Cir. 1989). We recognize, however, that confusion mayoften be likely even in the case of expensive goods sold todiscerning customers. See Sleekcraft, 599 F.3d at 353; seealso, e.g., Daddy's Junky Music Stores, 109 F.3d at 286;Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 492(2d Cir. 1988). On the other hand, when dealing with inex-pensive products, customers are likely to exercise less care,thus making confusion more likely. See, e.g., Gallo, 967 F.2dat 1293 (wine and cheese).[25] The complexity in this case arises because we mustconsider both entertainment professionals, who probably willtake the time and effort to find the specific product they want,and movie devotees, who will be more easily confused as tothe source of the database offered at West Coast's web site.In addition, West Coast's site is likely to be visited by manycasual movie watchers. The entertainment professional, moviedevotee, and casual watcher are likely to exercise high, little,and very little care, respectively. Who is the reasonably pru-dent consumer? Although we have not addressed the issue ofpurchaser care in mixed buyer classes, another circuit has heldthat "the standard of care to be exercised by the reasonablyprudent purchaser will be equal to that of the least sophisti-cated consumer." Ford Motor Co. v. Summit Motor Prods.,Inc., 930 F.2d 277, 283 (3d Cir. 1991); see also OmegaImporting Corp. v. Petri-Kine Camera Co., 451 F.2d 1190,1200 (2d Cir. 1971) (instructing that, where a product is tar-geted both to discriminating and casual buyers, a court mustconsider the likelihood of confusion on the part of the rela-tively unknowledgeable buyers as well as of the formergroup); 3 McCarthy S 23:100 (advocating this approach). Thisis not the only approach available to us, as we could alterna-tively use a weighted average of the different levels of pur-chaser care in determining how the reasonably prudentconsumer would act. We need not, however, decide this ques-tion now because the purchaser confusion factor, even consid-ered in the light most favorable to West Coast, is notsufficient to overcome the likelihood of confusion stronglyestablished by the other factors we have analyzed.[26] West Coast makes one last ditch argument -- that,even if there is a likelihood of confusion, Brookfield shouldbe estopped from asserting its trademark rights because itwaited too long to file suit. Although we have applied lachesto bar trademark infringement claims, we have done so onlywhere the trademark holder knowingly allowed the infringingmark to be used without objection for a lengthy period oftime. See E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607(9th Cir. 1983). In E-Systems, for example, we estopped aclaimant who did not file suit until after the allegedly infring-ing mark had been used for eight years where the claimanthad known of the infringing use for at least six years. See id.;see also Carter-Wallace, Inc. v. Procter & Gamble Co., 434F.2d 794, 803 (9th Cir. 1970). We specifically cautioned,however, that "had defendant's encroachment been minimal,or its growth slow and steady, there would be no laches." E-Systems, 720 F.2d at 607; accord Carter-Wallace, 434 F.2d at803 n.4. Here, although Brookfield waited over two yearsbefore notifying West Coast that its intended use of"moviebuff.com" would infringe on Brookfield's trademark,West Coast did not do anything with its domain address dur-ing that time, and Brookfield filed suit the very day that WestCoast publicly announced its intention to launch a web site at"moviebuff.com." Accordingly, we conclude that Brook-field's delay was not such that it should be estopped from pur-suing an otherwise meritorious claim. See generally AmericanInt'l Group, 926 F.2d at 831 (outlining six-factor test fordetermining whether laches operates to bar a claim of trade-mark infringement).21[27] In light of the foregoing analysis, we conclude thatBrookfield has demonstrated a likelihood of success on itsclaim that West Coast's use of "moviebuff.com " violates theLanham Act. We are fully aware that although the question of"[w]hether confusion is likely is a factual determinationwoven into the law," we nevertheless must review only forclear error the district court's conclusion that the evidence oflikelihood of confusion in this case was slim. See Levi Strauss& Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 (9th Cir. 1985)(en banc). Here, however, we are "left with the definite andfirm conviction that a mistake has been made." Pacific TelesisGroup v. International Telesis Comms., 994 F.2d 1364, 1367(9th Cir. 1993).22 Volume 2 of 2FOR PUBLICATIONUNITED STATES COURT OF APPEALSFOR THE NINTH CIRCUITBROOKFIELD COMMUNICATIONS, INC.,Plaintiff-Appellant, No. 98-56918v. D.C. No. CV-98-09074-CRMWEST COAST ENTERTAINMENTCORPORATION, OPINIONDefendant-Appellee.Appeal from the United States District Courtfor the Central District of CaliforniaCarlos R. Moreno, District Judge, PresidingArgued and SubmittedMarch 10, 1999--San Francisco, CaliforniaFiled April 22, 1999Before: William C. Canby, Jr., Diarmuid F. O'Scannlain, andKim M. Wardlaw, Circuit Judges.Opinion by Judge O'Scannlain
_____________________________BSo far we have considered only West Coast's use of thedomain name "moviebuff.com." Because Brookfieldrequested that we also preliminarily enjoin West Coast fromusing marks confusingly similar to "MovieBuff " in metatagsand buried code, we must also decide whether West Coastcan, consistently with the trademark and unfair competitionlaws, use "MovieBuff" or "moviebuff.com " in its HTML code.23[28] At first glance, our resolution of the infringementissues in the domain name context would appear to dictate asimilar conclusion of likelihood of confusion with respect toWest Coast's use of "moviebuff.com" in its metatags. Indeed,all eight likelihood of confusion factors outlined in Part V-A-- with the possible exception of purchaser care, which wediscuss below -- apply here as they did in our analysis ofdomain names; we are, after all, dealing with the same marks,the same products and services, the same consumers, etc. Dis-posing of the issue so readily, however, would ignore the factthat the likelihood of confusion in the domain name contextresulted largely from the associational confusion betweenWest Coast's domain name "moviebuff.com" and Brook-field's trademark "MovieBuff." The question in the metatagscontext is quite different. Here, we must determine whetherWest Coast can use "MovieBuff" or "moviebuff.com" in themetatags of its web site at "westcoastvideo.com " or at anyother domain address other than "moviebuff.com" (which wehave determined that West Coast may not use).Although entering "MovieBuff" into a search engine islikely to bring up a list including "westcoastvideo.com" ifWest Coast has included that term in its metatags, the result-ing confusion is not as great as where West Coast uses the"moviebuff.com" domain name. First, when the user inputs"MovieBuff" into an Internet search engine, the list producedby the search engine is likely to include both West Coast'sand Brookfield's web sites. Thus, in scanning such list, theWeb user will often be able to find the particular web site heis seeking. Moreover, even if the Web user chooses the website belonging to West Coast, he will see that the domainname of the web site he selected is "westcoastvideo.com."Since there is no confusion resulting from the domain address,and since West Coast's initial web page prominently displaysits own name, it is difficult to say that a consumer is likely tobe confused about whose site he has reached or to think thatBrookfield somehow sponsors West Coast's web site.[29] Nevertheless, West Coast's use of "moviebuff.com" inmetatags will still result in what is known as initial interestconfusion. Web surfers looking for Brookfield's "MovieBuff"products who are taken by a search engine to"westcoastvideo.com" will find a database similar enough to"MovieBuff" such that a sizeable number of consumers whowere originally looking for Brookfield's product will simplydecide to utilize West Coast's offerings instead. Althoughthere is no source confusion in the sense that consumers knowthey are patronizing West Coast rather than Brookfield, thereis nevertheless initial interest confusion in the sense that, byusing "moviebuff.com" or "MovieBuff" to divert people look-ing for "MovieBuff" to its web site, West Coast improperlybenefits from the goodwill that Brookfield developed in itsmark. Recently in Dr. Seuss, we explicitly recognized that theuse of another's trademark in a manner calculated "to captureinitial consumer attention, even though no actual sale isfinally completed as a result of the confusion, may be still aninfringement." Dr. Seuss, 109 F.3d at 1405 (citing Mobil OilCorp. v. Pegasus Petroleum Corp., 818 F.2d 254, 257-58 (2dCir. 1987)).24The Dr. Seuss court, in recognizing that the diversion ofconsumers' initial interest is a form of confusion againstwhich the Lanham Act protects, relied upon Mobil Oil. In thatcase, Mobil Oil Corporation ("Mobil") asserted a federaltrademark infringement claim against Pegasus Petroleum,alleging that Pegasus Petroleum's use of "Pegasus" was likelyto cause confusion with Mobil's trademark, a flying horsesymbol in the form of the Greek mythological Pegasus. Mobilestablished that "potential purchasers would be misled into aninitial interest in Pegasus Petroleum" because they thoughtthat Pegasus Petroleum was associated with Mobil. Id. at 260.But these potential customers would generally learn that Peg-asus Petroleum was unrelated to Mobil well before any actualsale was consummated. See id. Nevertheless, the Second Cir-cuit held that "[s]uch initial confusion works a sufficienttrademark injury." Id.Mobil Oil relied upon its earlier opinion in Grotrian, Helf-ferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523F.2d 1331, 1341-42 (2d Cir. 1975). Analyzing the plaintiff'sclaim that the defendant, through its use of the "Grotrian-Steinweg" mark, attracted people really interested in plain-tiff's "Steinway" pianos, the Second Circuit explained: We decline to hold, however, that actual or potential confusion at the time of purchase necessarily must be demonstrated to establish trademark infringement under the circumstances of this case. The issue here is not the possibility that a pur- chaser would buy a Grotrian-Steinweg thinking it was actually a Steinway or that Grotrian had some connection with Steinway and Sons. The harm to Steinway, rather, is the likelihood that a consumer, hearing the "Grotrian-Steinweg" name and thinking it had some connection with "Steinway," would con- sider it on that basis. The "Grotrian-Steinweg " name therefore would attract potential customers based on the reputation built up by Steinway in this country for many years.Grotrian, 523 F.2d at 1342.Both Dr. Seuss and the Second Circuit hold that initialinterest confusion is actionable under the Lanham Act, whichholdings are bolstered by the decisions of many other courtswhich have similarly recognized that the federal trademarkand unfair competition laws do protect against this form ofconsumer confusion. See Green Prods., 992 F. Supp. 1070,1076 (N.D. Iowa 1997) ("In essence, ICBP is capitalizing onthe strong similarity between Green Products' trademark andICBP's domain name to lure customers onto its web page.");Securacomm Consulting, Inc. v. Securacomm Inc., 984 F.Supp. 286, 298 (D.N.J. 1997) (" `Infringement can be basedupon confusion that creates initial customer interest, eventhough no actual sale is finally completed as a result of theconfusion.' ") (citing 3 McCarthy S 23:6), rev'd on othergrounds, 166 F.3d 182, 186 (3d Cir. 1999) ("In this appeal,[appellant] does not challenge the district court's finding ofinfringement or order of injunctive relief."); Kompan A.S. v.Park Structures, Inc., 890 F. Supp. 1167, 1180 (N.D.N.Y.1995) ("Kompan argues correctly that it can prevail by show-ing that confusion between the Kompan and Karavan linesand names will mistakenly lead the consumer to believe thereis some connection between the two and therefore develop aninterest in the Karavan line that it would not otherwise havehad."); Blockbuster Entertainment Group v. Laylco, Inc., 869F. Supp. 505, 513 (E.D. Mich. 1994) ("Because the names areso similar and the products sold are identical, some unwittingcustomers might enter a Video Busters store thinking it issomehow connected to Blockbuster. Those customers proba-bly will realize shortly that Video Busters is not related toBlockbuster, but under [Ferraria S.P.A. Esercizio v. Roberts,944 F.2d 1235 (6th Cir. 1991)] and Grotrian that isirrelevant."); Jordache Enters., Inc. v. Levi Strauss & Co.,841 F. Supp. 506, 514-15 (S.D.N.Y. 1993) ("Types of confu-sion that constitute trademark infringement include where . . .potential consumers initially are attracted to the junior user'smark by virtue of its similarity to the senior user's mark, eventhough these consumers are not actually confused at the timeof purchase."); Sara Lee Corp. v. Kayser-Roth Corp., No. 92-00460, 1992 WL 436279, at *24 (W.D.N.C. Dec. 1, 1992)("That situation offers an opportunity for sale not otherwiseavailable by enabling defendant to interest prospective cus-tomers by confusion with the plaintiff's product."); TelevisionEnter. Network, Inc. v. Entertainment Network, Inc. , 630 F.Supp. 244, 247 (D.N.J. 1986) ("Even if the confusion is curedat some intermediate point before the deal is completed, theinitial confusion may be damaging and wrongful."); KoppersCo. v. Krupp-Koppers GmbH, 517 F. Supp. 836, 844 (W.D.Pa. 1981) ("[S]ecuring the initial business contact by thedefendant because of an assumed association between the par-ties is wrongful even though the mistake is later rectified.").See also Forum Corp. of North America v. Forum, Ltd. , 903F.2d 434, 442 n.2 (7th Cir. 1990) ("We point out that the factthat confusion as to the source of a product or service is even-tually dispelled does not eliminate the trademark infringementwhich has already occurred."). But see Astra Pharm. Prods.,Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206-08(1st Cir. 1983) (suggesting that only confusion that affects"the ultimate decision of a purchaser whether to buy a particu-lar product" is actionable); Teletech Customer Care Mgmt.(Cal.), Inc. v. Tele-Tech Co., 977 F. Supp. 1407, 1410, 1414(C.D. Cal. 1997) (finding likelihood of initial interest confu-sion but concluding that such "brief confusion is not cogniza-ble under the trademark laws").Using another's trademark in one's metatags is much likeposting a sign with another's trademark in front of one'sstore. Suppose West Coast's competitor (let's call it"Blockbuster") puts up a billboard on a highway reading --"West Coast Video: 2 miles ahead at Exit 7" -- where WestCoast is really located at Exit 8 but Blockbuster is located atExit 7. Customers looking for West Coast's store will pull offat Exit 7 and drive around looking for it. Unable to locateWest Coast, but seeing the Blockbuster store right by thehighway entrance, they may simply rent there. Even consum-ers who prefer West Coast may find it not worth the troubleto continue searching for West Coast since there is a Block-buster right there. Customers are not confused in the narrowsense: they are fully aware that they are purchasing fromBlockbuster and they have no reason to believe that Block-buster is related to, or in any way sponsored by, West Coast.Nevertheless, the fact that there is only initial consumer con-fusion does not alter the fact that Blockbuster would be mis-appropriating West Coast's acquired goodwill. SeeBlockbuster, 869 F. Supp. at 513 (finding trademark infringe-ment where the defendant, a video rental store, attracted cus-tomers' initial interest by using a sign confusingly to itscompetitor's even though confusion would end long beforethe point of sale or rental); see also Dr. Seuss , 109 F.3d at1405; Mobil Oil, 818 F.2d at 260; Green Prods., 992 F. Supp.at 1076.The few courts to consider whether the use of another'strademark in one's metatags constitutes trademark infringe-ment have ruled in the affirmative. For example, in a case inwhich Playboy Enterprises, Inc. ("Playboy") sued AsiaFocusInternational, Inc. ("AsiaFocus") for trademark infringementresulting from AsiaFocus's use of the federally registeredtrademarks "Playboy" and "Playmate" in its HTML code, adistrict court granted judgment in Playboy's favor, reasoningthat AsiaFocus intentionally misled viewers into believingthat its Web site was connected with, or sponsored by, Play-boy. See Playboy Enters. v. AsiaFocus Int'l, Inc., No. 97-734,1998 WL 724000, at *3, *6-*7 (E.D. Va. Apr. 10, 1998).In a similar case also involving Playboy, a district court inCalifornia concluded that Playboy had established a likeli-hood of success on the merits of its claim that defendants'repeated use of "Playboy" within "machine readable code inDefendants' Internet Web pages, so that the PLAYBOYtrademark [was] accessible to individuals or Internet searchengines which attempt[ed] to access Plaintiff under Plaintiff'sPLAYBOY registered trademark" constituted trademarkinfringement. See Playboy Enters. v. Calvin Designer Label,985 F. Supp. 1220, 1221 (N.D. Cal. 1997). The court accord-ingly enjoined the defendants from using Playboy's marks inburied code or metatags. See id. at 1221-22.In a metatags case with an interesting twist, a district courtin Massachusetts also enjoined the use of metatags in a man-ner that resulted in initial interest confusion. See Niton, 27 F.Supp. 2d at 102-05. In that case, the defendant RadiationMonitoring Devices ("RMD") did not simply use Niton Cor-poration's ("Niton") trademark in its metatags. Instead,RMD's web site directly copied Niton's web site's metatagsand HTML code. As a result, whenever a search performed onan Internet search engine listed Niton's web site, it also listedRMD's site. Although the opinion did not speak in terms ofinitial consumer confusion, the court made clear that its issu-ance of preliminary injunctive relief was based on the fact thatRMD was purposefully diverting people looking for Niton toits web site. See id. at 104-05.[30] Consistently with Dr. Seuss , the Second Circuit, andthe cases which have addressed trademark infringementthrough metatags use, we conclude that the Lanham Act barsWest Coast from including in its metatags any term confus-ingly similar with Brookfield's mark. West Coast argues thatour holding conflicts with Holiday Inns, in which the SixthCircuit held that there was no trademark infringement wherean alleged infringer merely took advantage of a situation inwhich confusion was likely to exist and did not affirmativelyact to create consumer confusion. See Holiday Inns, 86 F.3dat 622 (holding that the use of "1-800-405-4329" -- which isequivalent to "1-800-H[zero]LIDAY" -- did not infringeHoliday Inn's trademark, "1-800-HOLIDAY"). Unlike thedefendant in Holiday Inns, however, West Coast was not apassive figure; instead, it acted affirmatively in placingBrookfield's trademark in the metatags of its web site, therebycreating the initial interest confusion. Accordingly, our con-clusion comports with Holiday Inns.C[31] Contrary to West Coast's contentions, we are not inany way restricting West Coast's right to use terms in a man-ner which would constitute fair use under the Lanham Act.See New Kids on the Block v. News Amer. Publ'g, Inc. , 971F.2d 302, 306-09 (9th Cir. 1992); see also August Storck K.G.v. Nabisco, Inc., 59 F.3d 616, 617-18 (7th Cir. 1995). It iswell established that the Lanham Act does not prevent onefrom using a competitor's mark truthfully to identify the com-petitor's goods, see, e.g., Smith v. Chanel, Inc., 402 F.2d 562,563 (9th Cir. 1968) (stating that a copyist may use the origina-tor's mark to identify the product that it has copied), or incomparative advertisements, see New Kids on the Block, 971F.2d at 306-09. This fair use doctrine applies in cyberspace asit does in the real world. See Radio Channel Networks, Inc.v. Broadcast.Com, Inc., No. 98-4799, 1999 WL 124455, at*5-*6 (S.D.N.Y. Mar. 8, 1999); Bally Total Fitness HoldingCorp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998); Welles,7 F. Supp. 2d at 1103-04; Patmont Motor Werks, Inc. v. Gate-way Marine, Inc., No. 96-2703, 1997 WL 811770, at *3-*4 &n.6 (N.D. Cal. Dec. 18, 1997); see also Universal Tel-A-Talk,1998 WL 767440, at *9.In Welles, the case most on point, Playboy sought to enjoinformer Playmate of the Year Terri Welles ("Welles") fromusing "Playmate" or "Playboy" on her web site featuring pho-tographs of herself. See 7 F. Supp. 2d at 1100. Welles's website advertised the fact that she was a former Playmate of theYear, but minimized the use of Playboy's marks; it also con-tained numerous disclaimers stating that her site was neitherendorsed by nor affiliated with Playboy. The district courtfound that Welles was using "Playboy" and "Playmate" not astrademarks, but rather as descriptive terms fairly and accu-rately describing her web page, and that her use of "Playboy"and "Playmate" in her web site's metatags was a permissible,good faith attempt to index the content of her web site. Itaccordingly concluded that her use was permissible under thetrademark laws. See id. at 1103-04.[32] We agree that West Coast can legitimately use anappropriate descriptive term in its metatags. But "MovieBuff"is not such a descriptive term. Even though it differs from"Movie Buff" by only a single space, that difference is piv-otal. The term "Movie Buff" is a descriptive term, which isroutinely used in the English language to describe a moviedevotee. "MovieBuff" is not. The term "MovieBuff" is not inthe dictionary. See Merriam-Webster's Collegiate Dictionary762 (10th ed. 1998); American Heritage College Dictionary893 (3d ed. 1997); Webster's New World College Dictionary889 (3d ed. 1997); Webster's Third New Int'l Dictionary 1480(unabridged 1993). Nor has that term been used in any pub-lished federal or state court opinion. In light of the fact thatit is not a word in the English language, when the term"MovieBuff" is employed, it is used to refer to Brookfield'sproducts and services, rather than to mean "motion pictureenthusiast." The proper term for the "motion pictureenthusiast" is "Movie Buff," which West Coast certainly canuse. It cannot, however, omit the space.Moreover, West Coast is not absolutely barred from usingthe term "MovieBuff." As we explained above, that term canbe legitimately used to describe Brookfield's product. Forexample, its web page might well include an advertisementbanner such as "Why pay for MovieBuff when you can getthe same thing here for FREE?" which clearly employs"MovieBuff" to refer to Brookfield's products. West Coast,however, presently uses Brookfield's trademark not to refer-ence Brookfield's products, but instead to describe its ownproduct (in the case of the domain name) and to attract peopleto its web site in the case of the metatags). That is not fair use.VI[33] Having concluded that Brookfield has established alikelihood of success on the merits of its trademark infringe-ment claim, we analyze the other requirement for preliminaryinjunctive relief inquiry, irreparable injury. Although the dis-trict court did not address this issue, irreparable injury may bepresumed from a showing of likelihood of success on the mer-its of a trademark infringement claim. See Metro Publ'g, Ltd.v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir. 1993)("Once the plaintiff has demonstrated a likelihood of confu-sion, it is ordinarily presumed that the plaintiff will sufferirreparable harm if injunctive relief is not granted."). Prelimi-nary injunctive relief is appropriate here to prevent irreparableinjury to Brookfield's interests in its trademark "MovieBuff"and to promote the public interest in protecting trademarksgenerally as well.VIIAs we have seen, registration of a domain name for a Website does not trump long-established principles of trademarklaw. When a firm uses a competitor's trademark in thedomain name of its web site, users are likely to be confusedas to its source or sponsorship. Similarly, using a competitor'strademark in the metatags of such web site is likely to causewhat we have described as initial interest confusion. Theseforms of confusion are exactly what the trademark laws aredesigned to prevent.Accordingly, we reverse and remand this case to the districtcourt with instructions to enter a preliminary injunction infavor of Brookfield in accordance with this opinion.REVERSED and REMANDED. the end
___________________________FOOTNOTES 1 The parties quibble over whether the exact date was in December 1993or in January 1994, but this dispute is irrelevant.2 Pursuant to a contract with the National Science Foundation, NetworkSolutions was, at all relevant times, the exclusive registrar of certaindomain names, including those ending in ".com " The intricacies of theInternet and the Web are explained in detail in Part II.3 It also registered "inhollywood.com," but exactly when it did so isunclear from the record.4 Brookfield also asserted a trademark dilution claim under 15 U.S.C.S 1125(c) and California state law trademark and unfair competitionclaims.5 West Coast applied for a federal trademark registration for this term in1989, which issued in 1991 and became incontestable in 1996. West Coastpurports to have spent over $15,000,000 on advertisements and promo-tions featuring this mark.6 Section 32(1) of the Lanham Act applies to federally registered marksand provides in pertinent part: Any person who shall, without the consent of the registrant -- (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.15 U.S.C. S 1114(1). The same standard is embodied in section 43(a)(1)of the Lanham Act, which applies to both registered and unregisteredtrademarks: Any person who, on or in connection with any goods or ser- vices, . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or mislead- ing representation of fact, which -- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsor- ship, or approval of his or her goods, services, or commercial activities by another person, . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.15 U.S.C. S 1125(a)(1).7 Brookfield chose not to argue its trademark dilution claim or its statelaw causes of action in its opening brief. We accordingly deem thoseissues waived, see All Pacific Trading, Inc. v. Vessel M/V Hanjin Yosu, 7F.3d 1427, 1434 (9th Cir. 1993), and limit our attention to Brookfield'strademark infringement and unfair competition claims.8 As is often done, Brookfield frames its claims under sections 32 and43(a) of the Lanham Act in terms of trademark infringement and unfaircompetition, respectively. Whereas section 32 provides protection only toregistered marks, section 43(a) protects against infringement of unregis-tered marks and trade dress as well as registered marks, see, e.g., Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1046 (9thCir. 1998), and protects against a wider range of practices such as falseadvertising and product disparagement, see 15 U.S.C. S 1125(a)(1)(B);Two Pesos, Inc. v. Taco Cabana,
505 U.S. 763, 768
(1992). Despite thesedifferences, the analysis under the two provisions is oftentimes identical.Because we find this to be the case here, we use, for simplicity's sake, theterm "infringement" to refer to Brookfield's claims under both sections 32and 43(a) throughout the remainder of the opinion.9 Both parties agree that "MovieBuff" is a suggestive mark, which fallswithin the category of inherently distinctive marks. The issue of inherentdistinctiveness is discussed in further detail in Part V-A, infra.10 West Coast's federally registered trademark "The Movie Buff'sMovie Store" is now incontestable, meaning that its validity and legal pro-tectability, as well as West Coast's ownership therein, are all conclusivelypresumed (subject to certain defenses not relevant here). See 15 U.S.C.SS 1065, 1115(b); Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.189, 196 (1985).11 The court then remanded the case to the district court to make a deter-mination on this question. See id. at 1382.12 The present case differs from the Fourth Circuit's Lone Star case (yetanother involving the same three-trademark setup) for exactly the samereason that it differs from the Eleventh Circuit's Lone Star case. See LoneStar Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4thCir. 1995). The Fourth Circuit awarded priority to the company owningthe earlier and later trademarks over the company owning the interveningmark, because the intervening mark ("Lone Star Grill") was found to beconfusingly similar with the earlier of the other two marks ("Lone StarCafe") as well as with the later mark ("Lone Star Steakhouse & Saloon").See id. at 931-32.13 The exact date that Brookfield began offering "MovieBuff" productsover the Web is the subject of bitter dispute. In its opening brief, Brook-field specifically averred: "In January of 1996, Brookfield also launcheda web site that made the MOVIEBUFF software and database availablevia the Internet." West Coast questions the veracity of Brookfield'sclaims, pointing out that Brookfield did not even register a domain namewith Network Solutions until May 1996. Having reviewed the evidencebefore us, we too find it a mystery how Brookfield could have "launcheda web site" in January 1996 when it did not have a domain address atwhich it could operate a web site until May 1996. See infra Part II.Accordingly, we conclude that Brookfield failed to produce evidenceestablishing its claim that it began using the "MovieBuff" in conjunctionwith its Internet database in January 1996. Because "MovieBuff" is a fed-erally registered trademark, however, Brookfield is entitled to a presump-tive first used date equivalent to the filing date of its trademark registrationapplication, which was August 1997. See Rolley, Inc. v. Younghusband,204 F.2d 209, 210 (9th Cir. 1953).14 Brookfield is willing to grant West Coast a first use date of November11, 1998. Thus, we need not decide here whether the issuance of the pressrelease was indeed sufficient to constitute use in commerce under the Lan-ham Act. See 15 U.S.C. S 1127.15 More precisely, because we are at the preliminary injunction stage,Brookfield must establish that it is likely to be able to show such a likeli-hood of confusion. See Sardi's Restaurant, 755 F.2d at 723.16 Many cases begin the likelihood of confusion analysis by consideringthe strength of the allegedly infringed mark. Heeding our repeated warn-ings against simply launching into a mechanical application of the eight-factor Sleekcraft test, see, e.g.,Dreamwerks, 142 F.3d at 1129; Dr. Seuss,109 F.3d at 1404, and rather than automatically adopting the ordering ofSleekcraft and Dr. Seuss, we consider the Sleekcraft factors (roughly) inorder of their importance in this particular case. See, e.g., Dreamwerks,142 F.3d at 1130-31 (considering the eight Sleekcraft factors "out oforder").Although the Ninth Circuit has yet to apply the likelihood of confusionanalysis in the Internet context, a district court applying Ninth Circuit lawbased its finding of likelihood of confusion on (1) the virtual identity ofmarks, (2) the relatedness of plaintiff's and defendant's goods, and (3) thesimultaneous use of the Web as a marketing channel. See Comp ExaminerAgency, Inc. v. Juris, Inc., No. 96-0213, 1996 WL 376600, at *1 (C.D.Cal. Apr. 26, 1996). Consistently with Comp Examiner, we conclude thatthese three Sleekcraft factors are the most important in this case andaccordingly commence our analysis by examining these factors first.17 In an analogous context, courts have granted trademark protection tophone numbers that spell out a corporation's name, trademark, or slogan.See Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 677-78 (2dCir. 1989) (granting trademark protection to "(area code)-MATTRES");American Airlines, Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp.673, 683-84 (N.D. Ill. 1985); see also Dranoff-Perlstein Assocs. v. Sklar,967 F.2d 852, 856-58 (3d Cir. 1992). But see Holiday Inns, Inc. v. 800Reservation, Inc., 86 F.3d 619, 622 (6th Cir. 1996).18 The fact that West Coast's second-level domain is exactly the same asBrookfield's mark is particularly important since potential customers of"MovieBuff" will go to "moviebuff.com," and not, for example,"moviebuffs.com." Had West Coast used the latter mark, the similarityfactor would have favored Brookfield to a lesser extent.19 Generic terms are those used by the public to refer generally to theproduct rather than a particular brand of the product. See, e.g., BlindedVeterans Assoc. v. Blinded American Veterans Found. , 872 F.2d 1035,1041 (D.C. Cir. 1989) ("Blinded Veterans"); Miller Brewing Co. v. G.Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977) ("Light Beer" or "LiteBeer"). Descriptive terms directly describe the quality or features of theproduct. See, e.g., Application of Keebler Co., 479 F.2d 1405 (C.C.P.A.1973) ("Rich `N Chips" chocolate chip cookies). A suggestive mark con-veys an impression of a good but requires the exercise of some imagina-tion and perception to reach a conclusion as to the product's nature. See,e.g., American Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103(2d Cir. 1978) ("Roach Motel" insect trap). Arbitrary and fanciful markshave no intrinsic connection to the product with which the mark is used;the former consists of words commonly used in the English language, see,e.g., Fleischmann Distilling, 314 F.2d 149 ("Black & White" scotch whis-key), whereas the latter are wholly made-up terms, see, e.g., Clorox Chem.Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702 (E.D.N.Y. 1938) ("Clorox"bleach).20 Nor did West Coast register its domain name for the specific purposeof subsequently selling the domain name to the trademark owner. See, e.g.,Minnesota Mining, 21 F. Supp. 2d at 1005; Intermatic, 947 F. Supp. at1229 (involving the infamous cyber squatter Dennis Toeppen who regis-tered domain names including "aircanada.com,""deltaairlines.com,""eddiebauer.com," and "neiman-marcus.com " and has been the subject ofmany lawsuits).21 We note, however, that Brookfield should have suspected that WestCoast would eventually open a web site at the domain name it had regis-tered, and that the present dispute might have been more easily resolvedat an earlier time had Brookfield acted in a more prompt manner.22 Although there are no other circuit opinions addressing the issue oftrademark infringement via domain name use, our holding comports withthe decisions of many district courts. See, e.g. , Public Serv. Co., 1999 WL98973, at *2-*3; ("energyplace.com" and "Energy Place"); WashingtonSpeakers Bureau, 1999 WL 51869, at *8 ("washingtonspeakers.com" and"Washington Speakers Bureau"); Minnesota Mining, 21 F. Supp. 2d at1004-05 ("post-it.com" and "Post-it"); Cardservice Int'l, 950 F. Supp. at741-42 ("cardservice.com" and "Card Service"); Green Prods., 992 F.Supp. at 1079 ("greenproducts.com" and "Green Products"); Comp Exam-iner Agency, 1996 WL 376600, at *1 ("juris.com" and "Juris"). CompareToys "R" Us, 26 F. Supp. 2d at 643-44 (no likelihood of confusionbetween "gunsrus.com" and "Toys `R' Us"); CD Solutions, Inc. v. Tooker,15 F. Supp. 2d 986, 989 (D. Or. 1998) (no likelihood of confusionbetween "cds.com" and "CDS" as latter is a generic term).23 As we explained in Part II, metatags are HTML code not visible toWeb users but used by search engines in determining which sites corre-spond to the keywords entered by a Web user. Although Brookfield neverexplained what it meant by "buried code," the leading trademark treatiseexplains that "buried code" is another term for the HTML code that isused by search engines but that is not visible to users. See 3 McCarthy,supra, at S 25:69 n. 1. We will use the term metatags as encompassingHTML code generally.24 The Dr. Seuss court discussed initial interest confusion within its pur-chaser care analysis. As a district court within our circuit recognized in arecent case involving a claim of trademark infringement via metatagsusage, "[t]his case . . . is not a standard trademark case and does not lenditself to the systematic application of the eight factors." Playboy Enters.v. Welles, 7 F. Supp. 2d 1098 (S.D. Cal. 1998). Because we agree that thetraditional eight-factor test is not well-suited for analyzing the metatagsissue, we do not attempt to fit our discussion into one of the Sleekcraft fac-tors.