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TRANS UNION LLC v. CREDIT RESEARCH

March 26, 2001

TRANS UNION LLC, PLAINTIFF,
V.
CREDIT RESEARCH, INC., AND CREDIT BUREAU OF CARMEL AND PEBBLE BEACH, INC., DEFENDANTS.



The opinion of the court was delivered by: Moran, Senior District Judge.

        MEMORANDUM OPINION AND ORDER

In this trademark dispute plaintiff Trans Union LLC ("Trans Union") accuses defendants Credit Research, Inc. ("CRI") and Credit Bureau of Carmel and Pebble Beach, Inc. ("Credit Bureau") (collectively "defendants") of misusing Trans Union's trademarks on the internet. Trans Union alleges that defendants are displaying the Trans Union logo on their internet web pages and using the Trans Union trade name in their website's domain names and metatags in violations of federal and state trademark protection laws. Trans Union has now filed a motion for preliminary injunction targeted at defendants' website. For the reasons set forth below, Trans Union's motion is granted in part and denied in part.

BACKGROUND

Trans Union is in the credit reporting business. It collects consumer credit information from across the country, maintains that information on a national database known as CRONUS, and sells the information in credit reports and other products. Trans Union controls 35 per cent of the industry, making it one of the three major credit reporting agencies in the country. Its two chief competitors are Experian Information Solutions, Inc. (Experian) and Equifax, Inc. (Equifax). In connection with its business, Trans Union owns the federally-registered trade name "Trans Union" (trade name) and stylized "TU" logo (logo) (collectively "trademarks" or "marks").

In 1986, Trans Union's predecessor entered into a service agreement with CRI, a local credit bureau serving Santa Cruz, San Benito, and Monterey counties of northern California. (Cplt.Exh. 1). CRI subsequently assigned its rights and obligations under the service agreement to Credit Bureau.*fn1 Under the terms of the contract Credit Bureau supplies Trans Union with credit information from its three-county region in exchange for the ability to access the nationwide credit data stored on Trans Union's CRONUS network. This arrangement has been beneficial to both parties. Trans Union has been able to rely on Credit Bureau to gather local credit information from its province of the country. Indeed, Trans Union has entered into similar contracts with a number of other local credit bureaus and thereby has been able to assemble a nationwide body of credit information. As for Credit Bureau, it has been able to sell credit reports derived from Trans Union's CRONUS database to its local customers. Credit Bureau also has used Trans Union to provide billing and other services related to its credit bureau business.

Although the service agreement creates a contractual relationship between the parties, it is silent on the issue of intellectual property rights. Not surprisingly, therefore, issues regarding defendants' usage of Trans Union's trademarks have arisen over the years. Soon after entering into the service agreement Trans Union attempted to clarify some of the confusion. In a 1987 letter, Trans Union instructed Credit Bureau that it should "not imply in business stationery any form of ownership by Trans Union," but, instead, should "use wording such as `affiliated with Trans Union' or `serviced by Trans Union'" to describe the business relationship (Cplt.Exh. 2). Trans Union addressed the issue again several years later. In a 1996 letter to all affiliated local bureaus, Trans Union admonished that "in order to avoid a legal misrepresentation of the relationship . . . and . . . dilution of the Trans Union trademark, CRONUS Bureaus need to be careful about the manner in which they use the Trans Union name." Trans Union then went on to provide some guidelines regarding how local bureaus could and could not use the Trans Union trade name. Specifically, Trans Union identified certain correct designations (e.g., "Automated with Trans Union," "Serviced by Trans Union," "A member of the Trans Union Automated network," and "Serving the Trans Union system in [city or state]") and also cited a number of incorrect designations (e.g., "XYZ Credit Bureau/Trans Union," "A Franchise of Trans Union," "Trans Union's [city] Bureau," "[city/state]'s Trans Union bureau," and "A division of Trans Union") (Cplt.Exh. 3).

Despite these letters, Credit Bureau continued to use a letterhead that Trans Union found objectionable. In a letter dated March 11, 1998, Trans Union notified Credit Bureau that it was in violation of Trans Union's trademark rights and demanded that Credit Bureau cease and desist its unlawful conduct (Cplt.Exh. 4). The parties subsequently discussed the matter over the telephone and on April 7, 1998, Trans Union sent a letter to Credit Bureau stating that Trans Union does not permit the local "bureau to make any use of its `TU' logo" and that the only permitted use of the Trans Union trade name "is that which accurately describes the relationship between" the parties, such as "A Credit Bureau Serviced by Trans Union Corporation," or "A Member Of The Trans Union Corporation Automated Network" (Cplt.Exh. 5). On April 17, 1998, Credit Bureau wrote back to inform Trans Union that it was changing its letterhead to conform with Trans Union's request (Cplt.Exh. 6).

Foreshadowed by the letterhead dispute, the controversy regarding defendants' use of Trans Union's trademarks has now emerged in cyberspace. The focus of the conflict is defendants' use of the marks on their internet website.*fn2 Defendants market a variety of different credit products on their website. They sell credit reports derived from information maintained on Trans Union's CRONUS database, and also market credit reports from Experian and Equifax, as well as merged reports containing information from more than one source. Defendants no doubt view their website as a successful expansion of their marketing efforts. Trans Union, however, believes that defendants have again crossed the line to tread on its intellectual property rights. Specifically, Trans Union claims that defendants' website abuses its trademarks in three ways. First, Trans Union claims that defendants unlawfully display the Trans Union logo on their web pages. Second, Trans Union criticizes defendants for registering their website under domain names*fn3 which contain the Trans Union trade name, including transunioncredit.com, transunioncredit.org, transunioncredit.net, creditbureautransunion.com, creditbureautransunion.org, and creditbureautransunion.net. Third, Trans Union alleges that defendants illegally use the Trans Union trade name in their website's metatags.*fn4

On April 6, 2000, Trans Union sent defendants a cease-and-desist letter regarding their use of the trademarks on the internet (Cplt.Exh. 8). The parties were unable to reach an amicable resolution of their differences and, on June 27, 2000, Trans Union initiated this lawsuit. The eight-count complaint raises federal claims of trademark infringement (count I) and unfair competition (count II) under the Lanham Act, 15 U.S.C. § 1114, 1125(a), trademark dilution under the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c)(1) (count VII), and cyberpiracy under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1) (count VIII). Trans Union also alleges violations of the Illinois Uniform Deceptive Trade Practice Act, 815 ILCS 510/1 et seq. (count IV), Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1 et seq. (count V), and common law claims of trademark infringement and unfair competition (count III) and unjust enrichment (count VI). On November 21, 2000, Trans Union filed a motion for preliminary injunctive relief. Trans Union's motion essentially urges us to enjoin defendants from the following: 1) displaying the Trans Union logo on their web pages; 2) using the Trans Union trade name as part of their registered domain names; and 3) embedding the Trans Union trade name in their website's metatags.

DISCUSSION

I. Preliminary Injunction Standard

In order to obtain a preliminary injunction the moving party must establish that 1) there is a reasonable likelihood of success on the merits; 2) there exists no adequate remedy at law; 3) it will suffer irreparable harm without the injunction; 4) the threatened harm to the movant outweighs the injury an injunction may cause to the nonmovant; and 5) the injunction will not disserve the public interest. See Kiel v. City of Kenosha, 236 F.3d 814, 815-16 (7th Cir. 2000). We are to assess these factors on a sliding scale. The greater the movant's likelihood of succeeding on the merits, the less the balance of harms need be in his favor. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 461 (7th Cir. 2000).

We turn our attention first to Trans Union's likelihood of succeeding on the merits of its various claims. The Seventh Circuit has defined this initial element of the preliminary injunction analysis as requiring the movant to demonstrate a "better than negligible" chance of success on the merits. International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988). After assessing the merits of Trans Union's claims, we will go on to consider the other relevant elements of the test in order to determine whether the circumstances support a preliminary injunction in this case.

II. Trademark Infringement and Related Claims

Count I of the complaint alleges trademark infringement under the Lanham Act, 15 U.S.C. § 1114. In order to succeed on such a federal trademark infringement claim, Trans Union must establish that it has a protectable trademark and that defendants' misuse of the trademark creates a likelihood of confusion among consumers. Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1043 (7th Cir. 2000). This same analysis applies to Trans Union's unfair competition claim under the Lanham Act, see Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111, 1115 (7th Cir. 1997), its unfair trade practice claims under the Illinois Uniform Deceptive Trade Practice Act and Illinois Consumer Fraud and Deceptive Business Practices Act, see D 56, Inc. v. Berry's Inc., 955 F. Supp. 908, 920 (N.D.Ill. 1997), and its trademark infringement and unfair competition claims under Illinois common law, see AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 619 (7th Cir. 1993). Therefore, with respect to the likelihood of success on the merits, counts II-V share the same fate as count I.*fn5

Trans Union argues that the display of Trans Union's logo on defendants' web pages and use of Trans Union's trade name in defendants' domain names and metatags are likely to create the false impression that Trans Union endorses or otherwise is affiliated with defendants' website. See PACCAR, Inc. v. Telescan Technologies, L.L.C., 115 F. Supp.2d 772, 780 (E.D.Mich. 2000) (discussing similar website-related infringement claim). Defendants disagree. Their defense rests in part on the affiliation between the parties, and also raises ...


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