## Facts

- Internet Specialties West, Inc., an internet service provider, began using the domain name “ISWest.com” in 1996 in connection with ISP services.
- Milon-DiGiorgio Enterprises, Inc. (MDE) registered and used “ISPWest.com” beginning in 1998 for similar ISP services.
- Internet Specialties learned of MDE’s use in late 1998 but did not immediately sue; at the time, MDE was a regional dial-up provider and Internet Specialties offered broader services on a nationwide basis.
- MDE expanded its service footprint nationwide in 2002 and began offering DSL in 2004.
- In 2005, after a cease-and-desist letter, Internet Specialties sued under Lanham Act § 43(a), alleging that “ISPWest” was likely to cause confusion with “ISWest.”
- Trial evidence included similarity of the marks, overlapping services and marketing channels, and instances of actual consumer confusion.
- A jury found infringement; the district court denied monetary damages but entered a permanent injunction barring MDE’s continued use of “ISPWest.com” and related infringing uses.
- MDE appealed the likelihood-of-confusion instruction, the rejection of laches, and the breadth of the injunction; Internet Specialties cross-appealed the denial of damages.

## Issues

1. Whether the district court’s likelihood-of-confusion jury instruction misstated the Lanham Act standard and prejudiced the verdict.
2. Whether laches barred the infringement claim, particularly equitable relief, based on the period between Internet Specialties’ knowledge (1998) and suit (2005).
3. Whether the permanent injunction prohibiting further use of “ISPWest.com” was overbroad.

## Decision

- The Ninth Circuit affirmed the judgment and permanent injunction.
- The likelihood-of-confusion instruction, considered as a whole, adequately stated the governing standard and did not mislead the jury.
- Laches did not bar the claim or injunctive relief because the delay was not unreasonable in context and MDE did not show prejudice sufficient to outweigh the public interest in avoiding confusion.
- The injunction was not overbroad; prohibiting continued domain-name use was appropriate given the overlapping services, channels of trade, and forward-looking risk of confusion in internet-based commerce.

## Legal Principles

- Lanham Act § 43(a) liability turns on whether the challenged designation is likely to cause consumer confusion as to affiliation, connection, or source.
- Appellate review of jury instructions focuses on whether the charge, taken as a whole, fairly and adequately states the law; minor wording disputes do not warrant reversal absent prejudice.
- Laches requires (1) unreasonable delay and (2) prejudice; in trademark cases, even where delay exists, prospective injunctive relief may still be granted when ongoing consumer confusion and the public interest outweigh equitable concerns.
- Domain names can function as source identifiers; where a confusingly similar domain is used for closely related services in overlapping channels, an injunction may bar continued use rather than impose narrow, difficult-to-administer limitations.

## Conclusion

The Ninth Circuit upheld a jury’s finding that “ISPWest” infringed “ISWest” and affirmed a permanent injunction barring continued use of the infringing domain name, holding that the jury instructions were adequate, laches did not bar forward-looking relief, and broad injunctive relief was justified to prevent ongoing consumer confusion.


Internet Specialties W., Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985 (9th Cir. 2009)