Scholastic, Inc. v. Escolastica.Com , 100 F. App'x 152 ( 2004 )

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
SCHOLASTIC, INCORPORATED, 
Plaintiff-Appellant,
v.  No. 03-2310
ESCOLASTICA.COM; ESCOLASTICA.NET,
Defendants-Appellees.

Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Claude M. Hilton, Chief District Judge.
(CA-03-199-A)
Argued: May 5, 2004
Decided: June 7, 2004
Before WILKINSON and WILLIAMS, Circuit Judges,
and Bobby R. BALDOCK, Senior Circuit Judge of the
United States Court of Appeals for the Tenth Circuit,
sitting by designation.
Affirmed by unpublished per curiam opinion.
COUNSEL
ARGUED: Ronald Marc Daignault, JONES DAY, New York, New
York, for Appellant. Samuel Rosenthal, CURTIS, MALLET-
PREVOST, COLT & MOSLE, Washington, D.C., for Appellees. ON
BRIEF: Jennifer A. Hamilton, JONES DAY, New York, New York;
Gregory M. Poehler, PENNIE & EDMONDS, L.L.P., New York,
New York, for Appellant.
2 SCHOLASTIC, INC. v. ESCOLASTICA.COM
Unpublished opinions are not binding precedent in this circuit. See
Local Rule 36(c).
OPINION
PER CURIAM:
In this trademark infringement case we must decide whether the
domain names "Escolastica.com" and "Escolastica.net" are likely to
be confused with the famous trademark "Scholastic." We agree with
the district court that they are not.
I.
Corporacion Mexico Escolastica, S.A. de C.V. (Escolastica) is a
Mexican corporation that owns the rights to the internet domain
names "Escolastica.com" and "Escolastica.net." (Domain Names).
Escolastica sells an internet-based computer application to private
schools in Mexico. Essentially, Escolastica creates private, password-
restricted web pages for schools, allowing teachers and students to
communicate when they are not on school grounds. For example,
teachers can post homework assignments or test results on their
school’s website, and students or parents can access that information
from their home computer using a password. Scholastic, Inc., a lead-
ing seller of educational materials in the United States and worldwide,
offers, in addition to its other product lines, a service similar to
Escolastica’s on its web site "Scholastic.com."
Scholastic filed suit against the Domain Names in an in rem pro-
ceeding, alleging that the Domain Names violate Scholastic’s regis-
tered trademark, "Scholastic," in violation of 15 U.S.C.A. §§ 1114(West 1997) (trademark infringement), 1125(a) (false designation of
origin), 1125(c) (trademark dilution), and 1125(d) (cyberpiracy)
(West 1998 & Supp. 2004). (J.A. at 12, 25-26.) The parties moved for
summary judgment. Because the case was an in rem proceeding, it
was scheduled for a bench trial. During argument on the motions for
summary judgment, the parties agreed that there was no dispute as to
the underlying facts, only as to the inferences to be drawn from those
SCHOLASTIC, INC. v. ESCOLASTICA.COM 3
facts, and agreed that case was ripe for final disposition by the district
court. The district court granted summary judgment in favor of
Escolastica, concluding that consumers were unlikely to be confused
by the Domain Names. Scholastic now appeals.
II.
A.
We review the grant of summary judgment de novo. Canal Ins. Co.
v. Distrib. Servs., Inc., 320 F.3d 488, 491 (4th Cir. 2003). Summary
judgment is appropriate when "the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if
any, show that there is no genuine issue as to any material fact and
that the moving party is entitled to a judgment as a matter of law."
Fed. R. Civ. P. 56(c); see Canal Ins. Co., 320 F.3d at 491-92. Here,
a factual determination as to the likelihood of confusion underlay the
district court’s grant of summary judgment to Escolastica. The district
court was within its summary judgment authority to make this deter-
mination because "the parties, having prepared for a bench trial,
agreed to submit the voluminous record to the court for dispositive
decision at the time of the summary judgment motions," and because
"the parties did not contradict one another’s proffered facts, but only
disputed the inferences that a fact finder would draw from those
underlying facts." Int’l Bancorp, LLC v. Societe des Bains de Mer,
329 F.3d 359, 362-63 (4th Cir. 2003), cert. denied, 124 S. Ct. 1052(2004). Accordingly, we review the district court’s "legal determina-
tions de novo" and "its findings of fact for clear error." Id.B.
A plaintiff alleging causes of action for trademark
infringement and unfair competition must prove (1) that it
possesses a mark; (2) that the defendant used the mark; (3)
that the defendant’s use of the mark occurred "in com-
merce"; (4) that the defendant used the mark "in connection
with the sale, offering for sale, distribution, or advertising"
of goods or services; and (5) that the defendant used the
mark in a manner likely to confuse consumers.
4 SCHOLASTIC, INC. v. ESCOLASTICA.COM
People for the Ethical Treatment of Animals v. Doughney, 263 F.3d
359, 364 (4th Cir. 2001) (hereinafter PETA). In the instant case, the
district court concluded that Scholastic failed to produce any evidence
to satisfy the final element.
"The unauthorized use of a trademark infringes the trademark hold-
er’s rights [only] if it is likely to confuse an ‘ordinary consumer’ as
to the source or sponsorship of the goods." PETA, 23 F.3d at 366. To
determine whether a particular use of a trademark is likely to confuse
an ordinary consumer, we consider the following factors:
a) the strength or distinctiveness of the mark;
b) the similarity of the two marks;
c) the similarity of the goods/services the marks identify;
d) the similarity of the facilities the two parties use in their
businesses;
e) the similarity of the advertising used by the two parties;
f) the defendant’s intent;
g) actual confusion.
Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984).
We apply these factors with the caution that "[n]ot all . . . are always
relevant or equally emphasized in each case." Id. (quoting Modular
Cinemas of Am., Inc. v. Mini Cinemas Corp., 348 F.Supp. 578, 582
(S.D.N.Y. 1972)). For example, "[w]here there is no evidence of
actual confusion and a [fact-finder] reasonably concludes that there is
no likelihood of confusion because of the differences between the
marks, consideration of the remaining Pizzeria Uno factors is unnec-
essary." Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316 (4th
Cir. 1992).
In this case, Scholastic has submitted no proof of actual confusion,
and the district court concluded that the differences between the word
SCHOLASTIC, INC. v. ESCOLASTICA.COM 5
"escolastica" and the word "scholastic" made confusion unlikely. The
district court also noted the substantial differences between the web-
sites operated by the two companies. Most notably, except for a few
informational pages, Escolastica’s websites are inaccessible without
a password and all of the text on the sites is in Spanish. In contrast,
the majority of the text on Scholastic’s website is in English, and
most of the site is accessible without a password. Given the lack of
evidence of actual confusion and the patent differences among the
Domain Names, the content of the websites, and Scholastic’s trade-
mark, the district court’s conclusion that an ordinary consumer was
unlikely to be confused was not clearly erroneous. We agree with the
district court that no ordinary consumer is likely to stumble upon
Escolastica’s websites while searching for Scholastic.com or, even if
they happen to do so, to believe that they have accessed a website
affiliated with Scholastic.
III.
For the foregoing reasons, we affirm the district court’s grant of
summary judgment in favor of Escolastica.
AFFIRMED