EVISA mark dilutes VISA, rules court

In Visa International Service Association v JSL Corporation, the US District Court of Nevada has granted a permanent injunction to Visa International preventing JSL from using or registering the trademark EVISA and from using the domain name 'evisa.com'. The court held that JSL's use of the mark and domain name was in contravention of the US Federal Trademark Dilution Act (FTDA).

Visa International owns rights in the famous trademark VISA in relation to credit card, financial and other services. It filed an action against JSL claiming that JSL's use of its EVISA mark and 'evisa.com' domain name had caused "dilution by blurring" of its VISA mark. It stated that the use had (i) reduced the capacity of its famous mark to identify and distinguish goods or services; and (ii) whittled away the selling power and value of the trademark. Visa International also alleged that JSL was guilty of cybersquatting.

JSL was using the mark EVISA and the disputed domain name to market its Eikaiwa Visa English language school located in Japan. Prior to the filing of the lawsuit, JSL stated on its website that it provided e-commerce, website development and payment services, including online credit card processing. Both parties sought summary judgment at the district court proceedings.

The court held that Visa International had satisfied the necessary criteria to demonstrate that JSL had violated the FTDA by showing that:

• the VISA mark is famous;
  
  
• JSL was using the EVISA mark commercially;
  
  
• JSL's use began after Visa International's mark became famous; and
  
  
• JSL's use created a likelihood of dilution of the distinctive value of the VISA mark.

The court also reasoned that 'e' is a commonly used prefix to denote the online version of a business and 'evisa.com' diluted Visa International's ability to identify and distinguish its goods and services by presenting a serious impediment to customers trying to locate Visa International's website. The court therefore granted a permanent injunction preventing JSL from using EVISA and 'evisa.com'. However, it denied both parties' motions for summary judgment on the cybersquatting claim.

JSL has appealed the injunction decision.

Howard J Shire and Christian A Sado, Kenyon & Kenyon, New York