Chubb INA Holdings Inc. v. Hole In Won LLC

Background

Chubb INA Holdings Inc. sued Hole In Won LLC under the Lanham Act and New York law. Chubb alleged that it owned federally registered CHUBB trademarks and had used them continuously and exclusively since 1969 to identify products in the insurance and reinsurance markets. Chubb alleged that Hole In Won used the CHUBB marks on its website in connection with insurance and insurance-related services, including on at least 438 webpages and in phrases such as “CHUBB Hole in One Insurance.”

Chubb’s counsel sent repeated requests that Hole In Won remove the marks. According to the complaint, Hole In Won initially denied that the marks appeared on its website, later agreed to remove them, and then failed to do so. The court also reviewed the website and noted that at least one webpage referring to “CHUBB” remained live.

Hole In Won was served but did not answer or otherwise appear. A certificate of default was entered, and Chubb moved for default judgment under Federal Rule of Civil Procedure 55(b).

Claims and analysis

For a default judgment, the court accepted the complaint’s well-pleaded factual allegations as true but still determined whether those facts established legal liability. The court held that Chubb’s allegations established the elements of federal trademark infringement and false designation of origin: Chubb owned protected marks, Hole In Won used them without consent in connection with services sold in commerce, and the use was likely to confuse consumers. Default judgment was granted on both Lanham Act claims.

The court also granted default judgment on Chubb’s New York statutory and common-law claims. It held that Chubb had stated a trademark-dilution claim because it possessed a distinctive mark and alleged a likelihood of dilution. For the deceptive-acts claim under New York General Business Law § 349, the court found that the alleged conduct was consumer-oriented and materially misleading, caused injury to Chubb, and created a specific and substantial injury to the public because consumers could falsely believe they were obtaining Chubb-affiliated insurance coverage. The court further held that the elements of common-law trademark infringement and unfair competition were established; for unfair competition, repeated notice of the unauthorized use supported a finding of bad faith.

Relief and disposition

The court treated the infringement as willful because of Hole In Won’s default and awarded $1,000,000 in statutory damages under the Lanham Act. The court also granted a permanent injunction, finding that Chubb had succeeded on the merits, faced likely irreparable injury to its trademarks, reputation, and goodwill, lacked an adequate monetary remedy for those injuries, and was favored by the balance of hardships and the public interest.

The injunction permanently bars Hole In Won and specified related persons and entities from infringing the CHUBB marks, passing off Hole In Won’s services as Chubb’s, using confusingly similar marks, and competing unfairly. It also requires removal of the CHUBB marks and confusingly similar marks from Hole In Won’s websites, social-media accounts, electronic communications, promotional materials, advertisements, signage, packaging, and other materials, as well as recall and destruction of covered advertising and other materials.

Judge J. Paul Oetken granted Chubb’s motion for default judgment, awarded $1,000,000 in statutory damages, entered the permanent injunction, and directed the Clerk of Court to enter judgment and close the case.