UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF NEW HAMPSHIRE

PC Connection, Inc.

v. Civil No. 07-cv-054-SM

Crystal Courson, d/b/a/

pcconnectionusa and

PC Connection;

Shopster E-Commerce, Inc.

d/b/a/ Secure2U; and 

US Website Builder, LLC

REPORT AND RECOMMENDATION

Plaintiff PC Connection, Inc. (“PC Connection”) initiated

this action by moving for temporary and preliminary injunctive

relief against all three defendants. See Document no. 4. PC

Connection is a leading marketer and seller of computer products,

electronics, and related goods and services, and uses the

registered trademark “PC Connection,” and various derivatives

thereof, in its business operations. It asserts here that

defendants began using the phrase “PC Connection” to identify

themselves in the market as a seller of computers and related

products. Naturally PC Connection wants to protect its trademark

and has moved to stop defendants’ misappropriation of it. An

Case 1:07-cv-00054-SM Document 18 Filed 04/09/07 Page 1 of 15
1While the parties dispute whether Shopster actually does

business as Secure2U or whether Secure2U is a wholly-owned

subsidiary of Shopster, the corporate relationship between the

two does not affect the disposition of the preliminary injunction

motion. 

2Previously I recommended the requested injunctive relief be

granted against the other two defendants in this action, US

Website Builder, Inc. and Crystal Courson. See Document nos. 16

and 17.

2

evidentiary hearing was held on March 23, 2007, at which only

defendant Shopster E-Commerce, Inc., d/b/a Secure2U (“Shopster”)1

appeared. This Report and Recommendation addresses just the

defenses raised by Shopster in its pleadings and at the hearing.2

For the reasons set forth below, I recommend that the requested

injunctive relief be denied.

Discussion

1. Background

Defendant Crystal Courson, together with her husband (the

“Coursons”), began an “e-business” called “ecrater.com” to sell

computer equipment and related products in December 2006. The

Coursons needed an internet “store front” to assist them with

marketing their business, including both filling orders and

processing payment. Shopster offers this kind of service to

companies selling products on the internet, describing itself as

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an internet “shopping mall,” whereby a myriad of stores set up 

“store fronts” on its host site for a price and receive order

processing assistance in return. In other words, Shopster’s

business is not to sell the product, but to host businesses that

sell products and then to service the sale once made. 

On January 3, 2007, Crystal Courson responded to a 7-day

free trial agreement that Shopster offered. Pursuant to that

agreement, a “store front” at www.secure2U.com was set up for the 

Coursons’ business. At the end of the free trial period, the

agreement between Shopster and the Coursons was not extended. 

Instead, the Coursons contracted with defendant US Website, LLC

(“US Website”) to market their business. US Website helped the

Coursons develop a domain name and modified their web site to

incorporate the name “PC Connection.” The domain name selected

was “pcconnectionusa.com,” the web site prominently displayed “PC

Connection,” and its URL was www.pcconnection.secure2u.com. In

February 2007, as part of a regular trademark watch report, PC

Connection was informed of the use of these names. It promptly

notified all three defendants of their alleged infringement

through cease and desist letters. Although the Coursons told US

Website to remove any reference to “PC Connection” on the web

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3The Coursons have not appeared in this action; however, at

the evidentiary hearing, counsel for PC Connection proffered an

affidavit from them in which they agreed to the injunctive relief

sought. Accordingly, I previously recommended the requested

injunction against them be granted. See Document no. 17. 

4It also complained to the apparent registrar of the

challenged domain name, Godaddy, Inc., which is not a party to

this action and is not relevant to the disposition of this

motion.

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site and web addresses related to them, US Website did not comply

with that request.3

Shopster contends that until it received plaintiff’s cease

and desist letter on February 27, 2007, it was unaware of the

trademark “PC Connection,” or of the Coursons’ use of the domain

name pcconnectionusa.com. Shopster now asserts that immediately

upon learning of the trademark, it notified the Coursons to stop

using it. Although the Coursons and US Website had created the

URL www.pcconnection.secure2U.com, Shopster claims it had no

connection to, nor did it provide any services for, the Coursons

or pcconnectionusa.com. It also contends it was unaware that the

Secure2U logo, along with other Shopster copyrighted material,

was posted on the Coursons’ web page. After learning this

information, Shopster lodged its own complaint against US

Website,4 demanding US Website remove references to both Shopster

and Secure2U from its website.

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At the March 23 hearing, Shopster argued the injunction

against it should not issue, because it had stopped its

association with the Coursons in early January, after the initial

free trial period had expired and, therefore, could not have been

involved with the Coursons’ infringing use of the name PC

Connection. Based on representations asserted in Shopster’s

Verified Answer (document no. 11) and evidence proffered at the

hearing, however, the record is somewhat unclear about Secure2U’s

connection to pcconnectionusa.com, and to what extent the

relationship between the two names was authorized and by whom. 

On the one hand, Shopster seems to admit that it knew the

Coursons called their business “PC Connection” but did not know

that it was a registered trademark. Shopster indicated that its

subscribers choose the names for their webpages and are solely

responsible for ensuring the selected name does not violate any

intellectual property rights. See Document no. 11, ¶16. 

Apparently Shopster adds a subscriber’s selected name into the

www.secure2u.com URL, which then distinguishes that particular

“store front” from the many it is hosting. It represented that

the Coursons, not it, were responsible for determining whether

“PC Connection” could be used, and that it did not knowingly

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infringe plaintiff’s rights when it hosted the Coursons’ business

at www.pcconnection.secure2u.com. See id. Shopster states there

was no activity on the site during the free trial period and that

it suspended all service to the Coursons and the website after

January 17, 2007. 

On the other hand, Shopster points to US Website as the

source of the infringing conduct. It claims that the challenged

URL and domain name that incorporate pcconnectionusa were derived

from US Website, after the Coursons’ relationship with Shopster

had ended. See Document no. 11, ¶¶ 4 and 15. It asserts that it

“never provided services of any kind, at any time, to

pcconnectionusa.com – the website set up by Courson on January

31, 2001. . ..” Id. ¶16. At the hearing, counsel for Shopster

represented that Shopster not only was not involved in creating

the challenged domain name or URL, but also that it immediately

withdrew sponsorship of the website as soon as it was made aware

of the alleged infringement. It is that “sponsorship of the

website” that is the root of the confusion about what, if any,

Shopster’s continued involvement with pcconnectionusa.com was

after its agreement with Crystal Courson ended on January 17,

2007.

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Exhibits offered at the hearing provided conflicting

evidence of Shopster’s continued involvement with the Coursons’

marketing efforts. The Coursons identified their business with

the domain name www.pcconnectionusa.com, which does not reference

Shopster or Secure2U. See e.g. Pl.’s Exs. 15, 16 and 17. Yet,

in the six weeks that intervened between the termination of the

agreement between Shopster and Crystal Courson, and Shopster’s

receipt of plaintiff’s cease and desist letters, the Coursons

continued to use the URL www.pcconnection.secure2u.com. See

Pl.’s Ex. 18. The web page also described their business, “PC

Connection,” as a “Secure2U Preferred Partner.” See Pl.’s Ex.

19. If, in fact, Shopster had terminated its relationship with

the Coursons on January 17, 2007, there should have been no

relationship with Secure2U indicated on the Coursons’ web page. 

Whether or not that identified partnership was legitimate or

misrepresented was not resolved at the hearing, nor is it clear

from the current record. What is clear is that the continued use

of “Secure2U,” whether or not authorized, has linked Shopster to

the Coursons’ and US Website’s infringing use of the name “PC

Connection.” 

At the hearing, Shopster represented that any and all

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reference to “Secure2U” has been removed from the infringing web

sites, and that it has, in good faith, tried to prevent any

further infringing use of the name “PC Connection.” The evidence

showed that Shopster in fact already has stopped using the words

“PC Connection,” in any domain name, URL or web page associated

with it. Shopster provided a letter to the court dated February

27, 2007, in which it informed PC Connection’s counsel that it

had “disabled the Shopster supported store front located at

www.pcconnection.secure2u.com and [had] advised our customer of

the issue.” See Def.’s Ex. 1. Counsel for Shopster also told

the court that Shopster would agree to assign any right, title or

interest in the domain name pcconnectionusa.com it might have to

plaintiff. Finally, plaintiff’s counsel confirmed Shopster’s

representations by informing the court that since March 2, 2007,

there has been no ongoing harm with respect to Secure2U, because

Shopster had removed the pcconnectionusa.com web page from its

host site. 

2. Preliminary Injunction Standard

 Preliminary injunctive relief is available to protect the

movant from irreparable harm, so that party may obtain a

meaningful resolution of the dispute after full adjudication of

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the matter. Such a situation arises when some harm from the

challenged conduct could not be adequately redressed with

traditional legal or equitable remedies following a trial. See

Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12, 18

(1st Cir. 1996) (finding irreparable harm where legal remedies

are inadequate); see also Acierno v. New Castle County, 40 F.3d

645, 653 (3rd Cir. 1994)(explaining irreparable harm and its

effect on the contours of preliminary injunctive relief). The

purpose of preventing irreparable harm is to enable the court to

render a meaningful disposition on the underlying dispute. See

CMM Cable Rep. v. Ocean Coast Props., 48 F.3d 618, 620-21 (1st

Cir. 1995)(explaining the purpose of enjoining certain conduct as

being to “preserve the ‘status quo’ . . . to permit the court

more effectively to remedy discerned wrongs”). The court’s

focus, therefore, must always be on the underlying merits of the

case, and what needs to be done to ensure that the dispute can be

meaningfully resolved.

A preliminary injunction cannot issue unless the moving

party satisfies four factors which establish its need for such

relief. See Esso Standard Oil Co. v. Monroig-Zavas, 445 F.3d 13,

17-18 (1st Cir. 2006) (discussing the requisite showing to obtain

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a preliminary injunction); see also Ross-Simons of Warwick, Inc.,

102 F.3d at 18-19 (explaining the burden of proof for a

preliminary injunction). Those factors are: “(1) the likelihood

of success on the merits; (2) the potential for irreparable harm

[to the movant] if the injunction is denied; (3) the balance of

relevant impositions, i.e., the hardship to the nonmovant if

enjoined as contrasted with the hardship to the movant if no

injunction issues; and (4) the effect (if any) of the court’s

ruling on the public interest.” Esso Standard Oil Co., 445 F.3d

at 18. If the plaintiff is not able to show a likelihood of

success on the merits, the remaining factors “become matters of

idle curiosity,” id., insufficient to carry the weight of this

extraordinary relief on their own. See id. Yet, “the predicted

harm and the likelihood of success on the merits must be

juxtaposed and weighed in tandem.” Ross-Simons of Warwick, Inc.,

102 F.3d at 19. 

3. Analysis

At this very preliminary stage of review, based on the

evidence before the court, I find that PC Connection has failed

to meet its burden of proof to justify the relief sought. Most

persuasive, and nearly dispositive of the matter standing alone,

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5The procedural record here provides further assurance that

the alleged infringement will not continue. In two prior Report

and Recommendations, I recommended that the requested injunctive

relief be granted with respect to the Coursons, who had agreed to

discontinue their infringing use of the name, and US Website. 

See Document nos. 16 and 17.

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is the undisputed fact that Shopster has discontinued using the

words “PC Connection” in any manner associated with it, or its

internet counterpart, Secure2U. See e.g. Gucci America Inc. v.

Daffy’s Inc., 354 F.3d 228, 230-31 (3rd Cir. 2003) (discussing

district court’s decision to deny preliminary injunction where

defendant removed counterfeit product from store after receiving

demand letter).5 Based on plaintiff’s own representation to the

court, as of March 2 the challenged infringement by Shopster has

stopped. Under such circumstances, the requested temporary and

preliminary injunctive relief has become moot. See Polo

Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir.

1986) (ending of unlawful conduct can moot the dispute); see also

5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 30:50 (4th ed. 2007) (explaining the preliminary

injunctive goal of preserving the status quo means “the situation

prior to the time the junior user began use of its contested

mark: the last peaceable, noncontested status”).

PC Connection also has not demonstrated the likelihood of

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success on the merits of its trademark infringement or

cyberpiracy claims. A critical element of both claims is

defendant’s use of the trademark. See Star Fin. Servs. v. AASTAR

Mortgage Corp., 89 F.3d 5, 9 (1st Cir. 1996) (listing elements of

a trademark infringement claim); see also DaVinci Tech. Corp. v.

Rubino, No. Civ. 05-1561, 2005 WL 1249462, at *7 (D.N.J. May 25,

2005) (citing 15 U.S.C. § 1125(d) for elements of a cyberpiracy

claim). Both claims also factor in defendant’s intent when the

infringing use occurred. See id. (requiring defendant to have

intended to profit from plaintiff’s mark in bad faith); see also

Star Fin. Servs., 89 F.3d at 11 (explaining how defendant must

intend to confuse regardless of whether in good or bad faith);

see also Int’l Ass’n of Machs. v. Winship Green Nursing Ctr., 103

F.3d 196, 201 (1st Cir. 1996) (listing factors which contribute

to the intended confusion). The evidence before the court does

not clearly establish what the relationship between Shopster and

Secure2U is for purposes of (i) determining whether they are one

entity or two distinct legal entities, and (ii) attributing

Secure2U’s affiliation with the Coursons and their continued

infringing use of the trademark to Shopster. The record was

similarly confusing about whether the Coursons’ use of the URL

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www.pcconnectionusa.secure2u.com was unauthorized or the result

of some continuing business relationship with Shopster after the

January 17, 2007 termination of the free trial agreement. PC

Connection simply did not show that Shopster intended to use the

infringing domain name or URL. While discovery should explain

the relationship between the parties and should reveal who

intended to exploit the “PC Connection” trademark, the current

record provides no such clarity. Under such circumstances, a

preliminary injunction is not warranted. See e.g. 5 McCarthy,

supra, § 30:45 (even under the lenient standard afforded

trademark cases, serious factual disputes that could only be

determined after a full trial preclude preliminary injunctive

relief). 

The likelihood of confusion to the public and resulting

damage to plaintiff’s business reputation caused by defendant’s

infringing use of plaintiff’s trademark can support a finding of

irreparable harm in trademark infringement cases. See id. §

30:46. Here, however, because the allegedly infringing conduct

has stopped, the irreparable harm that PC Connection might suffer

pending final adjudication of this dispute has been eliminated. 

While the harm PC Connection may have suffered from Shopster’s

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unauthorized, infringing use of its trademark is fairly deemed

irreparable, the remedy is to stop the conduct, as the damages

are difficult to quantify following a full trial on the merits. 

By PC Connection’s own admission, the offending conduct has

stopped; accordingly, it has not shown irreparable harm under the

current circumstances.

Although the record persuades me that preliminary injunctive

relief need not be ordered at this time, that conclusion has no

bearing on plaintiff’s likelihood of ultimately obtaining a

permanent injunction against Shopster in this matter. It is well

settled that an injunction is the usual remedy once trademark

infringement has been found. See id., § 30:1 (quoting The Lanham

Act which codifies that remedy); see also Polo Fashions, Inc.,

793 F.2d at 1135-36 (ordering permanent injunction to protect

trademark holder from future infringement); cf. Gucci America,

354 F.3d at 238-39 (affirming denial of permanent injunction

where facts demonstrated defendant did not intend to exploit

plaintiff’s mark or confuse the public and had stopped all

infringing conduct immediately upon being informed of the

problem). If plaintiff can prove trademark infringement,

irreparable harm necessarily follows, and both the equities and

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the public interest would favor enjoining Shopster to eliminate

any risk of further infringement in the future. That conclusion,

however, cannot be made on the current record before the court.

Conclusion

For the reasons set forth above, I recommend that

plaintiff’s Motion for Temporary and Preliminary Injunctive

Relief (document no. 4) be denied with respect to defendant

Shopster. Any objections to this report and recommendation must

be filed within ten (10) days of receipt of this notice. Failure

to file objections within the specified time waives the right to

appeal the district court’s order. See Unauthorized Practice of

Law Comm. v. Gordon, 979 F.2d 11, 13-14 (1st Cir. 1992);

United States v. Valencia-Copete, 792 F.2d 4, 6 (1st Cir. 1986). 

_________________________________

James R. Muirhead

United States Magistrate Judge

Date: April 9, 2007

cc: George T. Campbell, III, Esq.

 Steven E. Grill, Esq.

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