ORDERED that this motion (#

001) by the plaintiffs for an order enjoining the defendant, The Queens Spy Shop, from using the trade name "Spytown" in any business context including internet listings and yellow and white page listings, among other things, is considered under CPLR 6311 and is granted, conditionally, to the limited extent set forth below; and it is further [*2]

ORDERED that a preliminary conference shall be held on November 9, 2010, at 9:30 a.m., in Part 33 at the courthouse located at 1 Court Street - Annex, Riverhead, New York.

Plaintiff, Royal Facilities, Inc., is a New York corporation engaged in the business of selling and re-selling security cameras and other security devices . Plaintiff, Royal Facilities, Inc. a/k/a Royal Systems, is the owner of the registered trademark name "Spytown". Plaintiff, Spytown.com, Inc., is affiliated with Royal Facilities. It conducts internet sales of the inventory of Royal Facilities, Inc. and it is authorized by Royal Facilities to operate under the name "Spytown.com".

By the complaint served and filed herein, the plaintiffs charge the defendant, The Queens Spy Shop, a corporation engaged in a business similar to that of the plaintiffs, with unfair competition and the improper and unauthorized use of the registered trade name "Spytown" for advertising and general business purposes. The plaintiffs further charge the defendant with the unauthorized use of the name of plaintiff, Howard Geschwind, a key employee of the corporate plaintiffs. By the instant motion, the plaintiffs seek preliminary injunctive relief restraining the defendant from employing, using or otherwise associating itself with the registered trade name "Spytown" and with using the name of plaintiff, Howard Geschwind. For the reasons below, the motion is, granted, conditionally to the extent set forth below.

General Business Law § 133 prohibits an individual, firm or corporation from using a name "with intent to deceive and mislead the public". To state a cause of action under this statute sounding in either unfair competition or trademark infringement, the plaintiff must show that the public is likely to confuse the defendant's name with that of the plaintiff (see Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, 399 NYS2d 628 [1977]; Gasoline Heaven at Commack, Inc. v Nesconsett Gas Heaven, Inc., 191 Misc 2d 646, 743 NY S2d 825 [Sup. Ct. Suffolk County, 2002]).

Provisional injunctive relief is not usually available when the harm claimed is economic (see DeFabio v Omnipoint Communications, Inc., 66 AD3d 635, 887 NYS2d 168 [2d Dept 2009]). However, such relief is expressly available to a plaintiff advancing claims under General Business Law § 133. It provides that "no person, firm or corporation shall, with intent to deceive or mislead the public, assume, adopt or use as, or as part of, a corporate, assumed or trade name, for advertising purposes or for the purposes of trade, or for any other purpose, any name, designation or style, or any symbol or simulation thereof, or a part of any name, designation or style, or any symbol or simulation thereof, which may deceive or mislead the public as to the identity of such person, firm or corporation. * * * Whenever there shall be an actual or threatened violation of this section, an application may be made to a court or justice having jurisdiction to issue an injunction... without requiring proof that any person has in fact been deceived or misled thereby" (GBL § 133; see Fifteenth Ave. Food Corp. v Sibstar Bread [*3]Inc., 16 Misc 3d 1102(A), 841 NYS2d 826 [Sup. Ct. Kings County, 2007]).^[FN1]

To succeed in obtaining preliminary injunctive relief in actions sounding in unfair competition and/or trademark infringement, the plaintiff must show: 1) either likelihood of success on the merits or sufficiently serious questions as to the merits to make them a fair ground for litigation; 2) irreparable harm; and 3) that a balance of equities tips in favor of the moving party (see Blaich Assoc. v Coach/Blaich Real Estate of Manhasset, 186 Misc 2d 594, 719 NYS2d 820 [2000], quoting Jackson Dairy v Hood & Sons, 596 F2d 70, 72 [2d Cir 1979]). Irreparable harm is established by a showing that the plaintiff will lose control over the reputation of its trade name pending trial (see Fifteenth Ave. Food Corp. v Sibstar Bread Inc., 16 Misc 3d 1102(A), supra ; McDonald's Corp. v Kristina Denise Enters., 1999 US App LEXIS 20946, 1999 WL 709980, reported without opn 189 F3d 461 [2d Cir 1999]; Power Test Petroleum Distribs. v Calcu Gas, 754 F2d 91, 95 [2d Cir 1985]). The plaintiff will thus be entitled to an injunction if it demonstrates that the defendant's use of the plaintiff's trade name is likely to cause confusion, mistake, or deception without any showing of actual confusion (see Allied Maintenance Corp. v Allied Mech. Trades, 42 NY2d 538, , supra ). That the defendant is using his own name or any part of it or that the parties are not in direct, actual competition due to slight differences in its line of business is not a defense nor a ground for denying preliminary injunctive relief (see Frank's Rest. v Lauramar Enter., 273 AD2d 349, 711 NYS2d 433 [2000]).

Here, plaintiffs have established that the defendant's use of the registered trade name "Spytown" is likely to cause confusion by consumers who are attempting to locate the corporate plaintiffs under internet search engines and print directories, such as "Google", the "Yellow Pages" and "White Pages". The plaintiffs further demonstrated that the corporate plaintiffs will likely lose control over the reputation of their registered trade name pending a trial or other resolution of this action by reason of the defendant's conduct. These findings are evident from the copies of relevant pages of these directories that are attached to the plaintiff's moving papers in which the defendant is listed under the trade name "Spytown" as if it were an affiliate, associate or branch location of the corporate plaintiffs' businesses. The defendant's claims that it did not employ the name Spytown in its advertising and it has no control over the use of the name Spytown by the internet search engine and print directories about which the plaintiffs complain, are unsubstantiated. Upon the record adduced on this motion, the corporate plaintiffs have sufficiently established the requisite likelihood of success on the merits of their claims to [*4]recover damages by reason of the defendant's engagement in conduct that constitutes unfair competition and/or trademark infringement and that the harm to the plaintiffs if no injunction were granted would be more burdensome than any harm which would might inure to the defendant under the provisional restraint imposed.

The court finds, however, that the plaintiff, Howard Geschwind, failed to sufficiently establish that the defendant is wrongfully using his name and that any such use constitutes a violation of the New York Civil Right Law.

In view of the foregoing, the instant motion by the plaintiffs for preliminary injunctive relief is granted, conditionally, to the following extent: pending further order of this court, the defendant is hereby restrained from using, and employing the trade name "SPYTOWN", Spytown or "Spytown.com" in any fashion in connection with the defendant's own business and retail outlets. The defendant is further enjoined from representing to any business supplier or associate or to any customer that the defendant is associated or affiliated in any way with the plaintiffs or the names, "SPYTOWN", Spytown or "Spytown.com". This provisional restraint and the provisional, mandatory injunctive relief set forth below is conditioned upon the plaintiffs' filing, within 30 days of the date of this order, an undertaking with the Clerk in the amount of $10,000.00 in the form required by CPLR Article 25. Within 10 days after service of a copy of this order, together with due proof of the posting of the plaintiffs' undertaking, upon defendant's counsel, the defendant shall advise all publications, print and/or internet alike, which now list the defendant's business under the name SPYTOWN, Spytown or Spytown.com. to remove, unlist and/or discontinue the defendant's business and retail outlets under such listing in all such publications.

DATED: ___________________________________________

THOMAS F. WHELAN, J.S.C.