Designer Skin LLC v. S & L Vitamins, Inc., et al.
The Toronto-Dominion Bank v. Boris Karpachev
188 F. Supp. 2d 110 (D. Mass., Mar. 6, 2002)
Court holds that defendant violated the Anticybersquatting Consumer Protection Act by registering sixteen domain names containing misspellings of plaintiff’s trademark, at which domains defendant operated web sites that voiced his complaints about plaintiff’s business practices. Defendant did not offer any goods or services for sale at these web sites, and there is no mention in the record of any attempts by defendant to try and sell the domain names to the plaintiff.
Plaintiff Toronto-Dominion Bank uses the TD Waterhouse name, as well as the mark “tdwaterhouse.com,” in connection with the operation of an on-line brokerage service. Defendant Boris Karpachev was a customer of TD Waterhouse, who had a dispute with that concern arising out of certain security transactions.
As a result of this dispute, defendant registered sixteen domain names composed of variant misspellings of the name tdwaterhouse.com. Defendant operates web sites at these domain names at which, according to the court, he “excoriates TD Waterhouse for ‘webfascism’ and the Toronto-Dominion Bank for its involvement in ‘white collar crime.’ Karpachev compares the plaintiffs’ business methods to what ‘Nazi or Soviet Totalitarists did to their victims.’”
Plaintiffs commenced an action against defendant, charging him, inter alia, both with violating the Anticybersquatting Consumer Protection Act (“ACPA”), as well as with trademark infringement.
The court granted plaintiff’s motion for summary judgment on its ACPA claim. According to the court, “to establish liability for trademark infringement and unfair competition under the ACPA, Toronto-Dominion Bank must establish (1) that TD Waterhouse.com was a preexisting “distinctive or famous” mark; (2) that Karpachev’s domain names are “identical or confusingly similar” to those of Toronto-Dominion Bank; and (3) that Karpachev registered the domain names in bad faith.” It was undisputed both that plaintiff’s mark was distinctive, and that Karpachev registered confusingly similar domain names.
The court further found that he had done so in bad faith. The principal factor relied upon by the court in reaching this conclusion appeared to be its determination that “confusion was Karpachev’s sole purpose in selecting the domain names.” Importantly, the court made no finding that Karpachev had attempted to sell the domain names to plaintiff, and found further that “Karpachev’s use of the names is not in connection with the offering of goods or services …”. The court also determined, despite the fact that the content of the site seemed to constitute complaints about plaintiff’s business practices, that Karpachev’s use of the domain names was not a “fair use.” Finding bad faith, the court accordingly directed defendant to forfeit his interest in the domain names at issue. The court declined to rule on plaintiff’s trademark infringement claims, holding the same moot in light of its ruling on the ACPA claim.
It should be noted that defendant in this litigation proceeded pro se. It should further be noted that this decision appears to conflict with the court’s holding in Northland Insurance Companies v. Blaylock, Civ. No. 00-308 (D. Minn, September 25, 2000), where the court denied plaintiff’s motion for a preliminary injunction enjoining defendant from operating a consumer complaint site about plaintiff Northland Insurance at the domain www.northlandinsurance.com. As with Karpachev, defendant was not selling any products at its complaint site, and had not “expressly offered to sell the domain site to the plaintiff.” In Northland, the court held that it could not, at that stage of the proceeding, determine that plaintiff was likely to prevail on its ACPA claim, because it could not determine that defendant had a bad faith intent to profit from the use of the domain name at issue. The court’s decision also seems contrary to that reached by the court in Marianne Bihari and Bihari Interiors, Inc. v. Craig Ross and Yolanda Truglio, 2000 U.S. Dist. Lexis 14180 (S.D.N.Y., September 28, 2000).