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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Lamparello v. Falwell

360 F. Supp. 2d 768 (E.D. Va., August 5, 2004)

Court holds plaintiff infringed defendants' trademarks, and violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his operation of a 'typo' web site at the domain Fallwell.com at which he criticized the Rev. Falwell's views on homosexuality, and expressed his own contrary views on that subject.  At one time, the site informed interested visitors of a book plaintiff considered relevant to this discussion, and provided a link to Amazon.com at which they could purchase it.  No other goods or services were offered for sale on the site.  The Court reached this result notwithstanding the fact that plaintiff's site featured a prominent disclaimer, advising users that it was not defendants' official site.

Defendant Jerry Falwell ("Falwell") owns the federally registered trademark "Listen America with Jerry Falwell," while defendant Falwell and/or defendant Jerry Falwell Ministries own common law trademarks in the marks Jerry Falwell, Falwell, and Falwell.com.  Defendant Falwell is a well-known Reverend, who's views are often described as conservative.  Defendants operate a website at the domain Falwell.com

Plaintiff operates a website at the domain Fallwell.com, at which he criticizes defendant Falwell's views on homosexuality, and posts his own views and opinions, as well as those of others, on the subject.  The site contains a prominent disclaimer, which both alerts visitors that it is not affiliated with the defendants, and provides them with a link to defendants' site.  At one time, plaintiff's site also recommended to its visitors a book plaintiff found particularly relevant to the subject he was discussing, and provided a link to Amazon.com at which the book could be purchased.  There is no mention in the court's decision that plaintiff personally profited in any way from any sales of this book his site generated, either through an Amazon affiliate program or otherwise.  This link was subsequently removed.  No other goods or services were offered for sale on the site.

Plaintiff commenced this suit seeking a declaratory judgment that his conduct, inter alia, neither infringed nor diluted defendants' marks.  Defendants counterclaimed, asserting claims of trademark infringement, false designation of origin, unfair competition and cybersquatting under the Lanham Act, as well as unfair competition under Virginia common law.  The Court  found that plaintiff's conduct ran afoul of both the Lanham Act and Virginia common law, and awarded defendants summary judgment. 

To prove a claim for trademark infringement under the Lanham Act, a mark holder has the burden of establishing "(1) that it possesses a mark; (2) that [defendant] used the mark; (3) that the [defendant's] use of the mark occurred 'in commerce'; (4) that the [defendant] used the mark 'in connection with the sale, offering for sale, distribution, or advertising' of goods and services and (5) that [defendant] used the mark in a manner likely to confuse consumers."

The Court held that the first two elements of this showing were satisfied by plaintiff's use of "Fallwell, " a misspelling of defendant's name, in his Fallwell.com domain, which, by virtue of being 'a colorable imitation' of defendants' 'Listen America With Jerry Falwell" mark, constituted the requisite use of defendant's mark.

The Court further held that this use occurred 'in commerce' solely because plaintiff used the mark in the domain name of an Internet website.  Importantly, defendants did not have to show that plaintiff was making money from his site to show his use of the mark was in commerce.  Said the Court:

The nature of the Internet is such that [plaintiff's] website is available 'in commerce' throughout the United States and around the world; this element is satisfied.

This use was 'in connection with the sale, offering for sale, distribution or advertising of goods or services' because defendant's mark was used to distribute plaintiff's ideas, which use the Court held constituted a 'service' as that term is used in the Lanham Act.  The Court further held that this element was met by the link plaintiff had at one time maintained on his site to a website at which a book relevant to the debate he was engaging in could be purchased.  Said the Court:

The evidence shows and [plaintiff] does not deny, that he has in the past used www.Fallwell.com to provide a hyperlink to www.amazon.com for the sale of a book.  Additionally, [plaintiff's] activities are clearly "services" within the meaning of the Lanham Act.  Although the majority of [plaintiff's] activities are not undertaken for profit, he has unquestionably rendered a service, i.e. the provision of information and viewpoints critical of the [defendants].  Were activities such as the [plaintiff's] not considered services these Lanham Act protections would essentially be rendered toothless; anyone would be entirely free to distribute publicity statements, endorsements, and position papers in the name of the [defendants] so long as they did not profit from such activities.

Finally, the Court held the requisite likelihood of consumer confusion was present.  In reaching this result, the Court relied on evidence of actual consumer confusion - "individuals have specifically confused the [defendant's] website with a website run by the [plaintiff]" - as well the facts that plaintiff's domain name "is namely identical to the substantive portion of the trademark and the names of the [defendants]," and both parties use the same marketing channel - the Internet - to disseminate their ideas.  Said the Court:

[Plaintiff's] domain name is nearly identical to the substantive portion of the trademark and the names of the [defendants], it is likely that Internet users will conclude that the mark, the names of the [defendants], and the domain name used by the [plaintiff] share a common affiliation or sponsorship.  [Plaintiff] has also employed internet "meta-tags" to facilitate this exact type of confusion.

Notably, the court determined that consumers were likely to be confused, and believe plaintiff's site was affiliated with defendants, notwithstanding the prominent disclaimer on plaintiff's site to the contrary and the site's criticism of Rev. Falwell and his views.

As a result, the Court granted defendants' motion for summary judgment, finding that plaintiff had infringed defendants' mark in violation of the Lanham Act. 

For the same reasons, the Court found that plaintiff had violated the Lanham Act's prohibitions on False Designation of Origin (Section 43), as well as the prohibitions in Virginia's common law on unfair competition ("the test for trademark infringement and unfair competition under the Lanham Act is essentially the same as for the common law unfair competition under Virginia law …") and accordingly granted defendants' motion for summary judgment on those claims as well.

The Court also granted defendants summary judgment on their Anticybersquatting claim.  To prevail on an ACPA claim, defendant must show that plaintiff, with 'a bad faith intent to profit' from defendants' mark, registered or used a domain name either identical or confusingly similar (or as to famous marks dilutive) of defendants' distinctive or famous mark.

The Court held plaintiff acted with the requisite bad faith because his central goal was to divert consumers from defendants' site and provide them with commentary and criticism of defendants' beliefs and actions, and thereby to tarnish defendants' marks.  This, the Court held, was not a fair use of defendants' mark.  Said the Court:

The [plaintiff] did not possess any intellectual property rights in the name Fallwell or Fallwell.com when he registered the domain name.  His legal name is not the same as the domain name at issue.  He had not engaged in use of the domain name in connection with the bona fide offering of any goods or services prior to the actual registration of the domain name Fallwell.com  His website was commercial; he used www.Fallwell.com to sell a book via a hyperlink to amamzon.com.  He did not make fair use of the mark.  He intended to divert consumers from the [defendants'] website to www.fallwell.com so that he could harm the goodwill with the direct intent to tarnish or disparage the [defendants'] marks.  In fact, it appears that this is the only goal of the [plaintiff's] website.  Furthermore, he improperly registered an unknown entity known as "Lamparello International" when he first registered the domain name.  [Plaintiff's] activities clearly evidence a bad faith intent.  It is clear that he specifically intended to divert individuals from the [defendants'] own websites in an effort to provide those diverted individuals with commentary and criticism of [defendants'] beliefs and actions.  For such reasons, it is clear that the [plaintiff] did have a bad faith intent to profit.  It is also clear that he did not believe, and did not have a reasonable reason to believe, that the use of www.fallwell.com was a fair use or otherwise lawful.

As result of its determinations, the Court issued a permanent injunction, enjoining plaintiff from further using the Fallwell.com domain name, and directing its transfer to defendants.  The Court refused, however, to award defendants statutory damages or attorneys fees because "financial profit was a minor motive in the use of the website at issue.  The primary motive was to put forth opinions or issues that were contrary to those of the [defendant]."

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