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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...

Coca-Cola Company, et al. v. William S. Purdy Sr., et al.

382 F.3d 774 (8th Cir., September 1, 2004)

Affirming the District Court, the Eighth Circuit holds that plaintiffs are likely to prevail on Anticybersquatting Consumer Protection Act ("ACPA") claims arising out of defendant's registration of numerous domain names incorporating plaintiffs' trademarks, which domains defendant linked to a website advocating a ban on abortions.  This anti-abortion website also contained links to other sites which solicited funds, via the sale of goods or donations, to aid anti-abortion causes.  In reaching this result, the Eighth Circuit rejected defendant's claim that his use of plaintiffs' trademarks in this fashion was protected by the First Amendment. 

Plaintiffs own a number of well-known marks, including the Washington Post, Pepsi, Coca-Cola and McDonald's.  Defendant William S. Purdy, Sr. ("Purdy") is an opponent of abortion.  Looking to capitalize on the fame of plaintiffs' marks, Purdy registered a number of domain names that incorporated plaintiffs' marks in their entirety, including mycoca-cola.com, mymcdonalds.com, mypepsi.org and my-washingtonpost.com.  Purdy linked these domains to a website operated at the domain 'abortion is murder.com,' which contained anti-abortion commentary.  'Abortion is murder.com' also contained links to another website, where a visitor could purchase t-shirts and hats advocating anti-abortion positions, as well as make donations to aid anti-abortion causes. 

Initially, the 'Abortion is murder.com' website contained no mention of plaintiffs, their trademarks or their views on abortion.  Indeed, Purdy admitted that he was using "abortion neutral names" to attract Internet users to his anti-abortion messages.  After this litigation commenced, however, Purdy posted claims online that plaintiffs supported abortion. 

Upon learning of Purdy's activities, the Washington Post sent Purdy a cease and desist letter, and persuaded his Internet Service Provider (ISP) to stop hosting the my-washingtonpost.com website. 

Purdy responded by reposting this website with another ISP.  He also linked the domains my-washingtonpost.com and drinkcoke.org to a website displaying a counterfeit front page of the Washington Post, featuring the headline "The Washington Post proclaims 'Abortion is Murder'". This domain also contained graphic images of aborted fetuses next to both Coca-Cola's trademark and the words "Things Don't Always Go Better With Coke.  Abortion is Murder - The Real Thing." 

Plaintiffs commenced suit, asserting that defendant's conduct violated the ACPA.  On Plaintiffs' motion, the District Court issued a preliminary injunction, prohibiting Purdy from using various domain names that incorporated plaintiffs' trademarks.  The preliminary injunction also directed Purdy to transfer to plaintiffs nine domain names that incorporated their trademarks. 

Despite the Court's order, Purdy continued to register additional domains containing plaintiffs' marks.  In addition, Purdy registered the domain WPNI.org, which he also linked to an anti-abortion site.  Washingtonpost.Newsweek Interactive Company, a subsidiary of the Washington Post, is commonly known as "WPNI." 

This led to the issuance of additional injunctive relief, including both an order amending the initial injunction to prohibit Purdy from continuing to register such domains, as well as a second injunction enjoining Purdy from using the WPNI.org domain, and directing him to transfer it to Plaintiffs.

Because Purdy refused to comply with the District Court's injunctions, or transfer the disputed domains, various contempt orders were issued, imposing monetary sanctions for his non-compliance.  Among Purdy's acts of defiance was his registration, after a court status conference which itself addressed Purdy's non-compliance with prior orders of the court, of two additional domains which contained the Washington Post's mark (ilikethewashingtonpost.com and iadorethewashingtonpost.com).

Purdy appealed each of these determinations to the Eighth Circuit.  Finding plaintiffs likely to prevail on their ACPA claims, the Eighth Circuit affirmed the District Court's grant of injunctive relief.  The Court dismissed Purdy's appeals from the contempt orders, holding they were non-appealable interlocutory orders.

To establish a violation of the ACPA, the mark holder must show that defendant, with a bad faith intent to profit from that mark, registered, trafficked in or used a domain name that is either identical or confusingly similar to a distinctive or famous mark.

The statute lists nine non-exclusive factors a court may consider in determining the motivation for defendant's conduct.  Importantly, held the Court, the fact that a domain is used for a non-commercial or fair use is not dispositive on the question of whether the defendant acted in bad faith.  Said the Eight Circuit:

The ACPA was intended to balance the interests of trademark owners against the interests of those who would make fair uses of a mark online, such as for comment, criticism, parody, and news reporting.  S. Rep. No. 106-140 at *8.  Nevertheless, the use of a domain name "in connection with a site that makes a noncommercial or fair use of the mark does not necessarily mean that the domain name registrant lacked bad faith."  Id. at *8-9;  see also H.R. Rep. No. 106-412 at * 11 (1999).  To recognize such an exemption would "eviscerate the protections of the bill by suggesting a blueprint for cybersquatters who would simply create criticism sites in order to immunize themselves from liability despite their bad-faith intentions."  S. Rep. No. 106-140 at *9.

Agreeing with the District Court, the Eighth Circuit held that plaintiffs were likely to prevail on their ACPA claims.  Defendant's domain names, which incorporated plaintiffs' marks in the entirety, were confusingly similar to plaintiffs' marks.  Here, the Court noted that: 

It is the challenged domain name and the plaintiff's mark which are to be compared.  See 4 McCarthy § 25:78.  …  The fact that confusion about a website's source or sponsorship could be resolved by visiting the website is not relevant to whether the domain name itself is identical or confusingly similar to a plaintiff's mark. 

The Court had little trouble finding that the domain names defendant registered were confusingly similar to plaintiffs' marks.  Said the Court:

Many of Purdy's domain names differ from plaintiffs' marks only by the addition of generic terms like "my," "says," or "drink" or by the addition of a top level domain suffix.  Even if Internet users were seldom to come upon my-washingtonpost.com, mymcdonalds.com or drinkcoke.org, for example, we see no error in the district court's findings that the relevant second level domains (my-washingtonpost, mymcdonalds, and drinkcoke) are confusingly similar to the Washington Post, Coke, and McDonald's marks.  See 4 McCarthy § 25:78 (fordtrucks.com would be confusingly similar to the "Ford" mark of Ford Motor Co.).  The washingtonpost.cc, washingtonpost.ws, and wpni.org domain names differ from the Washington Post and WPNI marks only in that they include a top level domain suffix.  They are thus confusingly similar, if not identical, to the Post entities' marks.

The Eighth Circuit further held that plaintiffs were likely to establish that defendant acted in bad faith.  The Court found that eight of the ACPA's nine factors supported a finding of bad faith.  Thus, Purdy had no legal or intellectual property rights in the marks, was not known by those marks and had not used them to offer goods or services.  In addition, defendant's use was:

not to be considered to be completely noncommercial since they directly solicited monetary contributions and offered various antiabortion merchandise for sale.  Even after Purdy attached the domain names to his own critical commentary sites, he continued to provide links to sites that solicit funds for the antiabortion movement and sell merchandise.  Such use of the domain names would apparently profit the organizations of Purdy's choice, and nothing in the ACPA suggests that Congress intended to allow cybersquatters to escape the reach of the act by channeling profits to third parties. 

That defendant acted in bad faith was also supported by his registration of numerous domain names containing plaintiffs' marks, which were clearly strong and famous marks.  Indeed, at one point defendant offered to stop using the Washington Post domain in exchange for space on the editorial page of that newspaper, which, in the Court's view, constituted an offer to exchange the domains for valuable consideration, and further evidence of defendant's bad faith.

The Court found, based on this evidentiary showing, that plaintiffs were likely to prevail on their ACPA claims.

The Court rejected Purdy's argument that his conduct was protected by the First Amendment.  Purdy's right to express his opinion on the abortion issue did not allow him to do so at domains which misled Internet users as to their source, or used confusion as to source to expose such users to Purdy's message.  Said the Court:

[T]he question raised in this case is whether the First Amendment protects a misleading use of plaintiffs' marks in domain names to attract an unwitting and possibly unwilling audience to Purdy's message.  Use of a famous mark in this way could be seen as the information superhighway equivalent of posting a large sign bearing a McDonald's logo before a freeway exit for the purpose of diverting unwitting travelers to the site of an anti-abortion rally.  … 

Just because an opponent of the war in Iraq might assert an expressive purpose in creating a website with the name lockheedmartincorp.com, for example, the First Amendment would not grant him the right to use a domain name confusingly similar to Lockheed's mark.  While Purdy has the right to express his message over the Internet, he has not shown that the First Amendment protects his appropriation of plaintiffs' marks in order to spread his protest message by confusing Internet users into thinking that they are entering one of the plaintiffs' websites.  See 4 McCarthy § 25:76.

The Eighth Circuit accordingly affirmed the District Court's grant of injunctive relief to plaintiffs.

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