Civil Action No. 00-B-465
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO
94 F. Supp. 2d 1125
April 18, 2000, Decided
April 19, 2000, Filed, Entered
JUDGES: Lewis T. Babcock, United States District Judge.
OPINIONBY: Lewis T.
Babcock
OPINION:
[*1126]
FINDINGS OF FACT, CONCLUSIONS OF LAW
& ORDER
In this Internet action brought, inter alia, pursuant to the Anticybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"), Morrison
& Foerster moves for a preliminary and permanent
injunction. Defendants, Brian Wick and American Distribution Systems, Inc. ("ADSI"), oppose this motion. The issues are fully briefed. The parties stipulated to
consolidation of the
preliminary injunction hearing with a trial on the merits, and oral arguments were heard on March 30,
2000. For the reasons set forth below, I grant Morrison
& Foerster's motion and find in favor of Morrison
& Foerster. Federal question jurisdiction is proper in this Court pursuant to
28 U.S.C. § 1331.
I. The
[**2]
World Wide
Web
Before reciting the facts established by the evidence, I begin with a brief
explanation of the relevant technology. The Internet, or the World Wide
Web, is a network of computers that allows people to access information stored on
other computers within the network.
See Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 492 (2d Cir. 2000).
"Information on the Internet is lodged on files called
web pages, which can include printed matter, sound, pictures, and links to other
web pages. An Internet
user can move from one page to another with just the click of a mouse."
Id.
Web pages or
web
sites are designated by addresses called
domain names.
A
domain name is made up of two components: a top level
domain and a secondary level
domain.
See id. The top level
domain is the suffix of the
domain name, and the Internet is primarily divided into six top level
domains:
"(1) .edu for educational institutions; (2) .org for non-governmental and
non-commercial organizations; (3) .gov for governmental entities; (4) .net for
networks; (5) .com for commercial
users; and (6) a nation-specific
domain, which is .us in the United States."
Id. at 492.
[**3] The secondary level
domain is the remainder of the address, and can consist of letters, numbers, and some
typographical symbols. Certain symbols, such as ampersands (&), cannot be used in a
domain name. (Tr. Exh. 30,
Register.com
Domain Name Rules).
Web
sites are used by many companies to provide product information and sell products
online. Consumers need an easy way to find certain companies to order products or
gather information.
"The most common method of locating an unknown
domain name is simply to type in the company name or logo with the suffix.com."
Sporty's, 202 F.3d at 493. If this method is unsuccessful, a
user can use a
"search engine" which, theoretically, will find all
web pages on the Internet containing a particular word or phrase.
Registrars assign
domain names on a first-come, first-served basis upon payment
[*1127] of a
registration fee.
See id.
Register.com, the
registrar used in this case, charges $ 75.00 per
domain name.
Domain name
registrars do not inquire into whether a
domain name request matches or conflicts with another's
trademark.
See id. Lack of regulatory control caused problems of
cybersquatting and cyberpiracy.
See id. (citing
[**4]
Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)).
"Cybersquatting involves the
registration as
domain names of well-known
trademarks by non-trademark holders who then try to sell the names back to the
trademark owners."
Id.
Trademark owners are frequently willing to pay
"ransom" in order to protect their marks.
See id.; H.R. Rep. No. 106-412, at 5-7; S.Rep. No. 106-140, at 4-7 (1999).
The ACPA was passed in November 1999 to address these concerns, and to
"protect consumers and American businesses, to promote the growth of
online commerce, and to provide clarity in the law for
trademark owners by prohibiting the bad-faith and abusive
registration of
distinctive marks as Internet
domain names with the intent to profit from the goodwill associated with such marks
-- a practice commonly referred to as 'cybersquatting'." S.Rep. No. 106-140, at 4.
II. Background
The following facts are established by the direct and circumstantial evidence.
The law firm of Morrison
& Foerster was founded in 1883. It has seventeen offices worldwide, with over
700 attorneys. Since 1975, Morrison
& Foerster has provided legal services under the service mark,
[**5] Morrison
& Foerster. Since November 1991, Morrison
& Foerster has owned and maintained United States
Trademark
Registration No. 1,665,352 for the mark MORRISON
& FOERSTER for legal services. (Tr. Exh. 3, Cert. of Reg.). In 1997, the
trademark office issued a Declaration of Use and Incontestability of a Mark under
Sections 8 and 15, for the mark MORRISON
& FOERSTER. (Tr. Exh. 28). In 1999, the firm's advertising and marketing budget
was approximately $ 1 million.
Morrison
& Foerster is the
registered owner of the
domain name www.mofo.com. Morrison
& Foerster is commonly known in the legal community both as Morrison
& Foerster and as
"MoFo." The firm utilizes its Internet
web
site to market and promote its services, and to provide a point of contact for
customers and attorneys seeking employment. In addition to owning the
registered
trademark MORRISON
& FOERSTER, since December 1996 the firm has also owned the United States
Trademark
Registration No. 2,020,689 for the mark
MOFO. (Exh. L to Dunham Decl., Cert. of Reg.).
On October 24, 1999, Mr. Wick, using the names
NameIsForSale.com and Morri, Son
& Foerster,
registered the
domain names www.morrisonfoerster.com, www.morrisonandfoerster.
[**6]
com, www.morrisonforester.com, and www.morrisonandforester.com through the
online
registrar, www.register.com. On October 27, 1999, Morrison
& Foerster
registered the
domain names www.morrisonfoerster.org, www.morrisonfoerster.net, www.morrisonandfoerster.net, and
www.morrisonandfoerster.org. At that same time, it attempted to
register the
domain names www.morrisonfoerster.com and www.morrisonandfoerster.com. Morrison
& Foerster intended to establish
web
sites that would link to the firm's existing
web
site at www.mofo.com. However, because Mr. Wick already
registered these
domain names three days earlier, it was unable to do so.
According to www.register.com records, the administrative contact for www.morrisonfoerster.com and
www.morrisonandfoerster.com was
"Brian Wick, bgw@earthnet.net." (Tr. Exhs. 15, 16). Under www.register.com rules, the administrative
[*1128] contact owns the
domain name. (Registration Agreement P 3). The other two
domain names
registered by Mr. Wick -- www.morrisonforester.com and www.morrisonandforester.com -- employ a common misspelling of Morrison
& Foerster. The administrative contact for these
domain names
[**7] is also
"bgw@earthnet.net." (Tr. Exh. 25).
Registration records show that shortly before registering the four
domain names at issue, Defendants
registered www.nameisforsale.com as a
domain name. According to www.register.com's records, www.nameisforsale.com is
registered by
NameIsForSale.com, an entity that lists the same post office box address as Defendants Wick and
ADSI, a Colorado corporation of which Mr. Wick is President, Secretary,
registered agent, sole Director and sole Shareholder. Records also show that the
administrative contact for the www.nameisforsale.com
domain name is Brian Wick at
"bgw@earthnet.net."
The four
web
sites at issue, established by Mr. Wick, are very different than Morrison
& Foerster's official
site at www.mofo.com. Although Mr. Wick's
web
sites displayed different things at different times, print outs of his
sites state:
"We're your paid friends!";
"Best friends money can buy";
"Greed is good!";
"We bend over for you . . . because you bend over for us!";
"Parasites No Soul . . . No Conscience . . . No Spine . . . . NO PROBLEM". (Tr. Exh. 22). Also on the
web
sites appeared a copy of a letter to Mr. Wick from Morrison
& Foerster
[**8] regarding infringement of the mark. (Tr. Exh. 22). Finally, the
web
sites contained hyperlinks which allowed a
user to link on to other offensively named
web
sites, such as:
www.LetsDoSomeIllegalSteroids.com, www.GestapoTactics.com, www.HolocaustMemorial.com,
www.MightAsWellFireUpTheOvens.com, www.JewKike.com, www.NoIrishNeedApply.com., www.NativeAmericansAreFinallyGettingTheirLandBack.com,
www.WhatExcuseDoWeGetToUseForTheNextColumbineHighSchoolTragedy.com. (Tr. Exhs. 22, 37). Also listed as ADSI's
"future
web
sites" were: www.PillsBuryMadison.com, www.ProSkauerRose.com, www.SherManhoWard.com,
www.GraHamJames.com.
Morrison
& Foerster's March 1, 2000 complaint states the following claims for relief:
(1)
Cybersquatting in violation of the ACPA;
(2) Unfair Competition and False Designation of Origin in violation of 15
U.S.C. § 1125(a);
(3)
Trademark Infringement in violation of 15 U.S.C. § 1114;
(4) Dilution in violation of 15 U.S.C. § 1125(c);
(5)
Trademark Infringement
& Unfair Competition;
(6) Intentional Interference with Current and Prospective Economic Advantage;
(7) Defamation; and
(8)
[**9] Business Disparagement.
Morrison
& Foerster's Motion for a Temporary Restraining Order and
Preliminary Injunction was heard on March 9, 2000. I entered a Temporary Restraining Order and set
bond at $ 280.00, pursuant to Mr. Wick's testimony that each
site was worth $ 75.00. On March 30, 2000, I held a hearing on the Motion for
Preliminary Injunction consolidated with a trial on the merits, pursuant to Rule 65(a).
III. Standards for Injunctive Relief
Rule 65(a)(2) allows me to consolidate a
preliminary injunction hearing with a trial on the merits:
(a)
Preliminary Injunction.
. . .
(2)
Consolidation of Hearing With Trial on Merits. Before or after the
[*1129] commencement of the hearing of an application for a
preliminary injunction, the court may order the trial of the action on the merits to be advanced and
consolidated with the hearing of the application. . . .
Fed. Rule Civ. Pro. 65. The parties stipulated to
consolidation at the March 9, 2000 hearing and notice of the
consolidation was given in my March 9, 2000 Order and sufficiently gave the parties a full
opportunity to present their evidence.
See, e.g., Holly Sugar Corp. v. Goshen County Co-op. Beet Growers Ass'n, 725 F.2d 564, 568 (10th Cir. 1984).
[**10] Whether to consolidate the hearing with the trial is within my discretion.
See, e.g., American Train Dispatchers Dept. of Intern'l Brotherhood of Locomotive Engineers v. Fort Smith R. Co., 121 F.3d 267, 269 (7th Cir. 1997).
Consolidation is proper in this case because the preliminary and permanent
injunctions required the introduction of identical evidence.
"Such a
consolidation generally saves considerable time at trial by eliminating unnecessary
evidentiary redundancy."
Citizens Concerned for Separation of Church and State v. City and County of Denver, 628 F.2d 1289, 1298 (10th Cir. 1980).
Because an
injunction is an extraordinary remedy,
"the right to relief must be clear and unequivocal."
United States v. Power Engineering Co., 10 F. Supp. 2d 1145, 1148
(D.Colo. 1998) (citing
SCFC ILC, Inc. v. Visa USA, Inc., 936 F.2d 1096, 1098 (10th Cir.1991)).
"
A
preliminary injunction is an equitable remedy that invokes the sound discretion of the district court."
Beerheide v. Zavaras, 997 F. Supp. 1405, 1409 (D.Colo. 1998). In determining whether to issue a preliminary or permanent
injunction, a court must
[**11] consider whether the movant has established: (1) success on the merits; (2)
irreparable injury if the
injunction does not issue; (3) the threatened injury to it outweighs whatever damage the
proposed
injunction may cause the opposing party; and (4) the
injunction will not be adverse to the public interest.
See Power Engineering, 10 F. Supp. 2d at 1148-1149 (preliminary injunction) (citing
Chemical Weapons Working Group, Inc. v. United States Dept. of the Army, 111 F.3d 1485, 1489 (10th Cir. 1997));
Sierra Club v. United States Dept. of Energy, 770 F. Supp. 578, 582 (D.Colo. 1991) (permanent
injunction).
IV. Anticybersquatting Consumer Protection Act
The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"), amends the
Trademark Act of 1946, creating a federal remedy for
cybersquatting. 15 U.S.C. § 1125(d)(1)(A) reads:
(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the owner of a mark,
including a personal name which is protected as a mark under this section, if,
without regard to the goods or services of the parties,
[**12] that person
(i) has a bad faith intent to profit from that mark, including a personal name
which is protected as a mark under this section; and
(ii)
registers, traffics in, or uses a
domain name that--
(I) in the case of a mark that is
distinctive at the time of
registration of the
domain name, is identical or
confusingly similar to that mark;
(II) in the case of a
famous mark that is
famous at the time of
registration of the
domain name, is identical or
confusingly similar to or dilutive of that mark; or
(III) is a
trademark, word, or name protected by reason of section 706 of Title 18 or section 220506
of Title 36.
15 U.S.C. § 1125(d)(1)(A). The ACPA allows me to order
"the forfeiture or cancellation
[*1130] of the
domain name or transfer of the
domain name to the owner of the mark." 15 U.S.C. § 1125(d)(1)(C).
There is no dispute that Morrison
& Foerster is the owner of the
trademark MORRISON
& FOERSTER. As noted above, it has owned this mark since November 1991. United
States
Trademark
Registration No. 1,665,352. (Exh. C to Dunham Decl., Cert. of Reg.). In 1997, the
trademark office issued a Declaration of Use and Incontestability
[**13] of a Mark under Sections 8 and 15, for the mark MORRISON
& FOERSTER. (Trial Exhibit 28).
Further, Morrison
& Foerster's mark is
distinctive and/or
famous, and therefore entitled to the ACPA's protection. At the temporary restraining
order hearing, I found that Morrison
& Foerster's mark is
famous and conclusively
distinctive under the law. The mark has been used by Morrison
& Foerster since 1991, has had millions of dollars in advertising spent on it,
is used nationwide, and is
registered with federal authorities.
See Sporty's, 202 F.3d at 497 (citing 15 U.S.C. § 1125(c)(1)). Furthermore, in 1997, the
trademark office issued a Declaration of Use and Incontestability of a Mark under
Sections 8 and 15. (Tr. Exh. 28).
Registration of Morrison
& Foerster's mark entitles them to a
"presumption that its
registered
trademark is inherently
distinctive."
See id. (citing
Equine Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 545 (1st Cir. 1995)). Nothing presented at trial alters my conclusion that this mark is
famous and
distinctive.
I also conclude that Mr. Wick's four
domain names are identical or
confusingly similar
[**14] to Morrison
& Foerster's mark. Because ampersands cannot be used in Internet
domain names (Tr. Exh. 30,
Register.com
Domain Name Rules), two of Mr. Wick's
domain names are, in all practical aspects, identical to Morrison
& Foerster's mark: www.morrisonfoerster.com and www.morrisonfoerster.com.
See id.; see, e.g., Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
174 F.3d 1036, 1055 (9th Cir. 1999) (finding that the differences between the mark
"MovieBuff" and the
domain name
"movie.buff.com" are
"inconsequential in light of the fact that
Web addresses are not caps-sensitive and that the '.com' top-level
domain signifies the
site's commercial nature."). His other two
domain names employ a common misspelling of Morrison
& Foerster's mark, and are, as he intended,
confusingly similar:
www.morrisonforester.com and www.morrisonandforester.com. (March 30, 2000 Trans. at p. 61).
The pivotal question is whether Mr. Wick
"has a bad faith intent to profit" from his use of the mark. The ACPA provides assistance with this determination, stating nine factors for
courts to consider in determining whether a defendant has acted with a bad faith
[**15] intent to profit from the use of a mark:
(B)(i) In determining whether a person has a bad faith intent described under
subparagraph (a), a court may consider factors such as, but not limited to
(I) the
trademark or other intellectual property rights of the person, if any, in the
domain name;
(II) the extent to which the
domain name consists of the legal name of the person or a name that is otherwise
commonly used to identify that person;
(III) the person's prior use, if any, of the
domain name in connection with the
bona fide offering of any goods or services;
(IV) the person's
bona fide noncommercial or fair use of the mark in a
site accessible under the
domain name;
(V) the person's intent to divert consumers from the mark owner's
online location to a
site accessible under the
[*1131]
domain name that could harm the goodwill represented by the mark, either for
commercial gain or with the intent to tarnish or disparage the mark, by
creating a likelihood of confusion as to the source, sponsorship, affiliation,
or endorsement of the
site;
(VI) the person's offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for financial gain without
[**16] having used, or having an intent to use, the
domain name in the
bona fide offering of any goods or services, or the person's prior conduct indicating a
pattern of such conduct;
(VII) the person's provision of material and misleading false contact
information when applying for the
registration of the
domain name, the person's intentional failure to maintain accurate contact
information, or the person's prior conduct indicating a pattern of such conduct;
(VIII) the person's
registration or acquisition of multiple
domain names which the person knows are identical or
confusingly similar to marks of others that are
distinctive at the time of
registration of such
domain names, or dilutive of
famous marks of others that are
famous at the time of
registration of such
domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person's
domain name
registration is or is not
distinctive and
famous within the meaning of subsection (c)(1) of this section.
15 U.S.C. § 1125(d)(1)(B)(i). Before introducing these nine factors, the ACPA states that a
court
"may" consider factors
"such as" the ones
[**17] listed. The factors therefore are not framed as exclusive or mandatory,
see, e.g., Sporty's, 202 F.3d at 498, but are relevant guidelines.
First, it is clear that Mr. Wick has no intellectual property rights in any of
the
domain names he
registered. Second, none of the
domain names consist of Mr. Wick's legal name nor a name that he is commonly
identified by. To the extent that he uses the trade name Morri, Son
& Foerster, this has only been in use since January 3, 2000 when ADSI amended
its corporate filings with the Colorado Secretary of State to include
"Morri, Son
& Foerster eBusiness, Inc." as an assumed name. This occurred several months after Defendants first
acquired and used the
domain names.
See Sporty's, 202 F.3d at 499 (finding bad faith where defendant acquired related name several months
after
registration of
domain name). Indeed, this conduct is indicative of Defendants' bad faith. Third,
there is no evidence of Mr. Wick's prior use of any of these
domain names in connection with the offering of any
bona fide goods or services.
Directing my attention to the fourth factor, Mr. Wick argues that he uses the
domain names merely to
[**18] display
"parody"
web pages, making fun of Morrison
& Foerster and the practice of law in general. He contends this is a
bona fide noncommercial use of the mark. However, I conclude that use of Morrison
& Foerster's
trademark in this
domain name would confuse the public and disparage the firm. I further conclude that
this is not
bona fide
parody.
See, e.g., Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 970 (10th Cir. 1996) ("in the case of a good
trademark
parody, there is little likelihood of confusion, since the humor lies in the
difference between the original and the
parody.");
OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 191
(W.D.N.Y. 2000) ("Thus, even if
users will easily recognize, upon reaching defendants'
web
site, that it is only a
parody, the use of plaintiffs' mark as the
site's
domain name . . . creates initial interest confusion"). I discuss
parody and its
First Amendment implications
infra.
The fifth factor is clearly applicable here. Mr. Wick's use of Morrison
& Foerster's
[*1132] mark in his
domain names demonstrates his intent to divert customers from Morrison
& Foerster's
online location. As stated
[**19] by the Second Circuit in
Sporty's, the most common method of locating an unknown
domain name is simply to type in the company name or logo with the suffix .com.
Sporty's, 202 F.3d at 493. Any
user attempting to find Morrison
& Foerster's
web
site in this manner, entering www.morrisonandfoerster.com or www.morrisonfoerster.com, would instead find Mr. Wick's
web
sites rather than the official Morrison
& Foerster
web
site at www.mofo.com. Also, I conclude that if the public believed these to be Morrison
& Foerster's
sites, Mr. Wick's
web
sites would harm the goodwill represented by Morrison
& Foerster's mark. As noted above, Mr. Wick's
sites contain many hyper-links to Anti-Semitic, racist, and offensive
domain names. Mr. Wick's
sites refer to attorneys as parasites and are derogatory of the legal profession.
Although some might profess to agree with Mr. Wick, the likelihood of confusion
is great. Because Mr. Wick has placed his
web
sites at
domain names identical or
confusingly similar to Morrison
& Foerster's mark, a
user may wonder about Morrison
& Foerster's affiliation with the
sites or endorsement of the
sites.
The sixth factor looks to Mr. Wick's
[**20] offer to transfer or sell the
domain name to the mark owner or to any third party for financial gain. In support of
this factor, Morrison
& Foerster points to Mr. Wick's use of the
domain name www.NameIsForSale.com, in registering the
web
sites in question. Use of this name gives rise to reasonable inference of intent to
sell the
domain names for a profit. Further, the www.NameIsForSale.com homepage proudly states,
"Name the property, product or service you want to donate, sell, buy, or rent.
Free matching service for donators, sellers, buyers and renters." (emphasis in original). Although Mr. Wick testified that he never intended to
use these
web
sites for profit (March 30, 2000 Trans at p. 93), his testimony is not credible in
light of the nature of these webpages. I find it more likely than not that, as
Mr. Wick himself admits, he had not yet had an opportunity to pursue financial
gain from these
domain names because he was too busy litigating these and similar matters. (March 30,
2000 Trans. at p. 96).
The seventh factor directs my attention to Mr. Wick's provision of material and
misleading false contact information when applying for the
registration of these
domain
[**21] names. Morrison
& Foerster presented evidence at the March 30, 2000 trial that Mr. Wick failed
to comply with www.Register.com's rules for
domain name
registration. (Tr. Exh. 31,
Register.com
Registration Agreement). I view this failure as evidence of bad faith.
Register.com lists several pieces of information that a subscriber is required to submit
which, among other things, includes the
user's name and postal address. In registering the at-issue
domain names, Mr. Wick failed to provide his full name and his postal address.
Instead, he provided a post office box and gave his e-mail address. (Tr. Exhs.
13, 15, 16, 25). Further evidence of his intent to supply false contact
information is that on March 15, 2000, after the Temporary Restraining Order
was issued, Mr. Wick changed the contact name in his
Register.com file. Listed as a contact had been,
"ADSI c/o Morri, Son
& Foerster." On March 15, Mr. Wick changed this to
"DefaultData.com."
The eighth factor allows me to consider Mr. Wick's
registration and acquisition of other
domain names which he knows are identical or
confusingly similar to marks of others that are
distinctive at the time of his
registration. Mr. Wick has
registered
[**22] the names of over ninety law firms, including:
www.HollandandHart.com, www.McKennaandCuneo.com, www.BakerandHostetler.com, www.HallandEvans.com.
[*1133] (Tr. Exh. 41, pp. 1-2). All of these
web
sites are similar in appearance. Some reference
"Parasites" and state
"no soul . . . no conscience . . . no spine . . . NO PROBLEM!!!" (Tr. Exh. 41, p. 3). Others claim,
"We bend over for you . . . because you bend over for us! As long as someone is
bending over ... then someone is getting paid! Make sure you are bending over
the right way! We tell you what you want to hear ... because you pay us! Greed
is good!" (Exh. 41, p. 7). Needless to say, all of these
web
sites employ
domain names which Mr. Wick knows are identical or
confusingly similar to names of other law firms. And, as with Morrison
& Foerster, these names and/or
trademarks are
distinctive and/or
famous and, therefore, protected by the ACPA.
The ninth factor is the extent to which the mark incorporated into the
domain name is or is not
distinctive and/or
famous. Because I have found Morrison
& Foerster's mark to be both
famous and
distinctive, this factor weighs in its favor.
The most persuasive reason for concluding that Mr. Wick
[**23] acted with bad faith intent does not fit neatly into the specific factors
enumerated in the ACPA. I may nevertheless consider it under the statute.
See, e.g., Sporty's, 202 F.3d at 499. Mr. Wick's own testimony demonstrates his bad faith. He testified that he
began registering
"parody"
domain names to
"get even" with a company he worked for that allegedly reneged on a contract with him.
(March 30, 2000 Trans. at p. 89). When he had success in this limited field, he
moved on to corporate America and, at one point,
registered
domain names for 7% of the Fortune 500 companies. (March 30, 2000 Trans. at p. 90).
He then graduated to corporate recreation activities such as golf. (March 30,
2000 Trans. at p. 92). Finally, he began to
register names of major law firms because they, in Mr. Wick's view, would represent
corporate America in court. When questioned about his initial intent in setting
up
domain names, Mr. Wick responded:
Q. And what was your intention? What did you intend to do with those
domain names?
A. I'm not one to sue somebody, and I --
this was my way of messing with them.
Q. Were you going to put up
web
sites with those
domain names?
A. Absolutely.
[**24]
Q. And what were you going to put on those
web
sites?
A.
Parody's, jokes.
. . .
A. . . . I got to thinking, Well, who else in corporate America can I have fun
with. And I figured, well, hey, you know, I got the executives pissed off as a
result of me because of the names I own regarding their corporation. I can fool
with them where they recreate. Well, who are they going to get to represent
them? So I started getting into targeting www.martindale.com, large law firms.
Q. Did you intend to set up
parody
sites for the law firms as well?
A. Couldn't wait.
(March 30, 2000 Trans. at p. 90, 92) (emphasis added). Mr. Wick described
himself as going
"on a rampage" in setting up these various
web
sites targeting corporate America and the legal community. (March 30, 2000 Trans. at
p. 91). He also described the entertainment value of purchasing the
domain names:
"I mean to be candid with you I mean to see these people squirming around over
70 bucks, that's enjoyable." (March 30, 2000 Trans. at p. 93). Each of these concessions manifest the
degree of bad faith with which Mr. Wick established these
web
sites.
I conclude that, under 15 U.S.C. § 1125(d)(1)(A),
[**25] Mr. Wick has violated
[*1134] Morrison
& Foerster's statutory rights by his use of the four at-issue
domain names. The ACPA permits a court to
"order the forfeiture or cancellation of the
domain name or the transfer of the
domain name to the owner of the mark." 15 U.S.C. § 1125(d)(1)(C). Accordingly, I direct Mr. Wick to forfeit his interests in all four
domain names (www.morrisonfoerster.com, www.morrisonandfoerster.com, www.morrisonforester.com, and
www.morrisonandforester.com). I then direct Mr. Wick to transfer, at his own cost, the two
domain names with the correct spelling of the firm (www.morrisonfoerster.com and
www.morrisonandfoerster.com) to Morrison
& Foerster. These are the
domain names that Morrison
& Foerster wants for firm purposes. As for the remaining
domain names with the commonly misspelled firm name (www.morrisonforester.com and
www.morrisonandforester.com), I order these
domain names cancelled.
I permanently enjoin Mr. Wick from taking any action to prevent and/or hinder
Morrison
& Foerster from obtaining these
domain names.
See, e.g., Sporty's, 202 F.3d at 500. Injunctive relief is appropriate in this case
[**26] because Morrison
& Foerster has established success on the merits of its claim and showed that it
will suffer irreparable injury if the
injunction does not issue.
See Chemical Weapons, 111 F.3d at 1489;
Sierra Club, 770 F. Supp. at 582. I also conclude that the injury to Morrison
& Foerster, through disparagement of the firm name, outweighs whatever damage
the
injunction will cause Mr. Wick.
See id. Indeed, Mr. Wick admitted at the March 30, 2000 trial that such damage, if
any, would be minimal:
Q. . . . if you are ordered to not use the four
domain names in this case, could you continue to operate a website in some other
domain name?
A. Well, I have a number of Internet
domains, so to answer your question I would have a lot of options, yes.
(March 30, 2000 Trans. p. 99). Finally, the
injunction will not be adverse to the public interest but instead will further public
interest by providing more accurate
web
site names and minimizing consumer confusion.
See id.
V.
First Amendment Defense
At the March 30, 2000 trial, Mr. Wick argued that his use of the at-issue
web
sites is protected by the
First Amendment because it
[**27] represents
parody. Under the facts of this case, I disagree. Although the content of each
site may be entitled to some
First Amendment protection, his use of Morrison
& Foerster's
trademark in the
domain name of these
sites is not so protected.
Primarily, I am not persuaded that Mr. Wick's
web
sites constitute
"parody" entitled to
First Amendment protection. A
parody
"must convey two simultaneous -- and contradictory --
messages: that it is the original, but also that it is not the original and is instead a
parody."
Hormel Foods Corp. v. Jim Henson Prod., Inc., 73 F.3d 497, 503 (2d Cir. 1996);
OBH, 86 F. Supp. 2d at 191. Indeed, a
parody depends on a lack of confusion to make its point.
See Cardtoons,
95 F.3d at 970 ("in the case of a good
trademark
parody, there is little likelihood of confusion, since the humor lies in the
difference between the original and the
parody.");
Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987) ("A
parody relies upon a difference from the original mark, presumably a humorous
difference, in order to produce its desired effect.");
Hormel, 73 F.3d at 503.
[**28] Mr. Wick's use of the Morrison
& Foerster mark in his
domain names does not convey two simultaneous and contradictory
messages. Instead, the names of his
web
sites produce confusion. Only by reading through the content of the
sites could the
user discover that the
domain names are an attempt at
[*1135]
parody. Because his
web
sites rely on confusion to convey their points, Mr. Wick's argument that his use of
the mark is a
parody fails.
See OBH,
86 F. Supp. 2d at 191 ("Thus, even if
users will easily recognize, upon reaching defendants'
web
site, that it is only a
parody, the use of plaintiffs' mark as the
site's
domain name . . . creates initial interest confusion")
Moreover, because Mr. Wick's
domain names merely incorporate Morrison
& Foerster's
trademark, they do not constitute a protectable,
communicative
message.
See id.
at 197 ("Whether a particular
domain name is entitled to protection under the
First Amendment depends on the extent of its
communicative
message.") (citing
Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, (2d Cir. 2000)). Mr. Wick chose to use Morrison
& Foerster's mark to deceive Internet
users into believing
[**29] they were accessing Morrison
& Foerster's
web
site. Such use of the mark is not protected by the
First Amendment.
OBH, 86 F. Supp. 2d at 197-198 ("Use of another's
trademark is entitled to
First Amendment protection only when the use of that mark is part of a
communicative
message, not when it is used merely to identify the source of a product.") (citing
Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, 1997 WL 133313
(S.D.N.Y. 1997)). Mr. Wick's use of Morrison
& Foerster's mark as the
domain name for his
web
sites is more analogous to source identification than to a
communicative
message.
See OBH, 86 F. Supp. 2d at 198. The
domain names identify the
web
sites as being those of Morrison
& Foerster. Mr. Wick offers no reason why I should determine that his
domain names constitute
communicative
messages rather than source identifiers. I agree with the Southern District of New York
judge who stated:
The grant to one person of the exclusive right to use a set of words or symbols
in trade can collide with the free speech rights of others. When another's
trademark (or a
confusingly similar mark) is used without permission
[**30]
for the purpose of source identification, the
trademark law generally prevails over the
First Amendment. Free speech rights do not extend to labeling or advertising products in a
manner that conflicts with the
trademark rights of others. In these circumstances, the exclusive right guaranteed by
the
trademark law is generally superior to the general free speech rights of others.
See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.1989).
Yankee Pub. Inc. v. News America Pub. Inc., 809 F. Supp. 267, 275-276 (S.D.N.Y. 1992) (emphasis added).
Finally, Mr. Wick could simply display the content of his
web pages in a different location. As he testified, he has many
domain names and, thus, many places to display his
message. (March 30, 2000 Trans. p. 99).
Shields v. Zuccarini, 89 F. Supp. 2d 634, 2000 U.S. Dist. LEXIS 3350, 2000 WL 298300, *7 (E.D. Pa. 2000) ("Nor can he argue that such an order would violate his
First Amendment right to free speech, as he has plenty of other outlets for his protest (i.e.,
just one of the three thousand
domain names he owns would provide a sufficient forum).").
For these reasons, I do not credit Mr. Wick's
First Amendment defense of
[**31] his use of Morrison
& Foerster's mark in his
domain names.
VI. Other Grounds For Relief
In addition to its claim under the ACPA, Morrison
& Foerster submits seven other grounds for relief in its Complaint: Unfair
Competition and False Designation of Origin in violation of 15 U.S.C. § 1125(a);
Trademark Infringement in violation of 15 U.S.C. § 1114; Dilution in violation of
15 U.S.C. § 1125(c);
Trademark Infringement
& Unfair Competition; Intentional Interference with Current and Prospective
Economic Advantage; Defamation; and
[*1136] Business Disparagement. However, because I grant the requested injunctive
relief with regard to its claim under the ACPA, the evidence focused on this
claim, and the evidence is insufficient as to the remaining claims. I will not
address further these other statutory bases for injunctive relief, other than
with regard to damages. The March 30, 2000 hearing constituted a full trial on
the merits. Morrison
& Foerster failed to present any evidence or testimony regarding actual damages
it incurred as a result of Mr. Wick's use of the
domain names and
web pages. Indeed, when asked, Morrison
[**32]
& Foerster admitted that it conducted no studies to determine whether any
users of the Internet were actually confused by Mr. Wick's
sites, nor did Morrison
& Foerster produce any evidence of
users who accessed Mr. Wick's
sites rather than www.mofo.com. Because no such evidence was introduced, and it is a plaintiff's burden to
prove damages, I decline to award any damages.
Although the ACPA contains a provision allowing for a statutory award of
damages for violation, Morrison
& Foerster never
"elected" this remedy as required by the statute. 15 U.S.C. § 1117(d). In its complaint, Morrison
& Foerster states that it is reserving its right to seek such statutory damages,
but no formal election was ever made or mentioned at the trial. As a further
request for relief, Morrison
& Foerster requested, both in its complaint and its motion, that Mr. Wick be
enjoined from using the name
"Morri, Son
& Foerster" and the
registered trade name
"Morri, Son
& Foerster eBusiness, Inc." However, this argument was never addressed at the trial nor briefed.
Therefore, I will not address it further.
Accordingly, it is ORDERED that:
(1) Defendants must forfeit their interests
[**33] in all four
domain names (www.morrisonfoerster.com, www.morrisonandfoerster.com, www.morrisonforester.com, and
www.morrisonandforester.com);
(2) Defendants must transfer, at their own cost, the two
domain names with the correct spelling of the firm (www.morrisonfoerster.com and
www.morrisonandfoerster.com) to Morrison
& Foerster;
(3) The remaining two
domain names (www.morrisonforester.com and www.morrisonandforester.com) are cancelled;
(4) Defendants shall submit to the Court evidence of compliance with paragraphs
(1), (2), and (3) of this Order within ten days from the date hereof;
(5) Defendants, their officers, agents, servants, representatives, employees,
attorneys, successors, assigns, or other individuals or entities controlling,
controlled by or affiliate with, and all those in privity or active concert or
participation with Defendants who receive actual notice of this order, are
jointly and severally PERMANENTLY ENJOINED from taking any action to prevent
and/or hinder Morrison
& Foerster from obtaining the subject
domain names; and
(6) Morrison
& Foerster is awarded its costs.
Dated: April 18, 2000 in Denver, Colorado.
[**34]
BY THE COURT:
Lewis T. Babcock, Judge