F.3d
The ''Federal Reporter'' () is a case law reporter in the United States that is published by West Publishing and a part of the National Reporter System. It begins with cases decided in 1880; pre-1880 cases were later retroactively compiled by We ...
309 (4th Cir., 2005), was a legal case heard by the
United States Court of Appeals for the Fourth Circuit
The United States Court of Appeals for the Fourth Circuit (in case citations, 4th Cir.) is a federal court located in Richmond, Virginia, with appellate jurisdiction over the district courts in the following districts:
* District of Maryla ...
concerning allegations of
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
and
trademark infringement
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may o ...
. The dispute centered on the right to use the
domain name
A domain name is a string that identifies a realm of administrative autonomy, authority or control within the Internet. Domain names are often used to identify services provided through the Internet, such as websites, email services and more. As ...
fallwell.com, and provides discussion on
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
as it applies to criticism of a
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
website
A website (also written as a web site) is a collection of web pages and related content that is identified by a common domain name and published on at least one web server. Examples of notable websites are Google Search, Google, Facebook, Amaz ...
to respond to and criticize the anti-homosexual statements by the American Christian evangelical preacher
Jerry Falwell
Jerry Laymon Falwell Sr. (August 11, 1933 – May 15, 2007) was an American Baptist pastor, televangelism, televangelist, and conservatism in the United States, conservative activist. He was the founding pastor of the Thomas Road Baptist Church, ...
. Lamparello's website was located at fallwell.com (note the misspelling). Believing that there was confusing similarity between the
domain name
A domain name is a string that identifies a realm of administrative autonomy, authority or control within the Internet. Domain names are often used to identify services provided through the Internet, such as websites, email services and more. As ...
and Falwell's own name, domain name, and other trademarks, Falwell and his ministries attempted to legally block Lamparello from using the mark "fallwell" and transfer the ownership of the domain name to Falwell.
The initial decisions (ruled by the
National Arbitration Forum
Forum, formerly known as the National Arbitration Forum (NAF) is an American organization that provides arbitration and mediation services to businesses, based at its Minneapolis headquarters and offices in New Jersey. The organization was founde ...
in 2003 and the
United States District Court for the Eastern District of Virginia
The United States District Court for the Eastern District of Virginia (in case citations, E.D. Va.) is one of two United States district courts serving the Commonwealth of Virginia. It has jurisdiction over the Northern Virginia, Hampton Roa ...
in 2004) decided in favor of Falwell, granting Falwell's claims of federal trademark infringement,
false designation of origin In consumer law, false designation of origin occurs when the manufacturer or seller lies about the country of origin
Country of origin (CO) represents the country or countries of manufacture, production, design, or brand origin where an article ...
,
unfair competition
Unfair may refer to:
* Double Taz and Double LeBron James in multiverses ''fair''; unfairness or injustice
* ''Unfair'' (drama), Japanese television series
* '' Unfair: The Movie''
* Unfair (song), a song by South Korean boy group EXO
Prior history
UDRP complaint
In October 2003, Falwell submitted a complaint to the
National Arbitration Forum
Forum, formerly known as the National Arbitration Forum (NAF) is an American organization that provides arbitration and mediation services to businesses, based at its Minneapolis headquarters and offices in New Jersey. The organization was founde ...
(NAF), in accordance with
ICANN
The Internet Corporation for Assigned Names and Numbers (ICANN ) is an American multistakeholder group and nonprofit organization responsible for coordinating the maintenance and procedures of several databases related to the namespaces ...
's
Uniform Domain Name Dispute Resolution Policy The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP curren ...
(UDRP), requesting that the domain name be transferred from Lamparello to Falwell.
Under the UDRP, the complainant must show that the registered domain name is identical or confusingly similar to their trademark, that the registrant has no legitimate interest in the domain name, and that the domain name is being used in bad faith.
The NAF panel decided 2-1 on November 20, 2003 to transfer the domain name to Falwell's ministries, Liberty Alliance.
The dissenting panelist, David E. Sorkin, argued that the domain name was not used in bad faith, and that this dispute was not one to be resolved under the UDRP or by the NAF.
Related case: jerryfalwell.com
A contemporaneous case was one concerning Gary Cohn and the domain names jerryfalwell.com and jerryfallwell.com. Falwell sued Cohn for "reverse domain name hijacking", but the
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO; french: link=no, Organisation mondiale de la propriété intellectuelle (OMPI)) is one of the list of specialized agencies of the United Nations, 15 specialized agencies of the United Nation ...
(WIPO) in
Geneva
Geneva ( ; french: Genève ) frp, Genèva ; german: link=no, Genf ; it, Ginevra ; rm, Genevra is the List of cities in Switzerland, second-most populous city in Switzerland (after Zürich) and the most populous city of Romandy, the French-speaki ...
,
Switzerland
). Swiss law does not designate a ''capital'' as such, but the federal parliament and government are installed in Bern, while other federal institutions, such as the federal courts, are in other cities (Bellinzona, Lausanne, Luzern, Neuchâtel ...
did not accept the case since Falwell did not have a trademark on his own name. After Falwell threatened to sue in Virginia, U.S. in 2003, Cohn surrendered both domain names.
District Court
Following the NAF decision, Lamparello filed an action against Falwell in federal district court, seeking declaratory judgment of non-infringement. Lamparello was supported by the
Public Citizen Litigation Group
Public Citizen Litigation Group is a public interest law firm in the United States.The group is the litigation arm of the non-profit consumer advocacy organization Public Citizen. Its attorneys work on cases involving health and safety regulation, ...
. The ACLU also provided an
amicus brief
An ''amicus curiae'' (; ) is an individual or organization who is not a party to a legal case, but who is permitted to assist a court by offering information, expertise, or insight that has a bearing on the issues in the case. The decision on ...
, arguing that the domain name in question was protected by the
First Amendment
First or 1st is the ordinal form of the number one (#1).
First or 1st may also refer to:
*World record, specifically the first instance of a particular achievement
Arts and media Music
* 1$T, American rapper, singer-songwriter, DJ, and rec ...
.
Falwell filed a counterclaim, alleging trademark infringement under (2000), false designation origin under , unfair competition under and the common law of the state of Virginia, and cybersquatting under .
The District Court granted summary judgment for Falwell, blocking Lamparello from using the domain name and ordered the transfer of the website to Falwell. The court denied Falwell's request for statutory damages and attorney fees.
Opinion of the Court
Lamparello appealed the District Court's order and Falwell cross-appealed the denial of statutory damages and attorney fees.
The U.S. Court of Appeals for the Fourth Circuit unanimously reversed the District Court's decision, ruling that Lamparello could continue maintaining the gripe website at fallwell.com. The court reasoned as follows:
;Likelihood of Confusion
:The Court used the 4th Circuit's seven part test for likelihood of confusion: "(a) the strength or distinctiveness of the mark; (b) the similarity of the two marks; (c) the similarity of the goods/services the marks identify; (d) the similarity of the facilities the two parties use in their businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant’s intent; (g) actual confusion."
:In applying this test, the Appeals Court found that there was only a similarity in the online marks, but nothing else was applicable, and that "Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers."
:The Court of Appeals stressed that there was no confusion that Lamparello's site was not affiliated with Falwell or his ministries.
:
After even a quick glance at the content of the website at www.fallwell.com, no one seeking Reverend Falwell’s guidance would be misled by the domain name — www.fallwell.com — into believing Reverend Falwell authorized the content of that website. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible.
;Initial Interest Confusion
:This argument is roughly a
typosquatting
Typosquatting, also called URL hijacking, a sting site, or a fake URL, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typos made by Internet users when inputting a website address into a web browser. Shoul ...
argument, wherein legitimate potential customers seeking Falwell's website might misspell his official domain name and instead go to fallwell.com, giving Lamparello an "unearned audience". The Appeals Court states that there must be a financial profit from the initial interest confusion, and in the case of noncommercial gripe sites, there is no way to financially profit from the confusion. "This critical element — use of another firm’s mark to capture the markholder’s customers and profits — simply does not exist when the alleged infringer establishes a gripe site that criticizes the markholder."
;Cybersquatting
:In order to win a cybersquatting claim, Falwell would have to show bad faith intent to profit from using the fallwell.com domain name, and prove that the domain name is "identical or confusingly similar to, or dilutive of, the distinctive and famous mark". In addition to the already established lack of confusion, the Appeals Court found that Lamparello did not have a bad faith intent to profit due to the lack of income from the site, that Lamparello had not attempted to sell the domain name, and that Lamparello had not purchased a large quantity of domain names.
:Finally, agreeing with prior cases in the Fifth and Sixth Circuits, "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting."
Subsequent developments
On April 17, 2006, the
U.S. Supreme Court
The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...
declined to hear an appeal from Falwell regarding the 4th Circuit opinion, giving no reasons for declining.
As of August 2018, the website is no longer functioning. The last archival snapshot of the site was taken in February 2012, implying that it went down later that year.
Significance
In contrast to the Court of Appeals' 2001 opinion in ''People for the Ethical Treatment of Animals v. Doughney'', where the Court affirmed the District Court's judgment against the defendant, this case supported the defendant, ruling against one gripe site and for the other. In ''PETA'', the parody website's content was not conveyed simultaneously with the message that the site was peta.org. In short, the Fourth Circuit backtracked on its decision in ''PETA'', justifying the different opinions as a distinction between parody and consumer confusion. Additionally, in both ''PETA'' and ''Lamparello'', the website in question had links to items for sale. The distinction between the two cases may have been that in ''PETA'', the defendant registered numerous other websites for
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
purposes. The utilization of the bad-faith factors of the ACPA has been criticized by some scholars for leading to counterintuitive results when applied to cases that are not clear-cut
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
.
Perhaps the Court of Appeals has created a lesson here for counsel representing parties who might assert cyber squatting claims. Before filing suit, initiate bad faith settlement negotiations, for the purpose of obtaining a statement from the cyber squatter that he might be willing to settle. Then, file suit under the ACPA, asserting that your opponent's willingness to engage in your bad faith settlement negotiations demonstrates a bad faith intent to profit on his part.
This opinion is important when considering
typosquatting
Typosquatting, also called URL hijacking, a sting site, or a fake URL, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typos made by Internet users when inputting a website address into a web browser. Shoul ...
and
gripe site
A gripe site is a type of website that is dedicated to critique or complaint about a specific subject. The subject could be a person, place, politician, corporation, institution, or something else. A gripe site may aim to offer constructive critic ...
s as it upheld Fifth and Sixth Circuit decisions that "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting." This opinion contained direct analysis of application of the
Initial Interest Confusion
Initial interest confusion is a legal doctrine under trademark law that permits a finding of infringement when there is temporary confusion that is dispelled before the purchase is made. Generally, trademark infringement is based on the likelihood ...
doctrine, but leaves questions regarding the IIC unanswered.
See also
*
Anticybersquatting Consumer Protection Act The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or di ...