Morrison & Foerster LLP
v. Wick
United
States District Court for the District of Colorado
Decision of April 19, 2000,
94
F.Supp. 2d
1125 (D.Colo. 2000)
Civil
Action No. 00-B-465
OPINION:
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 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. 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 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
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, 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.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 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 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 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) 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 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). 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 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, 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
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 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 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 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 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 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 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
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 mark in his
domain names demonstrates his intent to divert customers from Morrison &
Foerster's online location. As stated 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 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 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
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 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. 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), Mr. Wick has violated 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 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 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. 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 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
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 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).
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 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 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 & 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 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.
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