Thursday, August 25, 2005

Fourth Circuit allows typosquatting where no likelihood of confusion exists

In Lamparello v. Falwell, No. 04-2011, 04-2122 (4th Cir. August 24, 2005) (PDF), a three-judge panel of the Fourth Circuit reversed an order enjoining the plaintiff from maintaining his gripe website critical of Reverend Jerry Falwell where there is no likelihood of confusion between the parties' websites.

Reverend Jerry Falwell operates a web site at "www.falwell.com" to advance his religious and political viewpoints. Falwell owns the trademarks "Falwell" and "Jerry Falwell." Lamparello, a critic of Falwell's views, operates a "gripe" site at "www.fallwell.com" (with two-L's). Falwell sent cease and desist letters to Lamparello, and Lamparello filed suit seeking a declaratory judgment of noninfringement. Falwell counter-claimed, alleging trademark infringement under 15 U.S.C. § 1114 (2000), false designation of origin under 15 U.S.C. § 1125(a), unfair competition under 15 U.S.C. § 1126 and the common law of Virginia, and cybersquatting under 15 U.S.C. § 1125(d). The district court granted summary judgment to Falwell, enjoined Lamparello from using Falwell’s mark at www.fallwell.com, and required Lamparello to transfer the domain name to Falwell.

On appeal, the Fourth Circuit reversed. The infringment and false designation claims were properly dismissed because "[a]fter even a quick glance at the content of the website ... no one seeking Reverend Falwell's guidance would be misled by the domain name www.fallwell.com into believing that Reverend Falwell authorized the content of that website." In so ruling, the court refused to apply the "initial interest confusion" doctrine--a "relatively new and sporadically applied doctrine" holding that "the Lanham Act forbids a competitor from luring potential customers away from a producer by initially passing off its goods as those of the producer’s, even if confusion as to the source of the goods is dispelled by the time any sales are consummated." The court noted that "we have never adopted the initial interest confusion theory; rather, we have followed a very different mode of analysis, requiring courts to determine whether a likelihood of confusion exists by "examin[ing] the allegedly infringing use in the context in which it is seen by the ordinary consumer." The court found the doctrine inapplicable to gripe sites because "[the]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."

The cybersquatting claim failed because "Lamparello has not evidenced a bad faith intent to profit" from his website.

2 comments:

DonSurber said...

Dude, that is interesting as hell.

The Fourth, hmm

Falwell does not do well in the courts, do he?

Johnny Canuck said...

I can relate to that post. Finding the right domain name these days is more challenging and definitely more critical to getting good search engine positioning.

I really enjoy your blog, keep us posted.