Civil Action No. 99-1336-A
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA, ALEXANDRIA
DIVISION
113 F. Supp. 2d 915
June 12, 2000, Decided
June 12, 2000, Filed
JUDGES: Claude M. Hilton, CHIEF UNITED STATES DISTRICT JUDGE.
OPINIONBY: Claude M.
Hilton
OPINION:
[*917] MEMORANDUM OPINION
This matter comes before the Court on Plaintiff's Motion for Partial
Summary Judgment and Renewed Motion to Strike, Plaintiff's Motion for
Summary Judgment
[**2] and Defendant's Motion for
Summary Judgment. The parties agree that there are no issues of material fact in dispute and
this case may be decided on the motions for
summary judgment.
This lawsuit arose from a dispute between Plaintiff, People for the Ethical
Treatment of
Animals ("PETA"), and Defendant, Michael Doughney ("Doughney"), regarding the use of the
internet
domain name
"PETA.ORG."
PETA is a
non-profit, charitable corporation established in August 1980.
PETA has affiliated
animal protection organizations in the United Kingdom, Germany, the Netherlands and
India who all operate under the name
PETA. On August 4, 1992,
PETA was given U.S.
Trademark
Registration Number 1,705,510 duly issued by the United
[*918] States Patent and
Trademark Office for the service mark
"PETA" for
"educational services; namely providing programs and seminars on the subject of
animal rights welfare," and,
"promoting the public awareness of the need to prevent cruelty and mistreatment
of
animals."
PETA has used the
PETA
trademark and trade name continuously in interstate commerce and foreign commerce since
1980.
Defendant, Michael Doughney ("Doughney"),
registered many
domain names in September 1995, including
[**3]
"PETA.ORG." At that time,
PETA had no
web
sites of its own. Doughney
registered
"PETA.ORG" with Network Solutions, Inc. for
"People Eating Tasty
Animals" which he represented to Network Solutions, Inc. was a
non-profit organization. No such organization was in existence at the time of the
registration of the
web
site or since that time. Doughney also represented to Network Solutions, Inc. that
the name
"PETA.ORG"
"does not interfere with or
infringe upon the rights of any third party."
Doughney's
"PETA.ORG"
web
site contained information and materials
antithetical to
PETA's purpose. When in operation,
"www.peta.org" contained the following description of the
web
site:
"A resource for those who enjoy eating meat, wearing fur and leather, hunting,
and the fruits of scientific research." There were over thirty links on the
web
site to commercial
sites promoting among other things the sale of leather goods and meats. Until an
internet
user actually reached the
"PETA.ORG"
web
site, where the screen read
"People Eating Tasty
Animals," the
user had no way of knowing that the
"PETA.ORG"
web
site was not owned, sponsored or endorsed by
PETA.
On January 29, 1996,
PETA send Doughney a letter
[**4] requesting that he relinquish his
registration of the
"PETA.ORG" name because
"it uses and
infringes upon the longstanding
registered service mark of People for the Ethical Treatment of
Animals, whose service mark 'PETA' currently is in full force and effect."
PETA then complained to Network Solutions, Inc. and on or about May 2, 1996,
Network Solutions, Inc. placed the
"PETA.ORG"
domain name on
"hold" status. Pursuant to Network Solutions, Inc.'s
"hold" status designation, the
"PETA.ORG"
domain name may not be used by any person or entity. After
"PETA.ORG" was put on
"hold" status, Doughney transferred the contents of that
web
site to the
internet address
"www.mtd.com/tasty."
PETA brought this suit alleging claims for service mark
infringement in violation of 15 U.S.C. § 1114 (Count I),
unfair competition in violation of 15 U.S.C. § 1125 (a) and Virginia common law (Counts II and VI), service mark
dilution and cybersquatting in violation of 15 U.S.C. § 1125 (c) (Count VII).
PETA has voluntarily withdrawn Counts III, IV and V of its Amended Complaint.
Doughney claims there is no
infringement because its
web
[**5]
site is a
parody.
PETA has dropped its claim for damages and seeks the following equitable relief: to
enjoin Doughney's unauthorized use of its
registered service mark
"PETA" in the
internet
domain name
"PETA.ORG," to force Doughney's assignment of the
"PETA.ORG"
domain name to
PETA.
Summary Judgment is appropriate where there is no
genuine issue as to any material fact. See FED. R. Civ. P. 56(c). Once a motion for
summary judgment is properly made and supported, the opposing party has the burden of showing
that a genuine dispute exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). A material fact in dispute appears when its existence or non-existence could
lead a jury to different outcomes. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). A
genuine issue exists when there is sufficient evidence on
[*919] which a reasonable jury could return a verdict in favor of the
non-moving party. See id. Mere speculation by the
non-moving party
"cannot create a
genuine issue of material fact." Beale v. Hardy, 769 F.2d 213, 214 (4th Cir. 1985);
[**6] See also
Ash v. United Parcel Serv., Inc., 800 F.2d 409, 411-12 (4th Cir. 1986). Summary judgment is appropriate when, after discovery, a party has failed to
make a
"showing sufficient to establish the existence of an element essential to that
party's case, and on which that party will bear the burden of proof at trial."
Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).
When a motion for
summary judgment is made, the evidence presented must always be taken in the light most
favorable to the
non-moving party. See Smith v. Virginia Commonwealth Univ., 84 F.3d 672, 675 (4th Cir. 1996) (en banc). This case is ripe for
Summary Judgment as all the evidence is before the Court and the facts are undisputed.
To make out a case for service or trade mark
infringement and/or
unfair competition, a Plaintiff must prove the following elements: (1) that Plaintiff possesses a
Mark; (2) that Defendant uses the Plaintiff's Mark; (3) that such use occurs in
commerce; (4) in connection with the sale or
offering for sale, distribution, or
advertising of goods or services; and (5) in a way that is likely to cause confusion
[**7] among consumers.
15 U.S.C. §§ 1114, 1125(a). Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922, 930 (4th Cir. 1995).
First,
PETA owns the
PETA Mark and Defendant admits the
PETA Mark's validity and incontestability. The
PETA Mark is thus presumed to be
distinctive as a matter of law. Jews for Jesus v. Brodsky, 993 F. Supp. 282, 295
(D.N.J. 1998), aff'd 159 F.3d 1351 (3rd Cir. 1998); Sporty's Farm. L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497 (2nd Cir.). Second, Doughney used the identical
PETA Mark to register
"PETA.ORG" and posting a
web
site at the
internet address
"www.peta.org." Third, Doughney admits that his use of the
PETA Mark was
"in commerce."
The fourth element requires that Defendant's use of the
PETA Mark be made in connection with the sale, distribution, or
advertising of goods or services. This does not require that Defendant actually caused
goods or services to be placed into the stream of commerce. Jews for Jesus, 993 F. Supp. at 309.
The term
"services" has been interpreted broadly to include the dissemination of information,
including
[**8] purely ideological information.
United We Stand America, Inc. v. United We Stand America New York, 128 F.3d 86, 89-90 (2nd Cir. 1997) (citations omitted). Defendant's use of the
PETA Mark was
"in connection" with goods and services because the use of a misleading
domain name has been found to be
"in connection with the distribution of services" when it impacts on the Plaintiff's business:
It is likely to prevent
Internet
users from reaching [PETA]'s own
Internet
web
site. The prospective
users of [PETA]'s services who mistakenly access Defendant's
web
site may fail to continue to search for [PETA]'s own home page, due to anger, frustration, or the belief that the Plaintiff's
home page does not exist
Planned Parenthood Federation of America v. Bucci, 1997 U.S. Dist. LEXIS 3338, 42 U.S.P.Q.2D (BNA) 1430, 1435 (S.D.N.Y.);
Jews for Jesus, 993 F. Supp. at 309. In addition, the
"PETA.ORG"
web
site contained over thirty separate hyperlinks to commercial operations
offering goods and services, including fur, leather, magazines, clothing, equipment and
guide services. Under the law, even one such link is sufficient to establish
[**9] the commercial use requirement of the Lanham Act.
Jews for Jesus, 993 F. Supp. at 308-09; Planned Parenthood, 42 U.S.P.Q.2D (BNA) at 1435.
Last, Defendant's use of
PETA's Mark did cause confusion. Doughney copied
[*920] the Mark identically. This creates a presumption of likelihood of confusion
among
internet
users as a matter of law. New York State Society of Certified Public Accountants v. Eric Louis Associates. Inc., 79 F. Supp. 2d 331, 340
(S.D.N.Y. 1999). In addition, there was evidence of actual confusion by those using the
internet who were trying to locate
PETA and instead found Doughney's
web
site.
Doughney's
web
site certainly dilutes the Mark of
PETA. To win on
summary judgment for a claim for
dilution under 15 U.S.C. § 1125 (c)(1), Plaintiff must show that the undisputed facts demonstrate that
Defendant's use of
"PETA.ORG" diluted the
PETA Mark's
distinctive quality.
Dilution is
"the lessening of the capacity of a
famous mark to identify and distinguish goods or services, regardless of the presence
or absence of (1) competition between the owner of the
famous mark and other parties, or (2) likelihood of confusion,
[**10] mistake or deception."
15 U.S.C. § 1127; Ringling Bros. v. Utah Division of Travel, 170 F.3d 449, 452 (4th Cir. 1999).
Dilution can occur by
"tarnishment" or
"blurring." Jews for Jesus, 993 F. Supp. at 305; Ringling Bros., 170 F.3d at 452.
Defendant is guilty of
"blurring" the
famous
PETA Mark because (1) Defendant used the identical
PETA Mark to mentally associate
PETA.ORG to the
PETA Mark; and (2) such use caused; (3) actual economic harm to the
PETA Mark by lessening its selling power as an
advertising agent for
PETA's goods and services. Ringling Bros., 170 F.3d at 458. Doughney's
site included materials
antithetical to the purpose and message of
PETA in that
"PETA.ORG" included links to commercial enterprises engaged in conduct directly contrary
to
PETA's
animal protection efforts.
PETA is also entitled to
Summary Judgment under the Anticybersquatting Consumer Protection Act ("ACPA"),
15 U.S.C. § 1125 (d)(1)(A). To succeed on
Summary Judgment, Plaintiff must show that Defendant (1) has a bad faith intent to profit from
using
"PETA.ORG;" and (2) the
"PETA.ORG"
[**11]
domain name is identical or confusingly similar to, or dilutive of, the
distinctive and
famous
PETA Mark. 15 U.S.C. § 1125 (d)(1)(A). The second element has been proved for
reasons stated above. As to the first element, under the ACPA, there are nine factors a court
must consider in making a determination of whether the Defendant had a bad
faith intent. 15 U.S.C. § 1125 (d)(1)(B). Applying these factors, it appears that Doughney had the requisite
bad faith intent.
First, Defendant possessed no intellectual property rights in
"PETA.ORG" when he
registered the
domain name in 1995. Second, the
"PETA.ORG"
domain name is not the Defendant, Michael T. Doughney's legal name or any name that
is otherwise used to identify the Defendant. Third, Defendant had not engaged
in prior use of the
"PETA.ORG"
domain name in connection with the bona fide
offering of any goods or services prior to registering
"PETA.ORG." Fourth, Defendant used the
PETA Mark in a commercial manner. Fifth, Defendant clearly intended to confuse,
mislead and divert
internet
users into accessing his
web
site which contained information
antithetical and therefore harmful to
[**12] the goodwill represented by the
PETA Mark. Sixth, on Doughney's
"PETA.ORG"
web
site, Doughney made reference to seeing what
PETA would offer him if
PETA did not like his
web
site. Seventh, Defendant, when registering the
domain name
"PETA.ORG," falsely stated that
"People Eating Tasty
Animals" was a
non-profit educational organization and that this
web
site did not
infringe any trade mark. Eighth, Defendant has
registered other
internet
domain names which are identical or similar to either marks or names of
famous people or organizations he opposes. Ninth, the
PETA Mark used in the
"PETA.ORG"
domain name is
distinctive and
famous and was so at the time
[*921] Defendant
registered this
site in September 1995.
Doughney contends there is no
infringement in that his
web
site was a
parody. A
parody exists when two
antithetical ideas appear at the same time. In this instance, an
internet
user would not realize that they were not on an official
PETA
web
site until after they had used
PETA's Mark to access the
web page
"www.peta.org." Only then would they find Doughney's People Eating Tasty
Animals. Doughney knew he was causing confusion by use of the Mark and admitted that it
was
"possible" that
[**13] some
internet
users would be confused when they activated
"PETA.ORG" and found the
"People Eating Tasty
Animals"
web
site. He also admitted that
"many people" would initially assume that they were accessing an authentic
PETA
web
site at
"www.peta.org." Only after arriving at the
"PETA.ORG"
web
site could the
web
site browser determine that this was not a
web
site owned, controlled or sponsored by
PETA. Therefore, the two images: (1) the
famous
PETA name and (2) the
"People Eating Tasty
Animals"
web
site was not a
parody because not simultaneous.
The Defendant's
affirmative defense of
trademark misuse is inapplicable. In 1998,
PETA
registered the
domain names
"ringlingbrothers.com,"
"voguemagazine.com," and
"pg.info." Each
web
site contained messages from
PETA criticizing Ringling Bros.-Barnum
& Bailey Combined, Vogue Magazine and Procter
& Gamble Company for mistreatment of
animals. In each instance,
"ringlingbrothers,"
"voguemagazine" and
"pginfo" were not and are not
registered
trademarks.
PETA received complaints from Conde Nast Publications that owns Vogue Magazine and
from the Ringling Bros.-Barnum
& Bailey Combined Shows regarding
PETA's
web
sites bearing their names. In each
[**14] case,
PETA voluntarily and immediately assigned the
domain names to the complaining party. At no time did
PETA receive any correspondence of any kind from Procter
& Gamble Company complaining about
PETA's
registration and use of the
internet
domain name
"pginfo.net." Doughney had no relation to any of these
web
sites and suffered no damages from
PETA's operation of any of these
web
sites.
Defendant's
affirmative defense is based in part on a constitutional argument. Doughney contends that this
case is an attempt to quash his First Amendment rights to express disagreement
with their organization.
PETA does not seek to keep Doughney from criticizing
PETA. They ask that Doughney not use their mark. When Network Solutions, Inc. placed
"PETA.ORG" on
"hold" status, Doughney transferred the entire
web page to one of his other
internet
sites,
"mtd.com/tasty."
PETA has not complained about that
web
site and even concedes that Doughney has a right to criticize
PETA or any organization.
Defendant also raises as a his
trademark misuse
affirmative defense an
"unclean hands" argument. However, the doctrine of
unclean hands applies only with respect to the right in suit. What is material is not
[**15] that the plaintiff's hands are dirty, but that he dirtied them in acquiring
the right he now asserts. Estee Lauder, Inc. v. Fragrance Counter, 189 F.R.D. 269, 272
(S.D.N.Y. 1999); see also Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 89 L. Ed. 1381, 65 S. Ct. 993 (1954). The purported grounds for Defendant's
"unclean hands" - i.e.
PETA's disputes with Ringling Bros. and Vogue, and
PETA's
web
site that is critical of Procter
& Gamble - are not at issue in this suit and thus, are not properly the subject
of an
unclean hands defense.
As
PETA has proven its case for its
infringement and
dilution claims and Doughney can offer no viable defenses to
PETA's claims,
Summary Judgment should be granted in favor of
PETA.
An appropriate Order shall issue.
Claude M. Hilton
CHIEF UNITED STATES DISTRICT JUDGE
June 12, 2000
Alexandria, Virginia
[*922] ORDER
For
reasons stated in accompanying Memorandum Opinion, it is hereby
ORDERED that Plaintiff's Motion for
Summary Judgment is GRANTED, that the Defendant's Motion for
Summary Judgment is DENIED and that Defendant is ORDERED to relinquish the
registration of the
[**16]
domain name
PETA.ORG; to transfer its
registration of such
domain name to
PETA; and to limit his use of a
domain name to those that do not use
PETA's marks and/or any colorable imitation of such marks, or any thing or mark
confusingly similar thereto.
Claude M. Hilton
CHIEF UNITED STATES DISTRICT JUDGE
June 12, 2000
Alexandria, Virginia