Taubman v. Webfeats

Citation: Taubman Co. v. Webfeats, No. 01-72987 (E.D. Mich. Oct. 11, 2001) (granting preliminary injunction), rev'd, 319 F.3d 770 (6th Cir. 2003).

Factual Background
Plaintiff, a shopping-mall builder and owner of the marks TAUBMAN and THE SHOPS AT WILLOWS BEND marks, objected to defendant’s use of the domain name “shopsatwillowsbend.com” for a website providing information about plaintiff’s shopping mall called “The Shops at Willow Bend.” Defendant’s website included a prominent disclaimer of affiliation with plaintiff, stating that the site was unofficial and providing a link to plaintiff’s official website. Defendant’s site also provided links to the sites for defendant’s web-design company and a third party selling custom-made shirts.

Trial Court Proceedings
After plaintiff filed suit regarding the domain name “shopsatwillowsbend.com,” defendant registered five “.sucks” domain names containing plaintiff’s marks TAUBMAN or THE SHOPS AT WILLOW BEND or variations thereof, including “taubmansucks.com” and “theshopsatwillowbendsucks.com.” All of defendant’s “sucks” domain names linked to a website about its legal dispute with plaintiff.

The district court granted both plaintiff’s initial motion for preliminary injunction enjoining defendant from using the domain name “shopsatwillowsbend.com” and plaintiff’s amended motion for preliminary injunction enjoining defendant’s use of the “sucks” domain names. Both injunctions were based on plaintiff’s trademark-infringement claim.

Appellate Court Proceedings
The Sixth Circuit reversed the district court’s decision, and dissolved both preliminary injunctions. Regarding the “shopsatwillowsbend.com” website, defendant argued that his use was noncommercial speech entitled to First Amendment protection and that there was no likelihood of confusion. In response, plaintiff argued that defendant was using the name commercially to sell or advertise goods or services based on: (a) the link on defendant’s site to the custom-made shirt website, (b) the link on defendant’s site to defendant’s own web-design company, and (c) defendant’s alleged acceptance of a $1,000 offer to transfer the domain name to plaintiff. The appeals court, however, rejected all three arguments.

The link to the custom-made shirt website was removed prior to the injunction and defendant sent a letter to plaintiff’s attorneys stating that it would not place any advertising of any kind on the website in the future. The Sixth Circuit concluded that as long as defendant had “no commercial links” on its site, defendant was making “no use [of plaintiff’s mark] in connection with the advertising’ of goods and services” sufficient to enjoin defendant under the Lanham Act.

Plaintiff’s argument that its offer to buy the domain name qualified defendant’s use of the name as “in connection with the sale of goods” had no merit because defendant was not a cybersquatter who had a business of registering trademark-related domain names and there was no evidence that defendant’s initial motive in registering the “shopsatwillowsbend.com” domain name was to resell it. Indeed, contrary to plaintiff’s assertion, the record suggested that it was plaintiff who initiated the bargaining process to acquire the domain name.

Even if defendant’s use of the “shopsatwillowsbend.com” domain name was commercial in nature, it would not be actionable under the Lanham Act because it did not create a likelihood of confusion among the consuming public based in large part on the disclaimer defendant placed on its website. Not only did defendant place a disclaimer of affiliation with plaintiff on its website but it placed a hyperlink to plaintiff’s website within the disclaimer. Accordingly, defendant’s website and disclaimer actually helped plaintiff by redirecting potential lost customers of plaintiff to plaintiff’s official website.

Turning to the injunction against the “sucks” domain names, the Sixth Circuit held that defendant’s use of plaintiff’s marks in the “sucks” domain names was “purely an exhibition of Free Speech. . . .” The court treated plaintiff’s concession that defendant was “free to shout” ‘Taubman Sucks!’ from the roof tops” as a concession that defendant was free to use its “sucks” domain names because “[t]he roof tops of our past have evolved into the Internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit. . . .”

The Sixth Circuit distinguished this case from the Planned Parenthood v. Bucci case where “the defendant used the plaintiff’s trade name as a domain name, without the qualifying moniker ‘sucks,’ or any other such addendum to indicate that the plaintiff was not the proprietor of the website.” In this case, however, the addition of the word “sucks” removed “any confusion as to source.”

Finally, plaintiff argued that under the “Safe Distance Rule,” defendant should not be able to use the “sucks” domain names even though they might not necessarily be actionable on their own because defendant earlier infringed plaintiff’s trademark by using the “shopsatwillowsbend.com” domain name. The could held that even if the Safe Distance Rule survived the enactment of the Lanham Act, it did not apply here because: (a) the rule applies only where the second use was commercial and was only a “slight deviation” of the first use, and (b) the rule applies only against “proven infringers,” and the Sixth Circuit held that the “shopsatwillowsbend.com” domain name did not infringe plaintiff’s trademark rights.

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