Planned Parenthood v. Bucci

Citation: Planned Parenthood Fed’n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. Mar. 19, 1997), aff’d, 152 F.3d 920 (2d Cir.), ''cert. denied,'' 525 U.S. 834 (1998).

Factual Background
Defendant operated a website located at the domain name “plannedparenthood.com,” on which he promoted anti-birth-control and antiabortion positions. Plaintiff Planned Parenthood, the well-known nonprofit organization that offers reproductive health care and birth-control services, sued to enjoin defendant’s use of the “plannedparenthood.com” domain name on the grounds that it infringed and diluted plaintiff’s federally registered service mark PLANNED PARENTHOOD.

Trial Court Proceedings
The court considered the issue of likelihood of confusion in detail and found that plaintiff was entitled to a preliminary injunction on its trademark-infringement claim. The manner of defendant’s use of plaintiff’s mark in connection with his website &mdash; both as his domain name and at the top of the website in the greeting message “Welcome to the Planned Parenthood Homepage!” &mdash; increased the likelihood that consumers searching for plaintiff’s website would incorrectly believe that the defendant’s website was that of the plaintiff.

Due to the nature of Internet use, the court found that a disclaimer could not adequately cure the harm caused to plaintiff from the confusion of Internet users diverted to defendant’s website when seeking plaintiff. As to plaintiff’s dilution claim, the court noted that plaintiff’s mark was famous and determined that defendant’s use of the mark as the domain name for a website promoting an antiabortion book and soliciting funds for antiabortion activities constituted a “commercial use in commerce” as required by the FTDA. Although the court did not expressly state that defendant’s activities constituted dilution of plaintiff’s mark, the court’s preliminary injunction did order defendant to refrain from using any mark likely to dilute the distinctiveness or injure the reputation of the PLANNED PARENTHOOD mark.

The court also enjoined defendant from using plaintiff’s PLANNED PARENTHOOD mark as his domain name or in any manner on his website. The court declined to award plaintiff’s attorney’s fees pending further evidentiary submissions regarding defendant’s willfulness.

In a subsequent opinion, the court found defendant’s actions were willful and deliberate enough to bring the case within the category of “exceptional cases,” thereby entitling plaintiff to costs and reasonable attorney’s fees. The court rejected Bucci’s contention that his subjective belief that his actions were constitutionally protected should shield him from liability for fees, where Bucci had admitted that he had never read the NSI domain name dispute policy and had not consulted with an attorney until after he was sued by plaintiff.

Appellate Court Proceedings
The Second Circuit affirmed the district court's decision in an unpublished opinion finding that the district court did not abuse its discretion in granting a preliminary injunction.