Opinion
Case No. 02-1782 ADM/JGL.
January 28, 2005
Thomas P. Olson, Esq., Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC and Felicia J. Boyd, Esq., Faegre Benson LLP, Minneapolis, MN appeared for and on behalf of Plaintiffs.
William S. Purdy, Sr., pro se, appeared for and on behalf of Defendants.
MEMORANDUM OPINION, ORDER, AND PERMANENT INJUNCTION
I. INTRODUCTION
On January 20, 2005, oral argument before the undersigned United States District Judge was heard on The Coca-Cola Company, McDonald's Corporation, Pepsico, Inc., The Washington Post Company, and Washingtonpost.Newsweek Interactive Company, LLC's (collectively "Plaintiffs") Motion for Summary Judgment [Docket No. 86]. Plaintiffs' Complaint [Docket No. 1] alleged claims against William S. Purdy, Sr. ("Purdy"), Please Don't Kill Your Baby, and Does 1-10 (collectively "Defendants") for: violating the Anticybersquatting Consumer Protection Act (Count I); Trademark Infringement (Count II); Counterfeiting (Count III); False Representation (Count IV); Federal Trademark Dilution (Count V); Deceptive Trade Practices (Count VI) and Common Law Trademark Infringement (Count VII). At oral argument, Plaintiffs consented to dismiss Count III (Counterfeiting) and Count V (Federal Trademark Dilution) without prejudice.
Plaintiffs' motion urges the Court to enter judgment in its favor on the remaining five counts and to issue a permanent injunction preventing Defendants from registering, using, owning, holding in any way, or trafficking in any domain name that (i) incorporates, and is identical or confusingly similar to, Plaintiffs' famous and protected marks Coca-Cola®, Coke®, McDonald's®, McDonalds.com®, MyMcDonalds.com®, Pepsi-Cola®, Pepsi®, The Washington Post®, and WashingtonPost.com®, or any other mark owned by Plaintiffs, and (ii) does not alert the unwary Internet user to the protest or critical commentary nature of the attached website within the language of the domain name itself. Defendants did not file any written response to Plaintiffs' Motion for Summary Judgment, however, William S. Purdy, Sr. did appear and argue at oral argument. For the reasons set forth below, Plaintiffs motion is granted.
II. BACKGROUND
For purposes of the instant Motion, the facts are viewed in the light most favorable to Defendant, the nonmovant. See Ludwig v. Anderson, 54 F.3d 465, 470 (8th Cir. 1995).
Defendants have registered over 60 Internet domain names that incorporate the trademarks Coca-Cola®, Coke®, McDonald's®, McDonalds.com®, MyMcDonalds.com®, Pepsi-Cola®, Pepsi®, The Washington Post®, and WashingtonPost.com®, and MyWashingtonPost.com®. The web sites for these domain names display content that does not originate from, is not sponsored by, and is not affiliated with the Plaintiffs, including color pictures that purport to be dismembered aborted fetuses and links to fund-raising appeals.
On July 23, 2002, this Court issued an Order for Emergency Temporary Restraining Order and Preliminary Injunction [Docket No. 12]. On September 5, 2002, after Plaintiffs demonstrated Defendants were engaged in additional activities that violated the July 23, 2002 Order, the Court issued an Amended Order for Emergency Temporary Restraining Order and Preliminary Injunction [Docket No. 19]. After the Court found that Purdy had violated the original injunction by registering more than 60 prohibited domain names, the Court issued an Order on January 28, 2003 finding him in contempt [Docket No. 56]. A supplemental contempt order was also issued on March 10, 2003 [Docket No. 75] after the Court found Defendant had engaged in further violations of the Order. Purdy appealed this Court's preliminary injunction [Docket No. 13], January 28, 2003 contempt order [Docket No. 72] and March 10, 2003 supplemental contempt order [Docket No. 80] to the Eighth Circuit Court of Appeals. After consolidating Purdy's appeals, the Eighth Circuit issued an Opinion and Judgment affirming this Court's orders granting preliminary injunctive relief and dismissing the appeals of the contempt order and sanctions for lack of jurisdiction [Docket Nos. 84, 85]. See Coca-Cola Company v. Purdy, 382 F.3d 774 (8th Cir. 2004). The matter was remanded to this Court for further proceedings. The Court now considers whether the preliminary injunction should be made permanent.
III. DISCUSSION
A. Summary Judgment StandardFederal Rule of Civil Procedure 56(c) provides that summary judgment shall issue "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); see Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On a motion for summary judgment, the Court views the evidence in the light most favorable to the nonmoving party. Ludwig v. Anderson, 54 F.3d 465, 470 (8th Cir. 1995). The nonmoving party may not "rest on mere allegations or denials, but must demonstrate on the record the existence of specific facts which create a genuine issue for trial." Krenik v. County of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).
B. Count I: Anticybersquatting Consumer Protection Act
The July 23, 2002 and September 5, 2002 Orders set forth the Court's reasoning in granting Plaintiffs' request for a preliminary injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). In its September 1, 2004 Opinion, the Eighth Circuit endorsed this Court's reasoning and affirmed the orders granting preliminary injunctive relief. For the purposes of the instant matter, the material legal and factual issues remain unchanged. For the reasons set forth in this Court's Orders granting preliminary injunctive relief and the Court of Appeals' Opinion, Plaintiffs' Motion for Summary Judgment is granted on Count 1.
C. Count II: Trademark Infringement
This Court granted the preliminary injunction and the Court of Appeals affirmed on the grounds that the injunction was warranted under the ACPA. Neither court considered whether such relief could also be granted under a trademark infringement claim. As a result, it is necessary to consider Plaintiffs' allegation of trademark infringement in greater depth.
Plaintiffs argue that Defendants' registration and use of domain names that are identical or confusingly similar to Plaintiffs' marks constitutes trademark infringement. To prevail on a trademark infringement claim, pursuant to 15 U.S.C. § 1114, a plaintiff must show: (1) ownership of a valid trademark; and (2) a likelihood of confusion between the registered mark and the alleged infringing use by the defendant. See, e.g., First Bank v. First Bank Sys., Inc., 84 F.3d 1040, 1044 (8th Cir, 1996).
Possessing a registered trademark is prima facie evidence that the trademark is valid. Id.; see also Aromatique, Inc. v. Golden Seal, Inc., 28 F.3d 863, 869 (8th 1994) ("registration of a mark creates a rebuttable presumption that the mark is valid"). Since it is undisputed that the trademarks at issue are all federally registered and Defendants have offered no evidence to rebut the resulting presumption, the Court finds that the trademarks are valid.
As previously noted, the trademarks at issue are Coca-Cola®, Coke®, McDonald's®, McDonalds.com®, MyMcDonalds.com®, Pepsi-Cola®, Pepsi®, The Washington Post®, WashingtonPost.com®, and MyWashingtonPost.com®.
To determine "whether under all the circumstances there is a likelihood of confusion" between marks, courts evaluate the following six factors:
(1) the strength of the earlier mark; (2) the similarity between the mark at issue and the alleged infringer's mark; (3) the degree to which the products compete with each other; (4) the alleged infringer's intent to pass off its own goods as those of the trademark owner . . .; (5) incidents of actual confusion; and (6) whether the degree of purchaser care can eliminate any likelihood of confusion which would otherwise exist.Minnesota Mining Manufacturing Co. v. Rauh Rubber, Inc. 130 F.3d 1305, 1308 (8th Cir. 1997) (citations omitted); see also SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980).
As to the initial factor, it is clear that Coca-Cola®, Coke®, McDonald's®, McDonalds.com®, MyMcDonalds.com®, Pepsi-Cola®, Pepsi®, The Washington Post®, WashingtonPost.com®, and MyWashingtonPost.com® are "indisputably famous and distinctive marks." Coca-Cola Company et al., 382 F.3d at 786. With respect to the second factor, Defendants registered domains that are identical or confusingly similar to Plaintiffs' trademarks. Although the parties do not compete for goods or services, the third factor is met because Defendants intended to redirect Plaintiffs' audience and customers to view content of their choosing. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, *21 (S.D.N.Y. Mar. 24, 1997),aff'd, 152 F.3d 920 (2d Cir. 1998) ("defendant's use is classically competitive: he has taken plaintiff's mark as his own in order to purvey his Internet services — his web site — to an audience intending to access plaintiff's services").
The fourth factor is also satisfied as Defendants have registered the domain names with a bad faith intent to profit from them by tarnishing and diluting Plaintiffs' marks and by relying on Plaintiffs' good names and goodwill to achieve the personal gain of promoting their messages, generating publicity and raising money for supported causes. This bad intent is further manifested in that none of the domain names contains or consists of a name by which Defendants are known, and Defendants had not previously used any of the names at issue in connection with the bona fide offering of goods or services. In addition, Defendants have continued and expanded their practice of registering identical or confusingly similar domain names even in the face of a preliminary injunction against that practice.
The fifth factor considers incidents of actual confusion. Although "[a]ctual confusion is not essential to a finding of infringement," at least two incidents evidence the existence of such confusion. WSM, Inc. v. Hilton, 724 F.2d 1320, 1329 (8th Cir. 1984). One disgusted Coca-Cola® customer contacted the company and said he could not finish consuming the Coke® product he was drinking after viewing the content on one of Defendants' web sites. See First Alexandri Decl. [Docket Nos. 4-5] Ex. 22. Defendants use of the domain name wpni.org also proved confusing after e-mail intended for Washingtonpost.Newsweek Interactive Company ("WNIC") employees was mistakenly addressed to Defendants' site. See Fourth Alexandri Decl. [Docket No. 30] Exs. 182-83; Doherty Decl. [Docket No. 25] ¶¶ 3-4; Hong Decl. [Docket No. 26] ¶¶ 3-4.
Plaintiffs claim that Defendants subsequently contacted WNIC employees and threatened to post their private e-mails on the Internet unless WNIC dropped the present lawsuit. See Doherty Decl. ¶¶ 3, 6; Hong Decl. ¶¶ 3-5.
The final factor considers whether the degree of purchaser care can eliminate any likelihood of confusion which would otherwise exist between the products. Several courts have noted that the quick and effortless nature of "surfing" the Internet makes it unlikely that consumers can avoid confusion through the exercise of due care:
In the internet context, in particular, entering a website takes little effort — usually one click from a linked site or a search engine's list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership.Northern Light Tech. Inc. v. Northern Lights Club, 97 F. Supp. 2d 96, 115 (D. Mass. 2000) aff'd 236 F.3d 57 (1st Cir. 2001) (quoting Brookfield Communications, Inc. v. West Coast Entm't Corp., 147 F.3d 1036, 1057 (9th Cir. 1999)). As a result, "ordinary Internet users do not undergo a highly sophisticated analysis when searching for domain names." Green Prods. Co. v. Independence Corn By-Products, Co., 992 F. Supp. 1070, 1079 (N.D. Iowa 1997).
For the aforementioned reasons, there is sufficient evidence to support a finding that a likelihood of confusion exists between the registered mark and the alleged infringing use by the Defendants. As a result, the Court grants Plaintiffs' Motion for Summary Judgment on Count II.
D. Counts IV, VI and VII: False Representation, Deceptive Trade Practices and Common Law Trademark Infringement
Finally, Plaintiffs assert Defendants' actions amount to false representation, deceptive trade practices and common law trademark infringement. See 15 U.S.C. § 1125(a) and Minn. Stat. § 325D.44. As noted above, this Court's prior Orders and the Court of Appeals' opinion were analyzed on the strength of Plaintiffs' ACPA claim. Plaintiffs also devoted significant time to supporting their trademark infringement claim in their summary judgment memorandum and at oral argument. However, Plaintiffs provide only a cursory discussion of Counts IV, VI, and VII in their memorandum and did not mention these claims at oral argument. Although Plaintiffs briefly argue that claims such as false representation, deceptive trade practices and common law trademark infringement are governed by the same analysis as federally-registered marks under 15 U.S.C. § 1114, this Court finds Plaintiffs have not sufficiently developed these claims. In addition, Plaintiffs' relief is not dependent on successfully prosecuting these claims. As a result, Counts IV, VI, and VII are dismissed without prejudice.
Plaintiffs only discuss Counts IV, VI and VII in the final, brief paragraph of their memorandum and in n. 11 on page 18.
IV. CONCLUSION
Based on the foregoing, and all the files, records and proceedings herein, IT IS HEREBY ORDERED that:
1. Plaintiffs' Motion for Summary Judgment [Docket No. 86] is GRANTED IN PART AND DENIED IN PART;
2. Plaintiffs' Complaint [Docket No. 1] is GRANTED as to Counts I and II while Counts IV, VI and VII are DISMISSED WITHOUT PREJUDICE;
3. Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them are permanently prohibited and enjoined from registering, using, owning, holding in any way, or trafficking in any domain name that (i) incorporates, and is identical or confusingly similar to, Plaintiffs' famous and protected marks Coca-Cola®, Coke®, McDonald's®, McDonalds.com®, Pepsi-Cola®, Pepsi®, The Washington Post®, and WashingtonPost.com®, or any other mark owned by Plaintiffs, and (ii) does not alert the unwary Internet user to the protest or critical commentary nature of the attached website within the language of the domain name itself;
4. Without limiting the generality of the foregoing, Defendants and their officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them are permanently prohibited and enjoined from registering, using, owning, holding in any way, or trafficking in any of the following domain names: mycoca-cola.com, drinkcoke.org, mymcdonalds.com, pepsisays.com, mypepsi.org, washingtonpostsays.com, washingtonpost.cc, washingtonpost.ws, my-washingtonpost.com, wpni.org, washingtonpost-editorialpage.com, washingtonpostedits.com, washingtonpost-federalcourt.com, washingtonpost-eightcircuit.com, washingtonpost-supremecourt.com, the washingtonpostappealcom, washingtonpostconsititution.com, washingtonpostcourt.com, thewashingtonpostjury.com, washingtonpostjudges.com, washingtonpoststates.com, washingtonpostcitizen.com, washingtonpostfreedom.com, washingtonpostspeech.com, washingtonpost-freespeech.com, thewashingtonpostchristian.com, washingtonpostcandidates.com, thewashingtonpostbaby.com, thewashingtonpost-mybook.com, washingtonpost-oreilly.com, thewashingtonpostfactor.com, thewashingtonpost-nospinzone.com, washingtonpost-plannedparenthood.com, thewashingtonpostconfession.com, thewashingtonpostpostvirus.com, thewashingtonpostwatch.com, thewashingtonpostnews.com, washingtonpostcyberspace.com, washingtonpostinternet.com, thewashingtonpostbirth.com, thewashingtonposteffect.com, thewashingtonpostfame.com, thewashingtonpostfetus.com, thewashingtonpostframe.com, thewashingtonpoststillness.com, thewashingtonpostliberal.com, thewashingtonpostlife.com, thewashingtonpostmission.com, thewashingtonpostreign.com, thewashingtonpostreligion.com, thewashingtonpostrescue.com, thewashingtonpostsorrows.com, thewashingtonpostspin.com, thewashingtonpostsyndrome.com, thewashingtonpostwalk.com, thewashingtonpostwomb.com, washingtonpostconfusion.com, washingtonposthealth.com, washingtonpostsuffering.com, thewashingtonpostoccassion.com, thewashingtonpostunderstanding.com, thewashingtonpostshareholder.com, yourwashingtonpost.com, nocoke-pepsi.com, gopepsi.org, pepsi-ludacris.com, pepsi-orelly.com, pepsiheaven.com, pepsiright.com, thepepsichallenge.org, lovemcdonald.com, ilovethewashingtonpost.com, jesuslovesthewashingtonpost.com, thewashingtonpostjesus.com, thewashingtonpostjesus.st, thewashingtonpostjew.com, thewashingtonpostmuslim.com, thewashingtonpostkoran.com, thewashingtonpostmotherofjesus.com, thewashingtonpostvirginmary.com, thewashingtonpostchildsacrafice.com, thewashingtonpostblessedvirgin.com, thewashingtonpostourladyoffadmima.com, thewashingtonpostwonderfulitalian.com, thewashingtonpostitalianbandit.com, thewashingtonpoststubbornchild.com, thewashingtonpostourladyofguadalupe.com, thewashingtonpostourladyofmedugorje.com, thewashingtonpostspeechjail.com, thewashingtonpost.nu, washingtonpostchristianperspective.com, thewashingtonpost-johnkerryconnection.com, thewashingtonpostfaegrebensonconnection.com, washingtonpost-eighthcircuitruling.com, washingtonpostshareholder.com, washingtonpost-tencommandents.com, washingtonpostvoteforpresidentbush.com, andwashingtonpost-truefacts.com;
5. The persons enjoined by this Order include, but are not limited to, all persons listed as technical or administrative contacts for any identified website, including but not limited to Mark A. Purdy II and William S. Purdy II;
6. Defendants shall forthwith advise all domain name registrars they have previously or currently employed of this Order and instruct them to take all actions necessary to stop the functioning of all domain names that violate the standards set forth in paragraph 3, including but not limited to all of the domain names listed in paragraph 4, and shall instruct all such domain name registrars to cooperate in the transfer of such domain names to the appropriate Plaintiff as specified in paragraph 7 below;
7. Defendants shall transfer to the appropriate Plaintiff within three days the ownership of any domain name that violates the standards set forth in paragraph 3, including but not limited to all of the domain names listed in paragraph 4 that Defendants have not already so transferred; and,
8. Defendants shall, within ten days from the date of this Order, file a report with the Court and provide a copy to the Plaintiffs, setting forth the manner in which they have complied with the terms of this Order.
LET JUDGMENT BE ENTERED ACCORDINGLY.