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Mayflower Transit, LLC v. Dr. Brett Prince

Use of Service Mark In Domain Name Of Gripe/Complaint Site Does Not Violate the Anticybersquatting Consumer Protection Act

Court holds that defendant's use of plaintiff's service mark in the domain names of noncommercial web sites critical of plaintiff does not constitute a violation of the Anticybersquatting Consumer Protection Act ("ACPA") because this was a "bona fide noncommercial" use of the mark which defendant had reasonable grounds to believe was lawful.  In reaching this result, the Court determined that defendant was motivated not by an intent to use his critical web site to extract money from plaintiff, but instead by a desire to express his dissatisfaction with plaintiff's alleged conduct.  The Court accordingly granted defendant's motion for partial summary judgment, and dismissed plaintiff's ACPA claim.  Left for another day were libel and trade libel claims arising out of the sites' content, as well as a Federal Dilution Act claim under 15 U.S.C. § 1125(c) arising out of the defendant's use of plaintiff's service mark.

Defendant Creates Gripe Site Critical Of Plaintiff

Plaintiff Mayflower Transit ("Mayflower") is a moving company that owns the service mark "Mayflower," which mark it uses in connection with the operation of its business.  Apparently, Mayflower engages "affiliated agents" to conduct inter state moves.  Because it is not licensed to do so, Mayflower does not, however,  conduct intra state moves in states other than Texas and Florida.  Such moves are conducted by its "affiliated agents" during which they are permitted to use Mayflower trucks, boxes and uniforms.

Defendant contacted Mayflower to arrange an intra state move in New Jersey.  Defendant claimed he met with an individual who identified himself as a Mayflower sales manager.  The contract he signed to move his goods, however, identified the moving company as Lincoln Storage.  Lincoln Storage placed defendant's goods in a truck and boxes which bore Mayflower's mark.  Unfortunately, defendant's goods were stolen before they arrived at their destination.  Defendant sued Lincoln Storage and its insurance company for his loss, which suit was settled approximately five years after the goods were stolen.

Defendant registered two domain names which incorporated plaintiff's mark, and at which he posted web sites critical of plaintiff.  These domains were "mayflowervanlinebeware.com" and "mayflowervanline.com."  Similar information was also posted on a website defendant operated at "lincolnstoragewarehous.com".  The websites "describe[ed] [defendant's] moving incident" and attributed fault therefor to both Lincoln Storage and Mayflower.  No goods or services were offered for sale, or advertised, on defendant's sites.

Plaintiff notified defendant that only Lincoln Storage, and not Mayflower, was involved in his move.  When defendant refused to modify his site, plaintiff commenced this suit, asserting that defendant's use of its mark ran afoul of both the ACPA and the Federal Trademark Dilution Act, and that the content of his sites gave rise to claims for libel and trade libel.

No Violation Of The Anticybersquatting Consumer Protection Act Because Defendant Did Not Act With The Requisite Bad Faith Intent To Profit

On defendant's motion, the Court dismissed plaintiff's Anticybersquatting Consumer Protection Act ("ACPA") claim.  "For a plaintiff to succeed on an ACPA claim, it must show that : (1) its marks are distinctive or famous; (2) the defendant's domain names are identical or confusingly similar to the plaintiff's marks; and (3) the defendant registered its domain name with the bad faith intent to profit from them."

The ACPA lists nine factors that can be used to analyze whether a defendant acted in bad faith; however, as noted by the Court, "these factors are not considered exclusive or mandatory."  The ACPA also provides that "bad faith intent shall 'not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."  15 U.S.C. § 1125(d)(1)(B)(ii).

The Court determined that in this case, the critical factor was "whether defendant had [made] a 'bona fide noncommercial or fair use of the mark.'"  The Court held that defendant's motivation in creating his sites "was to express his customer dissatisfaction through the medium of the Internet."  Such an expression of consumer criticism, given the facts of this case, was a bona fide noncommercial or fair use of the mark which defendant had reasonable grounds to believe was lawful.  The Court accordingly held that plaintiff's ACPA claim failed because defendant did not act in bad faith, and dismissed that claim.

In reaching this result, the Court rejected plaintiff's contention that defendant's alleged request that plaintiff "do something" about defendant's problem before defendant would modify his site demonstrated his "bad faith intent to profit" from his use of the domain names at issue.  The Court held that defendant's alleged comments "suggest the attempt to influence through criticism rather than underhanded motives."  The court went on to state:

Despite Plaintiff's attempts to portray Defendant's web sites as bargaining chips to obtain personal advantage and thereby shoehorn him into the scope of the ACPA, this Court's examination of the evidence does not find that profit-seeking was a motivating factor at all in Defendant's actions.  Defendant in the present case did not clearly express his desire to sell his domain name as part of a business or express hopes that the target company would contact him for 'assistance,' nor did Defendant register the site under anything 'giving rise to reasonable inference of intent to sell the domain names for profit' such as 'NameIsForSale.com.'  Defendant has not registered thousands of confusingly similar websites nor expressed a willingness to sell if "the price is attractive enough.'  (citations omitted).

The Court found support for its decision in both the Sixth Circuit's recent decision in Lucas Nursery & Landscaping, Inc., 2004 WL 403213 (6th Cir., Mar. 5, 2004) as well as in the Legislative history of the ACPA, where Congress noted that "noncommercial uses of a mark, such as for comment, criticism, parody, newsreporting etc. . . . are beyond the scope of the bill's prohibition." S. Rep. 106-40, 9.

Trade Libel Claims Proceed

On this motion, the Court also held that issues of fact precluded it from resolving plaintiff's libel and trade libel claims.  Among other things, the Court held that issues of fact precluded it from determining whether the acts of Lincoln Storage could be attributed to Mayflower under the doctrine of apparent authority.  As a result, the Court held it could not rule on the propriety of defendant's web sites attempts to hold Mayflower responsible for Lincoln Storage's alleged misconduct, or whether defendant was negligent in so implying.