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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Glenn Harrison v. Microfinancial, Inc.

Civil Action No. 03-11437-GAO, 2005 U.S. Dist. Lexis 2804 (D. Mass., February 24, 2005)

Gripe Site Operator Loses Rights To "Your" Domain

Court finds that a disgruntled customer violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering a domain name containing defendant Microfinancial's trademark, at which domain plaintiff operated a website critical of defendant.  The Court determined that plaintiff had registered the domain name with a bad faith intent to profit therefrom, in large part because plaintiff had offered to transfer the domain to Microfinancial if it refunded certain lease payments plaintiff had made which were at the heart of his dispute with defendant, as well as funds plaintiff claims defendant improperly received from third parties.  The Court accordingly granted Microfinancial summary judgment on its ACPA claim.

Disgruntled Customer Operates Gripesite At 

Since 1985, defendant Microfinancial has, through a wholly-owned subsidiary, done business under the name "Leasecomm," in which name it claims a common law trademark.  In support of its business operations, Microfinancial operates websites at the domains and 

Plaintiff entered into a lease with Leasecomm, a subsidiary of Microfinancial.  Unfortunately, plaintiff was dissatisfied with this arrangement, believing he did not receive the equipment or services he thought he was to obtain thereunder. 

As a result, plaintiff registered the domain, at which he launched a website critical of Microfinancial and Leasecomm.  The website described plaintiff's experiences with defendant, as well as investigations launched by governmental agencies into the activities of Microfinancial and Leasecomm.  The website also contained links to the websites of, attorneys who had brought suit against Microfinancial.

Microfinancial responded by commencing a proceeding before the World Intellectual Property Organization ("WIPO"), seeking to compel plaintiff to surrender the domain.  Defendant prevailed, and WIPO directed the transfer of the domain name.  In an effort to forestall this transfer, plaintiff commenced suit.

Court Holds Plaintiff Violates The Anticybersquatting Consumer Protection Act

Microfinancial counterclaimed, asserting that plaintiff's registration of violated the ACPA.  The Court agreed, and awarded defendant summary judgment.

Bad Faith Intent To Profit

A defendant violates the ACPA when he registers and/or uses a domain name that is identical or confusingly similar to another's distinctive mark with a "bad faith intent to profit" therefrom.  The ACPA sets forth nine non-exclusive factors that should be analyzed in determining whether a party acted with the requisite bad faith.  Applying these factors, the Court found that plaintiff acted in bad faith when he registered a domain containing defendant's "leasecomm" mark.  The Court found support for this conclusion in the facts that:

Harrison has no trademark or other intellectual property rights in the domain name (factor I), the domain name does not consist of Harrison's legal name or a name that is otherwise commonly used to identify him (factor II), he has not previously used the domain name in connection with the bona fide offering of any goods or services (factor III), and he has registered multiple domain names which are identical or confusingly similar to the defendant's trademarks (factor VII).\

The Court also found support for this holding in its determination that Harrison had registered the domain:

to divert consumers from Microfinancial's online location to his website dedicated to disparaging Microfinancial and Leasecomm.  So foreseeable was it that persons interested in contacting or learning about Leasecomm might be misled into thinking "" was the company's own address that Harrison's use of it in the circumstances can only be understood as a purposeful effort to use the likely confusion as a way of getting his criticism about Leasecomm to an intended audience of the company's customers or potential customers.

While each of these factors contributed to its holding, the Court rested its finding that plaintiff acted in bad faith principally on its determination that plaintiff had offered to transfer the domain to defendant if it refunded the lease payments plaintiff had made to defendant, as well as monies plaintiff claimed defendant improperly received from third parties.

Having found that plaintiff had registered the domain with a bad faith intent to profit thereon, the Court awarded defendant summary judgment on its ACPA claim.

In reaching this result, the Court rejected plaintiff's argument that his conduct was protected by the First Amendment.  Said the Court:

Finally, I reject Harrison's argument to the contrary and conclude that the First Amendment does not protect Harrison's use of the domain name where such use is proscribed by the ACPA.

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