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Click here for the full text of this decision FACTS:Following a bench trial, the district court determined that appellant Joseph Maxwell’s Website that complained about appellee TMI Inc. violated the anti-dilution provision of the Lanham Act, 15 U.S.C. �1125(c); the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. �1125(d); and the Texas Anti-Dilution Statute, Texas Business & Commercial Code �16.29. Maxwell intended to buy a house from TMI, Inc., a company that builds houses under the name TrendMaker Homes. Unhappy with what he viewed as the salesperson’s misrepresentations about the availability of a certain model, Maxwell decided to create a Website to tell his story. Maxwell registered an internet domain name � www.trendmakerhome.com� that resembled TMI’s TrendMaker Homes mark. (TMI had already been using the domain name www.trendmakerhomes.com.) Maxwell registered his domain name for a year; after the year passed, Maxwell removed the site and let the registration expire. During its existence, the site contained Maxwell’s story of his dispute with TMI, along with a disclaimer at the top of the home page indicating that it was not TMI’s site. It also contained what Maxwell called the Treasure Chest. Maxwell envisioned the Treasure Chest as a place for readers to share and obtain information about contractors and tradespeople who had done good work. During the year of the site’s existence, the Treasure Chest only contained one name, that of a man who had performed some work for Maxwell. The site did not contain any paid advertisements. The parties agree that some e-mail intended for TMI was sent to Maxwell’s site. They also agree that Maxwell forwarded each of these messages to TMI. Shortly after Maxwell’s registration expired, TMI sent Maxwell a letter demanding that he take down the site and relinquish the www.trendmakerhome.comdomain name. In response, Maxwell attempted to re-register the domain name. His attempt was unsuccessful, however, because TMI had acquired the domain name once Maxwell’s registration expired. Instead, Maxwell registered the domain name www.trendmakerhome.info. This lawsuit followed. Because of the suit, Maxwell has never posted any content on the trendmakerhome.info site. Almost immediately, the parties entered into settlement negotiations. Maxwell retained a lawyer, but knew he would not be able to afford to pay the legal fees that would be required to defend the entire lawsuit. TMI and Maxwell’s lawyer negotiated a settlement, while Maxwell researched his case. Following this research, Maxwell backed out of the settlement agreement and proceeded pro se. He continued to represent himself through the bench trial on Jan. 17, 2003. After the trial, the district court issued a memorandum and order finding Maxwell violated the ACPA as well as the federal and Texas anti-dilution statutes. The district court also issued an injunction forbidding Maxwell “from using names, marks, and domain names similar to” ten of TMI’s marks, including Trend Maker, and ordering Maxwell to transfer trendmakerhome.info to TMI. The district court also required TMI to submit a proposed judgment and gave Maxwell ten days to respond to that proposal. Maxwell immediately filed a notice of appeal. Without allowing Maxwell 10 days to respond, the district court signed TMI’s proposed judgment. In many ways, this judgment expanded the memorandum and order’s conclusions. For example, the memorandum and order contained no findings about either common law or statutory unfair competition. Yet the judgment stated that Maxwell’s actions constituted unfair competition under both common law and the Lanham Act. The judgment provided a broader injunction than the one contained in the district court’s original order by adding three marks to the injunction. The judgment also awarded statutory damages of $40,000 and, without elaboration, found the case to be an “exceptional case,” justifying an award of $40,000 in attorney’s fees. Additionally, the judgment addressed how Maxwell was to pay the judgment: “[w]ithin twenty (20) days after entry of this Order, defendant shall hand-deliver to plaintiff’s lawyer a cashier’s check in the amount of $80,000, made payable to TMI, Inc.” Maxwell then filed his second notice of appeal. TMI made several related claims in this suit. In the first, TMI alleged that Maxwell violated ACPA. Additionally, TMI alleged that Maxwell’s actions diluted its mark and thus violated the Texas Anti-Dilution Statute, as well as the anti-dilution provision of the Lanham Act. HOLDING:Reversed and rendered. The court concludes that Maxwell’s site is a non-commercial gripe site. The court first addresses whether the two relevant sections of the Lanham Act � the anti-dilution provision and ACPA � require commercial use for liability. The district court concluded that ACPA requires commercial use, but did not address commercial use in the context of the anti-dilution provision. TMI argues that the anti-dilution provision applies even in the absence of commercial use. The court concludes that the anti-dilution statute’s language conditions liability on commercial use. The court finds Maxwell’s site was non-commercial, even though he added the Treasure Chest to draw more people to his site so that they would see his story. He never accepted payment for a listing on the Treasure Chest, and he charged no money for viewing it. Further, TMI presented no evidence that Maxwell had any intent to ever charge money for using the site. Additionally, Maxwell’s site contained neither advertising nor links to other sites. And unlike the defendants in E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002), Maxwell was not engaged in the business of selling domain names. The court finds no evidence to suggest that Maxwell’s use was commercial, and the district court’s findings to the contrary were clear error. However, the court goes on to say that the ACPA’s language does not explicitly contain a commercial use requirement. Rather, it contains a requirement that the defendant possess a bad faith intent to profit from the confusingly similar mark. The court discusses the nine non-exclusive factors for determining whether a defendant has such a bad faith intent to profit: 1.the trademark or other intellectual property rights of the person, if any, in the domain name; 2.the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; 3.the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; 4. the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; 5. the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; 6. the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; 7. the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; 8.the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and 9.the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous. Although factors 1, 2, 3, and 4 seem to fall in favor of TMI because Maxwell had no pre-existing use of the TrendMaker name and Maxwell did not dispute that the mark was distinctive and famous, importantly, factors 4, 5 6,7, and 8 favor Maxwell. Under factor 4, Maxwell made bona fide noncommercial use of the mark in his site, and for purposes of factor 5, TMI made no showing that Maxwell intended to divert customers from its own site. Turning to factor 6, Maxwell never offered to sell the domain name, and certainly never had a pattern of selling domain names to mark owners. Maxwell did not behave improperly when providing contact information, as addressed in factor 7. Factor 8 concerns the registration of multiple domain names; Maxwell’s registration of his second site related to TrendMaker Homes does not argue in favor of finding bad faith intent to profit. Maxwell registered the second domain name for the same purposes as the first one and only after his registration of the first name expired. Finally, the court notes that Maxwell’s conduct is not the kind of harm that ACPA was designed to prevent. He is not a cybersquatter seeking to to profit by purchasing marks or names similar to marks, and then selling them back to the owners. The court also overrules the district court’s finding that Maxwell violated the Texas Anti-Dilution Statute, noting that it “is not intended to address non-trademark uses of a name to comment on, criticize, ridicule, parody, or disparage the goods or business of the name’s owner.” Express One Int’l, Inc. v. Steinbeck, 53 S.W.3d 895, 899 (Tex. App. � Dallas 2001, no pet.)(citing McCarthy). Because this exception describes Maxwell’s use, Maxwell’s domain name is not actionable under the Texas Anti-Dilution Statute. OPINION:Prado, J.; Prado, Barksdale, and Davis, JJ.

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