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The nonprofit animal-rights organization People for the Ethical Treatment of Animals was awarded summary judgment June 12 in a cybersquatting case against an individual who registered the domain name “peta.org” and used it for a Web site devoted to a nonexistent organization called People Eating Tasty Animals ( People for the Ethical Treatment of Animals Inc. v. Doughney, E.D. Va., CA No. 99-1336-A, June 12, 2000). PETA is a nonprofit, charitable corporation established in 1980 that, in 1992, was granted a U.S. trademark for the service mark “PETA” for the educational services the organization offers regarding animal-rights welfare. PETA has used the trademark and trade name in interstate commerce continuously since 1980. In 1995, defendant Michael Doughney registered peta.org with Network Solutions Inc., representing to the registrar that the domain name would be used by the nonprofit organization People Eating Tasty Animals. In fact, no such organization existed either at the time of the registration or since. Doughney used the Web site to disseminate materials that the court found “antithetical to PETA’s purpose.” These included a description of the Web site as “a resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research,” and links to commercial sites purveying leather goods and meats. “Until an Internet user actually reached the ‘peta.org’ Web site, where the screen read ‘People Eating Tasty Animals,’” the court found, “the user had no way of knowing that the ‘peta.org’ Web site was not owned, sponsored, or endorsed by PETA.” In January 1996, PETA sent a letter to Doughney, notifying him that “PETA.ORG” infringed its service mark; then contacted NSI about its complaint. NSI put the domain name on “hold” status. Doughney then moved the contents of the peta.org Web site to http://www.mtd.com/tasty, where it remains today. PETA then brought a lawsuit against Doughney in the U.S. District Court for the Eastern District of Virginia, alleging trademark infringement, unfair competition, service mark dilution, and cybersquatting. PETA withdrew three other counts from its amended complaint prior to the court’s ruling. PETA also dropped damages claims and opted to seek only equitable relief — an injunction against the defendant’s use of peta.org and a compelled assignment of peta.org to PETA. PETA then moved for summary judgment on the trademark and cybersquatting issues, and the defendant, whose defense was based on his claim that peta.org was a parody site and thus protected speech, countermoved for summary judgment. TRADEMARK AND UNFAIR COMPETITION A prima facie case for trademark infringement and unfair competition requires plaintiff to prove: (1) that plaintiff possesses a mark; (2) that defendant is using plaintiff’s mark; (3) that such use occurs in commerce; (4) in connection with the sale, distribution, or advertising of goods and services; and (5) in a way that is likely to cause confusion among consumers. Writing the court’s opinion, Judge Claude M. Hilton found that PETA owned the mark and that the defendant admitted the mark’s validity and incontestability, thus making the mark presumptively distinctive as a matter of law. The court also found that the defendant used PETA’s mark and admitted that his use of it was “in commerce.” With regard to whether the use occurred “in connection” with the sale, distribution, or advertisement of goods and services, the court found that this prong of the test did not require that the defendant actually cause goods or services to be placed into the stream of commerce. Instead, the court looked at PETA’s goal of distributing information and noted that the defendant’s use of the peta.org Web site was likely to prevent users from reaching PETA’s own Web site. The court also noted that the links on the peta.org Web site to commercial entities were enough to establish the “in connection” element of the claim. “Under the law, even one such link is sufficient to establish the commercial use requirement of the Lanham Act,” the court found. The court also said that the defendant’s use of PETA’s mark caused actual confusion. “Doughney copied the Mark identically,” the court wrote. “This creates a presumption of likelihood of confusion among internet users as a matter of law. In addition, there was evidence of actual confusion by those using the internet who were trying to locate PETA and instead found Doughney’s web site,” the court wrote. The defendant’s website diluted PETA’s mark, the court found. In order to prevail when seeking summary judgment on a dilution claim, a plaintiff must show that the undisputed facts demonstrate that peta.org diluted the PETA mark’s “distinctive quality,” the court wrote. “Defendant is guilty of ‘blurring’ the famous PETA mark because (1) Defendant used the identical PETA Mark to mentally associate peta.org to the PETA Mark; and (2) such use caused; (3) actual economic harm to the PETA Mark by lessening its selling power as an advertising agent for PETA’s goods and services,” the court wrote. CYBERSQUATTING The court also found that PETA was entitled to summary judgment under the Anticybersquatting Consumer Protection Act. For PETA to succeed on a summary judgment motion under ACPA, the court said, the undisputed evidence must show that defendant: (1) has a bad faith intent to profit from using the peta.org domain name; and (2) the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous PETA mark. Given that the second prong had already been established in the trademark analysis, the court said, the focus remained on whether defendant had the requisite “bad faith” intent. The court concluded that Doughney met the “bad faith” prong, in part because he possessed no intellectual property rights in peta.org when he registered the domain name in 1995, and because the domain name is not related to his name or to any name that might be used to identify him. In addition, the court wrote, Doughney had not engaged in any use of peta.org in relation to bona fide offerings of goods or services prior to registering the domain name. Also, the court wrote, Doughney used the PETA mark in a commercial manner and clearly “intended to confuse, mislead, and divert internet users into accessing his Web site which contained information antithetical and therefore harmful to the goodwill represented by the PETA mark.” The defendant declared on his Web site that he would see what PETA was willing to offer him for the domain name if the organization did not like the content he offered, and falsely declared when registering the domain name that “People Eating Tasty Animals” was an extant nonprofit organization, and that “PETA” did not infringe on any trademark, the court wrote. Finally, the court noted, Doughney registered other domain names that were identical or similar to the marks of other individuals or organizations whom he opposed. PARODY, TRADEMARK MISUSE DEFENSES The court dismissed Doughney’s argument that the site was a parody. “A parody exists when two antithetical ideas appear at the same time,” the court stated, adding that in this instance an Internet user would not know that he or she was not at PETA’s official Web site until after using PETA’s mark to access the Web site. “Doughney knew he was causing confusion by use of the Mark and admitted that it was ‘possible’ that some Internet users would be confused when they activated ‘peta.org’ and found the ‘People Eating Tasty Animals’ Web site,” the court wrote. “Therefore, the two images: (1) the famous PETA name and (2) the ‘People Eating Tasty Animals’ Web site was not a parody because not simultaneous.” [sic] The court also ruled against Doughney’s affirmative defense of trademark misuse. Doughney noted that PETA itself registered domain names such as “ringlingbrothers.com” and “voguemagazine.com” for the purpose of publicizing its claims that the Ringling Bros.-Barnum & Bailey Combined Shows and Cond� Nast publications supported or engaged in the mistreatment of animals. The court noted that in those cases PETA voluntarily surrendered the domain names to the complaining companies upon receiving complaints. “Doughney had no relation to any of these Web sites and suffered no damages from PETA’s operation of any of these Web sites,” the court wrote. The court said Doughney’s defense relied in part on a First Amendment argument — that PETA sought to suppress his expressions of disagreement with the organization. But the court dismissed that argument, noting that PETA had not attempted to suppress his speech when he moved the peta.org contents to a new site. The court also dismissed a related “unclean hands” argument by noting that what is relevant in the “unclean hands” context is whether plaintiff dirtied his hands acquiring the rights at issue — in this case, the right to the PETA mark. That PETA may have engaged in similar cybersquatting activities against companies such as Cond� Nast and Ringling Brothers, the court said, cannot establish an “unclean hands” defense for Doughney with regard to the PETA mark and the peta.org domain name. The court granted summary judgment to plaintiffs and ordered Doughney to relinquish the peta.org domain name and assign it to PETA, and to limit his use of future domain names to those that do not use PETA’s marks “and/or any colorable imitation of such marks, or any thing or mark confusingly similar thereto.”

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