Fairbanks Capital Corp. v. Kenney, CIV. AMD 02-2587.

• Citation: 303 F.Supp.2d 583
• Decision Date: 06 May 2003
• Docket Number: No. CIV. AMD 02-2587.,CIV. AMD 02-2587.
• Parties: FAIRBANKS CAPITAL CORP., Plaintiff v. W. Craig KENNEY, et al., Defendants.
• Court: United States District Courts. 4th Circuit. United States District Court (Maryland)

303 F.Supp.2d 583 FAIRBANKS CAPITAL CORP., Plaintiff
v.
W. Craig KENNEY, et al., Defendants. No. CIV. AMD 02-2587. United States District Court, D. Maryland. May 6, 2003.

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COPYRIGHT MATERIAL OMITTED

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Frederick W. Chockley, III, Mark I. Bailen, Baker and Hostetler, Washington, DC, for Plaintiff.

Barton J. Sidle, Law Office of Barton J. Sidle, Timonium, MD, Peter B. Langbord, Lynberg and Watkins, Los Angeles, CA, Philip Scott Friedman, Friedman Law Offices PLLC, Washington, DC, for Defendants.

MEMORANDUM

DAVIS, District Judge.

Plaintiff, Fairbanks Capital Corporation ("Fairbanks"), instituted this action against defendants W. Craig Kenney and Brian Barr alleging federal trademark and copyright infringement and related state law claims arising out of defendants' creation and maintenance of a website making substantial use of Fairbanks' registered trademark. Fairbanks seeks, inter alia, preliminary and permanent injunctive relief and damages. I conducted a preliminary injunction hearing on February 28, 2003, and the parties have supplemented their pre-hearing contentions and arguments in post-hearing memoranda. I have fully considered all of the parties' arguments and evidentiary materials. For the reasons set forth herein, I shall grant in part and deny in part Fairbanks' motion for preliminary injunction and defendants shall be enjoined from further use of the "FAIRBANKS" mark in their website domain names and in connection with the homepage on the Kenney website.

I. Background

Fairbanks is a financial services company based in Salt Lake City, Utah; it services single-family residential mortgage loans throughout the United States. In the summer of 2000, ContiMortgage Corporation ("Conti"), which was also involved in the mortgage loan servicing industry, sold certain of its assets to Fairbanks.¹ Defendant Kenney is a Maryland homeowner whose mortgage loan was serviced by Conti and, subsequently, by Fairbanks. In consequence of a series of disputes over Kenney's alleged non-compliance with the terms of his mortgage loan documents and Fairbanks' alleged unfair practices in servicing his mortgage loan, Kenney created²

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and currently operates a website, www. conti-fairbanks. com, that he states was "created as an online resource for persons harmed by Fairbanks."³ Indeed, Kenney and Fairbanks have been engaged in federal and state court litigation in connection with their disputes for more than two years.⁴

Upon the institution of this action by Fairbanks on or about August 6, 2002, Judge Motz of this court entered an order granting a temporary restraining order ("the TRO") requiring Kenney to delete "any and all financial statements of Fairbanks Capital Corp. from www. conti-fairbanks. com or any other website he owns or controls." The order also required that Kenney: (1) refrain from any further publication of any of Fairbanks' financial statements, (2) return all of Fairbanks' financial information, and (3) identify all recipients to whom he provided the financial statements. Subsequently, on or about August 16, 2002, I entered an order granting the parties' consent motion to extend the TRO until "further order of this [c]ourt." Thereafter, the case lay dormant for some period of weeks until Fairbanks filed its motion for preliminary injunction in November 2002 and, at about the same time, Kenney filed his motion to dismiss or, in the alternative, for summary judgment. I denied Kenney's alternative motion without prejudice in an order entered on December 16, 2002, and allowed the parties to commence discovery in anticipation of the hearing on the motion for preliminary injunction.⁵

II. Findings of Fact

1. Fairbanks owns United States Trademark Registration 2,206,930, registered by the United States Patent and Trademark Office on December 1, 1998, for the mark "FAIRBANKS" complete with an owl logo.

2. Fairbanks maintains a website at www.fairbankscaptial.com that provides information about the company and its services, including employment opportunities.

3. Kenney has had ongoing disputes regarding the status of his mortgage loan, first with Conti, and then with Fairbanks.

4. Kenney controls and/or owns a website with the address www. contifairbanks.com. Kenney has also registered numerous domain names, including: (1) equicreditfairbanks.com; (2) www.boafairbanks.com; (3) www.fairbankscomplaint.com; (4) www.fairbankscapitalcomplaint.com; (5) citi-fairbanks.com; (6) bankofamericafairbanks.com;

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and (7) www.fairbankscapital.net, most of which redirect users back to www.conti-fairbanks.com, the principal site in dispute.

5. Kenney has recently registered the domain names www.fairbankssucks.com and www.fairbankscapitalsucks.com.

6. The current Kenney website includes a link to www.servicingnews.com, and informs users that they can begin accessing the website, www.conti-fairbanks.com, with the www.servicingnews.com URL link.

7. The Kenney website welcomes users on its homepage by announcing: "WELCOME TO THE FAIRBANKS RESOURCES SITE."

8. The Kenney website homepage also includes a news clip entitled, "AMERICA'S POSTER CHILD FOR MORTGAGE ABUSE." The clip displays a man with his hand blocking what appears to be a reporter and camera man. In the background of the picture there is a building with the "FAIRBANKS" mark (including the owl logo) above the door. The website states that the picture is courtesy of "KUTV 2, Salt Lake City, Utah."

9. The Kenney website has an internal link to a section titled "Our Mission," where Kenney states,

This site is devoted to borrowers who have their home mortgages serviced by Fairbanks. In addition, we provide valuable and timely information to the mortgage industry, attorneys and regulators. Our goal is to provide information in an organized and professional format that can be of value to all who visit. We go to great lengths to insure the information and guidance offered is accurate and non-inflammatory. To accommodate visitors who wish to air their comments or dissatisfaction publicly, we offer a Discussion Forum and from time to time publish Horror Stories submitted by borrowers.

Our primary mission is to insure that borrowers do not lose their homes to a foreclosure due to the misconduct of the servicer or the application of fees that are not provided for in the borrower's mortgage note. We do not provide legal advice. The operator of this web site is a borrower, whose mortgage is serviced by Fairbanks, and wishes to share the information gathered with others similarly situated.

10. The Kenney website homepage states that it is "devoted to helping borrowers resolve problems and providing insight to investors and managers of real estate backed securities." To that end, the website provides links that, inter alia, (1) list the dockets of active federal litigation against Fairbanks (or its entities); (2) track media coverage of Fairbanks (and its entities); (3) allow users to submit their personal information and stories regarding their mortgage experiences with Fairbanks (or its entities); and (4) provide information and sample letters to mortgage companies regarding some of the more common problems a borrower might encounter.

11. The Kenney website provides the names and addresses of Fairbanks entities and officers in the State of Utah and contains a referral service to lawyers specializing in borrower issues, including a link to a website that engages in commercial transactions pertaining to loan, servicing.

12. The mailing address listed for communications to the website owner is "CONTI-FAIRBANKS.COM," P.O. Box 925, Glenco, Maryland 21152, an address used by Kenney.

13. When the key word "Fairbanks" is used in a keyword search in the YAHOO! or GOOGLE web search engines, approximately

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800,000 matches are listed. Neither the Fairbanks website nor the Kenney website is listed in the first 60 matches on YAHOO! or the first 30 matches on GOOGLE.

14. When the key phrase "Fairbanks Capital" is used in a keyword search in the YAHOO! or GOOGLE search engines, approximately 200,000 matches are listed. The Fairbanks website is listed as the first web match in both search engines. The Kenney website is not listed in the first 60 web matches on YAHOO! or the first 30 web matches on GOOGLE, but the ninth match on YAHOO! and the thirteenth match on GOOGLE, entitled "ContiMortgage-public warning (now named Fairbanks Capital)" has a direct link to the Kenney website on its homepage.

15. When the key phrase "Fairbanks Mortgage" is used in a keyword search in the YAHOO! or GOOGLE search engines, approximately 16,000 matches are listed. The Kenney website and the Fairbanks website are listed as the fifty-fifth and fifty-ninth matches, respectively, on YHOO! and neither site is listed in the first 30 matches on GOOGLE.

16. When the key phrase "fairbanks or conti" is used in a keyword search in the Altavista search engine, approximately 663 results are listed. The Kenney website is the first website listed; the Fairbanks website is not listed in the first ten results.

17. When the key phrase "fairbanks or conti mortgage" is used in a keyword search in the GOOGLE search engine, approximately 349 matches are listed. The Kenney website is the first website listed. The Fairbanks website is not listed in the first ten results on GOOGLE.

18. When the key phrase "fairbanks or conti mortgages" is used in a keyword search in the YAHOO! search engine, the Kenney website is the first website listed. The Fairbanks website is not listed in the first ten results.

19. When the key phrase "fairbanks capital" is used in a keyword search in the LYCOS search engine, approximately 350,000 results are listed. The Kenney website is not listed in the first ten results. The Fairbanks website is listed as the first result on YAHOO!.

20. The evidence in the record shows clearly that Kenney is possessed of an unbounded antipathy for Fairbanks and...