Morrison & Foerster, Llp v. Wick, CIV.A.00-B-465.

• Decision Date: 19 April 2000
• Docket Number: No. CIV.A.00-B-465.,CIV.A.00-B-465.
• Citation: 94 F.Supp.2d 1125
• Parties: MORRISON & FOERSTER LLP, Plaintiff, v. Brian WICK and American Distribution Systems, Inc., Defendants.
• Court: U.S. District Court — District of Colorado

94 F.Supp.2d 1125

MORRISON & FOERSTER LLP, Plaintiff, v. Brian WICK and American Distribution Systems, Inc., Defendants.

No. CIV.A.00-B-465.

United States District Court, D. Colorado.

April 19, 2000.

Roxanne Jensen, Tarek F.M. Saad, William R. Wade-Gery, Morrison & Foerster LLP, Denver, CO, for Plaintiff.

Ronald G. Rossi, Rossi & Maricle, P.C., Denver, CO, for Defendants.

FINDINGS OF FACT, CONCLUSIONS OF LAW & ORDER

BABCOCK, District Judge.

In this Internet action brought, inter alia, pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"), Morrison & Foerster moves for a preliminary and permanent injunction. Defendants, Brian Wick and American Distribution Systems, Inc. ("ADSI"), oppose this motion. The issues are fully briefed. The parties stipulated to consolidation of the preliminary injunction hearing with a trial on the merits, and oral arguments were heard on March 30, 2000. For the reasons set forth below, I grant Morrison & Foerster's motion and find in favor of Morrison & Foerster. Federal question jurisdiction is proper in this Court pursuant to 28 U.S.C. § 1331.

I. The World Wide Web

Before reciting the facts established by the evidence, I begin with a brief explanation of the relevant technology. The Internet, or the World Wide Web, is a network of computers that allows people to access information stored on other computers within the network. See Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 492 (2d Cir.2000). "Information on the Internet is lodged on files called web pages, which can include printed matter, sound, pictures, and links to other web pages. An Internet user can move from one page to another with just the click of a mouse." Id. Web pages or web sites are designated by addresses called domain names.

A domain name is made up of two components: a top level domain and a secondary level domain. See id. The top level domain is the suffix of the domain name, and the Internet is primarily divided into six top level domains: "(1) .edu for educational institutions; (2) .org for non-governmental and non-commercial organizations; (3) .gov for governmental entities; (4) .net for networks; (5) .com for commercial users; and (6) a nation-specific domain, which is .us in the United States." Id. at 492. The secondary level domain is the remainder of the address, and can consist of letters, numbers, and some typographical symbols. Certain symbols, such as ampersands ( & ), cannot be used in a domain name. (Tr. Exh. 30, Register.com Domain Name Rules).

Web sites are used by many companies to provide product information and sell products online. Consumers need an easy way to find certain companies to order products or gather information. "The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com." Sporty's, 202 F.3d at 493. If this method is unsuccessful, a user can use a "search engine" which, theoretically, will find all web pages on the Internet containing a particular word or phrase.

Registrars assign domain names on a first-come, first-served basis upon payment of a registration fee. See id. Register.com, the registrar used in this case, charges $75.00 per domain name. Domain name registrars do not inquire into whether a domain name request matches or conflicts with another's trademark. See id. Lack of regulatory control caused problems of cybersquatting and cyberpiracy. See id. (citing Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir.1998)). "Cybersquatting involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners." Id. Trademark owners are frequently willing to pay "ransom" in order to protect their marks. See id.; H.R.Rep. No. 106-412, at 5-7; S.Rep. No. 106-140, at 4-7 (1999).

The ACPA was passed in November 1999 to address these concerns, and to "protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks — a practice commonly referred to as `cybersquatting'." S.Rep. No. 106-140, at 4.

II. Background

The following facts are established by the direct and circumstantial evidence. The law firm of Morrison & Foerster was founded in 1883. It has seventeen offices worldwide, with over 700 attorneys. Since 1975, Morrison & Foerster has provided legal services under the service mark, Morrison & Foerster. Since November 1991, Morrison & Foerster has owned and maintained United States Trademark Registration No. 1,665,352 for the mark MORRISON & FOERSTER for legal services. (Tr. Exh. 3, Cert. of Reg.). In 1997, the trademark office issued a Declaration of Use and Incontestability of a Mark under Sections 8 and 15, for the mark MORRISON & FOERSTER. (Tr. Exh. 28). In 1999, the firm's advertising and marketing budget was approximately $1 million.

Morrison & Foerster is the registered owner of the domain name www.mofo.com. Morrison & Foerster is commonly known in the legal community both as Morrison & Foerster and as "MoFo." The firm utilizes its Internet web site to market and promote its services, and to provide a point of contact for customers and attorneys seeking employment. In addition to owning the registered trademark MORRISON & FOERSTER, since December 1996 the firm has also owned the United States Trademark Registration No. 2,020,689 for the mark MOFO. (Exh. L to Dunham Decl., Cert. of Reg.).

On October 24, 1999, Mr. Wick, using the names NameIsForSale.com and Morri, Son & Foerster, registered the domain names www.morrisonfoerster.com, www.morrisonandfoerster.com, www.morrisonforester.com, and www.morrisonandforester.com through the online registrar, www.register.com. On October 27, 1999, Morrison & Foerster registered the domain names www.morrisonfoerster.org, www.morrisonfoerster.net, www.morrisonandfoerster.net, and www.morrisonandfoerster.org. At that same time, it attempted to register the domain names www.morrisonfoerster.com and www.morrisonandfoerster.com. Morrison & Foerster intended to establish web sites that would link to the firm's existing web site at www.mofo.com. However, because Mr. Wick already registered these domain names three days earlier, it was unable to do so.

According to www.register.com records, the administrative contact for www.morrisonfoerster.com and w ww.morrisonandfoerster.com was "Brian Wick, bgw@earthnet.net." (Tr. Exhs.15, 16). Under www.register.com rules, the administrative contact owns the domain name. (Registration Agreement ¶ 3). The other two domain names registered by Mr. Wick — www.morrisonforester.com and www.morrisonandforester.com — employ a common misspelling of Morrison & Foerster. The administrative contact for these domain names is also "bgw@earthnet.net." (Tr. Exh. 25). Registration records show that shortly before registering the four domain names at issue, Defendants registered www.nameisforsale.com as a domain name. According to www.register.com's records, www.nameisforsale.com is registered by NameIsForSale.com, an entity that lists the same post office box address as Defendants Wick and ADSI, a Colorado corporation of which Mr. Wick is President, Secretary, registered agent, sole Director and sole Shareholder. Records also show that the administrative contact for the www.nameisforsale.com domain name is Brian Wick at "bgw@earthnet.net."

The four web sites at issue, established by Mr. Wick, are very different than Morrison & Foerster's official site at www. mofo.com. Although Mr. Wick's web sites displayed different things at different times, print outs of his sites state: "We're your paid friends!"; "Best friends money can buy"; "Greed is good!"; "We bend over for you ... because you bend over for us!"; "Parasites No Soul ... No Conscience ... No Spine ...... NO PROBLEM". (Tr. Exh. 22). Also on the web sites appeared a copy of a letter to Mr. Wick from Morrison & Foerster regarding infringement of the mark. (Tr. Exh. 22). Finally, the web sites contained hyperlinks which allowed a user to link on to other offensively named web sites, such as: www.Lets DoSomeIllegalSteroids.com, www.GestapoTactics.com, www.HolocaustMemorial.com, www.MightAsWellFireUpTheOvens.com, www.JewKike.com, www.NoIrishNeedApply.com., www. NativeAmericansAreFinallyGettingTheirLandBack.com, www.WhatExcuseDoWeGetToUseForTheNextColumbineHig hSchoolTragedy.com. (Tr. Exhs.22, 37). Also listed as ADSI's "future web sites" were: www.PillsBuryMadison.com, www.ProSkauerRose.com, www.SherManhoWard.com, www.GraHamJames.com.

Morrison & Foerster's March 1, 2000 complaint states the following claims for relief:

(1) Cybersquatting in violation of the ACPA;

(2) Unfair Competition and False Designation of Origin in violation of 15 U.S.C. § 1125(a);

(3) Trademark Infringement in violation of 15 U.S.C. § 1114;

(4) Dilution in violation of 15 U.S.C. § 1125(c);

(5) Trademark Infringement & Unfair Competition;

(6) Intentional Interference with Current and Prospective Economic Advantage;

(7) Defamation; and

(8) Business Disparagement.

Morrison & Foerster's Motion for a Temporary Restraining Order and Preliminary Injunction was heard on March 9, 2000. I entered a Temporary Restraining Order and set bond at $280.00, pursuant to Mr. Wick's testimony that each site was worth $75.00. On March 30, 2000, I held a hearing on the Motion for Preliminary Injunction consolidated with a trial on the merits, pursuant to Rule 65(a).

III. Standards for Injunctive Relief

Rule 65(a)(2) allows me to consolidate a preliminary injunction hearing with a trial on the merits:

(a) Preliminary Injunction.

. . . . .

(2) Consolidation of Hearing With Trial on Merits. Before or after the commencement of the hearing of an ...