Lamparello v. Falwell
420 F. 3d 309 - Court of Appeals, 4th Circuit 2005
Article by Digital Media Law Project
In 1999, Christopher Lamparello registered the domain name www.fallwell.com and used the website to criticize Rev. Jerry Falwell's views concerning gays and lesbians. In September 2003, Falwell initiated an arbitration action against Lamparello pursuant to the Uniform Domain Name Dispute Resolution Policy, claiming trademark infringement, cybersquatting and other torts, and sought to have the domain name transferred to him.
The National Arbitration Forum ruled that Lamparello's use of the domain name was confusing and had been registered in bad faith, and it ordered that the domain name be transferred from Lamaparello to Falwell. Lamparello commenced a lawsuit against Falwell in federal district court, seeking relief from the arbitration decision and a declaration of non-infringement. Falwell counter-claimed, alleging federal trademark infringement, false designation of origin, unfair competition under federal and Virginia law, and cybersquatting.
The district court granted summary judgment to Falwell, enjoined Lamparello from using the mark, and required him to transfer the domain name to Falwell. On appeal, the Fourth Circuit reversed the district court's decision and entered judgment for Lamparello. Avoiding the larger question of whether trademark law applies to websites like Lamparello's that do not use the disputed mark to sell a good or service, the court ruled that Lamparello's use of the domain name, in the overall context of his gripe site, did not create a likelihood of confusion between his site and Falwell's official site. The court rejected the doctrine of "initial interest confusion" for establishing trademark infringement, at least as applied to non-commercial sites critical of the trademark holder. The court also found that Lamparello did not have the "bad faith intent to profit" required for a cybersquatting claim, primarily because he used the domain name and website to engage in criticism and did not have a profit motive.
legalmax selected paragraphs of the judgement
Diana Gribbon Motz, Circuit Judge.
Although the interior pages of Lamparello's website did not contain a disclaimer, the homepage prominently stated, "This website is NOT affiliated with Jerry Falwell or his ministry"; advised, "If you would like to visit Rev. Falwell's website, you may click here"; and provided a hyperlink to Reverend Falwell's website.
At one point, Lamparello's website included a link to the Amazon.com webpage for a book that offered interpretations of the Bible that Lamparello favored, but the parties agree that Lamparello has never sold goods or services on his website. The parties also agree that "Lamparello's domain name and web site at www.fallwell.com," which received only 200 hits per day, "had no measurable impact on the quantity of visits to [Reverend Falwell's] web site at www.falwell.com."
… Reverend Falwell's claims of trademark infringement and false designation fail for a more obvious reason. The hallmark of such claims is a likelihood of confusion — and there is no likelihood of confusion here.
… For all of these reasons, it is clear that the undisputed record evidences no likelihood of confusion. In fact, Reverend Falwell even conceded at oral argument that those viewing the content of Lamparello's website probably were unlikely to confuse Reverend Falwell with the source of that material.
… Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith intent to profit under the ACPA. To the contrary, he has used www.fallwell.com to engage in the type of "comment[][and] criticism" that Congress specifically stated militates against a finding of bad faith intent to profit. See S.Rep. No. 106-140, 1999 WL 594571, at *14. And he has neither registered multiple domain names nor attempted to transfer www.fall.well.com 322*322 for valuable consideration. We agree with the Fifth and Sixth Circuits that, given these circumstances, the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting.