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The Prosecution of Cybergripers Under the Lanham ACT

Introduction

The modern value of a trademark lies not in the product but in what one commentator calls the "atmospherics" surrounding the mark itself.1 As the American capitalist system has matured, so has the scope of legal protection afforded owners of marks in exchange for their investment in creating the atmospherics.2 To illustrate: an early twentieth century court found that dairy products bearing the same trade name- Borden's-but originating from different producers would not create consumer confusion because the goods, ice cream and condensed milk, were not in direct competition.3 This outcome is hard to imagine under contemporary trademark jurisprudence, which prevents the use of the prefix Me by entities other than the fast-food chain McDonalds, even by producers not in the restaurant industry, because other uses of those two letters devalues the immense investment the Golden Arches has made to distinguish itself in the marketplace.4

Owners of famous marks vigilantly protect the uniqueness of their brand identity by enforcing the federal property rights granted them under the Lanham Act.5 Claims available to intellectual property owners include consumer confusion and unfair competition under 15 U.S.C. §§ 11146 and 1125(a),7 and dilution8 under the Federal Trade-mark Dilution Act (FTDA), 15 U.S.C. § 1125(c).9 More recent claims of trademark infringement on the Internet may also be filed under the And Cybersquatting Protection Act (ACPA)10 and the Internet Corpo-ration for Assigned Names and Numbers' (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP).11

The ease with which Web sites can be created and accessed presents a particular challenge for mark owners who strive to control the image of their brand.12 The challenge has been particularly apparent in litigation arising from the unauthorized use of famous marks in Web site domain names;13 an unauthorized use categorized as either "cybersquatting" or "cybergriping." Both cybersquatter and cybergriper Web sites typically contain the targeted entity's mark in the domain name, but the motivation behind the use of the mark is distinguishable. The intent of a cybersquatter is generally to profit from the unauthorized use of a mark by holding a domain name hostage from the owner of a mark,14 whereas a cybergriper uses a mark in a domain name to aid in the dissemination of a negative message about the mark owner.15

A mark can be incorporated into the domain name of a cybergriper or cybersquatter Web site in two ways: either alongside a pejorative, such as walmartsucks.com and starbucked.com,16 or simply as a standalone name, such as kmart.com. Courts deciding cases in which the unauthorized use of a mark in a domain name includes a pejorative have developed a bright-line rule, which states that such a use is permissible under the Lanham Act because the average consumer would obviously be aware that a company-sponsored Web site would not use a pejorative in its own domain name.17 Thus no Lanham Act violation occurs because no consumer confusion arises. But what about those unauthorized uses of stand-alone marks? The jurisprudence surrounding litigation of this sort of infringement is much more muddled, especially when the mark in question signifies not the new-age religion of fast-food consumerism promoted by McDonalds but the age-old religion of Christianity promoted by Jews for Jesus. Here is where the synchronous functions of the Internet as a marketplace of ideas and a marketplace of consumerism meet.

In part I of this note, I discuss how courts examine cybergriper Web sites under the traditional likelihood of confusion analysis of 15 U.S.C. §§1114 and 1125(a).18 While courts deciding these cases are generally correct in finding a likelihood of confusion, the analyses are ultimately unsatisfying because the domain names and content of the Web sites are not considered components of one entity. The failure by courts to adopt a real-world approach that views a domain name as one component of a singular entity-a Web site-results in offending free expression concerns. I argue that a better approach would consider domain names analogous to titles of expressive works in traditional media, such as film or print.

In part II, I discuss the analyses used by courts in claims brought against cybergripers under the FTDA. In deciding cybergriper claims brought under the FTDA, courts have conflated two references to com-merce contained in the Lanham Act: "use in commerce" for jurisdic-tional purposes under §§ 1114 (1)(a) and 1125(a) and the "noncommercial use" exception to application of the FTDA under § 1125(c)(4)(B). The interchangeable use of two distinct references to commerce has contributed to a perplexing FTDA jurisprudence th...

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