People for the Ethical Treatment of Animals v. Doughney
263 F.3d 359 (2001)
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Rule of Law:
Registering a domain name identical to a protected trademark constitutes trademark infringement and violates the Anticybersquatting Consumer Protection Act (ACPA) if it creates a likelihood of confusion for internet users. A parody defense fails if the domain name itself does not simultaneously convey that the site is a parody, as the initial interest confusion is not cured by the website's content.
Facts:
- People for the Ethical Treatment of Animals (PETA) is an animal rights organization that holds a registered service mark for 'PETA'.
- In 1995, Michael Doughney, who was familiar with PETA, registered the domain name 'peta.org'.
- When registering, Doughney falsely represented that the domain was for a non-existent non-profit educational organization called 'People Eating Tasty Animals'.
- Doughney created a website at the address titled 'People Eating Tasty Animals,' which promoted views antithetical to PETA's, such as meat consumption and hunting.
- The website contained a hyperlink to PETA's official website with the text 'exit immediately'.
- When PETA requested Doughney transfer the domain name in 1996, he refused.
- Doughney was quoted in a publication stating that if PETA wanted the domain, 'they should make me an offer.'
- On his website, Doughney posted that PETA could 'negotiate a settlement with me.'
Procedural Posture:
- People for the Ethical Treatment of Animals (PETA) sued Michael Doughney in the U.S. District Court for the Eastern District of Virginia.
- PETA's complaint alleged service mark infringement, unfair competition, dilution, and cybersquatting.
- On PETA's motion for summary judgment, the district court ruled in favor of PETA.
- The district court then denied PETA's subsequent motion for attorney's fees and costs.
- Doughney, as appellant, appealed the summary judgment ruling to the U.S. Court of Appeals for the Fourth Circuit.
- PETA, as appellee and cross-appellant, cross-appealed the denial of its motion for attorney's fees and costs.
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Issue:
Does registering a domain name that is identical to a protected service mark for the purpose of creating a parody website constitute service mark infringement, unfair competition, and a violation of the Anticybersquatting Consumer Protection Act (ACPA)?
Opinions:
Majority - Gregory, Circuit Judge
Yes, registering a domain name identical to a protected service mark for a parody website constitutes service mark infringement, unfair competition, and a violation of the ACPA. The court found that Doughney's use of the 'peta.org' domain name constituted trademark infringement because it was used 'in connection with goods or services' by preventing users from reaching PETA's site and by linking to other commercial websites. Furthermore, it created a likelihood of confusion. Doughney's parody defense failed because a successful parody must convey two simultaneous messages: that it is the original and also that it is not the original. The domain name 'peta.org' only conveyed the first message, causing initial confusion that was not remedied until a user had already accessed the site's content. The court also found Doughney violated the ACPA by demonstrating a 'bad faith intent to profit,' based on the statutory factors, including his false registration information, his intent to divert users, his pattern of registering famous names, and his public statements suggesting PETA should make him an offer for the domain.
Analysis:
This case is a landmark decision in early internet trademark law, solidifying the application of the 'initial interest confusion' doctrine to domain names. It establishes that a domain name which is identical to a trademark can cause actionable confusion even if the content of the website eventually clarifies the source. The ruling significantly narrows the scope of the parody defense in cybersquatting cases, requiring the parody to be evident from the domain name itself, not just the subsequent content. This precedent has been instrumental in protecting trademark holders from cybersquatters who use identical marks to divert traffic or tarnish a brand under the guise of parody.
