Internet Trademark Case Summaries
Her, Inc. v. Re/Max First Choice, LLC
468 F. Supp. 2d 964 (S.D. Ohio 2007) (granting preliminary injunction against use of disputed domain names); 2007 U.S. Dist. LEXIS 94629 (S.D. Ohio Dec. 12, 2007) (amending preliminary injunction to transfer disputed domain names to plaintiff)
Plaintiffs provided real estate services using the registered trademarks HER, REAL LIVING, and RELAX WITH REAL LIVING, and operated a website at “realliving.com.” Defendant Barlow formerly worked as a real estate agent for plaintiffs, but left to work for defendant Re/Max, a direct competitor of plaintiffs. In May 2006, nearly 700 of plaintiffs’ agents received an email from “herbie@INSIDEREALLIVING.COM,” which boasted an “insider’s look” at plaintiffs’ business and its leadership. Among other things, the email—signed by “Herbie R. Jr.”(an apparent reference to one of plaintiffs’ executives)—claimed that plaintiffs’ website was “one of the least accurate web sites on the Internet when it comes to having a complete inventory of homes available for your clients to see.” Plaintiffs alleged that they received many phone calls and emails asking them about the validity of this email. In June 2006, plaintiffs’ agents received a second email from “Herbie,” this time criticizing a statement on plaintiffs’ website that claimed to allow users to “See all homes for sale—Not just our listings.” The email asserted that plaintiffs’ website deliberately did not include listings of Re/Max agents, including Barlow. After this email, plaintiffs altered their website to claim to allow users to “see virtually all the homes.” Barlow admitted that he sent the emails and registered the “insiderealliving.com” domain name, the website of which displayed critical content similar to his emails. Barlow also registered domain names containing the names of plaintiffs’ executives, including “harleyroudajr.com,” “harleyerouda.com,” “harleyroudasr.com,” “kairarouda.com,” and “kairasturdivantrouda.com,” as well as domain names containing the phone numbers and addresses of plaintiffs’ executives. Plaintiffs claimed that visitors to these sites were diverted to Re/Max’s website; defendants argued that the websites were “intended to link to the ‘insiderealliving’ website” and this diversion to Re/Max’s site was unintentional. Plaintiffs sued for cybersquatting, unfair competition, infringement, and dilution, and moved for a preliminary injunction. Defendants argued that the website provided “legitimate criticism” of plaintiffs misrepresentations on their website and thus was a “legitimate exercise” of their First Amendment rights. The court granted plaintiffs’ motion, finding that plaintiffs established a likelihood of success on its cybersquatting and infringement claims. Regarding cybersquatting, the court held first that plaintiffs had valid marks, including REAL LIVING, and that the personal names of plaintiffs’ executives had acquired secondary meaning due to their long association with the business such that their names and the real estate business had “become synonymous in the public mind.” Second, the court held that plaintiffs’ marks were distinctive or famous when the domain names were registered. Third, the court held that defendants’ domain names were confusingly similar to and dilutive of plaintiffs’ marks. The court rejected defendants’ argument that adding the word “inside” to “realliving” in the domain name eliminated confusion, noting that there was evidence of actual consumer confusion surrounding the “insiderealliving.com” site. Fourth, the court held that defendants used, registered, and trafficked in the domain names. Lastly, the court held that defendants had a bad-faith intent to profit from plaintiffs’ marks, finding that (a) defendants had no intellectual property rights in the domain names, (b) the domain names consisted entirely of plaintiffs’ business and personal names, (c) defendants had never used the domain names previously in a bona fide offering of goods or services, (d) although defendants had a bona fide First Amendment right to criticize plaintiffs, defendants could not claim a “legitimate, noncommercial purpose” for its domain names because defendants competed directly with plaintiffs, (e) defendants’ diversion of Internet users away from plaintiffs’ website harmed the goodwill of plaintiffs’ marks, regardless of whether users were routed to the Re/Max site or the “insiderealliving.com” site, and this diversion “was designed with a long-term financial motive in mind” (i.e., to have defendants’ homes for sale listed on plaintiffs’ website), and (f) plaintiffs’ marks were clearly distinctive or famous. Barlow asserted that his conduct was protected by the First Amendment. The court initially cited the Eighth Circuit’s decision in Coca Cola Co. v. Purdy, which held that the defendant had a right to criticize plaintiffs over the Internet, but he did not have the right to appropriate the plaintiffs’ marks to confuse Internet consumers into thinking they were visiting the plaintiffs’ websites. The court then compared this case with the Sixth Circuit’s decision in Taubman Co. v. Webfeats, which held that the defendant’s use of a number of “[trademark]sucks.com” domain names used to criticize the plaintiff did not violate its trademark rights. Although the defendant there may have intended to economically harm plaintiff, the Taubman case held that the First Amendment protects critical commentary of a business when there is no confusion. In contrast, Barlow’s domain names gave no indication that they were not professionally or personally associated with plaintiffs or referenced speech critical of plaintiffs, and Barlow and Re/Max were in direct competition with plaintiffs. In short, defendants use of plaintiffs’ marks was commercially misleading. The court also held that plaintiffs established a likelihood of success on its infringement claims based on a similar analysis. Accordingly, the court preliminarily enjoined Barlow from using the domain names “insiderealliving.com,” ”harleyroudajr.com,” harleyerouda.com,” “harleyroudasr.com,” “kairarouda.com,” and “kairasturdivantrouda.com.” The court did not issue an injunction against the domain names containing the telephone numbers and addresses of plaintiffs’ executives. Although these domain names did not appear to have any “legitimate purpose,” there was no evidence showing that these telephone numbers or addresses were worthy of trademark protection.
Plaintiffs later moved the court to order Barlow to transfer the enjoined domain names, arguing that they had a legitimate use for the names, while Barlow did not. Barlow countered that it no longer owned some of the domain names as their registration had expired, that he had not used or received any economic benefit from those that he still owned, and that it would be inappropriate for the court to transfer the disputed domain names based on a preliminary rather than permanent injunction. However, the court found that Barlow had a long-term financial motive in registering the domain names, and he caused actual consumer confusion by diverting plaintiffs’ customers to his website. Moreover, the ACPA specifically provides that a court may order the transfer of a domain name. Accordingly, because plaintiffs’ likelihood of success on the merits was strong and they had a legitimate business interest in the domain names, the court modified the preliminary injunction and ordered Barlow to transfer to plaintiffs all of the enjoined domain names that he continued to own.