Internet Trademark Case Summaries
Mayflower Transit, LLC v. Prince
2004 U.S. Dist. LEXIS 6908 (D.N.J. March 30, 2004)
Mayflower operates a network of interstate moving and shipping companies nationwide under the mark MAYFLOWER. Prince contacted Mayflower to arrange for a move and eventually contracted with a local company he believed to be affiliated with Mayflower. Following the theft of most of his property from a Mayflower truck, Prince registered and used the domain name “mayflowervanlinebeware.com” for a website describing his moving experience and containing the headline “Beware of Lincoln Storage Warehouse. Beware of Mayflower Van Line.” Prince later registered and used the domain name “mayflowervanline.com” for a website posting similar content. Prince eventually discontinued use of the “mayflowervanlinebeware.com” site but continued to use the “mayflowervanline.com” name and website. Mayflower filed suit alleging cybersquatting, dilution, and various state-law claims. The district court granted Prince’s motion for summary judgment on Mayflower’s cybersquatting claim. Even though the court found it “highly likely” that a customer searching for Mayflower on the Internet would be confused by the “mayflowervanline.com” name, and that the content on Prince’s site “would undoubtedly tend to ‘tarnish’ or ‘disparage’” the MAYFLOWER mark, Prince’s use of this domain name for a noncommercial site posting critical commentary on Mayflower did not establish a bad-faith intent to profit from the MAYFLOWER mark. Prince’s registration of multiple MAYFLOWER-formative domain names was not sufficient to supply the required bad faith because they were all used for the purpose of critical commentary. Indeed, the court noted that legislative history of the ACPA “corroborates the Court’s conclusion that genuine cyber-gripers like [Prince] are not covered by the ACPA.” The court denied Prince’s request for sanctions under Rule 11 of the Federal Rules of Civil Procedure and for attorney’s fees under the Lanham Act because Mayflower did not appear to pursue the case in bad faith or to harass or intimidate Prince. Rather, the court felt that Mayflower brought this action to remedy what it believed was a violation of its rights. The court did state in dicta, however, that Prince’s actions “may be actionable under other statutory provisions . . . ,” perhaps suggesting that Mayflower would have fared better on infringement and/or dilution claims.