Jerald and Sandra Tanner founded plaintiff Utah Lighthouse Ministry, Inc. (“UTLM”) to disseminate information critically analyzing the history and doctrines associated with the Church of Jesus Christ of Latter-day Saints (“LDS”). Defendant Wyatt, a professional website designer, was the webmaster and an officer of the volunteer organization FAIR that responded to criticisms of the LDS Church. In 2003, before UTLM federally registered its mark UTAH LIGHTHOUSE MINISTRY, Wyatt registered ten domain names: “utahlighthouse.com/.org,” “utahlighthouseministry.com/.org,” “sandratanner.com/.org,” “geraldtanner.com/.org,” and “jeraldtanner.com/.org.” These domain names all directed users to Wyatt’s website, which attempted to parody the UTLM website (“utlm.org”) with similar graphics and provided positive information about LDS. Plaintiff sued for trademark infringement, copyright infringement, trade dress infringement, unfair competition, and cybersquatting. The parties filed cross motions for summary judgment on various claims. For purposes of plaintiff’s infringement and unfair competition claims, the court first assessed whether defendants’ activities constituted noncommercial fair use. Plaintiff first claimed that defendants’ website was commercial because it linked to FAIR’s website that in turn linked to a website featuring FAIR’s bookstore, but the court held that this link was too far removed. Plaintiff next argued that the nature of the Internet itself made the use of plaintiff’s mark as a domain name in and of itself “use in commerce,” but the court noted that “relatively few courts have adopted this view.” And plaintiff argued that defendants’ use of plaintiff’s marks affected its ability to offer its services in commerce, but there was no evidence demonstrating that defendants’ website caused any confusion or actually hindered any prospective users’ ability to find plaintiff’s website. The court concluded that Wyatt’s website was a “noninfringing parody” of plaintiff’s website. The court further held that plaintiff had not shown that its UTAH LIGHTHOUSE MINISTRY mark, which was not registered when Wyatt’s site was created, or the names “Sandra Tanner” and “Jerald Tanner” were “sufficiently famous or had acquired a secondary meaning to the general consuming public of the United States.” The court thus granted defendant’s motion for summary judgment on plaintiff’s claim for trade dress infringement. Regarding cybersquatting, the court weighed the bad-faith factors of ACPA and found that a finding of bad faith was not appropriate, particularly given the noncommercial nature of Wyatt’s website and plaintiff’s failure to show any harm to its goodwill or that defendants “had any commercial gain, or any actual intent to tarnish or disparage” plaintiff’s marks, since defendants made no effort to profit from the site and had a reasonable belief that their parodic use was fair. Moreover, the court held that defendants could invoke the ACPA’s “safe harbor” provision that protects fair use. The court also noted that defendants had already transferred all of the domain names to plaintiff. Turning to dilution, the court’s earlier finding that defendants’ actions were not commercial for purposes of plaintiff’s infringement claim also was fatal to plaintiff’s dilution claim. The court thus granted defendants’ motion for summary judgment and dismissed plaintiff’s case with prejudice.

The Tenth Circuit affirmed the district court’s dismissal of UTLM’s claims for trademark infringement, unfair competition, and cybersquatting, the only three claims appealed. Regarding infringement and unfair competition, the court declined to consider UTLM’s new argument that its UTAH LIGHTHOUSE mark was inherently distinctive. The lower court had found that UTLM’s then-unregistered mark had not acquired secondary meaning, and thus was not protectable. UTLM had presented search engine results evidence to establish secondary meaning, including the number of hits generated by searches for UTAH LIGHTHOUSE on the Yahoo! and Google search engines and on other LDS-associated websites. According to the Tenth Circuit, however, the number of search engine hits alone did not show consumer association or recognition of UTAH LIGHTHOUSE as a trademark. Rather, such evidence would support UTLM’s claim of secondary meaning only if “accompanied by some kind of evidence that the relevant market of consumers ha[d] visited the websites containing the hits.” The court thus affirmed the district court’s finding of no secondary meaning. The court also rejected several arguments that Wyatt made commercial use of UTLM’s mark. First, the link on Wyatt’s website to a non-commercial site with an “inconspicuous” link to an online bookstore was too attenuated. Second, UTLM’s argument that Wyatt’s actions prevented users from obtaining UTLM’s goods or services failed because the parties’ goods and services were not competitive. Third, although use of UTLM’s mark on the Internet satisfied the jurisdictional commercial use requirement of the Lanham Act, it did not constitute commercial use of the mark in connection with any goods or services. The court also affirmed the district court’s ruling of no likelihood of confusion based on its review of the likelihood-of-confusion factors and the parodic nature of Wyatt’s site. Finally, the court affirmed dismissal of the ACPA claim because the UTLM marks were not sufficiently distinctive, Wyatt displayed no bad-faith intent to profit from those marks, and Wyatt’s use of the marks as domain names was non-commercial fair use.