Internet Trademark Case Summaries
OBH, Inc. v. Spotlight Magazine, Inc.
86 F. Supp. 2d 176 (W.D.N.Y. 2000)
Plaintiff, owner of The Buffalo News newspaper, sought a preliminary injunction against defendant’s use of the domain name “thebuffalonews.com” for a website purportedly designed to parody and provide a public forum for criticism of The Buffalo News. The site, however, also provided hyperlinks to defendant’s own apartment rental guide business and local newspapers, magazines, and radio and television stations. In granting a preliminary injunction on plaintiff’s claims for trademark infringement, dilution by blurring, and unfair competition, the court rejected defendant’s argument that it did not use the name in commerce and that it did not use it with any goods or services. The court emphasize four aspects of the facts: (1) hyperlinks to defendant’s own commercial website competed with a similar service plaintiff offered, (2) hyperlinks to plaintiff’s competitors diverted potential customers away from plaintiff, (3) the “international nature of the Internet itself made defendant’s use of its domain name a ‘use in commerce’ for the purposes of the Lanham Act,” and (4) defendant’s use of plaintiff’s trademark affected plaintiff’s ability to offer its services to its natural audience, i.e., those seeking The Buffalo News online. The court also rejected defendant’s other defenses. The disclaimer on defendant’s website indicating that it is a parody and commentary site not affiliated with the newspaper did not remedy the initial-interest confusion, which diverted customers from plaintiff’s site. Nor did defendant’s site constitute a parody because it relied on confusion, not recognition, to make its point. Finally, defendant’s use of the domain name was not protected expression under the First Amendment because the domain name itself was not part of a communicative message, but rather served as a source identifier.