'Fallwell.com' transfer is answer to reverend's prayers

In Lamparello v Falwell (03-1503-A (ED Va, August 5 2004)), the US District Court for the Eastern District of Virginia has granted summary judgment to reverend Jerry Falwell, ordering Christopher Lamparello to cease use of the domain name 'fallwell.com'.

Falwell is a well-known preacher whose views on homosexuality, among other things, are very conservative. He owns a federal registration for the mark LISTEN AMERICA WITH JERRY FALWELL. He operates a website at 'falwell.com'.

Lamparello registered the domain name 'fallwell.com' to host a website on which he:

• publicizes his views on homosexuality;
  
  
• responds to opposing sentiments promulgated in Falwell's ministerial teachings; and
  
  
• promoted for a while the sale of a book on Amazon.com.

Lamparello brought a motion for a declaration that his use of the domain name 'fallwell.com' neither infringed nor diluted Falwell's mark. Falwell counterclaimed that Lamparello was infringing the mark LISTEN AMERICA WITH JERRY FALWELL under Section 32 of the Lanham Act. He also claimed that the domain name constituted:

• a false designation of origin;
  
  
• unfair competition; and
  
  
• cybersquatting.

The US District Court for the Eastern District of Virginia rejected Lamparello's motion and upheld Falwell's claims.

Looking first at the infringement claim, the court noted that Section 32 of the Lanham Act requires the plaintiff (or in the present case the counter-claimant) to prove that:

• he owns the mark at issue;
  
  
• the (counter-)defendant is using the mark either in commerce or in connection with the sale, offering for sale, distribution, or advertising of goods or services; and
  
  
• the (counter-)defendant's use is likely to confuse consumers.

The court found that Falwell clearly owns the mark LISTEN AMERICA WITH JERRY FALWELL. It noted that to prove infringement under Section 32, it is not necessary for the defendant to use an exact match of the mark at issue: any "colourable imitation" of the mark may be infringing. With regard to the use in commerce requirement, the court found that the mere fact that the website was part of the Internet and available worldwide put it squarely within the purview of commerce. The court further determined that (i) Lamparello provided a service through the website's dissemination of information and viewpoints critical of Falwell, and (ii) the site was connected with the sale and advertising of goods by providing a link to Amazon.com.

When considering the likelihood of confusion, the court found that (i) Falwell's mark was distinctive and strong, and (ii) the substantive portion of the mark was nearly identical to Lamparello's domain name. The court further noted that both parties also used the Internet as a vehicle to share their beliefs on morality and Christianity. Falwell showed actual confusion via a mail survey in which 3% of respondents spelled Falwell's name with a double 'l' (ie, Fallwell). The court held that internet users were likely to conclude that Falwell's mark and Lamparello's domain name were affiliated. Accordingly, the court held that Lamparello's use of the domain name infringed the mark.

The court found that Falwell had also satisfied the test applicable for a finding of false designation of origin under 15 USC §1125(a)(1) - the same test as for a finding of infringement.

Further, the court held that as there was only one letter difference between Falwell and Fallwell, Falwell was also entitled to a finding of unfair competition and infringement of his common law marks FALWELL and JERRY FALWELL.

Lastly, the court found Lamparello guilty of cybersquatting as he registered and used a domain name that was confusingly similar to or dilutive of a distinctive or famous mark under the Anti-cybersquatting Consumer Protection Act. The court found a bad-faith intent to profit from using the domain name since Lamparello had no reasonable grounds to believe his use was fair or otherwise lawful. This determination was based on the fact that Lamparello:

• did not have any IP rights in the name Fallwell when registering the domain name;
  
  
• hosted a commercial website as it helped to sell a book on Amazon.com; and
  
  
• intended to divert consumers away from Falwell's website with the purpose of disparaging Falwell's mark.

Based on these findings, the court ordered Lamparello to cease any further use of Falwell's mark and ordered the transfer of 'fallwell.com'. However, as financial profit was a minor motive in the use of the domain name, the court did not award damages or attorney's fees.

For a discussion of a case in which Falwell failed to gain control of disputed domain names, see Virginia dismisses Falwell's cybersquatting suit.

Howard J Shire and Merri C Moken, Kenyon & Kenyon, New York