Sixth Circuit rules First Amendment trumps trademark infringement claims

In Taubman Company v Mishkoff, the Sixth Circuit Court of Appeals has overturned a district court decision to issue an injunction blocking the use of six domain names, including five 'sucks' domain names, that incorporate the name of a shopping centre or the centre's developer, The Taubman Company. The appellate court found that none of the domain names infringes Taubman's marks.

Taubman built a shopping centre called 'The Shops at Willow Bend'. Henry Mishkoff registered the domain name 'ShopsatWillowBend.com', which hosts a website that features information about the shopping centre and provides links to websites of individual tenants. Taubman filed a trademark infringement action and sought a preliminary injunction. Mishkoff responded by registering five 'sucks' domain names (eg, 'taubmansucks.com' and 'ShopsatWillowBendSucks.com'). The US District Court for the Eastern District of Michigan enjoined Mishkoff from using any of the registered domain names.

On appeal, the Sixth Circuit reversed the district court's decision, concluding that the domain name 'ShopsatWillowBend.com' does not infringe Taubman's trademark rights. The court based its conclusion on the following findings:

  • The website is not commercial in nature because it has no advertising or links to commercial retailers;

  • There is no evidence that Mishkoff registered the domain name with the intent to resell it for profit, even though it did initially accept Taubman's offer to buy the domain name; and

  • There is no likelihood of confusion because there is a conspicuous disclaimer on Mishkoff's website (i) informing customers they have not reached Taubman's website, and (ii) providing a hyperlink to Taubman's official site.

As to the various 'sucks' domain names, the court found that they are purely exhibitions of free speech, which is protected by the First Amendment of the US Constitution, and are not commercial in nature. Therefore, their use does not violate US trademark law.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC

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