Citation Edit

Bihari v. Gross, 119 F.Supp.2d 309, 56 U.S.P.Q.2d (BNA) 1489 (S.D.N.Y. 2000) (full-text).

Factual Background Edit

Plaintiff, a New York interior designer, was engaged in a business dispute with defendant, a former client of plaintiff. While a state lawsuit regarding that dispute was pending, defendant registered the domain names "" and "," and posted websites critical of plaintiff. Plaintiff then filed suit in federal court asserting various trademark claims, including violation of the ACPA. When served with the federal court complaint, defendant deleted the offending domain-name registrations. Plaintiff later discovered that defendant registered the domain names "" and "," and posted the same critical websites at those names. Defendant's sites also contained "Bihari Interiors" as metatags.

Trial Court Proceedings Edit

Plaintiff then sought a preliminary injunction. Because defendant already deleted its "bihari"-formative domain names, plaintiff's request for a preliminary injunction on its ACPA claim was rendered moot. In addition, the court held that the use of "BIHARI" in the metatags of defendant's websites was not prohibited by the ACPA. On plaintiff's claim for trademark infringement, even though the content of defendant's website was not commercial in nature, links on those sites to competitors of plaintiff transformed "otherwise protected speech into a commercial use to satisfy Section 43(a)'s commercial use requirement." But the court held that confusion was unlikely. Because defendant's websites disparaged the plaintiff, no reasonable Internet user would believe plaintiff endorsed them. The doctrine of initial-interest confusion did not apply because defendant's websites did not compete with plaintiff's services and defendant did not use plaintiff's mark "to trick Internet users into visiting defendant's website." The court also held that defendant's use of plaintiff's marks as metatags was a descriptive fair use, as they were used to identify the content of defendant's sites — plaintiff and her business. Accordingly, the court denied plaintiff's motion.

Source Edit

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