Ford Motor Co. v. Lapertosa, 126 F.Supp.2d 463, 62 U.S.P.Q.2d (BNA) 1789 (E.D. Mich. 2001) (full-text).
Factual Background Edit
Trial Court Proceedings Edit
In granting plaintiff's motion, the court found that plaintiff was highly likely to succeed on the merits of its ACPA claim by showing that defendant had a bad-faith intent to profit from the FORD trademark through its registration and use of the confusingly similar and dilutive "fordrecalls.com" domain name.
Defendant argued that he did not act in bad faith because the name "Ford" could be used with the word "recalls" in a variety of noninfringing ways (e.g., a person named Ford "recalling" events in their lives). According to the court, however, "defendant's use of the word 'recalls' in juxtaposition with the name of a famous line of automobiles, combined with the lack of any semblance of a legitimate reason for defendant to register the domain name 'fordrecalls' strongly indicates a bad faith intent to profit" from the famous FORD trademark.
Regarding dilution, defendant's use of "fordrecalls.com" in conjunction with pornographic materials was "fundamentally inconsistent with the otherwise wholesome and commercial nature of the [FORD] mark" and thus constituted dilution by tarnishment. Although defendant shut down its website after this suit was filed, the court still found a danger of irreparable harm to plaintiff because it would have the ongoing burden of monitoring misappropriations of its name, and without an injunction, nothing would prevent defendant from reactivating the site. Accordingly, the court preliminarily enjoined defendant from auctioning, offering for sale, transferring, and using in any way the domain name "fordrecalls.com," and ordered defendant to domain name transfer to plaintiff pending a resolution on the merits.
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