Freedom Calls Foundation v. Bukstel, 2006 WL 845509 (E.D.N.Y. Mar 3, 2006).
Factual Background Edit
Plaintiff operated a nonprofit corporation since 2003 to enable men and women on active military duty to communicate with their families back home. Plaintiff owned the marks FREEDOM CALLS and FREEDOM CALLS FOUNDATION and operated a website at the domain name "freedomcalls.org." Defendant, a former employee, officer, and director of plaintiff, used the email address "email@example.com" while employed by plaintiff. Unbeknownst to plaintiff, defendant registered the domain name "freedomcalls.us" during his employment with plaintiff and used this name for a website titled "Freedom Calls Volunteers" featuring content from plaintiff's website and pictures of plaintiff's supporters and clients at plaintiff's events. Defendant used the email address "firstname.lastname@example.org" to email plaintiff's current clients and supporters. Defendant also established and used a Yahoo! instant message account with the name "freedomcallsbukstel."
Trial Court Proceedings Edit
Plaintiff filed suit for infringement, unfair competition, dilution, and cybersquatting, among other claims. The court granted plaintiff's motion for a preliminary injunction on various claims, including infringement and unfair competition under section 43(a) of the Lanham Act, cybersquatting, and state-law dilution.
Regarding infringement, the court held that plaintiff's marks were distinctive and had acquired secondary meaning, and that the "freedomcalls.us" domain name, the "email@example.com" email address, and the "freedomcallsbukster" screen name were confusingly similar to plaintiff's FREEDOM CALLS marks.
The court also held that plaintiff established a likelihood of success on its cybersquatting claim by showing that defendant had a bad-faith intent to profit from use of the FREEDOM CALLS mark when he registered the "freedomcalls.us" domain name. In particular, defendant had no intellectual property rights in "freedomcalls.us"; defendant's website did not consist of defendant's legal name; defendant did not make a bona fide offering of any goods or services on his website; and defendant could easily divert customers from plaintiff's website in the future.
Finally, the court found that plaintiff was likely to succeed on the merits of its state-law dilution claim based on its finding that defendant's actions caused a likelihood of dilution as a result of blurring. The court preliminarily enjoined defendant from, among other things: (a) using the mark FREEDOM CALLS and confusingly similar marks for any product or service, (b) infringing and diluting plaintiff's FREEDOM CALLS marks, and (c) "continuing to operate any website(s) or to use any e-mail or instant message account that include as part of the domain or other identifying name 'freedomcalls' or any colorable imitation thereof."
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