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Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125 (D. Colo. 2000) (full-text).
Factual Background Edit
Plaintiff is a well-known law firm that has used the name MORRISON & FOERSTER for decades. In October 1999, defendant registered the domain names “morrisonfoerster.com,” “morrisonandfoerster.com,” “morrisonforester.com,” and “morrisonandforester.com.” At those sites, defendant posted statements such as “We bend over for you . . . because you bend over for us!” and “Parasites No Soul . . . No Conscience . . . No Spine . . . NO PROBLEM,” and also provided links to websites with racist and other offensive names (e.g., “jewkike.com” and “noirishneedapply.com”).
Trial Court Proceedings Edit
Plaintiff brought suit alleging, among other things, infringement, dilution, and cybersquatting under the ACPA. Plaintiff successfully obtained a temporary restraining order on March 9, 2000, and this decision follows a trial on the merits consolidated with a hearing on a preliminary injunction.
In granting plaintiff’s motions for preliminary and permanent injunctions under the ACPA, the court based its finding that defendant had a “bad faith intent to profit” on the following: (1) defendant lacked intellectual-property rights in the domain names, and his adoption of the assumed business name “Morri, Son & Foerster” shortly after registering the domain names actually indicated his bad faith; (2) defendant’s use of plaintiff’s mark in his domain names indicated an intent to divert customers from plaintiff, and the presence of offensive hyperlinks could harm plaintiff’s goodwill if users believed they were visiting plaintiff’s site; (3) defendant’s registration of the domain names in the name of “NameIsForSale.com” gave rise to a “reasonable inference of intent to sell the domain names for a profit”; (4) defendant provided misleading and false contact information when registering the domain names; (5) defendant registered the names of over ninety law firms; and (6) defendant admittedly registered other businesses’ names as an attempt to “mess with” corporate America and the legal community.
The court rejected defendant’s First Amendment parody defense, stating that although the content of each site may be entitled to protection, the use of plaintiff’s trademark as a domain name was not so protected. Defendant’s domain names failed to constitute a communicative message, instead serving as a source identifier.
Regarding remedies, the court ordered defendant to (1) “forfeit” his interests in the four domain names; (2) transfer to plaintiff the two domain names with the correct spelling of plaintiff’s firm name; (3) cancel the two misspelled domain names; and (4) not take any action to prevent and/or hinder plaintiff from obtaining the subject domain names.
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