Citation Edit

Penn Warranty Corp. v. DiGiovanni, 810 N.Y.S.2d 807, 10 Misc. 3d 998 (2005) (full-text).

Factual Background Edit

Plaintiff sold defendant an extended warranty on a used truck. Defendant filed a claim under the warranty, which plaintiff denied. Defendant subsequently brought a small-claims suit against plaintiff, which was settled for $2,500. Defendant then created a “gripe site” at “” on which it contended that plaintiff engaged in deceptive business practices. Plaintiff claimed that defendant threatened to publish the website, go to the media, and contact the Pennsylvania Attorney General unless plaintiff “did the ‘right thing.’”

Trial Court Proceedings Edit

Plaintiff sued defendant asserting various claims including trademark infringement, false designation of origin, and unfair competition. The parties filed cross-motions for summary judgment.

The court granted defendant’s motion for summary judgment on plaintiff’s Lanham Act claims because defendant did not use his website for a commercial purpose. According to the court, “[t]he Lanham Act cannot be used as a pretext to stifle critics of goods or services by someone, such as a consumer advocate, who is not engaged in marketing or promoting a competitive product or service.”

The court also held that plaintiff’s domain name “” and defendant’s domain name “” were not confusingly similar. The domain names were not identical and the word “litigation” in defendant’s name suggested that the website contained information about a litigation involving plaintiff. Moreover, the court did not believe that the word “litigation” in defendant’s domain name would “serve as a ‘come on’ or ‘promotion’ of [plaintiff] and/or its products.”

Finally, even assuming someone reached defendant’s website believing it to be plaintiff’s site, the confusion would be “dispelled immediately” because the website content “clearly and unmistakably indicates an unfavorable view of plaintiff and its business practices.”

Source Edit

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