Savin Corp. v. Rayne, 2001 U.S. Dist. LEXIS 20581 (D. Mass. Mar. 26, 2001).
Factual Background Edit
Defendant, operator of a photocopier and fax machine repair shop, registered the following domain names containing plaintiff's SAVIN and GESTETNER marks: "savincopier.com," "savincopiers.com," "gestetnercopier.com," "gestetnercopiers.com," and "savinfax.com." Defendant posted minimalist web pages at these names, each stating that the site "is intended for the education of the consumer and no equipment is available thru [sic] us or our affiliates." Each site also displayed a disclaimer stating that the site was not affiliated with Savin or Gestetner. Plaintiff moved for a preliminary injunction.
Trial Court Proceedings Edit
In finding a likelihood of success on the merits of plaintiff's ACPA claim, the court found that defendant had a bad-faith intent to profit from plaintiff's marks. Defendant argued that his intention to provide noncommercial consumer-education services constituted bona fide and fair use. Defendant never actually used the sites, however, for any bona fide purposes other than to provide information on how to contact defendant. In that regard, defendant originally posted the e-mail address "firstname.lastname@example.org" on his sites, but later changed it to "email@example.com."
Given the absence of any legitimate activity on the sites, the court concluded that defendant hoped to cash in on the confusion that the domain names would cause. According to the court, defendant "cannot sidestep a legitimate claim under the ACPA by simply posting a hastily thrown-together web page that promises to one day offer non-infringing comment, criticism, or other fair use." Defendant's pattern of registering numerous other domain names containing the trademarks of other well-known copier and fax manufacturers, including Xerox, Cannon, Fujitsu, Hewlett-Packard, Hitachi, and Ricoh, also weighed heavily against defendant. Furthermore, none of the domain names registered by defendant bore "an immediate or intuitive relationship to the overall [consumer information] service [defendant] purports he would offer."
Finally, the court was unconvinced by defendant's arguments that he was entitled to prevail under the ACPA 's "escape clause" because his use of plaintiff's marks was a legitimate fair use, or because he reasonably believed that his use was lawful. There was no evidence in the record to indicate that defendant backed up his investment with any steps to actually implement his plan for fair use. In short, defendant's explanation of his motives in registering the domain names at issue lacked credibility. Accordingly, the court issued a preliminary injunction enjoining defendant from, among other things, operating any websites at the offending domain names or from any confusingly similar domain names.
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