Domain Name May Be Public Expression

Henry Mishkoff is a web designer. Hearing that the Taubman Company planned to build a shopping mall called “The Shops at Willow Bend,” in Plano, Texas, Mishkoff registered the domain name, “shopsatwillowbend.com,” and created a website with that address. Mishkoff had no connection to the mall except for the fact that it was being built near his home. The site featured information about the development and links to individual websites of the tenant stores. The site also contained a prominent disclaimer, indicating that Mishkoff’s site was unofficial.

When Taubman discovered Mishkoff’s site, it demanded he remove it from the web. Taubman claimed that Mishkoff’s use of the domain name “shopsatwillowbend.com” infringed on its registered mark, “The Shops at Willow Bend.” When Mishkoff failed to take down the site, Taubman sued, claiming trademark infringement under the Lanham Act, asking for a preliminary injunction, and demanding surrender of Mishkoff’s domain name.

Mishkoff’s response was quick. He registered five more domain names: 1) taubmansucks.com; 2) shopsatwillowbendsucks.com; 3) theshopsatwillowbendsucks.com; 4) willowbendmallsucks.com; and 5) willowbendsucks.com. All five of these web names linked to a site featuring a running description of Mishkoff’s battle with Taubman and its lawyers.

The district court agreed with Taubman. In late 2001 it granted a preliminary injunction, enjoining Mishkoff from using the “shopsatwillowbend.com” as well as the five complaint names.

On appeal, Mishkoff argued, among other things, that the district court’s injunctions represented a prior restraint on his First Amendment rights. The appellate court agreed.

With respect to the “shopsatwillowbend.com” domain, the court held that there was no likelihood that a consumer would be confused as to the source of Taubman’s and Mishkoff’s respective goods. As such, the court held there could be no infringement under the Lanham Act.

In regard to the five “complaint sites,” the court ruled significantly that Mishkoff’s use of Taubman’s mark in the domain name “taubmansucks.com” was purely an exhibition of free speech and that the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. “Such use,” the court said, “is not subject to scrutiny under the Lanham Act.” Rejecting Taubman’s arguments, the court continued:

In fact, Taubman concedes that Mishkoff is “free to shout ‘Taubman Sucks!’ from the rooftops…”…Essentially, this is what he has done in his domain name. The rooftops of our past have evolved into the internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and Mishkoff has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.

Taubman’s legal battle may have been avoided by alternative protective measures. If you are interested in learning how to protect your domain name from becoming someone else’s “billboard or pulpit,” or if you would like more information about Kohrman Jackson & Krantz’s technology and intellectual property practice, please contact David R. Posteraro at 216-736-7218 or drp@kjk.com.