Plaintiff DaimlerChrysler has been using the “DODGE” trademark in the automobile sales and service industry since 1924. In 1994 DaimlerChrysler began advertising the toll-free telephone number “1-800-4-A-DODGE.” In 1995 DaimlerChrysler registered the domain “4ADodge.com” and directed visitors to the main Dodge.com homepage.Defendant The Net, Inc. is an “unincorporated association” between defendants Keith Maydak and Michael Sussman. In December of 1996 defendants registered the domain name “foradodge.com” and concealed the true identity of the registrants. Defendants also registered domain names similar to other corporate trademarks and governmental agencies, including “ups.net,” “nasdaq.net,” “cnn.org,” and “whitehouse.com.” Defendants proceeded to point the “foradodge.com” domain name at a pornographic website. Defendant Maydak claims that he intended to use the “foradodge.com” domain name to describe asset protection and tax avoidance services under what he considered to be the general subject of “dodging,” however he had not taken any steps to accomplish this goal at the time that suit was filed.
DaimlerChrysler filed suit under the Anti-Cybersquatting Consumer Protection Act (ACPA), a 1999 amendment to the Lanham Trademark Act of 1946. The District Court for the Eastern District of Michigan granted summary judgment to DaimlerChrysler. The district court issued an order requiring transfer of the domain name to DaimlerChrysler and enjoining defendants from making any business use of the “foradodge” name.
The Sixth Circuit reviewed the grant of summary judgment de novo. To recover under the ACPA a claimant must show that “1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant's domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner's mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit.” Ford Motor Co. v. Catalanotte, 342 F.3d 543, 546 (6th Cir. 2003). Defendants raised two of these issues on appeal.
Defendants first claimed that the “4ADODGE” mark was not entitled to protection as it was only used as a telephone number and as a website that pointed directly to the main Dodge homepage. The Sixth Circuit upheld the district court’s ruling that it was irrelevant if there was a material question of fact as to whether “4ADODGE” was a protected trademark because the “foradodge” name was confusingly similar with the Plaintiff’s “DODGE” trademark. The court ruled that because the “foradodge” name simply adds a prepositional phrase to the plaintiff’s protected mark it is “confusingly similar to” the “DODGE” mark as “consumers might think that [the domain name] is used, approved, or permitted by the mark holder.” The opinion noted that other courts have consistently “found that slight differences between domain names and registered marks, such as the addition of minor or generic words to the disputed names are irrelevant.”
Defendants also claimed that the name was not registered in bad-faith as defendant Maydak intended to create an informative site at that address. The court listed nine non-exclusive factors in the ACPA (15 U.S.C. § 1125 (d)(1)(B)(i)) that a court may consider in determining if a domain was registered in bad faith. The court affirmed the district court’s holding that 8 of the 9 factors indicated a bad faith registration by the defendants, including the lack of an established legitimate website, lack of any other legitimate claim to the name, lack of any “fair use” of the name, misleading contact information listed, and registration of other confusingly similar domain names. The Sixth Circuit acknowledged that there was a genuine issue of fact regarding one of the points but affirmed summary judgment because “when considering the factors in their entirety, no reasonable trier of fact could conclude that the defendants did not act in bad faith.”
The District Court issued an injunction ordering transfer of the domain name and prohibiting defendants from “using or displaying DODGE, 4ADODGE… or any colorable imitations thereof” in any business usage. The Sixth Circuit reviewed this injunction under an abuse of discretion standard and found the breadth appropriate. The Sixth Circuit noted that irreparable harm is presumed in trademark infringement and that plaintiffs are entitled to injunctions broader than the scope of their ACPA claim in order to protect their reputation and goodwill.
The Sixth Circuit also affirmed the district court’s decision to strike defendants’ 3rd party complaint against the United States. Defendants argued that the ACPA was an unlawful taking barred by the 5th Amendment. The district court held that as a matter of law a regulatory taking occurs only if the government prevents an owner “from making a use of the property that would otherwise be permissible.” The court held that using a domain name in an infringing way is not otherwise permissible, therefore “the ACPA does not effect a taking.”