PETA v. Doughney

United States Court of Appeals for the Fourth Circuit · 2001 · Property

PropertyTrademark infringementUnfair competitionCybersquattingDomain namesParodypeta.orgdomain name

Facts

PETA owned the registered "PETA" mark, and Doughney, who had long been familiar with PETA, registered the domain name peta.org in 1995 while representing that a nonprofit group called "People Eating Tasty Animals" was registering it, even though no such entity existed. He used the domain name for a website titled "People Eating Tasty Animals," which promoted views antithetical to PETA and included links to meat, fur, leather, hunting, animal research, and other organizations, as well as a hyperlink to PETA's official site. After PETA objected and the domain name was put on hold, Doughney moved the site elsewhere and added a disclaimer. He also made statements suggesting PETA should "make me an offer" or negotiate a settlement if it wanted the domain name.

Issue

Whether Doughney's registration and use of peta.org for his "People Eating Tasty Animals" website constituted trademark infringement and unfair competition under the Lanham Act and Virginia law, and whether it violated the Anticybersquatting Consumer Protection Act. The court also considered whether PETA was entitled to attorney's fees and broader litigation costs.

Rule

For trademark infringement and unfair competition, a plaintiff must prove possession of a mark, use by the defendant, use in commerce, use in connection with the sale, offering for sale, distribution, or advertising of goods or services, and likelihood of consumer confusion. In the Internet context, use is "in connection with" goods or services if the defendant's conduct prevents users from reaching the mark owner's services or connects the mark to others' goods or services. A parody must convey simultaneously two contradictory messages: that it is the original and that it is not the original but a parody. Under the ACPA, liability requires a bad faith intent to profit and a domain name identical or confusingly similar to, or dilutive of, a distinctive or famous mark.

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One of 10 multiple-choice questions for this case. Pick an answer to see why.

In Seattle, an environmental charity called ClearWater Alliance owns the registered mark "CLEARWATER." Nolan Price registers clearwater.org and uses it for a site criticizing the charity's policies; the site itself sells nothing, but it prominently links users to outdoor retailers and tour operators that oppose the charity's agenda.

If ClearWater Alliance sues for trademark infringement, which argument most strongly supports finding that Nolan used the mark "in connection with" goods or services?

Explanation. The majority held that a defendant need not personally sell goods or services on the website. Use is "in connection with" goods or services when the domain name can prevent users from reaching the mark owner's services or when the site links the mark to others' goods or services. Here, the exact-match domain may divert users from the charity, and the links to retailers and tour operators reinforce the connection to commercial services. (Derived from PETA v. Doughney (n.d.).)