People for the Ethical Treatment of Animals v. Doughney

Brief Fact Summary.

Doughney (Defendant) created a web page entitled, “People Eating Tasty Animals,†which was a parody of the website run by the People for the Ethical Treatment of Animals (Plaintiff).

Synopsis of Rule of Law.

To establish an Anticybersquatting Consumer Protection Act (APCA) violation, a bad faith intent to profit from using the parodied domain name must be proven and also that the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous mark.

Facts.

People for the Ethical Treatment of Animals (PETA) is an advocacy group opposed to eating meat, wearing fur, and using animals to conduct research.  PETA has an Internet website of “peta.com.â€Â  Doughney (Defendant) registered an Internet domain named “peta.org†and set up a page a page entitled “People Eating Tasty Animals,†which he intended to use as a parody of PETA (Plaintiff) and its goals and beliefs.  Plaintiff brought suit against Defendant over its domain name registration.

Issue.

To establish an Anticybersquatting Consumer Protection Act (APCA) violation, must a bad faith intent to profit from using the parodied domain name proven and also that the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous mark?

Held.

(Gregory, J.)  Yes.  To establish an Anticybersquatting Consumer Protection Act (APCA) violation, a bad faith intent to profit from using the parodied domain name must be proven and also that the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous mark.  To establish a violation under the ACPA, PETA (Plaintiff) must prove that: (1) Doughney (Defendant) had a bad faith intent to profit from the use of “peta.org†and (2) that this domain name “is identical or confusingly similar to, or dilutive of,†the distinctive and more famous PETA (Plaintiff) trademark.  The lower court had found that PETA (Plaintiff) met both of the above requirements.  Defendant now makes several arguments and concludes that he is entitled to protection under the ACPA’s safe harbor provision, allowing protection of a website if the person believes or has reasonable grounds to believe that use of the domain name was fair or lawful.  Doughney’s (Defendant) arguments refuting PETA’s (Plaintiff) suit include: (1) that the ACPA, effective in 1999, cannot be applied to events of 1995 and 1996 because it was not intended to be retroactive; in fact the ACPA explicitly states that it applies to “domain names registered before, on, or after the date of enactment.â€Â  (2) Defendant states that he did not seek any financial gain from the use of Plaintiff’s trademark; there is no dispute that Defendant made a number of statements, both on the website and to the press, suggesting that Plaintiff pay him to shut down the site.  (3) Defendant claims that he did not act in bad faith, a claim that this court finds in vain because of the fact that Defendant, when registering his domain name, made false statements and knew that he was registering a name identical to PETA (Plaintiff).  Defendant also had registered other domain names similar or identical to the trademarks or names of other famous people or organizations.  Finally, the court finds that Doughney (Defendant) “clearly intended to confuse Internet users into accessing his website.â€Â  Defendant did not establish that he had “reasonable grounds to believe†that his use of PETA’s (Plaintiff) trademark was lawful; merely “thinking†it to be lawful does not make that belief reasonable.  For the reasons stated above, Defendant is not entitled to relief under the safe harbor provision of the ACPA.  Affirmed.

Discussion.

Parody can be protected against claims of infringement.  It is not, however, an absolute protection against an infringement charge.  The fact that Doughney (Defendant) suggested that PETA (Plaintiff) settle with him undercut his good faith argument.  And the fact that Defendant lied when he registered his website undercuts his argument that he reasonably believed he had a lawful right to parody PETA (Plaintiff).