Trademarks/Domain Names. Why did Jerry Falwell lose and Bill Cosby win?
Bill Cosby prevailed this week in a domain name dispute involving FATALBERT.ORG (William H. Cosby, Jr. v. Sterling Davenport). This dispute was resolved in an ICANN arbitration, which requires that the complainant prove both that the domain name was registered and used in bad faith in order to succeed. The arbitrator found that Mr. Davenport had no legitimate interest in the domain name, that he had registered it solely with the intention of trading on the fame of Cosby’s Fat Albert character, and that he sold sexually explicit products and drugs on the site, which the arbitrator found particularly offensive since the Fat Albert mark is so closely associated with children. Mr. Davenport’s for-profit conduct clearly constituted bad faith use and registration of the domain name, and he was ordered to transfer the domain name to Cosby.
Compare this with The Reverend Jerry Falwell’s attempt to gain control over FALLWELL.COM, a “gripe” site highly critical of Falwell’s conservative beliefs (Lamparello v. Falwell). In this case the US Court of Appeals for the 4th Circuit rejected Reverend Falwell’s trademark infringement claims, finding that there was no likelihood of consumer confusion, the standard for finding infringement, between Falwell’s web site and Mr. Lamparello’s gripe site. The court held that the registration and use of a domain name must be viewed in the context of the content on the entire web site, and in this case, it was clear that no one would believe that Falwell had sponsored the site, which was highly critical of him.
In rejecting Falwell’s anticybersquatting claims under the federal Anticybersquatting Consumer Protection Act, which, like an ICANN arbitration, requires a showing of bad faith registration and use of a domain name, the court found that Lamparello’s intent in registering FALLWELL.COM was for the purpose of social commentary and criticism, not to divert visitors from Falwell’s own site. Moreover, Mr. Lamparello did not profit financially from the site. As Mr. Lamparello had a legitimate basis for registering FALWELL.COM and as his use of the domain name was non-commercial, the court found no evidence of bad faith conduct on his part. The site remains active.
Thanks to Susan Mulholland for assisting with this post.