Raintree Homes v. Silverstein [1]

In July 2001, real estate developer Raintree Homes, Inc., filed suit against Carl Silverstein alleging trademark infringement and dilution under the Lanham act and common law claims including defamation, unfair competition, and trade libel. The complaint, filed in the United States District Court for the Middle District of Pennsylvania, claimed that Silverstein’s gripe site using the domain names www.1800whyrent.net [2] and www.1800whyrent.org infringed Raintree's "WHY-RENT" trademark.

Specifically the complaint alleged that Silverstein’s gripe site was confusingly similar to Raintree’s official website and diluted its trademark. Raintree also claimed that Silverstein’s statements, including "no other home builder has ruined the life of so many people with this program,” defamed the developer, and that the revision of Raintree’s motto to “we-screw-you” suggested that Raintree engaged in wrongful conduct. Raintree requested an injunction and unspecified damages.

Silverstein moved to dismiss the lawsuit in September 2001. A supporting memorandum was jointly filed by Silverstein’s attorney and Public Citizen [3]. The memorandum argued that Silverstein’s website was protected by the First Amendment and that the site was a noncommercial parody outside the scope of trademark law.

Judge Munley granted the motion to dismiss in part, dismissing the trade libel claim and removing CBS Networking Services (a name used by Silverstein to register the doman names, but not a legal entity) from the case.  The court left the trademark claims intact, ruling that the establishment of a website satisfied the "use in commerce" requirement for an infringement claim, and that discovery was needed to determine whether Silverstein's use was "commercial" for purposes of the dilution claim.  Following the partial dismissal, the parties stipulated to dismiss the case with prejudice, suggesting a settlement.