Taubman Co. v. Webfeats (Lawsuit) [1]

After hearing that the Taubman Company Limited Partnership was building a large shopping mall near his home, Henry Mishkoff created a website and registered a domain name for it at "shopsatwillowbend.com." (Taubman's official website for the mall was located at "theshopsatwillowbend.com" and "shopwillowbend.com.")

Mishkoff's website featured information about the mall, including a map and links to the individual websites of the tenant stores. The site contained a prominent disclaimer, saying that Mishkoff's site was "unofficial" and providing a link to Taubman's official site. Mishkoff characterized his site as a "fan site" with no commercial purpose, but it linked to the website for his own web design company, Webfeats, and the website for his girlfriend's shirt company.

Taubman sent Mishkoff a series of letters claiming that Mishkoff's use of the domain name violated its trademark rights and demanding that he remove the site and transfer the domain to them. (For more information, please see the CMLP Database entry [2] on the related letters.)

In August 2001, Taubman filed a lawsuit for trademark infringement in federal district court. Mishkoff then registered 5 additional domain names combining Taubman's trademarks with "sucks," including "taubmansucks.com." These domain names all led to the same website, on which Mishkoff documented and commented on his conflict with Taubman and its lawyers.

After commencement of the lawsuit, Taubman offered to settle the dispute and buy all of the domain names from Mishkoff for $1000. Mishkoff initially indicated that he would settle, but the settlement fell through.

Taubman then moved for a preliminary injunction barring Mishkoff's use of the website at "shopsatwillowbend.com." On October 11, 2001, the district court granted Taubman's motion and enjoined Mishkoff from using that domain name. Taubman then moved for a preliminary injunction with regard to the "sucks" sites. On December 7, 2001, the district court granted another injunction barring Mishkoff's use of those domain names.

Mishkoff appealed, and the United States Court of Appeal for the Sixth Circuit reversed the district court, holding that Taubman did not have a likelihood of success on the merits of its trademark infringement claim.

With respect to the "shopsatwillowbend.com" website, the appellate court indicated that Mishkoff's linking to commercial websites, although "extremely minimal," was sufficient to constitute a use "in connection with the sale or advertising of a good or service." Taubman Co. v. Webfeats [3], 319 F.3d 770, 775 (6th Cir. 2003). The court noted, however, that Mishkoff had removed the link to his girlfriend's site before the injuction was granted. It noted further that Mishkoff's initial acceptance of the offer of settlement (including the sale of the domain name for $1000) was not a use "in connection with the sale or advertising of a good or service" because he had no history of selling domain names for profit and did not initiate the transaction. Id. at 776. Finally, it held that there was no likelihood of confusion between Mishkoff's site and the official Taubman site, giving substantial weight to Mishkoff's use of a disclaimer and link to the official website. Id. at 776-77.

With regard to the "sucks" domain names, the appellate court concluded that there was no use "in connection with the sale or advertising of a good or service" and no likelihood of confusion. Id. at 777-78. The court explicitly recognized that Mishkoff's use of Taubman's mark in the domain name was "purely an exhibition of Free Speech, and the Lanham Act is not involved." Id. at 778.

The appellate court dissolved both injunctions. Taubman voluntarily dismissed the action in February 2003.