Taubman Co. v. Webfeats (Lawsuit)

NOTE: The information and commentary contained in this database entry are based on court filings and other informational sources that may contain unproven allegations made by the parties. The truthfulness and accuracy of such information is likely to be in dispute. Information contained in this entry is current as of the last event mentioned in the "Description" section below; additional proceedings might have taken place in this matter since this event.

Summary

Threat Type: 

Lawsuit

Date: 

08/07/2001

Status: 

Concluded

Location: 

Michigan

Disposition: 

Injunction Denied
Injunction Issued
Withdrawn

Verdict or Settlement Amount: 

N/A
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... read full description
Parties

Party Issuing Legal Threat: 

Taubman Company Limited Partnership

Party Receiving Legal Threat: 

Webfeats; Henry Mishkoff

Type of Party: 

Organization

Type of Party: 

Individual
Organization

Location of Party: 

  • Michigan
  • Delaware

Location of Party: 

  • Texas

Legal Counsel: 

Paul Levy
Description

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 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, 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.

Details

Content Type: 

  • Text

Publication Medium: 

Website

Subject Area: 

  • Trademark
Court Information & Documents

Jurisdiction: 

  • Michigan

Source of Law: 

  • United States

Court Name: 

Eastern District of Michigan

Court Type: 

Federal

Case Number: 

01-72987

Relevant Documents: 

CMLP Information (Private)

CMLP Notes: 

Checking in the database, there's a chance that this should have a settlement amount of $1349.98.

- Chris Wells

Comments

minor corrections

I don't know if it's considered tacky for one of the parties to a lawsuit to comment on a posting about that suit, but...

• There's a typo in the third paragraph from the end, the word "that" is duplicated.

• You say "Mishkoff initially indicated that he would settle, but then refused to sign the agreement." That makes it sound like I backed out of something to which I had already agreed, which is the exact opposite of what happened. I would suggest something like "Mishkoff initially indicated that he would settle, but then refused to sign the agreement when Taubman imposed new terms." (I think that something like "Taubman and Mishkoff agreed to settle, but the settlement broke down when Taubman refused to honor the agreement" would be even better, but I'm guessing that you won't go for that, even though it's more accurate than your characterization.)

• You say that "the parties eventually settled," but we did not. Taubman moved to dismiss the case, and we agreed. I'm not a lawyer, but it seems to me that the word "settled" implies more than just an agreement to dismiss the case.

Other than those minor points, it's a good article, you've managed to succinctly capture the essence of a complex case.

Yes, It's Appropriate to Comment

It's definitely appropriate for a party to comment on a posting in our database.  We want to collect information from all possible sources.  I appreciate your clarifications and I've fixed the typo you found.  Thanks as well for the positive assessment of our work.