Falwell v. Lamparello [1]

In 1999, Christopher Lamparello registered the domain name www.fallwell.com [2] and used the website to criticize Rev. Jerry Falwell's views concerning gays and lesbians. In September 2003, Falwell initiated an arbitration action against Lamparello pursuant to the Uniform Domain Name Dispute Resolution Policy [3], claiming trademark infringement, cybersquatting and other torts, and sought to have the domain name transferred to him.

The National Arbitration Forum ruled that Lamparello's use of the domain name was confusing and had been registered in bad faith, and it ordered that the domain name be transferred from Lamaparello to Falwell. Lamparello commenced a lawsuit against Falwell in federal district court, seeking relief from the arbitration decision and a declaration of non-infringement. Falwell counter-claimed, alleging federal trademark infringement, false designation of origin, unfair competition under federal and Virginia law, and cybersquatting.

The district court granted summary judgment to Falwell, enjoined Lamparello from using the mark, and required him to transfer the domain name to Falwell. On appeal, the Fourth Circuit reversed the district court's decision and entered judgment for Lamparello. Avoiding the larger question of whether trademark law applies to websites like Lamparello's that do not use the disputed mark to sell a good or service, the court ruled that Lamparello's use of the domain name, in the overall context of his gripe site, did not create a likelihood of confusion between his site and Falwell's official site. The court rejected the doctrine of "initial interest confusion" for establishing trademark infringement, at least as applied to non-commercial sites critical of the trademark holder. The court also found that Lamparello did not have the "bad faith intent to profit" required for a cybersquatting claim, primarily because he used the domain name and website to engage in criticism and did not have a profit motive.