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'Sucks' domains are OK, says US appeals court

The US 6th Circuit Court of Appeals ruled on Friday that a Texas man who registered several domain names including the name of a shopping mall with the suffix "sucks" to denote a site that criticised that mall, did not confuse internet users or infringe the mall's trade marks. The appeals court overruled a lower court's decision ordering him to take down the sites.10 Feb 2003

The dispute involved Henry Mishkoff, a computer consultant and web designer, and Taubman Company, a Delaware shopping mall developer.

Upon hearing the news that Taubman was building a mall called "The shops at Willow Bend" near his home in Plano, Texas, Mishkoff registered the domain name "shopsatwillowbend.com", and created a web site featuring information about the mall, with a map and links to Taubman stores' sites.

Mishkoff described his site as a "fan site" with no commercial purpose. The site, however, contained a link to the site of a company run by his girlfriend, which sold custom-made shirts, and to the site of Mishkoff's own web design business.

Taubman demanded that Mishkoff remove the site from the internet, claiming that it was infringing on its registered trade mark "The Shops at the Willow Bend". When Mishkoff refused, Taubman sued.

Following the filing of the lawsuit, Mishkoff registered five more domains: "taubmansucks.com", "shoppsatwillowbendsucks.com", "theshoppsatwillowbendsucks.com", "willowbendmallsucks.com" and "willowbendsucks.com".

All five domain names linked to the same site, where Mishkoff criticised Taubman and covered his legal dispute with the company. Mishkoff removed the links to his and his girlfriend's business sites from shopsatwillowbend.com.

In October 2001, a Michigan district court issued a temporary order requiring Mishkoff to take down the "shopsatwillowbend.com" site. A few days later, Taubman amended its initial filing to include the five "sucks.com" domain names registered by Mishkoff and these were added to the order.

The web designer appealed the order. In a unanimous opinion, the 6th Circuit Court of Appeals overruled the lower court's order, reasoning that Mishkoff's use of the trade marks was not "in connection with the sale or advertising of goods and services," and reasoned that there was no likelihood of confusion among consumers.

The court found that shopsatwillowbend.com contained a prominent disclaimer, indicating that the site was unofficial, and that it "actually served to re-direct lost customers to Taubman's site."

Mishkoff, the court said, had no intention to confuse or deceive consumers, or to make a profit, and therefore his use of Taubman's marks was protected by free speech.

As regards Mishkoff's use of the five "sucks.com" domains, the court found that it was "purely an exhibition of Free Speech."

The court said:

"Although economic damage might be an intended effect of Mishkoff's expression, the First Amendment protects critical commentary where there is no confusion as to source, even when it involves the criticism of a business."

The court concluded that restricting Mishkoff's use of the Taubman marks on his complaint sites would be no different to ordering him not to shout "Taubman Sucks!" from his rooftop, and dismissed the company's claims.

This is believed to be the first ruling of its kind by a US appeals court.
The court's decision is available at:
pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06

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