By Liz Oliveira, Legal Team
The plaintiff, Utah Lighthouse Ministry, is a non-profit organization that scrutinizes several religious institutions through its official website. The defendant, the Foundation for Apologetic Information and Research, is a volunteer organization created with the purpose of defending criticism against a particular religious institution. The defendant, in an effort to attack the plaintiff’s criticism, registered several domain names containing the terms “Utah” and “Lighthouse” as used in the plaintiff’s name in addition to creating a parody website that mocked the plaintiff’s official webpage. The plaintiff, in discovering the parody site, sued the defendant for trademark infringement as well as cybersquatting.
The court, in ruling in favor of the defendant, addressed two separate and distinct points. First, the court determined that the defendant had not infringed on the plaintiff’s trademark because the parody website did not constitute a use in commerce as required by the Lanham Act. The court based this decision on the fact that the website did not provide any goods or services, earned no revenue and had no direct links to commercial sites. Second, the court decided that the defendant’s domains did not constitute cybersquatting, despite the use of the terms “Utah” and “Lighthouse”, as the defendant registered their domains in good faith using the mark for non-commercial parody purposes constituting fair use.
Though the majority of cases involving parody domains are fact sensitive and require a case-by-case analysis, domain owners should keep in mind that if they stand to profit (through parking or similar advertisements) they may be liable for trademark infringement under the Lanham Act even if the main idea of the domain is a parody of a trademarked entity.
Source: Sedo.com -- Reprinted with permission -- August 12, 2008
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