Addressing the issue of whether "non-commercial use" of a trademark is actionable under the trademark infringement and anticybersquatting portions of the Lanham Act, the U.S. Court of Appeals for the Ninth Circuit decided that the use of a trademark as a domain name for a customer commentary website does not constitute trademark infringement. However, depending on other factors, non-commercial use of a trademark in a domain name might be actionable under the Anticybersquatting Consumer Protection Act (ACPA). Bosley Medical Institute, Inc. v. Michael Steven Kremer, Case No. 04-55962, 2005 U.S. App. LEXIS 5329 (9th Cir. Apr. 5, 2005).
Plaintiff Bosley Medical Institute, Inc. provides surgical hair transplantation, restoration and replacement services. Bosley owns the registered trademark BOSLEY MEDICAL. Defendant Kremer was dissatisfied with the hair restoration services provided to him by Bosley and developed a website at www.bosleymedical.com to publish information that is highly critical of Bosley. Kremer does not earn any revenue from his website, does not sell any goods or services and does not link his website to any of Bosley’s competitors.
Bosley sued Kremer, alleging trademark infringement, trademark dilution, unfair competition and various state law claims. The district court entered summary judgment for Kremer and also granted Kremer’s motion to dismiss Bosley’s claims under California’s anti-strategic lawsuit against public participation (anti-SLAPP) statute.
On the trademark infringement and dilution claims, the Ninth Circuit affirmed the district court’s decision that the defendant does not use Bosley’s mark "in connection with the sales of goods and services." The Ninth Circuit distinguished the Fourth Circuit’s opinion in People for the Ethical Treatment of Animals v. Doughney and rejected Bosley’s argument that commercial use existed insofar as the defendant’s unauthorized use of Bosley’s mark as a domain name prevented users from obtaining Bosley’s goods and services. The Court held that such a broad view was neither supported by the language of the Lanham Act nor by the history of trademark laws generally and refused to use the Lanham Act to restrict otherwise protected consumer commentary. Regarding Bosley’s claims under the ACPA, the Ninth Circuit rejected the district court ruling that a cybersquatting claim under the ACPA requires proof of "commercial use." The Court found that the district court failed to consider whether the defendant’s behavior, on balance, satisfied the other requirements under the ACPA claim, and, therefore, remanded the case to the district court for such findings. Finally, the Ninth Circuit found that Bosley’s complaint about the unauthorized use of its trademark as Kremer’s domain name was not so lacking in the merit as to be susceptible to an anti-SLAPP motion. "The hallmark of a SLAPP suit is that it lacks merit, and is brought with the goals of obtaining an economic advantage over a citizen party by increasing the cost of litigation to the point that the citizen party's case will be weakened or abandoned, and of deterring future litigation."
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