In a victory for free speech advocates and operators of internet "gripe sites," the U.S. Court of Appeals for the Fourth Circuit reversed a summary judgment ordering domain name registrant Christopher Lamparello to cease using the name "fallwell.com" and to transfer it to the controversial televangelist and political commentator Jerry Falwell. In its decision, the Fourth Circuit rejected Falwell’s trademark infringement and cybersquatting claims because there was no likelihood of confusion between Falwell’s web site and trademarks and Lamparello’s use of the domain name "fallwell.com" to criticize Falwell’s views on homosexuality. Lamparello v. Falwell, Case No. 04-2011, 2005 U.S. App. LEXIS 18156 (4th Cir. Aug. 24, 2005) (Motz, J.).
In 1999, after hearing Falwell express opinions about homosexuality that Lamparello found objectionable, Lamparello registered the domain name "fallwell.com" to respond with opposing views. Although Lamparello’s domain name bears a similarity to the "falwell.com" domain name used by the Reverend Falwell and his organization, Lamparello’s "gripe site" looks dissimilar to that of Falwell, features a prominent disclaimer of any affiliation with Falwell and provides links to Falwell’s web site. After Falwell threatened Lamparello with a suit for trademark infringement, Lamparello sued Falwell for a declaratory judgment of non-infringement. Falwell counterclaimed for trademark infringement, cybersquatting and related claims.
Focusing on an application of the Fourth Circuit’s seven-factor likelihood-of-confusion test, the Court found the content of the web sites offered by the parties was completely different in appearance and content and no likelihood of confusion between the sites existed. Specifically, where Falwell’s web site "identifies his spiritual and political views; the website at www.fallwell.com criticizes those very views. After even a quick glance at the content of the website at www.fallwell.com, no one seeking Reverend Falwell’s guidance would be misled by the domain name—www.fallwell.com—into believing Falwell authorized the content of that website." The fact that people complained to Falwell’s ministry about Lamparello’s site evidenced that consumers were aware that Falwell was not the source of the content on fallwell.com.
In reversing the district court’s summary judgment of trademark infringement, the Fourth Circuit rejected Falwell’s argument that he was entitled to prevail under the "initial confusion doctrine." According to Falwell, internet users who erroneously spelled his name when searching for his web site would deceptively be directed to Lamparello’s site. The Court rejected this argument because the Fourth Circuit has never adopted the "initial interest" theory of confusion. Moreover, even in jurisdictions which have adopted the doctrine, the plaintiff still must prove the defendant used the mark for commercial gain, which does not exist here because Lamparello used his site solely to criticize the plaintiff. Similarly, the Court noted Falwell’s cybersquatting claim failed because Lamparello had no bad faith intent to profit from his registration of the "fallwell.com" domain name.
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