Gibson v. Texas Dept. of Insurance—Division of Workers’ Compensation, No. 11-11136, 2012 WL 5330890 (5th Cir. Oct. 30, 2012).

On October 30, 2012, the Fifth Circuit partially reversed and remanded a case challenging the constitutionality of a state law prohibiting the use of certain terms in domain names. In Gibson v. Texas Department of Insurance, an attorney challenged a Texas law prohibiting the use of certain terms, including “Texas” and “Workers’ Comp,” in any domain name used in connection with various activities, including an advertisement, a business activity, or a service offered regarding workers’ compensation coverage or benefits. After receiving a cease and desist letter from the Texas Department of Insurance concerning his “” blog, John Gibson filed a complaint alleging that this law was unconstitutional under the First, Fifth, and Fourteenth Amendments.

The Northern District of Texas dismissed the complaint for failure to state a claim, and the Fifth Circuit partially affirmed and partially reversed that decision. Without deciding the issue, the Fifth Circuit reserved Gibson’s right to argue that his domain name and blog do “more than propose a commercial transaction” and thus warrant protection as ordinary, communicative speech. The court explained that, “[a] domain name, which in itself could qualify as ordinary communicative speech, might qualify as commercial speech if the website itself is used almost exclusively for commercial purposes.” But the court recognized that the proper analysis of whether a domain name is commercial speech is in fact res nova, and that it was unnecessary to reach the analysis in this opinion.

Even assuming that the domain name may be commercial speech, the Fifth Circuit reversed and remanded the case for further proceedings on whether the statute presented a valid restriction on commercial speech. The court distinguished this case from trademark infringement cases concerning domain names because “Texas has made no showing that its own talents and energy contributed to the creation of any goodwill in the name ‘’” Further, the court held that the domain name was not inherently misleading because “there is no showing that the domain name is incapable of being viewed in a non-deceptive manner” and that “there have been no factual findings to support an allegation that the domain name is actually deceptive.”

Even if not inherently misleading, the domain name could be regulated as long as the law was narrowly tailored to directly advance a substantial state interest. The Fifth Circuit found that the lower court erred in dismissing the case based on the legislative record alone, and thus the court thus remanded the case for more briefing and development of the record on this issue. The court found it unnecessary to reach the merits of the facial First Amendment challenge before determining the as-applied challenge, and it affirmed dismissal of the Fifth and Fourteenth Amendment claims. Judge Thomas Reavley concurred only in the judgment to reverse, commenting that he had difficulty with the court’s reading of the statute as prohibiting deceptive commercial speech and “with reading Gibson’s domain name as ‘misuse’ or as misleading.”