2009 WL 604099 (S.D.N.Y. Mar. 9, 2009)
The Southern District of New York dismissed plaintiff’s trademark infringement, unfair competition, dilution, and cybersquatting claims, finding that defendant labor union’s use of plaintiff’s mark in domain names for a criticism website was not actionable. The labor union’s display of a “prominent disclaimer,” coupled with the negative content of the website, precluded any possible initial-interest confusion. And the linking of the criticism site to the union’s website and from there to the union’s store website was too attenuated to make the criticism website commercial or for-profit, as required for dilution and cybersquatting.
Plaintiff Cintas Corporation (“Cintas”), a leading uniform supplier, owned the federally registered CINTAS mark. Defendant Unite Here and other labor unions (collectively “Unite Here”) attempted to recruit Cintas employees and pressure Cintas into recognizing it as the employees’ bargaining agent. In addition to distributing newsletters, press releases, and letters critical of Cintas’s customers and shareholders, Unite Here also registered the domain names cintasexposed.com/.org/.net and set up a website at cintasexposed.org that featured union-composed “Consumer Bulletins.” These bulletins, some of which contained the CINTAS mark, provided Cintas customers with recommendations regarding their weekly Cintas invoices, including how to object to price increases, how to refuse “trial” products and services, and how to interpret the “fine print” in their Cintas contracts. The website also had a forum for the public to share negative stories about Cintas. Although the cintasexposed.com domain forwarded users to the same website hosted at cintasexposed.org, the cintasexposed.net domain took users directly to Unite Here’s website.
Cintas objected to use of its mark on the cintasexposed.org website, claiming that the website “compete[d] unfairly” and “generate[d] profits . . . by disparaging Cintas and its business practices, products and services, confusing Cintas’s customers, diverting customers, sales and profits away from Cintas and portraying Cintas in a bad light to the general consuming public.” Cintas alleged that some customers refused to continue to do business with Cintas after seeing the website. Cintas also alleged that the cintasexposed.org website linked to Unite Here’s website, which provided links to both Unite Here’s union store and other “Buy Union” themed websites that published lists of competing uniform manufacturers that employed unionized workers. The cintasexposed.org website displayed a disclaimer, but Cintas argued the disclaimer would not cure any initial-interest confusion because many search engines did not display the disclaimer in the search results and the website name “Cintas Exposed” would attract “unsuspecting users who believe the website is related to Cintas.” Cintas sued for trademark infringement, dilution, and cybersquatting. Unite Here moved to dismiss all claims.
The court dismissed all of Cintas’s claims. Regarding infringement, the court applied the Second Circuit’s eight-factor likelihood-of-confusion test and found that “at least four of the factors weigh[ed] heavily in Defendants’ favor”: (1) there was no proximity between the parties’ goods or services and there was no likelihood that either party would enter into the other’s field; (2) Unite Here did not act in bad faith because its “entire effort [was] directed at attacking Cintas,” rather than attempting to associate with Cintas; (3) Cintas’s customer base was a “sophisticated corporate audience”; and (4) Unite Here was “not using the CINTAS mark as a source identifier, but rather solely to criticize Cintas’s corporate practices.” Although the website could disparage Cintas, the court found that the likelihood that Cintas’s actual or potential customers would be confused was “remote.”
The court also rejected Cintas’s initial-interest confusion claim, noting that because misled Internet users “can more readily get back on track than those in actual space, thus minimizing the harm to the owner of the searched-for site from consumers becoming trapped in a competing site, Internet initial interest confusion requires a showing of intentional deception.” The court found “no plausible inference of intentional deception” here because the cintasexposed.org website would not be confused for Cintas’s corporate website and the display of a “prominent disclaimer” showed that Unite Here was “transparent in their disdain for Cintas.”
Cintas’s dilution claim failed because Unite Here was not making a for-profit, commercial use of Cintas’s mark. Cintas claimed that Unite Here was using its CINTAS mark for-profit, because the cintasexposed.org website linked to the Unite Here website, which in turn linked to the Unite Here online store where the union sold shirts, pins, and other items. The court, however, found that these “twice-removed links . . . [were] at least one bridge too far and insufficient to establish the use of the CINTAS mark for profit.” The court also rejected Cintas’s claim made at oral argument regarding the redirecting of the cintasexposed.net domain to Unite Here’s site, which put it only one link away from Unite Here’s online store. Because Cintas had not alleged that any search engine would take a user to that site or that users would ever arrive there except for typing that URL in directly, the court refused to consider this “conclusory allegation.” The court next rejected Cintas’s claims that Unite Here attempted to profit on the CINTAS mark through efforts to unionize Cintas workers to begin collecting union dues and pension contributions. Because employees had to first accept Unite Here as its union, it deemed these activities “too attenuated and independent from the accused conduct to support any inference that the use is an attempt to profit.”
Finally, because cybersquatting required a bad faith intent by Unite Here to profit from its CINTAS-formative domain names, Cintas’s cybersquatting claim failed based on the court’s earlier dilution determination that Unite Here’s use of the CINTAS mark was insufficient to establish for-profit use.
This decision is consistent with many other recent decisions allowing others to use domain names containing a brand owner’s mark for purposes of non-commercial critical commentary on the brand owner or its goods or services. It is also consistent with other decisions that twice-removed links to a commercial website are generally too attenuated to make a criticism site a commercial site.