Filed: September 18, 2001
`
`UNITED STATES COURT OF APPEALS
`
`FOR THE FOURTH CIRCUIT
`
`Nos. 00-1918(L)
`(CA-99-1336-A)
`
`People for the Ethical Treatment of Animals,
`
`Plaintiff - Appellee,
`
`versus
`
`Michael T. Doughney, an individual,
`
`Defendant - Appellant.
`
`O R D E R
`
`The Court further amends its opinion filed August 23, 2001,
`
`and amended September 6, 2001, as follows:
`
`On page 3, first full paragraph, lines 3-4 -- the words “and
`
`other domain names relating to President George W. Bush” are
`
`deleted.
`
`For the Court - By Direction
`
`/s/ Patricia S. Connor
`Clerk
`
`

`
`Filed: September 7, 2001
`
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`Nos. 00-1918(L)
`(CA-99-1336-A)
`
`People for the Ethical Treatment of Animals,
`
`Plaintiff - Appellee,
`
`versus
`
`Michael T. Doughney, an individual,
`
`Defendant - Appellant.
`
`CORRECTED ORDER
`
`The court corrects its amending order filed September 6, 2001,
`
`as follows:
`
`The citation to Virtual Works was corrected to read “128 F.3d
`
`at 270.” The citation should have been corrected to read “238 F.3d
`
`at 270.”
`
`For the Court - By Direction
`
`/s/ Patricia S. Connor
`Clerk
`
`

`
`Filed: September 6, 2001
`
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`Nos. 00-1918(L)
`(CA-99-1336-A)
`
`People for the Ethical Treatment of Animals,
`
`Plaintiff - Appellee,
`
`versus
`
`Michael T. Doughney, an individual,
`
`Defendant - Appellant.
`
`O R D E R
`
`The court amends its opinion filed August 23, 2001, as
`
`follows:
`
`On page 2, section 2, line 1 -- counsel’s name is corrected to
`
`read “G. Gervaise Davis, III.”
`
`On page 2, section 2, line 4 -- counsel’s name is corrected to
`
`read “Eric Bakri Boustani.”
`
`On page 15, first paragraph, lines 1-2 -- the citation to
`
`Virtual Works is corrected to read “128 F.3d at 270.”
`
`For the Court - By Direction
`
`/s/ Patricia S. Connor
`Clerk
`
`

`
`
`PUBLISHEDPUBLISHED
`
`PUBLISHEDPUBLISHED
`
`
`UNITED STATES COURT OF APPEALSUNITED STATES COURT OF APPEALS
`
`UNITED STATES COURT OF APPEALSUNITED STATES COURT OF APPEALS
`
`
`FOR THE FOURTH CIRCUITFOR THE FOURTH CIRCUIT
`
`FOR THE FOURTH CIRCUITFOR THE FOURTH CIRCUIT
`
`PEOPLE FOR THE ETHICAL
`TREATMENT OF ANIMALS,
`Plaintiff-Appellee,
`
`v.
`
`MICHAEL T. DOUGHNEY, an
`individual,
`Defendant-Appellant.
`
`DIANE CABELL; MILTON MUELLER,
`Amici Curiae.
`
`PEOPLE FOR THE ETHICAL
`TREATMENT OF ANIMALS,
`Plaintiff-Appellant,
`
`v.
`
`MICHAEL T. DOUGHNEY, an
`individual,
`Defendant-Appellee.
`
`Appeals from the United States District Court
`for the Eastern District of Virginia, at Alexandria.
`Claude M. Hilton, Chief District Judge.
`(CA-99-1336-A)
`
`Argued: May 7, 2001
`
`Decided: August 23, 2001
`
`Before MICHAEL and GREGORY, Circuit Judges, and
`Benson E. LEGG, United States District Judge for the
`District of Maryland, sitting by designation.
`
`No. 00-1918
`
`No. 00-2289
`
`

`
`Affirmed by published opinion. Judge Gregory wrote the opinion, in
`which Judges Michael and Legg joined.
`
`_________________________________________________________________
`
`
`COUNSELCOUNSEL
`
`COUNSELCOUNSEL
`
`
`ARGUED:ARGUED: G. Gervaise Davis, III, DAVIS & SCHROEDER,
`
`ARGUED:ARGUED:
`P.C., Monterey, California, for Appellant. Philip Jay Hirschkop,
`HIRSCHKOP & ASSOCIATES, P.C., Alexandria, Virginia, for
`
`Appellee. ON BRIEF:ON BRIEF: Eric Bakri Boustani, DAVIS &
`
`ON BRIEF:ON BRIEF:
`SCHROEDER, P.C., Monterey, California; Richard T. Rossier, Kath-
`ryn A. Kleiman, MCLEOD, WATKINSON & MILLER, Washington,
`D.C., for Appellant. Marianne R. Merritt, HIRSCHKOP & ASSO-
`CIATES, P.C., Alexandria, Virginia, for Appellee. Diane Cabell,
`HARVARD LAW SCHOOL, Cambridge, Massachusetts; Dr. Milton
`Mueller, Center for Science and Technology, SYRACUSE UNIVER-
`SITY, Syracuse, New York, Amici Curiae Pro Se.
`
`_________________________________________________________________
`
`
`OPINIONOPINION
`
`OPINIONOPINION
`
`GREGORY, Circuit Judge:
`
`People for the Ethical Treatment of Animals ("PETA") sued
`Michael Doughney ("Doughney") after he registered the domain
`name peta.org and created a website called "People Eating Tasty Ani-
`mals." PETA alleged claims of service mark infringement under 15
`U.S.C. § 1114 and Virginia common law, unfair competition under 15
`U.S.C. § 1125(a) and Virginia common law, and service mark dilu-
`tion and cybersquatting under 15 U.S.C. § 1123(c). Doughney appeals
`the district court's decision granting PETA's motion for summary
`judgment and PETA cross-appeals the district court's denial of its
`motion for attorney's fees and costs. Finding no error, we affirm.
`
`I.
`
`PETA is an animal rights organization with more than 600,000
`members worldwide. PETA "is dedicated to promoting and heighten-
`ing public awareness of animal protection issues and it opposes the
`
` 2
`
`

`
`exploitation of animals for food, clothing, entertainment and vivisec-
`tion." Appellee/Cross-Appellant PETA's Brief at 7.
`
`Doughney is a former internet executive who has registered many
`domain names since 1995. For example, Doughney registered domain
`names such as dubyadot.com, dubyadot.net, deathbush.com, RandallTer-
`ry.org (Not Randall Terry for Congress), bwtel.com (Baltimore-
`Washington Telephone Company), pmrc.org ("People's Manic
`Repressive Church"), and ex-cult.org (Ex-Cult Archive). At the time
`the district court issued its summary judgment ruling, Doughney
`owned 50-60 domain names.
`
`Doughney registered the domain name peta.org in 1995 with Net-
`work Solutions, Inc. ("NSI"). When registering the domain name,
`Doughney represented to NSI that the registration did "not interfere
`with or infringe upon the rights of any third party," and that a "non-
`profit educational organization" called "People Eating Tasty Animals"
`was registering the domain name. Doughney made these representa-
`tions to NSI despite knowing that no corporation, partnership, organi-
`zation or entity of any kind existed or traded under that name.
`Moreover, Doughney was familiar with PETA and its beliefs and had
`been for at least 15 years before registering the domain name.
`
`After registering the peta.org domain name, Doughney used it to
`create a website purportedly on behalf of "People Eating Tasty Ani-
`mals." Doughney claims he created the website as a parody of PETA.
`A viewer accessing the website would see the title "People Eating
`Tasty Animals" in large, bold type. Under the title, the viewer would
`see a statement that the website was a "resource for those who enjoy
`eating meat, wearing fur and leather, hunting, and the fruits of scien-
`tific research." The website contained links to various meat, fur,
`leather, hunting, animal research, and other organizations, all of
`which held views generally antithetical to PETA's views. Another
`statement on the website asked the viewer whether he/she was "Feel-
`ing lost? Offended? Perhaps you should, like, exit immediately." The
`phrase "exit immediately" contained a hyperlink to PETA's official
`website.
`
` 3
`
`

`
`Doughney's website appeared at "www.peta.org" for only six
`months in 1995-96. In 1996, PETA asked Doughney to voluntarily
`transfer the peta.org domain name to PETA because PETA owned the
`"PETA" mark ("the Mark"), which it registered in 1992. See U.S.
`Trademark Registration No. 1705,510. When Doughney refused to
`transfer the domain name to PETA, PETA complained to NSI, whose
`rules then required it to place the domain name on "hold" pending res-
`olution of Doughney's dispute with PETA.1 1 1 1 Consequently, Doughney
`moved the website to www.mtd.com/tasty and added a disclaimer stat-
`ing that "People Eating Tasty Animals is in no way connected with,
`or endorsed by, People for the Ethical Treatment of Animals."
`
`In response to Doughney's domain name dispute with PETA, The
`Chronicle of Philanthropy quoted Doughney as stating that, "[i]f they
`[PETA] want one of my domains, they should make me an offer."
`Non-Profit Groups Upset by Unauthorized Use of Their Names on the
`Internet, THE CHRONICLE OF PHILANTHROPY, Nov. 14, 1996. Doughney
`does not dispute making this statement. Additionally, Doughney
`posted the following message on his website on May 12, 1996:
`
`"PeTa" has no legal grounds whatsoever to make even the
`slightest demands of me regarding this domain name regis-
`tration. If they disagree, they can sue me. And if they don't,
`well, perhaps they can behave like the polite ladies and gen-
`tlemen that they evidently aren't and negotiate a settlement
`with me. . . . Otherwise, "PeTa" can wait until the signifi-
`cance and value of a domain name drops to nearly nothing,
`which is inevitable as each new web search engine comes
`on-line, because that's how long it's going to take for this
`dispute to play out.
`
`PETA sued Doughney in 1999, asserting claims for service mark
`infringement, unfair competition, dilution and cybersquatting. PETA
`did not seek damages, but sought only to enjoin Doughney's use of
`_________________________________________________________________
`
`1 1 1 1 When Doughney registered peta.org, he agreed to abide by NSI's
`Dispute Resolution Policy, which specified that a domain name using a
`third party's registered trademark was subject to placement on "hold"
`status.
`
` 4
`
`

`
`the "PETA" Mark and an order requiring Doughney to transfer the
`peta.org domain name to PETA.
`
`Doughney responded to the suit by arguing that the website was a
`constitutionally-protected parody of PETA. Nonetheless, the district
`court granted PETA's motion for summary judgment on June 12,
`2000. People for the Ethical Treatment of Animals, Inc. v. Doughney,
`113 F. Supp.2d 915 (E.D. Va. 2000). The district court rejected
`Doughney's parody defense, explaining that
`
`[o]nly after arriving at the "PETA.ORG" web site could the
`web site browser determine that this was not a web site
`owned, controlled or sponsored by PETA. Therefore, the
`two images: (1) the famous PETA name and (2) the "People
`Eating Tasty Animals" website was not a parody because
`[they were not] simultaneous.
`
`Id. at 921.
`
`PETA subsequently moved for attorney fees and costs. The district
`court denied the motion, finding that the case was not "exceptional"
`under 15 U.S.C. § 1117. PETA moved to reconsider in part, arguing
`that it was entitled to "costs of the action" and attaching a statement
`for filing fees, photocopying, facsimiles, courier services, postage,
`travel, mileage, tolls, parking, long distance telephone calls, "ser-
`vices," transcripts, computer research, "miscellaneous" expenses, and
`witness fees and mileage. The district court ruled on September 15,
`2000, stating that
`
`Plaintiff has submitted to the Court what it asserts is an
`itemization of its expenses without providing any supporting
`documentation or legal analysis of why these expenses are
`"costs of the action" within the meaning of 15 U.S.C.
`§ 1117(a) and 28 U.S.C. § 1920. Defendant challenges
`Plaintiff's expenses as excessive. It appears to the Court that
`many of Plaintiff's expenses are for mere "trial preparation,"
`and not recoverable as costs.
`
`For those reasons it is hereby,
`
` 5
`
`

`
`ORDERED that Plaintiff's Motion for Reconsideration
`and/or Clarification is DENIED except that Plaintiff shall be
`awarded those costs routinely taxed by the Clerk. Plaintiff
`shall not receive as costs mere trial preparation expenses.
`Plaintiff shall submit a Bill of Costs to the Clerk of the
`Court.
`
`People for the Ethical Treatment of Animals, Inc. v. Doughney, Civil
`Action No. 99-1336-A, Order (E.D. Va. Sept. 15, 2000).
`
`II.
`
`We review a district court's summary judgment ruling de novo,
`viewing the evidence in the light most favorable to the non-moving
`party. Goldstein v. The Chestnut Ridge Volunteer Fire Co., 218 F.3d
`337, 340 (4th Cir. 2000); Binakonsky v. Ford Motor Co., 133 F.3d
`281, 284-85 (4th Cir. 1998). Summary judgment is appropriate if "the
`pleadings, depositions, answers to interrogatories, and admissions on
`file, together with the affidavits, if any, show that there is no genuine
`issue as to any material fact and that the moving party is entitled to
`judgment as a matter of law." Fed. R. Civ. P. 56.
`
`A. Trademark Infringement/Unfair Competition
`
`A plaintiff alleging causes of action for trademark infringement
`and unfair competition must prove (1) that it possesses a mark; (2)
`that the defendant used the mark; (3) that the defendant's use of the
`mark occurred "in commerce"; (4) that the defendant used the mark
`"in connection with the sale, offering for sale, distribution, or adver-
`tising" of goods or services; and (5) that the defendant used the mark
`in a manner likely to confuse consumers. 15 U.S.C. §§ 1114, 1125(a);
`Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922,
`930 (4th Cir. 1995).2222
`_________________________________________________________________
`
`2222 See also Lone Star Steakhouse & Saloon, 43 F.3d at 930 n.10 ("[t]he
`test for trademark infringement and unfair competition under the Lanham
`Act is essentially the same as that for common law unfair competition
`under Virginia law . . . .").
`
` 6
`
`

`
`There is no dispute here that PETA owns the "PETA" Mark, that
`Doughney used it, and that Doughney used the Mark "in commerce."
`Doughney disputes the district court's findings that he used the Mark
`in connection with goods or services and that he used it in a manner
`engendering a likelihood of confusion.
`
`1.
`
`To use PETA's Mark "in connection with" goods or services,
`Doughney need not have actually sold or advertised goods or services
`on the www.peta.org website. Rather, Doughney need only have pre-
`vented users from obtaining or using PETA's goods or services, or
`need only have connected the website to other's goods or services.
`
`While sparse, existing caselaw on infringement and unfair competi-
`tion in the Internet context clearly weighs in favor of this conclusion.
`For example, in OBH, Inc. v. Spotlight Magazine, Inc., the plaintiffs
`owned the "The Buffalo News" registered trademark used by the
`newspaper of the same name. 86 F. Supp.2d 176 (W.D. N.Y. 2000).
`The defendants registered the domain name thebuffalonews.com and
`created a website parodying The Buffalo News and providing a public
`forum for criticism of the newspaper. Id. at 182. The site contained
`hyperlinks to other local news sources and a site owned by the defen-
`dants that advertised Buffalo-area apartments for rent. Id. at 183.
`
`The court held that the defendants used the mark "in connection
`with" goods or services because the defendants' website was "likely
`to prevent or hinder Internet users from accessing plaintiffs' services
`on plaintiffs' own web site." Id.
`
`Prospective users of plaintiffs' services who mistakenly
`access defendants' web site may fail to continue to search
`for plaintiffs' web site due to confusion or frustration. Such
`users, who are presumably looking for the news services
`provided by the plaintiffs on their web site, may instead opt
`to select one of the several other news-related hyperlinks
`contained in defendants' web site. These news-related
`hyperlinks will directly link the user to other news-related
`web sites that are in direct competition with plaintiffs in pro-
`viding news-related services over the Internet. Thus, defen-
`
` 7
`
`

`
`dants' action in appropriating plaintiff's mark has a
`connection to plaintiffs' distribution of its services.
`
`Id. Moreover, the court explained that defendants' use of the plain-
`tiffs' mark was in connection with goods or services because it con-
`tained a link to the defendants' apartment-guide website. Id.
`
`Similarly, in Planned Parenthood Federation of America, Inc. v.
`Bucci, the plaintiff owned the "Planned Parenthood" mark, but the
`defendant registered the domain name plannedparenthood.com. 42
`U.S.P.Q.2d 1430 (S.D.N.Y. 1997). Using the domain name, the
`defendant created a website containing information antithetical to the
`plaintiff's views. Id. at 1435. The court ruled that the defendant used
`the plaintiff's mark "in connection with" the distribution of services
`
`because it is likely to prevent some Internet users from
`reaching plaintiff's own Internet web site. Prospective users
`of plaintiff's services who mistakenly access defendant's
`web site may fail to continue to search for plaintiff's own
`home page, due to anger, frustration, or the belief that plain-
`tiff's home page does not exist.
`
`Id.
`
`The same reasoning applies here. As the district court explained,
`Doughney's use of PETA's Mark in the domain name of his website
`
`is likely to prevent Internet users from reaching [PETA's]
`own Internet web site. The prospective users of [PETA's]
`services who mistakenly access Defendant's web site may
`fail to continue to search for [PETA's] own home page, due
`to anger, frustration, or the belief that [PETA's] home page
`does not exist.
`
`Doughney, 113 F. Supp.2d at 919 (quoting Bucci, 42 U.S. P.Q.2d at
`1435). Moreover, Doughney's web site provides links to more than
`30 commercial operations offering goods and services. By providing
`links to these commercial operations, Doughney's use of PETA's
`Mark is "in connection with" the sale of goods or services.
`
` 8
`
`

`
`2.
`
`The unauthorized use of a trademark infringes the trademark hold-
`er's rights if it is likely to confuse an "ordinary consumer" as to the
`source or sponsorship of the goods. Anheuser-Busch, Inc. v. L&L
`Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992) (citing 2 J. McCarthy,
`Trademarks and Unfair Competition § 23:28 (2d ed. 1984)). To deter-
`mine whether a likelihood of confusion exists, a court should not con-
`sider "how closely a fragment of a given use duplicates the
`trademark," but must instead consider "whether the use in its entirety
`creates a likelihood of confusion." Id. at 319.
`
`Doughney does not dispute that the peta.org domain name engen-
`ders a likelihood of confusion between his web site and PETA.
`Doughney claims, though, that the inquiry should not end with his
`domain name. Rather, he urges the Court to consider his website in
`conjunction with the domain name because, together, they purport-
`edly parody PETA and, thus, do not cause a likelihood of confusion.
`
`A "parody" is defined as a "simple form of entertainment conveyed
`by juxtaposing the irreverent representation of the trademark with the
`idealized image created by the mark's owner." L.L. Bean, Inc. v.
`Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987). A parody
`must "convey two simultaneous -- and contradictory -- messages:
`that it is the original, but also that it is not the original and is instead
`a parody." Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Group,
`Inc., 886 F.2d 490, 494 (2d Cir. 1989) (emphasis in original). To the
`extent that an alleged parody conveys only the first message, "it is not
`only a poor parody but also vulnerable under trademark law, since the
`customer will be confused." Id. While a parody necessarily must
`engender some initial confusion, an effective parody will diminish the
`risk of consumer confusion "by conveying [only] just enough of the
`original design to allow the consumer to appreciate the point of par-
`ody." Jordache Enterprises, Inc. v. Hogg Wylde, Ltd., 828 F.2d 1482,
`1486 (10th Cir. 1987).
`
`Looking at Doughney's domain name alone, there is no suggestion
`of a parody. The domain name peta.org simply copies PETA's Mark,
`conveying the message that it is related to PETA. The domain name
`does not convey the second, contradictory message needed to estab-
`
` 9
`
`

`
`lish a parody -- a message that the domain name is not related to
`PETA, but that it is a parody of PETA.
`
`Doughney claims that this second message can be found in the con-
`tent of his website. Indeed, the website's content makes it clear that
`it is not related to PETA. However, this second message is not con-
`veyed simultaneously with the first message, as required to be consid-
`ered a parody. The domain name conveys the first message; the
`second message is conveyed only when the viewer reads the content
`of the website. As the district court explained,"an internet user would
`not realize that they were not on an official PETA web site until after
`they had used PETA's Mark to access the web page`www.peta.org.'"
`Doughney, 113 F. Supp.2d at 921. Thus, the messages are not con-
`veyed simultaneously and do not constitute a parody. See also Morri-
`son & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Co. 2000)
`(defendant's use of plaintiffs' mark in domain name "does not convey
`two simultaneous and contradictory messages" because "[o]nly by
`reading through the content of the sites could the user discover that
`the domain names are an attempt at parody"); Bucci, 42 U.S.P.Q.2d
`at 1435 (rejecting parody defense because "[s]eeing or typing the
``planned parenthood' mark and accessing the web site are two sepa-
`rate and nonsimultaneous activities"). The district court properly
`rejected Doughney's parody defense and found that Doughney's use
`of the peta.org domain name engenders a likelihood of confusion.
`Accordingly, Doughney failed to raise a genuine issue of material fact
`regarding PETA's infringement and unfair competition claims.
`
`B. Anticybersquatting Consumer Protection Act
`
`The district court found Doughney liable under the Anticybersquat-
`ting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d)(1)(A).
`To establish an ACPA violation, PETA was required to (1) prove that
`Doughney had a bad faith intent to profit from using the peta.org
`domain name, and (2) that the peta.org domain name is identical or
`confusingly similar to, or dilutive of, the distinctive and famous
`PETA Mark. 15 U.S.C. § 1125(d)(1)(A).
`
`Doughney makes several arguments relating to the district court's
`ACPA holding: (1) that PETA did not plead an ACPA claim, but
`raised it for the first time in its motion for summary judgment; (2) that
`
` 10
`
`

`
`the ACPA, which became effective in 1999, cannot be applied retro-
`actively to events that occurred in 1995 and 1996; (3) that Doughney
`did not seek to financially profit from his use of PETA's Mark; and
`(4) that Doughney acted in good faith.
`
`None of Doughney's arguments are availing. First, PETA raised its
`ACPA claim for the first time in its summary judgment briefs.
`Doughney objected, noting that PETA failed to plead the claim in its
`complaint and failed to seek leave to amend to do so. Doughney also
`vigorously defended against the claim. PETA acknowledged below
`that it did not plead the claim, but "respectfully request[ed]" in its
`summary judgment reply brief "that th[e district] Court apply the [the
`ACPA] to the case at bar[.]" Nothing in the record suggests that the
`district court entered an order amending PETA's complaint to include
`an ACPA claim. However, the district court appears to have ruled on
`PETA's informal motion, listing the ACPA in its summary judgment
`order as one of the claims on which PETA seeks summary judgment
`and rendering judgment as to that claim.
`
`The Federal Rules "allow liberal amendment of pleadings through-
`out the progress of a case." Elmore v. Corcoran, 913 F.2d 170, 172
`(4th Cir. 1990) (citing Brandon v. Holt, 469 U.S. 464, 471 (1985)
`(petitioners allowed to amend pleadings before Supreme Court)). A
`party's failure to amend will not affect a final judgment if the issues
`resolved were "tried by express or implied consent of the parties." Id.
`(citing Fed. R. Civ. P. 15(b)). Even without a formal amendment, "a
`district court may amend the pleadings merely by entering findings on
`the unpleaded issues." Id. (quoting Galindo v. Stoody Co., 793 F.2d
`1502, 1513 n. 8 (9th Cir. 1986)).
`
`Here, PETA's summary judgment briefs essentially moved the dis-
`trict court for leave to amend its complaint to include an ACPA claim,
`and the district court appears to have granted that motion via its sum-
`mary judgment ruling. While the record would have been clearer had
`PETA formally filed such a motion and the district court formally
`entered such an order, they did so in substance if not in form. Thus,
`we reject Doughney's first contention.
`
`Doughney's second argument -- that the ACPA may not be
`applied retroactively -- also is unavailing. The ACPA expressly
`
` 11
`
`

`
`states that it "shall apply to all domain names registered before, on,
`or after the date of the enactment of this Act[.]" Pub. L. No. 106-113,
`§ 3010, 113 Stat. 1536. See also Sporty's Farm L.L.C. v. Sportsman's
`Market, Inc., 202 F.3d 489, 496 (2d Cir. 2000) (same). Moreover,
`while the ACPA precludes the imposition of damages in cases in
`which domain names were registered, trafficked, or used before its
`enactment, Pub. L. No. 106-113, § 3010, 113 Stat. 1536 ("damages
`under subsection (a) or (d) of section 35 of the Trademark Act of
`1946 (15 U.S.C. 1117), . . . shall not be available with respect to the
`registration, trafficking, or use of a domain name that occurs before
`the date of the enactment of this Act"), it does not preclude the impo-
`sition of equitable remedies. See also Virtual Networks, Inc. v. Volks-
`wagen of America, Inc., 238 F.3d 264, 268 (4th Cir. 2001). Here, the
`district court did not award PETA damages (nor did PETA request
`damages), but ordered Doughney to relinquish the domain name,
`transfer its registration to PETA, and limit his use of domain names
`to those that do not use PETA's Mark. Doughney, 113 F. Supp.2d at
`922. Thus, the district court properly applied the ACPA to this case.
`
`Doughney's third argument -- that he did not seek to financially
`profit from registering a domain name using PETA's Mark -- also
`offers him no relief. It is undisputed that Doughney made statements
`to the press and on his website recommending that PETA attempt to
`"settle" with him and "make him an offer." The undisputed evidence
`belies Doughney's argument.
`
`Doughney's fourth argument -- that he did not act in bad faith --
`also is unavailing. Under 15 U.S.C. § 1125(d)(1)(B)(i), a court may
`consider several factors to determine whether a defendant acted in bad
`faith, including
`
`(I) the trademark or other intellectual property rights of the
`person, if any, in the domain name;
`
`(II) the extent to which the domain name consists of the
`legal name of the person or a name that is otherwise com-
`monly used to identify that person;
`
`(III) the person's prior use, if any, of the domain name in
`connection with the bona fide offering of any goods or ser-
`vices;
`
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`
`(IV) the person's bona fide noncommercial or fair use of the
`mark in a site accessible under the domain name;
`
`(V) the person's intent to divert consumers from the mark
`owner's online location to a site accessible under the
`domain name that could harm the goodwill represented by
`the mark, either for commercial gain or with the intent to
`tarnish or disparage the mark, by creating a likelihood of
`confusion as to the source, sponsorship, affiliation, or
`endorsement of the site;
`
`(VI) the person's offer to transfer, sell, or otherwise assign
`the domain name to the mark owner or any third party for
`financial gain without having used, or having an intent to
`use, the domain name in the bona fide offering of any goods
`or services, or the person's prior conduct indicating a pattern
`of such conduct;
`
`(VII) the person's provision of material and misleading false
`contact information when applying for the registration of the
`domain name, the person's intentional failure to maintain
`accurate contact information, or the person's prior conduct
`indicating a pattern of such conduct;
`
`(VIII) the person's registration or acquisition of multiple
`domain names which the person knows are identical or con-
`fusingly similar to marks of others that are distinctive at the
`time of registration of such domain names, or dilutive of
`famous marks of others that are famous at the time of regis-
`tration of such domain names, without regard to the goods
`or services of the parties; and
`
`(IX) the extent to which the mark incorporated in the per-
`son's domain name registration is or is not distinctive and
`famous within the meaning of subsection (c)(1) of this sec-
`tion.
`
`15 U.S.C. § 1125(d)(1)(B)(i). In addition to listing these nine factors,
`the ACPA contains a safe harbor provision stating that bad faith intent
`
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`

`
`"shall not be found in any case in which the court determines that the
`person believed and had reasonable grounds to believe that the use of
`the domain name was fair use or otherwise lawful." 15 U.S.C.
`§ 1225(d)(1)(B)(ii).
`
`The district court reviewed the factors listed in the statute and
`properly concluded that Doughney (I) had no intellectual property
`right in peta.org; (II) peta.org is not Doughney's name or a name oth-
`erwise used to identify Doughney; (III) Doughney had no prior use
`of peta.org in connection with the bona fide offering of any goods or
`services; (IV) Doughney used the PETA Mark in a commercial man-
`ner; (V) Doughney "clearly intended to confuse, mislead and divert
`internet users into accessing his web site which contained information
`antithetical and therefore harmful to the goodwill represented by the
`PETA Mark"; (VI) Doughney made statements on his web site and
`in the press recommending that PETA attempt to "settle" with him
`and "make him an offer"; (VII) Doughney made false statements
`when registering the domain name; and (VIII) Doughney registered
`other domain names that are identical or similar to the marks or
`names of other famous people and organizations. People for the Ethi-
`cal Treatment of Animals, 113 F. Supp.2d at 920.
`
`Doughney claims that the district court's later ruling denying
`PETA's motion for attorney fees triggers application of the ACPA's
`safe harbor provision. In that ruling, the district court stated that
`
`Doughney registered the domain name because he thought
`that he had a legitimate First Amendment right to express
`himself this way. The Court must consider Doughney's state
`of mind at the time he took the actions in question. Dough-
`ney thought he was within his First Amendment rights to
`create a parody of the plaintiff's organization.
`
`People for the Ethical Treatment of Animals, Inc. v. Doughney, Civil
`Action No. 99-1336-A, Order at 4 (E.D. Va. Aug. 31, 2000). With its
`attorney's fee ruling, the district court did not find that Doughney
`"had reasonable grounds to believe" that his use of PETA's Mark was
`lawful. It held only that Doughney thought it to be lawful.
`
`Moreover, a defendant "who acts even partially in bad faith in reg-
`istering a domain name is not, as a matter of law, entitled to benefit
`
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`

`
`from [the ACPA's] safe harbor provision." Virtual Works, Inc., 238
`F.3d at 270. Doughney knowingly provided false information to NSI
`upon registering the domain name, knew he was registering a domain
`name identical to PETA's Mark, and clearly intended to confuse
`Internet users into accessing his website, instead of PETA's official
`website. Considering the evidence of Doughney's bad faith, the safe
`harbor provision can provide him no relief.
`
`III.
`
`A. Attorney Fees
`
`This Court reviews the denial of an award for attorney fees for
`abuse of discretion. Shell Oil Co. v. Commercial Petroleum, Inc., 928
`F.2d 104, 108 n.6 (4th Cir. 1991). A trial court abuses its discretion
`only if its conclusions are based on mistaken legal principles or
`clearly erroneous factual findings. Westberry v. Gislaved Gummi AB,
`178 F.3d 257, 261 (4th Cir. 1999).
`
`In trademark infringement cases, the Court may award reasonable
`attorney fees in exceptional cases. Under 15 U.S.C. § 1117(a), a case
`is "exceptional" if the defendant's conduct was "malicious, fraudu-
`lent, willful or deliberate in nature." Scotch Whisky Ass'n v. Majestic
`Drilling Co., Inc., 958 F.2d 594, 599 (4th Cir. 1991). In other words,
`a prevailing plaintiff must "show that the defendant acted in bad
`faith." Id. See also Texas Pig Stands v. Hard Rock Cafe Int'l, Inc.,
`951 F.2d 684, 697 (5th Cir. 1992) (the term "exceptional" should be
`"interpreted by courts to require a showing of a high degree of culpa-
`bility on the part of the infringer, for example, bad faith or fraud").
`
`PETA sought attorney fees of more than $276,000. The district
`court denied the motion, holding that Doughney did not act mali-
`ciously, fraudulently, willfully or deliberately because "he thought
`that he had a legitimate First Amendment right to express himself this
`way" and "to create a parody of the plaintiff's organization." PETA
`claims the district court's decision is inconsistent with its bad faith
`finding under the ACPA, and argues that Doughney's conduct estab-
`lished bad faith.
`
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`
`

`
`However, a bad faith finding under the ACPA does not compel a
`finding of malicious, fraudulent, willful or deliberate behavior under
`§ 1117. The district