PUBLISHED
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`
`
`CHRISTOPHER LAMPARELLO,
`Plaintiff-Appellant,
`v.
`JERRY FALWELL; JERRY FALWELL
`MINISTRIES,
`
`Defendants-Appellees.
`
`AMERICAN CIVIL LIBERTIES UNION;
`ACLU FOUNDATION OF VIRGINIA;
`INTELLECTUAL PROPERTY LAW
`FACULTY,
`Amici Supporting Appellant.
`
`
`
`CHRISTOPHER LAMPARELLO,
`Plaintiff-Appellee,
`v.
`JERRY FALWELL; JERRY FALWELL
`MINISTRIES,
`
`Defendants-Appellants.
`
`AMERICAN CIVIL LIBERTIES UNION;
`ACLU FOUNDATION OF VIRGINIA;
`INTELLECTUAL PROPERTY LAW
`FACULTY,
`
`Amici Supporting Appellee.
`
`No. 04-2011
`
`No. 04-2122
`
`(cid:252)
`(cid:253)
`(cid:254)
`(cid:252)
`(cid:253)
`(cid:254)
`

`
`2
`
`LAMPARELLO v. FALWELL
`
`Appeals from the United States District Court
`for the Eastern District of Virginia, at Alexandria.
`Claude M. Hilton, Chief District Judge.
`(CA-03-1503-A)
`
`Argued: May 26, 2005
`
`Decided: August 24, 2005
`
`Before MICHAEL, MOTZ, and KING, Circuit Judges.
`
`Reversed and remanded by published opinion. Judge Motz wrote the
`opinion, in which Judge Michael and Judge King joined.
`
`COUNSEL
`
`ARGUED: Paul Alan Levy, PUBLIC CITIZEN LITIGATION
`GROUP, Washington, D.C., for Christopher Lamparello. John Hol-
`brook Midlen, Jr., MIDLEN LAW CENTER, Chevy Chase, Mary-
`land, for Jerry Falwell and Jerry Falwell Ministries. ON BRIEF:
`Allison M. Zieve, PUBLIC CITIZEN LITIGATION GROUP, Wash-
`ington, D.C., for Christopher Lamparello. Phillip R. Malone, Bruce P.
`Keller, Jeffrey P. Cunard, BERKMAN CENTER FOR INTERNET
`AND SOCIETY, HARVARD LAW SCHOOL, Cambridge, Massa-
`chusetts; Rebecca Tushnet, Visiting Associate Professor of Law,
`GEORGETOWN UNIVERSITY LAW CENTER, Washington, D.C.,
`for Amici Curiae, Intellectual Property Law Faculty, Supporting
`Christopher Lamparello. Rebecca K. Glenberg, AMERICAN CIVIL
`LIBERTIES UNION OF VIRGINIA FOUNDATION, INC., Rich-
`mond, Virginia; Michael Adams, AMERICAN CIVIL LIBERTIES
`UNION, New York, New York, for Amici Curiae, American Civil
`Liberties Union and American Civil Liberties Union of Virginia
`Foundation, Inc., Supporting Christopher Lamparello.
`
`

`
`LAMPARELLO v. FALWELL
`
`3
`
`OPINION
`
`DIANA GRIBBON MOTZ, Circuit Judge:
`
`Christopher Lamparello appeals the district court’s order enjoining
`him from maintaining a gripe website critical of Reverend Jerry Fal-
`well. For the reasons stated below, we reverse.
`
`I.
`
`Reverend Falwell is "a nationally known minister who has been
`active as a commentator on politics and public affairs." Hustler Mag-
`azine, Inc. v. Falwell, 485 U.S. 46, 47 (1988). He holds the common
`law trademarks "Jerry Falwell" and "Falwell," and the registered
`trademark "Listen America with Jerry Falwell." Jerry Falwell Minis-
`tries can be found online at "www.falwell.com," a website which
`receives 9,000 hits (or visits) per day.
`
`Lamparello registered the domain name "www.fallwell.com" on
`February 11, 1999, after hearing Reverend Falwell give an interview
`"in which he expressed opinions about gay people and homosexuality
`that [Lamparello] considered . . . offensive." Lamparello created a
`website at that domain name to respond to what he believed were "un-
`truths about gay people." Lamparello’s website included headlines
`such as "Bible verses that Dr. Falwell chooses to ignore" and "Jerry
`Falwell has been bearing false witness (Exodus 20:16) against his gay
`and lesbian neighbors for a long time." The site also contained in-
`depth criticism of Reverend Falwell’s views. For example, the web-
`site stated:
`
`Dr. Falwell says that he is on the side of truth. He says that
`he will preach that homosexuality is a sin until the day he
`dies. But we believe that if the reverend were to take another
`thoughtful look at the scriptures, he would discover that they
`have been twisted around to support an anti-gay political
`agenda . . . at the expense of the gospel.
`
`Although the interior pages of Lamparello’s website did not contain
`a disclaimer, the homepage prominently stated, "This website is NOT
`
`

`
`4
`
`LAMPARELLO v. FALWELL
`
`affiliated with Jerry Falwell or his ministry"; advised, "If you would
`like to visit Rev. Falwell’s website, you may click here"; and pro-
`vided a hyperlink to Reverend Falwell’s website.
`
`At one point, Lamparello’s website included a link to the Ama-
`zon.com webpage for a book that offered interpretations of the Bible
`that Lamparello favored, but the parties agree that Lamparello has
`never sold goods or services on his website. The parties also agree
`that "Lamparello’s domain name and web site at www.fallwell.com,"
`which received only 200 hits per day, "had no measurable impact on
`the quantity of visits
`to [Reverend Falwell’s] web site at
`www.falwell.com."
`
`Nonetheless, Reverend Falwell sent Lamparello letters in October
`2001 and June 2003 demanding that he cease and desist from using
`www.fallwell.com or any variation of Reverend Falwell’s name as a
`domain name. Ultimately, Lamparello filed this action against Rever-
`end Falwell and his ministries (collectively referred to hereinafter as
`"Reverend Falwell"), seeking a declaratory judgment of noninfringe-
`ment. Reverend Falwell counter-claimed, alleging trademark infringe-
`ment under 15 U.S.C. § 1114 (2000), false designation of origin under
`15 U.S.C. § 1125(a), unfair competition under 15 U.S.C. § 1126 and
`the common law of Virginia,1 and cybersquatting under 15 U.S.C.
`§ 1125(d).
`
`1As the district court noted, although Reverend Falwell "assert[s] a
`claim under 15 U.S.C. [§] 1126 for a violation of federal unfair competi-
`tion law, no such cause of action exists. False Designation of Origin is
`commonly referred to as unfair competition law . . . ." Lamparello v. Fal-
`well, 360 F. Supp. 2d 768, 773 n.2 (E.D. Va. 2004). Accordingly, the dis-
`trict court "construed any claim by [Falwell] for violation of federal
`unfair competition law as a claim for violation of 15 U.S.C. [§] 1125."
`Id. We will do the same. Furthermore, because "[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
`because both address the likelihood of confusion as to the source of the
`goods or services involved," Lone Star Steakhouse & Saloon, Inc. v.
`Alpha of Va., Inc., 43 F.3d 922, 930 n.10 (4th Cir. 1995), Reverend Fal-
`well’s state-law unfair competition claim rises or falls with his federal
`claims of infringement and false designation of origin. Therefore, we will
`not analyze his state-law claim separately.
`
`

`
`LAMPARELLO v. FALWELL
`
`5
`
`The parties stipulated to all relevant facts and filed cross-motions
`for summary judgment. The district court granted summary judgment
`to Reverend Falwell, enjoined Lamparello from using Reverend Fal-
`well’s mark at www.fallwell.com, and required Lamparello to transfer
`the domain name to Reverend Falwell. Lamparello, 360 F. Supp.2d
`at 773, 775. However, the court denied Reverend Falwell’s request
`for statutory damages or attorney fees, reasoning that the "primary
`motive" of Lamparello’s website was "to put forth opinions on issues
`that were contrary to those of [Reverend Falwell]" and "not to take
`away monies or to profit." Id. at 775.
`
`Lamparello appeals the district court’s order; Reverend Falwell
`cross-appeals the denial of statutory damages and attorney fees. We
`review de novo a district court’s ruling on cross-motions for summary
`judgment. See People for the Ethical Treatment of Animals v. Dough-
`ney, 263 F.3d 359, 364 (4th Cir. 2001) [hereinafter "PETA"].
`
`II.
`
`We first consider Reverend Falwell’s claims of trademark infringe-
`ment and false designation of origin.
`
`A.
`
`Section 32 of the Lanham Act creates a cause of action against:
`
`[a]ny person who shall, without the consent of the registrant
`— (a) use in commerce any reproduction, counterfeit, copy,
`or colorable imitation of a registered mark in connection
`with the sale, offering for sale, distribution, or advertising of
`any goods or services on or in connection with which such
`use is likely to cause confusion, or to cause mistake, or to
`deceive.
`
`15 U.S.C. § 1114(1). Similarly, Section 43(a) creates a cause of action
`against:
`
`[a]ny person who, on or in connection with any goods or
`services, . . . uses in commerce any word . . . [or] name . . .,
`
`

`
`6
`
`LAMPARELLO v. FALWELL
`
`or any false designation of origin, false or misleading
`description of fact, or false or misleading representation of
`fact, which — (A) is likely to cause confusion, or to cause
`mistake, or to deceive as to the affiliation, connection, or
`association of such person with another person, or as to the
`origin, sponsorship, or approval of his or her goods, ser-
`vices, or commercial activities by another person.
`
`15 U.S.C. § 1125(a)(1)(A).
`
`Both infringement and false designation of origin have five ele-
`ments. To prevail under either cause of action, the trademark holder
`must prove:
`
`(1) that it possesses a mark; (2) that the [opposing party]
`used the mark; (3) that the [opposing party’s] use of the
`mark occurred "in commerce"; (4) that the [opposing party]
`used the mark "in connection with the sale, offering for sale,
`distribution, or advertising" of goods or services; and (5)
`that the [opposing party] used the mark in a manner likely
`to confuse consumers.
`
`PETA, 263 F.3d at 364 (citing 15 U.S.C. §§ 1114, 1125, and Lone
`Star Steakhouse & Saloon, 43 F.3d at 930).
`
`Trademark law serves the important functions of protecting product
`identification, providing consumer information, and encouraging the
`production of quality goods and services. See Qualitex Co. v. Jacob-
`son Prods. Co., 514 U.S. 159, 164 (1995). But protections "‘against
`unfair competition’" cannot be transformed into "‘rights to control
`language.’" CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir.
`2000) (quoting Mark A. Lemley, The Modern Lanham Act and the
`Death of Common Sense, 108 Yale L.J. 1687, 1710-11 (1999)). "Such
`a transformation" would raise serious First Amendment concerns
`because it would limit the
`
`ability to discuss the products or criticize the conduct of
`companies that may be of widespread public concern and
`importance. Much useful social and commercial discourse
`
`

`
`LAMPARELLO v. FALWELL
`
`7
`
`would be all but impossible if speakers were under threat of
`an infringement lawsuit every time they made reference to
`a person, company or product by using its trademark.
`
`Id. (internal quotation marks and citations omitted).
`
`Lamparello and his amici argue at length that application of the
`Lanham Act must be restricted to "commercial speech" to assure that
`trademark law does not become a tool for unconstitutional censorship.
`The Sixth Circuit has endorsed this view, see Taubman Co. v. Web-
`feats, 319 F.3d 770, 774 (6th Cir. 2003), and the Ninth Circuit
`recently has done so as well, see Bosley Med. Inst., Inc. v. Kremer,
`403 F.3d 672, 674 (9th Cir. 2005).
`
`In its two most significant recent amendments to the Lanham Act,
`the Federal Trademark Dilution Act of 1995 ("FTDA") and the Anti-
`cybersquatting Consumer Protection Act of 1999 ("ACPA"), Con-
`gress left little doubt that it did not intend for trademark laws to
`impinge the First Amendment rights of critics and commentators. The
`dilution statute applies to only a "commercial use in commerce of a
`mark," 15 U.S.C. § 1125(c)(1), and explicitly states that the
`"[n]oncommercial use of a mark" is not actionable. Id. § 1125(c)(4).
`Congress explained that this language was added to "adequately
`address[ ] legitimate First Amendment concerns," H.R. Rep. No. 104-
`374, at 4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031, and "in-
`corporate[d] the concept of ‘commercial’ speech from the ‘commer-
`cial speech’ doctrine." Id. at 8, reprinted in 1995 U.S.C.C.A.N. at
`1035; cf. Lorillard Tobacco Co. v. Reilly, 533 U.S. 525, 554 (2001)
`(defining commercial speech as "speech proposing a commercial
`transaction") (internal quotation marks and citation omitted). Simi-
`larly, Congress directed that in determining whether an individual has
`engaged in cybersquatting, the courts may consider whether the per-
`son’s use of the mark is a "bona fide noncommercial or fair use." 15
`U.S.C. § 1125(d)(1)(B)(i)(IV). The legislature believed this provision
`necessary to "protect[ ] the rights of Internet users and the interests of
`all Americans in free speech and protected uses of trademarked names
`for such things as parody, comment, criticism, comparative advertis-
`ing, news reporting, etc." S. Rep. No. 106-140 (1999), 1999 WL
`594571, at *8.
`
`

`
`8
`
`LAMPARELLO v. FALWELL
`
`In contrast, the trademark infringement and false designation of
`origin provisions of the Lanham Act (Sections 32 and 43(a), respec-
`tively) do not employ the term "noncommercial." They do state, how-
`ever, that they pertain only to the use of a mark "in connection with
`the sale, offering for sale, distribution, or advertising of any goods or
`services," 15 U.S.C. § 1114(1)(a), or "in connection with any goods
`or services," id. § 1125(a)(1). But courts have been reluctant to define
`those terms narrowly.2 Rather, as the Second Circuit has explained,
`"[t]he term ‘services’ has been interpreted broadly" and so "[t]he Lan-
`ham Act has . . . been applied to defendants furnishing a wide variety
`of non-commercial public and civic benefits." United We Stand Am.,
`Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 89-90 (2d Cir.
`1997). Similarly, in PETA we noted that a website need not actually
`sell goods or services for the use of a mark in that site’s domain name
`to constitute a use "‘in connection with’ goods or services." PETA,
`263 F.3d at 365; see also Taubman Co., 319 F.3d at 775 (concluding
`that website with two links to websites of for-profit entities violated
`the Lanham Act).
`
`Thus, even if we accepted Lamparello’s contention that Sections 32
`and 43(a) of the Lanham Act apply only to commercial speech, we
`would still face the difficult question of what constitutes such speech
`under those provisions. In the case at hand, we need not resolve that
`question or determine whether Sections 32 and 43(a) apply exclu-
`sively to commercial speech because Reverend Falwell’s claims of
`trademark infringement and false designation fail for a more obvious
`reason. The hallmark of such claims is a likelihood of confusion —
`and there is no likelihood of confusion here.
`
`B.
`
`1.
`
`"[T]he use of a competitor’s mark that does not cause confusion as
`to source is permissible." Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94
`F.3d 376, 380 (7th Cir. 1996). Accordingly, Lamparello can only be
`
`2Indeed, Lamparello agreed at oral argument that the Lanham Act’s
`prohibitions on infringement and false designation apply to more than
`just commercial speech as defined by the Supreme Court.
`
`

`
`LAMPARELLO v. FALWELL
`
`9
`
`liable for infringement and false designation if his use of Reverend
`Falwell’s mark would be likely to cause confusion as to the source of
`the website found at www.fallwell.com. This likelihood-of-confusion
`test "generally strikes a comfortable balance" between the First
`Amendment and the rights of markholders. Mattel, Inc. v. MCA
`Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002).
`
`We have identified seven factors helpful in determining whether a
`likelihood of confusion exists as to the source of a work, but "not all
`these factors are always relevant or equally emphasized in each case."
`Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)
`(internal quotation marks, citations, and brackets omitted). The fac-
`tors are: "(a) the strength or distinctiveness of the mark; (b) the simi-
`larity of the two marks; (c) the similarity of the goods/services the
`marks identify; (d) the similarity of the facilities the two parties use
`in their businesses; (e) the similarity of the advertising used by the
`two parties; (f) the defendant’s intent; (g) actual confusion." Id. (cita-
`tion omitted).
`
`Reverend Falwell’s mark is distinctive, and the domain name of
`Lamparello’s website, www.fallwell.com, closely resembles it. But,
`although Lamparello and Reverend Falwell employ similar marks
`online, Lamparello’s website looks nothing like Reverend Falwell’s;
`indeed, Lamparello has made no attempt to imitate Reverend Fal-
`well’s website. Moreover, Reverend Falwell does not even argue that
`Lamparello’s website constitutes advertising or a facility for business,
`let alone a facility or advertising similar to that of Reverend Falwell.
`Furthermore, Lamparello clearly created his website intending only to
`provide a forum to criticize ideas, not to steal customers.
`
`Most importantly, Reverend Falwell and Lamparello do not offer
`similar goods or services. Rather they offer opposing ideas and com-
`mentary. Reverend Falwell’s mark 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 Reverend Falwell authorized the content of that website. No
`one would believe that Reverend Falwell sponsored a site criticizing
`himself, his positions, and his interpretations of the Bible. See New
`
`

`
`10
`
`LAMPARELLO v. FALWELL
`
`Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308-09
`(9th Cir. 1992) (stating that use of a mark to solicit criticism of the
`markholder implies the markholder is not the sponsor of the use).3
`
`Finally, the fact that people contacted Reverend Falwell’s ministry
`to report that they found the content at www.fallwell.com antithetical
`to Reverend Falwell’s views does not illustrate, as Reverend Falwell
`claims, that the website engendered actual confusion. To the contrary,
`the anecdotal evidence Reverend Falwell submitted shows that those
`searching for Reverend Falwell’s site and arriving instead at Lampa-
`rello’s site quickly realized that Reverend Falwell was not the source
`of the content therein.
`
`For all of these reasons, it is clear that the undisputed record evi-
`dences no likelihood of confusion. In fact, Reverend Falwell even
`conceded at oral argument that those viewing the content of Lampa-
`rello’s website probably were unlikely to confuse Reverend Falwell
`with the source of that material.
`
`2.
`
`Nevertheless, Reverend Falwell argues that he is entitled to prevail
`under the "initial interest confusion" doctrine. This relatively new and
`sporadically applied doctrine holds that "the Lanham Act forbids a
`competitor from luring potential customers away from a producer by
`initially passing off its goods as those of the producer’s, even if con-
`fusion as to the source of the goods is dispelled by the time any sales
`are consummated." Dorr-Oliver, 94 F.3d at 382. According to Rever-
`end Falwell, this doctrine requires us to compare his mark with Lam-
`parello’s website domain name, www.fallwell.com, without
`
`3If Lamparello had neither criticized Reverend Falwell by name nor
`expressly rejected Reverend Falwell’s teachings, but instead simply had
`quoted Bible passages and offered interpretations of them subtly differ-
`ent from those of Reverend Falwell, this would be a different case. For,
`while a gripe site, or a website dedicated to criticism of the markholder,
`will seldom create a likelihood of confusion, a website purporting to be
`the official site of the markholder and, for example, articulating positions
`that could plausibly have come from the markholder may well create a
`likelihood of confusion.
`
`

`
`LAMPARELLO v. FALWELL
`
`11
`
`considering the content of Lamparello’s website. Reverend Falwell
`argues that some people who misspell his name may go to
`www.fallwell.com assuming it is his site, thus giving Lamparello an
`unearned audience — albeit one that quickly disappears when it real-
`izes it has not reached Reverend Falwell’s site. This argument fails
`for two reasons.
`
`First, we have never adopted the initial interest confusion theory;
`rather, we have followed a very different mode of analysis, requiring
`courts to determine whether a likelihood of confusion exists by "ex-
`amin[ing] the allegedly infringing use in the context in which it is
`seen by the ordinary consumer." Anheuser-Busch, Inc. v. L & L
`Wings, Inc., 962 F.2d 316, 319 (4th Cir. 1992) (emphasis added) (cit-
`ing cases); see also What-A-Burger of Va., Inc. v. WHATABURGER,
`Inc., 357 F.3d 441, 450 (4th Cir. 2004).
`
`Contrary to Reverend Falwell’s arguments, we did not abandon this
`approach in PETA. Our inquiry in PETA was limited to whether
`Doughney’s use of the domain name "www.peta.org" constituted a
`successful enough parody of People for the Ethical Treatment of Ani-
`mals that no one was likely to believe www.peta.org was sponsored
`or endorsed by that organization. For a parody to be successful, it
`"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." PETA, 263 F.3d at 366 (internal quotation marks and cita-
`tion omitted). Doughney argued that his domain name conveyed the
`first message (that it was PETA’s website) and that the content of his
`website conveyed the requisite second message (that it was not
`PETA’s site). Id. Although "[t]he website’s content ma[de] it clear
`that it [wa]s not related to PETA," id., we concluded that the web-
`site’s content could not convey the requisite second message because
`the site’s content "[wa]s not conveyed simultaneously with the first
`message, [i.e., the domain name itself,] as required to be considered
`a parody." Id. at 366. Accordingly, we found the "district court prop-
`erly rejected Doughney’s parody defense." Id. at 367.
`
`PETA simply outlines the parameters of the parody defense; it does
`not adopt the initial interest confusion theory or otherwise diminish
`the necessity of examining context when determining whether a like-
`lihood of confusion exists. Indeed, in PETA itself, rather than embrac-
`
`

`
`12
`
`LAMPARELLO v. FALWELL
`
`ing a new approach, we reiterated that "[t]o determine whether a
`likelihood of confusion exists, a court should not consider 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 366 (internal quotation marks and citation omitted)
`(emphasis added). When dealing with domain names, this means a
`court must evaluate an allegedly infringing domain name in conjunc-
`tion with the content of the website identified by the domain name.4
`
`Moreover, even if we did endorse the initial interest confusion the-
`ory, that theory would not assist Reverend Falwell here because it
`provides no basis for liability in circumstances such as these. The few
`appellate courts that have followed the Ninth Circuit and imposed lia-
`bility under this theory for using marks on the Internet have done so
`only in cases involving a factor utterly absent here — one business’s
`use of another’s mark for its own financial gain. See, e.g., PACCAR
`Inc. v. Telescan Techs., L.L.C., 319 F.3d 243, 253 (6th Cir. 2003);
`Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir.
`2002); Brookfield Communications, Inc. v. West Coast Entm’t Corp.,
`174 F.3d 1036, 1055-56 (9th Cir. 1999).
`
`Profiting financially from initial interest confusion is thus a key
`element for imposition of liability under this theory.5 When an alleged
`
`4Contrary to Reverend Falwell’s suggestions, this rule does not change
`depending on how similar the domain name or title is to the mark.
`Hence, Reverend Falwell’s assertion that he objects only to Lamparello
`using the domain name www.fallwell.com and has no objection to Lam-
`parello posting his criticisms at "www.falwelliswrong.com," or a similar
`domain name, does not entitle him to a different evaluation rule. Rather
`it has long been established that even when alleged infringers use the
`very marks at issue in titles, courts look to the underlying content to
`determine whether the titles create a likelihood of confusion as to source.
`See, e.g., Parks v. LaFace Records, 329 F.3d 437, 452-54 (6th Cir.
`2003); Mattel, 296 F.3d at 901-02; Westchester Media v. PRL USA Hold-
`ings, Inc., 214 F.3d 658, 667-68 (5th Cir. 2000); Rogers v. Grimaldi, 875
`F.2d 994, 1000-01 (2d Cir. 1989).
`5Offline uses of marks found to cause actionable initial interest confu-
`sion also have involved financial gain. See Elvis Presley Enters., Inc. v.
`Capece, 141 F.3d 188, 204 (5th Cir. 1998); Mobil Oil Corp. v. Pegasus
`
`

`
`LAMPARELLO v. FALWELL
`
`13
`
`infringer does not compete with the markholder for sales, "some ini-
`tial confusion will not likely facilitate free riding on the goodwill of
`another mark, or otherwise harm the user claiming infringement.
`Where confusion has little or no meaningful effect in the marketplace,
`it is of little or no consequence in our analysis." Checkpoint Sys., 269
`F.3d at 296-97. For this reason, even the Ninth Circuit has stated that
`a firm is not liable for using another’s mark in its domain name if it
`"could not financially capitalize on [a] misdirected consumer [looking
`for the markholder’s site] even if it so desired." Interstellar Starship
`Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002).
`
`This critical element — use of another firm’s mark to capture the
`markholder’s customers and profits — simply does not exist when the
`alleged infringer establishes a gripe site that criticizes the markholder.
`See Hannibal Travis, The Battle For Mindshare: The Emerging Con-
`sensus that the First Amendment Protects Corporate Criticism and
`Parody on the Internet, 10 Va. J.L. & Tech. 3, 85 (Winter 2005)
`("The premise of the ‘initial interest’ confusion cases is that by using
`the plaintiff’s trademark to divert its customers, the defendant is
`engaging in the old ‘bait and switch.’ But because . . . Internet users
`who find [gripe sites] are not sold anything, the mark may be the
`‘bait,’ but there is simply no ‘switch.’") (citations omitted).6 Applying
`
`Petroleum Corp., 818 F.2d 254, 260 (2d Cir. 1987). And even those
`courts recognizing the initial interest confusion theory of liability but
`finding no actionable initial confusion involved one business’s use of
`another’s mark for profit. See, e.g., Savin Corp. v. The Savin Group, 391
`F.3d 439, 462 n.13 (2d Cir. 2004); AM Gen. Corp. v. DaimlerChrysler
`Corp., 311 F.3d 796, 827-28 (7th Cir. 2002); Checkpoint Sys., Inc. v.
`Check Point Software Techs., Inc., 269 F.3d 270, 298 (3d Cir. 2001);
`Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 2 (1st Cir. 2000); Syn-
`dicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 638 (7th Cir.
`1999); Rust Env’t & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210,
`1217 (7th Cir. 1997); Dorr-Oliver, 94 F.3d at 383.
`6Although the appellate courts that have adopted the initial interest
`confusion theory have only applied it to profit-seeking uses of another’s
`mark, the district courts have not so limited the application of the theory.
`Without expressly referring to this theory, two frequently-discussed dis-
`trict court cases have held that using another’s domain name to post con-
`
`

`
`14
`
`LAMPARELLO v. FALWELL
`
`the initial interest confusion theory to gripe sites like Lamparello’s
`would enable the markholder to insulate himself from criticism — or
`at least to minimize access to it. We have already condemned such
`uses of the Lanham Act, stating that a markholder cannot "‘shield
`itself from criticism by forbidding the use of its name in commen-
`taries critical of its conduct.’" CPC Int’l, 214 F.3d at 462 (quoting
`L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33 (1st Cir.
`1987)). "[J]ust because speech is critical of a corporation and its busi-
`ness practices is not a sufficient reason to enjoin the speech." Id.
`
`In sum, even if we were to accept the initial interest confusion the-
`ory, that theory would not apply in the case at hand. Rather, to deter-
`mine whether a likelihood of confusion exists as to the source of a
`gripe site like that at issue in this case, a court must look not only to
`the allegedly infringing domain name, but also to the underlying con-
`tent of the website. When we do so here, it is clear, as explained
`above, that no likelihood of confusion exists. Therefore, the district
`court erred in granting Reverend Falwell summary judgment on his
`infringement, false designation, and unfair competition claims.
`
`III.
`
`We evaluate Reverend Falwell’s cybersquatting claim separately
`because the elements of a cybersquatting violation differ from those
`of traditional Lanham Act violations. To prevail on a cybersquatting
`claim, Reverend Falwell must show that Lamparello: (1) "had a bad
`
`tent antithetical to the markholder constitutes infringement. See Planned
`Parenthood Fed’n of Am., Inc. v. Bucci, No. 97 Civ. 0629, 1997 WL
`133313 (S.D.N.Y. March 24, 1997), aff’d, 152 F.3d 920 (2d Cir. 1998)
`(table) (finding use of domain name "www.plannedparenthood.com" to
`provide links to passages of anti-abortion book constituted infringement);
`Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff’d, 159
`F.3d 1351 (3d Cir. 1998) (table) (finding use of "www.jewsforjesus.org"
`to criticize religious group constituted infringement). We think both
`cases were wrongly decided to the extent that in determining whether the
`domain names were confusing, the courts did not consider whether the
`websites’ content would dispel any confusion. In expanding the initial
`interest confusion theory of liability, these cases cut it off from its moor-
`ings to the detriment of the First Amendment.
`
`

`
`LAMPARELLO v. FALWELL
`
`15
`
`faith intent to profit from using the [www.fallwell.com] domain
`name," and (2) the domain name www.fallwell.com "is identical or
`confusingly similar to, or dilutive of, the distinctive and famous [Fal-
`well] mark." PETA, 263 F.3d at 367
`(citing 15 U.S.C.
`§ 1125(d)(1)(A)).
`
`"The paradigmatic harm that the ACPA was enacted to eradicate"
`is "the practice of cybersquatters registering several hundred domain
`names in an effort to sell them to the legitimate owners of the mark."
`Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th
`Cir. 2004). The Act was also intended to stop the registration of mul-
`tiple marks with the hope of selling them to the highest bidder, "dis-
`tinctive marks to defraud consumers" or "to engage in counterfeiting
`activities," and "well-known marks to prey on consumer confusion by
`misusing the domain name to divert customers from the mark owner’s
`site to the cybersquatter’s own site, many of which are pornography
`sites that derive advertising revenue based on the number of visits, or
`‘hits,’ the site receives." S. Rep. No. 106-140, 1999 WL 594571, at
`*5-6. The Act was not intended to prevent "noncommercial uses of
`a mark, such as for comment, criticism, parody, news reporting, etc.,"
`and thus they "are beyond the scope" of the ACPA. Id. at *9.
`
`To distinguish abusive domain name registrations from legitimate
`ones, the ACPA directs courts to consider nine nonexhaustive factors:
`
`(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;
`
`(IV) the person’s bona fide noncommercial or fair use of the
`mark in a site accessible under the domain name;
`
`

`
`16
`
`LAMPARELLO v. FALWELL
`
`(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 the 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,