Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 1 of 23
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`IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
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`CENTRAL DIVISION
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`UTAH LIGHTHOUSE MINISTRY,
`INC., a Utah corporation,
`
`Plaintiff,
`
`MEMORANDUM DECISION AND
`ORDER
`
`vs.
`
`Case No. 2:05CV000380DAK
`
`DISCOVERY COMPUTING, INC., an
`Arizona Corporation and ALLEN L.
`WYATT, an individual, THE
`FOUNDATION FOR APOLOGETIC
`INFORMATION & RESEARCH (FAIR),
`a New York Corporation and SCOTT
`GORDON, an individual, and DOES 1-
`10, inclusive.
`
`
`Defendants.
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`This matter is before the court on several motions: Defendants Allen L. Wyatt (“Wyatt”)
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`and Discovery Computing, Inc.’s (“DCI”) (collectively the “DCI Defendants”) Rule 56 Motion
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`for Summary Judgment of No Trademark Infringement; the DCI Defendant’s Motion to Strike
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`Plaintiff’s Motion for Summary Judgment of the Issue of Domain Name Cyberpiracy;
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`Defendants The Foundation for Apologetic Information & Research (“FAIR”) and Scott
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`Gordon’s (“Gordon”) (collectively the “FAIR Defendants”) Motion for Summary Judgment and
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`Joinder in DCI Defendants’ Motion for Summary Judgment; the FAIR Defendants’ Joinder in the
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 2 of 23
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`DCI Defendants’ Motion to Strike Plaintiff’s Second Motion for Summary Judgment; the FAIR
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`Defendants’ Objection to Plaintiff’s Motion to Have Court Take Evidence at Hearing on Motions
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`for Summary Judgment; Plaintiff Utah Lighthouse Ministry, Inc.’s (“UTLM” or Plaintiff) Motion
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`for Summary Judgment on the Issues of Trademark Infringement, Unfair Competition and Joint
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`Tortfeasor Liability; and Plaintiff’s Motion for Summary Judgment on the Issue of Cyberpiracy.
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`The court did not hear argument on the Motions to Strike, but took them under advisement. At
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`the hearing, Paul C. Oestreich represented Plaintiff. Ronald L. Dunn represented the FAIR
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`Defendants and Lance Starr represented the DCI Defendants. Before hearing argument, the court
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`ruled on the FAIR Defendants’ Objection to Plaintiff’s Motion to Have Court Take Evidence at
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`Hearing on Motions for Summary Judgment and refused to allow the admittance of further
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`evidence. Although the court did not hear argument on the Motions to Strike, both of
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`Defendants’ counsel stipulated to allow Plaintiffs’ Motion for Summary Judgment on the Issue of
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`Cyberpiracy to be allowed to be received as a response to Defendants’ Motion for Summary
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`Judgment to which the court ruled that “it comes in.” Before the hearing, the court carefully
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`considered the memoranda and other materials submitted by the parties. Since taking the
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`motions under advisement, the court has further considered the law and facts relating to the
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`motions. Now being fully advised, the court renders the following Memorandum Decision and
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`Order related to the motions before the court.
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`BACKGROUND
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`This matter arises out of the comparison of two similar Internet websites, and whether the
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 3 of 23
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`similarities are sufficient to support allegations of unfair competition, trademark infringement,
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`dilution, trade dress and cybersquatting.
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`UTLM, founded by Jerald and Sandra Tanner, provides information critically analyzing
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`the history and doctrines associated with the Church of Jesus Christ of Latter-day Saints (“LDS”)
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`through its books, newsletters and its Internet website. UTLM offers materials for sale to the
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`general public through its brick and mortar bookstore, as well as an online bookstore. The
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`UTLM website can be found under the registered the domain name utlm.org.
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`Wyatt, a professional website designer, is the webmaster and Vice President of FAIR, a
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`volunteer organization that responds to criticisms of the LDS Church. In November, 2003,
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`Wyatt created a website which attempted to parody the UTLM website (the “Wyatt Website”).
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`Wyatt registered the following ten domain names, each of which directed visitors to the Wyatt
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`Website: utahlighthouse.com, sandratanner.com, geraldtanner.com, geraldtanner.org,
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`utahlighthouse.org, utahlighthouseministry.org, sandratanner.org, jeraldtanner.com,
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`utahlighthouseministry.com, and jeraldtanner.org. 1
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`The Wyatt Website v. The UTLM Website
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`The Wyatt Website
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`The Wyatt Website has a centered heading box containing the words: “Utah Lighthouse
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`Ministry, Shadow or Reality?” in blue text. The word “Shadow” is in green, Halloween-type
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`font. The phrase “Shadow or Reality?” appears to reference the title of Plaintiff’s largest selling
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`book. Below the heading box is the phrase: “Welcome to an official Website about the Utah
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`In 2004, Wyatt was gratuitously registered the domain names utahlighthouse.info,
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`jeraldtanner.info and sandratanner.info.
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 4 of 23
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`Lighthouse Ministry, which was founded by Jerald and Sandra Tanner. The purpose of this site
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`is to document problems with the claims made by Jerald and Sandra Tanner under the guise of
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`Christianity.” Below the header box to the right is a large photograph of a lighthouse with black
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`and white barbershop stripes. On the three white stripes, in red type are the words “destroy,”
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`“mislead,” and “deceive.” Below the header box to the left is an identical, but faint, image of the
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`same lighthouse with two hyperlinks printed across the photograph: “Click this Lighthouse to see
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`Reliable Information About the LDS Church” and “Click the Lighthouse’s base for the Official
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`LDS Site.” Down the center of the webpage, below the header box and between the images of
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`the lighthouses, three scriptural references, followed by two hyperlinks: “Articles about the
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`Tanners” and “Books by the Tanners.” The “Books” link gives a selection of hyperlinks to
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`additional articles, including links to the Brigham Young University’s Foundation for Ancient
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`Research and Mormon Studies (“FARMS”) and to the official LDS Church website, and an
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`article posted on the FAIR website. At the bottom of the page, is a centered box containing the
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`following text:
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`“For more than three decades, Jerald and Sandra Tanner have devoted their lives
`to exposing and trying to destroy Mormonism. They have succeeded in upsetting
`Mormons of various persuasions, largely because of their abrasive writing style,
`which is most nearly reminiscent of FBI undercover agents reporting back to J.
`Edgar Hoover on the terrible continuing threat of the worldwide communist (read:
`Mormon) conspiracy.” [Lawrence Foster, “Apostate Believers: Jerald and Sandra
`Tanner’s Encounter with Mormon History,” Differing Visions: Dissenters in
`Mormon History, edited by Roger D. Launius and Linda Thatcher (Urbana,
`Illinois: University of Illinois Press, 1994), 343.]
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`Like UTLM, FAIR operates an informational website and an online bookstore. Visitors
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`to the FAIR website homepage are offered a link to the FAIR LDS bookstore. Some of the books
`offered for sale at the FAIR online bookstore appear to overlap with some of the books offered
`for sale at the UTLM online bookstore.
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 5 of 23
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`Wyatt provided access to the Wyatt Website to FAIR’s members. Gordon, FAIR’s
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`president, upon visiting the Wyatt Website, discovered that the hyperlink from the Wyatt
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`Website to FAIR was wrong and asked that it be corrected.
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`The UTLM Website
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`The UTLM Website’s heading box contains the words: “Utah Lighthouse Ministry, PO
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`Box 1884 Salt Lake City, UT 84110.” Centered below the box is the phrase: “Welcome to the
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`Official Website of Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner. The
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`purpose of this site is to document problems with the claims of Mormonism and compare LDS
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`doctrines with Christianity.” Below the header box to the right is a large drawing of a lighthouse
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`and clouds, with black and white barbershop stripes. Below the header box to the left is a large,
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`faint image of the same lighthouse with thirteen hyperlinks printed across the drawing: “About
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`Us,” “FAQs,” “What’s New,” “Topical Index,” “Testimony,” “Newsletters,” “Online
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`Resources,” “Online Books,” “Booklist,” “Order/Contact,” “Email,” “Special Thanks,” “Other
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`Websites.” Down the center of the webpage, below the header box, there are three scriptural
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`references. At the top of the next webpage there is a centered box containing the following text:
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`“Come on! ye prosecutors! ye false swearers! All hell, boil over! Ye burning
`mountains, roll down your lava! for I will come out on top at last. I have more to
`boast of than ever any man had. I am the only man that has ever been able to keep
`a whole church together since the days of Adam. A large majority of the whole
`have stood by me. Neither Paul, John, Peter, nor Jesus ever did it. I boast that no
`man ever did such a work as I. The followers of Jesus ran away from him, but the
`Latter-day Saints never ran away from me yet . . . When they can get rid of me, the
`devil will also go.” (History of the Church, Vol. 6, p. 408, 409) [Whole sermon
`click here.]
`
`- Joseph Smith: founder, prophet, seer, and revelator of The Church of Jesus Christ of
`Latter-day Saints.
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 6 of 23
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`At the bottom of the second webpage, the same thirteen hyperlinks from the first page are
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`listed, including descriptions of each hyperlink’s function and content.
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`UTLM’s Marks
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`Plaintiff obtained federal trademark registration on July 25, 2006 for UTAH
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`LIGHTHOUSE® MINISTRIES. Plaintiff has designated SANDRA TANNER™, JERALD
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`TANNER™ as marks but has not applied for federal trademark registration for either of these
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`marks.
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`Potential Confusion Between the Websites
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`Between January 2004 and March 2005, UTLM received seven emails from visitors to
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`the Wyatt Website, each recognizing that it was not UTLM’s website. As a result of these
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`emails, UTLM brought claims against Wyatt, DCI, Gordon and FAIR for federal and state
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`trademark infringement, copyright infringement, trade dress, unfair competition and
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`cybersquatting.
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`STANDARD OF REVIEW
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`Pursuant to Rule 56(c) of the Federal Rules of Civil Procedure, the court may grant
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`summary judgment where “the pleadings, depositions, answers to interrogatories, and admissions
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`on file, together with the affidavits, if any, show that there is no genuine issue as to any material
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`fact and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P 56(c)
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`(2005); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-250 (1986); Concrete Works, Inc. v.
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`City & County of Denver, 36 F.3d 1513, 1517 (10th Cir. 1994). The nonmoving party may not
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`rest solely on the allegations in the pleadings, but must instead designate “specific facts showing
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 7 of 23
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`that there is a genuine issue for trial.” Celotex, 477 U.S. at 324; see Fed. R. Civ. P. 56(e) (2005).
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`DISCUSSION
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`This is a trademark infringement, unfair competition, dilution, trade dress and
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`cybersquatting suit under the Lanham Act, §43(A)(1), 15 U.S.C. § 1125. 3
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`I. Trademark Infringement, Unfair Competition and Dilution
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`Plaintiff alleges that Defendants are liable for trademark infringement under the Lanham
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`Act because Defendants used Plaintiff’s marks, without Plaintiff’s consent, as the domain names
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`for the Wyatt Website. To succeed on a trademark infringement claim under the Lanham Act, a
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`plaintiff-trademark holder must show that, without plaintiff’s consent, the defendant used
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`plaintiff’s mark “in connection with the sale, offering for sale, distribution, or advertising of any
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`Section 1125(a)(1) of the Lanham Act provides:
`a)(1) Any person who, on or in connection with any goods or services, or any
`container for goods, uses in commerce any word, term, name, symbol, or device,
`or any combination thereof, or any false designation of origin, false or misleading
`description of fact, or false or misleading representation of fact, which - -
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`3 (
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`(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, services,
`or commercial activities by another person, or
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`(B) in commercial advertising or promotion, misrepresents the nature,
`characteristics, qualities, or geographic origin of his or her or another
`person’s goods, services, or commercial activities,
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`shall be liable in a civil action by any person who believes that he or she is likely
`to be damaged by such act. 15 U.S.C. § 1125(a)(1).
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`The court refers to the DCI Defendants and the FAIR Defendants collectively as
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`“Defendants” for simplicity in preparing this Order, unless referred to independently.
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 8 of 23
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`goods or services.” 15 U.S.C. §1125(a)(1); see Donchez v. Coors Brewing Co., 392 F.3d 1211,
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`1216 (10th Cir. 2004); see also OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176, 185
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`(W.D.N.Y. 2000) (quoting Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 477 (2d Cir.
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`1996)). Similarly, “[t]he elements of common law trademark [are] . . . a plaintiff must establish a
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`protectable interest in its mark, the defendant’s use of that mark in commerce, and the likelihood
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`of consumer confusion.” Donchez, 392 F.3d at 1219; King of the Mountain Sports v. Chrysler
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`Corp., 185 F.3d 1084, 1089 (10th Cir. 1999) (citing 15 U.S.C. §§ 114(1), 1125(a)) (“Likelihood
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`of confusion forms the gravamen for a trademark infringement action.”).
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`Similarly, to prevail on an unfair competition claim under the Lanham Act §43(a), a
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`plaintiff must establish the same two factors as a trademark infringement claim under Lanham
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`Act. See Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001); see 15 U.S.C. §
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`1125(a)(1).
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`In order to determine the validity of Plaintiff’s infringement and unfair competition
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`claims, the court must consider Plaintiff’s demonstration of Defendant’s “commercial use,”
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`whether Plaintiff had a protectable mark, and the likelihood of confusion.
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`A.
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`“Commercial Use”
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`The first question before the court is whether Wyatt’s registration and use of the ten
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`domain names directing Internet traffic to the Wyatt Website were a “noncommercial” fair use
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`under federal or state trademark law. See 15 U.S.C. § 1125(a)(1)(B); see also U.C.A. § 13-5-a-
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`Although Plaintiff’s Complaint only brought claims under 15 U.S.C. §1125(a)(1), to
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`fully analyze Plaintiff’s trademark infringement claim, the court references Section 1114 of the
`Lanham Act.
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 9 of 23
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`101 et seq. The Tenth Circuit has not yet addressed this issue, but other courts have concluded
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`that for a plaintiff to prevail on its claims, “commercial use” is required. See Taubman Co. v.
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`Webfeats, 319 F.3d 770, 774 (6th Cir. 2003); Bosley Medical Institute, Inc., 403 F.3d 672, 675
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`(9th Cir. 2005). The “commercial use” requirement is designed to protect both the trademark
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`holder and the First Amendment rights of any citizen to comment and critique the mark holder.
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`See Bosley Medical, 403 F.3d at 676.
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`Plaintiff claims that Defendants’ use of Plaintiff’s marks constitute a “commercial use” in
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`three ways. See People for the Ethical Treatment of Animals v. Doughney (“PETA”), 263 F.3d
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`359, 366 (4th Cir. 2001) (where individual made false representations to be able to register 50-60
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`domain names, including PETA.org, despite being a parody site); see 15 U.S.C. §1114. First, the
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`Wyatt Website contained a hyperlink to FAIR’s website, which in turn linked to FAIR’s online
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`bookstore. See OBH, 86 F.Supp.2d at 185-86. Second, Plaintiff claims the broad scope of the
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`Internet itself makes Defendants’ use of Plaintiffs’ mark, as a domain name, a “use in commerce”
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`for purposes of the Lanham Act. Id. at 186; Planned Parenthood Fed’n of America, Inc. v.
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`Bucci, 1997 WL 133313, at *3 (S.D.N.Y. 1997) aff’d 152 F.3d 920 (2d Cir. 1998), cert. denied,
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`525 U.S. 834 (1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1239-40 (N.D.Ill. 1996).
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`Finally, Defendants’ use of Plaintiff’s marks affects Plaintiff’s ability of offer its services in
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`commerce. See OBH, 86 F.Supp.2d at 186; Planned Parenthood, 1997 WL 133313 at *3. The
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`court considers each of Plaintiff’s assertions in turn.
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`1.
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`Hyperlinks
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`The use of a plaintiff’s trademark as the domain name for a website satisfies the
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 10 of 23
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`“commercial use” requirement if the website contains a hyperlink that connects users to another
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`of a defendant’s websites if it operates for “commercial purposes.” See OBH, 86 F.Supp.2d at
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`185-86. However, where a “website contain[s] no commercial links, but rather contain[s] links
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`to a [website], which in turn contain[s] advertising” or has a commercial purpose, this does not
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`satisfy the “commercial use requirement of the statute.” See Bosley Medical, 403 F.3d at 678;
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`see also TMI, Inc. v. Maxwell, 368 F.3d 433, 435, 438 (5th Cir. 2004) (holding that the
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`commercial use requirement is not satisfied where defendant’s site itself had no outside links);
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`see also Taubman Co. v. Webfeats, 319 F.3d 770, 775 (6th Cir. 2003) (“As long as [defendant]
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`has no commercial links on . . . his websites . . .we find no use ‘in connection with the
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`advertising’ of goods and services to enjoin,’ and the Lanham Act cannot be properly invoked.”).
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`In Bosley Medical Institute, Inc. v. Kremer, a dissatisfied client purchased a domain name
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`and posted information critical of Bosley on a website. See 403 F.3d at 672. Bosley sued for
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`Lanham Act violations. The court reviewed whether Kremer’s use of Bosley’s marks in his
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`domain name satisfied the “commercial use” requirement under the Lanham Act found that “[a]t
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`no time did Kremer’s BosleyMedical.com site offer for sale any product or service or contain
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`paid advertisements from any other commercial entity” and found no Lanham Act violation. Id.
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`at 678.
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`Plaintiff claims Defendant’s “commercial use” is clearly established by reliance on PETA.
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`In PETA, the defendant’s website “provide[d direct] links to more than 30 commercial operations
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`offering goods and services.” PETA, 263 F.3d at 366. The Wyatt Website did not have any
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`direct links to any commercial websites and did not “prevent users from obtaining or using
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 11 of 23
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`[Plaintiff’s] goods or services.” Id. at 362-63. The Wyatt Website contained a hyperlink
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`connecting users to FAIR’s website, which in turn had a hyperlink to the FAIR online bookstore. 6
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`The Wyatt Website provided no goods or services, earned no revenue, and had no direct links to
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`any commercial sites. The links on the Wyatt Website are insufficient to satisfy the “commercial
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`use” requirement under the Lanham Act.
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`2.
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`International Nature of Internet
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`Plaintiff claims that “the national, and even international, nature of the Internet itself
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`makes defendants’ use of plaintiffs’ trademark as a domain name a ‘use in commerce’ for
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`purposes of the Lanham Act.” Id. at 186; Planned Parenthood, 1997 WL 133313 at *3 (“The
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`nature of the Internet indicates that establishing a typical home page on the Internet, for access to
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`all users, would satisfy the Lanham Act’s “in commerce” requirement.”). Relatively few courts
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`have adopted this view.
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`3.
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`Hindering Plaintiff’s Ability to Offer Services in Commerce
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`Finally, Plaintiff claims that Defendants’ use of Plaintiff’s marks affected Plaintiff’s
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`ability of offer its services in commerce. See OBH, 86 F.Supp.2d at 186; Planned Parenthood,
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`1997 WL 133313 at *3 . In support of its assertion that Defendants’ use is “commercial”,
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`Plaintiff relies on Planned Parenthood Federation of America v. Bucci, where the offending use
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`of the disputed domain name was “commercial” because the defendant’s efforts were part of a
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`broader effort to solicit contributions for the anti-abortion movement and designed to hurt the
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`plaintiff commercially. See Planned Parenthood, 1997 WL 133313 at *5; see also Jews for
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`Plaintiff claims that it is undisputed that the FAIR homepage has a link to a webpage
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`which sells books identical to those sold by Plaintiff.
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`Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (finding use of
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`plaintiff’s mark in domain name was “commercial use” because site was “a conduit” to another
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`of defendant’s webpages, which conducted fund raising through the sale of merchandise). There
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`has been no showing here that Plaintiff has been harmed commercially or that Defendants’
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`intended to do Plaintiff any harm in the future..
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`Plaintiff has not alleged that Defendants have used their marks in connection with goods
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`and services in any literal sense. See Ford Motor Co. v. 2600 Enterprises, 177 F.Supp.2d 661, at
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`665 (E.D. Mich. 2001) (quoting Planned Parenthood, 1997 WL 133313 at *4, quoted in Jews for
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`Jesus, 993 F.Supp. at 309). In Ford Motor Co. v. 2600 Enterprises, the court distinguished
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`Planned Parenthood and Jews for Jesus’s holdings finding that using the Ford mark in the
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`programming code did not inhibit Internet users from reaching websites most likely to be
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`associated with the mark holder. Id. The court also found that the unauthorized use “in no way
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`competes with the mark owner’s offering of goods or services, [and] the ‘in connection with
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`goods or services’ requirement is not satisfied simply because a prospective user of the Internet
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`may face some difficulty in finding the home page he is seeking.” Id. at 665. In this case,
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`Plaintiff has not shown that Defendants’ use of Plaintiff’s marks actually hindered any
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`prospective user’s ability to find Plaintiff’s webpage or caused any confusion once locating it.
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`4.
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`Parody or Critical Commentary as an Exception to Commercial Use
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`“[T]he noncommercial use of a trademark as the domain name of a website-the subject of
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`which is consumer commentary about the products and services represented by the mark-does not
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`constitute infringement under the Lanham Act.” Bosley Medical, 403 F.3d at 674. “Courts
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`additionally have extended protection to unauthorized uses of trademarks for the expressive
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`purposes of comedy, parody, allusion, and so forth, even where the medium of expression is sold
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`for money.” See Mattel, Inc. v. MCA Records, No. CV 97-6791 WMB, 1998 WL 422641, *14-
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`15 (C.D.Cal. 1998); Charles Atlas, Ltd. v. DC Comics, Inc., 112 F. Supp.2d 330, 338-39
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`(S.D.N.Y. 2000); Northland Ins. Cos. v. Blaylock, 115 F.Supp.2d 1108, 1122-23 (D.Minn.
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`2000). Parody does not receive absolute protection from trademark law, but “a parody contained
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`in an obvious editorial context is less likely to confuse, and thus [is] more deserving of protection
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`than [trade dress and trademarks] displayed on a product.” Anheuser-Busch, Inc. v. Balducci
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`Publ’ns., 28 F.3d 769, 776 (8th Cir. 1994); see also Faegre & Benson, LLP v. Purdy, 367
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`F.Supp.2d 1238 (D.Minn. 2005) (applying a six-pronged analysis to determine the strength of the
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`mark and whether trade dress was deserving of protection).
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`Wyatt claims that the Wyatt Website “provided a nice parody of [Plaintiff’s] website”
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`without a commercial use. Although some courts restrict consumer commentary on websites,
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`“[t]he PETA approach would place most critical, otherwise protected consumer commentary
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`under the restrictions of the Lanham Act. Other courts have also rejected this theory [PETA’s] as
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`over-expansive.” Bosley Medical, 403 F.3d at 679; see also L.L. Bean, Inc. v. Drake Publishers,
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`Inc., 811 F.2d 26, 33 (1 Cir. 1987); see also Ford Motor Co., 177 F.Supp.2d at 664. The court
`st
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`believes the Wyatt Website was a noninfringing parody of Plaintiff’s site.
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`B.
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`Whether Plaintiff’s Marks Are Legally Protectable
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`The second element of a trademark infringement or unfair competition claim is whether
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`or not Plaintiff ‘s marks are protectable. See 15 U.S.C. § 1125(a)(1). Under the Lanham Act, a
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`plaintiff must prove that “if the claimed trade dress includes any mark or marks registered on the
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`principal register, the unregistered matter, taken as a whole, is famous separate and apart from
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`any fame of such registered marks.” 15 U.S.C. § 1125(c)(4)(B). Plaintiff must also show that its
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`marks are “widely recognized by the general consuming public of the United States.” 15 U.S.C. §
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`1125(c)(2)(A)(1); see 15 U.S.C. § 1125(a)(1); Vornado Air Circulation Sys. v. Duracraft Corp.,
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`58 F.3d 1498, 1502-03 (10th Cir. 1995).
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`The marks Plaintiff claims Defendants infringed were not registered trademarks at the
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`time the Wyatt Website was created. However, Plaintiff claims that its marks have acquired
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`secondary meaning under which liability may be imposed under the Lanham Act. An
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`unregistered mark’s secondary meaning is a question of fact and “to acquire this secondary
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`meaning, the descriptive words must have been used so long and so exclusive by one producer
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`with reference to his goods and articles that, in the trade and to that branch of the purchasing
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`public, the word or phrase (has) come to mean that the article is his product.” Educational Dev.
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`Corp. v. Economy Co., 562 F.2d 26, 29-30 (10th Cir. 1977).
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` Plaintiff has merely alleged that “Utah Lighthouse Ministry,” “Sandra Tanner” and
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`“Jerald Tanner” are well known marks in the limited submarket of those individuals familiar
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`with criticisms of the LDS church. This does not satisfy the statute’s requirements. The court
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`does not find that Plaintiff’s unregistered marks are sufficiently famous or have acquired a
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`secondary meaning to the general consuming public of the United States. Defendants’ Motion
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`“Utah Lighthouse Ministries” is now a registered trademark, but it was not registered
`7
`until after the filing of this lawsuit. “Sandra Tanner” and “Jerald Tanner” are not registered
`trademarks.
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`14
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`

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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 15 of 23
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`for Summary Judgment on Plaintiff’s sixth claim for relief, trade dress infringement, is granted.
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`1.
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`Cybersquatting
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`Under the Lanham Act, civil liability attaches for a bad faith intent to profit from
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`another’s legally protectable marks. See 5 U.S.C. §§ 1125 (a)(1)(c) - (d)(1)(A), § 1129,
`8
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`(Anticybersquatting Consumer Protection Act (“ACPA”)); see also Harrods Limited v. Sixty
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`Internet Domain Names, 302 F.3d 214, 225 (4th Cir. 2002).
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`To prevail on a claim under the ACPA, the owner of a mark must show: 1) that the mark
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`is distinctive or famous; 2) if the mark is distinctive, that the alleged cybersquatter’s domain
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`name is ‘identical or confusingly similar’ to the owner’s mark; or if the mark is famous, that the
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`alleged cybersquatter’s domain name is ‘identical or confusingly similar’ to or dilutive of the
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`mark; and (3) that the alleged cybersquatter used, registered, or trafficked in the domain name
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`with a bad faith intent to profit from the sale of the domain name. 15 U.S.C. §1125(d)(1)(A).
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`Registration of a mark constitutes prima facie evidence of the validity of a mark and of
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`the registrant’s exclusive right to use the mark on goods and services specified in the registration.
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`15 U.S.C. § 1125(d)(1)(A) provides:
` person shall be liable in a civil action by the owner of a mark, including a
`personal name which is protected as a mark under this section, if, without regard
`to the goods or services of the parties, that person
`(i) has a bad faith intent to profit from that mark, including a personal name which is
`protected as a mark under this section; and
`(ii) registers, traffics in, or uses a domain name that –
`(I) in the case of a mark that is distinctive at the time of registration of the domain
`name, is identical or confusingly similar to that mark;
`(II) in the case of a famous mark that is famous at the time of registration of the
`domain name, is identical or confusingly similar to our dilutive of that mark; or
`(III) is a trademark, work or name protected by reason of section 706 of Title 18
`or section 220506 of Title 36.
`
`8 A
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`15
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 16 of 23
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`See OBH, 86 F.Supp.2d at 186-87; see also 15 U.S.C. §§ 1057(b) and 1115(a). However, none
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`of the marks that Plaintiffs claim Defendants infringed were registered trademarks at the time
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`Wyatt created the Wyatt Website or during the period of the Wyatt Website’s life span.
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`Therefore, this court must decide whether Defendants’ registration and use of Plaintiff’s
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`unregistered marks as domain names linking to the Wyatt Website diluted Plaintiff’s marks in
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`violation of the Lanham Act and constituted “bad faith” under the ACPA.
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`The ACPA enumerates nine nonexclusive “bad faith factors” to determine whether or not
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`bad faith intent may properly be inferred here. See 15 U.S.C. § 1125(d)(1)(B)(i)-(ii).
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`The first “bad faith” factor is whether Defendants have trademark rights in any of the ten
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`domain names at issue. Id. Plaintiff claims Defendants did not have intellectual property rights
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`in any of the registered domain names, indicating a bad faith intent to register Plaintiff’s marks
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`and personal names. However, Plaintiff had not registered any of the marks at the time Wyatt
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`registered the domain names. The second factor considers whether the domain names at suit are
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`not the legal names of any of the named defendants. This weighs in favor of finding the
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`Defendants had a bad faith intent to profit from registering the ten domain names. Id. Third,
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`Defendants do not appear to have any prior use of the domain names in connection with the bona
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`fide offering of any goods or services, weighing in favor of a finding of bad faith.
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`Under the fourth factor, Defendants have no bona fide commercial use of the mark in the
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`Wyatt Website accessible under the ten domain names at suit. This factor is “intended to balance
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`the interests of trademark owners with the interests of those who would make lawful
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`noncommercial or fair uses of other’s marks online such as in comparative advertising, comment
`
`16
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`

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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 17 of 23
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`criticism, parody, news reporting, etc.” H.R. Rep. No. 106-412, 1999 WL 970519, at *11.
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`Plaintiff claims that a “parody” is defined as a “simple form of entertainment conveyed by
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`juxtaposing the irreverent representation of the trademark with the idealized image created by the
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`mark’s owner.” PETA, at 366. A parody should convey “that it is the original, but also that it is
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`not the original and is instead a parody.” Id. Plaintiff claims that Wyatt’s Website failed as a
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`parody because it caused confusion and was indistinguishable from Plaintiff’s website. See
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`Lamparello v. Falwell, 420 F.3d 309, 311 (4th Cir. 2005) (illustrating web site where it was
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`obvious to the ordinary observer that the website was not linked to the plaintiff due to
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`disclaimers). The court does not agree. Clearly visitors reading the Wyatt Website recognized
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`immediately that it did not belong to Plaintiff. The fourth factor weighs heavily for a finding of
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`“good faith” intent.
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`The fifth factor requires a showing that Defendants intended to divert consumers from
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`Plaintiff’s website to the Wyatt Website accessible under the domain names at suit, that harmed
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`the goodwill represented by Plaintiff’s marks, for at least some commercial gain, with the intent
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`to tarnish or disparage Plaintiff’s marks. Defendants must have also created a likelihood of
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`confusion as to the source, sponsorship, affiliation, or endorsement of the Wyatt Website.
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`Plaintiff has failed to show that the Wyatt Website has actually harmed its goodwill, that
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`Defendants had any commercial gain, or any actual intent to tarnish or disparage Plaintiff’s
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`marks.
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`The sixth factor, an intent to offer to transfer, sell or otherwise assign the domain names
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`at suit to the Plaintiff or any third party for financial gain does not appear to be applicable in this
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`17
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`Case 2:05-cv-00380-DAK Document 58 Filed 03/26/07 Page 18 of 23
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`case. Plaintiff admits that Wyatt would have given the domain names to Plaintiff had they asked.
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`The sixth factor does not suggest an overt bad faith intent. Similarly, the seventh