Domain name initial interest confusion isn’t dead

Platinum Properties Investor Network, Inc. v. Sells, 2019 WL
2247544, No. 18-61907-CIV-GAYLES/SELTZER (S.D. Fla. Apr. 11, 2019) (magistrate
Rival real estate investors Hartman and Sells apparently
developed a “personal feud,” and Sells allegedly initiated a campaign to harm
Hartman’s reputation and steal his clients. Defendants allegedly set up websites and email addresses using plaintiffs’
registered trademarks to confuse consumers and divert internet traffic.  Defendants argued that their websites were
noncommercial, nonconfusing gripe sites.
The registered marks were “Jason Hartman” and “,”
and defendants allegedly combined them with generic terms such as “property,”
“media,” “investments,” and “real estate investments” to create web and email
addresses.  Defendants’ emails and
websites, they argued, contained “a litany of derogatory information about Mr.
Hartman,” as well as phrases such as “investigation,” “bad news,” and “the
truth about.” Thus, they contended that confusion wasn’t plausible.
Plaintiffs responded that the disparaging terms weren’t contained
in the domain name itself, and argued that defendants’ acts were commercial and
competitive.  Because plaintiffs alleged
initial interest confusion, the absence of disparaging terms in the domain name
made confusion plausible, sigh.  Only upon
reaching the landing page would consumers find out that these were gripe sites.
 The allegations apparently included that
defendants “harvested” the personal data of actual visitors to solicit
competitive business opportunities—but there’s no suggestion in the report that
consumers would have been confused when entering contact information, which seems
like an important question about whether the confusion could have caused harm. “Based
on Axiom, Promatek, and Brookfield, the undersigned concludes that a financial
injury that results from an indirect or suggestive use of a trademark may supply
the necessary predicate for a Lanham Act claim.” [A dose of the Ninth Circuit’s
post-Brookfield domain name realism would be really, really helpful here.]
Dilution: Federal law requires federal fame and state law
requires state fame. Since “Plaintiffs repeatedly indicate that the fame of
their marks is limited to a niche segment within real estate investing circles,”
the claims should be dismissed. 
Plaintiffs alleged a couple of million dollars in advertising and
millions in revenue, but Hartman’s alleged “guru” status was limited to “his
trade.” Conclusory allegations of “famous[ness]” were insufficient.
Separately, and interestingly, the magistrate revived a pre-federal
dilution argument that I haven’t seen in a while, but that I like: “principles
of trademark dilution have no application in scenarios where, as here, the
owner of the mark, and the infringer, are involved in the same trade.” Dilution
is for noncompeting goods/services. 
Infringement was the proper remedy, if any remedy is required for
defendants’ conduct.
False advertising/common law fraud/negligent
misrepresentation: Florida requires that a plaintiff plead its own justifiable reliance
to make out these claims, which plaintiffs here did not do.  Civil conspiracy and unfair competition,
however, survived because the infringement claims did, and tortious interference
was sufficiently pled because the complaint alleged that “Defendants’
activities did either break contractual agreements with Plaintiffs and/or
stopped doing business with Plaintiffs as a result of Defendants’ intentional
and unjustified interference …. For example, one client of Plaintiffs’
canceled a speaking engagement … worth tens of thousands of dollars ….”
Invasion of privacy: The complaint alleged that defendants’
website “was, and still is, completely devoid of any privacy policy …. and
solicited visitor[s’] information through a ‘Contact Us’ fill-in webform.” Defendants
allegedly fraudulently obtained and published Hartman’s “personal IP address,
email address, and personal information, which was obtained when Mr. Hartman
sent the cease-and-desist demand through the Infringing Website’s ‘Contact Us’
webform” and the “Infringing Website publicly disclosed Plaintiffs’ private
information.”  But plaintiffs didn’t
allege a right of publicity claim, and it wasn’t clear what they were alleging.  Allegedly false statements about plaintiffs’ “business,
financial history, litigation history, commercial dealings, alleged prurient
nature, credibility, and trustworthiness” couldn’t be the basis of an invasion
of privacy claim. And plaintiffs alleged that they voluntarily disclosed Hartman’s
“personal IP address, email address, and personal information” when they sent a
demand letter through the “Contact Us” webform. 
They couldn’t reasonably expect information voluntarily disclosed to
competitors and adversaries to remain private. 
Moreover, in Florida, residential addresses and contact information “do
not typically fall within the parameters of “private” information.” And “professionals
cannot reasonably expect that this type of information will remain private
given the necessity of certain disclosures for state licensing applications,
such as those relevant to the real estate and investment sectors,” which was
the case here.  And further, Hartman
disclosed the same information when he filed a criminal complaint against defendants.
“Hartman’s expectations of privacy, even if reasonable, are ultimately
irrelevant as these quintessentially public records are not entitled to privacy
protection under Florida’s Sunshine Laws in any event.” However, the magistrate
recommended allowing leave to replead a claim for commercial appropriation
[which would have serious First Amendment problems if there wasn’t a false
endorsement; you shouldn’t be able to avoid negative comparative advertising by
using your name as your business name].

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