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BRIEF IN SUPPORT OF
DEFENDANT'S MEMORANDUM IN OPPOSITION TO
PLAINTIFF'S MOTION FOR
PRELIMINARY INJUNCTION
I. HISTORY
A. I register "ShopsAtWillowBend.com"
In early 1999, I was pleased and excited to learn that the Taubman Company was going to build a major shopping mall, to be called "The Shops at Willow Bend," in Plano, Texas, just a few miles from my home in Dallas. Because very little information about the mall was available on the Internet, I decided to create a "fan" website with information about the mall. ("Fan" websites are those that are created to support and to provide information about a topic, but which have no official connection to the subject of the website.)
By conducting some research, I found that Taubman had registered the domain name "TheShopsAtWillowBend.com" (they subsequently registered "ShopWillowBend.com" as well), but that they had chosen not to register the domain name "ShopsAtWillowBend.com." Therefore, on May 29, 1999, acting on the assumption that Taubman intended to use "TheShopsAtWillowBend.com" for their "official" mall website (which, in fact, they have done), I registered "ShopsAtWillowBend.com" for my "fan" website. (Note the "record created" date on my Exhibit A.)
Shortly after that date (probably in June 1999, although I have no records to support that), I created a website at the domain "ShopsAtWillowBend.com." The website contained information about the mall and the stores that it would contain, including links to those stores' own websites. To ensure that nobody could possibly mistake my "fan" site for an "official" site, I placed a large disclaimer, prominently featured in large, bold, black letters on a brightly colored background, at the top of website's home page, accompanied by a link to the official mall website. I have no record of the original wording of that disclaimer, but it was similar to the one that is there today, which reads, "This is an unofficial site. It is not sponsored by, affiliated with, or related to The Shops at Willow Bend in any way. The official site is located at www.ShopWillowBend.com" (Exhibit B).
B. My Other Community-Service Websites
As indicated on my website's home page (Exhibit B), I created and maintained the site as a community service. I neither had nor have any intention of profiting from the website in any way. Specifically, I have never sought nor accepted paid advertising on the website. Also, I have never sought to sell the domain name, neither to Taubman nor to anyone else. I have put an enormous amount of time and effort into the website, but I never have profited from my efforts in any sense other than the satisfaction that comes from contributing something of value to my community.
I suspect that my claim of being motivated solely by the desire to be of service to the community may be greeted with some skepticism, so I feel obligated to point out that this is not my first effort of this nature. For example:
AddisonWeb (Exhibit C) is a comprehensive guide to every restaurant in the nearby town of Addison, Texas. I created this website in early 1996 in an unsuccessful attempt at a profit-making venture. The business failed a few months later, but I have continued to maintain the site, adding and removing restaurants every month, for more than five years. I have never sold advertising space on the site, nor have I attempted to generate a penny of income from the site for the last five years. (The link to "ShirtBiz" points to a site maintained by my girlfriend - I have given her free links from several of my sites.) The Town of Addison maintains their own website that includes a restaurant listing, but my listing is invariably more current than theirs. I maintain my site with the full cooperation of the Town of Addison, which understands and appreciates the fact that, despite its "unofficial" status, my site helps to send customers to businesses in their town.
D/FW ISP's (Exhibit D) is a listing of Internet Service Providers (ISP's) who offer service in the Dallas-Fort Worth area. I no longer actively maintain the listing, but I did maintain it from June 1995 until the end of last year, a period of some five and a half years. The list has been featured in local newspapers and magazines, and has been recognized as the source of information about local ISP's. Like AddisonWeb, I created and maintained this website for no reason other than to provide a service to my community. I have never sought paid advertising for the site. (I did accept one paid advertisement a few years ago at the urging of a local ISP, but I have turned down all subsequent requests for ad placement.)
I mention these efforts not to try to portray myself as some kind of great humanitarian, and I do recognize that this information may seem irrelevant to the issue at hand. But since Plaintiff repeatedly insists (with no evidence whatsoever) that I am somehow attempting to profit from the purported use of their trademark, I thought that it was important to demonstrate that I have a history of creating and maintaining websites for motivations other than profit.
C. Plaintiff Asks Me for the Domain
On May 17, 2001 (at which point my "fan" website had probably been in existence for nearly two years), I was sent a letter from Plaintiff (Exhibit E) claiming that my use of the domain name "ShopsAtWillowBend.com" was a "violation of federal and state trademark and unfair competition law, as well as a violation of the federal Anticybersquatting Consumer Protection Act," and threatening me with legal action if I did not transfer control of the domain name to them.
I was surprised by this letter for several reasons. For one thing, my website was actively helping the mall and its merchants by giving them increased Internet exposure. Also, my website was directing traffic to Plaintiff's website. These can hardly be described as harmful actions. Also, my high-level, non-legal, layman's understanding of trademark law was that its purpose is to prevent one party from profiting by causing confusion with the goods or services of another party - and I was clearly not trying to profit in any way whatsoever.
D. I Ask Plaintiff for Details
Since I had no desire to be in violation of any laws, I conducted a little research on both trademark law and the Anti-Cybersquatting Act, and I could not see how I had violated either of them. Recognizing that, as a non-lawyer, my understanding of either or both of these laws could be in error, I responded to Plaintiff on May 24, 2001 (Exhibit F) with a request for them to "steer me to the relevant sections of the laws you believe I'm violating." I assured Plaintiff that "since I have no desire to break any laws, I will surrender the domain name as soon as you convince me that I'm doing so."
E. Plaintiff Ignores My Request
Note that I offered to surrender the domain name in question - for free - if Plaintiff would only point out which specific sections of which laws I was violating. However, Plaintiff's response on July 5, 2001 (Exhibit G) did not include any attempt to answer my question, only repeated demands, repeated threats - and an offer to reimburse my domain name registration expense ($35).
I want to emphasize that, as I stated in my response (Exhibit F), all Plaintiff had to do to end this dispute was to show me the specific sections of the laws I was violating. And yet, Plaintiff chose not to even try to do that. I see two possible reasons for Plaintiff's curious refusal to attempt to resolve the problem:
Plaintiff may have recognized that there was no convincing legal argument to support their argument, and thus chose to continue trying to bully me instead, or...
Plaintiff's law firm may have believed that they had a good case but may have chosen to run up their client's legal bills rather than to make any effort to resolve the situation.
F. Again, I Ask Plaintiff for Details
I responded to Plaintiff on July 17, 2001 (Exhibit H), again offering to "immediately relinquish control of my domain name" if Plaintiff would only "let me know exactly what language in which sections of what laws you believe me to be violating."
G. Plaintiff Responds by Suing Me
Plaintiff's response on August 7, 2001 (Exhibit J) was to file a complaint with this Court, and to warn me that they would proceed with litigation if I did not turn over the domain name to them within three days.
H. "Complaint" Domain Names
In my response of August 10, 2001 (Exhibit K), I informed Plaintiff that three days was not enough time, but that I would respond by the end of September 2001. I also informed Plaintiff that I had taken the precaution of registering five domain names that I would use only if they proceeded with litigation. The domain names were:
- WillowBendSucks.com
- WillowBendMallSucks.com
- ShopsAtWillowBendSucks.com
- TheShopsAtWillowBendSucks.com
- TaubmanSucks.com
This use of a trademark and/or company name followed by "sucks.com" constitutes what is called a "complaint" website, and is widely used on the Internet by individuals who feel that they have been subjected to unfair treatment at the hands of some business or other organization. Although at first blush it might seem that the use of these kinds of names would be trademark violations, the courts have upheld these "complaint" websites, viewing them as free speech issues rather than as trademark issues.
As I explained to Plaintiff, if they proceeded with litigation I would use these "complaint" websites to let the entire world know how unfairly they were treating me. (As I write this, I have not yet used those domain names, but I plan to, and I may well have created those websites by the time you read this.) I pointed out to Plaintiff that using "complaint" sites to expose a company's unfair tactics on the Internet can be an effective avenue of defense against attempts by large organizations to bully individuals who possesses relatively limited resources. However, I told Plaintiff that I would rather not have to resort to these "complaint" sites, that I would much prefer it if they would withdraw their complaint and allow me to continue generating business for their mall.
J. Plaintiff Makes Me an Offer
Plaintiff responded on August 16, 2001 (Exhibit L) by offering me $1,000 in exchange for several commitments from me, chiefly involving my surrender of the original domain name in question and all of the "complaint" domain names I had registered.
K. I Accept Plaintiff's Offer
By this time, I was under some pressure from my girlfriend/assistant to abandon this dispute, as it was beginning to impact my income. (As a consultant, my only asset is my time, and time spent arguing about domain names is not a financially productive activity for me.) So I decided to accept Plaintiff's offer as a graceful means to terminate our disagreement, which I did in my letter of August 16, 2001 (Exhibit M).
L. Plaintiff Spurns My Acceptance, Imposes Additional Conditions
To my dismay, when Plaintiff sent me paperwork for my signature on August 23, 2001 (Exhibit N), Plaintiff had inserted new conditions that were beyond the scope of our agreement. I objected to those new provisions in my email message of August 24, 2001 (Exhibit P). In a telephone conversation on September 5, 2001, Plaintiff refused to remove the new conditions, electing to proceed with litigation instead.
Surprisingly, Plaintiff stated that they would not honor our agreement unless I also agreed not to mention the terms of the agreement to anyone. Plaintiff claimed that if it became public knowledge that they had offered me $1,000 to relinquish my domain name, legions of other people would register similar domain names in an attempt to extort money from Plaintiff. I characterize this as "surprising" because Plaintiff must realize that, as soon as I set up my "complaint" websites, the entire world will be made aware of all of the details of this situation, including their offer of $1,000. In other words, the best way for Plaintiff to ensure that the fewest people know about the terms of our agreement would be for them to honor that agreement, rather than for them to willfully disregard it.
I want to emphasize that I still stand ready to implement the contractual agreement that exists between Plaintiff and myself. In other words, if Plaintiff sends me $1,000 as they suggested in their offer, I will relinquish control of the domain names in question, as I made clear I would do in my acceptance of their offer. (Of course, the dollar amount will rise if I have to recover expenses that I may incur should this litigation continue.) I make this statement in spite of the fact that Plaintiff has exhibited stunningly bad faith by refusing to honor the contract that they themselves proposed and which I accepted. Instead, they proceeded with litigation when I would not agree to the additional conditions that they sought to impose after we had already reached an agreement.
I have heard that attorneys act as "officers of the Court." I don't know what their responsibilities to the Court are in this regard, but I would like to think that Breach of Contract is not among them.
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