Domain Name Owner Suffers ACPA Loss After UDRP Win
Newport News Holdings Corporation ("Newport News") is a women's clothing and accessories company that owns five federal registrations for the mark NEWPORT NEWS in connection with the sale of those products through catalogs and over the Internet. Newport News also owns the domain name newport-news.com.
Virtual City Vision ("Virtual City") owns at least 31 domain names that incorporate the names of geographic locations and Virtual City's intent was to create websites that provided information and advertising related to those locations.
In 1997, Newport News attempted to purchase the domain name newportnews.com but it had already been purchased by Virtual City. In 2000, Newport News brought a UDRP complaint against Virtual City, alleging that newportnews.com was confusingly similar to Newport News' NEWPORT NEWS marks.
Newport News was unsuccessful, however, as the UDRP panel concluded that, although the mark and the domain name were identical,
"visitors to [Newport News'] branded web site, who seek out the latest women's clothing and home fashions would clearly not be confused when seeing a home page of another web site, bearing an identical mark, that explicitly provides city information . . . with no connection whatsoever to women's and home fashions." . . . The panel further held that [Virtual City's] website provided "bona fide service offerings," which included "disseminat[ing] city information in an effort to increase tourism and other visitor traffic to the city." . . . Significantly, with respect to [Newport News'] claim of bad faith, the panel noted that "given the total absence of competition between the businesses of [Newport News and Virtual City] . . . [Virtual City] did not register the contested domain name in an effort to cause any likelihood of confusion.
Following a "deliberate metamorphosis" of its newportnews.com website, however, Virtual City was not so successful in the next litigation confrontation with Newport News.
In 2008, Newport News sued Virtual City alleging claims for, in part, violation of the Anticybersquatting Consumer Protection Act. The District Court later granted summary judgment in favor of Newport News on its ACPA claim.
On appeal, among a number of other issues, the Fourth Circuit affirmed the grant of summary judgment on the ACPA claim. With respect to the issue of bad faith and Virtual City's use of the domain name newportnews.com, the Fourth Circuit found the District Court had reached the correct conclusion:
Here, even drawing all reasonable inferences in favor of [Virtual City], the record is clear that after November 2007, [Virtual City] was no longer in the business of providing information about the city of Newport News. The contrast between the newportnews.com website and [Virtual City's] other locality websites, which were dominated by links and advertisements for businesses and activities in those cities, is stark. Unlike those websites, newportnews.com went from being a website about a city that happened to have some apparel advertisements to a website about women's apparel that happened to include minimal references to the city of Newport News. The district court correctly held that, once [Virtual City] largely abandoned its city information service, it ceased to have a right to use the name of Newport News to describe such service.
The Fourth Circuit also held that the District Court properly concluded that the prior UDRP decision in Virtual City's favor supported a finding of bad faith. That decision's finding of no bad faith was supported by, at that time, the total absence of competition between Newport News and Virtual City. Thus, "[t]he fact that, in the face of this cautionary language, [Virtual City] later purposefully transformed its website into one that competed with [Newport News] by advertising women's apparel is a legitimate factor within the totality of the circumstances supporting the district court's finding of bad faith."
The case cite is Newport News Holdings Corp. v. Virtual City Vision, Inc., No. 09-1947 (4th Cir. Apr. 18, 2011).
