John B. Berryhill, LLC
Patent, Co ri ht and Trademark Law

 

Augusl3l.2012

Alexis L. Robinson
Assistant General Counsel

The Tmmi Orianization

Via mail to --

Re: Domain Name

Dear Ms. Robinson,

Your letrer dared August 23, 2012 ro Mr. Chris Puchowicz concerning the internet domain name
has been forwarded to my artention. As you are likely aware. Mr. Puchowicz
acquired the domain name very recently, and has only began his use of it.

Mr. Puchowicz obtained the domain name for rhe purpose of noncommercial polirical
commentary on a public figure. As you know. notwithstanding any secondary meaning Mr.
Trump has artained in connection with his name in connecrion wirh gambling houses and real
estate promotion, it is certainly true that Mr. Trump is an esrablished polirical figure in the
United States, notably in connection with his inability to determine rhe of the
President of the United States and in connecrion wirh his views against equaliry on the basis of
sexual orientation.

Mr. Ptichowicz' registration and use of the domain name ro express his commentary on Mr.
Trump's polirical activities is a protected activity under the First Amendment. As you are
obviously unfamiliar with the law in rhis area. we suggest you review Lumparella v. Falwell, 420
F.3d 309. Cir" 2005), and the cases cired therein, at some lengrh:

After even a quick glance ar the Content ofihe website at no
one seeking Reverend Falwell's guidance would be misled by the domain name
7 7 inio 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.
[…]
Instead, Lamparello, like the plaintiffs in two cases recently decided by the Fifth
and Sixth Circuits, created a gripe site. Both courts expressly refused to find that
gripe sites located at domain names nearly identical to the marks at issue violated
the ACPA. In TMI, Inc. v. Maxwell, 368 F.3d 433, 434-35 (5th Cir.2004), Joseph
Maxwell, a customer of homebuilder TMI, registered the domain name
"www.trendmakerhome.com," which differed by only one letter from TMI's
mark, TrendMaker Homes, and its domain name, "www.trendmakerhomes.com."
Maxwell used the site to complain about his experience with TMI and to list the
name of a contractor whose work pleased him. After his registration expired,
Maxwell registered "www.trendmakerhome.info." TMI then sued, alleging
cybersquatting. The Fifth Circuit reversed the district court's finding that Maxwell
violated the ACPA, reasoning that his site was noncommercial and designed only
"to inform potential customers about a negative experience with the company."
Id. at 438-39.
Similarly, in Lucas Nursery & Landscaping, a customer of Lucas Nursery
registered the domain name "www.lucasnursery.com" and posted her
dissatisfaction with the company's landscaping services. Because the registrant,
Grosse, like Lamparello, registered a single domain name, the Sixth Circuit
concluded that her conduct did not constitute that which Congress intended to
proscribe — i.e., the registration of multiple domain names. Lucas Nursery &
Landscaping, 359 F.3d at 810. Noting that Grosse's gripe site did not create any
confusion as to sponsorship and that she had never attempted to sell the domain
name to the markholder, the court found that Grosse's conduct was not actionable
under the ACPA. The court explained: "One of the ACPA's main objectives is the
protection of consumers from slick internet peddlers who trade on the names and
reputations of established brands. The practice of informing fellow consumers of
one's experience with a particular service provider is surely not inconsistent with
this ideal." Id. at 811.
Like Maxwell and Grosse before him, Lamparello has not evidenced a bad faith
intent to profit under the ACPA. To the contrary, he has used www.fallwell.com
to engage in the type of "comment[][and] criticism" that Congress specifically
stated militates against a finding of bad faith intent to profit. See S.Rep. No. 106140, 1999 WL 594571, at *14. And he has neither registered multiple domain
names nor attempted to transfer www.fall.well.com for valuable consideration.
We agree with the Fifth and Sixth Circuits that, given these circumstances, the use
of a mark in a domain name for a gripe site criticizing the markholder does not
constitute cybersquatting.

 Here, Mr. Trump’s expressly political activities render criticism of those activities to be
squarely within the type of speech in relation to public figures which the First
Amendment was designed to protect, and which courts have consistently recognized to be
non-actionable under the ACPA. Moreover, even though the result would not differ, Mr.
Puchowicz’ commentary in relation to Mr. Trump is not made in connection with any
“TRUMP” trade or service mark connected with Mr. Trump’s commercial activities, but
is directed at Mr. Trump’s positions, commentary, and behavior as a political figure –
albeit one who was apparently fired this week from his boasted “important role” at the
Republican National Convention. Put simply, Ms. Robinson, your employer is a national
laughingstock and disgrace, and any citizen of this great country of ours has the right to
point that out.
Concerning your numbered demands, we note that:
(1) Mr. Trump is not entitled to enjoin the use of “Mr. Trump’s name” for the
purpose of criticism and commentary of his political views;
(2) Mr. Puchowicz is not conducting any “commercial activities” in relation to
the domain name; and
(3) Mr. Puchowicz is not “infringing” any trade or service mark right of Mr.
Trump or your organization, and declines your demand for transfer.
Given the unmistakably clear precedent in this area, we believe that the type of action
threatened in your letter would be a suitable candidate for damages, costs and fees
available under the ACPA for reverse domain hi-jacking, and we will be eager to pursue
them should you proceed with your ill-considered and facially frivolous threatened
action.
This communication is made with full reserve of Mr. Puchowicz’ rights, claims and
defenses in this matter, whether or not expressly stated herein and including without
limitation the right to seek appropriate injunctive and/or declaratory relief against your
organization without further notice to you.
Sincerely,
________________________
John B. Berryhill, Ph.d., Esq.