Newport News Holdings Corporation v. Virtual City Vision, Incorporated

650 F.3d 423 (4th Cir. 2011)

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Nature of the Case

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Facts

P is a women's clothing and accessories company that has been in existence for over twenty years. It owns five federally registered trademarks for the mark 'Newport News.' These trademarks cover the sale of women's clothing and accessories and the offering of these items for sale through catalogs and the Internet. The trademarks also cover the domain name newport-news.com. P attempted to acquire the domain name newportnews.com but D had already purchased that domain name. P began offering its goods for sale over the Internet in 1999 using the newport-news.com domain name. D owns at least thirty-one domain names that incorporate the names of geographic locations. Newportnews.com, which initially focused on Newport News, Virginia. D wanted to create sites where those who lived in the respective cities could find information and advertising related to the cities. D is its president, sole employee, and the only participating member of its board of directors. He operates the business from his home. P filed an ICANN complaint which the panel rejected. It found that, although the mark and the domain name are identical, but that 'visitors to [P's] 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.” It held that D did not register the contested domain name in an effort to cause any likelihood of confusion. In 2004, D's website began running occasional advertisements for women's clothing. In the summer of 2007, P made an offer to purchase the newportnews.com domain name, and D offered the name for a 'seven-figure' amount, or, in the alternative, sell P goods on its website for a commission. By February of 2008, D's homepage was dominated by advertisements for women's apparel. Practically all of D’s money was made from women’s advertisements on the site. P sued D. After discovery P filed its amended complaint adding a claim for violation of the ACPA and removing its copyright infringement claim. Summary judgment was issued to P. D appealed. D in part challenges the district court's grant of summary judgment on P's claim under the ACPA.