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II. BACKGROUND
Plaintiff, The Taubman Company Limited Partnership, owns and operates a number of
shopping malls around the United States, including a recently opened shopping mall in Texas named
THE SHOPS AT WILLOW BEND (hereinafter "the mall"). In connection with this mall, Plaintiff
obtained a federal trademark for the mark THE SHOPS AT WILLOW BEND (hereinafter "mark"),
and registered and began using the website www.theshopsatwillowbend.com.
Note: Plaintiff also owns the related domain name www.shopwillowbend.com.
Defendant Henry Mishkoff, through his company, Defendant Webfeats, operates a number
of Internet websites. One of Defendants' websites had the domain name
www.shopsatwillowbend.com. That domain name is nearly identical to Plaintiff's registered
trademark. On that website, Defendants promoted the mall and featured a map of the mall, pictures
of the mall, a list of each store in the mall, as well as hyperlinks to each store's website. In addition,
the website contained the phrase "You Don't Have to Go to the Mall... We'll Come to You!"
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[This is technically correct, but misleading. Taubman made no mention of the phrase (which was a
link to a site operated by my girlfriend, who sells custom-made shirts) in our correspondence prior to
the filing of the lawsuit. However, Taubman objected to the phrase (and link) in their complaint, so I
removed it immediately. I don't understand why the judge is bringing it up at this time (and in
several other places in his order), as it is no longer relevant to this case.
Taubman has not so much as mentioned the offending phrase since I removed it from the site –
not in their original request for an injunction, and not in their request to amend the injunction.
However, now that the judge has clearly indicated that he attaches a great deal of importance to this
long-since-removed phrase, I suspect that Taubman will be sure to bring it up in all of the documents
they file from now on!]
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Plaintiff, located in Michigan, filed a complaint in the Eastern District of Michigan on
August 7, 2001, alleging a violation of federal trademark law. Plaintiff made a motion for a
preliminary injunction on September 26, 2001; Defendants, who are located in Texas, responded to
that motion on October 5, 2001. The Court issued a preliminary injunction on October 11, 2001,
enjoining Defendants from operating the website with the domain name
www.shopsatwillowbend.com and ordering Defendants to remove that website from the Internet
because it potentially violated trademark law, and because Defendants would suffer less harm from
a preliminary injunction than Plaintiff would potentially suffer.
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[In the original injunction, the judge offered one and only one reason for
granting the injunction (a copy of which was online in my TaubmanSucks.com site, until the judge
ordered me to remove the site from the Internet): "Because Defendants are not operating their website
for profit, they are less likely to be harmed by a preliminary injunction." Specifically, the judge
did not say that he was ordering me to remove the site "because it potentially violated
trademark law."
This process seems very unfair to me. I'm
appealing the judge's decision based on what he said, and now
he's supplying an entirely new line of reasoning (here and elsewhere in his decision, in greater
detail), after the fact. My response
to his "Order To Show Cause" was based on what he had said in his injunction – and to have my
response denied because I did not reply to a line of reasoning that the judge
had not made public is more than a
little frustrating.]
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Before Plaintiff filed its complaint, Plaintiff informed Defendants that Plaintiff intended to
file suit. Plaintiff also offered to settle the dispute with Defendants, and kept that offer open for a
period of time after the complaint was filed.
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[Saying that Taubman "kept that offer open for a period of time after the complaint was filed" is
misleading. The fact is that I accepted Taubman's offer, but then they added new conditions to
their offer, which I refused to accept. For nearly two months, I continued to insist that they honor
the agreement that they had proposed, but they refused to do so. Under these circumstances, I don't
see how their offer can be described as having been "kept open" for any period of time.]
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Shortly after the complaint was filed, however,
Defendants informed Plaintiff that they had registered five "complaint" (hereinafter "sucks.com" )
websites, each with a domain name that either incorporated Plaintiff's name or the mall's name.
Note: "Domains" are used to provide organization to the Internet. The domain name contains
two parts: a top-level domain name and a second-level domain name. A top-level domain name
describes the nature of the enterprise operating the website, such as ".edu" for education; ".org"
for organizations; ".gov" for government entities; ".net" for networks; and ".com" as the catchall
for other Internet users. Before the top-level domain name is a second-level domain name, which
consists of a word or series of words, such as theshopsatwillowbend. An example of a full
domain name would be www.theshopsatwillowbend.com. Domain names are licensed to
individuals by companies that are approved by the Internet Corporation for Assigning Names and
Numbers, such as Network Solutions, Inc. Within any domain, the domain owner may place
additional sub-domains and multiple web pages or may merely have one website. See Bally
Total Fitness v. Faber, 29 F. Supp. 2d 1161, 1162 n.l (C.D. Cal. 1998).
Currently, Defendants are operating those five "sucks.com" websites. The domain names for those
sites are:
- www.taubmansucks.com
- www.willowbendsucks.com
- www.willowbendmallsucks.com
- www.shopsatwillowbendsucks.com
- www.theshopsatwillowbendsucks.com
These five websites, all of which contain identical information to one another, are the subject of
Plaintiff's Expedited Motion to Amend Preliminary Injunction. On October 22, 2001, the Court
ordered Defendants to show cause as to whether the "safe distance rule" is applicable in this case.
The parties responded to the show cause order. In addition, the Court considered an amicus brief
by Public Citizen was submitted on this issue, and other issues.
On October 23, 2001, Defendants sent the first of a number of documents to the Court.
Among those documents were Defendants' answer to Plaintiff's complaint, and Defendants'
Expedited Motion to Dismiss Plaintiff's Complaint.
Note: Defendant resubmitted this motion with a brief in November because the original motion
did not comply with the local Court rules.
On October 29, 2001, Defendants submitted
a document entitled Defendants' Memorandum in Opposition to Plaintiff's Expedited Motion to
Amend Preliminary Injunction. Defendants also submitted a response to the Court's order to show
cause on November 5, 2001. Finally, on November 14, 2001, Defendants objected to personal
jurisdiction.
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