## Facts

- Morrison & Foerster LLP is a long-established law firm using the trademarks “MORRISON & FOERSTER” and “MOFO” to identify its legal services, including through its website at “mofo.com.”
- Brian Wick, through American Distribution Systems, Inc. (ADSI), registered multiple “.com” domain names incorporating the firm’s name, including “morrisonfoerster.com” and “morrisonandfoerster.com,” plus additional close misspellings.
- Morrison & Foerster attempted to register some of the same domains but learned Wick had registered them three days earlier.
- Wick’s sites displayed content mocking the firm and lawyers generally, which Wick characterized as “parody.”
- Morrison & Foerster sued under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), seeking preliminary and permanent injunctive relief, including transfer or cancellation of the domain names.
- The parties stipulated to consolidate the preliminary injunction hearing with a trial on the merits under Federal Rule of Civil Procedure 65(a)(2).

## Issues

1. Whether Morrison & Foerster’s marks were distinctive or famous and whether Wick’s domain names were identical or confusingly similar to those marks under the ACPA.
2. Whether Wick registered and used the domain names with a bad-faith intent to profit from the marks under 15 U.S.C. § 1125(d)(1)(A).
3. Whether Wick’s asserted parody/expressive purpose defeated ACPA liability where the domain names themselves appropriated the marks.
4. Whether injunctive relief, including transfer or cancellation of the domain names, was warranted.

## Decision

- The court found Morrison & Foerster’s marks distinctive and protectable and found the registered domain names identical or confusingly similar to those marks.
- The court held Wick and ADSI acted with a bad-faith intent to profit within the meaning of the ACPA.
- The court rejected parody as a shield from ACPA liability where the domain names functioned as misleading entry points trading on the mark’s goodwill.
- The court granted permanent injunctive relief and ordered relief concerning the infringing domain names consistent with the ACPA (transfer or cancellation).

## Legal Principles

- Under the ACPA, liability requires a distinctive or famous mark, a domain name identical or confusingly similar to that mark, and a bad-faith intent to profit. 15 U.S.C. § 1125(d)(1)(A).
- Domain names that omit punctuation unavailable in domain formats (e.g., “&”) or make minor variations can still be confusingly similar when users would reasonably expect the mark owner to control the “.com” version of its name.
- Bad faith may be shown by lack of any legitimate interest in the mark, a pattern of registering others’ marks as domain names, opportunistic timing, and conduct indicating an effort to exploit the goodwill associated with the mark. 15 U.S.C. § 1125(d)(1)(B).
- A claimed parody does not preclude ACPA liability when the domain name itself appropriates the mark and diverts users based on likely initial confusion, even if the linked content contains mocking or critical expression.
- The ACPA authorizes injunctive relief, including ordering transfer or cancellation of offending domain names. 15 U.S.C. § 1125(d)(1)(C).

## Conclusion

The court held that registering near-exact domain-name versions of a law firm’s distinctive marks to divert users and exploit the marks’ goodwill constituted bad-faith cybersquatting under the ACPA, and it entered a permanent injunction ordering appropriate transfer or cancellation relief despite the defendant’s parody claim.


Morrison & Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000)