## Facts

- Planned Parenthood Federation of America, Inc., a nonprofit reproductive health care organization, had used the name “Planned Parenthood” since 1942 and held federal service-mark registrations for “Planned Parenthood.”
- Planned Parenthood licensed its mark to numerous affiliates nationwide and maintained an informational and fundraising website at “www.ppfa.org.”
- Richard Bucci, a Catholic radio host and anti-abortion activist, registered the domain name “plannedparenthood.com” in August 1996 and operated a website at “www.plannedparenthood.com.”
- Visitors to Bucci’s site were greeted with “Welcome to the PLANNED PARENTHOOD HOME PAGE!” and then presented with anti-abortion content and materials promoting the book *The Cost of Abortion*.
- Bucci acknowledged he intended to reach users seeking Planned Parenthood’s site and to publicize the book, though he did not personally receive sales proceeds.
- Planned Parenthood sued under the Lanham Act for service-mark infringement, false designation of origin/unfair competition, and dilution, and sought a preliminary injunction barring Bucci’s use of “plannedparenthood.com.”

## Issues

1. Whether Bucci’s registration and operation of “plannedparenthood.com” constituted “use in commerce” of Planned Parenthood’s mark in connection with goods or services under the Lanham Act.
2. Whether Bucci’s domain name and website presentation created a likelihood of confusion as to source, sponsorship, or affiliation (including initial confusion at the point of access).
3. Whether use of “plannedparenthood.com” diluted the distinctive quality of Planned Parenthood’s allegedly famous mark.
4. Whether the First Amendment protected Bucci’s use of Planned Parenthood’s mark as a domain name for critical commentary.
5. Whether Planned Parenthood satisfied the requirements for a preliminary injunction, including irreparable harm and likelihood of success on the merits (or serious questions and hardship balance).

## Decision

- The court granted Planned Parenthood’s motion for a preliminary injunction.
- The court found Bucci’s use of “plannedparenthood.com” was a commercial use in commerce because the site functioned as a promotional device for a book and affected Planned Parenthood’s online fundraising and service-related activities.
- The court found a strong likelihood of confusion because the domain name was identical to the mark and the homepage’s “PLANNED PARENTHOOD HOME PAGE” greeting suggested affiliation or authorization.
- The court concluded that even if users later recognized the site’s oppositional viewpoint, the initial diversion of users seeking Planned Parenthood supported actionable confusion.
- The court found a likelihood of dilution of a famous, distinctive mark through blurring and tarnishment based on the identical domain name used for hostile content.
- The court rejected Bucci’s First Amendment defense as a bar to relief because the injunction targeted use of the mark as a misleading identifier, not Bucci’s ability to criticize Planned Parenthood on a non-infringing site.
- The court held irreparable harm was presumed from likely confusion and also supported by risk to reputation and goodwill; the balance of hardships favored Planned Parenthood because Bucci could convey his message using a different domain name.

## Legal Principles

- Use of another’s registered mark as an identical domain name can constitute “use in commerce” when the site is connected to the advertising or promotion of goods or services, even without direct profit to the registrant.
- Likelihood of confusion in the Internet context may be established by identical domain-name use that diverts users at initial access, including confusion as to source, sponsorship, or affiliation.
- A famous mark may be diluted by use of an identical domain name that weakens source-identifying capacity (blurring) or harms reputation through association with disparaging content (tarnishment), when the use is commercial.
- The First Amendment does not immunize use of another’s mark as a misleading domain-name identifier; courts may restrict such use while leaving speakers free to publish criticism under non-confusing identifiers.
- For preliminary injunctions in trademark cases, a strong showing of likely confusion supports likelihood of success and irreparable harm, and hardship balancing may favor the mark owner where the defendant retains alternative means of expression.

## Conclusion

The court preliminarily enjoined Bucci from using “plannedparenthood.com” because the identical domain name and website presentation were commercial uses likely to confuse users and dilute a famous mark, and restricting the domain-name identifier did not improperly restrict Bucci’s ability to express anti-abortion views through other channels.


Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997)