OPINION AND ORDER
Plaintiffs Marianne Bihari and Bihari Interiors, Inc.
(collectively "Bihari") move to preliminarily enjoin defendants
Craig Gross and Yolanda Truglio (collectively "Gross") from
using the names "Bihari" or "Bihari Interiors" in the domain
names or metatags of any of their websites ("the Gross
websites"), claiming that such use violates the
Anticybersquatting Consumer Protection Act ("ACPA"),
15 U.S.C. § 1125(d)(1), and infringes on Bihari's common-law service mark in
violation of § 43(a) of the Lanham Act,
15 U.S.C. § 1125(a)(1)(A). Additionally, Bihari moves to enjoin defendants
from publishing defamatory statements against Bihari and Bihari
Interiors on the Gross websites, contending that the defamatory
statements constitute common law libel.*fn1
I have reviewed Bihari's Complaint, Motion for Preliminary
Injunction, Amended Complaint, Supplemental Memorandum of Law,
and Reply Memorandum of Law, and I have also reviewed
defendants' Answer and Opposing Memorandum of Law. A telephone
conference with all counsel, addressing the merits of the case,
was held on August 28, 2000. Neither party has requested an
evidentiary hearing. For the reasons set forth below, Bihari's
motion for preliminary injunctive relief is denied.
Although the Internet has become part of our daily life, its
technological aspects largely remain a mystery to all but the
most savvy. A brief review of the fundamentals should prove
useful. The Internet is an international network of
interconnected computers that enables tens of millions of
people, if not more, to communicate with one another and to
access vast amounts of information from around the world. See
Reno v. American Civil Liberties Union, 521 U.S. 844, 850, 117
S.Ct. 2329, 138 L.Ed.2d 874 (1997). Information on the Internet
is housed on webpages.
When searching for information on the Internet, an individual
user may choose one of two search techniques. The first involves
conducting a specific domain name*fn2 search, in which the
user types the company name or logo followed by the suffix
".com". A news network such as CNN, for example, has the website
"cnn.com". However, companies will often choose as a domain name
one that does not precisely reflect their company name. For
instance, the domain name for the New York Times is
"nytimes.com". If an Internet user were to type the domain name
"newyorktimes.com", the user would arrive at a site unaffiliated
with the New York Times but devoted to readers' comments about
the New York Times.
Because entering the company's name as the domain name often
fails to take the user to the desired webpage, many users
prefer the second search technique. Here, a websurfer enters a
particular company name or search request in a search engine.
The search engine then displays a list of websites that match
the user's request. The search engine ranks the relevant sites
according to the relative frequency with which the word or
phrase appears in the metatags*fn3 and in the text of the
websites. The websurfer then chooses, based on any number of
considerations, which website to visit. Most often, that choice
is based on the domain name listed for each search result and a
brief description of each webpage provided by the search engine.
A. The Failed Contract
Marianne Bihari is an interior designer who has been providing
interior design services in New York City, New Jersey,
Connecticut, California, Florida and Italy since 1984. See
3/3/00 Affidavit of Marianne Bihari in Support of Plaintiffs'
Motion for a Preliminary Injunction ("Bihari Aff.") ¶ 2. Since
1989, she has been continuously doing business as Bihari
Interiors or Marianne Bihari d/b/a Bihari Interiors. See id.
The Bihari Interiors name is well known, particularly in the New
York City high-end residential interior design market. See id.
¶¶ 2, 4. Bihari does not engage in paid advertising to promote
her services; rather, she relies on referrals from clients and
other design-industry professionals. See id. ¶ 3.
Craig Gross is a former client of Bihari Interiors. See id.
¶ 1. Yolanda Truglio is Gross's girlfriend. See id. T 21. On
February 12, 1998, Gross, on behalf of 530 East 76th Street,
Inc., retained Bihari Interiors to provide interior and
architectural design services for his condominium apartment on
East 76th Street ("the Contract"). See Amended Complaint ¶ 13;
Defendants' Answer to Plaintiffs' Amended Complaint ("Answer") T
14. For various reasons not relevant to this action, the
relationship between Bihari and Gross soured, and the Contract
was never completed. See Amended Complaint ¶¶ 17-25.
On June 14, 1999, Gross filed suit against Marianne Bihari and
Bihari Interiors in New York State Supreme Court alleging fraud
and breach of contract ("the State Suit"). See id. T 26. On
August 12, 1999, Gross submitted an amended verified complaint
in the State Suit ("the First Amended Complaint"). On April 3,
2000, the state court dismissed two of the fraud claims, but
granted Gross a right to replead one of those claims. See
Amended Complaint t 94; 8/4/00 Affidavit of Craig Gross in
Opposition to Motion for a Preliminary Injunction T 5 ("Gross
Aff."). Gross has since filed a second amended complaint which
is currently pending in New York State Supreme Court ("the
Second Amended Complaint"). See Gross Aff. ¶ 5.
B. The Alleged Harassment
Approximately two months after Gross first filed the complaint
in the State Suit, on August 10, 1999, Bihari, Gross and Truglio
engaged in settlement negotiations, which were ultimately
unsuccessful. See Amended Complaint ¶¶ 27-29. Four days later,
Gross registered the domain names "bihari.com" and
"bihariinteriors.com". See id. ¶ 31. On August 16, 1999,
Bihari received an anonymous facsimile alerting her to the
website. See id. ¶ 32. The following day, Bihari accessed the
website "www.bihariinteriors.com". See id. ¶ 36. Disturbed by
the unauthorized use of her name and her business name in the
domain name, as well as the disparaging statements on the
contacted her attorney. See Bihari Aff. ¶¶ 26, 27. On August
31, 1999, Bihari's attorney sent a letter to Gross demanding
that he terminate the website. See Amended Complaint ¶ 40.
Rather than complying with Bihari's demand, Gross delivered to
Bihari's residence pens bearing the words "w
ww.bihariinteriors.com".*fn4 See id. ¶ 44. In addition,
Bihari alleges that subsequent to the delivery of the pens,
Bihari received frequent "hang-up telephone calls" which lasted
until approximately November 22, 1999. See id. ¶ 45,
48.*fn5 Bihari filed a criminal complaint for aggravated
harassment against Gross and Truglio on October 3, 1999, but the
District Attorney's office declined to prosecute. See id. ¶¶
Bihari was the subject of a criminal complaint several months
later. Before the contract relationship between Gross and Bihari
deteriorated, Bihari Interiors sold Gross three sofas purchased
from a vendor. See Amended Complaint ¶ 49. Bihari Interiors
made the initial payments for the sofas. See id. By the terms
of the Contract, if Bihari Interiors failed to pay in full by a
certain date, the vendor would be free to resell the sofas. See
id. ¶ 50. After the payment deadline expired, Gross paid the
vendor the balance due on the sofas, thereby avoiding payment of
Bihari Interiors' commission. See id. ¶ 51; Answer ¶ 51. The
sofas, however, were not delivered to Gross, but to Bihari, who
took possession of them pending resolution of the State Suit.
See Amended Complaint ¶ 52. Bihari alleges that Gross then
filed a criminal complaint against her for theft of the sofas.
See id. ¶ 53. On December 20, 1999, Bihari was arrested, held
for approximately six hours, and "charged with criminal
possession of stolen property in the fifth degree, a misdemeanor
offense." Id. ¶ 56. On January 24, 2000, Bihari was informed
that the District Attorney's office had declined to prosecute
her case. See id. ¶ 57.
C. The Websites
On March 7, 2000, Bihari served Gross with the instant
Complaint and motion for injunctive relief. See id. ¶ 58.
Gross then offered to take down the "bihariinteriors.com"
website pending a preliminary injunction hearing. See id. ¶
59. He has since relinquished the domain names "bihari.com" and
"bihariinteriors.com" and is taking all necessary steps to
return those domain names to Network Solutions, Inc., the
provider of domain name registrations. See 8/29/00 Letter of
Defendants' Attorney Anne W. Salisbury to the Court ("8/29/00
On March 7, 2000, the day that Bihari served Gross with the
Complaint, Bihari also learned of another website created by
Gross, "designscam.com", by using an Internet search engine and
searching for the words "Bihari Interiors". See id. ¶ 60.
Bihari discovered that the "designscam.com" website contained
the same content as the "bihariinteriors.com" website. See id.
¶¶ 60, 61. Then, on March 11, 2000, Gross registered a fourth
website, "manhattaninteriordesign.com", containing the identical
material as "designscam.com". See id. ¶ 63.
All of the Gross websites use "Bihari Interiors" as metatags
embedded within the websites' HTML code. See id. 66. The
description metatags of the Gross websites state "This site
deals with the problems experienced when hiring a new [sic] York
City (Manhattan) designer. It discusses Marianne Bihari[,] fraud
and deceit and interior decorating." See 3/3/2000 Affidavit of
John Running, a computer systems administrator and HTML
programmer employed by Bihari's attorneys, in
Support of Plaintiffs' Motion for a Preliminary Injunction
("Running Aff.") ¶ 13.
D. The Website Content
Each of the Gross websites is critical of Bihari and her
interior design services. An Internet user accessing any of the
websites first sees a large caption reading "The Real Story
Behind Marianne Bihari & Bihari Interiors." See id. ¶ 72.
Directly beneath this title are three photographic reproductions
of scenic New York. See id. ¶ 73. Beneath the photographs is a
counter indicating how many visitors the website has had. As of
June 26, 2000, the counter indicated that 9,774 people have
visited the website since August 15, 1999. See Print-out of
"manhattaninteriordesign.com" Website, Ex. E to Plaintiffs'
Amended Notice of Motion. Also appearing on the first page of
the websites are various hyperlinks*fn6 including "Tips on
Picking a Designer," "New York City Information," "Who's Who in
Interior Design," "Kabalarians Philosophy," "A Humorous Look,"
"Tell A Friend," "Send EMail," "Sign or Read the Guest Book,"
and "Participate in the Bihari Poll." Id.
A long block of text appears beneath these hyperlinks and it
Welcome to the first web site designed to protect
people from the alleged ill intentions of Marianne
Bihari & Bihari Interiors. Keep in mind that this
site reflects only the view points and experiences of
one Manhattan couple that allegedly fell prey to
Marianne Bihari & Bihari Interiors. There possibly
may be others that have experienced similar alleged
fraud and deceit from Marianne Bihari & Bihari
Interiors. Please feel free to e-mail us if you think
you were victimized by Marianne Bihari & Bihari
Interiors. Our goal is to protect you from
experiencing the overwhelming grief and aggravation
in dealing with someone that allegedly only has
intentions to defraud. If you think you need advice
before entering into a contract with Marianne Bihari
& Bihari Interiors — Please Click Here.
See id.; Amended Complaint 1 ¶ 78, 79.
Below this text a viewer finds additional hyperlinks to "The
Initial Meeting," "The Contract," "The Scam," and "The Law Suit"
[sic]. See Amended Complaint ¶ 80. Viewers who connect with
these links do not immediately receive the information, but are
told that if they send an e-mail, they will receive a copy of
the requested information. See id. ¶ 81.
In addition to these comments, the Gross websites contain a
"guestbook" where visitors leave messages for other visitors to
the websites. See id. ¶ 83. Some of the guestbook entries
indicate that potential clients declined to retain Bihari's
services because of the Gross websites. See id. ¶ 86. Other
messages simply comment or inquire about the Gross websites'
design. See Guestbook Entries for "www.bihariinteriors.com"
from 3/1/2000 ("Guestbook Entries"), Ex. B. to Bihari Aff. Many
other entries disparage Bihari and Bihari Interiors.*fn7
Amended Complaint ¶ 87. Bihari alleges that many of the
guestbook entries were written by Gross and Truglio, and do not
reflect true dissatisfaction with Bihari or Bihari Interiors.
See id. ¶ 85.*fn8
The "designscam.com" and "manhattaninteriordesign.com"
websites also contain a box which presents in blinking green
letters the following incomplete statement quoted from Bihari's
March 3, 2000 Affidavit: "I was arrested and charged with
criminal possession of stolen property in the Fifth Degree."
See id. ¶ 62. Gross neither includes the rest of the sentence
— which reveals that the arrest was for a misdemeanor offense —
nor informs the reader that the District Attorney's Office
declined to prosecute the case. See id.
In June 2000, Gross launched amended versions of the
"designscam.com" and "manhattaninteriordesign.com" websites.
See id. ¶ 90. The new websites are substantially identical to
the former version, with two exceptions. See id. First, Gross
deleted the statement, "Our goal is to protect you from
experiencing the overwhelming grief and aggravation in dealing
with someone that allegedly only has intentions to defraud."
See id. ¶ 93. Second, he added two hyperlinks — from the
words "alleged fraud" and "lawsuit" — to a copy of the First
Amended Complaint in the State Suit. See id. ¶ 94.
E. Motive and Intent
The parties dispute defendants' motive and intent in creating
the websites. Bihari alleges that Gross's motive was to harass
Bihari and to pressure her into settling the State Suit. See
Bihari Aff. ¶ 23. Gross counters that he created the websites
because he was disturbed by Bihari's "deceitful practices," and
was "dedicated to assisting consumers who are in the process of
choosing a designer in New York City, as well as informing
others of my experiences with Bihari." Gross Aff. ¶ 7. While
there is no direct proof that Gross's motive is to pressure
Bihari to settle the State Suit, there is proof that Gross
intends to harm Bihari's business. Gross's specific intent, as
memorialized in his own words on his websites, is to warn
potential customers of Bihari's "alleged ill intentions" and to
"protect" them from experiencing "the overwhelming grief and
aggravation" he has experienced in dealing with Bihari. Amended
Complaint ¶ 79. Undeniably, Gross's intent is to cause Bihari
III. Applicable Legal Standard
"Because of the great potential for harm which may occur from
the issuance of a preliminary injunction, the party seeking the
injunction must sustain a heavy burden." Ringling
Brothers-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows
Corp., 937 F. Supp. 204, 207 (S.D.N.Y. 1996). The party seeking
such relief must demonstrate: (1) likelihood of irreparable harm
should the injunction be denied; and (2) either (a) likelihood
of ultimate success on the merits, or (b) sufficiently serious
questions going to the merits and a balance of hardships tipping
decidedly toward the party seeking relief. See SmithKline
Beecham Consumer Healthcare, L.P. v. Watson Pharms., Inc.,
211 F.3d 21, 24 (2d Cir. 2000);
Maryland Cas. Co. v. Realty Advisory Board on Labor Relations,
107 F.3d 979, 984 (2d Cir. 1997).
A. The Lanham Act Claims
1. Irreparable Harm
"Irreparable harm is an injury that is not remote or
speculative but actual and imminent, and for which a monetary
award cannot be adequate compensation." Tom Doherty Assocs. v.
Saban Entertainment, Inc., 60 F.3d 27, 37 (2d Cir. 1995)
(internal citations omitted). In a trademark infringement case,
a presumption of irreparable harm arises where a plaintiff makes
a showing of likelihood of confusion. See Tough Traveler, Ltd.
v. Outbound Products, 60 F.3d 964, 967 (2d Cir. 1995);
Standard & Poor's Corp. v. Commodity Exchange, Inc.,
683 F.2d 704, 708 (2d Cir. 1982). A showing of likelihood of confusion,
therefore, will establish the irreparable harm requisite for a
2. Likelihood of Success on the ACPA Claim
On November 29, 1999, Congress adopted the ACPA "to remedy the
perceived shortcomings of applying the FTDA [Federal Trademark
Dilution Act] in cybersquatting cases." Sporty's Farm L.L.C. v.
Sportsman's Market, Inc., 202 F.3d 489, 495 (2d Cir. 2000). To
establish a claim of cybersquatting, a plaintiff must show: (1)
that she had a distinctive mark at the time of the registration
of the domain name; (2) that the defendant "registers, traffics
in, or uses a domain name" that is identical or confusingly
similar to that mark; and (3) that the defendant has "a bad
faith intent to profit from that mark."
15 U.S.C. § 1125(d)(1).*fn9 A preliminary injunction is a remedy
authorized by the ACPA. See 15 U.S.C. § 1116(a).
In March 2000, Bihari claimed that Gross's registration of
"bihari.com" and "bihariinteriors.com" violated the ACPA because
he registered the confusingly similar domain names with a bad
faith intent to profit by pressuring Bihari into settling the
State Suit at terms favorable to Gross. Since then, Gross has
abandoned those two websites and promised to transfer the domain
names back to Network Solutions, Inc. See 8/29/00 Salisbury
However, during the August 28 telephone conference, Bihari's
attorney claimed that use of "Bihari Interiors" in the metatags
violates the ACPA. Neither Bihari's attorney, nor this Court,
has been able to find a single case applying the ACPA to
metatags. Although no court has expressly stated that the ACPA
does not apply to metatags, the plain meaning of the statute and
its legislative history make this conclusion apparent. See
15 U.S.C. § 1125(d)(A)(1)(ii) (ACPA provides an action against one
who "registers, traffics in, or, uses a domain name. . . .")
(emphasis added); Mattel, Inc. v. Internet Dimensions Inc., 99
Civ. 10066, 2000 WL 973745 at *2 (S.D.N.Y. July 13, 2000)
(Congress's purpose in adopting the ACPA was to "protect
consumers and American businesses . . . by prohibiting the
bad-faith and abusive registration of distinctive marks as
Internet domain names. . . .") (quoting S.Rep. No. 106-140, at
4 (1999)) (emphasis added). Therefore, the ACPA is no longer a
basis for preliminary injunctive relief as Gross has voluntarily
relinquished the Bihari domain name.
3. Likelihood of Success on the Trademark Infringement
A claim of trademark infringement under § 43(a) of the Lanham
Act requires the plaintiff to show (1) that she has a