October 26, 2001
of Trademarks and Service Marks
firm is Intellectual Property Counsel to Liberty University, Liberty Alliance,
Liberty Broadcasting Network, Inc., Old Time Gospel Hour, Thomas Road Baptist
Church, Jerry Falwell Ministries and Dr. Jerry Falwell. Dr. Falwell is the world famous television
evangelist and is a founding principal in each of the other listed entities,
all of which are corporations organized under the laws of the Commonwealth of
Virginia or the District of Columbia, except for Thomas Road Baptist Church,
which is an unincorporated religious body, and all of which operate under his
Falwell is the owner of the following marks:
"Jerry Falwell" and "Falwell"
Alliance, as licensee, is the owner of the following mark: "falwell.com"
Since at least the early
1960s, Dr. Falwell has been a nationally known member of the clergy and since
at least the mid-1970s he has been internationally known in that same
role. He and the organizations he has
founded have expended a great deal of time and money in establishing consumer
recognition of, and confidence in, him and the services offered under his
trademarks and service marks.
has come to the attention of our clients (referred to herein collectively as
Dr. Falwell) that you are using their marks, or confusingly similar marks, in
connection with two or more web sites.
Specifically, Mr. Cohn is the registrant of record and administrative
contact for the domain name jerryfalwell.com and Mr. Williams is the
administrative contact for the fictitiously registered domain name jerryfallwell.com. There is no distinction in law between
"Jerry Falwell" and your dot com domain names with top level suffixes, whether
spelled identically or misspelled confusingly similarly. Your continued use of Dr. Falwell's marks is
unauthorized by him and is unauthorized by any of the organizations associated
with him. Moreover, your conduct in
using these marks creates a likelihood of confusion in the marketplace
concerning the source and origin of the web sites you offer under the marks and
does and will diminish his reputation and good will.
view of Dr. Falwell's well-known and established reputation in his marks, and
the harm presented by your unauthorized use of them, your conduct constitutes
an infringement and violation of Dr. Falwell's proprietary rights in his marks,
unfair competition, false designation of origin and dilution of the distinctive
quality of his marks in violation of applicable state laws and the Lanham Act
(as recently amended by the Anticybersquatting Consumer Protection Act and the
Federal Trademark Dilution Act). This unauthorized and unlawful conduct has
caused and will continue to cause damage and irreparable injury to Dr. Falwell
and the organizations associated with him, and diminishes the valuable good
will associated with his marks.
Falwell therefore demands that you immediately cease and desist from marketing,
selling, or promoting any services or goods under his proprietary marks, or any
confusingly similar name or mark, and that you cease use of the marks in all
materials, including but not limited to the following: web sites and marketing
literature. Moreover, Dr. Falwell
demands either the immediate delivery or the destruction of all materials
bearing the infringing designations.
Should any materials be outside your direct control, Dr. Falwell
requires the name, address and other indentifying information of the parties in
whose custody any infringing materials may be.
Failure to comply with the terms of this letter may subject you to the
payment of damages for trademark/service mark infringement (which may be
trebled by the court), as well as attorneys' fees and costs incurred by him in
protecting his marks and enjoining your unlawful use of his proprietary marks.
infringing domain names are, of course, registered with VeriSign, successor to
Network Solutions, Inc. Dr. Falwell
demands that "jerryfalwell.com" and "jerryfallwell.com" be transferred through
VeriSign to Liberty Alliance pursuant to VeriSign's Private Transaction
Request, the form for which is on the web at www.greatdomains.com/services/escrow/escrowrequest.asp
. The transaction fee charged by
VeriSign is $500.00 per domain name, which Dr. Falwell agrees to pay. Moreover, for any costs you may have
incurred which are reasonable and which you can document, Dr. Falwell will
reimburse you. You must also certify
that you are not the owner or representative of any other domain names that
arguably might infringe on Dr. Falwell's marks and you must agree not to
register any such infringements in the future.
Failure to agree to the foregoing will result in Dr. Falwell seeking
compulsory transfer of the infringing domain names through the World
Intellectual Property Organization in Geneva, Switzerland. If your concurrence in resolving this matter
is not received by the undersigned by the close of business, November 12,
2001, a Complaint will be lodged forthwith in Geneva, as well as and in
addition to the filing of a civil action in federal court in the United States.
in addition to the rights of Dr. Falwell in his marks, you should be aware that
many jurisdictions recognize common law rights of privacy. To the extent that Dr. Falwell's name or
image appears on your web site(s), there may be a common law action against you
for the infringement of his right to privacy on the basis of your appropriation
of his name and/or image for your own purposes.
you have any questions, I will be happy to discuss this matter with you. If you seek legal counsel, I will be happy
to discuss this matter with your attorney(ies). In any event, we anticipate your timely reply.
Very truly yours,
John H. Midlen, Jr.