Dent v. Lotto Sport Italia S.p.A.

1   WO                                                                   
2                                                                        
3                                                                        
4                                                                        
5                                                                        
6                 IN THE UNITED STATES DISTRICT COURT                    
7                     FOR THE DISTRICT OF ARIZONA                        

8                                                                        

9   David Dent,                        No.  CV-17-00651-PHX-DMF          

10              Plaintiff,                                                

11   v.                                 ORDER                             

12   Lotto Sport Italia SpA,                                              

13              Defendant.                                                
14                                                                        
15        Pending  before  the  Court  is  Plaintiff  David  Dent’s  (“Plaintiff”)  Motion  for 
16   Attorneys’ Fees pursuant to 

15 U.S.C. § 1117

(a) and Rule 54(d)(2) of the Federal Rules of 
17   Civil Procedure.  (Doc. 115 at 4, 5)1  Defendant Lotto Sport Italia, SpA (“Defendant”) filed 
18   a response in opposition (Doc. 116) and Plaintiff filed a reply (Doc. 117).  For the reasons 
19   set forth below, the Court will grant Plaintiff’s motion.            
20   I.   BACKGROUND                                                      
21        In  2016,  Plaintiff  purchased  the  domain  names  <lottostore.com>  and 
22   <lottoworks.com> in support of his planned entry into the secondary lottery industry.  
23   (Doc. 97 at 2-3)  The domain name <lottostore.com> was first registered by a third party 
24   in January 2011.  (Id. at 3)  The domain name <lottoworks.com> was originally registered 
25   by a separate third party in 1998.  (Id.)  Defendant2, a global company producing and 

26   1 Citations to the record indicate documents as displayed in the official electronic document 
    filing system maintained by the District of Arizona under Case Number CV-17-00651- 
27   PHX-DMF.                                                             

28   2 Defendant was founded in 1973 and took its name from the final five letters of Caberlotto, 
    the last name of the company’s founder.                              
1   selling athletic footwear, sportswear, and sports accessories, received registration of the 
2   trademark LOTTO WORKS in the European Union in 2009.  (Id.)  Defendant obtained 
3   registration of this trademark in the United States in 2018 for use in connection with 
4   materials related to eyeglasses and clothing, including shoes.  (Id. at 3-4)  Defendant does 
5   not have trademark rights in the term “lotto” for gambling or lottery.  (Id. at 4) 
6        Shortly after Plaintiff purchased the disputed domain names in  2016, Defendant 
7   initiated arbitration with the World Intellectual Property Organization (“WIPO”) regarding 
8   the use of domain name <lottoworks.com> causing the registrar GoDaddy to lock this 
9   domain name.  (Id. at 3)  The WIPO panelist ruled in Defendant’s favor and ordered that 
10   the disputed domain names be transferred from Plaintiff to Defendant.  (Doc. 85-1 at 10)  
11   However, the WIPO panelist’s decision is not accorded deference on the merits in federal 
12   court.  Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 

330 F.3d 617, 13

   (4th Cir. 2003); Sallen v. Corinthians Licenciamentos LTDA, 

273 F.3d 14, 26

 (1st Cir. 
14   2001) (citing April 1999 WIPO report “stating the UDRP administrative dispute resolution 
15   procedures ‘should not have (and cannot have) the effect of binding precedent in national 
16   courts.’”).                                                          
17        Plaintiff initially filed a complaint in this Court alleging three counts encompassing 
18   five claims for relief.  (Doc. 1)  Count One requested a finding that Plaintiff’s registration 
19   and/or use of the domain names <lottostore.com> and <lottoworks.com> was not unlawful 
20   pursuant  to  a  claim  of  reverse  domain  name  hijacking  (“RDNH”)  under  the 
21   Anticybersquatting Consumer Protection Act (“ACPA”) provisions of the Lanham Act in 
22   

15 U.S.C. §§ 1114

(2)(D)(v)3.  (Id. at 9-10)  Count Two requested declaratory relief that 
23   Plaintiff’s  registration  and/or  use  of  the  two  domain  names  <lottostore.com>  and 
24   <lottoworks.com> did not violate Defendant’s rights under the Lanham Act.  (Id. at 10-12 
25   (citing 

15 U.S.C. § 1125

(d)(1)))  Count Three alleged tortious interference and was 

26   3  Plaintiff’s  Count  One  originally  alleged  violation  of  both  §  1114(2)(D)(iv)  and  § 
    1142(2)(D)(v).  (Doc. 1 at 9-10)  District Judge Silver found that § 1114(2)(D)(iv) and § 
27   1114(2)(D)(v) define separate violations and that only § 1114(2)(D)(v) addressed reverse 
    domain name hijacking.  (Doc. 17 at 4)  Judge Silver concluded that Plaintiff had failed to 
28   state  a  claim  under  §  1114(2)(D)(iv)  for  fraud  in  a  domain  dispute  proceeding  and 
    dismissed without prejudice any claim under that subsection.  (Id.)  
1   dismissed without prejudice with leave to amend if deficiencies in the claim were cured.  
2   (Docs. 1, 17)  Plaintiff did not amend his complaint.  Plaintiff also requested statutory 
3   damages under 

15 U.S.C. § 1117

(d) (Doc. 1 at 13), but he did not argue for such damages 
4   in his motion for summary judgment.  (Docs. 86-91)                   
5        The parties filed cross-motions for summary judgment on Counts One and Two.  
6   (Docs. 83, 91, 95, 86, 89, 96)  This Court granted Plaintiff’s motion for summary judgment 
7   and denied Defendant’s motion for summary judgment on both counts, found Plaintiff’s 
8   registration and use of the domain names were not unlawful under the ACPA or the 
9   Lanham Act, ordered that the domain names remain registered with Plaintiff, and further 
10   ordered that the domains be unlocked or reactivated for Plaintiff’s lawful use.  (Doc. 97 at 
11   23)                                                                  
12   II.  LEGAL STANDARD                                                  
13        Pursuant to the “American Rule,” a litigant’s “attorney’s fees are not ordinarily 
14   recoverable  in  the  absence  of  a  statute  or  enforceable  contract  providing  therefor.”  
15   Fleischmann Distilling Corp. v. Maier Brewing Co., 

386 U.S. 714, 717

 (1967).  The 
16   American Rule addresses concerns that “one should not be penalized for merely defending 
17   or  prosecuting  a  lawsuit,”  and  that  persons  of  modest  means  “might  be  unjustly 
18   discouraged from instituting actions to vindicate their rights if the penalty for losing 
19   included the fees of their opponents’ counsel.”  

Id. at 718

.  The Supreme Court further 
20   recognized that “litigating the question of what constitutes reasonable attorney’s fees 
21   would pose substantial burdens for judicial administration.”  

Id.

    
22        The Lanham Act permits an award of attorneys’ fees to the prevailing party in 
23   “exceptional cases.”  

15 U.S.C. § 1117

(a).  In Octane Fitness, the United States Supreme 
24   Court reviewed Section 285 of the Patent Act, providing that “[t]he court in exceptional 
25   cases may award reasonable attorney fees to the prevailing party.”  Octane Fitness, LLC 
26   v. ICON Health & Fitness, Inc., 

572 U.S. 545, 553-54

 (2014) (citing 

35 U.S.C. § 285

).  
27   The Supreme Court held “that an ‘exceptional’ case is simply one that stands out from 
28   others with respect to the substantive strength of a party’s litigating position (considering 
1   both the governing law and the facts of the case) or the unreasonable manner in which the 
2   case was litigated.”  

Id. at 554

.  The Court concluded that a decision on whether to award 
3   attorney fees was not formulaic and that a district court should perform a case-by-case 
4   assessment, considering the totality of the circumstances.  

Id.

  The Supreme Court also 
5   instructed that the applicable burden of proof to establish entitlement to attorney fees in 
6   patent litigation is a preponderance of the evidence standard, which “allows both parties 
7   to share the risk of error in roughly equal fashion.”  

Id. at 557-58

 (citation and quotation 
8   marks omitted).  The Court cited Fogerty v. Fantasy, Inc., 

510 U.S. 517, 534

 (1994) for a 
9   “nonexclusive list of factors” a court could consider, including “frivolousness, motivation, 
10   objective unreasonableness (both in the factual and legal components of the case) and the 
11   need  in  particular  circumstances  to  advance  considerations  of  compensation  and 
12   deterrence.”  

Id.

 at 554 n.6 (internal quotation marks omitted).     
13        Prior to the Supreme Court’s decision in Octane, the Ninth Circuit had instructed 
14   that under the Lanham Act, cases were exceptional where a plaintiff’s case is groundless, 
15   unreasonable, vexatious, or pursued in bad faith, and where the plaintiff has no reasonable 
16   or legal basis to believe in success on the merits.  See Secalt S.A. v. Wuxi Shenxi Constr. 
17   Mach. Co., 

668 F.3d 677, 683

 (9th Cir. 2012), abrogated by SunEarth, Inc. v. Sun Earth 
18   Solar Power Co., 

839 F.3d 1179

 (9th Cir. 2016) (en banc).  Subsequently, the Ninth Circuit 
19   explained that the Supreme Court in “Octane Fitness and Highmark[Inc. v. Allcare Health 
20   Mgmt. Sys., Inc., 

572 U.S. 559

 (2014)] have altered the analysis of fee applications under 
21   the Lanham Act.”  SunEarth, 

839 F.3d at 1180-81

.  Although Octane addressed attorney 
22   fees provisions in the Patent Act and SunEarth considered attorney fees provisions under 
23   the Lanham Act, the “fee-shifting provisions in both acts are parallel and identical” and 
24   courts “rely on an interpretation of the fee-shifting provision in one Act to guide our 
25   interpretation of the parallel provision in the other.”  

Id. at 1180

 (citation and internal 
26   quotation marks omitted).  The Ninth Circuit indicated that district courts should exercise 
27   equitable discretion and consider the nonexclusive Fogerty factors.  

Id.

 (quoting Octane 
28   Fitness, LLC, 572 U.S. at 1756 n.6).                                 
1   III.  DISCUSSION                                                     
2        A.   The Parties’ Arguments                                     
3             1.   Plaintiff’s arguments                                 
4        Plaintiff argues this case qualifies as “exceptional” under the  Octane standard 
5   because the facts presented here and in AirFX are closely similar and the District of Arizona 
6   in AirFX found that case was exceptional and awarded fees even under the stricter, pre-
7   Octane standard.  (Doc. 115 at 7, citing AirFX.com v. AirFX, LLC, No. CV 11-01064-PHX-
8   FJM, 

2013 WL 857976

, at *1 (D. Ariz. Mar. 7, 2013) (citations and internal quotation 
9   marks omitted)).  Plaintiff further contends that Defendant’s arguments were objectively 
10   unreasonable.  (Id. at 10-19)  Moreover, Plaintiff asserts that applying the post-Octane 
11   standard  of  a  preponderance  of  the  evidence  rather  than  the  pre-Octane  clear  and 
12   convincing standard used by the AirFX court to decide essentially identical facts as those 
13   presented here should result in this Court’s finding that this case is exceptional.  (Id. at 9-
14   10)                                                                  
15        Plaintiff states that Defendant was aware prior to filing its WIPO complaint that the 
16   domain name <lottoworks.com> was first registered on July 30, 1998, and that the domain 
17   name <lottostore.com> was first registered on January 4, 2011, each well before Plaintiff 
18   acquired the domains and before Defendant’s use of its trademarks, and that pursuant to 
19   the Ninth Circuit’s holding in GoPets Ltd. v. Hise, 

657 F.3d 1024

 (9th Cir. 2011) the 
20   registration of the disputed domain names predated Defendant’s use of its trademarks.  (Id. 
21   at 11, citing Doc. 11-1 at 5-6)  Plaintiff notes that Defendant’s trial counsel in this matter, 
22   Marc John Randazza, served as counsel for the prevailing plaintiff in AirFX and had 
23   successfully relied on the Ninth Circuit’s decision in GoPets for the proposition that “the 
24   rights of an initial registrant are passed to the next registrant upon transfer of a domain 
25   name.”  (Id. at 11, citing AIRFX.com et al. v. AirFX LLC, No. 2:11-cv-01064-FJM, Doc. 
26   65 at 6 (D. Ariz. Jan. 26, 2012)).4                                  

27   4 The docket in AirFX also indicates that Mr. Randazza cited GoPets in support of the 
    plaintiff’s argument that the defendant’s counterclaim asserting the plaintiff violated the 
28   ACPA failed as a matter of law.  AIRFX.com et al. v. AirFX LLC, No. 2:11-cv-01064-FJM, 
    Doc. 33 at 4-7 (D. Ariz. Nov. 22, 2011).                             
1        Plaintiff enumerates additional instances where he alleges Defendant’s positions in 
2   this case were inconsistent with facts in the record, which Plaintiff argues Defendant knew 
3   or could readily have discovered, including:  (1) Defendant’s argument that Plaintiff had 
4   placed advertising on at least one of the disputed domains; (2) Defendant’s attributing to 
5   Plaintiff  information  on  the  previous  owner’s  parking  pages  associated  with 
6   <lottostore.com>; (3) Defendant’s assertion that Plaintiff had placed the disputed domain 
7   names for sale; (4) Defendant’s failure to recognize that the disputed domains were locked 
8   and that Plaintiff never profited from the domains, which was relevant to an element of 
9   Defendant’s  allegations  of  cybersquatting;  and  (5)  Defendant’s  failure  to  recognize 
10   Plaintiff’s involvement with a large number of domain names associated with gambling-
11   related endeavors.  (Id. at 12-17)  Plaintiff asserts that Defendant was aware that its case 
12   lacked  merit  but  proceeded  anyway.    (Id.  at  18)    Plaintiff  also  characterizes  the 
13   circumstances of this litigation as involving Defendant in the position of a large corporation 
14   with “deep pockets and a large litigation budget” forcing Plaintiff, a small business owner, 
15   to choose “between losing hundreds of thousands of dollars (even if they win) to keep their 
16   property, or surrendering” because of the imbalance in resources.  (Id. at 18-19) 
17             2.   Defendant’s arguments                                 
18        Defendant notes that Plaintiff did not prevail on all his claims and indicates that 
19   Plaintiff’s  claims  of  fraud  and  tortious  interference  asserted  in  his  complaint  were 
20   dismissed for failure to state a claim based on Defendant’s motion.  (Doc. 116 at 7)5  
21   Defendant also indicates that Plaintiff did not assert his statutory damages claim on 
22   summary judgment.  (Doc. 116 at 12)  Defendant argues that its positions on these claims 
23   were  not  merely  debatable  but  successful  and  are  evidence  of  its  reasonableness  in 
24   continuing to litigate.  (Id.)                                       
25        Defendant further declares that its decision to defend against Plaintiff’s claims was 
26   not baseless and points to the fact that it held valid trademarks, which it concludes supports 
27                                                                        
    5  The  Court  dismissed  both  Plaintiff’s  potential  claim  for  fraud  under  

15 U.S.C. § 28

   1114(2)(D)(iv) and his claim for tortious interference with leave to amend.  (Doc. 17)  
    Plaintiff did not file an amended complaint.                         
1   the conclusion that its defense was not frivolous.  (Id. at 9-10).  Defendant further argues 
2   that it had prevailed in arbitration and this success supports its decision to defend Plaintiff’s 
3   claims in this Court.  (Id. at 10)  Defendant asserts the issues it raised were debatable.  (Id. 
4   at 11)                                                               
5        Defendant also notes that its arguments on summary judgment were directed to the 
6   meaning of the phrase “under this chapter” and whether the phrase referred to the Lanham 
7   Act as a whole or instead was limited to the ACPA.  (Id. at 12-13)  In this Court’s ruling 
8   on the parties’ cross-motions for summary judgment, it recognized a split among federal 
9   circuit  courts  on  this  issue  and  determined  that  statutory  construction  supported  the 
10   conclusion that the phrase refers to the ACPA.  (Doc. 97 at 9-12)  Defendant concludes 
11   that this Court’s “need to analyze this issue demonstrates the issue was a debatable one, 
12   further proving that [Defendant’s] defense was objectively reasonable.”  (Doc. 116 at 13) 
13        Additionally, Defendant contends its position that re-registration of a domain name 
14   resets the registration date was debatable and therefore was objectively reasonable.  (Id. at 
15   13-15)    Defendant  emphasizes  that  GoPets  involved  re-registration  by  an  entity 
16   incorporated by the original owner of the domain name and did not involve re-registration 
17   by a subsequent unaffiliated third party.  (Id. at 14))  Defendant concludes that its position 
18   on re-registration by a third party unaffiliated with the original person or entity originally 
19   registering a domain name thus was debatable and fair.  (Doc. 116 at 15) 
20        Defendant indicates that the Eleventh Circuit in Jysk Bed’N Linen v. Dutta-Roy, 810 

21 F.3d 767, 771-72

 (11th Cir. 2015) “flatly rejected” the Ninth Circuit’s analysis in GoPets 
22   and that district courts in the Southern District of Florida and the District of Delaware have 
23   followed the Eleventh Circuit’s reasoning in Jysk Bed’N Linen.  Defendant emphasizes that 
24   the AirFX court concluded that GoPets broadly applied to any re-registration and that the 
25   Ninth Circuit did not review this conclusion.  (Id. at 14)  Defendant also contends that 
26   Plaintiff’s success on cross-motions for summary judgment is not alone sufficient for a 
27   finding that this case is exceptional and concludes Plaintiff has not met his burden to 
28   establish the right to fee shifting.  (Id. at 8-9, 11)               
1        B.   The Parties’ Arguments on Comparable Cases                 
2        As noted, Plaintiff cites District Judge Martone’s decision awarding attorneys’ fees 
3   in AirFX as an appropriate template for this Court’s decision on Plaintiff’s motion for fees.  
4   (Doc. 115 at 7, 9-10, 17)  Defendant disagrees and suggests instead that a better comparison 
5   to the instant case is provided in Black v. Irving Materials, Inc., No. 17-CV-06734-LHK, 
6   

2020 WL 60202

 (N.D. Cal. Jan. 6, 2020).  Each decision is discussed below. 
7             1.   Order on motion for attorneys’ fees in AirFX          
8        In AirFX, the court noted that the plaintiffs had prevailed on summary judgment on 
9   their claim of RDNH under 

15 U.S.C. § 1114

(2)(D)(v) of the Lanham Act, as well as on 
10   the defendant’s counterclaims asserting trademark infringement under the Lanham Act and 
11   cybersquatting pursuant to the ACPA.  AirFX, 

2013 WL 857976

, at *1.   The court 
12   concluded the defendant’s counterclaims were groundless and unreasonable.  

Id. at *2

.  The 
13   court stated that before defendant filed its counterclaims, the court had notified the parties 
14   that “the original registration date of [the disputed internet domain name www.airfx.com] 
15   was the determinative issue in connection  with any ACPA claims.”   

Id.

   The court 
16   explained it had specifically advised the parties that the Ninth Circuit opinion in GoPets 
17   Ltd. v. Hise “made it clear that a company’s re-registration of a domain name that was first 
18   registered ‘long before [trademark owner] registered its service mark’ did not violate the 
19   ACPA,  because  the  re-registration  ‘was  not  a  registration  within  the  meaning  of  § 
20   1125(d)(1).’”  Id.  Moreover, the court found it significant that before the defendant filed 
21   its summary judgment motion it was “undisputed” that defendant knew that the plaintiffs’ 
22   domain name airfx.com was registered by the entity from whom the plaintiffs had acquired 
23   it in March 2003, more than two years before the defendant filed a trademark application 
24   for the trademark AirFX.  Id.  Given the defendant’s awareness of the Ninth Circuit’s 
25   holding in GoPets, the court determined that defendant should have “withdrawn its ACPA 
26   counterclaim once it discovered that the original registration date of airfx.com preceded 
27   the registration of the AirFX mark.”  Id.  Similarly, the court found the defendant’s 
28   trademark infringement counterclaim was  groundless  because the  defendant failed  to 
1   provide any evidence that the plaintiffs’ use of the AirFX mark had been commercial.  Id.  
2   On the parties’ arguments that the other party had litigated in bad faith, the court stated that 
3   while both of the parties had “been unnecessarily adversarial and uncivil,” it declined to 
4   conclude that either defendant or its counsel had acted in bad faith.  Id. at *3.  The court 
5   determined the case was exceptional under § 1117(a) and that the plaintiffs were entitled 
6   to attorney fees based on the defendant’s prosecution of counterclaims the court found to 
7   be “groundless and unreasonable.”  Id.                               
8             2.   Order on motion for attorneys’ fees in Black          
9        In Black, the plaintiff/counterdefendant (“plaintiff”) filed a lawsuit asserting an 
10   RDNH claim against defendant/counterclaimant (“defendant”) and requesting declaratory 
11   relief that his use of a disputed domain name was lawful and that the domain name should 
12   not be transferred to the defendant.  

2020 WL 60202

 at *1.  The defendant counterclaimed 
13   asserting the plaintiff was a cybersquatter and requesting declaratory judgment that the 
14   domain name should be transferred from the plaintiff to the defendant.  

Id.

  On the parties’ 
15   cross-motions for summary judgment the court:  (1) entered judgment in favor of the 
16   defendant on the plaintiff’s RDNH claim because the plaintiff had alleged a violation of § 
17   1114(2)(D)(iv), fraud in the domain dispute proceeding, in his complaint but then tried to 
18   instead assert an RDNH claim under § 1114(2)(D)(v) on summary judgment; and (2) 
19   denied  summary  judgment  on  the  remaining  claims/counterclaims  and  requests  for 
20   declaratory relief.  Id. at *7.  On the completion of trial, the jury found in favor of the 
21   plaintiff and concluded he had not violated the ACPA and was entitled to declaratory relief 
22   to the effect that the plaintiff had not violated the ACPA.  Id. at 11. 
23        On the plaintiff’s motion for attorneys’ fees under 

15 U.S.C. § 1117

(a), the Northern 
24   District of California ruled:  (1) that the defendant’s counterclaim for cybersquatting had 
25   not  been  objectively  unreasonable;  (2)  the  defendant’s  motivation  in  asserting  the 
26   cybersquatting counter claim was not improper; (3) the plaintiff’s success in obtaining a 
27   declaratory  judgment  that  he  did  not  violate  the  ACPA  did  not  qualify  his  case  as 
28   exceptional; and (4) that plaintiff had not reasonably litigated the case when he ignored the 
1   court’s repeated warnings that he did not “have either a claim for reverse domain name 
2   hijacking or any other affirmative claim” against the defendant, which militated against an 
3   award of attorneys’ fees.  

Id. at **12-21

.  The court noted that the defendant’s counterclaim 
4   of cybersquatting had survived summary judgment and reasoned it would “strain logic” to 
5   hold the defendant had presented sufficient evidence to establish genuine issues of material 
6   fact on the contested elements of a counterclaim but to also find the counterclaim was 
7   objectively unreasonable based on the facts.  

Id. at *13

.  The court also listed evidence that 
8   could have supported a finding of bad faith by the plaintiff.  

Id. at **14-16

. 
9        In  finding  that  the  defendant’s  motivation  for  litigating  a  cybersquatting 
10   counterclaim was not improper, the court concluded that the plaintiff’s argument the 
11   defendant had sought the domain name to ensure that its brand was consistent was a 
12   “wholly unremarkable” business consideration.  

Id. at *17

.  The court also rejected the 
13   plaintiff’s contention the defendant was conducting itself as a “trademark bully” because 
14   the plaintiff had failed to provide any evidence in support.  

Id.

    
15        The plaintiff argued his case was exceptional under the Lanham Act because there 
16   had been few cases in which a plaintiff had prevailed on an RDNH claim.  

Id. at *18

.  The 
17   court declined to endorse this reasoning, finding 

15 U.S.C. § 1114

(2)(D)(v) provided no 
18   basis for automatic fee-shifting when a plaintiff prevails.  

Id.

  Moreover, the court observed 
19   that even the cases cited by the plaintiff to support his argument followed  Octane’s 
20   instruction  to  consider  factors  such  as  the  substantive  strength  of  the  losing  party’s 
21   litigation  position  and  the  party’s  motivation  for  litigating.    

Id.,

  citing  Domond  v. 
22   PeopleNetwork APS, 

750 Fed.Appx. 844

, 847 (11th Cir. 2018) and AirFX, 

2013 WL 23

   857976, at *2.                                                       
24             3.   AirFX is the more comparable case to the instant matter 
25        The facts, procedural history, and issues addressed in this case and those presented 
26   in AirFX are closely similar.  In both cases:  (1) the plaintiffs purchased a pre-existing 
27   domain name registration; (2) the defendants in each case registered a trademark with a 
28   similar name to the plaintiffs’ domain name after the domain name had been registered; (3) 
1   the defendants filed a domain name dispute in an arbitration forum and obtained favorable 
2   rulings, including an order that the domain names be transferred from the plaintiffs to the 
3   defendants; (4) the domains were parked on a GoDaddy splash page that included third-
4   party advertisements; (5) the plaintiffs had not used the domains to sell anything; (6) the 
5   plaintiffs  requested  relief  regarding  RDNH  under  the  Lanham  Act,  

15 U.S.C. § 6

   1114(2)(D)(5); and (7) the plaintiffs were successful on summary judgment.  Importantly, 
7   the issue of re-registration was a central issue to the determination of the AirFX court and 
8   to this Court.                                                       
9        In Black, the plaintiff registered the disputed domain name in 1994, while the 
10   defendant had used the comparable trademark in its business since as early as 1962.  2020 

11 WL 60202

 at *3.  The defendant filed a trademark registration application in 1994 and the 
12   trademark was registered in 1995.  

Id.

  The plaintiff placed the domain name for sale, 
13   including to the defendant, but the defendant concluded the asking price was exorbitant.  
14   

Id. at *6

.  The defendant filed a Uniform Domain Name Dispute Resolution Policy 
15   (“UDRP”) complaint against the plaintiff alleging the plaintiff was cybersquatting on the 
16   domain name and seeking transfer of the domain from the plaintiff to the defendant.  

Id.

  
17   As noted, the jury in Black found that the plaintiff had not violated the ACPA and that the 
18   defendant was not entitled to declaratory relief.  

Id. at *11

.  As noted, the Black court ruled 
19   the plaintiff had failed to state a claim for RDNH when he cited to § 1114(2)(D)(iv) instead 
20   of § 1114(2)(D)(v), and a claim for RDNH had not been presented at trial. 
21        Importantly, the determinative issue here of whether the plaintiff’s registration or 
22   re-registration of the disputed domain name was unlawful under the ACPA as addressed 
23   by the Ninth Circuit in GoPets was not considered in Black because the parties agreed that 
24   registration was undisputed.  Id. at *12.  However, in addressing the issue of whether the 
25   plaintiff engaged in bad faith for purposes of the ACPA, the district court discounted the 
26   plaintiff’s reliance on AirFX and concluded the plaintiff had misread AirFX.  Id. at *16.  
27   The district court noted that the plaintiff read “AirFX.com for the proposition that no ACPA 
28   cybersquatting counterclaim could have existed in the instant case because [the defendant] 
1   did not actually register the [disputed] trademark with the [USPTO] until . . . after [the 
2   plaintiff] had already registered the domain name.”  Id.  The court stated that “Ninth Circuit 
3   case law squarely forecloses such a reading, and indicates that a plaintiff in fact need not 
4   ever register a trademark to bring a claim for cybersquatting under the ACPA.”  Id.  The 
5   Black court cited in support DSPT Int’l, Inc. v. Nahum, 

624 F.3d 1213, 1222

 (9th Cir. 
6   2010), 

Id.,

 a Ninth Circuit case decided prior to GoPets that despite the district court’s 
7   characterization did not expressly state that a plaintiff need not register a trademark to bring 
8   a claim for cybersquatting under the ACPA.  DSPT, 

624 F.3d at 1221-22

.  In any event, 
9   because neither the Ninth Circuit in DSPT nor the district court in Black addressed the 
10   question of re-registration, Black is not a relevant comparator case on the question of 
11   whether Plaintiff’s case is exceptional.  This Court finds that Defendant’s reference to 
12   Black as a close comparator for purposes of determining whether this case is extraordinary 
13   is misplaced.                                                        
14        C.   Defendant’s Arguments Regarding the Reasonability of its Challenge to 
15   GoPets Fail                                                          
16        Defendant argues that its decision to defend in this litigation was not baseless but 
17   rather was objectively reasonable.  (Doc. 116 at 9-11)  Defendant contends that its position 
18   that Plaintiff’s registrations in September and December 2016 were new registrations 
19   under the ACPA was debatable and thus reasonable, particularly given a circuit court split 
20   on this question.  (Id. at 13-15)  Defendant asserts that after AirFX, some courts have 
21   rejected the Ninth Circuit’s holding in GoPets on re-registration of domain names and that 
22   it was “proper” for Defendant to argue “for a new interpretation based upon developments 
23   in the law[.]”  (Id. at 14-15)  Defendant discusses Jysk Bed’N Linen v. Dutta-Roy, 

810 F.3d 24

   at 771-72 as well as a case from the Southern District of Florida and another from the 
25   District of Delaware, each of  which cited Jysk Bed’N Linen, and also a case from District 
26   of the District of Columbia which declined to follow GoPets’ ruling on re-registration 
27   under the ACPA.  (Id. (citing Heron Dev. Corp. v. Vacation Tours, Inc., No. 1:16-cv-
28   20683-MORENO/O’SULLIVAN, 

2017 WL 2895921

 (S.D. Fla. Apr. 13, 2017); American 
1   Cruise Lines, Inc. v. HMS American Queen Steamboat Co. LLC, No. 13-cv-324 (RGA), 
2   

2017 WL 3528606

 (D. Del. Aug. 16, 2017); Xereas v. Heiss, 

933 F.Supp.2d 1

, 15-17 
3   (D.D.C. 2013), which disagreed with GoPets and held that a re-registration fell under the 
4   ACPA.))                                                              
5        The Eleventh Circuit in Jysk Bed’N Linen addressed the expiration of registration 
6   of a domain name followed by re-registration.  

810 F.3d 767, 771-72

 (11th Cir. 2015).  The 
7   district court below assumed without discussion that a re-registration was not a new 
8   registration for purposes of the ACPA.  

Id. at 777

.  The Eleventh Circuit observed that the 
9   Third and Ninth Circuits had “provided divergent answers to this question[,]” citing GoPets 
10   and Schmidheiny v. Weber, 

319 F.3d 581

 (3d Cir. 2003).  The Eleventh circuit noted that 
11   the Third Circuit had concluded a re-registration of a domain name was a registration under 
12   the ACPA, and that the statute had not limited a registration to the narrow concept of 
13   “creation” registration.  810 F.3d at 777.  The Eleventh Circuit further observed that the 
14   Third  Circuit  had  compared  registration  to  a  contract  between  the  registrar  and  the 
15   registrant and concluded that a registration would encompass a “new contract at a different 
16   registrar and to a different registrant.”  Id. (citing Schmidheiny, 

319 F.3d at 583

). 
17        The Eleventh Circuit explained that the Ninth Circuit in GoPets had relied instead 
18   on property law principles to conclude that a registrant obtains a property right in a domain 
19   name when it is registered and thus has the right to transfer the property to another owner.  
20   

Id.,

 citing GoPets, 

657 F.3d at 1031

.  The Eleventh Circuit noted the Ninth Circuit’s 
21   concern that if it held a re-registration were a registration under the ACPA, this would 
22   ‘“make rights to many domain names effectively inalienable, whether the alienation is by 
23   gift, inheritance, sale or other form of transfer.’”  

Id.,

 quoting GoPets, 

657 F.3d at 1031

-
24   32.  Nevertheless, the Eleventh Circuit agreed with the Third Circuit, concluding that the 
25   plain meaning of the term “register” within the ACPA must include a “re-registration,” 
26   because the ACPA did not expressly qualify the act of registering with terms such as 
27   “initial” or “creation.”  

Id.

  Moreover, the Eleventh Circuit discerned a policy basis for its 
28   conclusion.  In its view, allowing a re-registration to fall within the ACPA would enable 
1   the new registrant of a trademarked domain name to then offer the registered domain name 
2   for sale to the trademark owner, which would permit cybersquatting, which was “exactly 
3   the wrong Congress intended to remedy when it passed the ACPA.”  Id. at 777-78 (citation 
4   and internal quotation marks omitted).                               
5        Defendant’s argument that a circuit split on the question of re-registration under the 
6   ACPA rendered Defendant’s litigation of this question reasonable ignores the important 
7   policy considerations imposed by federal appellate courts that are expressed in the doctrine 
8   of the “law of the circuit.”  “Law of the circuit is stare decisis, by another name.  The 
9   doctrine requires that we ‘stand by yesterday’s decisions’—even when doing so ‘means 
10   sticking to some wrong decisions.’”  East Bay Sanctuary Covenant v. Trump, 

950 F.3d 11

   1242, 1261 (9th Cir. 2020) (quoting Kimble v. Marvel Entm’t, LLC, 

576 U.S. 446

, 455 
12   (2015)).  Published decisions of the Ninth Circuit become law of the circuit, which is 
13   binding authority that the Ninth Circuit and district courts within the circuit must follow 
14   until overruled.  Hart v. Massanari, 

266 F.3d 1155, 1170

 (9th Cir. 2001).  Overruling 
15   authority includes only intervening statutes or Supreme Court opinions that create “clearly 
16   irreconcilable” conflicts with published Ninth Circuit caselaw.  Miller v. Gammie, 

335 F.3d 17

   889, 893, 900 (9th Cir. 2003) (en banc).  A district court is not free to disagree with a 
18   decision by its own court of appeals on a controlling legal issue because such binding 
19   authority “is not merely evidence of what the law is[,]” but rather “caselaw on point is the 
20   law.”  Massanari, 

266 F.3d at 1169

 (emphasis in original).           
21        The Ninth Circuit also has recognized that while its published opinions are binding 
22   within the Ninth Circuit:                                            

23                                                                        
         courts of appeals, and even lower courts of other circuits, may decline to 
24        follow the rule we announce—and often do.  This ability to develop different 
         interpretations of the law among the circuits is considered a strength of our 
25                                                                        
         system.  It allows experimentation with different approaches to the same 
26        legal problem, so that when the Supreme Court eventually reviews the issue 
         it has the benefit of “percolation” within the lower courts.    
27                                                                        
    

Id. at 1173

.                                                         
28                                                                        
1        In Massanari, the Ninth Circuit instructed that a published, precedential opinion 
2   “must not only consider the facts of the immediate case, but must also envision the 
3   countless permutations of facts that might arise in the universe of future cases.”  

Id. at 1176

.  
4   Here, Defendant claims it was “free to attempt to distinguish GoPets on the basis that 
5   [Plaintiff’s] was a re-registration by a third party.”  (Doc. 116 at 15)  However, as the AirFX 
6   court concluded, GoPets did not limit its holding to parties affiliated with the original 
7   registrant of a domain name.                                         
8        In its August 2012 order on summary judgment, the AirFX court addressed the 
9   defendant’s argument that the Ninth Circuit’s reasoning in GoPets could be distinguished 
10   because the domain name owner had transferred the domain name to an entity the owner 
11   co-owned, whereas the individual plaintiff in AirFX had purchased the domain name at 
12   issue from a third party unrelated to the plaintiff.  The court concluded that: 
13                                                                        
         GoPets did not distinguish between transfers of a domain name to related 
14        parties and other kinds of domain name transfers.  To the contrary, GoPets 
         broadly reasoned that if an original owner’s rights associated with a domain 
15        name were lost upon transfer to “another owner,” the rights to many domain 
16        names would become “effectively inalienable,” a result the intention of 
         which was not reflected in either the structure or the text of the ACPA. 
17        [GoPets, 657 F.3d] at 1031–32.                                  
18   AirFX.com v. AirFX LLC, No. 2:11-cv-01064-FJM, 

2012 WL 3638721

, at *4 (D. Ariz. 
19   Aug. 4, 2012).                                                       
20        This Court agrees with District Judge Martone’s conclusion in AirFX.  It is plain 
21   that the Ninth Circuit did not intend for its holding in GoPets to apply only where an initial 
22   registrant transfers a domain name to an affiliated party and that the holding in GoPets 
23   would not extend to instances where the registrant transfers the domain name to an 
24   unrelated third party.  The Ninth circuit explained:                 
25                                                                        
         The words “registration” and “register” are not defined in ACPA.  It is 
26        obvious that, under any reasonable definition, the initial contract with the 
         registrar constitutes a “registration” under ACPA.  It is less obvious which 
27                                                                        
         later actions, if any, are also “registrations.”  After registering, a registrant 
28        can take a variety of actions that modify the registration.  For instance, the 
         registrant can update the registration if her contact or billing information 
1        changes.  She can switch to “private” registration, where a third party’s name 
         is substituted for hers in the public databases of domain registrants.  She can 
2                                                                        
         switch between registrars, but leave her contact and billing information 
3        unchanged.  A registrant can change the name of the registrant without 
         changing who pays for the domain, or a registrant can transfer both the 
4                                                                        
         domain and payment responsibilities to someone else.  Even if the registrant 
5        does none of these things, she must still renew the registration periodically.  
         All of these actions could conceivably be described as “registrations” within 
6                                                                        
         the meaning of § 1125(d)(1).                                    
7                                                                        
    GoPets, 

657 F.3d at 1030-31

.  As noted, the Ninth Circuit recognized that a registrant of a 
8                                                                        
    domain name could transfer the domain to “someone else.”  The court then assessed the 
9                                                                        
    transfer of a registered domain name under property right principles and concluded that it 
10                                                                        
    could:                                                               
11                                                                        

12        see no basis in ACPA to conclude that a right that belongs to an initial 
13        registrant of a currently registered domain name is lost when that name is 
         transferred to another owner.  The general rule is that a property owner may 
14        sell all of the rights he holds in property.  GoPets Ltd.’s proposed rule would 
         make rights to many domain names effectively inalienable, whether the 
15                                                                        
         alienation is by gift, inheritance, sale, or other form of transfer.  Nothing in 
16        the text or structure of the statute indicates that Congress intended that rights 
         in domain names should be inalienable.                          
17                                                                        
18   Id. at 1031-32.  The Ninth Circuit’s discussion of transfers of a domain name does not 
19   support Defendant’s argument that the Ninth Circuit intended to limit such transfers only 
20   to a party affiliated with the original registrant.  And, as Defendant observes, the Ninth 
21   Circuit has not altered its analysis of re-registration since it published GoPets.  (Doc. 116 
22   at 14)  Defendant does not claim that intervening statutes or Supreme Court opinions have 
23   created clearly irreconcilable conflicts with GoPets.                
24        Further, Defendant’s other arguments asserted to establish the reasonability of its 
25   defense do not overcome the obstacle posed by the Ninth Circuit’s ruling in GoPets. 
26   Defendant asserts that its defense was reasonable because it held valid trademarks, did not 
27   bring  any  counterclaims,  and  was  merely  defending  its  rights.    (Doc.  116  at  9-10)  
28   However, the fact that Defendant held valid trademarks is a required element to a claim 
1   under the ACPA and does not provide a basis for Defendant’s argument that his litigation 
2   of this case was reasonable given the law in this circuit.  Defendant further contends its 
3   litigation was reasonable because it prevailed in its case before WIPO.  This circumstance 
4   may  support  a  parties’  argument  for  litigating  a  case  in  federal  court  under  other 
5   circumstances, but because a WIPO panelist’s decision is entitled to no deference in 
6   deciding  a  claim  pursuant  to  

15 U.S.C. § 1114

(2)(D)(v),  Barcelona.com,  Inc.  v. 
7   Excelentisimo Ayuntamiento De Barcelona, 

330 F.3d 617, 626

 (4th Cir. 2003), Defendant’s 
8   success  in  non-binding  arbitration  with  WIPO  also  does  not  overcome  Defendant’s 
9   problem with the law of the circuit established in GoPets.6          
10        Defendant further argues that its litigation in this matter was reasonable because it 
11   argued that the phrase “under this chapter” in § 1114(2)(D)(2) refers to the Lanham Act as 
12   a whole rather than only to the ACPA.  (Doc. 116 at 12-13)  Defendant concludes that 
13   although this Court rejected its argument, the fact that this Court analyzed and discussed 
14   the issue establishes that Defendant’s defense was reasonable.  (Id. at 13)  In Defendant’s 
15   motion for summary judgment, it contended that if the phrase were limited to apply only 
16   to the ACPA, a cybersquatter acting in bad faith with a claim for RDNH could gain control 
17   of an infringing domain name despite having violated the Lanham Act.  (Doc. 83 at 17)  
18   However, the evidence in this case clearly does not support such a circumstance even if 
19   this Court had agreed with Defendant’s position.                     
20        In its March 11, 2020, order on cross-motions for summary judgment, this Court 
21   found there was no evidence of Plaintiff’s unlawful use of the disputed domain names or 
22   of bad faith on Plaintiff’s part by registering the domain names.  (Doc. 97 at 17)  This Court 
23   further found no evidentiary support for a finding that Plaintiff obtained the domain names 
24   intending to sell them to Defendant, that Plaintiff had any plan to profit by diverting 
25   potential customers from Defendant’s websites to Plaintiff’s websites, or that Plaintiff was 
26   aware of Defendant when he acquired the domain names.  (Id. at 17-19)  Similarly, this 

27   6 The Fourth Circuit further observed that “because a UDRP decision is susceptible of 
    being grounded on principles foreign or hostile to American law, the ACPA authorizes 
28   reversing a[n arbitration] panel decision if such a result is called for by application of the 
    Lanham Act.”  Barcelona.com, Inc., 

330 F.3d at 62

.                   
1   Court found no evidence that Plaintiff possessed control over content placed on the parking 
2   pages holding the domain names or had any intent to divert consumers from the parking 
3   pages for commercial gain.  (Id. at 20)  Moreover, this Court concluded that under the 
4   undisputed material facts, Plaintiff did not act in bad faith and qualified for the safe harbor 
5   under the ACPA.  (Id. at 17-20)  Given these findings based on the evidence, Defendant’s 
6   arguments concerning both re-registration of the domain names and application of the 
7   phrase “under this chapter” were unreasonable.                       
8        D.   Defendant’s litigation under the totality of the circumstances in this case 
9   was not reasonable in light of GoPets; this case is exceptional for purposes of an award 
10   of attorney fees under § 1117(a)                                     
11        Defendant’s defense was premised on its argument that Plaintiff’s registration was 
12   not lawful pursuant to 

15 U.S.C. § 1114

(2)(D)(v), that the Ninth Circuit’s reasoning and 
13   decision in GoPets had been rejected by other federal courts, and that even if GoPets was 
14   the correct application of law, Defendant’s case was distinguishable on the facts.  As is 
15   discussed above, however, the published decision in GoPets is the precedential law in the 
16   Ninth Circuit.  Massanari, 

266 F.3d at 1169

.  As is further addressed above, the GoPets 
17   opinion does not support Defendant’s attempts to escape its reach based on the facts 
18   presented in this case.  Accordingly, this Court finds that Defendant’s defense was without 
19   merit and this case is exceptional under Octane Fitness.             
20        This  Court  does  not  find  that  Defendant  pursued  its  defense  with  improper 
21   motivation or that the facts presented support a finding that fees are warranted to advance 
22   policies of compensation or deterrence.  See Octane Fitness, LLC, 572 U.S. at 1756 n.6.  
23   Instead, as the Court concluded in AirFX on closely comparable facts, here “[n]either the 
24   factual basis for [the Court’s] conclusion, nor the law compelling it, were genuinely subject 
25   to dispute.”  

2013 WL 857976

 at *2.  See also Dropbox, Inc. v. Thru Inc., 

728 Fed.Appx. 26

   717, 719 (9th Cir. 2018) (holding the district court did not abuse its discretion in awarding 
27   fees under § 1117(a) in part based on a finding that the defendant’s counterclaims were 
28   “wholly lacking in merit”); Ketab Corp. v. Mesriani Assocs., P.C., 

734 Fed.Appx. 401

, 
1   411-12 (9th Cir. 2018) (affirming district court’s award of § 1117(a) attorneys’ fees after 
2   finding  the  plaintiff’s  arguments  were  “groundless,  frivolous,  and  unreasonable[.]”); 
3   Amusement Art, LLC v. Life is Beautiful, LLC, 

768 Fed.Appx. 683

, 687 (9th Cir. 2019) 
4   (holding the defendant was entitled to attorneys’ fees on Lanham Act claims where plaintiff 
5   fraudulently obtained trademark registrations and because trademark claims were weak). 
6        In  the  exercise  of  equitable  discretion,  considering  the  preponderance  of  the 
7   evidence standard, and under the totality of circumstances, this Court finds that this case 
8   “stands  out  from  others”  and  is  exceptional  such  that  §  1117(a)  attorneys’  fees  are 
9   warranted.                                                           
10        E.   Plaintiff’s Request for Reasonable Attorney Fees is Reduced to Account 
11   for Unsuccessful Claims in the Complaint                             
12        Plaintiff requests attorneys’ fees totaling $243,991.50.  (Doc. 115 at 4)  As is 
13   detailed above, Defendant argues Plaintiff is not entitled to an award of attorneys’ fees 
14   because this case is not exceptional.  However, Defendant states it does not contest the 
15   hourly rates claimed by Plaintiff’s counsel and does not specifically object to the hours 
16   claimed other than to state that Plaintiff has made “no attempt to cull out time spent on the 
17   3 of 5 claims on which [Defendant] was successful.”  (Doc. 116 at 8 n.1) 
18        The Lanham Act permits an award of “reasonable” attorneys’ fees to “the prevailing 
19   party” in an “exceptional case.”  

15 U.S.C. § 1117

(a).  This Court finds that Plaintiff is the 
20   prevailing party.  A party is a prevailing party for purposes of an attorneys’ fee award under 
21   § 1117(a) if it ‘“achieved a material alteration in the legal relationship of the parties that is 
22   judicially sanctioned.’”  Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 

778 F.3d 23 1059, 1078

 (9th Cir. 2015) (quoting Klamath Siskiyou Wildlands Ctr. v. U.S. Bureau of 
24   Land Mang., 

589 F.3d 1027, 1030

 (9th Cir. 2009) (internal quotation marks omitted)).  
25   ‘“The material alteration in the legal relationship of the parties must be relief that the 
26   would-be prevailing party sought.’”  

Id.

  The Ninth Circuit has further recognized that a 
27   “party need not succeed in all of its claims to be the prevailing party.”  

Id.

 (citing San Diego 
28   Police Officers’ Ass’n v. San Diego City Emps.’ Ret. Sys., 

568 F.3d 725, 741

 (9th Cir. 
1   2009).  Here, because this Court found Plaintiff’s registration of the disputed domain names 
2   was not unlawful under the ACPA or the Lanham Act and ordered that the domain names 
3   remain registered to Plaintiff for his lawful use, Plaintiff obtained “a material alteration in 
4   the legal relationship of the parties that is judicially sanctioned” and he is the prevailing 
5   party.                                                               
6        Although  Defendant  does  not  dispute  that  Plaintiff  is  the  prevailing  party  for 
7   purposes of attorney fees, it notes that Plaintiff did not prevail on all his claims.  (Doc. 116 
8   at 11-12)  Defendant accurately indicates that its motion to dismiss Plaintiff’s claims for 
9   fraud pursuant to § 1114(2)(D)(iv) and for tortious interference was granted and that 
10   Plaintiff did not pursue his claim for statutory damages under 

15 U.S.C. § 1117

(d) in his 
11   October 9, 2019, motion for summary judgment.  (Id.)  In his complaint, Plaintiff requested 
12   statutory damages pursuant to 

15 U.S.C. § 1117

(d) in an amount of between $1,000 and 
13   $100,000 per domain name because his action involved the Defendant’s argument that 
14   Plaintiff had violated 

15 U.S.C. § 1125

(d)(1).  (Doc. 1 at 13)  However, Plaintiff did not 
15   seek summary judgment on his claim for § 1117(d) damages.            
16        A court determines a reasonable attorneys’ fee award by reference to the lodestar 
17   calculated by multiplying the number of hours reasonably expended on litigation times a 
18   reasonable hourly rate.  Jordan v. Multnomah Cnty., 

815 F.2d 1258

, 1262 (9th Cir. 1987) 
19   (citing Hensley v. Eckerhart, 

461 U.S. 424, 433

 (1983)).  To determine a reasonable 
20   number of hours, the court reviews the record to assess whether the hours claimed by the 
21   applicant  are  adequately  documented  and  whether  any  of  the  time  claimed  was 
22   unnecessary, duplicative, or excessive.  Chalmers v. City of Los Angeles, 

796 F.2d 1205

, 
23   1210 (9th Cir. 1986).  In considering whether hourly rates are reasonable, a court looks to 
24   the  prevailing  rate  in  the  community  for  similar  work  performed  by  attorneys  of 
25   comparable skill, experience, and reputation.  

Id. at 1210-11

.  The party seeking fees bears 
26   the  burden  of  establishing  entitlement  to  fees  and  submitting  supporting  evidence.  
27   Hensley, 

461 U.S. at 433, 437

.  A court may reduce an award based on inadequate 
28   documentation of hours or rates requested.  

Id. at 433

.              
1        Plaintiff was represented by the firm of Schmeiser, Olsen & Watts, LLP of Mesa, 
2   Arizona (“SOW”), and by John Berryhill, a Pennsylvania attorney appearing pro hac vice.  
3   In his affidavit, Jeffrey W. Johnson, an of counsel attorney with SOW, attests he recorded 
4   522.2 hours on this matter and billed at hourly rates of $340 and $390.  (Doc. 115-2 at 3, 
5   5)  Mr. Johnson further states that:  Sean K. Enos, Senior Partner, recorded 11.6 hours on 
6   the case at hourly rates of $475 and $520; Albert L. Schmeiser, Managing Partner, recorded 
7   2.5 hours at hourly rates of $525 and $575; associate attorney Karl Webster recorded 22.4 
8   hours at an hourly rate of $200; and Mr. Berryhill recorded 27 hours at an hourly rate of 
9   $350.  (Id.)  Mr. Johnson declares that paralegals with SOW recorded 61 hours at an 
10   average hourly rate of $144.30.  (Id. at 6)  Mr. Johnson explains that all attorneys working 
11   on this case practice in the area of intellectual property and that these attorneys have 
12   practiced intellectual property law for between 14 and 21 years, with the exception of Mr. 
13   Webster, who was a first-year associate at the time of the work he performed for Plaintiff.  
14   (Id. at 3-4)  Mr. Johnson avers that the rates billed in this matter are reasonable in the 
15   Phoenix, Arizona legal market and cites to a national survey of billing rates by intellectual 
16   property lawyers in 2016.  (Id. at 6-7)                              
17        This Court concludes that the hourly rates billed in this matter are reasonable given 
18   the respective attorneys’ specialization and experience.  See BoxNic Anstalt v. Gallerie 
19   degli Uffizi, No. CV-18-1263-PHX-DGC, 

2020 WL 2991561

, at *2 (D. Ariz. June 4, 2020) 
20   (concluding that hourly rates of $695 to $725 for an experienced partner practicing in 
21   intellectual property and of $520 to $575 for a senior associate were reasonable, and further 
22   concluding that hourly rates of $250 for associate attorneys and of $150 for paralegals were 
23   reasonable in the Phoenix, Arizona legal market); Kaufman v. Warner Bros. Entm’t Inc., 
24   No. CV-16-02248-PHX-JAT, 

2019 WL 2084460

, at *12 (D. Ariz. May 13, 2019) (an 
25   hourly fee of law firm partner with over three decades of experience in intellectual property 
26   actions ranging between $552.00 to $715.00 was reasonable); Jackson v. Wells Fargo 
27   Bank, N.A., No. CV-13-00617-PHX-SPL, 

2015 WL 13567069

 at *2 (D. Ariz. Oct. 23, 
28   2015) (“The best indicator of a reasonable hourly rate for a fee-paying client is the rate 
1   charged by the lawyer to the client.”).                              
2        Moreover, Mr. Johnson’s affidavit (Doc. 115-2) and time sheets (Doc. 115-3) 
3   provide sufficient detail to permit the Court to determine that the substantial amount of 
4   time spent on this case was reasonable.  This Court has carefully reviewed Plaintiff’s 
5   counsel’s time records which cover the period between March 2017 and November 2019.  
6   The time records detail significant time devoted to discovery (Doc. 115-3 at 29-39, 41-43, 
7   46-47, 50-51, 54-55, 58-61, 63-66, 68, 70); preparation for and participation in a settlement 
8   conference and other settlement negotiations (Id. at 10, 46-47, 70-71); and preparing 
9   Plaintiff’s motion for summary judgment and extensive supporting documents as well as 
10   responding to Defendant’s motion for summary judgment (Id. at 65-66, 70-71, 73-86). 
11        In setting a reasonable fee, a court should apportion fees between claims on which 
12   the successful party prevailed and claims on which the party did not prevail.  Gracie v. 
13   Gracie, 

217 F.3d 1060, 1071

 (9th Cir. 2000).  As noted, in an order dated February 12, 
14   2018, the Court dismissed without prejudice Plaintiff’s claims for tortious interference and 
15   for fraud pursuant to § 1114(2)(D)(iv).  (Doc. 17)  Accordingly, attorneys’ fees attributable 
16   to these claims should be excluded from an award under § 1117(a).    
17        Plaintiff’s counsel’s billing records indicate that time recorded by counsel and 
18   paralegals associated with the complaint and Plaintiff’s response to Defendant’s motion to 
19   dismiss claims totals $12,065.00. (Doc. 115-3 at 2, 4, 8, 14, 16, 18, 19) Because two of 
20   Plaintiff’s five claims for relief were dismissed (Doc. 17), this Court will exclude forty 
21   percent of this total, or $4,826.00, from Plaintiff’s requested fees. 
22        Plaintiff also declined to assert his claim for statutory damaged under 

15 U.S.C. § 23

   1117(d) in his motion for summary judgment filed in October 2019.  (Doc. 86)  Section 
24   1117(d) provides that “[i]n a case involving a violation of section 1125(d)(1),” the plaintiff 
25   may elect statutory damages instead of actual damages and profits and seek “an award of 
26   statutory damages in the amount of not less than $1,000 and not more than $100,000 per 
27   domain name, as the court considers just.”  

15 U.S.C. § 1117

(d).  Here, Plaintiff initially 
28   sought declaratory relief that his registration of the disputed domain names did not violate 
   ||  Defendant’s rights under §  1125(d)(1).  However, aside from alleging Plaintiff's right to 
2||    statutory damages pursuant to § 1117(d) in the complaint, there is no record that Plaintiffs 
  ||  counsel devoted any time specifically to this claim for damages between filing □□□□□□□□□□□ 
4||    response to Defendant’s motion to dismiss and when Plaintiff filed his motion for summary 
5 || judgment, which did not argue for statutory damages.  Accordingly, this Court will deduct 
6 ||  an additional twenty percent of attorneys’ fees associated with the complaint and Plaintiff’ s 
      response  to  Defendant’s  motion  to  dismiss,  or  an  additional  $2,413.00.   Accordingly, 
8 ||  attorneys’ fees that will be excluded as attributable to Plaintiff's claims that were dismissed 
9||    or not asserted on summary judgment total $7,239.00.  Subtracting excluded attorneys’ 
10||    fees  of $7,239.00  from  Plaintiffs  claimed  fees  of $243,991.50  leaves  a remainder  of 
11]|    $236,752.50. 
      IV.    CONCLUSION 
13          For the reasons set forth above, this Court will grant Plaintiff's motion and award 
      attorneys’ fees of $ 236,752.50. 
15          Accordingly, 
16          IT  IS  ORDERED  granting Plaintiffs  Motion  for Attorneys’  Fees  as  set forth 
  □□  herein.  (Doc. 115) 
18          IT IS FURTHER ORDERED awarding Plaintiff $ 236,752.50 in attorneys’ fees. 
19          Dated this 25th day of January, 2021. 
20                                                                2p 
21                                             Ud bard UW  Zin, 
9                                             Honorable Deborah M.  Fine 
                                            United States Magistrate Judge 
23 
24 
25 
26 
27 
28 

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