Opinion · District Court, D. Arizona
Dent v. Lotto Sport Italia S.p.A.
Dent v. Lotto Sport Italia S.p.A., No. 2:17-cv-00651, UP9996281 (District Court, D. Arizona Mar. 11, 2020)
- Type
- Opinion
- Court
- District Court, D. Arizona
- Jurisdiction
- Arizona
- Date
- 2020-03-11
- Topic
- general
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 16 Plaintiff filed his Complaint on March 3, 2017. (Doc. 1)1 Count One requests a 17 finding that Plaintiff’s registration and/or use of domain names <lottostore.com> and 18 <lottoworks.com> is not unlawful pursuant to a claim of reverse domain name hijacking 19 under the Anticybersquatting Consumer Protection Act (“ACPA”) provisions of the 20 Lanham Act in 15 U.S.C. §§ 1114(2)(D)(v)2. (Id. at 9-10) Count Two requests declaratory 21 relief that Plaintiff’s registration and/or use of the domain names <lottostore.com> and 22 23 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- 24 PHX-DMF. 25 2 Count One originally alleged violation of both § 1114(2)(D)(iv) and § 1142(2)(D)(v). 26 (Doc. 1 at 9-10) On February 12, 2018, District Judge Silver found that § 1114(2)(D)(iv) and § 1114(2)(D)(v) define separate violations, and that only § 1114(2)(D)(v) addresses 27 reverse domain name hijacking.
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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 16 Plaintiff filed his Complaint on March 3, 2017. (Doc. 1)1 Count One requests a 17 finding that Plaintiff’s registration and/or use of domain names <lottostore.com> and 18 <lottoworks.com> is not unlawful pursuant to a claim of reverse domain name hijacking 19 under the Anticybersquatting Consumer Protection Act (“ACPA”) provisions of the 20 Lanham Act in15 U.S.C. §§ 1114
(2)(D)(v)2. (Id. at 9-10) Count Two requests declaratory
21 relief that Plaintiff’s registration and/or use of the domain names <lottostore.com> and
22
23
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-
24 PHX-DMF.
25
2 Count One originally alleged violation of both § 1114(2)(D)(iv) and § 1142(2)(D)(v).
26 (Doc. 1 at 9-10) On February 12, 2018, District Judge Silver found that § 1114(2)(D)(iv)
and § 1114(2)(D)(v) define separate violations, and that only § 1114(2)(D)(v) addresses
27
reverse domain name hijacking. (Doc. 17 at 4) Judge Silver concluded that Plaintiff had
28 failed to state a claim under § 1114(2)(D)(iv) for fraud in a domain dispute proceeding and
dismissed any claim under that subsection. (Id.)
1 <lottoworks.com> does not violate Defendant’s rights under the Lanham Act. (Id. at 10-
2 12 (citing 15 U.S.C. § 1125
(d)(1))) Count Three alleged tortious interference and was 3 dismissed in February 2018, with leave to amend if deficiencies in the claim were cured. 4 (Docs. 1, 17) Plaintiff did not file an amended complaint. Plaintiff and Defendant each 5 move for summary judgment on the remaining claims in Counts One and Two. (Docs. 83, 6 86) 7 The remaining claims in Plaintiff’s Complaint request: (1) a declaration “that 8 [P]laintiff’s registration, ownership and use of the Domain Names <lottostore.com> and 9 <lottoworks.com> is lawful and proper and does not infringe on any right the Defendant 10 may claim in the United States”; (2) his “costs and expenses, including costs under 1511 U.S.C. § 1114
(2)(D)(v) and reasonable attorneys’ fees”; and (3) “‘an award of statutory 12 damages in the amount of not less than $1,000 and not more than $100,000 per domain 13 name, as the court considers just’” pursuant to15 U.S.C. § 1117
(d). (Doc. 1 at 13) In 14 Plaintiff’s briefing associated with the parties’ cross-motions for summary judgment, 15 Plaintiff argues he is entitled to attorneys’ fees (Doc. 86 at 20, Doc. 91 at 18-19, Doc. 96 16 at 13), but does not urge entitlement to statutory damages under15 U.S.C. § 1117
(d).
17 Plaintiff David Dent’s and Defendant Lotto Sport Italia’s cross-motions for
18 summary judgment are fully briefed. (Docs. 83, 91, 95, 86, 89, 96) For the reasons that
19 follow, Plaintiff’s motion for summary judgment (Doc. 86) will be granted and
20 Defendant’s motion for summary judgment (Doc. 83) will be denied.
21 I. BACKGROUND
22 Plaintiff has been engaged in the gaming industry for approximately twenty years.
23 (Doc. 87, Plaintiff’s Statement of Facts “PSOF” ¶¶ 3-16) Plaintiff’s experience includes
24 ownership, development, and management of online gaming companies based in Canada,
25 the Isle of Man, and Gibraltar. (Id. at ¶¶ 3-11) In 2015 and 2016, Plaintiff discussed with
26 associates a business model for entry into the secondary lottery industry. (Id. at ¶¶ 19-23)
27 In June 2016, Plaintiff began negotiations to purchase the domain name <lottostore.com>,
28 which Plaintiff avers was in support of his planned entry into the secondary lottery
1 industry. (Id. at ¶ 24) The original owner registered this domain name in January 2011.
2 (Docs. 87 at ¶ 100, 90 at ¶ 100) In September 2016, Plaintiff purchased the domain name
3 <lottostore.com>, which was transferred to his account with GoDaddy, an internet domain
4 name registrar. (Doc. 87 at ¶¶ 28-29) Plaintiff declares he planned to establish a holding
5 company, an online consumer lottery store using the domain name <lottostore.com> as its
6 website, and a business to act as a bookmaking entity which would “hold the license and
7 jackpot insurance, set odds/prices, and develop and manage the lottery products and
8 services offered at lottostore.com.” (Id. at ¶ 32)
9 In October 2016, Plaintiff began negotiations to acquire the additional domain name
10 <lottoworks.com> to be used by the bookmaking company he planned. (Id. at ¶¶ 33-34)
11 The original owner had registered this domain name in July 1998. (Docs. 87 at ¶ 99, 90 at
12 ¶ 99) Plaintiff purchased the <lottoworks.com> domain name in December 2016. (Doc.
13 87 at ¶ 43) Shortly thereafter, Defendant filed a World Intellectual Property Organization
14 (“WIPO”) complaint against the use of domain name <lottoworks.com> causing GoDaddy
15 to lock this domain name. (Id. at ¶¶ 48-49)
16 Defendant Lotto currently manufactures, markets, and distributes athletic footwear,
17 sportswear, and sports accessories to over 110 countries, including the United States.
18 (Doc. 84, Defendant’s Statement of Facts “DSOF” at ¶¶ 2-3) Defendant was founded in
19 1973 and took its name from the final five letters of Caberlotto, the last name of the
20 company’s founder. (Id. at ¶ 1) Defendant asserts it has been world famous for decades,
21 having been endorsed by famous athletes in the 1980s and having sponsored teams and
22 athletes in professional tennis and national soccer clubs since the 1990s. (Id. at ¶ 4)
23 Defendant offers its products on the internet as well as in retail stores, and says it uses
24 <lottosport.com> as its primary domain name, which was registered in 1996. (Id. at ¶ 6)
25 Defendant has been using the LOTTO WORKS mark internationally for more than ten
26 years after it received registration for that mark in the European Union in August 2009.
27 (Id. at ¶¶ 7, 10) On March 6, 2018, Defendant obtained registration of the trademark
28 LOTTO WORKS with the United States Patent and Trademark Office (“USPTO”) for
1 materials related to eyeglasses and clothing (shoes are included in the clothing category).
2 (Id. at ¶ 9, Doc. 84-9 at 2)3 Defendant does not have trademark rights in the term “lotto”
3 for gambling or lottery. (Docs. 87 at ¶ 82, 90 at ¶ 82)
4 Shortly after Plaintiff purchased the disputed domain names in September and
5 December 2016, Defendant initiated arbitration with WIPO. (Doc. 84 at ¶¶ 11, 12, 20) In
6 a decision dated February 13, 2017, a WIPO sole panelist concluded that: (1) the
7 <lottoworks.com> domain name included the entire LOTTO WORKS mark so that the
8 domain name was confusingly similar to that mark; (2) the <lottostore.com> domain name
9 was also confusingly similar to Defendant’s LOTTO trademark because the domain name
10 incorporates “lotto” and only adds the generic4 word “store,” which “adds no distinctive
11 element”; (3) Plaintiff registered the disputed domain names “to trade off the goodwill of
12 [Defendant’s] mark, which does not provide [Plaintiff] with any rights or legitimate
13 interests”; and (4) the domain names were registered and used in bad faith. (Doc. 85-1 at
14 5-8) The WIPO panelist’s finding of bad faith was premised on the understanding that
15 Plaintiff had neglected to indicate he registered the domain names in 2016, not 1998,5 the
16 webpage for <lottoworks.com> displayed many references to shoes as well as links both
17 to Defendant’s and Defendant’s competitors’ websites, and because it was likely that
18 internet users would visit the <lottostore.com> website intending to find Defendant’s
19 online store. (Id. at 9) The WIPO panelist did not find that Defendant’s complaint was
20
21 3 The DSOF incorrectly states that Defendant’s application for the trademark of LOTTO
WORKS was filed on October 26, 2018. (Doc. 84 at ¶ 9) In fact, Defendant applied for
22 registration on October 27, 2016, and the trademark was registered by the USPTO on
23 March 6, 2018. (Doc. 84-9 at 2-3)
24 4 A term is “generic” when consumers understand the word to refer to a good itself rather
than to a particular producer’s goods, that is, when the term “is identified with all such
25
goods or services, regardless of their suppliers.” KP Permanent Make-Up, Inc. v. Lasting
26 Impression I, Inc., 408 F.3d 596, 604
(9th Cir. 2005).
27
5 However, as is discussed below, the Ninth Circuit in GoPets Ltd. v. Hise, 657 F.3d 1024
,
28 1032 (9th Cir. 2011) held that a re-registration of an existing domain name is not a
“registration” for the purposes of the ACPA.
1 brought in bad faith or was primarily intended to harass the domain name holder and,
2 therefore, declined to grant Plaintiff’s request that WIPO find that Defendant committed
3 reverse domain name hijacking. (Id. at 9-10)
4 The parties now each cross move for summary judgment regarding Count One, in
5 which Plaintiff requests the Court to find Plaintiff’s registration and use of the disputed
6 domain names are not unlawful pursuant to a claim of reverse domain name hijacking
7 under the ACPA provisions of the Lanham Act in 15 U.S.C. §§ 1114
(2)(D)(v); and Count 8 Two, in which Plaintiff requests a declaration that Plaintiff’s registration and use of the 9 disputed domains are not unlawful under the Lanham Act pursuant to15 U.S.C. § 10
1125(d)(1). (Docs. 83, 91, 95, 86, 89, 96) 11 II. STANDARD OF REVIEW 12 “The court shall grant summary judgment if the movant shows that there is no 13 genuine dispute as to any material fact and the movant is entitled to judgment as a matter 14 of law.” Fed. R. Civ. P. 56(a). “One of the principal purposes of the summary judgment 15 rule is to isolate and dispose of factually unsupported claims or defenses.” Celotex Corp. 16 v. Catrett,477 U.S. 317, 323-24
(1986). “[S]ubstantive law will identify which facts are 17 material. . . . Only disputes over facts that might affect the outcome of the suit under the 18 governing law will properly preclude the entry of summary judgment.” Anderson v. 19 Liberty Lobby, Inc.,477 U.S. 242, 248
(1986). 20 “The proper question . . . is whether, viewing the facts in the non-moving party’s 21 favor, summary judgment for the moving party is appropriate.” Zetwick v. Cty. of Yolo, 22850 F.3d 436, 441
(9th Cir. 2017) (citing Arizona ex rel. Horne v. Geo Group, Inc., 81623 F.3d 1189, 1207
(9th Cir. 2016)). “[W]here evidence is genuinely disputed on a particular 24 issue—such as by conflicting testimony—that ‘issue is inappropriate for resolution on 25 summary judgment.’”Id.
(quoting Direct Techs., LLC v. Elec. Arts, Inc.,836 F.3d 1059
, 26 1067 (9th Cir. 2016)). 27 The movant bears the initial burden of proving the absence of a genuine issue of 28 material fact. Celotex,477 U.S. at 323
. For issues on which the movant would bear the 1 burden of proof at trial, the movant meets the initial summary judgment burden by 2 identifying the evidence foreclosing the possibility that a reasonable jury could find for the 3 non-movant. Adickes v. S. H. Kress & Co.,398 U.S. 144, 157-58
(1970). Where the non- 4 movant would bear the burden of proof at trial, the movant may carry its initial burden by 5 proving the absence of evidence to support the non-movant’s case. Celotex,477 U.S. at 6
325. If the movant carries its initial burden, the non-movant must designate “significantly 7 probative” evidence capable of supporting a favorable verdict. Anderson,477 U.S. at 249
- 8 50. 9 In determining whether either or both of these burdens have been carried, “[t]he 10 evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn 11 in [that party’s] favor.”Id. at 255
; see also Narayan v. EGL, Inc.,616 F.3d 895, 899
(9th 12 Cir. 2010) (explaining an inference is justifiable if it is rational or reasonable). “Credibility 13 determinations, the weighing of the evidence, and the drawing of legitimate inferences 14 from the facts are jury functions, not those of a judge . . . ruling on a motion for summary 15 judgment.” Anderson,477 U.S. at 255
. 16 III. THE PARTIES’ MOTIONS FOR SUMMARY JUDGMENT 17 A. Plaintiff’s Motion for Summary Judgment (Doc. 86) 18 Plaintiff contends he is entitled to summary judgment on his reverse domain name 19 hijacking claim because his re-registration of the domain names is not treated as an initial 20 registration, he did not use the domain names, and even if he did register or use the domain 21 names after he purchased them, it was not with a bad faith intent to profit. (Doc. 86 at 11- 22 20) He also argues that his actions fall within the safe harbor provisions of the ACPA 23 because he had “reasonable grounds to believe that the use of the domain name was fair 24 use or otherwise lawful.” (Id. at 19-20, citing15 U.S.C. § 1125
(d)(1)(B)(ii)) Plaintiff
25 further requests a declaration that his registration and use of the disputed domains are not
26 unlawful under either the ACPA or other provisions of the Lanham Act. (Doc. 1 at 9-12,
27 Doc. 86 at 11 (citing § 1125(d)(1))) Additionally, Plaintiff advises the Court he will file a
28
1 motion for attorneys’ fees if he prevails on his motion for summary judgment. (Doc. 86 at
2 20, Doc. 91 at 19)
3 B. Defendant’s Motion for Summary Judgment (Doc. 83)
4 Defendant moves for summary judgment on Plaintiff’s two claims. (Doc. 83 at 5)
5 Defendant argues that Plaintiff cannot show that his registration and use of the domain
6 names did not violate the ACPA and did not violate the greater Lanham Act because such
7 registration and use created a likelihood of confusion with Defendant’s trademarks. (Id. at
8 6) Defendant also asserts that Plaintiff is not entitled to any attorneys’ fees, and that
9 Defendant instead should be awarded its fees. (Id. at 22)
10 IV. CLAIM ONE – REVERSE DOMAIN NAME HIJACKING
11 A. Purpose and Elements of the Claim
12 The Fourth Circuit Court of Appeals explained ACPA’s purpose and the policy
13 concerns addressed by a claim of reverse domain name hijacking under the ACPA, as
14 follows:
15
In 1999, Congress amended the Trademark Act of 1946 (the Lanham Act)
16 with the Anticybersquatting Consumer Protection Act (ACPA), Pub. L. No.
106–113, § 3001 et seq., 113 Stat. 1501A–545 (codified in scattered sections
17
of 15 U.S.C.), principally for the purpose of protecting trademark owners
18 against cyberpiracy:
19 The purpose of the bill is to protect consumers and American
20 businesses, to promote the growth of online commerce, and to
provide clarity in the law for trademark owners by prohibiting
21 the bad-faith and abusive registration of distinctive marks as
Internet domain names with the intent to profit from the
22
goodwill associated with such marks—a practice commonly
23 referred to as “cybersquatting.”
24
S. Rep. No. 106–140, at 4 (1999). Although the ACPA was enacted primarily
25 to redress cyberpiracy or “cybersquatting,” it also provides limited liability
for trademark infringement by registrars who participate in the
26 administration of the registration, transfer, and cancellation of domain names
27 pursuant to a “reasonable policy” that is consistent with the purposes of the
trademark laws. See 15 U.S.C. § 1114
(2)(D)(i)-(iii). And to balance the
28 rights given to trademark owners against cybersquatters, the ACPA also
1 provides some protection to domain name registrants against “overreaching
trademark owners.” S. Rep. No. 106–140, at 11; see also 15 U.S.C. § 2
1114(2)(D)(iv)-(v). Thus, § 1114(2)(D)(v) authorizes a domain name
3 registrant to sue trademark owners for “reverse domain name hijacking.”
Under that reverse domain name hijacking provision, a domain name
4
registrant who is aggrieved by an overreaching trademark owner may
5 commence an action to declare that the domain name registration or use by
the registrant is not unlawful under the Lanham Act. This section provides
6
that the court may “grant injunctive relief to the domain name registrant,
7 including the reactivation of the domain name or transfer of the domain name
to the domain name registrant.” 15 U.S.C. § 1114
(2)(D)(v). 8 9 Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,330 F.3d 617
, 624-25
10 (4th Cir. 2003).
11 A claim of reverse domain name hijacking is based on the provisions of 15 U.S.C.
12 § 1114(2)(D)(v), which provides:
13
(2) Notwithstanding any other provision of this chapter, the remedies given
14 to the owner of a right infringed under this chapter or to a person bringing an
action under section 1125(a) or (d) of this title shall be limited as follows:
15
. . .
16
(D)(v) A domain name registrant whose domain name has been suspended,
17 disabled, or transferred under a policy described under clause (ii)(II) may,
18 upon notice to the mark owner, file a civil action to establish that the
registration or use of the domain name by such registrant is not unlawful
19 under this chapter. The court may grant injunctive relief to the domain name
20 registrant, including the reactivation of the domain name or transfer of the
domain name to the domain name registrant.
21
22 As District Judge Martone explained in a 2012 case with facts comparable to those
23 at issue here, to prevail on a claim of reverse domain name hijacking, a plaintiff:
24
must show (1) registration of a domain name; (2) that has been “suspended,
25 disabled, or transferred under a policy implemented by a registrar as
described in 15 U.S.C. § 1114
(2)(D)(ii)(II);” (3) “that the owner of the mark
26
that prompted the domain name to be suspended, disabled, or transferred has
27 notice of the action;” and (4) “that [the plaintiff’s] registration or use of the
domain name is not unlawful.” Ricks v. BMEzine.com, LLC, 727 F. Supp. 28
2d 936, 959 (D. Nev. 2010) (citing Barcelona.com, Inc. v. Excelentisimo 1 Ayuntamiento De Barcelona,330 F.3d 617
, 625 & n. 1 (4th Cir. 2003)); see
also 15 U.S.C. § 1114
(2)(D)(v). 2 3 AIRFX.com v. AirFX LLC, No. CV 11-01064-PHX-FJM,2012 WL 3638721
, at *6 (D. 4 Ariz. Aug. 24, 2012). 5 Here, the parties’ dispute regarding the claim of reverse domain name hijacking 6 under the ACPA centers on the first and fourth elements listed by Judge Martone, that is: 7 (1) when the domain names were registered for purposes of the ACPA; and (2) whether 8 such registration or use of the domain name was lawful.Id.
Plaintiff asserts he did not 9 unlawfully “register” the subject domain names, citing the holdings in GoPets Ltd. v. Hise, 10657 F.3d 1024, 1032
(9th Cir. 2011) and AIRFX,2012 WL 3638721
, at *4. (Doc. 86 at 11- 11 14) He also contends that he has not used either of the disputed domains because they 12 remain locked as a result of this proceeding and Defendant’s Uniform Domain-Name 13 Dispute-Resolution Policy (“UDRP”) action adjudicated by WIPO, and because he has not 14 derived any income from the domains or attempted to sell the domains to anyone, including 15 Defendant. (Id. at 13) Plaintiff further argues that the evidence establishes no bad faith 16 registration or use by him because he merely “pursued a lottery business and purchased 17 names directly descriptive of that business[, n]othing more.” (Id. at 13-19) Additionally, 18 Plaintiff states that the ACPA safe harbor provision applies to his circumstances to exclude 19 a finding of bad faith. (Id. at 19-20, citing15 U.S.C. § 1125
(d)(1)(B)(ii))
20 Defendant urges that Plaintiff did in fact unlawfully register the two disputed
21 domain names because he did so in bad faith. (Doc. 83 at 18) Defendant further argues
22 that Plaintiff is unable to prove that his registration and use of the domain names were not
23 unlawful. (Id. at 16)
24
B. Whether Reference to “under this chapter” Refers to Only the
25
ACPA or to the broader Lanham Act Regarding Reverse Domain
26 Name Hijacking Statute
27 Before addressing the disputed elements of Plaintiff’s reverse domain name
28 hijacking claim, the Court will consider a foundational disagreement between the parties
1 on the law applicable to this claim. In its motion for summary judgment (Doc. 83 at 16-
2 18), Defendant recognizes a split among courts on the scope of language within section
3 1114(2)(D)(v) of the ACPA, which provides that
4
[a] domain name registrant whose domain name has been suspended,
5 disabled, or transferred under a policy described under clause (ii)(II) may,
upon notice to the mark owner, file a civil action to establish that the
6
registration or use of the domain name by such registrant is not unlawful
7 under this chapter.
8
15 U.S.C. § 1114
(2)(D)(v) (emphasis added). Defendant notes that the italicized phrase
9
“under this chapter” has been interpreted by courts as either referring to the Lanham Act
10
as a whole or limited specifically to the ACPA. (Doc. 83 at 16) Defendant concludes that
11
Congress must have intended that § 1114(2)(D)(v) would refer to Title 15, Chapter 22 of
12
the United States Code, entitled “Trademarks,” because if Congress’ intent was to limit the
13
phrase “under this chapter” to only the ACPA, “it would not have used such expansive
14
language.” (Id. at 16-17) Defendant further argues that if the phrase “under this chapter”
15
referred only to the ACPA, it would be “easier” to avoid the “hefty statutory damages if a
16
registrant violates the ACPA” than if the registrant had to prove it did not “violate the much
17
broader Lanham Act.” (Id. at 17) Defendant opines that this interpretation of §
18
1142(2)(D)(v) “would require a court to grant equitable relief, in a case under a sub-chapter
19
of the Lanham Act, to a party who violated the Lanham Act, as long as that party was
20
careful enough to avoid violating one smaller sub-section of the Lanham Act.” (Id.)
21
Plaintiff counters that the phrase “under this chapter” is best understood to refer
22
only to the ACPA. (Doc. 96 at 13 (citing Ricks v. BMEzine.com, LLC, 727 F.Supp.2d 936
,
23
959-960 (D. Nev. 2010))) This Court concludes that Plaintiff espouses the better argument,
24
which is described below.
25
In Ricks v. BMEzine.com, LLC, the district judge concluded that the phrase “under
26
this chapter” means the ACPA, based on the legislative history and statutory construction
27
of the ACPA. Ricks, 727 F.Supp.2d at 959-60
. The District of Nevada judge explained:
28
1 Although as codified the ACPA states the registrant must show its actions
were not unlawful under “this chapter,” the actual enactment states that the
2
registrant must show its actions were not unlawful under “this Act.” Pub. L.
3 No. 106–113, 1501A–555, 113 Stat. 21
. Courts have differed in describing
whether the fourth requirement’s reference to “Act” as originally enacted
4
refers to the ACPA or the Lanham Act as a whole. See Storey v. Cello
5 Holdings, L.L.C., 347 F.3d 370
, 382 n. 9 (2d Cir. 2003) (noting issue but
declining to decide it); Barcelona.com, Inc., 330 F.3d at 628
n. 2 (stating, in
6
dicta in a footnote, that “Act” is “defined to refer to the Trademark Act of
7 1946 (the Lanham Act)”); Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 18
(1st Cir. 2001) (describing, without analysis, a reverse hijacking
8
claim as one “for a declaration of nonviolation of the ACPA”).
9
As stated above, statutory construction begins the statute’s plain language.
10 Cooper, 596 F.3d at 544. If the statutory language is “plain and
11 unambiguous,” the Court's inquiry is at an end. Id. The Court considers the
statutory language in “the context of the statute as a whole.” Andreiu v.
12 Ashcroft, 253 F.3d 477, 480
(9th Cir. 2001).
13
The ACPA as enacted does not define what it means by reference to the term
14 “Act.” However, it defines what it means when it is referring to the Lanham
Act as a whole:
15
16 Any reference in this title to the Trademark Act of 1946 shall
be a reference to the Act entitled “An Act to provide for the
17
registration and protection of trademarks used in commerce, to
18 carry out the provisions of certain international conventions,
and for other purposes”, approved July 5, 1946 (15 U.S.C.
19
1051 et seq.).
20
Pub. L. No. 106–113, 113 Stat. 1501
, 1501A–548. The ACPA thus indicates
21
that it is not referring to the entire Lanham Act unless it references the
22 Trademark Act of 1946. Contextually, the ACPA uses the term “Act” to
refer to the ACPA, not the Lanham Act in its entirety. For example, it states
23 that it “shall apply to domain names registered on or after the date of the
24 enactment of this Act.” Id.; see also Pub. L. No. 106–113, 113 Stat 1501,
1501A–550 (giving Secretary of Commerce 180 days after enactment of
25 “this Act” to conduct a study). Indeed, the ACPA refers to the “Act” and the
26 “Trademark Act of 1946” within the same section, confirming that in using
the term “Act,” the ACPA is referring to itself, not the Lanham Act as a
27 whole:
28
1 Sections 3002(a), 3003, 3004, 3005, and 3008 of this title shall
apply to all domain names registered before, on, or after the
2
date of the enactment of this Act, except that damages under
3 subsection (a) or (d) of section 35 of the Trademark Act of
1946 (15 U.S.C. 1117), as amended by section 3003 of this
4
title, shall not be available with respect to the registration,
5 trafficking, or use of a domain name that occurs before the date
of the enactment of this Act.
6
7 Pub. L. No. 106–113, 113 Stat. 1501
, 1501A–552. The Court therefore
concludes that to satisfy the ACPA’s requirement that a domain name
8
registrant show that its conduct was not unlawful under “this Act,” it must
9 show its conduct was not unlawful under only the ACPA, not the entire
Lanham Act.
10
11 Id.
This Court finds the foregoing analysis persuasive. Accordingly, the Court will 12 consider the issue of whether Plaintiff’s registration or use of the disputed domain names 13 is unlawful under the ACPA and not under the Lanham Act as a whole. 14 C. Registration of the Disputed Domain Names 15 Plaintiff argues that his 2016 registration of the disputed domain names was not a 16 registration as defined for claims of reverse domain name hijacking or otherwise under the 17 ACPA. Rather, Plaintiff asserts he acquired the non-party original registrants’ 1998 and 18 2011 domain name registrations when Plaintiff bought the domain names in 2016. 19 Plaintiff’s argument relies on the Ninth Circuit’s decision in GoPets,657 F.3d 1024
. 20 In GoPets, defendant Edward Hise registered the domain name “gopets.com” in March 21 1999. GoPets,657 F.3d at 1026
. Hise developed a business plan directed at providing pet 22 owner services.Id. at 1027
. In 2004, a Korean company named GoPets Ltd. was founded 23 and created a computer game called “GoPets.”Id.
GoPets Ltd. applied to register the 24 service mark “GoPets” in the United States in September 2004, and the mark was registered 25 in November 2006.Id.
After GoPets Ltd. attempted without success to purchase the 26 domain name from Hise, it filed a complaint with WIPO against Hise.Id.
The WIPO 27 arbitrator found in favor of Hise, explaining the gopets.com domain name was 28 “confusingly similar to GoPets Ltd.’s service mark” and that “WIPO rules only 1 compel[led] the transfer or a disputed domain name if the name was initially registered in 2 bad faith.”Id. at 1027-28
. WIPO concluded that the initial registration could not have 3 been in bad faith because it occurred five years before GoPets Ltd. was founded.Id.
at 4 1028. After the WIPO decision, Hise transferred the registration of the gopets.com domain 5 name to a corporation named Digital Overture, which Edward Hise owned with his brother. 6Id.
7 Among other issues, the Ninth Circuit addressed the question of whether the transfer 8 of the domain name gopets.com from Hise to Digital Overture counted as “registration” 9 pursuant to the ACPA. The Ninth Circuit concluded that, “in light of traditional property 10 law,” there was “no basis in ACPA to conclude that a right that belongs to an initial 11 registrant of a currently registered domain name is lost when that name is transferred to 12 another owner,”Id. at 1031
, and held that:
13
Digital Overture’s re-registration of gopets.com was not a registration within
14 the meaning of § 1125(d)(1). Because Edward Hise registered the domain
name gopets.com in 1999, long before GoPets Ltd. registered its service
15
mark, Digital Overture’s re-registration and continued ownership of
16 gopets.com does not violate § 1125(d)(1).
17
Id. at 1032. This holding has been applied in favor of Plaintiff’s position in this action.
18
In AIRFX.com, District Judge Martone addressed a case in which a non-party
19
registered the domain name “airfx.com” in 2003. AIRFX.com, 2012 WL 3638721
at *2.
20
The parent company of the defendant AIRFX LLC filed a trademark application for
21
“AIRFX” in 2005, identifying June 2005 as the date of first use in commerce. Id.
The
22
defendant’s parent company assigned the trademark registration to the defendant in 2011.
23
Id.
The defendant used the trademark “in connection with shock absorbers and suspension
24
systems for motorcycles, bicycles, automobiles, and powered vehicles.” Id.
In 2007, the
25
plaintiff purchased the domain name “airfx.com” from the non-party and decided to use
26
airfx.com and the brand “AIRFX” in his wind tunnel business. Id.
27
Similar to the case before this Court, (1) the AIRFX.com plaintiff had “not posted
28
any content at the www.airfx.com domain name, and ha[d] not created a website for
1 airfx.com”; (2) the domain name was parked at a “splash page”6 provided by GoDaddy,
2 the domain name registrar; (3) the splash page included third-party advertisements; and (4)
3 the plaintiff did not derive any revenue from the advertisements placed by GoDaddy on the
4 splash page. Id.
Further, the plaintiff had never sold a product using the AIRFX brand and 5 had not engaged in any manufacturing, marketing, or advertising for that brand.Id.
After 6 the defendant offered to purchase the disputed domain name and the plaintiff 7 unsuccessfully counter-offered to lease the name, the defendant filed a domain name 8 dispute.Id.
The arbitration panel found for the defendant and ordered GoDaddy to transfer 9 the domain name to the defendant.Id.
The plaintiff then filed a claim for reverse domain 10 name hijacking in the U.S. District Court, and the defendant counterclaimed on counts of 11 trademark infringement and cybersquatting under the ACPA.Id. at *3
.7 12 District Judge Martone applied GoPets as “squarely on point.”Id. at *4
. Judge 13 Martone found that the plaintiff’s re-registration of the purchased domain name from an 14 unrelated third party was not “registration” within the meaning of the ACPA and that the 15 plaintiff had not put the domain names to “commercial use.”Id.
Accordingly, Judge 16 Martone granted summary judgment in plaintiff’s favor on plaintiff’s reverse domain name 17 hijacking claim and on defendant’s cybersquatting counterclaim.Id.
18 Here, the domain name <lottoworks.com> was initially registered by a non-party in
19 July 1998. (Docs. 87 at ¶ 99, 90 at ¶ 99) Defendant did not use the LOTTO WORKS mark
20 until approximately 2007 and obtained trademark registration for the term in the EU in
21 August 2009. (Doc. 84-1 at ¶ 9) The domain name <lottostore.com> was initially
22 registered by a non-party in January 2011. (Docs. 87 at ¶ 100, 90 at ¶ 100) There is no
23 claim that Defendant used or registered <lottostore.com> at any time.8 Applying the Ninth
24
6 The court explained that “[a] ‘splash page’ is the first page that appears when a website
25
is visited.” AIRFX.com, 2012 WL 3638721
at *2 n.2 (citing Chambers v. Time Warner, 262003 WL 749422
at *7 (S.D.N.Y. Mar. 5, 2003)).
27
7 In this action, Defendant has not counterclaimed.
28
8 Defendant asserts that its “primary domain name is <lottosport.com>, which it registered
1 Circuit’s reasoning in GoPets to the facts here, Plaintiff’s re-registration of the disputed
2 domain names in 2016 is not registration for purposes of § 1125(d)(1). The Court
3 concludes that Plaintiff did not register the disputed domain names of <lottostore.com>
4 and <lottoworks.com> within the meaning of § 1125(d)(1) when Plaintiff acquired the
5 disputed domain names in 2016. Instead, the prior 1998 and 2011 registrations conveyed
6 to Plaintiff when he acquired these domain names. GoPets, 657 F.3d at 1031-32
. Given
7 that there is no allegation that the non-party registrations in 1998 and 2011 were unlawful
8 or in bad faith, Plaintiff has shown that its registrations of <lottostore.com> and
9 <lottoworks.com> were not unlawful and were not in bad faith. Thus, if Plaintiff did not
10 use the domain names at all, or if Plaintiff’s use of the domain names was lawful and not
11 in bad faith, Plaintiff is entitled to summary judgment on Count One regarding reverse
12 domain name hijacking.
13 D. Use of the Disputed Domain Names
14 Plaintiff asserts he has not used either of the two disputed domain names because:
15 (1) the domain <lottostore.com> was parked when Plaintiff purchased it in September
16 2016, domain <lottoworks.com> was similarly parked when Plaintiff purchased it in
17 December 2016, and both domain names subsequently have remained parked; (2) the
18 parking sites did not enable “cash parking,” and Plaintiff derived no revenue from the sites;
19 (3) Plaintiff did not control the content displayed on the parking pages, which was instead
20 under the control of GoDaddy; and (4) Plaintiff did not attempt to sell the domain names
21 to Defendant or anyone else. (Doc. 86 at 13) Plaintiff asserts that Defendant has provided
22 no evidence supporting a finding of Plaintiff’s use of the domain names. Plaintiff further
23 contends that use of the disputed domains, if any, must be in connection with “commercial
24 use” of the domains, and that such use is not present here. (Doc. 86 at 17-18)9
25
in 1996” and that it “owns numerous other domains, including <lottoworks.net>, which it
26 registered in 2004.” (Doc. 84 at ¶ 6)
27
9 Plaintiff is mistaken regarding a requirement of commercial use. The Ninth Circuit has
28 concluded that respecting a claim under the ACPA, unlike the greater Lanham Act, there
is no requirement that use be commercial use because “the rights created in the ACPA are
1 Defendant asserts that Plaintiff used the marks in commerce, stating that GoDaddy’s
2 parking pages “provided a solicitation to visitors to purchase the domain name and
3 contained links which led to paid advertisements for [Defendant’s] competitors.” (Doc. 95
4 at 5) However, this Court concludes that Defendant misstates evidence regarding
5 Plaintiff’s control over the content of GoDaddy’s parking page. Attached as an exhibit to
6 Defendant’s motion to dismiss (Doc. 11) is GoDaddy’s Domain Name Registration
7 Agreement, effective July 11, 2017. (Doc. 11-19 at 2-27) Section 10 of this agreement
8 governs control over GoDaddy’s parked pages. (Id. at 14-15) The parked page is a default
9 setting over which GoDaddy has control. (Id. at 15) Under the agreement, the owner of a
10 parked domain name agrees that “GoDaddy may display both (a) in house advertising
11 (which includes links to GoDaddy products and services) and (b) third party advertising
12 (which includes links to third party products and services) on your Parked Page[.]” (Id.)
13 The agreement provides that the domain owner will “acknowledge and agree that all in-
14 house and third-party advertising will be selected by GoDaddy and its advertising partners,
15 as appropriate, and you will not be permitted to customize the advertising, or entitled to
16 any compensation in exchange therefor.” (Id.) The agreement further provides that the
17 domain name owner is not permitted to “modify the content displaying on your Parked
18 Page[,]” but is allowed to change the parked page default settings at any time, limited to:
19 participation in a cash parking service to earn money on the posted content, or the ability
20 to “contact customer support to learn what other options might be available. . . .” (Id.) See
21 also Academy of Motion Picture Arts & Sciences v. GoDaddy.com, Inc., CV 10-03738,
22 2015 WL 12684340
, at *3 (C.D. Cal. Apr. 10, 2015) (describing GoDaddy’s domain name
23 parking options of free parking and cash parking).
24 Defendant cites to no case authority discussing or holding that a domain name
25 owner’s utilization of a GoDaddy or a similar noncash parking page constitutes “use” of
26 the domain name in the context of a claim under the ACPA. Further, the evidence indicates
27
distinct from the rights contained in other sections of the Lanham Act, and do not stem
28 from the common law of trademarks.” Petroliam Nasional Berhad v. GoDaddy.com, Inc.,
737 F.3d 546, 552-53
(9th Cir. 2013). 1 that: (1) Plaintiff has not developed a public website using the domains; (2) Plaintiff has 2 not advertised or sold any goods or services using the domains; and (3) under his 3 agreements with GoDaddy, Plaintiff has no authority to modify the content on the parked 4 pages and may only inquire of customer support what further options “might be available.” 5 To the extent evidence supports a conclusion that Plaintiff requested GoDaddy to alter the 6 content of the domain name parking pages, this does not establish either that Plaintiff had 7 control over the content of the parking pages or even that a disputed issue of fact exists 8 regarding whether Plaintiff had control. Under the agreement, GoDaddy had control, not 9 Plaintiff. Thus, as a matter of law applied to the material undisputed facts before the Court, 10 the Court finds that Plaintiff has not used the domain names. 11 E. Bad Faith & Safe Harbor 12 Plaintiff recognizes that a claim under the ACPA requires a finding that any 13 registration and any use of a disputed domain name was not done in bad faith. See 1514 U.S.C. § 1125
(d)(1). (Doc. 86 at 14) Given that the Court has found that Plaintiff 15 purchased the 1998 and 2011 non-party registrations of the disputed domain names, given 16 that there is no evidence of unlawful use or bad faith regarding such registrations, and given 17 that the Court has found that Plaintiff did not use the disputed domain names, the Court 18 need not address bad faith and safe harbor provisions of the ACPA. Thus, the parties’ 19 dispute about application of bad faith factors under the ACPA does not prevent summary 20 judgment for Plaintiff on Plaintiff’s reverse domain name hijacking claim in Count One. 21 Nevertheless, applying the undisputed material facts before the Court, Plaintiff 22 qualifies for the safe harbor under the ACPA: “Bad faith ‘shall not be found in any case 23 in which the court determines that the person believed and had a reasonable grounds to 24 believe that the use of the domain name was fair use or otherwise lawful.’15 U.S.C. § 25
1125(d)(1)(B)(ii).” Interstellar Starship Servs. Ltd. v. Epix, Inc.,304 F.3d 936
, 947 (9th
26 Cir. 2002). 10
27
10 Also noteworthy is that federal courts:
28
have identified two “quintessential example[s]” of bad faith: where a
1 Defendant contends that Plaintiff failed to conduct a reasonable investigation before
2 acquiring the domain names and that such failure prevents Plaintiff from seeking protection
3 under the ACPA’s safe harbor provision. (Doc. 83 at 13, citing NextEngine Ventures, LLC
4 v. Lastar, Inc., No. CV 13-0463-TJH (JPRx), 2014 WL 6944877
at *4 (C.D. Cal. Dec. 8, 5 2014); Doc. 89 at 12-13 (same)) Defendant states that Plaintiff admitted performing no 6 investigation into whether the disputed domain names might infringe intellectual property 7 rights before acquiring the domain names, citing NextEngine,2014 WL 12581777
at *10. 8 (Doc. 83 at 14, Doc. 89 at 12-16, Doc. 95 at 11-12) 9 Plaintiff counters that even if he were found to have used the domain names, such 10 use could not have been in bad faith because he believed and still believes his intended use 11 of the marks is lawful; thus, he claims he is entitled to the protection of the ACPA’s safe 12 harbor provision in15 U.S.C. § 1125
(d)(1)(B)(ii). (Doc. 86 at 19) Plaintiff argues that
13 because the domain names are generic or descriptive11 regarding gambling and lottery
14
15
defendant “purchases a domain name very similar to the trademark and then
16
offers to sell the name to the trademark owner at an extortionate price,” and
17 where a defendant “intend[s] to profit by diverting customers from the
website of the trademark owner to the defendant's own website, where those
18
consumers would purchase the defendant's products or services instead of the
19 trademark owner’s.” Utah Lighthouse Ministry v. Found. for Apologetic
Info. & Research, 527 F.3d 1045, 1058
(10th Cir. 2008); see also Ford Motor 20 Co. v. Catalanotte,342 F.3d 543, 549
(6th Cir. 2003) (“Registering a famous
21 trademark as a domain name and then offering it for sale to the trademark
owner is exactly the wrong Congress intended to remedy when it passed the
22 ACPA.”). In those situations, the case for bad faith is at its peak.
23
Gioconda Law Group PLLC v. Kenzie, 941 F.Supp.2d 424, 434-35
(S.D.N.Y. 2013). There
24 is no evidence in this action that would support a finding of either of these two
“quintessential examples of bad faith.”
25
26 11 “Descriptive marks define qualities or characteristics of a product in a straightforward
way the requires no exercise of the imagination to be understood.” Entrepreneur Media,
27
Inc. v. Smith, 279 F.3d 1135, 1141-42
(9th Cir. 2002) (citation and internal quotation marks
28 omitted).
1 activities without secondary meaning12, it would be reasonable to conduct no investigation.
2 (Doc. 91 at 10) Indeed, dictionary definitions of “lotto” from 1986 and from the present
3 both confirm Plaintiff’s position. See Webster’s Ninth New Collegiate Dictionary 706
4 (1986) (defining the term “lotto” as having a single meaning, i.e., “a game of chance
5 resembling bingo.”); Merriam-Webster.com Dictionary, Merriam-Webster,
6 https://www.merriam-webster.com/dictionary/lotto. Accessed 24 Feb. 2020 (same).
7 Plaintiff further argues that the facts presented here are significantly different from
8 NextEngine, the only case Defendant cites in support of its argument. (Doc. 91 at 11)
9 Plaintiff avers that the domain name at issue in NextEngine was not clearly generic or
10 descriptive and was purchased by an entity in the business of acquiring internet domain
11 names to use for investment purposes and “to direct internet users to its other commercial
12 sites.” (Id.) Plaintiff further asserts that Defendant misconstrues Plaintiff’s expert’s
13 deposition, and further explains that Plaintiff consulted with counsel on trademark issues
14 as a part of the purchase of the disputed domains. (Id. at 11-12) Moreover, Plaintiff avers
15 that he used an escrow service to obtain the domain names. (Doc. 91 at 12, Doc. 91-1 at
16 6, Doc. 88 at ¶¶ 198, 199, Doc. 87-1 at ¶199) Plaintiff’s arguments are well-taken and
17 supported by the record.
18 In addition, the evidence is undisputed that Plaintiff was not aware of Defendant
19 when he acquired the disputed domains. (Doc. 87 at ¶ 79)13 Also undisputed is that
20 Plaintiff believed at the time he acquired the disputed domains and thereafter that his
21
22 12 “Secondary meaning” refers to the consumer’s association between the mark and a
23
particular source. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1292
(9th Cir.
1992). A merely descriptive trademark must be identified with a single commercial source
24 to be entitled to trademark protection. 2 J. Thomas McCarthy, McCarthy on Trademarks
& Unfair Competition § 15:1 (5th ed. 2018).
25
26 13 Defendant attempts to dispute this fact by asserting that Plaintiff’s statement is not
plausible because “Lotto is a world-renowned brand mark, particularly throughout Europe”
27
(Doc. 90 at ¶ 79), but Defendant’s assertion is not sufficient to create a disputed material
28 issue of fact. Further, Defendant’s position is rejected by this Court as unpersuasive
argument.
1 intended use for the disputed domain names was fair use or otherwise lawful. There are
2 reasonable legal grounds for Plaintiff’s belief. The term “lotto” is a generic lottery term.
3 Gambling is a market sector that Defendant does not serve but is a market sector in which
4 Plaintiff has had longstanding involvement and in which Plaintiff intended to use the
5 disputed domains.14 Further, there is no evidence that Plaintiff has or had control over the
6 content placed on the disputed domain names’ parking pages, or that his intent was to divert
7 consumers for commercial gain. Similarly, there is no evidence that Plaintiff has
8 affirmatively offered to sell the domain names. On the evidence presented it is undisputed
9 that Plaintiff believed and had reasonable grounds to believe that his use of the disputed
10 domain names was fair use or otherwise lawful. Plaintiff is entitled to protection under the
11 safe harbor provisions of 15 U.S.C. § 1125
(d)(1)(B)(ii). 12 F. Summary 13 For the reasons set forth above, the Court concludes as a matter of law applied to 14 undisputed facts that Plaintiff did not unlawfully register or use at all, let alone unlawfully 15 use, the disputed domain names. Further, Plaintiff is entitled to the ACPA’s safe harbor 16 protection regarding any registration and use of the disputed domain names. Accordingly, 17 Plaintiff’s motion for summary judgment on his Count One reverse domain name hijacking 18 claim will be granted and Defendant’s motion for summary judgment regarding the same 19 claim will be denied. 20 . . . 21 . . . 22 . . . 23 24 14 See Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co.,601 F.2d 1011, 1014-18
(9th Cir. 1979) (affirming district court decision that the coined word “surgicenter” from
25
the generic words “surgery center” was also generic.) In Surgicenters, the Ninth Circuit
26 cited Abercrombie & Fitch for its recognition that “a word may be in one category for a
particular product, and in quite a different one for another, noting, for example, that ‘ivory’
27
would be ‘generic when used to describe a product made from the tusks of elephants but
28 arbitrary as applied to soap.’” Surgicenters, 601 F.2d at 1019
(quoting Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4
, 9 n.6 (2d Cir. 1976)).
1 V. CLAIM TWO - PLAINTIFF’S REQUEST FOR A DECLARATION
PURSUANT TO 28 U.S.C. § 2201
2
Plaintiff requests a declaration pursuant to 28 U.S.C. § 2201
that Plaintiff did not
3
violate the Lanham Act. (Doc. 1 at 10-12) He asserts that, absent a “declaration from the
4
Court, GoDaddy LLC will transfer the [d]omain [n]ames to the control of the Defendant,
5
and Plaintiff will suffer immediate and irreparable harm.” (Id. at 11)
6
Section 43(a) of the Lanham Act provides that a person is liable for trademark
7
infringement if he:
8
9 uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading
10
description of fact, or false or misleading representation of fact, which . . . is
11 likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
12
as to the origin, sponsorship, or approval of his or her goods, services, or
13 commercial activities by another person[.]
14
15 U.S.C. § 1125
(a)(1)(A).
15
A. Plaintiff Has Not Used the Disputed Domain Names in Commerce
16
Trademark infringement under the Lanham Act requires, as a threshold issue, “use
17
in commerce.” 15 U.S.C. § 1125
(a)(1)(A). Additionally,15 U.S.C. § 1114
(1)(a) prohibits
18
a person, without the permission of the registrant, to “use in commerce any . . . colorable
19
imitation of a registered mark in connection with the sale, offering for sale, distribution, or
20
advertising of any goods or services on or in connection with which such use is likely to
21
cause confusion, or to cause mistake, or to deceive[.]” 15 U.S.C. § 1114
(1)(a).
22
The Ninth Circuit has instructed that trademark infringement claims “are subject to
23
a commercial use requirement.” Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676
(9th
24
Cir. 2005) (quoting 15 U.S.C. § 1141
(1)(a)). The Ninth Circuit explained that a
25
commercial use requirement for an infringement claim protects against confusion in
26
mistaken purchasing decisions rather than against confusion generally. Id.
at 677 (citing
27
Lang v. Ret. Living Publ’g Co., Inc., 949 F.2d 576, 582-83
(2d Cir. 1991)). A party’s
28
commercial use is properly determined by assessing whether the use was “in connection
1 with a sale of goods or services.” Id.
Moreover, a “mere registration of a domain name 2 [is] not sufficient to constitute commercial use for purposes of the Lanham Act.” 3 Brookfield Communc’ns, Inc. v. West Coast Entm’t Corp.,174 F.3d 1036, 1052
(9th Cir. 4 1999). 5 Defendant contends that Plaintiff used the disputed domain names in commerce 6 when Plaintiff parked the domain names on GoDaddy’s pages, on which GoDaddy placed 7 links leading to paid advertisements for Defendant’s competitors and solicited visitors to 8 purchase the domains. (Doc. 95 at 5) For the reasons discussed above in Section IV, 9 however, this Court concludes that Plaintiff has not put the disputed domain names to 10 “commercial use.” As the Ninth Circuit stated in Bosley, commercial use has been 11 interpreted “to be roughly analogous to the ‘in connection with’ sale of goods and services 12 requirement of the infringement statute.” Bosley,403 F.3d at 676
. Given that the domain 13 names have remained parked since before Plaintiff acquired them, Plaintiff has not 14 marketed or sold any goods or services in connection with the domains, and GoDaddy, not 15 Plaintiff, controls the parked pages’ contents, it cannot reasonably be concluded that 16 Plaintiff has used the domains in commerce. 17 Because Plaintiff has not used the disputed domain names in commerce, Plaintiff 18 has not violated the Lanham Act as a matter of law. 19 VI. CONCLUSION 20 For the foregoing reasons, Plaintiff’s motion for summary judgment will be granted 21 and Defendant’s motion for summary judgment will be denied. Pursuant to15 U.S.C. § 22
1114(2)(D), this Court “may grant injunctive relief to the domain name registrant,
23 including the reactivation of the domain name or transfer of the domain name to the domain
24 name registrant.” The Court will order that the disputed domain names <lottostore.com>
25 and <lottoworks.com> remain registered with the Plaintiff and be unlocked/reactivated for
26 Plaintiff’s lawful use.
27 . . .
28 . . .
1 Plaintiff advises the Court he will file a motion for attorneys’ fees. (Doc. 1 at 20,
Doc. 91 at 19) The Court will rule on such a motion if and when it is filed and becomes
|| ripe for decision.
4 Accordingly,
5 THE COURT FINDS that Plaintiff's registration and use to date of the domain
|| names <lottostore.com> and <lottoworks.com> are not unlawful under the ACPA or the
Lanham Act.
8 IT IS THEREFORE ORDERED that Plaintiff's Motion for Summary Judgment
9|| (Doc. 86) is granted and Defendant Lotto Sport Italia, S.P.A.’s Motion for Summary
10 || Judgment (Doc. 83) is denied.
11 IT IS FURTHER ORDERED that the domain names <lottostore.com> and
12 || <lottoworks.com> shall not be transferred to Defendant but instead shall remain registered
13 || with the Plaintiff; <lottostore.ccom> and <lottoworks.com> shall be unlocked/reactivated
for Plaintiff's lawful use.
15 IT IS FURTHER ORDERED directing the Clerk of Court to enter judgment in
favor of Plaintiff on Plaintiffs reverse domain name hijacking claim in Count One and
Plaintiff's declaratory relief claim in Count Two.
18 Dated this 10th day of March, 2020.
19
20 Uahiran | UW Tiny
Honorable Deborah M. Fine
United States Magistrate Judge
22
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25
26
27
28
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