Opinion
CIVIL ACTION NO. W-00-CA-231
November 7, 2001
MEMORANDUM OPINION AND ORDER
Plaintiff Baylor University ("Plaintiff" or "Baylor") brings this action for trademark infringement, dilution, unfair competition and unjust enrichment under the Trademark Act of 1946, as amended, 15 U.S.C. § 1051, et seq. ("Lanham Act") and under Texas state law. On August 20, 2001, the United States District Clerk for the Western District of Texas entered default against Defendant International Star, Inc. In conjunction with the present memorandum opinion and order, the Court granted Default Judgment against Defendant International Star, Inc.
Plaintiff has additionally moved for summary judgment against Defendant David Roberts ("Defendant" or "Roberts"), who has failed to file any response to the motion. Having reviewed Plaintiff's motion, the summary judgment proof presented, as well as the applicable legal authority, the Court is persuaded that Plaintiff is entitled to judgment as a matter of law.
I. BACKGROUND
The undisputed facts establish the following:
1. Baylor's marks (the "Baylor marks") are the subject of numerous federal registrations for a wide variety of goods and services, including the following: Reg. Nos. 1,465,910, 1,467,391, 1,468,436, 1,858,559, 1,923,603, 1,935,130, 1,936,714, 2,028,572, 2,214,808, 2,214,809, 2,216,574, 2,247,794, and 2,264,755.
2. Each of the foregoing registrations is owned by Baylor and is valid, subsisting and in full force and effect. In addition, several of these registrations have become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065.
3. The Baylor marks, including the marks BAYLOR, BAYLOR UNIVERSITY, and BAYLOR BEARS are distinctive and famous.
4. In March 1999, Defendant David Roberts registered the Internet domain name "baylorbears.com" on behalf of International Star, Inc., listing himself as its administrative and billing contact. Roberts is the primary interest holder in Defendant International Star, Inc.
5. Roberts operates a website located at "http://www.baylorbears.com."
6. On or about May 24, 2000, Baylor, through its licensing agent, sent Roberts a letter objecting to his registration and use of the "baylorbears.com" domain name and requested that Defendant promptly transfer it to Baylor.
7. At the time Roberts received Baylor's initial objection letter of May 24, 2000, he had not yet posted a website under the "baylorbears.com" domain name.
8. The website presently located at "http://www.baylorbears.com" prominently displays the name "BaylorBears.com."
9. The website located at "http://www.baylorbears.com" states that it is "An Alumni Sponsored Site."
10. The website located at "http://www.baylorbears.com" specifically targets Baylor University and its students and alumni.
11. Roberts uses the domain name "baylorbears.com" in commerce in connection with various services.
12. Roberts' use of the domain name "baylorbears.com" in connection with his website has caused and will continue to cause Baylor irreparable injury.
13. Roberts willfully infringed and diluted Baylor's marks.
14. Roberts intended to trade on Baylor's reputation.
15. Roberts intended to cause dilution to Baylor's famous marks.
16. Roberts registered and used the domain name "baylorbears.com" in bad faith.
17. Roberts has no trademark or other intellectual property rights in the name "BaylorBears."
18. "BaylorBears" is not Roberts' legal name or a name that is commonly used to identify him.
19. This is an exceptional case.
20. Roberts' use of the domain name "baylorbears.com" in connection with his website is likely to cause confusion, mistake, and/or deceit of the public, as to some affiliation, connection or association of the website with Baylor.
21. Roberts' use of the domain name "baylorbears.com" in connection with his website is likely to cause confusion, mistake, and/or deceit of the public, as to the origin, sponsorship, or approval of his website by Baylor.
22. Roberts' use of the domain name "baylorbears.com" in connection with his website dilutes the distinctive quality of Baylor's famous marks BAYLOR, BAYLOR UNIVERSITY, and BAYLOR BEARS.
23. Roberts was aware of Plaintiff's marks BAYLOR, BAYLOR UNIVERSITY, and BAYLOR BEARS when he selected the name for the website located at "baylorbears.com." He attended and is a graduate of Baylor University.
24. Roberts' use of the domain name "baylorbears.com" began after the Baylor marks had become famous.
25. Roberts' use of the domain name "baylorbears.com" in connection with his website unjustly enriches him at Baylor's expense.
II. SUMMARY JUDGMENT
Summary judgment should be granted if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A disputed material fact is genuine if the evidence is such that a jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986). The initial burden to demonstrate the absence of a genuine issue concerning any material fact is on the moving party. Celotex v. Catrett, 477 U.S. 317, 325 (1986). This burden can be satisfied by pointing out to the district court that there is an absence of evidence to support an essential element of the non-moving party's case. Id. Upon such a showing, the burden shifts to the non-moving party to establish that there is a genuine issue. Id. at 324. "[T]he plain language of Rule 56 (c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322.
III. DISCUSSION
A Trademark Infringement. In order to prevail in its federal trademark infringement claim, Baylor must show the following: (1) that its marks qualify for protection; and (2) that the Defendant's use of the marks creates a likelihood of confusion as to source, affiliation or sponsorship. Pebble Beach Co. v. Tour 18 Limited, 155 F.3d 526 (5th Cir. 1998); 15 U.S.C. § 1114 (1) and 1125(a). Under 15 U.S.C. § 11057 (a) and 1115(a) and (b), registration of a mark constitutes prima facie evidence (and in the case of incontestable registrations, conclusive evidence) of the validity of the registered marks, the registrations, Baylor's ownership of the marks, and Baylor's exclusive right to use the marks. As previously noted, Defendant has failed to respond to Baylor's motion for summary judgment and has failed, therefore, to present any material fact issue refuting the validity of Baylor's marks. Additionally, the unrefuted summary judgment proof establishes that the Defendant has admitted that his activities are likely to cause confusion, mistake, and/or deceit of the public, as to the origin, sponsorship, or approval of his website by Baylor. Accordingly, Baylor has established as a matter of law that it is entitled to prevail on its federal trademark infringement claims. As Baylor's common-law trademark infringement and unfair competition claims are premised on the same facts, it is additionally entitled to judgment as a matter of law on those claims.
B. Dilution. In order to prevail on its federal dilution claim, Baylor must prove the following: (1) that its marks are famous and distinctive; (2) that Roberts adopted his marks after Baylor's marks had become famous and distinctive; and (3) that Roberts caused dilution of Baylor's marks.Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car, Co., 238 F.3d 378, 380 (5th Cir. 2001); 15 U.S.C. § 1125 (c)(1). If Baylor proves its federal dilution claim, it thereby proves its Texas state law dilution claim, which has a lesser burden than the federal dilution claim. Texas law requires proof that the plaintiff (1) owns a distinctive mark, and (2) there is a likelihood of dilution. Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1081 (5th Cir.), cert. denied, 522 U.S. 915 (1997); TEX. Bus. COM. CODE § 16.29. The undisputed summary judgment proof presented establishes that Defendant has admitted that Baylor's marks are famous and have distinctive quality, that he selected the names for his website after Baylor's marks had become famous and distinctive, and that his activities caused dilution of the distinctive quality of Baylor's famous marks. As a result, Baylor is entitled to judgment as a matter of law on its dilution claim.
C. Cyberpiracy. The summary judgment proof before the Court additionally establishes that Roberts has violated the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125 (d). In order to prevail on this claim, Baylor must prove the following: (1) Roberts registered or used a domain name that is identical or confusingly similar to a distinctive mark owned by Baylor, or is identical or confusingly similar to or dilutive of a famous mark owned by Baylor; and (2) Roberts has a bad faith intent to profit from Baylor's mark(s). 15 U.S.C. § 1125 (d)(1)(A). See Sporty's Farm. L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir.), cert denied, 530 U.S. 1262 (2000); E. J. Gallo v. Spider Webs, Ltd., 129 F. Supp.2d 1033 (S.D. Tex. 2001).
Roberts has admitted all of the elements of this claim. In particular, Roberts admitted that Baylor's marks are distinctive and famous, his domain name "baylorbears.com" is confusingly similar to and dilutive of Baylor's marks, and he registered and used that domain name in bad faith. Roberts' admission of bad faith is confirmed by reviewing a number of the factors set forth in the ACPA for determining bad faith, particularly the following: (1) Roberts has no trademark or other intellectual property rights in the name "BaylorBears;" (2) "BaylorBears" is not his legal name or a name otherwise commonly used to identify him; (3) Roberts was not making any prior use of the domain name in connection with the bona fide offering of any goods or services (he had not even posted a website under the "baylorbears.com" domain name when he received Baylor's initial objection letter; (4) Roberts is not making bona fide noncommercial or fair use of the "BaylorBears" mark on his site (he prominently displays the mark on his website in commerce in connection with various services, such as targeting Baylor University students and alumni to use and post materials on his site); (5) Roberts willfully infringed and diluted Baylor's marks and intended to trade on Baylor's reputation; and (6) the mark incorporated into Roberts' domain name registration — BAYLOR BEARS — is extremely distinctive and famous.
D. Unjust Enrichment. The undisputed facts that have established Baylor's other claims are also sufficient to establish its claim for unjust enrichment, as well as its entitlement to a permanent injunction, the recovery of statutory damages under the ACPA, and the recovery of its attorneys' fees and costs. In light of the foregoing, it is
ORDERED that Plaintiff's Motion for Summary Judgment is GRANTED. It is further
ORDERED that Defendant David Roberts, his agents, servants, employees, attorneys, and all those persons in active concert or participation with them, are permanently enjoined from using, registering, or holding registrations for the domain name "baylorbears.com", and any other domain name or mark that includes the mark BAYLOR, any other mark owned by Baylor, or any confusingly similar mark. It is further
ORDERED that Defendant David Roberts take all necessary steps to immediately transfer the domain name "baylorbears.com" to Baylor. It is further
ORDERED that Defendant Roberts, his officers, agents, servants, employees, attorneys, and all those persons in active concert or participation with them, shall immediately remove the domain name "baylorbears.com" from any web site displaying this name, and thereafter are permanently enjoined from displaying on any web site without Baylor's consent this domain name, any other domain name or mark that includes the mark BAYLOR, and any other mark owned by Baylor, or any confusingly similar mark. It is further
ORDERED that Roberts shall file with the Court and serve on Baylor, within thirty (30) days after the entry of this Order, a report in writing and under oath setting forth in detail the manner and form in which he has complied with the injunction. It is further
ORDERED that Defendants shall pay to Baylor $10,000 as statutory damages, pursuant to 15 U.S.C. § 1117 (d). Defendants David Roberts and International Star, Inc. shall be jointly and severally liable for this amount. It is further
ORDERED that Defendants shall pay to Baylor University its costs and reasonable attorney's fees incurred as a result of their willful, bad faith violations of federal and state law, which shall be submitted in compliance with the Local Rules of the Western District of Texas within ten days from entry of Judgment. It is further
ORDERED that any motions not previously ruled upon by the Court are DENIED.