Opinion
00 Civ. 4085 (RWS).
September 6, 2001
PERKINS DUNNEGAN, Attorney for Plaintiff, New York, NY By: WILLIAM DUNNEGAN, ESQ., ANNMARIE CROSWELL, ESQ., of Counsel.
JEFFREY GROCH, d/b/a ADVENTURE APPAREL, Defendant Pro Se, Tucson, AZ
OPINION
Plaintiff, Mattel, Inc. has moved pursuant to Rule 56 of the Federal Rules of Civil Procedure for summary judgment on its claims under the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. § 1125(d) ("ACPA") against Defendant Adventure Apparel. For the reasons stated, the motion is granted.
Parties and Prior Proceedings
Mattel is a corporation organized and existing under the laws of the State of Delaware with its principal place of business in El Segundo, California.
Adventure Apparel is a sole proprietorship owned by Jeffrey Groch ("Groch"). It is in the business of selling swimwear and tanning sessions, and has two places of business in Tucson, Arizona.
By decision of March 22, 2001, it was determined that personal jurisdiction over the defendant existed in this district and that venue was proper. Groch was found to be the real party in interest as sole proprietor and leave was granted to name Jeffrey Groch d/b/a Adventure Apparel ("Groch") as defendant. In addition, the parties were instructed to brief the issue of transfer to the District of Arizona. Mattel, Inc. v. Adventure Apparel, 2001 WL 286728 (S.D.N.Y. March 22, 2001). By order of April 12, 2001, the motion to transfer was denied in light of the pendency of this motion for summary judgment. The instant motion was marked fully submitted on May 9, 2001.
Facts
Mattel is the world's largest manufacturer of toys, games and playthings. One of Mattel's most successful products is the Barbie doll which is one of the most popular toys in existence. Mattel has caused numerous Barbie related trademarks to be registered in the United States Patent and Trademark Office on the Principal Register.
Groch registered the internet domain names, "barbiesbeachwear.com" and "barbiesclothing.com". Beginning as early as January 2000, Groch hosted an interactive website at "adventureapparel.com". Both "barbiesbeachwear.com" and "barbiesclothing.com" were "parked" at the "adventureapparel.com" website. The result of this is that when a web browser was pointed to any of the three domain names, Adventure Apparel's interactive website would be the destination. From the website at the URL www.barbiesbeachwear.com, Mattel's investigator purchased a single ten dollar pair of stockings, which were shipped into this district. This is the only sale made through the site. This sale was the basis for asserting personal jurisdiction. See Mattel v. Adventure Apparel, 2001 WL 286728 (S.D.N.Y. March 22, 2001).
The term "park" refers to the placement of a registered name with a service provider in order to fulfill the registration requirements of InterNIC. InterNIC (Internet Network Information Center) is the top level domain authority in the U.S. whose registry is located at Network Solutions, Inc., The InterNIC controls the more fashionable.com, .net, .gov, .edu and .org domains.
The URL from which the sale was made, www.barbiesbeachwear.com, was not registered with any search engines, but search engines can bring traffic to a site based upon the domain name used for the site. Brookfield Communications, Inc. v. West Coast Entertainment, Corp., 174 F.3d 1036, 11045 (9th Cir. 1999) ("Search engines look for key words in places such as domain names, actual text on web pages and metatags.")
In order to retain the domain names "barbiesbeachwear.com" and "barbiesclothing.com" for future use Groch was required to "park" the newly registered domain names at an existing host or pay an additional fee to Network Solutions, Inc. to hold the listings. He opted to do the former.
The Standard for Summary Judgment
Rule 56(c) of the Federal Rules of Civil Procedure provides that a motion for summary judgment may be granted when "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." The Second Circuit has repeatedly noted that "as a general rule, all ambiguities and inferences to be drawn from the underlying facts should be resolved in favor of the party opposing the motion, and all doubts as to the existence of a genuine issue for trial should be resolved against the moving party." Brady v. Town of Colchester, 863 F.2d 205, 210 (2d Cir. 1988) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 330 n. 2 (1986) (Brennan, J., dissenting)); see Tomka v. Seiler Corp., 66 F.3d 1295, 1304 (2d Cir. 1995); Burrell v. City Univ., 894 F. Supp. 750, 757 (S.D.N.Y. 1995). If, when viewing the evidence produced in the light most favorable to the nonmovant, there is no genuine issue of material fact, then the entry of summary judgment is appropriate. See Burrell, 894 F. Supp. at 758 (citing Binder v. Long Island Lighting Co., 933 F.2d 187, 191 (2d Cir. 1991)).
Materiality is defined by the governing substantive law. "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted."Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). "[T]he mere existence of factual issues — where those issues are not material to the claims before the court — will not suffice to defeat a motion for summary judgment." Ouarles v. General Motors Corp., 758 F.2d 839, 840 (2d Cir. 1985)
For a dispute to be genuine, there must be more than "metaphysical doubt." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50 (citations omitted)
Mattel is Entitled to Summary Judgment on Its Claims Under the ACPA Based Upon the Defendant's Registration and Use of the Internet Domain Names barbiesbeachwear.com and barbiesclothing.com
Mattel's ACPA claim has two elements.
The first element is that the domain name is either (a) "dilutive" of a "famous" trademark or (b) "confusingly similar" to a "distinctive" trademark. "Barbiesbeachwear.com" and "barbiesclothing.com" meet both prongs of the test.
BARBIE is a "famous" trademark under the Federal Anti-Dilution Act, 15 U.S.C. § 1125(c)(1). Mattel, Inc. v. Internet Dimensions, 55 U.S.P.Q.2d 1620, 1623 (S.D.N.Y. 2000); Mattel, Inc. v. Jcom, Inc., 48 U.S.P.Q.2d 1467, 1469-70 (S.D.N.Y. 1998).
The domain names "barbiesbeachwear.com" and "barbiesclothing.com" are dilutive of the BARBIE trademark. See Mattel, Inc. v. Internet Dimensions, supra at 1627; (barbiesplaypen.com held dilutive of BARBIE);Mattel, Inc. v. Jcom, Inc., supra at 1470 (Barbie's Playhouse held dilutive of BARBIE). Though no "actual" dilution is apparent on the facts viewed most favorably to Groch, in this Circuit, proof of actual dilution is not required. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 223 (2d Cir. 1999). The similarities between "barbiesbeachwear.com", "barbiesclothing.com" and the BARBIE trademark are apparent on their face.
The BARBIE trademark is also "distinctive." Mattel, Inc. v. Internet Dimensions, supra at 1623; See Sporty's Farm, LLC v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000) ("SPORTY's" held distinctive). Most of the 27 BARBIE trademark registrations submitted to the court are incontestible under Section 15 of the Lanham Act, 15 U.S.C. § 1065. This entitles Mattel to a presumption that "`its registered trademark is inherently distinctive.'" Sporty's Farm, LLC v. Sportsman's Market, Inc., supra at 498, quoting Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542 (1st Cir. 1995)
The second element of Mattel's ACPA claim is that Groch registered, used or trafficked in the domain name with a "bad faith intent to profit from the trademark." See Sporty's Farm, LLC v. Sportsman's Market, Inc.,supra. The ACPA lists nine factors which courts may consider in making the determination of whether "bad faith" exists. 15 U.S.C. § 1125(d)(1)(b).
"(I) the trademark or other intellectual property rights of the persons, if any, in the domain name;"
Groch does not own any intellectual property rights in the marks BARBIE, BARBIESBEACHWEAR, or BARBIESCLOTHING.
"(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;"
Neither Groch nor Adventure Apparel is known by any portion of the domain names at issue.
"(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;"
Groch has not used the trademarks BARBIE, BARBIESBEACHWEAR, or BARBIESCLOTHING before registering the domain names at issue.
"(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;"
Groch offers evidence in the form of an affidavit that the domain names "barbiesbeachwear.com" and "barbiesclothing.com" were registered with the intent to set up a parody site. Such use would in fact be a protected noncommercial use and would entitle its holder further to First Amendment protection. See Yankee Publishing, Inc. v. News America Publishing, Inc., 809 F. Supp. 267, 275-282. However, no parody site was ever established. By "parking" the domain names at a commercial website and conducting business through the domain name "barbiesbeachwear.com" defendant has lost the ability to claim this factor in his favor.
Though the single sale does not constitute significant commerce, it does nothing to support the defendant's belated attempt to assert protection on this ground. As the Third Circuit recently noted, "[w]e are aware of no authority providing that a defendant's "fair use" of a distinctive and famous mark only after the filing of a complaint alleging infringement can absolve that defendant of liability." Shield v. Zuccarini, 2001 U.S. App. LEXIS 13288, (3d Cir. June 15, 2001). Such is the case here.
Groch's affidavit evidence is insufficient to overcome summary judgment since it provides no more than a colorable argument that the domain names are entitled to protection. "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986) (citations omitted).
"(V) the persons intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site;"
The use of "barbie" in the domain name brings internet traffic to the Adventure Apparel site. This constitutes an attempt to create a profit from Mattel's goodwill in the BARBIE trademark. Since there is little more than the domain name itself as evidence of intent and no additional marking on the website itself indicating an association with barbie, this factor tips only slightly in Mattel's favor.
"(VI) the person's offer to transfer, sell or otherwise assign the domain name to the mark owner or to any third party for financial gain, without having used . . . the domain name;"
There is no evidence that Groch has engaged in any such conduct with respect to the domain names at issue.
"(VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;"
This factor, along with (VI) does not favor a finding of a bad faith registration of the domain names.
"(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive . . . or dilutive of famous marks of others . . .; and"
Groch has registered both "barbiesbeachwear.com" and "barbiesclothing.com". No claim has been made and no evidence produced that Groch did not know the marks to be identical or confusingly similar to Mattel's BARBIE trademark. On the contrary, BARBIE is well known and was known by the defendant. This is evidenced by Groch's assertion that he intended to use the domain names to establish a parody site. This factor is aimed primarily at persons who register numerous domain names with the intent to warehouse them and make a business of selling them to trademark owners. See Sporty's Farm, LLC v. Sportsman's Market, Inc., 202 f.3d 489, 493-96 (2d Cir. 2000). There is no evidence of such conduct. On balance, this factor is neutral.
"(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43."
As explained above, Mattel's BARBIE trademark is both "famous" and "distinctive".
On balance, analysis of the nine factors points to a finding that Groch had a "bad faith intent to profit" from the use of the BARBIE trademark in the domain name. Groch's domain name registration may have been protected under the First Amendment if a parody sight had been established at the URL's "barbiesbeachwear.com" and "barbiesclothing.com". However, he decided to park the two domain names at the Adventure Apparel website and made a sale to a individual through the website, "www.barbiesbeachwear.com".
If Groch intended that "barbiesbeachwear.com" and "barbiesclothing.com" would become web sites to parody the negative social impact of portraying women in a distorted and socially harmful manner, he would have done well not to associate it with his retail web site which sells women's clothing, boots, breast enhancement products, hosiery and body stockings.
Though the conduct was not egregious, it is clearly not the kind of fair use intended by the ACPA. Groch is therefore liable to Mattel under the ACPA.
Mattel is Entitled to Cancellation of the Domain Names, an Injunction, and S2000 in Damages
The ACPA provides that, upon a finding of a violation, the Court has discretion to cancel the domain name or order it transferred to the trademark owner. 15 U.S.C. § 1125(d)(1)(C). Mattel seeks a transfer of the domain names to prevent another entity from registering them. Because there is a conceivable, non-infringing use of the domain names, "barbiesbeachwear.com" and "barbiesclothing.com", the current registrations will be cancelled but not transferred to Mattel since Mattel has made no showing that they are entitled to the domain names.
The ACPA also provides that, a Court may, in its discretion, enjoin further violations. Mattel, Inc. v. Internet Dimensions, supra at 1625. As sole proprietor of Adventure Apparel, and consistent with this court's prior finding that Adventure Apparel is not a distinct legal entity, Jeffrey Groch d/b/a/ Adventure Apparel is hereby enjoined from further violations of the ACPA with respect to trademarks owned by Mattel.
In the prior opinion of March 22, 2001, it was found that: Mattel does not dispute that Adventure is a sole proprietorship owned by Groch and, therefore, that Adventure is not a separate legal entity capable of being sued. However, "[t]he service upon a trade name with no separate jural existence will not bar [a] suit against [the owner] if [he] was `fairly apprised' of this suit." Darby v. Campagnie Nat'l Air France, 132 F.R.D. 354, 355 (S.D.N.Y. 1990) (quoting Anastasiou v. Fulton Street Pub, 133 A.D.2d 796, 520 N.Y.S.2d 178 (N.Y.App.Div. 1987)). Groch is the sole proprietor of Adventure [Apparel] and has been representing Adventure pro se. Thus, he was fully apprised of the suit and of the fact that he is the real party in interest.
The ACPA authorizes a Court to award statutory damages in lieu of actual damages in an amount in excess of $1000 and up to $100,000, as the Court considers just. 15 U.S.C. § 1117(d). The need for deterrence is not exceptional in this case since little if any actual harm has been done to Mattel, considering the minuscule number of web hits and the solitary sale of a pair of stockings. Damages in the amount of $2000, $1000 for each violative domain name-the minimum under the statute-is sufficient to achieve the ends of the ACPA.
The Court also has discretion to award attorney's fees. However, Groch, proceeding pro se has not engaged in dilatory litigation tactics. Though ultimately incorrect, Groch has proceeded in the litigation in the belief that what he saw as a de minimus violation of the ACPA was insufficient for jurisdictional and liability purposes.
Conclusion
For the above stated reasons, Jeffrey Groch d/b/a Adventure Apparel is enjoined from further violations of the ACPA with respect to Mattel trademarks, the domain name registrations for "barbiesbeachwear.com" and "barbiesclothing.com" are cancelled, and statutory damages are awarded to Mattel in the amount of $2000.
It is so ordered.