71 F. Supp. 3d 1325
S.D. Fla.2014Background
- Plaintiff 1-800-411-I.P. Holdings, LLC ("IP Holdings") owns trademarked referral marks including 1-800-411-PAIN (the "411 Pain Marks") and registered related domains (the "411 Pain Domains").
- In 2013 IP Holdings licensed Defendants to use the 411 Pain Marks; that license was terminated on March 31, 2014.
- After termination, Defendants replaced licensed content on their site with their own content that IP Holdings alleges remained confusingly similar to the 411 Pain Marks and used similar marketing (e.g., 1-800-HURT-911).
- IP Holdings alleges the 411 Pain Domains continued to direct visitors to Defendants’ website and that Defendants knew of and exploited that redirected traffic.
- IP Holdings asserted six claims: (1) ACPA cybersquatting; (2) trademark infringement (15 U.S.C. § 1114); (3) federal trademark dilution (15 U.S.C. § 1125(c)); (4) Florida trademark dilution; (5) unfair competition (15 U.S.C. § 1125(a)); and (6) Florida common-law unfair competition.
- Defendants moved to dismiss under Rule 12(b)(6); the Court dismissed only the ACPA cybersquatting claim and denied dismissal as to the remaining counts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants can be liable under the ACPA for use of domains when Plaintiff is the registrant | Defendants used the domains (by designing site and exploiting redirected traffic) and acted in bad faith, so ACPA liability applies | ACPA liability attaches only to the domain registrant or the registrant’s authorized licensee; Plaintiff is the registrant, so Defendants cannot be liable | Dismissed: Defendants cannot be liable under ACPA because IP Holdings is the registrant and Defendants were not registrants or licensees at time of alleged misuse |
| Whether prior license status suffices for ACPA liability after license termination | Past authorized licensee status makes Defendants liable for later bad-faith use | ACPA’s text requires the defendant to “is” a registrant’s authorized licensee — present-tense — so past license does not suffice | Dismissed as to theory: present-tense statutory reading means liability requires licensee status at time of use |
| Whether the complaint is a shotgun pleading | Complaint gives factual allegations supporting each claim and identifies specific wrongful acts | Complaint uses collective references to multiple defendants and incorporates general allegations, so it is impermissibly vague | Denied: Complaint is not a shotgun pleading and provides fair notice; collective reference "Defendants" is acceptable here |
| Whether group pleading deprived defendants of notice | IP Holdings alleges specific wrongful acts and that named individuals/companies participated | Group pleading can be problematic when applied to many diverse actors without specificity | Denied: allegations sufficiently tie named individuals/entities to the conduct so defendants have fair notice |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for complaints)
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading must contain sufficient factual matter to state a plausible claim)
- Glover v. Liggett Group, Inc., 459 F.3d 1304 (11th Cir. 2006) (Rule 12(b)(6) standard discussion)
- Strategic Income Fund, L.L.C. v. Spear, Leeds & Kellogg Corp., 305 F.3d 1293 (11th Cir. 2002) (shotgun complaint definition)
- S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) (ACPA purpose: target domain-ransoming and consumer diversion)
- Dawson v. Ameritox, Ltd., [citation="571 F. App'x 875"] (11th Cir. 2014) (statutory present-tense interpretation guide)
- DaimlerChrysler v. Net, 388 F.3d 201 (6th Cir. 2004) (use of deceptive domain names can divert consumers)
- Sound Surgical Techs., LLC v. Leonard A. Rubinstein, M.D., P.A., 734 F. Supp. 2d 1262 (M.D. Fla. 2010) (domain diversion as cybersquatting theory)