411 KITCHEN CABINETS LLC v. KING OF KITCHEN AND GRANITE INC
9:16-cv-80206
S.D. Fla.Oct 24, 2016Background
- Plaintiff 411 Kitchen Cabinets, LLC was formed in March 2013 and registered the domain "411kitchencabinets.com" and later obtained a federal trademark covering "411 Kitchen Cabinets Vanities & Granite."
- Defendant King of Kitchen & Granite, employing Plaintiff's former employee, registered the nearly identical domain "411kitchencabinet.com" (singular) after Plaintiff’s domain registration and redirected traffic to its main site.
- Plaintiff alleges consumer confusion: calls and complaints intended for Plaintiff came to Defendant, causing lost business and eventual closure.
- Plaintiff filed claims including (I) ACPA (anti-cybersquatting), (II) dilution by blurring (alternative), and (III) "cyberpiracy," among others; Defendant moved to dismiss Counts I–III.
- Magistrate Judge Brannon recommends denying dismissal of Count I (ACPA), dismissing Count II (dilution) without prejudice, and dismissing Count III ("cyberpiracy") with prejudice as duplicative of the ACPA claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| ACPA liability for domain registration (cybersquatting) | Plaintiff used the mark and domain first; Defendant registered confusingly similar domain to divert customers and profit | Defendant contends mark lacked protectable distinctiveness at the time of registration and challenges bad-faith intent | Denied as to dismissal: Court finds Plaintiff plausibly alleged distinctiveness, confusing similarity, and bad-faith intent to profit under ACPA |
| Dilution by blurring under 15 U.S.C. §1125(c) | Alternatively claims Defendant’s use diluted Plaintiff’s mark | Defendant argues mark is not "famous" as required for a federal dilution claim | Grant dismissal without prejudice: Plaintiff failed to plead the mark was "famous" nationally; may replead |
| "Cyberpiracy" as independent cause of action | Alleges cyberpiracy separate from ACPA | Defendant argues any cyberpiracy claim is subsumed by ACPA and is not a standalone claim | Grant dismissal with prejudice: Court finds no independent cause of action beyond ACPA; Count III duplicative |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard; legal conclusions not entitled to assumption of truth)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (plausibility pleading standard)
- Jysk Bed'N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir.) (definition and harms of cybersquatting)
- Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir.) (description of cybersquatting as an Internet "land grab")
- Crystal Entm't & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir.) (unregistered marks may be protectable)
- Conagra, Inc. v. Singleton, 743 F.2d 1508 (11th Cir.) (likelihood of false source representation from use of similar marks)
- DSPT Int'l, Inc. v. Nahum, 624 F.3d 1213 (9th Cir.) (ACPA establishes civil liability for "cyberpiracy")
- Hanley-Wood LLC v. Hanley Wood LLC, 783 F. Supp. 2d 147 (D.D.C.) (domain similarity can support ACPA claim)
- Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d 1349 (S.D. Fla.) (dilution reserved for truly famous marks)