Gioconda Law Group PLLC v. Kenzie
941 F. Supp. 2d 424
S.D.N.Y.2013Background
- Plaintiff Gioconda Law Group PLLC sues Defendant Arthur Wesley Kenzie alleging cybersquatting, trademark infringement, unlawful interception and disclosure of electronic communications, and related state-law claims; Plaintiff moves for judgment on the pleadings under the ACPA, which the court denies.
- Defendant registered the Infringing Domain Name GIOCONDOLAW.COM on January 19, 2012 via Go-Daddy, using domain privacy, and redirected traffic to Plaintiff’s site.
- Plaintiff sent emails to info@giocondolaw.com and joseph.gioconda@giocondolaw.com; registered receipts indicate delivery to active mailboxes.
- Defendant has registered eight additional domain names (including variants of major brands) and directed them to third-party sites; he claims the conduct was for information-security research and not to harm Plaintiff.
- Plaintiff obtained federal registration for the Gioconda Law Group PLLC service mark in International Class 45 on April 17, 2012.
- The court analyzes whether Defendant acted with ‘bad faith intent to profit’ under the ACPA using the nine indicia and a contextual, unique-circumstances approach.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether bad faith intent to profit exists under the ACPA | Kenzie’s conduct demonstrates bad faith intent to profit from the mark. | Conduct was driven by information-security research and not to profit from the mark. | Not proven at this stage; insufficient to show bad faith intent to profit. |
| Application of the ACPA’s indicia beyond the nine factors | Nine factors suffice to show bad faith given the domain’s similarity and diversion. | Other factors or ‘unique circumstances’ should be considered to assess bad faith. | Court adopts a contextual approach, not strictly limited to the nine factors; but still finds no clear bad faith here. |
| Whether the case falls within core ACPA misuse (extortion, sale, or diversion) | Defendant’s actions constitute cybersquatting aimed at profiting from the mark. | Actions are security-research oriented with no extortion or commercial sale intent. | Not within the core ACPA misuse scenarios at this posture; does not show bad faith to profit. |
Key Cases Cited
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) (indicia may be considered alongside other facts; not dispositive)
- Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) (bad faith intent to profit is essential to ACPA liability)
- Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001) (allows consideration of non-listed factors under the statute)
- S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir. 2009) (bad faith intent to profit not shown where not in core ACPA scope)
- Ford Motor Co. v. Catalanotte, 342 F.3d 543 (6th Cir. 2003) (registering a famous mark and offering it for sale can show bad faith)
- Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008) (cases caution against overbroad application of ACPA)