Goya Foods, Inc. v. goya.net, 1:19-cv-01515

Background

Goya Foods, Inc. (U.S. company) owns and uses the famous GOYA trademark worldwide and holds multiple federal registrations.
Non-party Goya GmbH registered numerous domain names containing the word “goya” (the Defendant Domain Names) and redirected them to sites at goya.net and goya.de; it also filed U.S. intent-to-use trademark applications for GOYA/GOYA YOGA that the PTO refused under §2(d) for likelihood of confusion.
Goya Foods sued the Defendant Domain Names in rem under the ACPA and Lanham Act seeking declarations of infringement, dilution, and an order directing registries (VeriSign and Public Interest Registry) to transfer the domain names.
Service was effected by mailing notice to the registrant’s postal and email addresses and by publication in The Washington Times as permitted by 15 U.S.C. §1125(d)(2); the domain names did not answer and the Clerk entered default.
The Magistrate Judge evaluated the well-pleaded allegations under Rule 12(b)(6)/Iqbal–Twombly standards, found the complaint plausible on infringement, unfair competition, and dilution claims, and recommended default judgment.
Recommended relief: grant default judgment on all counts and order registries to transfer the Defendant Domain Names (and other similar domains held by Goya GmbH) to Goya Foods.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
In rem jurisdiction and service under the ACPA	Service by mail/email to registrant and publication satisfied §1125(d)(2); registrars located in district give in rem jurisdiction	No responsive pleadings (default); no live jurisdictional defense asserted	Court found service and in rem jurisdiction sufficient and venue proper
Trademark infringement (15 U.S.C. §§1114, 1125(a))	Defendant Domain Names use GOYA in entirety, creating a presumption of likelihood of confusion; Goya Foods owns valid registrations	No answer; registrant previously sought its own GOYA registrations but PTO refused for likelihood of confusion	Court held plaintiff pleaded facts sufficient for infringement and recommended default judgment on Count I
Common-law infringement / unfair competition	GOYA is a protectable mark used in U.S. commerce and Defendant’s use is likely to confuse consumers	No response; no factual rebuttal	Court found elements satisfied and recommended default judgment on Count II
Dilution of a famous mark (15 U.S.C. §1125(c))	GOYA is famous and distinctive; use of identical mark in domain names dilutes distinctiveness by blurring/tarnishment	No response	Court found dilution pleaded plausibly and recommended default judgment on Count III
Remedies — transfer of domains under ACPA	Transfer of control of domains to Goya Foods is appropriate relief under §1125(d)(2)(D)(i)	No response	Court recommended ordering registries to transfer the Defendant Domain Names (and other similar Goya GmbH domains) to plaintiff

Key Cases Cited

Ashcroft v. Iqbal, 556 U.S. 662 (2009) (complaint must plead plausible claims under Twombly standard)
Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for pleadings)
Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145 (4th Cir. 1987) (near-exact imitation presumption of likelihood of confusion)
Synergistic Int’l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006) (elements of trademark infringement)
Lone Star Steakhouse & Saloon v. Alpha of Va., 43 F.3d 922 (4th Cir. 1995) (§43(a) infringement parallels §32 analysis)
Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (common-law trademark rights require U.S. use)
PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (limits on inchoate rights for nonuse)
Int’l Bancorp, LLC v. Societe des Bains de Mer, 329 F.3d 359 (4th Cir. 2003) (distinctiveness and use for common-law rights)
U.S. Search, LLC v. U.S. Search.com Inc., 300 F.3d 517 (4th Cir. 2002) (two-prong unfair competition test: protectable mark and likelihood of confusion)
Volkswagen, AG v. Volkswagentalk.Com, 584 F. Supp. 2d 879 (E.D. Va. 2008) (elements for dilution under §1125(c))