Harsco Corporation v. Harscobc.com
1:12-cv-00587
E.D. Va.Oct 1, 2012Background
- Plaintiffs Harsco Corporation and Harsco Technologies, LLC sue the defendant domain harscobc.com under the ACPA seeking transfer of the domain via in rem relief.
- Domain registration for harscobc.com occurred March 25, 2012 with registrant identity obscured, preventing identification of registrant.
- Plaintiffs published notice pursuant to court order after sending first-class and email notice, but registrant did not respond.
- Plaintiffs own HARSCO marks and have used them in commerce since 2005; the HARSCO domain is harsco.com.
- Defendant domain uses the name Harsco Consulting and hosts a site with solicitations and an email address linked to the domain.
- Magistrate Judge recommends default judgment and transfer of the domain to Harsco Technologies, LLC.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Bad faith intent to profit under ACPA | Harsco alleges registrant lacked rights, prior use, or fair use, and used marks for commercial gain. | Not explicitly stated, but registrant argues domain use does not infringe or lack bad faith contention. | Registrant had bad faith intent to profit. |
| Distinctiveness of plaintiffs' marks under 1125(c) | Harsco marks are distinctive and used since 2005; marks are suggestive. | Not explicitly stated, but challenges use of marks in domain. | Marks are distinctive. |
| Likelihood of confusion / similarity between domain and marks | Domain is nearly identical to plaintiffs' site, with only 'bc' added, creating confusion and implying affiliation. | Not explicitly stated, but argues domain does not infringe. | Domain is confusingly similar to plaintiffs' marks. |
| entitlement to transfer domain under 1125(d)(2)(D)(i) | Transfer is proper due to bad faith registration and infringing use. | Domain owner would contest transfer, though specifics not stated. | Plaintiff entitled to transfer of the domain to Harsco Technologies, LLC. |
Key Cases Cited
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (bona fide noncommercial or fair use considerations under ACPA)
- Venetian Casino Resort, LLC v. venetiangold.com, 380 F. Supp. 2d 737 (E.D. Va. 2005) (distinctiveness and suggestive marks; ACPA analysis)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (distinctiveness and suggestive nature of marks)
- Ryan v. Homecomings Fin. Network, 253 F.3d 778 (4th Cir. 2001) (default admits facts; standard for default judgment)
- DIRECTV, Inc. v. Rawlins, 523 F.3d 318 (4th Cir. 2008) (default has effect of admitting factual allegations)
- Nishimatsu Constr. Co. v. Houston Nat’l Bank, 515 F.2d 1200 (5th Cir. 1975) (default judgment standards; consideration of allegations)