2:21-cv-00887
D. Ariz.Jun 13, 2022Background
- iFixit (defendant) federally registered the IFIXIT trademark in 2007; plaintiffs (IFIXITUSA LLC and Sarkes Mrkdichian LLC) registered IFIXITUSA.com (2016) and IFIXITUSABUSINESS.com (2020).
- Defendant filed a UDRP proceeding with WIPO in early 2021; a WIPO panel ordered transfer of the domains to defendant in May 2021.
- Plaintiffs filed suit May 18, 2021 asserting (1) a declaratory judgment under the ACPA (§ 1114(2)(D)(v) / § 1125(d)), (2) a declaratory judgment under 28 U.S.C. § 2201, (3) reverse domain name hijacking under § 1114(2)(D)(iv), and (4) an injunction to prevent transfer under § 1114(2)(D).
- Defendant moved to dismiss the second amended complaint under Rule 12(b)(6); the court evaluated distinctiveness and bad-faith pleading under ACPA standards and general pleading doctrine (Twombly/Iqbal).
- Court denied dismissal as to Count One (ACPA declaratory claim), Count Two (§ 2201 declaratory claim), and Count Four (injunction), but granted dismissal as to Count Three (reverse domain name hijacking). Plaintiffs’ request for leave to amend was denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiffs plausibly allege their registration/use is not unlawful under the ACPA (distinctiveness & bad faith) | IFIXIT is descriptive/not distinctive; plaintiffs used domains bona fide and lacked bad-faith intent to profit | Registered trademark is presumed distinctive; complaint lacks specific facts showing lack of bad faith | Denied dismissal — allegations plausibly challenge distinctiveness and allege absence of bad faith (issues for factfinder) |
| Whether the § 2201 declaratory claim is duplicative/inappropriate | Seeks broader remedies (ownership, noninfringement, statute-of-limitations defense) and to resolve actual controversy | Declaratory relief duplicates ACPA remedy and serves no useful purpose | Denied dismissal — court finds § 2201 claim may meaningfully resolve controversies not limited to § 1125(d) |
| Whether reverse domain name hijacking claim was adequately pled under § 1114(2)(D)(iv) (knowing/material misrepresentation that caused WIPO transfer) | Defendant misrepresented consumer confusion, submitted fabricated sales evidence, and omitted material facts (e.g., mark cancellation, prior dealings) | Complaint fails to allege that WIPO based its transfer decision on any knowing/material misrepresentation by defendant | Granted dismissal — plaintiffs failed to plead causation that WIPO’s transfer was based on defendant’s alleged misrepresentations |
| Whether injunction under § 1114(2)(D) to block transfer survives | Seeks reactivation/prevention of transfer pursuant to ACPA injunctive authority | Argues injunctive claim depends on failure of Count One and is otherwise duplicative | Denied dismissal — injunction claim stands because Count One survives |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (establishes pleading plausibility standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (applies plausibility standard to factual allegations and legal conclusions)
- Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (describes ACPA bad-faith factors)
- GoPets Ltd. v. Hise, 657 F.3d 1024 (sets ACPA elements: registration, confusing similarity, bad faith)
- Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190 (discusses weighing of ACPA factors and the permissive use of enumerated factors)
- Cousins v. Lockyer, 568 F.3d 1063 (construe complaint in plaintiff’s favor on Rule 12(b)(6))
- Kam-Ko Bio-Pharm Trading Co. v. Mayne Pharma (USA) Inc., 560 F.3d 935 (declaratory judgment may be appropriate even when other remedies exist)