350 So.3d 1068
Miss.2022Background
- Between Dec. 30, 2017 and Aug. 7, 2018 Jonathan Carr registered five domains using “Mississippi” and “Lottery” (e.g., mslottery.com; mississippilottery.com).
- The Mississippi Lottery Corporation (MLC) was created in 2018; it later obtained state marks and (during the litigation) federal trademark registrations for “Mississippi Lottery” and “Mississippi Lottery Corporation.”
- MLC filed a UDRP complaint; the panel ordered transfer of the five domains to MLC. Carr sued in Harrison County seeking declaratory/injunctive relief for reverse domain-name hijacking; MLC counterclaimed under the ACPA and state law.
- A consolidated hearing/trial on injunctive relief resulted in a permanent injunction ordering Carr to transfer the five domains and cease commercial use of the marks. Carr’s motions to amend, to dissolve/modify the injunction, and for a new trial were denied.
- Carr appealed; the Mississippi Supreme Court affirmed—holding the MLC satisfied the ACPA elements (valid/distinctive mark, confusingly similar domains, Carr’s registration/use, and bad-faith intent to profit) and that injunctive relief was proper.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1. Whether the trial court erred by granting a permanent injunction under the ACPA | Carr: MLC lacked a distinctive mark at time of registration; his use was fair, noncommercial, and protected by the First Amendment | MLC: Had protectable rights (state + later federal registrations), domains were confusingly similar, and Carr acted in bad faith to profit or interfere | Affirmed: Court found MLC’s mark protectable/distinctive, domains confusingly similar, Carr acted in bad faith, and injunction was warranted |
| 2. Whether consolidation of the preliminary-injunction hearing with a trial on the merits deprived Carr of rights | Carr: Consolidation bypassed jury protections and summary-judgment safeguards | MLC: Consolidation under Miss. R. Civ. P. 65(a)(2) was proper; injunctive relief is equitable (no jury right) | Affirmed: Consolidation was within court’s discretion; no right to jury on equitable injunctive relief |
| 3. Whether denial of leave to amend complaint was an abuse of discretion | Carr: Should be allowed to amend to seek monetary and other relief following consolidation | MLC: Amendment after adjudication of merits was improper and prejudicial | Affirmed: Trial court did not abuse discretion denying leave to amend after ruling on merits |
| 4. Whether denial of motion to dissolve/modify injunction was erroneous | Carr: Changed circumstances and First Amendment considerations warrant dissolution/modification | MLC: Continued risk of confusion and statutory duties justify injunction remaining | Affirmed: Court concluded no error in denying dissolution or modification |
Key Cases Cited
- Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir.) (ACPA purpose and marks may be distinctive before commercial use)
- E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir.) (post-litigation use and evidence of confusion relevant to bad-faith and relief)
- Matal v. Tam, 137 S. Ct. 1744 (U.S.) (unregistered marks can receive statutory protection)
- U.S. Pat. & Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298 (U.S.) (a “generic.com” term can be protectable depending on consumer perception)
- Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190 (9th Cir.) (offering to sell a domain is strong evidence of bad-faith intent to profit)