JYSK Bed'N Linen v. MONOSIJ DUTTA-ROY
810 F.3d 767
| 11th Cir. | 2015Background
- Jysk Bed’N Linen (By Design) operated an online-shopping site; Monosij Dutta‑Roy was asked in 1999 to register the domain bydesignfurniture.com for Jysk but listed himself as registrant.
- After the parties’ relationship soured, Dutta‑Roy let the registration lapse in April 2012; he re‑registered bydesignfurniture.com on April 20, 2012 and then registered three similar domains on April 26, 2012.
- Jysk demanded transfer; Dutta‑Roy conditioned transfer on payment for alleged work under a disputed partnership agreement, which Jysk rejected.
- Jysk sued under the ACPA (15 U.S.C. § 1125(d)) and other Lanham Act and state‑law claims; the district court issued a preliminary injunction and ordered transfer of the four domain names after finding bad faith registrations, and granted summary judgment on Dutta‑Roy’s counterclaims.
- The Eleventh Circuit considered only the appeal of the injunction (interlocutory) under 28 U.S.C. § 1292(a)(1); it affirmed the injunction and dismissed the attempted appeal of the summary‑judgment ruling for lack of § 1291 jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a re‑registration is a "registration" under the ACPA | Re‑registration falls within the statutory "registers" hook; plain meaning includes re‑register | Re‑registration is merely transfer/continuation of a property right, not a new "registration" under ACPA | Re‑registration counts as a "registration" under the ACPA; Court adopts Third Circuit approach (Schmidheiny) |
| Whether Dutta‑Roy acted with bad faith intent to profit under ACPA factors | Jysk: multiple statutory factors met (no IP rights, no bona fide use, offered to sell, multiple similar names, demand for payment) | Dutta‑Roy: denied bad faith; asserted ownership/legitimate belief or fair use | Court found bad faith (several §1125(d)(1)(B) factors satisfied); safe‑harbor inapplicable |
| Whether preliminary injunction was warranted (irreparable harm, balance, public interest) | Jysk: loss of control, customer confusion, goodwill—irreparable; harms favor injunction; public interest served | Dutta‑Roy: economic claims insufficient; no equitable basis to enjoin him from transferring | Court held irreparable injury shown, balance of harms favors Jysk, public interest not disserved; injunction affirmed |
| Appellate jurisdiction over relief granted (injunction and summary judgment) | Dutta‑Roy: appealed both orders as if final judgment | Jysk: summary‑judgment portion not final; injunctive order reviewable interlocutorily | Eleventh Circuit lacked §1291 jurisdiction to hear appeal of summary judgment; had §1292(a)(1) jurisdiction to review injunction and affirmed it |
Key Cases Cited
- Schmidheiny v. Weber, 319 F.3d 581 (3d Cir.) (re‑registration may qualify as "registration" under ACPA)
- GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir.) (re‑registration is not a new "registration" under ACPA; property‑law view)
- BellSouth Telecomms., Inc. v. MCIMetro Access Transmission Servs., LLC, 425 F.3d 964 (11th Cir.) (standard of review and preliminary injunction factors)
- S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir.) (ACPA purpose to prevent ransom‑style cybersquatting)
- Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (U.S.) (preliminary injunction standard requires likelihood of success on merits)