150 F. Supp. 3d 287
S.D.N.Y.2015Background
- Plaintiff New World Solutions, Inc. (NWS) claims NameMedia registered and used the domain newworldsolutions.com (registered March 26, 2005) to dilute its mark, cybersquat, and engage in deceptive/false advertising under NY law. NWS alleges use of the mark since 2004 but has little documentary proof.
- NameMedia is a domain investor/operator that monetizes holding pages and did not know of NWS when it registered the domain; NWS first contacted NameMedia in 2010 seeking a price.
- NWS filed a USPTO application on June 28, 2010 claiming first use in commerce as of June 21, 2007; registration issued Feb 15, 2011.
- Significant discovery disputes: the court struck (in whole or part) multiple late-filed exhibits and excluded Coyne’s declaration for failure to appear for deposition; parts of NWS’s Neal testimony and exhibits were also excluded.
- On cross-motions for summary judgment, the court granted NameMedia summary judgment on NWS’s federal dilution, ACPA (cybersquatting), and NYGBL claims, denied NWS’s motion on NameMedia’s counterclaims for cancellation/declaratory relief, and denied NameMedia’s request to declare the case “exceptional.”
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Federal trademark dilution (FTDA/TDRA) — was NWS’s mark "famous" at time of domain registration (2005)? | NWS contends long use since 2004 and marketing supports fame/distinctiveness. | NameMedia argues no documentary evidence of fame or even use in 2005; fame is a high bar. | Court: Mark was not shown to be "famous" in 2005; summary judgment for NameMedia on federal dilution. |
| Cybersquatting (ACPA) — bad faith intent and senior use/distinctiveness at registration | NWS contends NameMedia registered domain to divert traffic/monetize and NWS had prior rights. | NameMedia: NWS lacked evidence of prior use in 2005; no bad‑faith intent to profit from a preexisting mark. | Court: NWS failed to show use/ownership in 2005 or NameMedia’s bad faith; summary judgment for NameMedia on ACPA claim. |
| NY General Business Law §§ 349/350 (consumer‑oriented deception/false advertising) | NWS alleges NameMedia’s holding page and keyword practices mislead consumers and harm NWS. | NameMedia: Claims are not consumer‑oriented or materially misleading; harm is ordinary trademark injury. | Court: NWS abandoned/failed to prove consumer‑oriented, public harm beyond trademark injury; summary judgment for NameMedia. |
| NameMedia counterclaims under 15 U.S.C. §§ 1119 and 1120 (cancel registration; damages for false procurement) | NameMedia alleges NWS made false statements to USPTO about prior use and seeks cancellation and damages. | NWS argues it used the mark by 2007 and denies fraudulent procurement. | Court: Material issues of fact remain about use and materiality of omissions; cross‑motions denied as to these counterclaims (no summary disposition). |
| Exceptionality / attorneys’ fees under Lanham Act § 1117(a) | NameMedia seeks fees, arguing NWS prosecuted suit in bad faith and without supporting evidence. | NWS disputes bad faith. | Court: Circumstantial evidence of bad faith exists but not sufficient to declare case "exceptional"; fees denied. |
Key Cases Cited
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (discussing federal dilution law and requirements)
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 736 F.3d 198 (2d Cir. 2013) (clarifying TDRA dilution standards)
- Savin Corp. v. Savin Grp., 391 F.3d 439 (2d Cir. 2004) (fame and distinctiveness threshold for dilution)
- Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 (2d Cir. 2000) (ACPA distinctiveness/fame and cybersquatting framework)
- Design Strategy, Inc. v. Davis, 469 F.3d 284 (2d Cir. 2006) (factors for Rule 37 preclusion of untimely discovery evidence)
- Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) ("exceptional cases" and awarding attorneys’ fees under Lanham Act)