Portfolio Recovery Associates, Inc. v. Portfolio Recovery Group, LLC
2:12-cv-00649
E.D. Va.Oct 18, 2013Background
- Plaintiff Portfolio Recovery Associates, Inc. (PRA) owns federal trademark registrations for "Portfolio Recovery Associates/Assoc." and operates portfoliorecovery.com since 1998.
- Defendant Portfolio Recovery Group, LLC formed in 2010 and operated portfoliorecoverygroup.net, providing debt-collection services similar to PRA.
- PRA sent at least two written cease-and-desist notices; Defendant did not respond and failed to appear in this action. Clerk entered default; PRA moved for default judgment.
- PRA asserted six counts: trademark infringement (Lanham Act § 32), false designation of origin (15 U.S.C. § 1125(a)), cyberpiracy (ACPA § 1125(d)), federal misappropriation (INS theory), Virginia unfair competition (VCPA), and Virginia false advertising.
- The Court treated the Complaint's factual allegations as admitted by default, evaluated legal sufficiency, and granted default judgment in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (Lanham Act §1114) | PRA owns valid registered marks; Def. used a confusingly similar name/website in commerce causing consumer confusion. | (No answer; default) | Granted: PRA alleged all elements; likelihood of confusion found. |
| False designation of origin (15 U.S.C. §1125(a)) | Same elements as §1114; Def.'s use created consumer confusion. | (No answer; default) | Granted: Court applied same test and found claim established. |
| Cyberpiracy (ACPA §1125(d)) | Def.'s domain is confusingly similar and registered/used in bad-faith to profit/divert consumers. | (No answer; default) | Granted: Domain is confusingly similar and bad-faith intent inferred from circumstances. |
| State claims & other remedies (Federal misappropriation; VCPA unfair competition; VA false advertising; remedies including injunction, domain forfeiture, destruction, statutory damages) | PRA sought relief including injunction, cancellation/transfer of domain, turnover/destruction of infringing materials, and up to $100,000 statutory damages. | (No answer; default) | Mixed: Federal misappropriation and VCPA claims denied; VA false advertising granted; permanent injunction, domain cancellation, and turnover/destruction of Defendant-owned materials ordered; plaintiff must submit briefing to quantify damages. |
Key Cases Cited
- Rosetta Stone Ltd. v. Google Inc., 676 F.3d 144 (4th Cir.) (likelihood-of-confusion elements under Lanham Act)
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir.) (elements for §1125(a) claims mirror §1114)
- People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir.) (ACPA/domain-name bad-faith and confusion standards)
- Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir.) (ACPA bad-faith factors and totality approach)
- Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir.) (consideration of circumstantial indicia in ACPA bad-faith analysis)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S.) (standards for permanent injunctions)