205 F.Supp.3d 305
E.D.N.Y2016Background
- Plaintiff Scott Stephens, a California domain-name reseller, registered trumpestates.com in 2004 and has continuously maintained it; he listed the domain for sale online.
- Trump (and related defendants) filed a WIPO UDRP complaint in March 2015; a WIPO panel ordered transfer of the domain in May 2015, finding confusing similarity to the TRUMP mark, lack of registrant rights, and bad-faith use.
- Stephens filed this federal suit in April 2015 asserting New York common-law claims for defamation and tortious interference and seeking declaratory relief that his registration did not violate trademark law, UDRP, or WIPO rules; he did not plead an ACPA claim.
- Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim; the court considered the complaint, parties’ submissions, the WIPO decision, and publicly available website content.
- The court found (1) the defamation claim inadequately pleaded and substantively barred because Stephens republished the allegedly defamatory statements on his own site; (2) the tortious-interference claim failed for lack of any identified third-party business relationship; (3) the broad declaratory-judgment requests were insufficiently specific and ACPA/UDRP-related declaratory relief was implausible given pleaded facts (including indicia of bad faith); and (4) amendment would be futile.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Defamation — adequacy and substance | Stephens alleges defendants made false statements that harmed his reputation (e.g., he was violating the law and cybersquatting). | Defendants argue pleading lacks who/when/to whom; moreover Stephens republished the same statements on his site, negating a defamation claim. | Dismissed: pleading inadequate; claim substantively barred because plaintiff republished the disputed statements. |
| Tortious interference with business relations | Stephens asserts defendants interfered with his business relations intending harm. | Defendants contend no specific third-party business relationship is identified, so claim fails as a matter of law. | Dismissed: fatal failure to identify any specific third-party relationship or interference. |
| Declaratory judgment re: trademark/UDRP/ACPA liability | Stephens seeks declarations that his registration did not violate federal trademark law, UDRP, or WIPO rules. | Defendants say claims are vague, lack concrete disputed provisions/facts, and pleaded facts (sale-for-profit/reseller business, WIPO decision) show likely bad faith under ACPA/UDRP. | Dismissed: complaint fails Rule 8 specificity and does not plausibly state an ACPA/UDRP-based declaratory claim. |
| Leave to amend | Stephens alternatively requested leave to amend to cure defects. | Defendants oppose; argue amendment would be futile and plaintiff gives no specifics on proposed cures. | Denied: amendment would be futile and plaintiff did not specify how to cure deficiencies. |
Key Cases Cited
- Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2d Cir.) (UDRP/cybersquatting background and domain-name concepts)
- Virtual Countries, Inc. v. Republic of S. Africa, 300 F.3d 230 (2d Cir.) (ICANN/UDRP context)
- Storey v. Cello Holdings, L.L.C., 347 F.3d 370 (2d Cir.) (UDRP and administration of domain-name disputes)
- Web-adviso v. Trump, 927 F. Supp. 2d 32 (E.D.N.Y.) (domain-name confusing-similarity analysis involving TRUMP mark)
- Ashcroft v. Iqbal, 556 U.S. 662 (plausibility pleading standard)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading must be plausible and provide fair notice)
- Chandok v. Klessig, 632 F.3d 803 (2d Cir.) (elements of defamation under New York law)
- DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104 (2d Cir.) (pleading specificity and consideration of incorporated documents)
- Scutti Enters., LLC v. Park Place Entm't Corp., 322 F.3d 211 (2d Cir.) (elements of tortious interference)
- Lombard v. Booz-Allen & Hamilton, Inc., 280 F.3d 209 (2d Cir.) (tortious-interference standard)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (declaratory judgment requires an actual, concrete controversy)
- TechnoMarine SA v. Giftports, Inc., 758 F.3d 493 (2d Cir.) (leave to amend may be denied if amendment would be futile)