376 F. Supp. 3d 1322
N.D. Ga.2019Background
- Plaintiff Dar Thompson, a mayoral candidate, sued five anonymous registrants under the Anticybersquatting Consumer Protection Act (ACPA) after discovering the domain "dar4ptc.com" had been registered by others; he alleges the phrase "dar4ptc" is his trademark.
- Thompson attempted early discovery from GoDaddy and filed successive complaints and amendments; the Court previously quashed a subpoena and denied early discovery for failure to show entitlement to relief.
- The operative pleading is Thompson's second amended complaint. Defendants moved to dismiss for failure to state a claim and moved for sanctions; Thompson moved to strike a late reply.
- Central factual dispute: timing of Thompson’s public use of the phrase "dar4ptc" relative to the defendants’ domain registration on July 15, 2017.
- The Court found Thompson did not use the mark publicly before defendants registered the domain and thus lacked enforceable common-law trademark rights at the time of alleged cybersquatting.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ACPA requires use of a mark at time of domain registration | Thompson: statute requires only distinctiveness at time of registration, not actual use | Defendants: ACPA requires an existing mark, which for common-law marks requires prior use | Court: For common-law marks, plaintiff must have used the mark (i.e., acquired enforceable rights) at the time of registration |
| Whether Thompson owned a protectable mark when domains were registered | Thompson: "dar4ptc" was distinctive and associated with his campaign | Defendants: Thompson had not publicly used the mark before registration | Court: Thompson did not use the mark before registration, so no protectable right then; claim dismissed |
| Recoverability for pre-ownership infringement | Thompson: (implicitly) may vindicate distinctive mark even if use occurred later | Defendants: cannot sue for infringement occurring before plaintiff acquired rights | Court: Trademark infringement claims generally cannot be based on acts before plaintiff acquired the mark; no standing for pre-ownership injury |
| Sanctions and procedural objections | Defendants: counsel multiplied proceedings by relying on Court's earlier factual statement; seek sanctions | Thompson: disputes misconduct; seeks to strike late filing | Court: denied sanctions (no causal link) and denied motion to strike (no prejudice) |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard requires factual content that permits plausible inference of liability)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for Rule 12(b)(6))
- BedRoc Ltd., LLC v. United States, 541 U.S. 176 (2004) (statutory interpretation begins and ends with text when unambiguous)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (inherent distinctiveness analysis)
- FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071 (11th Cir. 2016) (trademark rights arise from use in commerce)
- Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018 (11th Cir. 1989) (common-law trademark rights acquired only through actual prior use)
- Jysk Bed'n Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015) (discussing causes of action when domains are re-registered)
- Peterson v. BMI Refractories, 124 F.3d 1386 (11th Cir. 1997) (standard for sanctions under 28 U.S.C. § 1927 requires causal link between counsel misconduct and multiplication of proceedings)