Wecosign, Inc. v. IFG Holdings, Inc.
845 F. Supp. 2d 1072
C.D. Cal.2012Background
- Plaintiff Wecosign owns the service mark 'Wecosign' and operates a related web presence offering financial services under that mark.
- Defendants, including IFG Holdings, ACG, Adams, Williams, Avila, Jones, Miller, and Walker, engaged in domain registrations and internet advertising using marks confusingly similar to Wecosign.
- Plaintiff alleges the Defendants used domains and websites to solicit customers and divert traffic, falsely implying affiliation with Plaintiff.
- Defaults were entered against six Defendants; Adams and IFG answered but did not defend, leading to a default-judgment posture against the others.
- Court grants in part and denies in part the motion for default judgment, deferring decision on lost profits, and grants a preliminary injunction subject to specific limitations.
- Plaintiff seeks injunctive relief, actual and statutory damages, attorneys’ fees, and costs; the court awards statutory damages and attorneys’ fees but defers lost profits evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Liability for trademark infringement and related claims | Plaintiff shows likelihood of confusion via Sleekcraft factors. | Defendants contest extent of confusion and may challenge causation. | Liability established; default on infringement, false designation of origin, and unfair competition claims. |
| Cyberpiracy domain-name infringement | Domain 'wecosignusa.eom' is confusingly similar and registered in bad faith. | Defendants dispute bad-faith intent or sufficiency of evidence. | Plaintiff entitled to default judgment on cyberpiracy claim. |
| RICO liability and conspiracy | Predicate acts alleged include wire fraud and counterfeit services trafficking. | Wire fraud not properly alleged as a RICO predicate; claims fail to show pattern. | RICO and RICO conspiracy claims not established; no default judgment on those claims. |
| Damages and remedies, including lost profits and trebled damages | seeks lost profits, disgorgement of profits, treble damages, and injunctive relief. | Plaintiff cannot double-recover and must prove lost profits with reasonable certainty. | Disgorgement of profits allowed; lost profits deferred pending additional evidence; statutory damages awarded; attorneys’ fees awarded. |
| Permanent injunction and costs | Permanent injunction is appropriate to prevent ongoing infringement. | Not expressly stated; defenses likely focus on scope and enforceability. | Preliminary permanent injunction granted with most terms; costs to be taxed; Bill of Costs to be submitted. |
Key Cases Cited
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (Sleekcraft factors guide likelihood of confusion in trademark cases)
- Eitel v. McCool, 782 F.2d 1470 (9th Cir. 1986) (seven-factor test for default judgment suitability)
- Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175 (9th Cir. 1988) (congruence of state unfair competition with Lanham Act claims)
- DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213 (9th Cir. 2010) (bad-faith domain registration factors under § 1125(d))
- Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007 (9th Cir. 1994) (double recovery concerns for lost profits and disgorgement under Lanham Act)