Mira Holdings, Inc. v. ZoomerMedia, Ltd.Mira Holdings, Inc. v. ZoomerMedia, Ltd.
Case Information
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Chief Judge Philip A. Brimmer Civil Case No. 22-cv-01997-PAB-SP
MIRA HOLDINGS, INC., a Minnesota corporation,
Plaintiff,
v.
ZOOMERMEDIA, LTD., a foreign corporation,
Defendant. _____________________________________________________________________
ORDER _____________________________________________________________________
This matter comes before the Court on Defendant’s Motion to Dismiss Plaintiff’s First Amended Complaint for Failure to State a Claim Pursuant to Fed. R. Civ. P. 12(b)(6) [Docket No. 33]. Plaintiff Mira Holdings, Inc. (“Mira”) did not file a response to defendant ZoomerMedia, Ltd.’s (“ZoomerMedia”) motion. [1] The Court has jurisdiction under 28 U.S.C. § 1331.
I. BACKGROUND [2]
For nearly ten years, Mira has been in the business of registering domain names for purposes of leasing and selling, as well as using the domain names for email services. Docket No. 28 at 4-5, ¶¶ 8, 10-11. Mira has accumulated over 1,000 generic domain names for these purposes. Id . at 4, ¶ 10. On December 14, 2019, Mira purchased the domain name “IDEACITY.COM” for $2,556 and registered the domain with the registrar NameBright.com, LLC (“NameBright”). Id . at 2, 4, ¶¶ 3, 9. Mira did not provide false contact information when applying for registration of the domain name. Id . at 8, ¶ 25. Mira has “parked” IDEACITY.COM with monetizer entities since acquisition. Id . at 4, ¶ 9. Mira has offered the domain name for sale, but has never offered to sell IDEACITY.COM to ZoomerMedia. Id . at 8, ¶ 22.
ZoomerMedia is a Canadian company. Id . at 2, ¶ 5. ZoomerMedia owns a Class 41 United States trademark for “IdeaCity,” which is limited to “educational services, namely, conducting seminars and conferences in the fields of technology, entertainment and design namely, art, architecture and product design.” Id . at 5, ¶ 12. Mira has not utilized the domain name IDEACITY.COM in the area of educational services. Id .
On June 8, 2022, ZoomerMedia filed a complaint against Mira with the Canadian International Internet Dispute Resolution Centre (“CIIDRC”), in accordance with the Uniform Domain Name Dispute Resolution Policy (“UDRP”). . at 6, ¶ 13. The complaint, related to the IDEACITY.COM domain name, initiated an arbitration proceeding. . On June 10, 2022, in accordance with UDRP procedures, NameBright locked the IDEACITY.COM domain name, prohibiting Mira from utilizing the domain name. Id . ZoomerMedia informed the CIIDRC panel that Mira’s use of the domain name “create[ed] the possibility of confusion with [ZoomerMedia’s] mark.” Id . at 11, ¶ 35. On July 29, 2022, the CIIDRC panel ruled in favor of ZoomerMedia and ordered the transfer of the domain name to ZoomerMedia. Id . at 6, ¶ 14; see also Docket No. 28-1 (CIIDRC decision attached to the amended complaint). The domain name is still locked, pending transfer of the registration to ZoomerMedia. Docket No. 28 at 6, ¶ 14.
Mira “did not have any intent to divert customers” from ZoomerMedia’s online sites to IDEACITY.COM. Id . at 8, ¶ 24. Mira would like to use the IDEACITY.COM domain name in the future for a domain name marketplace. . at 5, ¶ 12. Mira states that it would file for a trademark in a different class than ZoomerMedia’s trademark. .
II. LEGAL STANDARD
To survive a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil
Procedure, a complaint must allege enough factual matter that, taken as true, makes
the plaintiff’s “claim to relief . . . plausible on its face.”
Khalik v. United Air Lines
, 671
F.3d 1188, 1190 (10th Cir. 2012) (citing
Bell Atl. Corp. v. Twombly
,
“[W]here the well-pleaded facts do not permit the court to infer more than the
mere possibility of misconduct, the complaint has alleged – but it has not shown – that
the pleader is entitled to relief.”
Ashcroft v. Iqbal
,
III. ANALYSIS
The amended complaint asserts claims for declaratory relief under 28 U.S.C. § 2201 and injunctive relief under 15 U.S.C. § 1114(2)(D)(v). Docket No. 28 at 9-13. ZoomerMedia moves to dismiss the amended complaint in its entirety, arguing that Mira has failed to plead facts supporting these two claims and that Mira additionally cites various statutes that are “entirely inapplicable” to this case. Docket No. 33 at 2, 4-5.
A. Second Claim – Injunctive Relief under 15 U.S.C. § 1114(2)(D)(v) Mira’s second cause of action asserts a claim for injunctive relief under 15 U.S.C.
§ 1114(2)(D)(v). Docket No. 28 at 12-13. The Anti-Cybersquatting Consumer
Protection Act (“ACPA”) provides some protection to domain name registrants against
“overreaching trademark owners.”
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento
De Barcelona
,
[a] domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
15 U.S.C. § 1114(2)(D)(v);
see also Barcelona
,
To state a claim under § 1114(2)(D)(v), a plaintiff must demonstrate that (1)
plaintiff “registered a domain name;” (2) “the domain name was suspended, disabled, or
transferred under a policy implemented by a domain name registrar;” (3) the defendant
had notice of the action; and (4) plaintiff’s “registration or use of the domain name [is]
not unlawful under this chapter.”
Dent v. Lotto Sport Italia S.p.A
.,
To establish the fourth element, that the use or registration of the domain name
is not “unlawful,” a plaintiff must prove either that “(1) it did not register, traffic, or use a
domain name that is identical or confusingly similar to a distinctive mark, or (2) it did not
have a bad faith intent to profit from that mark.”
Domain Vault LLC v. Bush
, No. 14-cv-
02621-WJM-CBS,
(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; (VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; (VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous.
15 U.S.C § 1125(d)(1)(B)(i)(I)-(IX).
ZoomerMedia argues that the amended complaint states in a conclusory manner that Mira did not register the domain name with the bad faith intent to profit. Docket No. 33 at 12. ZoomerMedia asserts that Mira fails to allege that it owns trademark rights in “IDEACITY,” that Mira is commonly known as “IDEACITY,” or that it had any actual prior use of the domain name in connection with the bona fide offering of goods or services. Id . at 13. Additionally, ZoomerMedia argues that the complaint admits that Mira has attempted to sell the domain name. .
The Court finds that the allegations in Mira’s amended complaint are sufficient to
allege that it did not have the bad faith intent to profit from defendant’s trademark. Mira
alleges that it has never offered to sell IDEACITY.COM to ZoomerMedia. Docket No.
28 at 8, ¶ 22;
see also Utah Lighthouse Ministry v. Found. for Apologetic Info. & Rsch
.,
B. First Claim – Declaratory Relief under 28 U.S.C. § 2201 ZoomerMedia argues that Mira’s first claim for relief is unclear and must be dismissed because (1) Mira is not entitled to relief under 15 U.S.C. § 2201; (2) Mira has not pled sufficient facts for declaratory relief under the entire Lanham Act and declaratory relief as to the ACPA is duplicative of Mira’s second claim; and (3) Mira is not entitled to statutory damages under 15 U.S.C. § 1117(d). Docket No. 33 at 4-10. The Court agrees that Mira’s first claim for relief is not clear from the face of the complaint. The Court notes that Mira could have addressed this confusion by filing a response to the motion to dismiss, but seemingly chose not to. However, the Court will evaluate each of defendant’s arguments to determine if the first claim states a plausible claim for relief.
1) Relief under 15 U.S.C. § 2201 ZoomerMedia asserts that Mira is not entitled to relief under 15 U.S.C. § 2201, which is the statutory provision referenced in the caption of Mira’s first claim. . at 5. The caption of the first claim states “Declaratory Relief - 28 U.S.C. § 2201[.] No violation of Anticybersquatting Consumer Protection Act 15 U.S.C. § 2201.” Docket No. 28 at 9. The Court presumes that Mira’s reference to “15 U.S.C. § 2201” is a typographical error because that section of the U.S. Code addresses congressional findings on fire hazards, including death rates and property damage. See 15 U.S.C. § 2201. However, to the extent that Mira asserts a claim under 15 U.S.C. § 2201, the Court agrees with defendants that Mira has not pled any facts suggesting that it is entitled to relief under that provision. Therefore, the Court grants the portion of defendant’s motion requesting dismissal of any claims for relief under 15 U.S.C. § 2201.
2) Declaratory Relief under 28 U.S.C. § 2201 that the Domain Name does not Violate the ACPA or the Lanham Act Despite the typographical error in the first claim for relief, defendant states that Mira’s first claim likely requests declaratory relief under 28 U.S.C. § 2201 that the domain name does not violate the ACPA, 15 U.S.C. § 1125(d), or the Lanham Act. Docket No. 33 at 5, 8. The Court agrees. The first paragraph in the amended complaint states, “[t]his is an action for Declaratory Judgment under 28 U.S.C. § 2201 that Plaintiff’s registration and use of the internet domain IDEACITY.COM does not violate Defendant’s rights under the ACPA, 15 U.S.C. § 1125(d), or otherwise under the Lanham Act, 15 U.S.C. § 1051 et seq .” Docket No. 28 at 1, ¶ 1. Mira’s amended complaint further states that Mira “seeks a determination by this Court that the Plaintiff’s registration and/or use of IDEACITY.COM is not , and has not been in violation of the ACPA and that Plaintiff’s use of the Disputed Domain constitutes neither an infringement, a threat of dilution of Defendant’s trademark, nor a violation of the ACPA.” . at 3, ¶ 6. Accordingly, the Court construes the first claim as a request for declaratory judgment that the domain name does not violate the ACPA or constitute an infringement or threat of dilution of ZoomerMedia’s trademark under the Lanham Act.
Principally, ZoomerMedia argues that Mira is not entitled to a declaratory
judgment pursuant to the entirety of the Lanham Act because Mira has failed to plead
any facts to support the existence of a “case or controversy” regarding trademark
infringement or dilution. Docket No. 33 at 5-6. The Declaratory Judgment Act provides,
“[i]n a case of actual controversy within its jurisdiction . . . , any court of the United
States, upon the filing of an appropriate pleading, may declare the rights and other legal
relations of any interested party seeking such declaration, whether or not further relief is
or could be sought.” 28 U.S.C. § 2201(a). The party seeking a declaratory judgment
must show that there is an “actual controversy” at issue.
Surefoot LC v. Sure Foot
Corp
.,
that the dispute be definite and concrete, touching the legal relations of parties having adverse legal interests; and that it be real and substantial and admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.
MedImmune, Inc. v. Genentech, Inc
.,
The Court finds that the amended complaint establishes an actual controversy
related to trademark infringement or dilution. Although the amended complaint does not
contain any allegations that ZoomerMedia has filed or threatened to file a trademark
infringement claim against Mira,
see generally
Docket No. 28, the Supreme Court in
MedImmune
expressly rejected the notion that a plaintiff must have a “reasonable
apprehension” of an imminent lawsuit to establish an actual controversy.
Sure Foot
Corp
.,
Second, ZoomerMedia argues that Mira’s declaratory judgment claim as to the
ACPA, 15 U.S.C. § 1125(d), should be dismissed because the relief is duplicative of
Mira’s second claim. Docket No. 33 at 8. Courts in this circuit have dismissed
declaratory judgment claims “where a plaintiff seeks declaratory relief that would resolve
the same issues raised by other claims brought in the same action.”
TBL Collectibles,
Inc. v. Owners Ins. Co
.,
The Court finds that Mira’s declaratory judgment claim as to the ACPA serves no useful purpose because the issues will be resolved by Mira’s second claim for reverse domain name hijacking under 15 U.S.C. § 1114(2)(D)(v). Mira’s declaratory judgment claim seeks “a determination by the Court that the Plaintiff’s registration and/or use of IDEACITY.COM is not, and has not been in violation of the ACPA” and a declaration that “Plaintiff is entitled to maintain registration of its Domain Name, IDEACITY.COM.” Docket No. 28 at 3, 11, ¶¶ 6, 37. Mira’s claim for reverse domain name hijacking under 15 U.S.C. § 1114(2)(D)(v) requests a determination by the Court that “the registration or use of the domain name . . . is not unlawful under this Act.” . at 12, ¶ 42. Pursuant to § 1114(2)(D)(v), Mira also requests that the Court grant an injunction for the “reactivation of the domain name or transfer of the domain name back to” Mira. . at 12, 14, ¶ 42. These claims seek identical relief. The Court discerns no reason – and Mira offers none – for issuing a declaratory judgment as to the ACPA when the issues will necessarily be resolved in the context of Mira’s second claim under 15 U.S.C. § 1114(2)(D)(v). Accordingly, the Court grants this portion of defendant’s motion. Mira’s first claim is dismissed without prejudice to the extent that it seeks declaratory relief under 28 U.S.C. § 2201 as to the ACPA.
3) Statutory Damages under 15 U.S.C. § 1117(d) Mira’s first claim alleges that it is entitled to statutory damages under 15 U.S.C.
§ 1117(d). Docket No. 28 at 11, ¶ 39. ZoomerMedia argues that Mira’s claim for statutory damages under 15 U.S.C. § 1117(d) must be dismissed because Mira does not assert an affirmative claim for cybersquatting under 15 U.S.C. § 1125(d)(1). Docket No. 33 at 10. Section 1117(d) provides,
[i]n a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
15 U.S.C. § 1117(d). The complaint does not allege that ZoomerMedia violated 15
U.S.C. § 1125(d)(1).
See generally
Docket No. 28. Moreover, a plaintiff cannot assert
statutory damages for a claim under 15 U.S.C. § 1114(2)(D)(v).
Black v. Irving
Materials, Inc
.,
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED that Defendant’s Motion to Dismiss Plaintiff’s First Amended Complaint for Failure to State a Claim Pursuant to Fed. R. Civ. P. 12(b)(6) [Docket No. 33] is GRANTED IN PART and DENIED IN PART . It is further
ORDERED that any claim for relief under 15 U.S.C. § 2201 is dismissed with prejudice . It is further
ORDERED that the portion of Mira’s first claim seeking declaratory relief under 28 U.S.C. § 2201 as to the ACPA is dismissed without prejudice . It is further
ORDERED that the portion of Mira’s first claim seeking statutory damages under 15 U.S.C. § 1117(d) is dismissed with prejudice .
DATED June 7, 2023.
BY THE COURT: ___________________________ PHILIP A. BRIMMER Chief United States District Judge
Notes
[1] Mira admitted in another filing with the Court that, “[t]here was no need to file a
Response to Defendant’s Second Motion to Dismiss as Plaintiff believed that the Motion
was legally deficient and that the Plaintiff’s First Amended Complaint properly stated
good causes of action.” Docket No. 39 at 2. Despite plaintiff’s failure to respond to the
motion to dismiss, the Court still evaluates the motion on its merits.
See Issa v. Comp
USA
,
[2] The following facts are taken from plaintiff’s amended complaint, Docket No. 28,
and are presumed to be true for the purpose of ruling on defendant’s motion to dismiss.
See Brown v. Montoya
,