OPINION AND ORDER
Plaintiff New World Solutions, Inc. (“NWS” or “Plaintiff”) brings this Action against Defendant NameMedia, Inc. (“Na-meMedia” or “Defendant”).
The Parties have filed Cross Motions for Summary Judgment. (See Dkt. Nos. 68, 76.) Specifically, NameMedia moves for
I. Background
A. Facts
1. The Parties
In this Action, NWS describes itself as a “staffing company” whose employees “[t]ypically” provide technology consulting services. (Videotaped Examination of David Shaun Neal (“Neal Tr.”) 21-22.)
In the First Amended Complaint, Plaintiff alleges that it is a Wyoming Corporation that “provides business services to large, multinational corporations worldwide and has done so since June of 2004.” (FAC ¶¶ 3, 7.) It is undisputed, however, that “[t]here is no documentary evidence in the record that any purported predecessor-in-interest to Plaintiff existed prior to 2007.” (Def.’s Rule 56.1 Statement of Material Facts Not in Dispute in'Supp. of Its Mot. for Summ. J. (“Def.’s 56.1”) ¶29 (Dkt.
Defendant contends that “[t]here is no evidence identifying ownership of either the 2007 Delaware Entity or the .2010 Wyoming Entity, or that any assets were transferred from the 2004 ‘d/b/a/’ to the 2007 Delaware Entity, or from the 2007 Delaware Entity to the 2010 Wyoming Entity.” (Def.’s 56.1 ¶ 35.) Plaintiff disputes this. (PL’s 56.1 ¶ 35.) Plaintiff’s account of its history and activities — which is strongly contested by Defendant — proceeds as follows: beginning in 2004,' a “d/b/a” run jointly by Neal and Coyne (the “d/b/a entity”) “performed ... services” using the name “New World Solutions.” (See Neal Tr. 27-28; see also Decl. of David Shaun Neal in Supp. of PL’s Mem. of Law in Opp’n to Def.’s Mot. for Summ. J. and in Supp. of Pl.’s Mem. of Law for Summ. J. (“Neal Decl.”) ¶ 40 (Dkt. No. 79) (stating that between 2004 and the date of his declaration, Neal was employed full time at NWS).) Coyne and Neal split the revenues from the d/b/a entity. (Neal Tr. 91.) Although Coyne claims that his “business activities with ... Neal commenced in early 2004 and continued until late 2012, [when he] transferred all of [his] interest in [NWS] to ... Neal,” he cites to nothing in the record to support this assertion, and in particular that he had business activities with Neal in 2004. (Decl. of Robert F. Coyne in Supp. of PL’s Mem. of Law in Opp’n to Def.’s Mot. for Summ. J. and in Supp. of PL’s Mem. of Law for Summ. J. (“Coyne Decl. I”) ¶ 10 (Dkt. No. 78).)
NWS has no documentary, evidence that establishes the existence of the d/b/a entity, or its promotional activities, services, or revenues, allegedly because Neal had a “simultaneous failure of the primary and the secondary hard drive” on his computer in 2007 and because Plaintiff was unable to locate any documents relating to the d/b/a entity or its- activities by any other means. (See Neal Tr. 28-29, 32, 37-38, 143-45, 147-49, 159.) However, Neal testified that the d/b/a entity engaged in marketing activities, which consisted of (1) “one-on-one sales techniques,” which means that Coyne and Neal “cold call[ed]” and e-mailed potential clients, and (2) sending promotional postcards to a mailing list obtained from a company called American Business Lists. (Id. at 31-32.) .Neal also testified that he recalled three clients of the d/b/a entity in 2004, namely “Merrill Lynch ... a real estate company in Arizona ;.. [and] an institutional foreign exchange trader.” (Id. at 36-37.) Moreover, although Neal stated in his deposition that NWS’s revenue figures were “a few hundred thousand” in 2004, “over a -million,” in 2005-06, and “about a million and a half to 2 million a year” in 2007-12, Neal has testified that he. does not have any documents to support
The “original legal entity” for NWS was created on March 26, 2007, when Coyne allegedly incorporated New World Solutions, Inc. as a Delaware C Corporation. (Neal Tr. 27; see also Schwimmer Decl. I Ex. 11; Coyne Decl. I ¶ 3; id. at Ex. 1.) Coyne dissolved the 2007 Delaware Entity-on July 12, 2010 and transferred all of its assets and liabilities, including all. of the rights to'the trade name New World Solutions, to the 2010 Wyoming Entity, which was formed on May 25, 2010. (Coyne Decl. I ¶¶ 5, 7-9; id. at Exs. 2-3.) Coyne and Neal each owned 50% of the Delaware and Wyoming entities, but on December 6, 2012, Coyne transferred to Neal the entirety of his interest in NWS so that, at present, Neal is the'“managing partner” and “sole shareholder” of NWS. (Neal Decl. ¶¶ 1-2; Coyne Decl. I ¶¶4, 6, 10.) Coyne does not cite to anything in the record to support this transfer. Neal states that he “determined that [he] possesses] evidence of ownership of New World Solutions, Inc[.] (DE), New World Solutions, Inc[.] (WY)[,] and the transfers of ownership between [himself] and ... Coyne which occurred during the relevant time of this [A]ction.” (Neal Decl. ¶ 41.) Neal also states that he “testified that ... Coyne possesses th[e]se records, however [he does] not believe that any request was made by [Defendant to ... Coyne for any records.” (Id. ¶ 41.) In other words, there yet again are no documents that support Coyne’s or Neal’s statements.
NameMedia is a Delaware Corporation with headquarters in Waltham, Massachusetts. (FAC ¶ 4.) NameMedia offers a marketplace for purchase and sale of domain names by and for others and also purchases and sells domain names for its own accounts. (Def.’s 56.1 ¶ 72; Pl.’s 56.1 ¶ 72; Schwimmer Decl. I ¶ 42; Decl. of Erik S. Zilinek, Esq. in Supp; of Def.’s Mot. for Summ. J. (“Zilinek Decl. I”) ¶ 5 (Dkt. No. 70).).Although NameMedia states that its “policy is to register and maintain only those domain names that incorporate common words or phrases, descriptive terms, and/or words to which NameMedia considers no single party ha,s exclusive rights, if any,” (Def.’s 56.1 ¶ 73; Zilinek Decl. I ¶3), Plaintiff disputes this, noting that despite its requests, Defendant provided no evidence of this policy, (Pl.’s 56.1 ¶ 73). Na-meMedia “monetizes” some of its domain names by displaying Google AdWords and advertisements, links to Google ads on a holding .page, and solicitations for offers to purchase its domain names. (Def.’s 56.1 ¶ 74; PL’s 56.1 ¶ 74;/ Zilinek Decl. I ¶ 6; Schwimmer Decl. I ¶43.) NameMedia’s website states: ‘We start with our inventory óf more than 900,000 domains — the single largest portfolio of domain names for sale.” (PL’s 56.1 ¶81; Def.’s Rule 56.1(B) Counter Statement to PL’s Rule 56.1(A) Statement-of’Material Facts Not in Dispute in Supp. of PL’s Cross-Mot. for Summ. J. (“Def.’s Reply 56.1”) ¶81 (Dkt. No. 92); Neal Decl. "¶ 44; id. at Ex. 19.)
According to Defendant it “uses a method known as' ’robot exclusion’ to prevent indexing of its holding pages by search engines.” (Def.’s 56.1 ¶¶ 9, 75; Zilinek Decl. I ¶4.) Plaintiff disputes this and claims, instead, that Defendant encourages search engines to crawl its sites. (PL’s 56.1 ¶¶ 9, 75, 80; Neal Decl. ¶¶ 7-11.) Defendant, in turn, claims that it would be cost prohibitive for NameMedia to crawl for keywords in the manner and for the purpose that Plaintiff allfeges and would put it out of business. (Def.’s Reply 56.1 ¶ 80.) Plaintiff further points out that there is no evidence in the record to establish that Defendant conducts any bona fide business in the name of New World Solutions or in the name of the approximately 1,000,000 other
2. The Domain,Name
On March 26, 2005, NameMedia registered the Domain Name. ([Deri’s 56.1 ¶ 7; PL’s 56.1 ¶ 7; Schwimmer Decl. I ¶ 3; id. at Ex. 1.) When NameMedia registered the Domain Name, it was unaware,of NWS, (Deri’s 56.11Í8; PL’s 56.1 ¶8; Zilinek Decl. I ¶ 9), and indeed it is undisputed that the first time NameMedia learned of NWS’s existence was on June 28, 2010, when Neal contacted NameMedia seeking a price quote for the Domain Name, (Def.’s 56.1 ¶ 10; PL’s 56.1 ¶ 10; Zilinek Decl. I ¶11). NameMedia claims that “in approximately 2006, [it] searched its entire portfolio of nearly one million domain names to ensure that it had not registered domain names that infringed upon any third party’s exclusive rights in or to words or .phrases that were incorporated into said domain names,” and that the search “did:not.iden- ■ tify any party who could assert rights in or to the NEW; , WORLD SOLUTIONS mark.” (Def.’s 56.1 ¶ 12; Zilinek Decl. I ¶ ,9.) Plaintiff disputes this, explaining that NameMedia “has failed to enter any evidence into the record of any such ’search’ it ever performed and has failed to specify what methodology was applied and how it determined that the mark newworldsolu-tions was noninfringing.” (PL’s 56.1 ¶ 12; Kossar Decl. ¶ 9.)
Moreover, while NameMedia maintains that it did not register the Domain Name with the intent to disrupt NWS’s business, to keep NWS from having a domain name that incorporates its purported trademark, or to confuse customers seeking to find NWS’s website, (Deri’s 56.1 ¶ 11; Zilinek Decl. I ¶ 10), Plaintiff claims that Na-meMedia employs “optimization” of its domain names “specifically designed to divert traffic, and confuse consumers,’’ (PL’s 56.1 ¶ 11; Kossar Decl. ¶ 4; Neal. Tr. 119-29, 325-336); The Parties do "not dispute that “[c]urrently, as well as at all times since NameMedia registered the Domain Name, the website to which the Domain Name resolves ■ displays keyword advertisements.” (Deri’s 56.1 ¶ 12;' PL’s 56.1 ¶ 12.) Plaintiff also points out that while the record is devoid of any proof that Defendant provides any bona fide goods or services in relation to “Technology outsourcing,” “Ma-nda outsourcing,” or “technology consulting” under the trade name New World Solutions, on June 29, 2012, the website www.newworldsolutions.com displayed those phrases. (PL’s 56.1 ¶¶ 85-86; Neal Decl. ¶ 5; id. at Ex. 2; Kossar Decl. ¶ 11.) Defendant does not dispute that its website contained' these phrases, but does dispute that it does not offer any of those services. (Deri’s Reply 56.1 ¶¶ 85-86.)
Finally, Plaintiff alleges that “the sole purpose of the registration of the [D]omain [N]ame .. is to divert traffic to the website of ... Defendant.” (Def.’s 56.1 ¶24; PL’s 56.1 ¶ 24; FAC ¶ 16.) Neal testified that after he “started to dig,” it led him to say “oh, [Defendant has] this policy where they look at [NWS], they go to Google or Alta Vista or whatever and find the resulting websites that are top hits for [NWS], and then they go through those links and go to those websites and grab the key words off those websites and put those key words on their own websites.” (Neal Tr. 331-32.) Defendant attempts to summarize
3. NWS’s Interaction with NameMedia
NWS first learned of NameMedia on or about June 21, 2007. (Def.’s 56.1' ¶ 13; PL’s 56.1 ¶ 13; Schwimmer Decl. I ¶ 9; PL’s Resps. to Def.’s First Set of Interrogs. No. 3.) On June 28, 2010, Neal contacted a NameMedia salesperson for the first time, seeking a price quote for the Domain Name. (Defi’s 56.1 ¶ 14; PL’s' 56.1 If 14; Zilinek Deck I ¶ 11.) That same day, Na-meMedia responded by e-mail to Neal, informing him that the Domain Name was for sale at $2,588.00. (Def.’s 56.1 ¶ 15; PL’s 56.1 ¶ 15; Zilinek Decl. I ¶ 12; id. at Ex. B.) Neal did not respond to NameMedia’s email. (Defi’s 56.1 ¶ 16; PL’s 56.1 ¶ 16; Zili-nek Decl. I ¶ 13.)
4. Registration and Use of the Mark
Approximately four hours after Na-meMedia e-mailed Neal its price quote for the Domain Name, Neal filed an.application with .the United States Patent and Trademark Office (the “USPTO”) to register the Mark in the Principal Register. (Defi’s 56.1 ¶ 16; PL’s 56.1 1U6; Zilinek Decl. I ¶ 13; id. at Ex. C.) In its June 28, 2010 Application to the USPTO, NWS described the services it provides as- “[computer hardware and software consulting services; [information technology consultation; [services for maintenance.of computer software; [and] [software .design and development,” and stated that its first use of the Mark, and its first use of the Mark in commerce,, occurred “[a]t least as early as [June 21, 2007].” (Schwimmer Decl. I Ex. 18.) On July 27, 2010, Neal emailed NameMedia, stating that “New World Solutions,- LLC”. had “filed for a Trademark for” the NWS Mark, had used the Mark “in trade ... for a number of years,” and that, upon “final registration” of the Mark, NWS would bring an action against NameMedia for injunctive and -declaratory relief but would “agree to settle th[e] matter out of court for $200 upon transference of the domain to [NWS].” (Defi’s 56.1 ¶ 17; PL’s 56.1 ¶ 17; Zilinek Decl. I ¶ 14; id. at Ex. D.)
On February 15, 2011, the USPTO issued the Mark Registration to Plaintiff. (Def.’s 56.1 ¶ 18; PL’s 56.1 ¶ 18; see also PL’s Resps. to Def.’s First Set of Inter-rogs. No. 10; Zilinek Decl. I ¶ 15; id, at Ex. E.) The USPTO Registration Certificate for “New World Solutions” lists the same services as NWS’s application, and lists June 21, 2007 as the date of the first use of the Mark and the date of the first use of the Mark in commerce. (Def.’s 56.1 ¶ 18; PL’s 56.1 ¶ 18; see also Ziiinek Decl. I ¶ 15; id. at Ex. E.)
On March 18, 2011 — approximately one month after the USPTO issued NWS’s Registration — Coyne emailed NameMedia stating that he was counsel for Plaintiff and asserting that NameMedia’s registration of the Domain Name infringed on NWS’s service mark. (Def.’s 56.1 ¶ 20; PL’s
5. New World Solutions as a Common Name
In its 56.1 Statement, under the heading “’New World Solutions’ is a Common Business Name, Trademark, Service Mark[,] and/or Domain' Name,” Defendant points out that: (i) on February 1, 1996, a New World Solutions, Inc. was incorporated in the State of New York, (Def.’s 56.1 ¶ 59; Ph’s 56.1 ¶ 59; Schwimmer Deck I ¶ 8; id. at Ex. 6), (ii) there is a company named New World Solutions of Fairfax, VA, which has a website at www.newworld solutions.com, (Def.’s 56.1 ¶ 60; Ph’s 56.1 ¶ 60), (iii) there is a company named New World Solutions, Inc. of Huntsville, AL, which has a website at wwwmewworldsoh com, (Defc’a 56.1 ¶ 61; PL’s 56.1 ¶ 61), (iv) there is a company named New World Solutions of Smithtown, NY, which has a website at www.newws.com, (Defi’s 56.1 ¶ 62; PL’s 56.1 ¶ 62), (v) there is a company named New World Solutions of West Kill, NY, (Def.’s 56.1 ¶ 63; PL’s 56.1 ¶ 63), and (vi) there is a company named New World Solutions, LLC, (Def.’s 56.1 ¶64; PL’s 56.1 If 64).
B. Procedural History
On April- 11, 2011,- NWS filed suit against NameMedia in New York State Supreme Court, (Kossar Deck Ex. 1), and NameMedia removed thé Action to this Court on April 22, 2011, (Dkt. No. 1). On April. 3, 2012, NWS filed an Amended Complaint, asserting four claims against NameMedia: (1) federal trademark dilution in violation of 15 U.S.C. § 1125(c), (FAC ¶¶ 22-27); (2) cybersquatting in violation of 15 U.S.C. § 1125(d), (id. ¶¶ 28-33); (3) deceptive acts and false advertising under NYGBL §§ 349 and 350, (id. ¶¶ 34-38); and (4) trademark dilution under NYGBL § 360-1, (id. ¶¶ 39-44). In turn, NameMe-dia asserted two counterclaims against NWS, seeking (1) a declaratory judgment of the invalidity and unenforceability of the Mark Registration pursuant to 15 U.S.C. § 1119, (Def.’s Counterclaims ¶¶ 7-22), and (2) a declaratory judgment' that NWS is liable to NameMedia “for all [ ] damages incurred as a result of Plaintiffs meritless enforcement of [the] [Registration,” pursuant, to 15 U.S.C. § 1120, (id. ¶¶ 23-30). In addition, NameMedia requests an Order pursuant to 15 U.S.C. § 1117(a) declaring this matter to be an “exceptional case,” thereby entitling NameMedia to litigation expenses. (Id. at Prayer for Relief.)
Pursuant to'the Motion Scheduling Order entered by the Court on April 18, 2013, (Dkt. No. 61), Defendant filed its Motion for Summary Judgment and accompanying papers on May 24, 2013, (Dkt. Nos. 68-72), and Plaintiff filed its Cross-Motion for
II. Discussion
A. The Motions To Strike
NameMedia moves to strike several exhibits and portions of declarations that Plaintiff submitted.in its Motion for Summary Judgment. (See Def.’s Notice of Mot. To Exclude and Strike Evid. Pursuant to Fed. R. Civ. P. 37 and 56 (Dkt. No. 87).) Plaintiff, in turn, seeks to strike certain evidence submitted in connection with Defendant’s Motion to Strike. (Pl.’s Notice of Cross-Mot. to .Strike (Dkt. No. 94).)
“Because a decision on the motion to strike may affect [a] movant’s ability to prevail on summary judgment, it is appropriate to consider the Motionfs] [T]o Strike prior to the [Parties’] Motion[s] for Summary Judgment.” Century Pac., Inc. v. Hilton Hotels Corp.,
1. Applicable' Law
a. Rules 26 and 37
Rule 26(a) of the. Federal Rules of Civil Procedure requires parties to provide, among other things, “the name ... of each individual likely to have discoverable information ... that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment.” Fed. R. Civ. P. 26(a)(1)(A)(i). Moreover, parties must provide “a copy — or a description by category and location — of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment.” Fed. R. Civ. P. 26(a)(l)(A)(ii). Under this Rule, “use” includes any use “to support a motion, or at trial.” Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F.R.D. 151, 159 (S.D.N.Y.2003) (internal quotation marks omitted); see also Fleet Capital Corp. v. Yamaha Motor Corp., U.S.A., No. 01-CV-1047,
If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless. In addition to or instead of this sanction, the co.urt, on motion and after giving an opportunity to be heard ... may order payment of the reasonable- expenses, including attorney’s fees, caused by the failure .....
Fed. R. Civ. P. 37(c)(1). “Where.... the nature of the alleged breach of a discovery obligation is the non-production of evidence, a district court has broad discretion in fashioning an appropriate sanction .....” Residential Funding Corp. v. De-George Fin. Corp.,
“The party seeking Rule ' 37 sanctions bears the burden of showing that the opposing party failed to timely disclose information.” Markey,
b. Admissibility
Federal Rule of Civil Procedure 56(c)(4) requires that, in a summary judgment motion, an “affidavit or declaration used to support--or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is
Rule 56(e), in turn, provides that “[i]f a party fails to properly support an assertion of fact ... the court may: (1) give an opportunity to properly support ... the fact; (2) consider the fact undisputed for purposes of the motion; (3) grant summary judgment if the motion and supporting materials .., show.that the mov-ant is entitled to it; or (4) issue any other appropriate order.” Similarly, Rule 56.1(d) of the Local Rules of the United States District Courts for the Southern and Eastern Districts of New York (“Local Rule 56.1”) requires that each assertion made by the movant or opponent in their Rule 56.1 Statements “must'be followed by citation to evidence which would be admissible.” Accordingly, “only admissible evidence” need be considered on summary judgment; in addition, the “principles governing admissibility of evidence do not change on a motion for summary judgment.” Porter v. Quarantillo,
2. Application
á. NameMedia’s Motion to Strike
i. The Coyne Declaration
NameMedia moves to preclude Coyne’s declaration (the “Coyne Declaration”) in its entirety. (Def.’s Mem. in Supp. of Def.’s Mot. to Exclude and Strike Pursuant to Fed. R. Civ. P. 37 and 56 (“Def.’s Strike Mem.”) 15 (Dkt. No. 90).) NameMedia argues that the Court should, pursuant to Rules 37(b)(2) and 37(d), strike all evidence submitted by Coyne because he failed to appear for his deposition and failed to respond to NameMedia’s requests to reschedule that deposition.
Although precluding evidence is a “drastic remedy” that “should be exercised with caution,” DVL, Inc. v. Gen. Elec. Co.,
Turning to whether preclusion of Coyne’s evidence is warranted, the Court finds that the first factor — “the party’s explanation for the failure to comply with the disclosure requirement,” or in this case for his failure to appear for or reschedule
[Y]our allegation that I am in possession of material facts in this matter is completely false. I have virtually no knowledge of the facts in this case whatsoev-er____ As you are already aware my availability as a witness is extremely limited. However I am willing to accommodate your request for examination before trial by way of a telephonic deposition. Alternatively, I will agree to interrogatories in excess of 25 to be served upon me. However, I will reiterate that I have very little knowledge about any of the relevant facts in this matter. Mr, Neal was solely in charge of the registration of this name and the maintenance of the domain name and websites. Mr. Neal was also the primary organizer of all of the marketing that the company engaged in. Finally, Mr. Neal was solely responsible for the pre-incorporation marketing efforts of New World Solutions; therefore I have no testimony whatsoever to offer in that regard____ Given the foregoing, it is unclear to me what purpose any in person deposition would serve as there is ho evidence on the record that I possess any knowledge of material facts.
(Id. at unnumbered 2.) Contrary to the November Fax’s representation, however, the evidence and "-Coyne’s course of conduct in this Action shows that Coyne was intimately involved with NWS and this litigation. Coyne instituted this Action on behalf of NWS and, according to Neal’s testimony, provided the content of the responses to at lea'st some of NameMedia’s interrogatories. (Neal Tr. 67.) Further, evidence submitted by NWS contradicts Coyne’s characterization of his limited role and relevant knowledge — including, Neal’s deposition testimony that Coyne and Neal were both “engaged in” and responsible for the alleged marketing'and business activities of the d/b/a entity, (see id. at 31, 34), Coyne’s declaration that'he was a 50% owner of at least two of the NWS entities and was “associated with” and conducted business activities on behalf of NWS for eight years, (see Coyne Deck I. ¶¶ 4, 6,10, 12), and NWS’s statement that “Coyne has knowledge regarding all claims which are the subject matter of the current litigation,” (PL’s Resps. to Def.’s First Set of Interrogs. No. 18). Additionally, it is worth noting that the November Fax was sent over a month after discovery in this case closed and there is no evidence that NWS requested an extension of the final discovery deadline. Accordingly, the Court finds the representation that Coyne “clearly stated that he would make himself available for a deposition” to be disingenuous at best. (See Ph’s Strike Mem. 2.)
Moreover, there, is no evidence that Defendant received the November Fax. Na-meMedia asserts that it first received the fax on August 2,2013, when Coyne submitted a copy in connection with- NWS’s briefing on the-'motions to strike. (Deck of Martin B. Schwimmer, Esq. in Further Supp. of Def.’s Mot; To Exclude and Strike Pursuant to Fed. R. Civ. P. 37 and 56 and in Opp’n to .PL’s Cross-Mot. To Strike
As to the second factor, although neither Party makes an .explicit argument as to the relative importance of the Coyne Declaration or of the inability of Defendant to depose Coyne due to his failure to appear for a. deposition before the close .of discovery, (see Def.’s Strike Mem. 15-16; Pl.’s Strike Mem. 2), the importance of the Coyne,Declaration and,his absent, deposition testimony are apparent. In his declaration, Coyne describes his involvement in creating and dissolving the 2007 Delaware Entity, creating the 2010 Wyoming Entity, his 50%' ownership in' both' entities, his general involvement in NWS, and his business relationship with Neal. (See generally Coyne Decl. I.) Coyne-attaches exhibits to support these statements. (See id.) This information is clearly relevant to the claims in this Action. Moreover, the importance of Defendants ability to depose Coyne in light of this information is; obvious. For similar reasons,-the third factor-prejudice to NameMedia — weighs in' favor of preclusion. NameMedia had no opportunity prior to the Motions for Summary Judgment to question Coyne about his assertions of fact in his declaration, including his' statements that-he and Neal conducted continuous business activities under the “New World Solutions” mark between 2004 and 2012, (See Coyne Decl. I ¶ 10),- or his statements regarding the alleged continuity between the d/b/a, Delaware, and Wyoming entities, (see id. ¶¶3-9; id. at Exs. 1-3). The third Patterson factor thus cuts strongly in favor of precluding evidence submitted by Coyne. See DVL, Inc.,
. Turning to the fourth factor, NameMe-dia argues that “because the parties are in the middle of the current summary judgment briefing schedule, there is no ‘possibility of a continuance.’” (Def.’s Strike Mem. 16 (quoting Schiller v. City of N.Y., Nos. 04-CV-7922, 04-CV-7921,
Finally, it is worth noting that although preclusion under Rule 37 is warranted in the absence of a finding of bad faith, it is difficult to conceive how NWS’s purported founder, owner, principal, and lawyer could bring this Action and then in good faith fail to appear for a duly noticed deposition, fail to reschedule the same in a timely manner, and disavow that he has knowlr edge of material facts, only to submit a declaration in connection with the Summary Judgment Motions with highly relevant information when there is no possibility, absent the re-opening of discovery, in which he could have been cross-examined on the information that he provides. The Court finds that the only logical inference in light of these facts, in the absence of another explanation,. isr that Coyne’s failure to appear for his deposition was in bad faith, which strengthens the conclusion that this evidence should be precluded. See Design Strategy,
ii. The Neal Exhibits and the Kossar Declaration .
NameMedia also moves to strike Exhibits 1, 2, 4-11 and 17-19 to the Neal Declaration (the “Neal Exhibits”), paragraphs 15 through 30 of the Neal Declaration, and portions , of Exhibit 3 to the Kossar Declaration, which contain the relevant excerpts from Neal’s' Deposition.
a. Neal Exhibits 1 and 2
Neal Exhibits 1 and 2 are screen-shots of the website located at wwwméw worldsolutions.com allegedly accessed by Neal on March 1, 2012 and June 29, 2012, respectively. (Neal Decl. ¶¶4-5; id. at Exs. 1-2.) During discovery, NWS made a single 91-page document production that included only one screenshot of the website located at www.newworldsolutions. com. (See Def.’s Strike Mem. 8-9; Schwim-mer Decl. II ¶ 3.) There is a marked difference in the content displayed on the holding page screenshot produced by NWS in discovery and in the content of Neal Exhibits 1 and 2. (Compare Schwimmer Decl. I Ex. 19, at 00088, with Neal Decl. Exs.1-2.) The former displays as “Related Searches” a miscellaneous array of “New World” phrases, (e.g., “New World Hotel Beijing”), whereat Neal Exhibits 1 and 2 show “Related Searches” primarily related to: debt relief and technology outsourcing. NWS uses -Neal Exhibits 1 and 2;to support its allegation that (-1) NameMedia has engaged in deceptive acts and -false advertising, under ’the NYGBL, and (2)'NameMedia has intentionally diluted trademarks by extracting keywords .from websites returned in searches for keywords relevant to Na-meMedia’s domain names and incorporating, those-keywords into its website. (PL’s Mem. of Law in Opp’n- to Def.’s Mot. for Summ. J. and in Supp, of PL’s Cross-Mot. for Summ. J. (“PL’s Summ. J. Mem.”) 8-9 (Dkt. No. 81).)
Preclusion of these exhibits is warranted. First, NWS offers no convincing explanation for its failure to produce the Neal Exhibits during discovery, despite the fact that Defendant requested documents concerning Internet searches conducted on • behalf of Plaintiff or by Plaintiff concerning the Mark, documents concerning the Domain Name, documents NWS intended to rely upon on the instant Action, all documents supporting Plaintiffs Complaint, and all-documents refuting Defendant’s Answer. (Schwimmer Decl. II ¶¶ 4, 10; see Schwimmer Decl. I Ex. 10
The second factor weighs against preclusion because in general evidence, of a policy to mislead customers and dilute trademarks would have been relevant to establishing Plaintiffs claims, as explained below. Nevertheless, the third factor cuts in favor of preclusion. NameMedia is prejudiced by the post-discovery introduction of Neal Exhibits 1 and 2 because they differ in relevant respects from the holding page screenshot produced by NWS in discovery. Although Plaintiff argues that Defendant is not prejudiced because “Plaintiff is simply using ... Defendant’s own materials to rebut ... Defendant’s own statements,” (Pl.’s, Strike Mem. 2-3), Defendant disputes that the website printouts are its “own materials,” explaining that NameMedia “operates close to a million websites that can change on a frequent basis,” and, therefore, the multiple screenshots are not properly considered its own materials. (Mem. in Further Supp. of Def.’s. Mot. To Exclude and Strike Pursuant to Fed. R. Civ. P. 37 and 56 and in Opp’n to PL’s Cross-Mot. To Strike (“Def.’s Strike Reply”) 15 (Dkt. No. 98).) The Court agrees that the screenshots are not Defendant’s “own materials,” but rather were documents that were in the control and possession of Plaintiff based on websites that Neal accessed on specific days. By producing these documents after the close of discovery, NameMedia did not have an ’ opportunity to question Neal about the exhibits or introduce evidence to refute the conclusions he draws from the exhibits. See 523 IP LLC,
Fourth, as explained above, a continuance is not warranted at this stage of the
b. Neal Exhibits 4-6
Neal Exhibits 4 and 5 are HTML source code, for the www.newworldsolutions.com website, which Neal allegedly accessed on March 1, 2012 and June 25, 2013, respectively. (Neal Decl. ¶¶ 7-10; id. at Exs. 4-5.) Neal Exhibit 6 is a printout from a website of the “W3C org specification regarding the ROBOTS HTML META-TAG,” which Neal allegedly accessed on June 25, 2013. (Neal Decl. ¶ 11; id. at Ex. 6.) NWS relies on Neal Exhibits 4, 5 and 6 to argue that, contrary to its representation otherwise, NameMedia does not use a robot exclusion policy to prevent search engines from indexing their website, but “actually encourages [indexing].” (Pl.’s Summ. J. Mem. 11-12; see also Pl.’s 56,1 ¶ 9.)
The Patterson factors counsel against excluding Neal Exhibits 4, 5,- and 6. First, NWS offers no explanation of its failure to produce Exhibits 4, 5, and 6 during discovery despite its control and possession over those documents and their responsiveness to Defendant’s interrogatories.
c, Neal Exhibits 7-11
"Neal Exhibits 7 and 8 are printouts of webpages from www.smartname.com, which Neal allegedly accessed on Jun¿ 25, 2013 and June 28, 2013, respectively. (Neal Decl. ¶¶ 12-13; id. at Exs. 7-8.) Neal’Exhibit 9 is allegedly the result of Neal’s June 25, 2013 search for “newworldsolu-tions.com” on www.who.is. (Neal Decl. ¶. 14; id. at Ex. 9.) NWS cites Neal Exhib
The Patterson factors counsel in favor of excluding Neal Exhibits 7, 8, 9, 10, and 11 for substantially the same reasons they counsel in favor or excluding Neal Exhibits 1 and 2. In particular, there is no reasonable explanation for failing to produce those Exhibits during discovery, Plaintiff’s explanation as to its need to respond to evidence and/or explanations provided by Zilinek are inapplicable to these exhibits, and NameMedia is prejudiced by its inability to address or take discovery on these exhibits.
d. Neal Exhibits 17-19- .
Neal Exhibits 17 through 19 are allegedly the “result[s]” of Neal’s accessing, on June 27, 2013, the websites at www.new worldsolutions.org, wwwmewworld-solutions.com,. and namemedia.com/our-business/domain-marketplaee/, respectively., (Neal Decl. ¶¶ 42 — 44'; id, at Exs. 17-19.) NWS cites Neal Exhibits 17 and 18 to rebut NameMedia’s assertions that two other organizations named “New World Solutions” maintain websites. (See Def.’s 56.1 ¶¶ 63-64; PL’s 56.1 ¶¶ 63-64.) NWS cites Neal Exhibit 19 as evidence that NameMedia admits that it “traffics in domain names.” (PL’s 56.1 ¶¶ 68, 81.) ,
The Patterson factors counsel against excluding Neal Exhibits 17 and 18. First, NameMedia first alleged the existence and websites of other organizations called “New World Solutions” in its Motion for Summary Judgment,' (see Def.’s 56.1 ¶¶ 59-64), which provides NWS with a reasonablé explanation for its post-discovery submission of Exhibits 17 and 18. Second, while the existence (or not) of two of the alleged websites does not-carry much weight with respect to whether the Mark is “famous” or- “distinctive” for purposes of Plaintiffs claims, it is relevant to that determination; Third, prejudice to Na-meMedia is de minimis especially because NameMedia first alleged the existence of other “New World Solutions” in its moving papers for Summary Judgment.
Conversely, Exhibit 19 should be excluded. NWS does not and cannot explain its failure to disclose the NameMedia website print-out. The statements about NameMe-dia’s business model do not provide essential evidence for any of the- claims at issue because thése claims are dismissed on grounds, as explained below, that make this evidence irrelevant, and NameMedia is prejudiced by its inability to address or take discovery regarding Exhibit 19.
The challenged portions of Neal’s deposition and declaration relate to NameMe-dia’s alleged keyword optimization policy and Neal’s attempts to “verify” the existence of the same by entering keywords relevant to NWS’s business activities into the search box on the website at www.new worldsblutions.com, and then allegedly discovering that those keywords newly appeared on that website. (See Neal Tr! 119, 121-125; Neal Decl. ¶¶ 15-30.)
NameMedia argues that Neal’s-testimony is irrelevant, and therefore inadmissible, under Federal Rule of Evidence 402, because the keyword optimization policy which Neal allegedly attempted to verify is, according to Neal’s deposition testimony, the stated policy of a third ' party, “[which Plaintiff] thinkfs] is a subsidiary of NameMedia.” (Def.’s Strike Mem. 18; Neal Tr. 120.)
NameMedia is correct that the “optimization policy” allegedly described on the website of an entity that NWS “think[s] is a subsidiary of NameMedia” is not relevant to this Action, and that Neal’s testimony about the same is, therefore, inadmissible under Federal Rule of Evidence 402. In his deposition, Neal based his conclusion that “[i]t appearfs] ... that [www.newworldsolutions.com] was looking at our website or the Coyne Legal Group or Credit Legal Group website ... and extracting key words and placing them on their website” on “looking at the [possible]
The rest of the challenged testimony pertains to actions allegedly taken by Neal on newworldsolutions.com. However, it is far from clear that Neal’s “tests” establish anything about NameMedia’s alleged optimization policy. In addition to testifying that he has “no evidence” that NameMedia has a keyword' optimization policy, Neal testified that he “ha[s] no idea” whether his entering terms in the search box on www.newworldsolutions.com caused some of those terms to subsequently appear on the website. (Neal Tr. 124-125.) Pursuant to Federal Rule of Evidence 401, evidence is relevant if it “has any tendency to make a fact more or less probable than it would be without the evidence” and “the fact is of consequence in determining the .action.” Because Neal’s testimony about his keyword searches on www.newworldsolutions. com does not make more or less probable the existence of the alleged keyword optimization policy, the testimony is not relevant and is- therefore inadmissible under Federal Rule of Evidence 402.
Moreover, as relevant to Rule 602, “[t]he test for admissibility is whether a reasonable trier of fact could believe the witness had personal knowledge.” New York ex rel. Spitzer v. Saint Francis Hosp.,
b. NWS’s Motion to Strike
As an initial matter, NameMedia correctly points out that Plaintiff submitted its Cross-Motion to Strike without the permission of the Court. (See Def.’s Strike Reply 3-4.) Pursuant to Local Civil Rule 37.2 and this Court’s Rules, NWS should have submitted a letter requesting leave to bring its - Cross-Motion, Nevertheless, the Court considers the merits of the Motion, as Defendant has filed a response that addresses Plaintiffs arguments.
NWS cross-moves to strike all of Zili-nek’s declarations submitted in this Action (collectively, the “Zilinek Declarations”).
The Patterson factors 'weigh against granting NWS’s Motion with respect to all portions of the Zilinek Declarations and accompanying exhibits, with one exception, as discussed below.. First, theré was no failure to disclose by NameMedia. Na-meMedia identified Zilinek in its Supplemental Rule 26(a)(1) disclosures, (see Schwimmer Decl. III ¶ 5 & Ex. 2), but NWS failed to properly notice Zilinek for a deposition, (see Def.’s Strike Reply 5). Because there is no failure to disclose Zilinek as a potential witness, there is no failure to excuse under the first factor. Cf. Fleming v. Verizon N.Y. Inc., No. 03-CV-5639,
As to the second factor, NameMedia maintains that “whether its website crawls third-party websites, or is itself crawled by search engine ‘robots,’, is immaterial to the case-in-chief ... [because] Plaintiff cannot establish trademark priority or rights prior to March 2005.” (Def.’s Strike Reply 7.) Nonetheless, NameMedia- argues that the Zilinek Declarations are “necessary” to correct NWS’s “incoherent and incompetent stab at contriving a disputed issue with regards to crawling and robot exclusion,” and specifically to refute the source code evidence submitted by Neal in support of NWS’s contention that NameMedia does not use robot exclusion. (Id. 6-7, 7 n,12.) Because the Court denied NameMe-dia’s Motion- To Strike the evidence submitted by Neal pertaining to “robot exclusion,” NameMedia’s related submissions contained in Zilinek Declaration I and Zili-nek Declaration III are relevant, and should likewise be considered. Conversely, because the Court granted NameMedia’s Motion, to Strike the evidence submitted by Neal pertaining to the alleged “keyword optimization” policy, NameMedia’s related submission, Zilinek Declaration II, is likewise excluded, but only to the extent that its irrelevance results from this ruling.
NameMedia also correctly notes that NWS’s purported showing that the Zilinek submissions “misled” the Court and its ability to propound evidence that
ii. The Schwimmer Statement
NWS also moves to strike “the statement of Martin B. Schwimmer that their firm has never been advised by any representative of Plaintiff that ... Coyne would be available for a deposition.” (Pl.’s Strike Mem. 5; see also Schwimmer Deck II ¶ 17.) The only apparent basis for the motion is that NWS contests the accuracy of Mr. Sehwimmer’s statement. (See id. at 2.) Accordingly, NWS’s Motion to strike Schwimmer’s statement is deniéd.
B. Motions for Summary Judgment' 1. Standard of Review
Summary judgment shall be granted where the movant shows that “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see also Psihoyos v. John Wiley & Sons, Inc.,
“On a motion for summary judgment, a fact is material if it might affect the outcome of the suit under the governing law.” Royal Crown Day Care LLC v. Dep’t of Health & Mental Hygiene of City of N.Y.,
2. NWS’s Claims Against NameMedia
a. Federal Trademark Dilution
NWS alleges that NameMedia’s use and registration of “newworldsolutions.com” has “diluted the distinctive quality of the commercially valuable mark New World Solutions” in violation of the FTDA. (FAC ¶¶ 25-27.)
k Applicable Law
“Federal law allows the owner of a ‘famous mark’ to enjoin a person from using'‘a mark or trade name in commerce that is likely to causé dilution by blurring or dilution by tarnishment of the famous mark.’ ” Tiffany (NJ) Inc. v. eBay Inc.,
On October 6, 2006, ’ President Bush sighed into law the Trademark Dilution Revision Act of 2006 (the “TDRA”), which amended the FTDA “to clarify that the owner of a famous mark seeking an injunction need prove only that the defendant’s mark ‘is likely to cause dilution of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.’ ” Starbucks Corp.,
As relevant here, under both the FTDA and TDRA, “a trademark owner must ... demonstrate that its mark is famous or ‘widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.’ ” Malletier v. Dooney & Bourke, Inc.,
[T]he court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
15 U.S.C. § 1125(c)(2); see also George Nelson Found.,
ii. Application
For the purpose of its Motion for Summary Judgment on NWS’s FTDA claim, NameMedia concedes that it makes commercial use óf ‘‘www.newworldsolutions. com.” (Def.’s Mem. in Supp. of-its Mot. for Summ. J. (“Def.’s Summ. J. Mem.”) 14 (Dkt. No. 72.).) NameMedia’s principal argument in support of the Motion is that “no rational trier of fact could find that Plaintiffs mark was famous ... in 2005 when NameMedia registered the Domain Name.” (Id. at 15.)
To begin, the TDRA applies to the pre-October 6, 2006 conduct to the extent that Plaintiff seeks injunctive relief and not monetary damages. See Burberry Ltd.,
NWS also argues that the “fame of the mark at the time of registration is an issue in dispute for a jury to decide” because “Plaintiff has testified that the mark was in use since 2004, but that due to a hard drive crash, the records prior to 2007 were lost.” (PL’s Summ. J. Mem. 5.) Drawing all inferences in NWS’s favor, there is no basis in the. record to find that, in March of 2005, the Mark was famous for the purposes of the federal dilution claim. Plaintiff relies solely on Neal’s deposition testimony to establish the existence and extent of NWS’s promotional and business activities in 2004 and 2005. However,, as described above, it is . undisputed that
Even considering Neal’s testimony as true, there is no ,evidence that the Mark was “famous” prior to 2007 for the purpose of invoking protection under the FTDA. Neal testified that, in 2004, NWS made no “systemic telemarketing effort,” that its promotional activities' consisted solely of “one-on-one techniques” — i.e. cold calls and e-mails from Coyne and Neal— and mailing postcards, and that NWS “didn’t really formalize the [marketing] process until 2008, 2009, something like that.” (Neal Tr. 30-31, 89.) This is not a case, then, where “publication in well-known national magazines supports a showing [that] the mark is famous.” George Nelson Found.,-
Finally, NWS offers no evidence of “actual recognition of the [M]ark” prior to 2007, let alone that the Mark was “widely recognized.” 15 U.S.C. § 1125(c)(2)(A).
b. Cybersquatting
NWS also alleges that NameMedia’s registration and use of “newworldsolu-tions.com” violates the - ACPA. (FAC ¶¶ 28-33.)
i. Applicable Law
The ACPA was “passed to remedy the perceived shortcomings of applying the FTDA in cybersquatting cases,” and “create[s] a specific federal remedy for cybers-quatting.” Sporty’s Farm,
A person shall, be liable in a civil action by the ■ owner of a mark ... if, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark ... ; and
(ii) registers, traffics in, or uses a domain name that — .
(I) in the case of a mark that is distinctive at the time of registration of the domain: name, is identical or confusingly similar to that mark;
(II) in the case'of a famous mark that is-famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by [provisions related to the Red Cross and the United States Olympic Committee].
15 U.S.C. § 1125(d)(1)(A); “To make out a cybersquatting claim, courts in [the Second Circuit] consider (1) whether the mark is distinctive or famous; (2) whether the domain name is identical or ‘confusingly similar’ to the mark; and (3) whether the domain name registrant acted with a ‘bad faith intent to profit’ from the mark when it registered the domain name.” Kuklachev,
Pursuant to the first prong, “[distinctiveness refers to inherent qualities of a mark and is a completely different concept from fame. A mark may be distinctive before it has been used — when its fame is nonexistent. By the same token, even a famous mark may be so ordinary[ ] or descriptive as .to- be notable for its lack of distinctiveness.” Sporty’s Farm,
Pursuant to the second prong, the “confusingly. similar” standard; under the ACPA- is different from thé “ ‘likelihood of confusion’ standard for trademark infringement,” and “whether a domain name is confusingly similar to a trademark is to be evaluated without regard to the goods or services of-the parties.” Dudley,
(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 usé, 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 naines which the person knows áre 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 óf others that áre famous at the time of registration of such domain name's, without' regárd to thé 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 within the meaning of subsection (c) of this section.
15 U.S.C. § 1125(d)(1)(B). However, “[because the ACPA has the potential to encompass a broad array of online conduct, courts are ‘reluctant to interpret the ACPA’s liability provisions in an overly aggressive manner,’ ... [which] is particularly true of the bad faith intent to profit requirement,” and, therefore, “a number of courts — including the Second Circuit— have departed from strict adherence to the statutory indicia and relied expressly on a more case-specific approach to bad faith.” Gioconda Law Grp. PLLC v. Kenzie,
ii. Application
Defendant argues that Plaintiff cannot establish the first prong of an ACPA claim because there is no eyidence that, in March of 2005, the Mark was famous or distinctive, or even that it existed. Indeed, Plaintiff has not proffered sufficient evidence to create a genuine issue of material fact as to whether the Mark existed, or in other words was, in use, in 2005. A threshold requirement of the ACPA is that the plaintiff is “the owner of a mark.” Mont. Jewelry, Inc. v. Risis, No. 11-CV-4875,
Although Plaintiff contends that Neal’s deposition testimony establishes that the Mark was “in use” prior to 2007, (Pl.’s Summ. J. Mem. 6), Plaintiff offers no evidence, besides Neal’s testimony, to support this claim. Indeed,. it is undisputed that there is no documentary evidence that supports the Mark existed prior to 2007. As Defendant argues, Neal’s unsubstantiated and self-serving testimony is insufficient, without more, to defeat summary judgment. See Brusso v. Imbeault,
Fatal to Neal’s assertion is NWS’s June 28, 2010 Application to the USPTO, wherein NWS described the services it provides as “[cjomputer hardware and software consulting services; [i]nformation technology consultation; [services for maintenance of computer software; [software design and development” and stated that its first use of the Mark, and its first use of the Mark in commerce, occurred “at least as early as 6/21/2007.” (Schwimmer Deel. I Ex. 18.) This undercuts any claim thát the Mark was in use in 2005. Cf. Web-adviso v. Trump,
Plaintiffs claim under the ACPA also fails under the third prong — that Defendant acted in bad faith with an intent to profit from Plaintiffs Mark. Defendant’s activity as to the Domain Name does not fall within any of the “quintessential examples” of bad faith that courts have acknowledged. There can be no claim that Defendant - “purchase[d] [the] . [D]omain [N]ame very similar to the [Mark] and then offer [ed] to sell the name to [Plaintiff] at an extortionate price,” Gioconda Law Grp.,
c. Trademark Dilution under NYGBL § 360 — ¿
NameMedia also seeks- summary judgment' as tó Plaintiffs trademark dilution claim, brought pursuant to NYGBL § 360-l. CSee FAC ¶¶ 39-44.)
L Applicable Law
NYGBL § 360-Z provides that “[l]ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringe
“To gauge a mark’s strength, [courts] consider two factors: its inherent distinctiveness, and its distinctiveness in the,marketplace.” Streetwise Maps, Inc. v. VanDam, Inc.,
ii. Application
Plaintiffs, claim under NYGBL §• 360 — Z -fails under the first prong. Here, even.- assuming that NWS’s mark has an inherent distinctiveness, “the total lack of any evidence of commercial recognition of the mark demonstrates that it is a relatively weak mark in the place where it counts: the marketplace.” GMA Accessories, Inc.,
d. Deceptive Acts and False Advertising under NYGBL §§ 349 and 350
NameMedia also moves for' summary judgment on Plaintiffs claims under NYGBL §§ 349 and 350. (See FAC ¶1¶34-38.)
i. Applicablé Law
NYGBL § 349 prohibits “[deceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any service in this state.”
‘The standard for recovery under General Business Law § 350, while specific to false advertising, is otherwise identical to section 349.” Goshen,
NWS alleges that NameMedia “intends to deceive business and individual consumers into thinking that [NWS] in some way endorses or supports the activities of [ ] Defendant.” (FAC ¶ 18.) Plaintiff also claims that “Defendant intends to deceive business and individual consumers that [NWS] is affiliated with [] Defendant,” (id. ¶20), and Defendant “falsely advertised [its] services to the public by representing that [NWS] in some way endorses or is affiliated with [NameMedia]” in violation of NYGBL §§ 349 and 350, (id. ¶¶ 36-37). In its moving papers, NameMe-dia argues that “NWS cannot cite to any record evidence whatsoever that NameMe-dia’s registration of the subject Domain Name was ’misleading in a material way1 or that Plaintiff was ’injured’ as a result of same.” (Defl’s Summ. J. Mem. 19.) Plaintiff does not respond to Defendant’s claims or defend its claims under NYGBL §§ 349 and 350 in its opposition papers. ‘When a party *offer[s] no response’ to its opponent’s motion to dismiss a claim, that claim is abandoned.” Paul v. Bank of Am., N. A. No. 11-CV-81,
In any event, Plaintiff has failed to proffer evidence to show that there are genuine issues of material fact as to these claims. First, Plaintiff has failed to establish that Defendant’s registration of the Domain Name or activities associated with the Domain Name were consumer-oriented. “Under New York law, claims involving trademark violations are not cognizable under N.Y. GBL §§ 349 or 350 unless ‘there is a specific.and substantial injury to the public interest over and above ordinary trademark infringement or dilution.’ ” RCA Trademark Mgmt.,
Second, even construing Plaintiffs evidence as support for the contention that customers were confused by Defendant’s activities in relation to the Domain Name, (see Pl.’s 56.1 ¶ 11), “[c]ourts have held that a party’s ’claim that consumers will be confused, on its own, does not meet the threshold for liability’ under’ [NYGBL] §§ 349 and 350.” RCA Trademark Mgmt.,
3. NameMedia’s Counterclaims against NWS
a. Cancellation of thé Registration and Declaratory Judgment of Liability
NameMedia moves for summary judgment on its claim. that the Registration should be cancelled pursuant to 15 U.S.C. § 1119, because NWS allegedly made “fraudulent representations regarding material facts to the USPTO in the course of procuring the Registration” and “could not truthfully claim use of the [M]ark prior [to May 25, 2010].”
i. Applicable Law
“A request for dismissal of a cancellation proceeding pursuant to section 1119 ordinarily is made as a counterclaim in an infringement action,” Empresa Cubana del Tabaco v. Culbro Corp.,
“Relief under. § 1120 requires that the parties’ injuries result from the •use of the mark while falsely registered,” Martal Cosmetics, Ltd. v. Int’l Beauty Exch. Inc., No. 01-CV-7595,
ii. Application
In its application to the USP-TO, NWS represented the Mark had been in use in commerce at least as of June 21, 2007.
Furthermore, there’are material issues of fact as to whether-Plaintiffs omission
b. Exceptionality
Finally, NameMedia argues that this case should be deemed “exceptional” pursuant to 15: U.S.C. § 1117(a) — and Na-meMedia should accordingly be awarded attorneys’ fees — because “the futility of Plaintiffs case was brought to ... Coyne’s attention prior to bringing-the [A]ction” and because of the “bad faith manner in which [the Action] was maintainéd.” (Def.’s Summ. J. Mem. 21.)
i. Applicable Law
The Lanham Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). The .Second Circuit has interpreted “exceptional cases” to include cases involving “fraud or bad faith,” which, in turn, includes “fraudulent conduct in the course of conducting trademark litigation.” Patsy’s Brand, Inc. v. I.O.B. Realty, Inc.,
ii. Application
To begin, it is unclear whether Na-meMedia presses the claim that the case is exceptional, at least at this time. NameMe-dia’s memorandum filed in support of its Motion for Summary Judgment states that “[g]iven the sheer volume of Plaintiffs vexatious behavior,” NameMedia “requests the opportunity to brief the exceptionality issue separately [following a status conference on May 28, 2013],” and makes clear that it is only seeking summary judgment dismissing all of Plaintiffs claims, “as this entire case is based on Plaintiffs misstatements.” (Def.’s Summ. J. Mem. 22 & n.20.) At the May 28, 2013 conference, the Court granted Coyne’s motion to withdraw as counsel for NWS, (May 28, 2013 Hr’g Tr. 40-42), and although Defendant stated its intention to “file for Rule 11” against Coyne, (id.), it did not raise the issue of “exceptionality” or request permission to separately brief the issue. However, Na-meMedia further briefed the issue in its Memorandum in Opposition to Plaintiffs Cross-Motion for Summary Judgment and in Further Support- of Defendant’s Motion for Summary Judgment. (See. Def.’s Summ'! J. Reply 14-15.) In particular, Na-meMedia argues that NWS’s “bad faith” pursuit of the lawsuit can be inferred from (1) the fact that NWS “was in possession
The Court agrees with NameMedia that there is, at, the very least, circumstantial evidence of bad faith here. To begin, Na-nieMedia’s statement that bad faith can be inferred from the fact that NWS “was in possession of no evidence that Plaintiff made use of the Mark prior to March 2005” and yet prosecuted this Action “knowing ... [it] had to demonstrate trademark priority as of March '2005 to prevail on its claims,” (Def.’s Summ. J. Reply:15), is not entirely accurate. As discussed above, the relevant inquiry as to Plaintiffs trademark claims is not whether or not there was a valid trademark at the tiirie of the infringing conduct, but rather, whether the mark was in use. Nevertheless, Defendant correctly points out that Plaintiff had no evidence that it had made use of the Mark prior to Defendant’s registration of the Domain Name, and yet chose to instigate the Action. This supports a finding of bad faith. Further, the undisputed facts that Plaintiff knew of the Domain Name in 2007, waited until 2010 to contact Defendant, asked for a price quote, and, when it received the price quote, instead of responding to Defendant, filed an application to thé USPTO four hours later are at least suggestive of a bad faith motive in instigating this litigation. Finally, NWS’s conduct in this Action supports an inference of bad faith, as discussed in detail above. Plaintiff did not produce Coyne for a deposition, did not depose several witnesses Defendant identified as relevant, choosing, instead, to rely on unsubstantiated and unqualified claims by Neal, and proffered evidence that was responsive to Defendant’s discovery demands for the first time in connection with its Motion for Summary Judgment.
Nevertheless, even though there is circumstantial evidence of bad faith, there is no direct evidence of bad faith, and, in the absence'of direct evidence, the Court does not deem that this case is “exceptional” within the meaning of 15 U.S.C. § 1117(a). See Cartier, Inc. v. Four Star Jewelry Creations, Inc.,
III. Conclusion
For the reasons stated herein, NameMe-dia’s Motion to Strike is granted in part and denied in part, NWS’s Motion to Strike is granted in part and denied in part, NameMedia’s Motion for Summary Judgment is granted with respect to NWS’s claims and denied with respect to NameMedia’s counterclaims, NWS’s Motion for Summary Judgment is denied, and NameMedia’s request for a declaration that this case is “exceptional” pursuant to thé Lanham Act 15 U.S.C. § 1117 is denied. The Clerk óf Court' is respectfully directed to terminaté the pending Motions.
SO ORDERED.
.The full deposition transcript of Shaun Neal, NWS's principal, can be found attached to the December 8, 2015 Letter from Cameron S. Reuber, Esq., to the Court. (Dkt. No. 113.) The transcript is also excerpted in several locations. {See Decl. of Schwimmer at Ex. 5 (Dkt. No. 69); Decl. of Ziliriek at Ex. J (Dkt. No. 70); Decl. of Kossar at Ex. 3 (Dkt. No. 77); Decl. of Schwimmer at Ex. E (Dkt. No. 88).)
. Shaun Neal has also testified that’there is no "limitation” on the kind of services provided to clients by NWS employees, and that services could include, among other things, - “administrative” services. (Neal Tr. 22.)
. NWS owns the domain names "nwsol.com," "newWofldsupport.com,” and "nwspartners.com,” which were purchased "between August 2, 2007 and September 26, 2011.” (Pl.’s Resp. to .Def.’s First, Set of Inter-rogs. No. 16.)
. NameMedia construes Neal’s July 27, 2010 e-mail as a demand for $200,00. (See Zilinek Decl. I ¶ 14). NWS asserts it was offering to pay $200.00 for the Domain Name. (See Pl.’s 56.1 ¶ 17.) This dispute is immaterial.
. Defendant provides websites for New World Solutions of West Kill, NY and New World Solutions, LLC, (Def.’s 56.1 ¶¶ 63-64), but Plaintiff disputes the' accuracy of these websites, (Pl.’s 56.1 ¶¶ 63-64);-This dispute is immaterial.
. On May 29, 2013, the Court granted Plaintiff's Motion to Substitute Counsel, thus terminating Coyne as counsel for Plaintiff. (See Dkt. (minute entry for May 29, 2013).) Coyne’s representation of Plaintiff was marked by a ' consistently suspicious course of conduct, replete with misrepresentations and ethically suspect actions. For example, despite having filed with the Court multiple notices seeking to substitute himself and Coyne Legal Group, PLLC as counsel for Plaintiff in this Action, (see Dkt. Nos. 6, 39), Coyne told the Court that he had "never filed a notice of appearance in this case,” (see Letter from Robert F. Coyne, Esq. to Court (Apr. 23, 2013) (Dkt. No. 63); see also Letter from Cameron S. Reuber, Esq, to Court (Apr. 23, 2013) (Dkt. No. 62)). More troubling, Coyne admitted to the Court that he backdated a retainer agreement in connection with his representation of Plaintiff. (See Hr’g Tr. 26, 30-31 (May 28, 2013 Hr’g).)
. For the purposes of this motion, the Court finds that Coyne was an “officer" of NWS during the relevant period. Coyne declared under- penalty of perjury that: (i) he caused the-2007. Delaware Entity to be formed in 2007 and dissolved in 2010; (ii) he caused the
. Because the Motion To Strike the Coyne Declaration and accompanying exhibits is granted, there is no need to address Defendant’s alternative argument that Exhibits 1 and 3 of the Coyne- Declaration must be excluded pursuant to Fed. R. Civ. P. 37(c)(1).
. NameMedia incorrectly identifies the Neal Deposition excerpts as Exhibit 4 to the Kossar declaration. (See Def.’s Mem. 17; Kossar Decl. ¶ 4.)
. NameMedia also argues that the Neal exhibits are inadmissible because they are irrelevant to the "threshold issue of the [S]um-mary [judgment [Mjotion” for all four of NWS’s claims against NameMedia, namely "Plaintiff[’s ability to] demonstrate trademark priority as of March 2005." (Def.’s Strike Mem. 2-3.) NameMedia is correct that the ' Neal exhibits are not relevant to any of the determinative questions about the status of the Mark in March of 2005 — that is, whether it was in use, and whether it was "famous” and/or "distinctive” for purposes of the Federal Trade Dilution 'Act, the Anticybersquat-ting Protection Act, or dilution under the
. To successfully assert a claim for deceptive acts under NYGBL § 349, or for false’advertising under NYGBL § 350, a plaintiff must establish that defendant engaged in consumer-oriented conduct that was materially misleading. See Koch v. Acker, Merrall & Condit Co.,
. In particular, the screenshots are responsive to NameMedia’s Document Requests Nos. 13 ("All Internet searches conducted on behalf of Defendant's domain www.newworld solutions.com, and all documents ... concerning the same.”), 14 (“Documents- comprising, referring, or relating to any searches, research, investigations!,] or other inquiries concerning Defendant or the domain name www.newworldsolutions.com .... ”), and 33 (“All documents Plaintiff intends to rely upon in connection with this proceeding.”). (Reqs. for Docs. Nos. 13, 14, 33.) NameMedia served the document requests on NWS on April 13, 2012, and, by an email sent on September 21, 2012, notified then-counsel for NWS that Na-meMedia would move to exclude all discovery materials not produced in advance of its noticed Depositions. (See Def.'s Strike Mem. 4; Schwimmer Decl. II ¶¶ 8,10; id. at Ex.- C.)
. At a minimum, Neal Exhibits' 4, 5 and 6 are responsive to NameMedia’s Document Requests Nos. 13 (“All Internet searches conducted on behalf of Defendant’s domain www.newworldsolutions.com, and all documents — concerning the same.”) and 14 (“Documents 'comprising, referring, or relating to any searches, research, investigations[,] or other inquiries concerning Defendant or the domain name www.newworldsolutions. com "....”). (Reqs. for'Docs. Nos. 13, 14.)
. At a minimum, Neal Exhibits 7 through 11 are responsive to NameMedia’s Document Request No, 33. Exhibits 7 through 9 are also responsive to Request Nos, 13 and 14. (See Reqs. for Docs. Nos. 13-14, 33.)
. Neal testified that, fahsed on his activities "[i]t appeared to [Neal] that this website was looking at our website or the Coyne Legal Group or Credit Legal Group website, which was hosted on the same [server], and extracting key words and placing them on their website.” (Neal Tr. 326.) NWS proffers the alleged keyword optimization policy as evidence of dilution and bad faith. (Pl.’s 56.1 ¶ 68.)
. NameMedia also argues that NWS cpuld have obtained evidence of NameMedia’s optimization policy if it had- deposed any of the NameMedia officers disclosed in NameMe-dia’s Rule 26 Supplemental Initial Disclosures and other Discovery Responses. (Def.’s Mem. in Opp’n to PL’s Cross-Mot. -for Summ. J. and in Further Supp, of Def.’s Mot. for Summ. J. il.)
.Federal Rule of Evidence 602 provides in pertinent part that "[a] witness may testify to a -matter only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the'matter. Evidence to prove personal knowledge may consist of the witness’s own testimony.” Pursuant to Rule’601, “[e]very person is competent to be a witness unless the[] rules provide otherwise.” Rule 701(a)’provides that lay witness "testimony in the form of an opinion is limited to one that is ... rationally based on the witness’s perception.”
. Even if the Court were to consider Neal’s testimony regarding the alleged keyword optimization policy to support Plaintiff's theory that- NameMedia engages in dilution, Plaintiff’s claims fail on - other grounds, as described below.
. Zilinek, Associate General Counsel for Na-meMedia, submitted three declarations in this action: (1) Zilinek Deck I, which describes NameMedia’s business model and policies, in- .• eluding its alleged use of the method of " ‘robot exclusion’ to prevent indexing of jts holding pages by search engines,” NameMedia's registration of the Domain Name, and certain events thereafter; (2) Deck of Erik S. Zilinek, Esq. in Further Supp. of Def.’s Mot, for Summ. J, and in Opp’n to Pl.’s Cross-Mot. for Summ. J, (“Zilinek Deck II”) (Dkt. No. 93), which addresses NameMedia’s policy for incorporating keywords onto the website holding pages for its domain name and refutes NWS’s allegation that NameMedia "crawls” websites with similar domain names and incorporates keywords from those websites into its own websites; and (3) Deck of Erik S. Zilinek, Esq. in Supp. of Def.’s Mot. To Strike and Exclude Evid. Pursuant'to Fed. R. Civ. P. 37 and 56 ("Zilinek Deck III”) (Dkt. No. 89), which refutes NWS’s allegation that Neal Deck Exhibits 4 and 5 demonstrate that Na-meMedia does not use a robot exclusion policy.
. In any event, while the ACPA covers "distinctive” marks as well as "famous” marks, it applies only to marks that are "famous" or "distinctive” "at the time of registration of the domain name." 15 U.S.C. §§ 1125(d)(l)(A)(ii)(I) and (II) (emphasis added).
. Neal testified that he was "not aware” of any newspaper, television, radio, or other media coverage of NWS prior to March 2005 (or in 2012). (Neal Tr. 82-84.) Further, when asked in his deposition "How does someone learn the word ‘New World Solutions’ in 2004?,” Neal answered, "One of our sales people would get a calling list of profile clients and would get on the phone and say we sell outsourcing services. We sell technology consulting. We sell whatever kind of particular niche technology we may have been offering at the time. Are you interested in having a conversation about this ...{Id. at 90-91.)
. In addition, “[i]n general, the degree of fame required for protection under the [TDRA] must exist in the general marketplace, not in á niche market. Thus, fame limited to a • particular channel of trade, segment of industry or service, or geographic region is not sufficient to meet that standard.” Malletier,
, The statute authorizes individuals who are "injured by reason of any violation of” § 349 to bring an action for an injunction and/or “actual damages or fifty dollars, whichever is greater.” NYGBL § 349(h). If a court finds the defendant willfully or knowingly violated § 349, the court has discretion to increase the damages award "to an amount not to exceed three times the actual damages up to one thousand dollars.” Id.
. Individuals who are injured by reason' of any violation of NYGBL § 350 are authorized ' to bring an action for an injunction and/or for "actual damages or five hundred dollars, whichever is greater.” NYGBL § 350-e. If a court finds the defendant willfully or knowingly violated § 350, the court has discretion to increase the damages award "to an amount not to exceed three times ijie actual damages, up to'ten thousand dollars,” Id. , u ,
. The Court notes that several courts have explained that ‘‘[i]n addition, § 350 requires — unlike § 349 — that the plaintiff must demonstrate reliance on the allegedly false advertising,” which "means that the plaintiff must 'point to [a] specific advertisement or public pronouncement’ upon which he or she relied.” Leider,
. NameMedia correctly observes that Plaintiffs allegations are unclear as to "how, exactly, consumers are harmed or mislead.” (Def.'s Summ. J. Reply 13.) NWS alleges that, because of NameMedia's alleged keyword optimization policy "a person interested' in finding New World Solutions, browses the website at www.newworldsolutions.com. They do not find the content they are looking for, so they search for the keywords relevant to the entity they are looking for. The defendanf then actively incorporates those keywords into their website.” (Pl.’s Summ. J. Mem. 8-9.) Even if the Court could consider NWS’s keyword optimization policy allegations, and even if those allegations were taken to the logical extreme — that is, the top hits in consumer searches for NWS were NameMedia holding’ pages — the only result would be consumer confusion, 'which as is further discussed, not enough for this claim to survive summary judgment. .
. 15 U.S.C. § 1119 provides that "[i]n any action invdlving a registered mark the court - - may determine.the right to registration,-order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees ■ and orders shall be certified !by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.”
. 15 U.S.C. § 1120 provides that ‘‘[a]ny person who shall procure registration in-the Patent and Trademark Office of a mark by a false or fraudulent declaration or representation, - oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof."
. Plaintiff is correct that to state a claim for fraud, Defendant, must meet Federal Rule of Civil Procedure 9(b)’s particularity requirement, which "requires that each allegedly fraudulent statement be identified with particularity, and that specific reference be made to the time, location, content[,] and speaker of each statement.” See Great Lakes Mink Ass’n v. Furrari, Inc., No. 86-CV-6038,
. There also is the matter of Coyne's suspect conduct as counsel in this case, before he Withdrew. That conduct will be addressed1 in another forum. ,