PENSACOLA MOTOR SALES INC, A FLORIDA CORPORATION, d.b.a. Bob Tyler Toyota, Plaintiff - Appellant, versus EASTERN SHORE TOYOTA, LLC, an Alabama limited liability company, DAPHNE AUTOMOTIVE, LLC, an Alabama limited liability company, SHAWN ESFAHANI, an individual, DAPHNE ENTERPRISES, INC., an Alabama corporation, Defendants - Appellees.
No. 10-15761
IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT
June 21, 2012
D.C. Docket No. 3:09-cv-00571-RS-MD. FILED U.S. COURT OF APPEALS ELEVENTH CIRCUIT JUNE 21, 2012 JOHN LEY CLERK [PUBLISH]
(June 21, 2012)
CARNES, Circuit Judge:
People who compete against each other in the same business or profession don‘t have to dislike one another. A few years back there was even a song lyricizing about “Lawyers in Love.” But no one has ever written a song about “Car Dealers in Love,” and if this case is any indication, no one ever will. These two car dealers are bitter business rivals in overlapping markets. One of them used a software program to compete more aggressively with the other one over the internet. That program produced a multiplicity of mini-websites, a host of hard feelings, and of course litigation. This is the appellate part of that litigation.1
The time period in which Bob Tyler Toyota was using its slanderous statements strategy
I.
Shawn Esfahani is a Hyundai and Toyota car dealer who owns Eastern Shore Toyota, Daphne Automotive, LLC, and Daphne Enterprises, Inc. (collectively “Eastern Shore” for short). In the summer of 2009, Esfahani attended a Hyundai dealers’ conference, where officials in Hyundai‘s corporate division introduced dealers to David Vaughan, Jr., who was the corporate division‘s internet marketing expert. Vaughan offered to help the dealers revamp their websites and spruce up their technology systems. Not that there‘s anything wrong with that.
Vaughan went further than that, however. Over the next few weeks, he pitched two internet marketing strategies to Esfahani, one defensive and the other offensive. The defensive strategy was for Esfahani, under Vaughan‘s tutelage, to buy and hold desirable domain names2 in order to keep them out of competitors’
The offensive strategy that Vaughan proposed involved the creation of a large number of mini-websites, or microsites, using a computer program that he would license to Esfahani. By simply entering domain names into that software program and clicking a button, Vaughan could instantly mass produce microsites for Esfahani, each one using a name related in some way to the car business, for example, www.2009camry.com. Those microsites would either automatically redirect users who clicked on them to Eastern Shore‘s official websites or they would display a one-page website advertising Eastern Shore.
Esfahani agreed to both strategy proposals. In July and August 2009 through Eastern Shore, Esfahani signed contracts with Vaughan‘s company, Advanced Dealer Systems, for marketing services and use of Vaughan‘s software program. Within a couple of months, Eastern Shore went from owning about 40 domain names to owning around 4,000. The new domain names were purchased
Eastern Shore‘s new domain name marketing strategy caught the attention of eBay. The online auction website discovered one of the questionable domain names—www.ebaypreownedprices.com—and it emailed Eastern Shore about that name in September 2009. The email demanded that Eastern Shore stop using eBay‘s trademark in the domain name, disable any website linked to it, and allow the domain name‘s registration to expire instead of attempting to sell or transfer it to someone else. Ebay‘s email warned Eastern Shore that the “registration and use” of a domain name infringing on another‘s trademark violated the Lanham Act and that the “use, [sale], or offer for sale” of such a domain name violated the Anticybersquatting Consumer Protection Act; it also pointed out that the anticybersquatting act provides for statutory damages of up to $100,000 for each infringing domain name.
After receiving the email from eBay, Esfahani decided to “take it down.”
There was more trouble. In October 2009 a sales manager at Bob Tyler Toyota discovered one of Eastern Shore‘s microsites: www.bobtylerprices.com. That microsite featured a photo of one of the car models that Bob Tyler Toyota sold, and it allowed visitors to enter their email addresses and their financial information to complete a credit application for a car loan. The phone number listed on the site, however, was not Bob Tyler Toyota‘s. It was Eastern Shore‘s. Bob Tyler Toyota employees found five other Eastern Shore microsites; all of them had virtually the same design, used some version of the Bob Tyler trademark, and listed Eastern Shore‘s phone number.
The general manager for Toyota‘s southeastern division told Eastern Shore that Bob Tyler Toyota objected to the microsites and urged Eastern Shore to disable them. Esfahani was shocked—“shocked,” he said—to learn that those domain names were operational, and he immediately ordered Vaughan to disable the microsites. A few days later, attorneys for Bob Tyler Toyota sent Eastern Shore a cease-and-desist letter identifying six of the infringing microsites,
After the receipt of that letter, Esfahani and Vaughan blamed each other for the problem. Esfahani sent Vaughan a letter terminating their contracts and accusing Vaughan of having “misled” him into believing that purchasing the domain names was legal. Vaughan countered that Esfahani “went rogue,” purchasing the domain names and hosting the microsites on his own despite Vaughan‘s warnings that doing so “was a real bad idea[].”
Bob Tyler Toyota‘s cease-and-desist letter was dated October 23, 2009. By the end of the next day, all of the microsites infringing on the Bob Tyler trademark had been disabled, except for two undetected ones.3 On December 17, 2009, Bob Tyler Toyota sent Eastern Shore another letter, this one demanding the return of the domain names and a $1 million payment. A week later Esfahani surrendered to GoDaddy.com all of the domain names that infringed on the Bob Tyler
II.
In its second amended complaint, which is the operative one, Bob Tyler Toyota brought six claims against Eastern Shore seeking injunctive relief and actual and statutory damages. All of those claims were based on Eastern Shore‘s registration or use of fourteen domain names that impermissibly incorporated the Bob Tyler trademark. The claims were: (1) false advertising under the Lanham Act,
In its case-in-chief at trial, Bob Tyler Toyota did not prove any monetary damages resulting from Eastern Shore‘s registration or use of any of the domain names. Because of that, only injunctive relief was available on the federal false advertising claim, the state and federal unfair competition claims, and the state trademark dilution claim. Even without proof of actual damages, however, Bob Tyler Toyota still had a chance to recover statutory damages on its Florida antiphishing claim, see
At the close of its case-in-chief, Bob Tyler Toyota moved for judgment as a matter of law on all of its claims, which the district court denied. Eastern Shore moved for judgment as a matter of law on Bob Tyler Toyota‘s antiphishing claim, which the district court granted. Eastern Shore then asked the district court to deny Bob Tyler Toyota any equitable relief on its claims for federal false advertising, state and federal unfair competition, and state trademark dilution.
At the charge conference, Bob Tyler Toyota raised numerous challenges to the court‘s proposed jury instructions and special interrogatory verdict form. Among other things, it objected to the interrogatory on Eastern Shore‘s anticybersquatting statutory defense, which asked the jury whether Eastern Shore believed and had reasonable grounds to believe that its use of the domain names was a fair use or otherwise lawful. The court overruled that objection. Bob Tyler Toyota also asked the court to instruct the jury on the concept of willful blindness, to give a portion of the American Bar Association‘s pattern jury instructions on the anticybersquatting act‘s statutory defense, and to add to the instructions on damages a statement that the act‘s purposes are to deter and compensate. The
When the court instructed the jury on the anticybersquatting act‘s statutory defense, it explained that Eastern Shore had the burden to prove that it had both “reasonable grounds to believe that the use of the domain names was [a] fair use or otherwise lawful” and that it actually “had this belief.” The court told the jury that “reasonable grounds” meant that “an ordinary person in [the] defendants’ position would have had those grounds.”
The special interrogatory verdict form asked the jury a number of questions. The first one was: “Did Plaintiff prove by a preponderance of the evidence that any of the Defendants acted in a manner that constituted a violation of the Anticybersquatting Consumer Protection Act?” If the jury answered “yes” to that question, the second question asked it to identify which of the defendants had violated the anticybersquatting act for each of the fourteen domain names at issue.5 The third question for the jury addressed the statutory defense. The first part of it asked: “Did any of the Defendants have a reasonably held belief that their use of the domain names was a fair use or otherwise lawful?” The second part of it asked the jury to specify which defendants, if any, “believed that the use of the domain
The jury returned a verdict answering “yes” to the first question, thereby finding that at least one of the defendants had violated the anticybersquatting act. On the second question, the jury found that Eastern Shore Toyota, not Esfahani or his other corporate entities, violated the anticybersquatting act by registering or using three of the domain names that the jury specified. On the third question, however, the jury decided that all of the defendants, including Eastern Shore Toyota, had a reasonable belief that their use of the domain names was a fair use or otherwise lawful, so it did not get to the question about what damages to award Bob Tyler Toyota. After the court read the verdict, Bob Tyler Toyota did not object to, or even mention, any inconsistency between the jury‘s finding that Eastern Shore was both in violation of the anticybersquatting act and protected by the act‘s statutory defense.
About a month after the verdict, Bob Tyler Toyota renewed its motion for judgment as a matter of law on all of its claims. It also moved for a new trial on
III.
Bob Tyler Toyota has appealed, contending that the district court erred by denying: (1) its motion for summary judgment, (2) equitable relief on three of its claims,6 (3) its request for proposed jury instructions, (4) its renewed motion for judgment as a matter of law, (5) and its motion for a new trial. It also contends that the district court erred by granting judgment as a matter of law in favor of the defendants on the antiphishing claim and by allowing them to present to the jury the anticybersquatting statutory defense.
A.
Bob Tyler Toyota‘s contention that the district court erred by denying it summary judgment is a non-starter because a party may not appeal an order denying summary judgment after there has been a full trial on the merits. Ortiz v. Jordan, __ U.S. __, 131 S.Ct. 884, 888–89 (2011) (“May a party, as the Sixth Circuit believed, appeal an order denying summary judgment after a full trial on
B.
We review only for an abuse of discretion the district court‘s ruling that Bob Tyler Toyota is not entitled to equitable relief on its federal false advertising claim and its state and federal unfair competition claims. Bradley v. King, 556 F.3d 1225, 1229 (11th Cir. 2009). In determining whether the district court abused its discretion, we decide de novo any underlying legal issues but check factual findings only for clear error. Id.
The district court denied injunctive relief because Bob Tyler Toyota could not show that Eastern Shore was likely to register or use the infringing domain names again. As the Supreme Court explained a long time ago, even when voluntary cessation of unlawful conduct does not moot a claim (and there is no argument here that it did), a court has equitable discretion about whether to issue an injunction after the conduct has ceased. See United States v. W.T. Grant Co., 345 U.S. 629, 632–34, 73 S.Ct. 894, 897–98 (1953). Not only that, in this area a district court‘s “discretion is necessarily broad and a strong showing of abuse must be made to reverse it.” Id. at 633, 73 S.Ct. at 898. To establish that a district court abused its discretion by not issuing an injunction when the unlawful conduct has stopped, the appellant “must demonstrate that there was no reasonable basis for
The evidence at trial proved that on October 24, 2009, the day after Bob Tyler Toyota sent its cease-and-desist letter, Eastern Shore disabled all of its infringing microsites with the exception of two. The reason it did not disable those two is that misspellings in them prevented Eastern Shore from finding them. When it finally did find those two remaining microsites, it promptly disabled them. On December 24, 2009, Eastern Shore surrendered to GoDaddy.com all of the Bob Tyler domain names that it had discovered. Moreover, Eastern Shore acknowledged its error in creating the microsites, fired its internet consultant, and promised to stop any infringing activity. There was no evidence that Eastern Shore thereafter infringed the Bob Tyler trademark in any way or intended to do so in the future. Because the evidence supported the district court‘s finding that Eastern Shore was not likely to infringe on the Bob Tyler trademark in the future, that finding is not clearly erroneous, there is a reasonable basis for the court‘s decision not to grant an injunction, and that decision is not an abuse of discretion.
C.
Bob Tyler Toyota‘s contention that the district court erred by granting Eastern Shore judgment as a matter of law on the state antiphishing claim is
IV.
Bob Tyler Toyota presses a number of contentions related to the one claim that did go to the jury. It brought that claim under the Anticybersquatting Consumer Protection Act, which provides:
A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, . . . that person . . . has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and registers, traffics in, or uses a domain name that . . . 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 . . . .
case in which the court determines that the person believed and had
A.
Bob Tyler Toyota contends that for two reasons the district court erred by instructing the jury on the anticybersquatting act‘s statutory safe harbor defense and submitting an interrogatory covering that defense. First, it argues that Eastern Shore waived the safe harbor defense by failing to plead that defense in its answer to the second amended complaint. “Failure to plead an affirmative defense generally results in a waiver of that defense.” Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1239 (11th Cir. 2010) (citing
In Grant, the defendant raised the affirmative defense of statute of
The second reason Bob Tyler Toyota argues that the district court erred in letting Eastern Shore‘s safe harbor defense go to the jury is that Eastern Shore was guilty of bad faith, which should have barred it from sailing into the safe harbor. That argument relies on a Fourth Circuit decision and the decisions of some other circuits following it. See Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001); see, e.g., Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009); Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004).
In the Fourth Circuit case, an internet service provider named Virtual Works
In the present case, Bob Tyler Toyota argues that Eastern Shore likewise should not be permitted to benefit from the safe harbor defense because it conceded in the district court that six of the nine
As we have explained before, however, “[a] court‘s analysis of whether a defendant had the bad faith intent to profit necessary to a cybersquatting claim is not based on a score card of the statutory factors.” Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1249 (11th Cir. 2009). No particular number of those factors requires a finding of a bad faith intent to profit. The statute, after all, says that the factors are nonexclusive ones that “a court may consider.”
The present case is different from Virtual Works where it was undisputed that the defendant had a bad faith intent to profit by selling or threatening to sell
In addition to the absence of any evidence that Eastern Shore attempted to sell the improper microsites or use them to extort money from Bob Tyler Toyota, there is evidence that Eastern Shore relied on the advice of Vaughan, Hyundai‘s
B.
Bob Tyler Toyota contends that the district court erred by rejecting three of its proposed jury instructions on the anticybersquatting claim. We review only for an abuse of discretion a district court‘s refusal to give a requested jury instruction. Burchfield v. CSX Transp., Inc., 636 F.3d 1330, 1333 (11th Cir. 2011). In refusing to give a requested jury instruction, “[a]n abuse of discretion is committed only when (1) the requested instruction correctly stated the law, (2) the instruction dealt with an issue properly before the jury, and (3) the failure to give the instruction resulted in prejudicial harm to the requesting party.” Id. at 1333-34 (quotation marks omitted).
1.
Bob Tyler Toyota contends that the district court should have given the instruction it requested on willful blindness. We cannot decide this issue on the
2.
Bob Tyler Toyota next contends that the district court erred by not including a portion of the American Bar Association‘s model jury instructions on the anticybersquatting act‘s statutory defense. The portion of the ABA model
In its briefs on appeal, Bob Tyler Toyota does not explain how it was prejudiced by the district court‘s rejection of this instruction. And it is not evident that Bob Tyler Toyota was prejudiced. We have held that:
If the trial judge‘s instructions accurately reflect the law, he or she is given wide discretion as to the style and wording employed in its instruction. Further, under this standard, we examine whether the jury charges, considered as a whole, sufficiently instructed the jury so that the jurors understood the issues and were not misled. We will only reverse the lower court because of an erroneous instruction if we are left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations.
McCormick v. Aderholt, 293 F.3d 1254, 1260 (11th Cir. 2002) (quotation marks and citations omitted) (emphasis added).
In this case the district court instructed the jury that it “must consider all of the evidence.” And a “jury is presumed to follow jury instructions.” Adams v. Wainwright, 709 F.2d 1443, 1447 (11th Cir. 1983). We cannot say—and Bob Tyler Toyota does not attempt to argue—that in deciding whether Eastern Shore reasonably believed its registration or use of the domain names was lawful, the jury did not consider all of the possible motivations or attempted uses of the domain names. Bob Tyler Toyota argued that Eastern Shore had at least two
Considering all of the circumstances, we are not “left with a substantial and ineradicable doubt as to whether the jury was properly guided in its deliberations.” McCormick, 293 F.3d at 1260 (quotation marks omitted). Bob Tyler Toyota has not carried its burden of showing that it was prejudiced by the district court‘s refusal to give the ABA model instruction. See Burchfield, 636 F.3d at 1333-34 (stating that the failure to give a requested instruction is not an abuse of discretion unless it “resulted in prejudicial harm to the requesting party“).
3.
Bob Tyler Toyota also contends that the district court erred when it refused to instruct the jury that the anticybersquatting act‘s purposes were to deter infringement and to compensate victims. The obvious purpose of any statute that authorizes the award of damages against one who violates it is to compensate the victim and to deter violations. There is no need to state the obvious, and Bob Tyler Toyota has presented no evidence that doing so would have altered the
C.
Bob Tyler Toyota complains that the jury‘s answers in its special interrogatory verdict were inconsistent. They were. The jury found both that Eastern Shore Toyota had violated the anticybersquatting act and also that it qualified for the protection of the act‘s safe harbor because it had a reasonable belief that the “use of the domain name[s] was a fair use or otherwise lawful.”
Even so, Bob Tyler Toyota waived any argument that the verdict was inconsistent by not objecting before the jury was discharged. See Walter Int‘l Prods., Inc. v. Salinas, 650 F.3d 1402, 1419 (11th Cir. 2011) (“We have held that if the party challenging this type of verdict has failed to object before the jury is discharged, that party has waived the right to contest the verdicts on the basis of alleged inconsistency.” (quotation marks omitted)). The reason for this particular
D.
Bob Tyler Toyota‘s remaining contentions are directed at the denial of its renewed motion for judgment as a matter of law based on the sufficiency of the evidence and the denial of its motion for a new trial based on the weight of the evidence.
1.
We review
Bob Tyler Toyota‘s entitlement to judgment as a matter of law on its anticybersquatting act claim turns on whether there was enough evidence for the jury to find that Eastern Shore reasonably believed that its actions were lawful. If Eastern Shore reasonably believed its actions were lawful, it had no bad faith intent to profit; and if it had no bad faith intent to profit, it is not liable under the act; and if it is not liable under the act, Bob Tyler Toyota was not entitled to judgment as a matter of law. See
Bob Tyler Toyota argues that there was not enough evidence for the jury to find that Eastern Shore reasonably believed that its actions were lawful because the evidence at trial established a number of the “bad faith” statutory factors, see
Regardless of how many statutory factors the evidence establishes, Eastern Shore cannot be liable for registering or using the Bob Tyler trademark with a bad faith intent to profit if it nonetheless “believed and had reasonable grounds to believe that the use of the domain name was . . . lawful.”
Esfahani testified that: “Based on everything I knew, owning these domain names was legal, and is legal.” He also testified that if he had known that it was illegal to register the domain names, he would not have done so. And there was evidence that Vaughan assured Esfahani that the practices he was proposing were
Esfahani had every reason to believe that Vaughan was a
In conversations with Esfahani, Vaughan touted offensive and defensive tactics that Eastern Shore could use in the ultra-competitive car dealership
If I was a guy like Shawn Esfahani, I would buy my competition up; and I would just not let them use it. I would just keep [the domain names] dormant. I think that‘s a good strategy. . . . I‘ve actually helped Hyundai buy Toyota domains just to keep them away from Toyota. . . . Everybody does it.
There also was evidence from which the jury could have concluded that Vaughan inadvertently launched the microsites that used the Bob Tyler trademark instead of keeping those domain names dormant, as Esfahani testified he had
Esfahani‘s reaction to the news that the trademark-infringing domain names had been activated is more evidence that he had not wanted those domain names to
I said, “Hey, there‘s a website out there that‘s been activated, how did that happen?” He said, “Well, we‘re building these websites for you as“—and I said, “Well how did Bob Tyler‘s get on there?”
And he said, “My programmers don‘t know what they‘re plugging in. They don‘t recognize Bob Tyler‘s.”
And I said, “You need to be much more selective. Take anything that‘s got Bob Tyler‘s name on it off your process of building these websites.”
And he said, “Ok.” And that was the end of that.
That conversation occurred a few days before Eastern Shore received Bob Tyler Toyota‘s cease-and-desist letter, claiming that Eastern Shore was breaking the law with the microsites and threatening to sue it. According to Eastern Shore‘s administrative director, when the letter came Esfahani “was upset that we were being told that this was something that was wrong, that we couldn‘t do it, that it was illegal . . . we never do anything that‘s illegal. I mean he‘s very explicit about that.” Esfahani then called Vaughan again. Recounting that conversation, Vaughan, who blamed Esfahani for the microsite mishap, testified that the activation of the infringing microsites likely was an error: “I do believe [it] was an error, because his reaction was abrupt, immediately. He called me in the morning.
A few days later Esfahani sent a letter to Vaughan terminating Eastern Shore‘s contract with Vaughan‘s company. The letter read: “We entered into a contract with you under the assumption that purchasing these domains was legal. Needless to say, I feel I‘ve been misled, whether willful or not, therefore we need to end our contract immediately.” Within a couple of months and before this lawsuit was filed, Eastern Shore also surrendered to GoDaddy.com all of the Bob Tyler trademark-infringing domain names that it had found. A few months later it also surrendered to GoDaddy.com the domain names that infringed on the trademarks of other companies.
In summary, construed in the light most favorable to the verdict, the evidence showed that Esfahani believed the actions he took and those he authorized Vaughan to take complied with the law. As soon as he received notice about the existence of the infringing Bob Tyler microsites and before he even received a letter from Bob Tyler Toyota demanding that he do so, Esfahani ordered Vaughan to deactivate them. Eastern Shore surrendered the domain
The actions and reactions of Esfahani and Eastern Shore were starkly different from those of defendants who have been held to have violated the anticybersquatting act. See, e.g., Lahoti, 586 F.3d at 1203 (“[A] reasonable person who had previously been declared a cybersquatter in a judicial proceeding [] should have known that his actions might be unlawful.“); Audi AG, 469 F.3d at 549-50 (“Following the cease and desist letters and this lawsuit, [the defendant] continued to sell advertising space [on the trademark-infringing website]. Even construing facts and inferences in a light most favorable to [the defendant], his belief that he had permission to use the trademarks was objectively unreasonable . . . .“); Coca-Cola Co. v. Purdy, 382 F.3d 774, 788 (8th Cir. 2004) (“[The defendant] argues that his belief that his conduct was protected by the First Amendment brings him within the ACPA ‘safe harbor’ provision. . . . He continued to register and use domain names in the face of repeated complaints and warnings from the plaintiffs that such conduct was unlawful and even after the district court issued preliminary injunctive relief.
Bob Tyler Toyota attempts to bring this case within the factual orbit of some of those opinions by arguing that the cease-and-desist email that Eastern Shore had received from eBay a month before it got Bob Tyler Toyota‘s cease-and-desist letter alerted Eastern Shore to the fact that its trademark infringing domain names likely violated the anticybersquatting act and the Lanham Act. Actually, what eBay‘s email stated was that Eastern Shore‘s “registration and use” or the “use, [sale], or offer for sale” of the domain name likely violated the law. (Emphasis added.) A jury could have reasonably found that after reading that email Esfahani still reasonably believed that defensively holding the domain names using the Bob Tyler trademark was not a violation of the law. And, as we have explained, a jury also could have reasonably found that Eastern Shore did not know that the microsites using the Bob Tyler trademark were operational, and thus in “use,” until Toyota‘s southeastern division general manager told Esfahani about the microsites.
Bob Tyler Toyota also attempts to show on another ground why Eastern
Bob Tyler Toyota also obtained a party admission under
But what ordinarily happens and what should have happened did not happen in this case. Although Eastern Shore never made a motion to withdraw its admission, Bob Tyler Toyota never objected to Eastern Shore asserting a position at trial that was directly contrary to that admission. It let Eastern Shore offer evidence and argue that it intended only to defensively hold the domain names, not to activate them and divert customers to its own websites. The district court apparently did not notice the inconsistency either. But the jury did. During the first day of deliberations, the jury sent a question to the district court asking it how it should resolve a conflict between the party admission and the “[p]resented testimony that [Eastern Shore] did not willfully activate a site.”
Instead of arguing that the jury should be instructed according to the Federal Rules of Civil Procedure—that the
The next day the jury had another question about Eastern Shore‘s admission. It asked whether Eastern Shore was “admitting to only ‘Defensive use’ or to both Defensive and offensive use.” The district court determined that Eastern Shore‘s admission dealt only with the intention it had in purchasing the domain names, not with the intent behind any of its later actions. On that basis, the district court suggested to the parties a jury instruction explaining that “the defendants’ response simply admitted that sentence as it is worded.” Eastern Shore‘s attorney was satisfied with that instruction. So was Bob Tyler Toyota‘s attorney, who said: “That‘s fine with me too, Your Honor.” The district court then gave that instruction, and less than two hours later, the jury decided the case in favor of Eastern Shore.
The district court should have instructed the jury that Eastern Shore‘s
After considering all of the evidence, and the circumstances, we cannot say that the district court erred in denying Bob Tyler Toyota‘s motion for judgment as a matter of law.
2.
As for the denial of Bob Tyler Toyota‘s motion for new trial based on the weight of the evidence, “[n]ew trials should not be granted on evidentiary [sufficiency] grounds unless, at a minimum, the verdict is against the great—not merely the greater—weight of the evidence.” St. Luke‘s Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1200 n.16 (11th Cir. 2009) (quotation marks and alteration omitted). The district court‘s determination that the verdict was not against the great weight of the evidence is one that we review only for an abuse of discretion. Rosenfield v. Wellington Leisure Prods., Inc., 827 F.2d 1493, 1498 (11th Cir. 1987). In light of the totality of the evidence, which we have already summarized, we cannot say that the district court abused its discretion in determining that the jury‘s verdict was not against the great weight of the
AFFIRMED.
Notes
Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 266 (4th Cir. 2001).A domain name tells users where they can find a particular web page, much like a street address tells people where they can find a particular home or business. Domain names consist of two parts: the top level domain name (TLD) and secondary level domain name (SLD). The TLD is the suffix, identifying the nature of the site. The SLD is the prefix, identifying the site‘s owner. Thus in the domain name Duke.edu, “.edu” is the TLD, identifying the site as affiliated with an educational institution. “Duke” is the SLD, identifying the owner as Duke University.
- the trademark or other intellectual property rights of the person, if any, in the domain name;
- 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;
- the person‘s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
- the person‘s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
- 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;
- 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;
- 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;
- 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
- 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.