Order GRANTING Plaintiffs. Application for a Preliminary Injunction
Debra Plato Deputy Clerk
On April 14, 2010, the Court granted Plaintiffs ex parte application requesting a Temporary Restraining Order (“TRO”) enjoining Defendant Concrete Solutions, Inc. from transferring or selling the domain name <supercrete.eom> to any third party pending resolution of the claim filed against Defendants for cyberpiracy under 15 U.S.C. § 1125(d). Subsequently, the parties briefed Plaintiffs further request for a preliminary injunction, appearing before the court on April 22, 2010 for oral argument on the matter. For the reasons noted below, the Court GRANTS Plaintiffs request for a preliminary injunction enjoining Defendant Concrete Solutions, Inc. from transferring or selling the domain name <supercrete.com> to any third party pending resolution of the claims raised in this action.
I. FACTUAL BACKGROUND
Plaintiff Super-Krete International, Inc. is a California corporation specializing in the sale of products for the repair and restoration of existing concrete. (Holwitz Dec. ¶ 3.) Plaintiff owns federal trademark registrations for the marks “Super-Crete,” “Super-Krete,” and “Super-Krete Products” (“the Marks”) for use in connection with the sale and marketing of its products. (Id. at ¶ 4.) Plaintiffs Marks were filed with the U.S. Patent and Trademark Office (“USPTO”) on September 24, 1999 and subsequently registered under U.S. Registration Nos. 2,375,309, 2,377,606, and 2,589,070. (Id. aU4; Ex. A).
*1029 Plaintiff states that its principal, John L. Holwitz, first obtained ownership of the previously registered trademark for “Super-Crete” on April 14, 1995. (Id. at ¶ 5.) In support, Plaintiff has produced an assignment contract, indicating that Loren Eugene Hale transferred all interest in the “Super-Crete” mark, as previously registered under U.S. Registration No. 1102137, to Holwitz on that date. (Id. at Ex. B.) This prior registration was filed with the USPTO on October 10, 1975 and indicates that the mark’s first use in commerce was in 1966. 1 The current registration for the “Super-Crete” mark also indicates the first use in commerce as 1966. (Id. at Ex. A.) 2 The registrations for the “Super-Krete” and “Super-Krete Products” marks indicate a first use in commerce of 1989 and May 1996 respectively. (Id.)
The declaration of Plaintiffs president, Tracey Holwitz, states that the company has “continuously exploited” the “SuperCrete” mark since its acquisition in 1995, and that the company actively promotes its products under the Marks. (Id. at ¶¶ 5-8.) Specifically, Holwitz declares that the company uses the Marks in connection with online promotion of its products by owning and operating the website domains <supercrete.com>, <super-krete.com>, <super-erete.ca>, and <super-krete.ca>. (Id. at ¶ 8.)
Defendant Concrete Solutions, Inc. competes against Plaintiff in the concrete resurfacing, restoration, and sealant market. (See Sadleir Decl. ¶ 3). Defendants’ operations are located less than seventeen miles from Plaintiffs location. (Holwitz Decl. ¶ 9.) Plaintiff contends that Rod Sadleir, President of Concrete Solutions and also a defendant in this action, developed a limited business relationship with Plaintiffs founder in the early 1980’s and subsequently monitored Plaintiffs business activities. (Id. at ¶ 9.)
On March 17, 1999, Sadleir registered the domain name < supercrete.com > and directed all traffic from this site to the website for Concrete Solutions at cconeretesolutions.com >, which offers products in direct competition with Plaintiff. (Sadleir Decl. ¶ 5; Holwitz Decl. ¶ 10.) Sadleir declares, however, that Concrete Solutions has never used the terms “supercrete” or “super-crete” on its website. (Sadleir Decl. ¶ 6.) Sadleir states that at the time of registering <supercrete.com>, he was “unaware of any trademarks allegedly owned by Plaintiff.” (Id. at ¶ 7.) Five months after registering the site, Sadleir received an e-mail from Tracey Holwitz indicating Holwitz was aware of the potentially infringing website. (Id. at ¶ 7.)
Sadleir heard nothing further from Plaintiff regarding the website until 2007. (Id. at ¶ 8.) On September 23, 2007, Sadleir offered to sell the < supercrete.com > domain name to Plaintiff for $15,000. (Holwitz Decl. ¶ 11.) Plaintiff filed an arbitration action in September 2008 with the World Intellectual Property Organization (“WIPO”), seeking transfer of the <supercrete.com > domain. (Sadleir Decl. ¶ 9.) *1030 The WIPO panel denied Plaintiffs claim for transfer, stating that Plaintiff had failed to provide evidence of commercial use of the Marks prior to the site’s registration by Sadleir and finding that there was no prior use of the Marks and that the term “supercrete” was descriptive. (Id., Ex. B)
On March 18, 2010, Plaintiff filed this action alleging, inter alia, trademark infringement and dilution under 15 U.S.C. §§ 1114, 1125 and cyberpiracy under 15 U.S.C. § 1125(d). Following the filing of the suit, Defense counsel notified Plaintiff that Defendants were considering selling the domain name <supercrete.com> to a third party — possibly from abroad. (Rome Decl. ¶ 5; Bjorgum Decl. ¶ 3.) Defense counsel would not agree to the requested stipulation that Defendants would not sell the domain name until after Plaintiffs claims had been adjudicated here. (Rome Decl. ¶ 6; Bjorgum Decl. ¶ 3.) Defense counsel contends these discussions were made as part of an attempt to settle the case. (Bjorgum Decl. ¶ 4.)
II. DISCUSSION
A. Legal Standard
A district court should enter a preliminary injunction only “upon a clear showing that the plaintiff is entitled to such relief.”
Winter v. Natural Resources Defense Council, Inc.,
— U.S. —,
B. Plaintiffs Likelihood of Success on the Merits
Under the Anticybersquatting Consumer Protection Act (“ACPA”), Congress provided civil remedies for trademark holders seeking' relief against parties infringing upon their marks in connection with website domain names. 15 U.S.C. § 1125(d);
see Bosley Med. Inst., Inc. v. Kremer,
To support a claim for cybersquatting under § 1125(d), a plaintiff must prove that the defendant:
(i) has a bad faith intent to profit from [a] 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;
*1031 (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 reason of section 706 of Title 18 [the Red Cross] or section 220506 of Title 36 [the Olympics].
15 U.S.C. § 1125(d)(1)(A);
see also Bosley Medical Institute,
1. Plaintiffs Valid and Distinctive Marks
Plaintiff has adduced evidence of ownership of registered trademarks for the terms “Super-Crete,” “Super-Krete,” and “Super-Krete Products” in connection with the sale of products for the repair and restoration of existing concrete. (Holwitz Decl. ¶ 4; Ex. A). “Super-Crete” — the mark most similar to the domain name at issue — was first registered as a trademark in 1975, twenty years before Sadleir registered the disputed domain name. While Defendants make the general argument that the “Super-Crete” mark is descriptive and not distinctive, the mark’s registration with the USPTO is sufficient evidence to establish its distinctiveness and validity.
Lahoti v. VeriCheck, Inc.,
2. Defendants’ Registration and Use of a Confusingly Similar Domain Name
In determining whether there is confusing similarity under the ACPA, courts compare the plaintiffs mark with the name of the website.
See Coca-Cola Co. v. Purdy,
A court should not look beyond the domain name to consider the content of the website.
Purdy,
Defendants registered the domain name <supercrete.com> in 1999 and have since used the domain to reroute web viewers to Concrete Solutions’ primary website. The only difference between Plaintiffs registered mark of “SuperCrete” and Defendants’ domain name of <supercrete.com> is the removal of the hyphen. Based on the case law, this minor variation makes Defendants’ domain name confusingly similar to Plaintiffs mark. While Defendants argue that the hyphen is significant in modifying the term, this argument is contrary to the case law — and common sense.
See Union Carbide Corp. v. Ever-Ready, Inc.,
3. Defendants’ Bad Faith Intent to Profit
To assist courts in the determination of bad faith intent under the statute, Congress enumerated a non-exclusive list of nine factors to be considered:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creat *1033 ing a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
15 U.S.C. § 1125(d)(1)(B)®.
On balance, the relevant factors here favor a finding that Defendants acted with bad faith intent to profit from the <supercrete.com> domain name. Using the domain name solely to route potential web customers to Concrete Solutions’ website, Defendants make no claim to use of “supercrete” as a mark. Indeed, defendants state that they have never applied the term to any of their products. While Defendants contend that “supercrete” could be used as a purely descriptive term without infringing on a distinctive trademark, this argument has little merit precisely because Defendants admit to never using the term to describe their products. Instead, Defendants employ a domain name that is confusingly similar to a local competitor’s mark for the sole purpose of directing web traffic to their commercial website, which offers products in direct competition with Plaintiffs. As such, it appears that Defendants only interest in the domain name is to divert customers who may have been searching for Plaintiffs mark to their own commercial website, as referenced in factor five. Further, Defendants’ attempt to sell the domain to Plaintiff in 2007 suggests bad faith intent as referenced in factor six.
In opposition, Defendants argue that their registration of the site on March 17, 1999 — six months prior to Plaintiffs filing of the current trademark registrations on September 24, 1999 — suggests sufficient prior use of the site under factor three to negate a finding of bad faith intent. (Opposition at 10-12.) In support, Defendants rely largely on the finding of the WIPO panel that Plaintiff had not demonstrated use of the Marks in commerce prior to their trademark registration in September 1999.
4
As noted by
*1034
Defendants, however, the findings of the WIPO panel are entitled to no deference here.
See Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona,
Further, Plaintiff has submitted credible evidence suggesting that the “SuperCrete” mark was used in commerce well before Sadleir registered the disputed domain name in 1999. The original registration of the mark was made in 1975 and assigned by written contract to Plaintiff in 1995. Both registrations of the mark indicate that the date of first use in commerce was 1966. Holwitz has also declared that Plaintiff has continuously used the “SuperCrete” mark in connection with its products since 1995. Plaintiff additionally contends that Sadleir was aware of these activities well before registering the domain. Although Sadleir may not have been aware of the trademark registrations involved, it appears likely that he would be aware of a mark used by a local competitor within the relatively narrow market of concrete-surfacing products. The Court finds that the prior use factor weighs in favor of bad faith, rather than against.
Finally, Defendants contend that their use of the <supercrete.com> domain name falls within the safe harbor provision of the statute. The ACPA contains a safe harbor provision, which states: “Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(l)(B)(ii). While not clearly stated, Defendants’ reliance on the safe harbor provision appears to be based on the WIPO decision and the potential use of “supercrete” as a descriptive term. As noted, however, WIPO’s decision is granted no deference here, and Defendants have expressly stated that they never used the term “supercrete” to describe their products. Further, the Ninth Circuit has found that “courts should ‘make use of this “reasonable belief ” defense very sparingly and only in the most unusual cases.’ ”
Lahoti,
4. Defendants’ Laches Defense
In opposition, Defendants argue that Plaintiff waited too long to bring its present claims related to the <supercrete.com> site and that the ACPA claim should be barred under the doctrine of laches. “Laches is an equitable time limitation on a party’s right to bring suit, resting on the maxim that ‘one who seeks the help of a court of equity must not sleep on his rights.’ ”
Jarrow Formulas, Inc. v. Nutrition Now, Inc.,
Here, neither party has suggested an analogous state law statute of limitations. As the cybersquatting claim at issue appears most similar to a state trademark infringement claim, the court will rely on the four-year statute of limitations for unspecified claims outlined in California Code of Civil Procedure § 343.
See ATM Express, Inc. v. ATM Express, Inc.,
No. 07cv1293-L(RBB),
To consider whether Plaintiffs delay in filing suit was unreasonable, and therefore barred, the court must further consider the following six
“E-Systems ”
factors: “(1) the strength and value of the trademark rights asserted; (2) plaintiffs diligence in enforcing the mark; (3) harm to the senior user if relief is denied; (4) good faith ignorance by the junior user; (5) competition between senior and junior users; and (6) extent of harm suffered by the junior user because of the senior user’s
*1036
delay.”
Tillamook,
5. Conclusion Regarding Likelihood of Success on the Merits
For the foregoing reasons, the court finds that Plaintiff is likely to succeed on the merits of its ACPA claim.
C. Irreparable Injury
Plaintiff contends that it will suffer irreparable injury if Defendants transfer control over the <supercrete.com> domain before it can gain control of the site because it will lose its desired remedy of gaining control of the site.
5
“[Preliminary injunctive relief is available only if plaintiffs ‘demonstrate that irreparable injury is
likely
in the absence of an injunction.’ ”
Johnson v. Couturier,
*1037
In a trademark infringement ease, “[irreparable injury is ordinarily presumed upon a showing of a likelihood of success.”
Abercrombie & Fitch Co. v. Moose Creek, Inc.,
Even without this presumption, Plaintiff has demonstrated irreparable injury based on the threatened loss of prospective customers who would be diverted away from its website should it be unable to gain control over the domain name. In
Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush
&
Co., Inc.,
D.Balance of the Equities
“A preliminary injunction is an extraordinary remedy never awarded as of right.”
Winter,
E.Public Interest
“In exercising their sound discretion, courts of equity should pay particular regard for the public consequences in employing the extraordinary remedy of injunction.”
Weinberger v. Romero-Barcelo,
III. CONCLUSION
For the foregoing reasons, the Court finds that the relevant factors weigh in favor of granting Plaintiffs application for preliminary injunction. Therefore, Plaintiffs request for a preliminary injunction is GRANTED. Defendants, their affiliates, parents, subsidiaries, officers, agents, representatives, servants, employees, and attorneys and anyone acting on Defendants’ behalf, are ENJOINED from selling or transferring the domain name <supercrete.com> until further order of the Court.
IT IS SO ORDERED.
Notes
. The Court takes judicial notice of the prior registration of the “Super-Crete” mark under registration no. 1102137, as provided on the USPTO's website.
See Lee v. City of Los Angeles,
. The evidentiary objection is overruled.
. 15 U.S.C. § 1125(d)(1)(C) provides that "[i]n any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.”
. Defendants suggest that Plaintiffs counsel violated his duty of candor to the court by failing to disclose the WIPO panel’s ruling in the prior ex parte application. The existence of the WIPO decision was revealed in the materials presented to the Court, however, and the Court was aware of the issue when it ruled on Plaintiff's TRO application. As the TRO application was presented ex parte, Plaintiff’s counsel should have affirmatively addressed the WIPO decision out of caution.
See Campbell
v.
Rice,
. Defendants contend that Plaintiffs evidence of this potential harm — an email from Defendants' counsel suggesting that Defendants might sell the site to a third party — is inadmissable under Federal Rule of Evidence 408. Rule 408 only bars admission of offers to compromise, however, "when offered to prove liability for, invalidity of, or amount of a claim that was disputed as to validity or amount.” Because the evidence here was not used to support liability or a damage amount, it is not barred.