OPINION AND ORDER
This matter is before the Court on a Motion for Summary Judgment, ECF No. 26, filed by Richard P. Olenych (“Ole-nych”) and Lone Tree Printing, LLC (“Lone Tree” and, collectively with Ole-nych, “Defendants”). After examining the briefs and the record, the Court determines that oral argument is unnecessary because the facts and legal contentions are adequately presented and oral argument would not aid in the decisional process. Fed. R. civ. P. 78(b); E.D. Va. Loe. R. 7(J).
I. FACTUAL AND PROCEDURAL BACKGROUND
Edward Zinner (“Plaintiff” or “Zinner”) brought this Lanham Act action against Defendants based on Defendants’ use of the domain name edzinner.com. Plaintiff is a musician who has performed live music as a member of several bands and also recorded music with other artists. In addition, Plaintiff is the owner or part-owner of Ocean Equity Group (“OEG”) and Ocean Equity Payment Solutions, LLC (“OEPS”). Also relevant to this dispute, on March 13, 1995, in the United States District Court for the Eastern District of Pennsylvania, Plaintiff pleaded guilty to racketeering charges arising from his operation of a multiple employer welfare arrangement. Plaintiffs conviction resulted in a term of imprisonment and substantial restitution judgment.
Olenych is the principal owner of Lone Tree, a printing company. Olenych is also the author of one self-published novel, Joe Sales. Beginning in 2010, Lone Tree provided printing services to Plaintiffs companies, OEG and OEPS.
In 2012, as a favor to Olenych, OEPS hired Olenych’s son, Perry Olenych, to work as an independent contractor. OEG also employed Perry Olenych as an employee beginning in January 2013. In March 2013, Perry Olenych resigned from OEPS and OEG and, along with another former OEPS employee, Doug Wilson, formed Ally Merchant Services, LLC (“Ally”). Olenych is a minority shareholder of Ally and has very little involvement in its day-to-day operations. Once Plaintiff learned of Ally, Plaintiff told Olenych that Perry Olenych and Doug Wilson could not use their knowledge of the OEPS and OEG customer lists to take Plaintiffs clients.
On August 29, 2013, OEG and OEPS sued Perry Olenych and Doug Wilson in the Circuit Court for the City of Virginia Beach. OEG and OEPS asserted causes of action for breach of contract and tor-tious interference with business relations.
In September or October 2013, Olenych began drafting a fictionalized novel, “EZ the Hard Way,” about his relationship with Plaintiff. Olenych based “EZ the Hard Way” on his experiences with Plaintiff. The main character of Olenych’s draft novel is “Ed Zinner.” According to Olenych, although the characters in the novel are not Plaintiffs family members, it is not a coincidence that the fictionalized “Ed Zin-ner’s” wife and children have the same names as Plaintiffs wife and children. In a draft of the novel, “Joe,” the owner of a printing company that performed work for “Ed,” plots to take retribution against “Ed” for interfering with “Joe’s” family.
On March 6, 2014, Defendants — without consent to use Plaintiffs name as a domain name — purchased the domain name “ed-zinner.com” from HostPapa, a hosting service. At that time, Defendants provided HostPapa with accurate registration information, including their name, address, and other contact information. However, to protect themselves from Plaintiff, Defendants opted to pay an additional fee for HostPapa to instruct the domain registrar, Tucows, Inc. (“Tucows”) to keep Defendants’ registration information private. Aside from the edzinner.com domain name, Defendants do not own any domain name with a person’s name other than Olenych’s own name.
The only content of the edzinner.com website was the following text:
Does history repeat itself?
It does with Ed Zinner. And that is what this page is all about.
We will review his documented statements and actions prior to his Multiple Employer Welfare Arrangement Industry or MEWA conviction. The book “Broken Promises: Fraud by Small Business Health Insurers ” by Robert .Tillman devoted a whole chapter to Edward M. Zinner.
Here’s the link:
http://books.google/com/books?id=tr9Q0 w6aX30C&pg=PA75&lpg=PA75&dq= ed + zinner+scams&souree ...
It’s not only about Ed Zinner’s felony conviction that we are going to review, it is his blatant lies and outrageous antics that continue today that need to be exposed. If Mr. Zinner had simply done his jail time and reformed[,] this web site would not be here. [H]e chose not to[].
So his past will be revealed in chronological order. We hope to demonstrate to the world that Ed Zinner has not changed or repented for his actions and continues with his old habits.
Defs.’ Mot. for Summ. J. Ex. 14, ECF No. 26-16. Aside from that text, the edzin-ner.com website did not state that the edzinner.com domain name was available for purchase and did not provide information identifying its owners, Defendants.
On March 25, 2014, Samuel Brown — an attorney representing Plaintiff in his state-court action against Doug Wilson and Perry Olenych — emailed the edzinner.com domain registrar, Tucows. In the email, Mr. Brown demanded that Tucows provide him with the name of the domain name registrant and forward the email to the registrant. The email demanded a response from the registrant by March 28, 2014.
Tucows forwarded the email, from Mr. Brown, to Olenych. In a response email to Mr. Brown, Tucows stated that the edzin-ner.com domain name had enabled privacy protections. However, Tucows informed Mr. Brown that it had forwarded the email to the domain name registrant and Tucows provided Mr. Brown with a link to a form through which Mr. Brown could directly contact the registrant. Neither Mr. Brown nor Plaintiff ever attempted to use the contact form to contact the edzin-ner.com domain name registrant.
On the morning of March 27, 2014, Ole-nych told Tucows that his attorney would contact Mr. Brown by April 4, 2014. That same morning, Tucows informed Mr. Brown that the registrant’s attorney would contact him by April 4, 2014. In response, Mr. Brown stated that he could not wait
That afternoon, a representative of Tu-cows advised Olenych that Mr. Brown had threatened litigation against Tucows and instructed Olenych to contact Mr. Brown by the end of the day, or Tucows would remove the privacy protections on the ed-zinner.com domain. In response to the threat from Tucows that it would remove the privacy protection on the edzinner.com domain, Olenych altered the registration information to a fictitious name and address. On the following morning — March 28, 2014 — Olenych emailed a representative of Tucows and informed her that his attorney, Justin Fernandez, would be contacting Mr. Brown that day.
On March 28, 2014, Mr. Fernandez contacted Mr. Brown. Although Mr. Brown was not available to receive his call, Mr. Fernandez left the following voicemail message:
Hi, this is attorney Justin Fernandez in Cincinnati,
Ohio. My phone number is [xxx]-[xxx]-[xxxx]. I’m eall[ing] regarding the domain name edzinner.com. Uh, I’m representing a client who is interested in selling that domain name. Again, Justin Fernandez, [xxx][xxx]-[xxxx], in Cincinnati. Thank you very much, Mr. Brown. Bye, bye.
Id. Ex. 17, EOF No. 26-19. Mr. Brown called Mr. Fernandez in response to the voicemail message and had several conversations with Mr. Fernandez. In the conversations, Mr. Brown and Mr. Fernandez primarily discussed whether Mr. Fernandez was required to disclose the name of his client to Mr. Brown. In addition, the gist of the conversation between Mr. Fernandez and Mr. Brown was that Mr. Fernandez’s client wanted to be paid for the website. Brown Dep. 50:20-21, Nov. 24, 2014, ECF No. 26-6. And “the tone of the conversation was, it would take a lot of money to pay off this mysterious owner of this website.” Id. at 49:24-25, 50:1. That said, Mr. Fernandez never provided Mr. Brown with a specific offer to sell the website.
While events unfolded regarding the ed-zinner.com domain name, there was an important development in Plaintiffs state-court action. On March 31, 2014, Plaintiff filed a Third'Amended Complaint, which named Olenych and Ally as defendants. Defs.’ Mot. for Summ. J. Ex. 20, ECF No. 26-22.
Returning to the edzinner.com domain name dispute, on April 2, 2014, Tucows emailed Mr. Fernandez to inform him that Mr. Brown was threatening litigation against Tucows and that Tucows would remove the privacy protections from the edzinner.com domain name. Tucows then removed the privacy protections.
That same day, after Tucows had removed the privacy protections, Mr. Brown emailed Tucows to advise it that the registration information for the domain name was inaccurate. Tucows then informed Defendants that it would suspend the domain name unless Defendants corrected the domain name registration information or demonstrated that it was up to date and accurate. In response, Olenych corrected the registration information. And, on April 3, 2014, Tucows provided Mr. Brown with the corrected registration information.
Despite the controversy it generated, the edzinner.com website was short lived. The content on the website was only on the internet for several weeks in March 2014, and Olenych removed the content during that same month.
On April 21, 2014, Plaintiff filed this action against Defendants. Complaint, ECF No. 1. Plaintiff alleges two causes of action under the Anti-Cybersquatting Consumer Protection Act amendments to the Lanham Act. In Count One, Plaintiff alleges that Defendants violated 15 U.S.C. § 8131 (“section 8131”) by registering Plaintiffs name as the edzinner.com domain name, without his consent, and with the specific intent to profit from such name by selling the domain name to Plaintiff. Id. ¶¶ 41-43. In Count Two, Plaintiff alleges that Defendants violated 15 U.S.C. § 1125(d) (“section 1125(d)”) by registering, trafficking in, and using, with the bad faith intent to profit therefrom, the domain name edzinner.com that is identical to the ED ZINNER mark. Id. ¶¶ 51-52. Plaintiff seeks injunctive relief, actual damage's or, at his option, statutory damages, attorneys’ fees, and costs.
On December 31, 2014, Defendants moved for summary- judgment. Defendants contend that they are entitled to summary judgment on Count One because Plaintiff cannot demonstrate that Defendants possessed the specific intent to profit from registering the edzinner.com domain name. As to Count Two, Defendants argue that they are entitled to summary judgment because Plaintiff has failed to produce sufficient evidence to establish that he possesses a valid trademark in his name or that Defendants possessed the bad faith intent to profit from using the edzinner.com domain name. In addition, Defendants assert that they are entitled to summary judgment on the issue of damages. Regarding Count One, they contend that the Lanham Act provides no damages as a remedy for violations of section 8131. And, with respect to Count Two, Defendants argue that Plaintiff has failed to show that his personal name mark had secondary meaning or was registered with
II. STANDARD OF REVIEW
The Federal Rules of Civil Procedure provide that a district court shall grant summary judgment in favor of a movant if such party “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). “[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247-48,
If a movant has properly advanced evidence supporting entry of summary judgment, the non-moving party may not rest upon the mere allegations of the pleadings, but instead must set forth specific facts in the form of exhibits, sworn statements, or other materials that illustrate a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322-24,
III. DISCUSSION
As noted above, Defendants seek summary judgment on Plaintiffs section 8131 claim and section 1125(d) claim, and on the issue of damages with respect to each claim. In light of the analytical overlap between determining whether a Plaintiff has demonstrated a “bad faith intent to profit,” for section 1125(d) purposes, and a “specific intent to profit,” for section 8131 purposes, first, the Court will consider Plaintiffs section 1125(d) claim. Then, the Court will consider, in turn, Plaintiffs section 8131 claim and the issue of damages.
A. Plaintiffs Section 1125(d) Claim
The ACPA creates a cause of 'action against persons who engage in “cybersquatting.” “Cybersquatting is the practice of registering ‘well-known brand
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, without regard to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; 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....
15 U.S.C. § 1125(d)(1)(A). Therefore, for Plaintiff to prevail on his cybersquatting claim he must show that: (1) Defendants registered, trafficked in, or used a domain name; (2) that was identical or confusingly similar to a mark owned by Plaintiff; (3) that such mark was distinctive at the time Defendants registered the domain name; and (4) Defendants did so with a bad faith intent to profit from such mark. See Lamparello v. Falwell,
1. The Distinctiveness of the ED ZINNER Mark
a. Distinctiveness Under the Lanham Act
As an essential element of his asserted section 1125(d) claim, Plaintiff must establish that the ED ZINNER mark was distinctive at the time Defendants registered the edzinner.com domain name. In the context of the ACPA, “ ‘distinctive’ ... is a trademark law term of art simply meaning that the designation has achieved status as a mark by being legally recognized as a symbol to identify and distinguish one source.” 5 McCarthy, supra, § 25A:50. “[T]rademark law has developed a spectrum of the distinctiveness of marks ... [and] [i]n declining order of distinctiveness, marks are referred to as (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.” OBX-Stock, Inc. v. Bicast, Inc.,
Arbitrary, fanciful, and suggestive marks are deemed inherently distinctive and valid as service marks. Arbitrary marks “are based on existing words used in ways unconnected with their common meaning, such as APPLE computer or SHELL gasoline.” Id. Similarly, fanciful marks are “made-up words expressly coined to serve as trade or service names,” U.S. Search, LLC v. U.S. Seach.com Inc.,
On the other hand, to enforce a descriptive mark, the mark holder must show that the mark has secondary meaning to demonstrate that such mark has sufficient distinctiveness to warrant protection. The line between suggestive marks and descriptive marks is “thinly drawn.” Synergistic Int’l, LLC v. Korman,
Generic marks lie at the least-protected end of the spectrum of distinctiveness because such marks can never serve as valid service marks. A generic term is the common name for a service. U.S. Search,
To aid a mark holder in meeting such burden, the Lanham Act creates a presumption of validity for marks that a holder has registered on the Principal Register of the PTO. Under 15 U.S.C. § 1057(b),
A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
See also 15 U.S.C. § 1115(a) (establishing that “[a]ny registration ... of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark----”). Thus, the issuance of a certificate of registration provides a mark holder with a presumption that such mark is valid. See, e.g., Pizzeria Uno,
The presumption of validity that accompanies a certificate of registration shifts the burden of production regarding the issue of validity. “Without a certificate of registration, the owner would be required to establish that the disputed mark was sufficiently distinctive to war
b. Plaintiffs Mark
The parties’ primary dispute over the validity of Plaintiffs alleged mark concerns whether the ED ZINNER mark is distinctive enough to warrant protection as a service mark. Defendants contend that such mark is a descriptive mark because it is a personal name mark. As a corollary, Defendants contend that Plaintiffs section 1125(d) claim fails as a matter of law because Plaintiff has not presented sufficient evidence of secondary meaning to establish that the ED ZINNER mark is distinctive. Additionally, Defendants assert that, even if the PTO registers Plaintiffs mark, such registration would not demonstrate the mark’s distinctiveness because Plaintiff had not registered his mark at the time Defendants registered the edzinner.com domain name. In response, Plaintiff contends that he has presented sufficient evidence of distinctiveness based on the PTO’s publication of his application to register the ED ZINNER mark and evidence of Plaintiffs use of the mark in connection with musical performances. To resolve the issue, the Court must synthesize the various lines of precedent within the Fourth Circuit’s distinctiveness jurisprudence.
As a general matter, Defendants correctly categorize Plaintiffs mark as a descriptive mark because ED ZINNER is a personal name mark. The Fourth Circuit has stated that “ ‘[n]ames — both surnames and first names — are regarded as descriptive terms and therefore one who claims federal trademark rights in a name must prove that the name has acquired a secondary meaning.’ ” Perini Corp. v. Perini Constr., Inc.,
“Proof of secondary meaning entails a rigorous evidentiary standard.” U.S. Search,
Here, Plaintiff has presented almost no evidence to demonstrate secondary meaning under the six factors stated above. With respect to advertising expenditures, consumer studies linking the mark to a source, unsolicited media coverage of the service, and attempts to plagiarize the mark, Plaintiff has presented no evidence whatsoever. Regarding sales success, Plaintiff asserts that he has used the ED ZINNER mark in his capacity as a professional musician. See Pl.’s Resp. Opp’n Mot. for Summ. J. at 26. Plaintiff has submitted evidence that he has performed with numerous musical groups, even as recently as August 15, 2014, and that one such group of which Plaintiff was a member sold “a couple thousand copies” of a record. See PL’s Resp. Opp’n Mot. for Summ. J. Ex. B. at 7-9, ECF No. 27-2; Zinner Dep. 247:16-17, Sept. 25, 2014, ECF No. 26-4. However, Plaintiff has presented no evidence of sales success associated with the ED ZINNER mark, rather than simply musical groups in which Plaintiff performed. Thus, the sales success factor weighs against a finding that the mark has secondary meaning. Finally, although Plaintiff has presented some evidence indicating that he used the ED ZINNER mark “to identify entertainment services in the nature of live musical performances ... since 1974,” see PL’s Resp. Opp’n Mot. for Summ. J. Ex. B. at 7, the Fourth Circuit has indicated that “length of time alone is insufficient to establish secondary meaning,” U.S. Search,
Significantly, however, during the pen-dency of this action, the PTO has registered Plaintiffs ED ZINNER mark on the Principal Register. As noted above, at minimum, such registration is prima facie evidence that the ED ZINNER mark is a valid service mark, at least from the date of its issuance. See 15 U.S.C. §§ 1057(b), 1115(a). Thus, the Court must now consider the extent to which Plaintiffs certifi
The plain language of the Lanham Act requires the Court to consider Plaintiffs certificate of registration as prima facie evidence that the ED ZINNER mark is distinctive. The Fourth Circuit has underscored that in enacting 15 U.S.C. §§ 1057(b), 1115(a), “Congress has directly spoken” and established that the PTO’s action in issuing a certificate of registration is “ ‘prima facie evidence’ of specified facts,” including the distinctiveness of the registered mark. Am. Online,
The strength of the presumption of distinctiveness that accompanies a certificate of registration depends on the manner in which the PTO issued the certificate. The PTO may not register a mark that is merely descriptive. See Pizzeria Uno,
Importantly, the Court recognizes that, in this case, it is less certain than in other cases that the Court should presume that Plaintiffs mark is inherently distinctive based on the certificate of registration because, unlike the Fourth Circuit, the PTO considers personal names to be inherently distinctive. As stated above, the Fourth Circuit regards personal names as descriptive marks that are valid only upon a showing of secondary meaning. Perini,
In Brooks v. Creative Arts By Calloway, LLC, the Trademark Trial and Appeal Boai’d (“T.T.A.B.”) considered whether an opposer in an opposition proceeding was required to show that a personal name mark had acquired secondary meaning to establish that a likelihood of confusion between such alleged prior mark and the mark in the application would result from granting the application.
[a] personal name mark, unless it is primarily merely a surname, is registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person.
Id. at *8. In support of its conclusion, the Board cited earlier decisions of the Commissioner of Patents that held that personal name marks did not require a showing of secondary meaning, unlike surname marks, based on the differences between the Trade Mark Act of 1905 and the Lan-ham Act. See id. at *8-9 (citing Ex Parte Dallioux,
“To refuse registration of the [ANDRE DALLIOUX] mark ... would be in effect to continue the rule of the Act of 1905, even though the prohibition against registration of a mark consisting of the name of an individual (which included surnames but was not restricted thereto), no longer remains in the law____”
Id. (omissions in original) (quoting Ex Parte Dallioux,
In light of the conflicting standards' in Brooks (T.T.A.B.) and Perini (Fourth Circuit), the Court must consider the extent to which such conflict undermines the evi-dentiary value of Plaintiffs certificate of registration. In at least one case, the Fourth Circuit has looked at the PTO’s rationale in issuing a certificate of registration when determining whether a district court properly concluded that a mark was invalid as a matter of law. In OBX-Stock, the district court granted summary judgment to a defendant in a trademark infringement action because the plaintiff had not presented evidence that its mark, a geographically descriptive mark, had secondary meaning, even though the plaintiff had obtained certificates of registration for the mark. See
To the extent that OBX-Stock suggests that a court should scrutinize the PTO’s rationale in issuing a certificate of registration, arguably such decision might indicate that the conflict between the Board’s decision in Brooks and the Fourth Circuit’s decision in Perini undermines the eviden-tiary value of Plaintiffs certificate. On that view, Plaintiffs certificate of registration might be considered less probative of the distinctiveness of Plaintiffs mark because the PTO found Plaintiffs mark to be inherently distinctive by applying the PTO’s more lenient standard with respect to personal names. In other words, Plaintiffs certificate of registration reflects that the ED ZINNER mark is inherently distinctive only because the PTO erroneously — at least based on Perini and the common law rule that personal name marks are valid only after acquiring secondary meaning, see 2 McCarthy § 13.2 — consid
On the other hand, the Fourth Circuit’s jurisprudence regarding the presumption of validity created by a certificate of registration, discussed above, pulls in the opposite direction and suggests that the Court should respect the PTO’s decision. As early as Pizzeria Uno, the Fourth Circuit has held that the issuance of a certificate of registration without proof of secondary meaning indicates that the PTO has concluded that the mark is suggestive, and that “essential fact ... must be considered prima facie correct by a court considering the validity of a trademark, or the prima facie evidence rule would be rendered ineffective .... ”
Having carefully weighed the competing considerations present in the Fourth Circuit’s Lanham Act jurisprudence regarding certificates of registration, the Court finds that Plaintiffs certificate of registration is prima facie evidence that his mark is inherently distinctive, notwithstanding the conflict between Brooks and Perini. District courts are faced with uncertainty because the PTO and various courts of appeals, including the Fourth Circuit, have split on whether personal names are inherently distinctive under the Lanham Act. Cf. 2 McCarthy, supra, § 13.2 (noting that the rule for registering personal name trademarks under the Lanham Act is different from the common law rule that personal names require proof of secondary meaning). However, as far as this Court is aware, no court has extended the reasoning of OBX-Stock, where a geographic name was at issue and the context of the issuance was unique, to situations in which the PTO issues certificates of registration for personal names without requiring a showing of secondary meaning. The Court declines to do so here. The plain language of 15 U.S.C. §§ 1057(b), 1115(a) require this Court to consider Plaintiffs certificate of registration as prima facie evidence that the ED ZINN-ER mark is valid, and the Fourth Circuit has held that the PTO’s decision to register a mark without requiring proof of secondary meaning is powerful evidence that the mark is inherently distinctive. See Am. Online,
Plaintiffs certificate of registration presents a genuine dispute of material fact regarding the validity of Plaintiffs mark such that the Court cannot find, as a matter of law, that Plaintiff has not demonstrated that his mark was distinctive and valid at the time Defendants registered the edzinner.com domain name. As noted above, aside from Plaintiffs certificate of registration, Plaintiff has presented almost no evidence to demonstrate secondary meaning under the six factors stated in U.S. Search. To be sure, in Fourth Circuit decisions regarding summary judg
2. Bad Faith Intent to Profit
To prevail on a section 1125(d) claim, Plaintiff must, demonstrate that Defendants registered or used the ED ZIN-NER mark with the “bad faith intent to profit” therefrom. 15 U.S.C. § 1125(d)(1)(A)®. To determine whether Defendants possessed a “bad faith intent to profit” from the ED ZINNER mark, the Court may consider the following non-exhaustive list of factors:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use .of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain' or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of the 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)(1) of this section.
Id. § 1125(d)(1)(B)®. As the Fourth Circuit has recognized, “ ‘[t]here is no simple formula for evaluating and weighing these factors. For example, courts do not simply count up which party has more factors in its favor after the evidence is in.’ ” Lamparello v. Falwell,
In this case, the first three factors weigh in favor of a finding of bad faith intent to profit. Defendants have no trademark or intellectual property rights in the domain name, the domain name does not consist of a name commonly used to identify Defendants, and Defendants have not used the domain name in connection with the bona fide offering of any goods or services. See 15 U.S.C. § 1125(b)(l)(B)(i)(I)-(III). Thus, factors I — III suggest that Defendants had the bad faith intent to profit from Plaintiffs mark.
On the other hand, factors IV, V, and VIII weigh in Defendants’ favor. Regarding factor IV — bona fide noncommercial or fair use of the mark in a site accessible under the domain name — the Fourth Circuit has stated that “ ‘use of a domain name for purposes of ... comment, [and] critieis[ ]’ ... constitutes a ‘bona fide noncommercial or fair use’ under the statute.” Lamparello,
However, contrary to Defendants’ contention, there is at least a genuine dispute of fact whether factor VI favors Plaintiff or Defendants. A “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” is an indicium of bad faith. 15 U.S.C. § 1125(d)(l)(B)(i)(VI). Viewing the evidence in a light most favorable to Plaintiff, the evidence of Defendants offering to sell the edzinner.com domain name ' to Plaintiff includes the voicemail that Mr. Fernandez left for Mr. Brown and the conversations between Mr. Fernandez and Mr. Brown. In the voicemail, Mr. Fernandez states “I’m calling] regarding the domain name edzinher.com. Uh, I’m representing a client who is interested in selling that domain name.” Defs.’ Mot. for Summ. J. Ex. 17.
The Court rejects Defendants’ argument that Mr. Fernandez’s statement that his client was “interested in selling [the edzin-ner.com] domain name” cannot be construed as an “offer to sell” the domain name. Admittedly, if Mr. Fernandez had quoted to Mr. Brown a particular price for the domain name, the evidence of an offer to sell might be stronger. However, the Court concludes that Defendants’ stated interest in selling the domain name and their communication, through Mr. Fernan
The Court also rejects Defendants’ contention that the Mr. Fernandez’s statements in the voicemail cannot constitute an “offer to sell” because Mr. Fernandez made the statements in response to Mr. Brown’s inquiry regarding the contact information of the domain name registrant. Viewing the evidence in a light most favorable to Plaintiff, a reasonable finder of fact could conclude that Plaintiff did not seek out Mr. Fernandez’s offer. At the time Mr. Fernandez contacted Mr. Brown, Plaintiff, through Mr. Brown, had only indicated that he wished to acquire the contact information of the edzin-ner.com domain registrant. The evidence in the record indicates that the first mention of Plaintiff purchasing the edzin-ner.com domain name occurred when Mr. Fernandez left a voicemail with Mr. Brown indicating that Mr. Fernandez’s client wished to sell the domain name. The mere fact that Mr. Fernandez broached the subject of selling the domain name in response to Mr. Brown’s inquiry regarding contact information would not prevent a reasonable finder of fact from concluding that Defendants offered to sell the edzinner.com domain name to Plaintiff.
Finally, at least with respect to factor VI, the' Court finds unpersuasive Defendants’ contention that Mr. Fernandez’s offer is not admissible evidence because of Federal Rule of Evidence 408. Such rule provides:
(a) Prohibited uses. Evidence of the following is not admissible — on behalf of any party — either to prove or disprove the validity or amount of a disputed claim or to impeach by a prior inconsistent statement or a contradiction:
(1) furnishing, promising, or offering — or accepting, promising to accept, or offering to accept — a valuable consideration in compromising or attempting to compromise the claim; and
(2) conduct or a statement made during compromise negotiations about the claim except when offered in a criminal case and when the negotiations related to a claim by a public office in the exercise of its regulatory, investigative, or enforcement authority.
(b) Exceptions. The court may admit this evidence for another purpose, such as proving a witness’s bias or prejudice, negating a contention of undue delay, orproving an effort to obstruct a criminal investigation or prosecution.
Fed.R.Evid. '408. In Defendants’ view, “[i]t is simply inconceivable” that the communication from Mr. Fernandez to Mr. Brown “could be construed as anything other than a settlement communication.” Defs.’ Reply Supp. Mot. for Summ. J. at 12. However, the Court finds that Plaintiff is not offering the voicemail from Mr. Fernandez “to prove or disprove the validity or amount of a disputed claim.” See Fed.R.Evid. 408(a). Rather, Plaintiff offers it for “another purpose,” Fed.R.Evid. 408(b), namely to prove an element at the core of Plaintiffs claim: whether Defendant possessed the bad faith intent to profit from registering or using the edzin-ner.com domain name. See Johnson v. Hugo’s Skateway,
Like factor VI, at minimum, there is a genuine dispute of material fact regarding whether factor VII suggests that Defendants registered or used the edzinner.com domain name with the bad faith intent to profit from Plaintiffs ED ZINNER mark. Under factor VII, the Court considers “the person’s provision of material and misleading false contact information when applying for the registration of the domain name, [and] the person’s intentional failure to maintain accurate contact information.” 15 U.S.C. § 1125(d)(l)(B)(i)(VII). Defendants correctly note that they initially provided accurate registration information to Tucows. However, “intentional failure to maintain accurate contact information” also suggests bad faith. Id. Here, “Ole-nych altered the registration information to a fictitious name and address in order to continue to protect Defendants’ privacy” once Tucows advised that it would remove the privacy protections on the edzin-ner.com domain name. Defs.’ Mot. for Summ. J. at 8. Although Defendants contend that such alteration was merely in response to Plaintiffs actions and threat to sue Tucows, the evidence of such intentional alteration creates a dispute of material fact regarding whether Olenych altered the domain name registration in an attempt to profit in bad faith from the use of the domain name. A reasonable finder of fact could conclude that a registrant’s alteration of contact information, upon learning of the domain registrar’s decision to remove the privacy protections on a domain name, is consistent with the actions of someone seeking to profit in bad faith from using the ED ZINNER mark.
Thus, as the above review indicates, statutory factors I, II and III weigh in Plaintiffs favor, factors IV, V, and VIII weigh in Defendants’ favor, and there are genuine disputes of fact with respect to whether factors VI and VII indicate bad faith. Mindful that the statutory “ ‘factors are given to courts as a guide, not as a substitute for careful thinking about whether the conduct at issue is motivated by a bad faith intent to profit,’ ” Lamparello,
In short, the Court cannot conclude, as a matter of law, that no reasonable trier of fact could find that Defendants possessed the bad faith intent to profit from Plaintiffs mark.
B. Plaintiffs Section 8131 Claim
The Court will now turn to whether Defendants are entitled to summary judgment on Plaintiffs section 8131 claim. Section 8131 provides:
Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
15 U.S.C. § 8131(1)(A). Thus, to prevail on his section 8131 claim, Plaintiff must establish three elements: (1) Defendants registered a domain name that consists of Plaintiffs name, or a name substantially and confusingly similar thereto; (2) without Plaintiffs consent; and (3) with the specific intent to profit by selling the domain name for financial gain to Plaintiff or a third party. However, the Lanham Act provides a limited exception for a person who registers a personal name in connection with a copyrighted work:
A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, - affiliated with, or related to a work of authorship protected under Title 17, ... and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person....
Id. § 8131(1)(B).
. In this case, with respect to Plaintiffs prima facie section 8131 claim, it is undisputed that Plaintiff has presented sufficient evidence to satisfy the first and second elements of a section 8131 claim: Defendants registered a domain name, edzinner.com, which is a combination of Plaintiffs nickname, Ed, and surname, Zinner. The parties’ dispute concerns. whether Plaintiff has adduced sufficient evidence to permit a reasonable trier of fact to conclude that Defendants registered the edzinner.com domain name with the specific intent to profit from selling, for financial gain, that domain name to Plaintiff.
Although there is a dearth of authority
The Court’s conclusion that Plaintiff has presented sufficient evidence to establish all three elements of a section 8131 claim does not, however, end the Court’s inquiry because Defendants also contend that their registration of the domain name falls within the statute’s copyright-owner exception. The copyright-owner exception exempts from liability a defendant who:
(1) in good faith registers a domain name consisting of the name of another living person or a confusingly similar name if the domain name is used in, affiliated with, or related to a work of authorship protected under the Copyright Act; and (2) if the person registering the domain name is the copyright owner or licensee of the work; and (3) the person intends to sell the domain name in conjunction with the lawful exploitation of the work; and (4) the registration is not prohibited by a contract between the registrant and the named person.
McCarthy, supra, § 25A:82. Defendants contend that the exception applies because the edzinner.com domain name is related to a work of authorship; Olenych’s unpub
The Court holds that there is a genuine dispute of material fact regarding the applicability of the copyright-owner exception and, therefore, Defendants are not entitled to summary judgment on Plaintiffs section 8131 claim. As noted above, the copyright-owner exception applies only where a defendant registers the domain name in good faith. See id. The Court’s preceding analysis of Plaintiffs section 1125(d) claim and its conclusion that there is a genuine dispute of material fact as to whether Defendants possessed the bad faith intent to profit from Plaintiffs ED ZINNER mark also leads the Court to find, for the same reasons, that there is a genuine dispute of material fact regarding whether Defendants registered the edzin-ner.com domain name in good faith within the meaning of the copyright-owner exception.
Additionally, the Court finds that there is a genuine dispute of fact regarding whether Defendants intended to sell the edzinner.com domain name in conjunction with the lawful exploitation of Olenych’s manuscript. Defendants’ only evidence that they intended to sell the edzinner.com domain name is Olenych’s statement that one of his reasons for acquiring the domain name was to promote his book. See Ole-nych Dep. 34:5-8, Aug. 28, 2014, ECF No. 26-3. However, the content on the edzin-ner.com website does not mention Ole-nych’s manuscript. See Defs.’ Mot. for Summ. J. Ex. 14. And although both the website and manuscript involve someone named “Ed Zinner,” the website refers to “Edward Zinner” — Plaintiffs name — while the manuscript describes the “Ed Zinner” character therein as “EDWARD W. ZIN-NER.” Compare id., with Pl.’s Resp. Opp’n Mot. for Summ. J. Ex. K (emphasis added). From such discrepancy, a reasonable finder of fact could conclude that the edzinner.com domain name did not relate to Olenych’s manuscript, but, rather, related to Plaintiff. Accordingly, for that reason, too, Defendants are not entitled to summary judgment on Plaintiffs section 8131 claim based on the copyright-owner exception. Therefore, the Court will DENY IN PART Defendants’ motion as to Plaintiffs section 8131 claim.
C. Damages
Finally, the Court will assess whether Defendants are entitled to summary judgment on the issue of damages with respect to Plaintiffs section 1125(d) and section 8131 claims. The Court will begin with Plaintiffs section 8131 claim.
1. Section 8131
As a matter of law, Plaintiff cannot recover damages for his section 8131 claim. Section 8131 both establishes a cause of action for cybersquatting on a personal name domain name and limits the remedies available to a plaintiff pursuing such an action. It provides:
In any civil action brought under paragraph (1), a court may award injunctive relief, including the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff. The court may also, in its discretion, award costs and attorneys’ fees to the prevailing party.
15 U.S.C. § 8131(2). Thus, though the statute authorizes the Court to grant in-junctive relief and award attorneys’ fees in certain instances, it does not permit the Court to award damages. Accordingly, the Court will GRANT IN PART Defendants’ motion for summary judgment on the issue of damages for Plaintiffs section 8131 claim.
2. Section 1125(d)
The Court will now consider Defendants’ contention that it is entitled to summary judgment on the issue of damages with respect to Plaintiffs section 1125(d) claim.
In contrast to section 8131, the Lanham Act permits a court to award damages for violations of section 1125(d). The Act provides:
When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125 (a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.
In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to' the prevailing party.
15 U.S.C. § 1117(a) (emphasis added). As an alternative to an award of actual damages, the Lanham Act also authorizes an award of statutory damages:
In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
Id. § 1117(d).
Contrary to Defendants’ suggestion, the Court concludes that Plaintiffs failure to register the ED ZINNER mark prior to filing this action does not preclude Defendants from recovering damages under section 1125(d). In one context, the Lanham Act’s damages provision, 15 U.S.C. § 1117, references whether a plaintiff has registered his mark: the Lanham Act permits an award of damages for “a violation, of any right of the registrant of a mark registered in the Patent and Trademark Office.” 15 U.S.C. § 1117(a). Thus, the owner of a registered mark may recov
The Court, next, will consider Defendants’ argument that summary judg
“ ‘Typically, courts will not consider an argument raised for the first time in a reply brief.’ ” Touchcom, Inc. v. Bereskin & Parr,
In this case, the Court finds that it would not be appropriate to grant summary judgment in Defendants’ favor on the issue of damages based on the alleged insufficiency of evidence of damages. Defendants failed to raise such argument until their reply brief and thereby deprived Plaintiff of an opportunity to respond to such argument. Therefore, the Court considers Defendants to have waived such argument. See id. Accordingly, the Court will DENY IN PART Defendants’ motion as to the issue of damages for Plaintiffs section 1125(d) claim.
In the alternative, the Court finds that a genuine dispute of material fact precludes summary judgment on the issue of damages for Plaintiffs section 1125(d) claim. Here, Plaintiffs sworn statements provide the only evidence of any damages from Defendants’ registration or use of the ed-zinner.com domain name. Plaintiff has offered his own sworn testimony that he “lost business relationships, including investors as well as customers, as a result of the postings. Since March 2014 Zinner has lost approximately 15 investors who had invested approximately $1.7 million in his business — all of which has occurred since the first use of the domain name edzinner.com.” PL’s Resp. Opp’n Mot. for Summ. J. Ex. B at 14, ECF No. ECF No. 27-2. In addition, according to Plaintiffs sworn statement, “[o]ne of Zinner’s clients sent him an e-mail in which she referenced information posted on the website edzin-ner.com[, and] [t]hat client subsequently closed her account with Zinner’s business.” Id. at 13-14.
Although Plaintiffs evidence of actual damages from Defendants’ registration or use of the edzinner.com domain name is somewhat thin, in their motion, Defendants overlook the availability of statutory damages. Even if Plaintiff cannot establish actual damages, he may elect to recover statutory damages if he establishes that Defendants violated, section 1125(d). See 15 U.S.C. § 1117(d). Accordingly, in light of the availability of statutory damages, the Court cannot conclude that any deficiency in Plaintiffs evidence of actual damages precludes him from recovering
IV. CONCLUSION
For the reasons stated above, the Court GRANTS IN PART AND DENIES IN PART Defendants’ Motion for Summary Judgment, ECF No. 26. The Court GRANTS IN PART such motion with respect to damages for Plaintiffs section 8131 claim. In all other respects, such motion is DENIED IN PART.
The Clerk is REQUESTED to send a copy of this Opinion and Order to all counsel of record.
IT IS SO ORDERED.
Notes
. Any genuinely disputed facts are set forth in a light most favorable to Plaintiff, the non-moving party. Tolan v. Cotton, — U.S. —,
. On January 13, 2015, subsequent to Plaintiff's response in opposition to Defendants' motion for summary judgment, the PTO registered the Ed Zinner mark. ED ZINNER, Registration No. 4,670,226. Plaintiff did not apprise the Court of such registration, but Plaintiff referenced his application for registration in the Complaint and noted the ongoing registration proceedings in his opposition to the instant motion. See Compl. ¶ 6; Pl.'s Resp. Opp’n Mot. for Summ. J. at 25. The Court takes judicial notice of the issuance of the certificate of registration. See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,
. The Court notes that there is a split amongst the courts of appeals whether a certificate of registration shifts merely the burden of production or the burden of persuasion on the issue of validity. See 6 McCarthy, supra, § 32:138; Charles L. Cook & Theodore H. Davis, Jr., Litigating the Meaning of “Prima Facie Evidence" Under the Lanham Act, 103 Trademark Rep. 437, 445-48 (2013). However, though there is some inconsistency within the Fourth Circuit’s decisions on the issue, see Cook & Davis, supra, at 450-51, the Fourth Circuit’s most recent decisions indicate that a certificate of registration shifts only the burden of production on the issue of validity, e.g., OBX-Stock,
. With respect to factor IV, Plaintiff states that he "has uncovered evidence that will prove the defendant was a partner/member in a competing company of Zinner's company Ocean Equity.” PL's Resp. Opp'n Mot. for Summ. J. at 23. Presumably, Plaintiff contends that such evidence indicates that Defendants did not register and use the site for a bona fide noncommercial or fair use. Cf. Silver Ring Splint Co. v. Digisplint, Inc.,
. Under 15 U.S.C. § 1125(d)(l)(b)(ii), "[b]ad 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.” See generally 5 McCarthy, supra, § 25A:63. Defendants have not asserted this “reasonable belief” safe-harbor defense as a basis for summary judgment.
. Neither party disputes that Mr. Fernandez contacted Mr. Brown and communicated with him on behalf, and at the behest, of Defendants.
. In the context of contract law, "offer” is a term of art. It is not immediately clear that Congress intended to equate an "offer to sell” for Lanham Act purposes with an "offer” under contract law. One prominent trademark scholar has suggested that "[i]f the registrant has not used, or did not intend to use, the domain name to offer goods and services, then any suggestion that the domain name is available for sale should bring a court closer to a finding of bad faith.” 2 Anne LaLonde, Gilson on Trademarks § 7A.06[l][c][vi] (2014).
. The Court need not "march through" every factor in every case. Lamparello,
. Only a handful of courts have considered whether summary judgment is appropriate in a section 8131 action — or its predecessor that was codified at 15 U.S.C. § 1129. See Randazza v. Cox, No. 2:12-cv-2040-JAD-PAL,
. Some Courts have held that the statutory factors that guide a determination of bad faith intent to profit in section 1125(d) claims are useful in determining whether a defendant possesses a specific intent to profit by selling a domain name for financial gain in section 8131 cases. E.g., Randazza v. Cox,
. Reading a limitation into section 1117 requiring a plaintiff to possess a registered mark to recover for a section 1125(d) violation is problematic for a number of reasons. First, nothing in the text of the statute imposes such a limitation. See POM Wonderful LLC v. Coca-Cola Co., — U.S. —,
. Carl does not support Defendants’ assertion that failure to register a mark bars recovery of damages under section 1125(d) even if section 1125(d) liability is established. Defendants rely on Carl for the proposition .that a plaintiff " ‘is not entitled to recover damages' where he has failed to show that his personal name 'acquired a secondary meaning at the time’ the domain name was registered or that he ‘formally registered the mark with the U.S. Patent and Trademark Office.’ ” Defs.’ Mot. for Summ. J. at 28 (quoting Carl,