2009 WL 5092030; Civil Action No: 1:09cv844
United States Court in the Eastern District of Virginia
December 22, 2009
Facts: Founded in 1956, plaintiff, Payless, is the largest specialty family footwear retailer in the Western Hemisphere. In 2006 Payless contracted with designer Lela Rose to launch a specialty line of wedding-related footwear called Unforgettable Moments. Unforgettable Moments was registered with the PTO in 2008 and Payless has widely promoted and advertised this slogan with their designer footwear. Payless also registered the domain name unforgettablemoments.com to promote the line. Later in 2008, Defendant (“Companyâ€) registered the domain name unforgetablemoments.com with the Belize Domain WHOIS Service. The Company that registered this domain name is a known cybersquatter and is currently the registrant of at least 100,000 domain names. The site is clearly in competition with Payless as it contains links to other sites that feature wedding related footwear. Upon learning of this site, Payless filed suit.
Procedural History: On July 29, 2009, Payless filed a Complaint against unforgettablemoments.com seeking injunctive relief under the ACPA. Defendant never responded, so Payless moved for default judgment and ownership on the domain name. On October 30, 2009, the Motion for Default Judgment was heard and no representative for Defendant was present. On November 20, 2009, the Magistrate Judge entered a Report and Recommendation. The District Court reviewed the Report and found it to be correct, entering an Order in favor of Payless.
Rule: To succeed with an Anti-Cybersquatting Consumer Protection Act claim plaintiff must establish the website is 1) created with bad faith intent to profit and 2) likely to cause consumer confusion OR dilute the famous mark.
Holding: The default judgment requested by Payless is granted and Verisign is required to transfer possession of the domain name unforgetablemoments.com to Payless, under the ACPA.
Reasoning: Payless sufficiently showed that it had protectable rights in the Unforgettable Moments Mark. Payless has used the Mark extensively and continuously in connection with its products and has made substantial investments in developing and maintaining the reputation and goodwill recognized with Payless products. The Mark was also officially registered. The defendant domain name is likely to cause confusion among customers as it is a common misspelling and advertises commercial websites that feature products that directly compete with Payless. This advertising can be viewed as bad faith intent to profit on the goodwill of Payless. Consumers who enter this site are likely to be confused, and this site may also cause Payless to lose business. Therefore, Payless is entitled to civil relief under 15 U.S.C. §1125(a) of the ACPA.
Additional Information: The Court discussed in rem civil action and found that under 15 U.S.C. §1125(d) Payless qualified and satisfied the elements required to file suit.
United States Court in the Eastern District of Virginia
December 22, 2009
Facts: Founded in 1956, plaintiff, Payless, is the largest specialty family footwear retailer in the Western Hemisphere. In 2006 Payless contracted with designer Lela Rose to launch a specialty line of wedding-related footwear called Unforgettable Moments. Unforgettable Moments was registered with the PTO in 2008 and Payless has widely promoted and advertised this slogan with their designer footwear. Payless also registered the domain name unforgettablemoments.com to promote the line. Later in 2008, Defendant (“Companyâ€) registered the domain name unforgetablemoments.com with the Belize Domain WHOIS Service. The Company that registered this domain name is a known cybersquatter and is currently the registrant of at least 100,000 domain names. The site is clearly in competition with Payless as it contains links to other sites that feature wedding related footwear. Upon learning of this site, Payless filed suit.
Procedural History: On July 29, 2009, Payless filed a Complaint against unforgettablemoments.com seeking injunctive relief under the ACPA. Defendant never responded, so Payless moved for default judgment and ownership on the domain name. On October 30, 2009, the Motion for Default Judgment was heard and no representative for Defendant was present. On November 20, 2009, the Magistrate Judge entered a Report and Recommendation. The District Court reviewed the Report and found it to be correct, entering an Order in favor of Payless.
Rule: To succeed with an Anti-Cybersquatting Consumer Protection Act claim plaintiff must establish the website is 1) created with bad faith intent to profit and 2) likely to cause consumer confusion OR dilute the famous mark.
Holding: The default judgment requested by Payless is granted and Verisign is required to transfer possession of the domain name unforgetablemoments.com to Payless, under the ACPA.
Reasoning: Payless sufficiently showed that it had protectable rights in the Unforgettable Moments Mark. Payless has used the Mark extensively and continuously in connection with its products and has made substantial investments in developing and maintaining the reputation and goodwill recognized with Payless products. The Mark was also officially registered. The defendant domain name is likely to cause confusion among customers as it is a common misspelling and advertises commercial websites that feature products that directly compete with Payless. This advertising can be viewed as bad faith intent to profit on the goodwill of Payless. Consumers who enter this site are likely to be confused, and this site may also cause Payless to lose business. Therefore, Payless is entitled to civil relief under 15 U.S.C. §1125(a) of the ACPA.
Additional Information: The Court discussed in rem civil action and found that under 15 U.S.C. §1125(d) Payless qualified and satisfied the elements required to file suit.