Alston v. www.calculator.com

• Decision Date: 03 August 2020
• Docket Number: Case No. 20-cv-23013-BLOOM/Louis
• Parties: Chloe Tsakiris ALSTON, Plaintiff, v. WWW.CALCULATOR.COM; Unknown Registrant a/k/a Ruth Yakobzon; Stands4 Ltd. ; and GoDaddy.com, LLC, Defendants.
• Court: U.S. District Court — Southern District of Florida

476 F.Supp.3d 1295

Chloe Tsakiris ALSTON, Plaintiff,

v.WWW.CALCULATOR.COM; Unknown Registrant a/k/a Ruth Yakobzon; Stands4 Ltd. ; and GoDaddy.com, LLC, Defendants.

Case No. 20-cv-23013-BLOOM/Louis

United States District Court, S.D. Florida.

Signed August 3, 2020

Geremy Seth Klein, Rafael Recalde, Recalde Law Firm, P.A., Miami, FL, for Plaintiff.

ORDER

BETH BLOOM, UNITED STATES DISTRICT JUDGE

THIS CAUSE is before the Court upon Defendant Stands4 LLC a/k/a Stands4 LTD's ("Stands4") Expedited Motion to Dissolve Temporary Restraining Order, ECF No. [10] ("Motion"), filed on July 28, 2020. Plaintiff Chloe Tsakiris Alston ("Plaintiff") filed a response in opposition, ECF No. [18] ("Response"), on July 30, 2020, and Stands4 filed its reply, ECF No. [19] ("Reply"), later that same day. On July 31, 2020, the Court held a hearing on the Motion, at which counsel for Stands4 and Plaintiff argued their respective positions. The Court has carefully considered the Motion, all opposing and supporting submissions, the arguments presented at the hearing, the record in this case, and the applicable law, and is otherwise fully advised. For the reasons set forth below, the Motion is denied.

I. BACKGROUND

Plaintiff initiated the instant action against Defendants www.calculator.com, Unknown Registrant a/k/a Ruth Yakobzon, Stands4, and GoDaddy.com, LLC (collectively, "Defendants") on July 21, 2020, alleging claims under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"), the Computer Fraud and Abuse Act, 18 U.S.C. § 1030 ("CFAA"), the Lanham Act, 15 U.S.C. §§ 1114, 1125, Unjust Enrichment, and Trespass to Chattels, Computer Trespass, and Conversion. See generally ECF No. [1] ("Complaint"). Plaintiff's claims stem from the alleged theft, sale, and use of Plaintiff's internet domain name, www.calculator.com ("Domain Name"), and corresponding trademark. Id.

A. Underlying Facts

In January 1996, Plaintiff's father registered the Domain Name "www.calculator.com" in Plaintiff's name. Id. ¶ 16. Since registering this Domain Name, Plaintiff and her father have been continuously developing and operating the website under the trademark/service mark "calculator.com" to market its services throughout the world. Id. ¶ 17. Based on this historical use, Plaintiff owns the trademark/service mark "calculator.com." Id. Plaintiff and her father operate the calculator.com business by providing various online calculators to the public free of charge, thus generating advertising revenue and increasing the Domain Name's value based upon the number of website visitors. Id. ¶ 18. Over the course of the past twenty-four years, Plaintiff and her father have expended substantial amounts of time and money to develop, market, and promote the website's services and to build the calculator.com brand through the use of their mark. Id. ¶ 19.

As a result of these efforts, the calculator.com trademark is distinctive and has become well known and famous in the geographic regions in which Plaintiff does business. Id. ¶ 20. Likewise, Plaintiff's trademark has acquired name recognition and invaluable customer goodwill, and has ultimately achieved a secondary meaning such that the public throughout the regions in which calculator.com does business associates this mark with Plaintiff's reliable online calculator services. Id. Plaintiff's website attracts approximately 166,000 daily active users on a monthly basis from all over the world who utilize the calculator services offered, and the website is essential to the markets, individuals, and clients from all around the world that rely on the calculator services offered because it is the sole location where Plaintiff offers these services. Id. ¶¶ 21-22. The Complaint further alleges:

23. Network Solutions, LLC is a registrar, that is, an organization that is accredited to sell domain names that are managed by Verisign, the top-level domain name registry of .com domain names.

24. Network Solutions, LLC is the registrar where the Domain Name was initially registered by Plaintiff in January of 1996.

25. GoDaddy.com, LLC is the registrar where the Domain Name is currently registered, and is named as a nominal defendant herein.

26. Plaintiff [ ] utilized the website that was accessible through the Domain Name to operate a business providing internet users with various online calculators. The Domain Name has generated income by way of advertising revenue exclusively for Plaintiff [ ] and her family.

....

28. On or about November of 2018, Plaintiff discovered that her domain name was being transferred without Plaintiff's authorization to a different named owner, Defendant Unknown Registrant, and auctioned off on sedo.com—an online marketplace and trade platform used to auction and sell Internet domain names.

29. Plaintiff learned of the theft of the Domain Name when a person named Richard Kershaw, the winner of the online auction, contacted her and her father, Nicholas Alston, to determine whether the sale was legitimate. Plaintiff informed Richard Kershaw that the sale was fraudulent, then checked with Network Solutions and discovered that the calculator.com Domain Name was being transferred out of Plaintiff's account.

30. Richard Kershaw forwarded the PDF Payment Request that he received from the Defendant Unknown Registrant with respect to the sedo.com auction, in which Defendant Unknown Registrant utilized the name "Ruth Yakobzon," with an address of "1 Cheryl Ln, 01821 Billerica United States." Richard Kershaw indicated that he was suspicious of the purchase because the name of the seller on the auction website (Ruth Yakobzon) did not match the Plaintiff's name, which was listed on the public WHOIS domain name registration information database. Additionally, the owner of the United States property address did not match the name of the seller.

31. Plaintiff and her father immediately contacted Network Solutions to stop the transfer and restore the account contact details to Chloe's real email address.

32. During phone calls with Network Solutions staff, Plaintiff learned that Defendant Unknown Registrant fraudulently induced Network Solutions to change the contact details of the Domain Name's owner to that of Unknown Registrant's by creating and using an email account that impersonates the Plaintiff, Chloe Alston (to wit: chloe.alstonnet@gmail.com) and sending Network Solutions a fake Connecticut Driver's License and fake utility bill as proof of identification. Network Solutions accepted the fraudulent documents and changed the ownership information of the Domain Name, including the email address associated with the account, to that of Defendant Unknown Registrant. Defendant Unknown Registrant was therefore able to take control of the account, list the Domain Name for sale and attempt to transfer the Domain Name out of Plaintiff's account.

33. Network Solutions stopped the transfer, but unbeknownst to Plaintiff, failed to restore the correct contact information. As a result, Unknown Registrant was able to transfer the Domain Name to Defendant Unknown Registrant's account with the GoDaddy.com, LLC registrar in April of 2020, and thereafter, transfer the Domain Name to Defendant Stands4 LTD's account with the registrar GoDaddy.com, LLC on June 19, 2020.

34. The Plaintiff's account was hacked by Defendant Unknown Registrant, who fraudulently transferred the domain name www.calculator.com to Defendant Unknown Registrant's own account with Defendant GoDaddy.com, LLC and based on information and belief, has sold the Domain Name to Defendant Stands4 LTD in the hope of extracting a quick payoff and profit from its theft of the Domain Name from Plaintiff, the rightful owner.

35. The Defendant Unknown Registrant's transfer of the domain name www.calculator.com was in bad faith, and for the singular purpose of seeking to profit from its theft.

36. Similarly, Defendant Stands4 LTD acquired ownership of the Domain Name in bad faith, without conducting due diligence to determine the identity of the rightful owner of the Domain Name, and intends to profit from its ownership and operation of the website located at the Domain Name. As indicated above, a simple search of the online Whois domain name database would have revealed that Plaintiff was the true owner of the website.

37. The Domain Name is highly valuable and its loss has deprived the Plaintiff of the income revenue generated by the business as well as depriving Plaintiff of its valuable position on the search results, deteriorating its search engine rankings. To date, Plaintiff has lost approximately $10,000 per month in gross advertising revenues as a result of the domain name hijacking, and the search engine rankings [have] now dropped from number one to number six, which equates to a roughly 60% decrease in monthly revenues (assuming ownership of the Domain Name is restored to Plaintiff).

38. Additionally, Plaintiff has been deprived of the value of the Domain Name itself, which is worth approximately $1,237,000 according to estibot.com, an online domain name appraisal service.

Id. ¶¶ 23-38 (citations omitted) (footnote omitted).

B. Procedural History

On July 22, 2020, Plaintiff filed an Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, ECF No. [5] ("TRO Motion"), requesting that this Court enter a temporary restraining order compelling Defendants to immediately transfer the Domain Name back to Plaintiff pending the resolution of this suit, along with corresponding documents in support, ECF No. [6]. On July 27, 2020, upon review of the TRO Motion and accompanying exhibits, the Court granted the requested injunctive relief and scheduled a preliminary injunction hearing to be held on August 7, 2020, at 1:30 p.m. ECF No. [8] ("TRO").

The next day, Stands4 filed the instant Motion to dissolve the TRO, arguing that this Court lacks personal jurisdiction over Stands4 and that, on the merits, Plaintiff failed to establish the four substantive...