Bos. Carriage v. Bos. Suburban Coach
| Decision Date | 30 September 2022 |
| Docket Number | Civil Action 1:21-cv-10688-IT |
| Parties | BOSTON CARRIAGE, INC., d/b/a LOGAN CAR SERVICE, Plaintiff, v. BOSTON SUBURBAN COACH, INC., SVITLANA KRAYNITSKAYA, YULIA BREZHNEVA, DMITRY KRAYNITSKY and VITALIY POPOVICH, Defendants. |
| Court | U.S. District Court — District of Massachusetts |
Plaintiff Boston Carriage, Inc. (“Boston Carriage”), a limousine service business doing business as Logan Car Service, alleges that Defendants Boston Suburban Coach, Inc. (“Boston Suburban”) and Svitlana Kraynitskaya Yulia Brezhneva, Dmitry Kraynitsky, and Vitaliy Popovich (collectively, the “Individual Defendants”) infringed upon Boston Carriage's copyright and trademarks and engaged in other wrongful actions. First Am. and Supplemental Complaint (“Am. Compl.”) ¶¶ 112-253 [Doc. No. 38]. Now pending before the court is Defendants' Motion to Dismiss [Doc. No 40]. For the reasons below, Defendants' Motion [Doc. No. 40] is granted in part and denied in part.
Boston Carriage, d/b/a Logan Car Service, is a Massachusetts corporation that provides limousine and transportation services primarily in the Greater Boston area, and to and from Rhode Island, New Hampshire, and other states. Am. Compl. ¶¶ 17, 31 [Doc. No. 38]. Boston Carriage and its predecessor business partnership have operated under the trade name “Logan Car Service” since the 2000s. Id. at ¶¶ 18-20. In 2003, Boston Carriage registered a domain name, “logancarservice.com,” and over the following years developed a website using that domain name to promote and operate its business. Id. at ¶¶ 21-22. Beginning in approximately 2005, Boston Carriage advertised its transportation services to customers, including through its website, using the trade name “Logan Car Service.” Id. at ¶¶ 29-30. Since at least 2016, Boston Carriage placed copyright notice on the homepage of its website. Id. at ¶ 26. Boston Carriage alleges that it has developed substantial recognition and goodwill using its “Logan Car Service” trademark, which Boston Carriage has used for years in its advertising campaigns, efforts to build brand name recognition, and sales. Id. at ¶ 32.
Boston Suburban is a private Massachusetts company that offers similar transportation services and is a competitor of Boston Carriage in the same geographical area. Id. at ¶ 36. Nominally, Ms. Kraynitskaya is Boston Suburban's President, Secretary, and a Director, id. at ¶¶ 4, 6, 38, and Ms. Brezhneva is Boston Suburban's Treasurer and a Director, id. at ¶¶ 5, 38. However, neither personally engages in the management and operation of the business. Id. at ¶ 52. Instead, Boston Suburban is actually controlled by Ms. Kraynitskaya's husband, Mr. Kraynitsky, and Ms. Brezhneva's husband, Mr. Popovich, who maintain operational and managerial power. Id. at ¶¶ 8, 10, 39. Boston Suburban's registered place of business is Mr. Kraynitsky and Ms. Kraynitskaya's home address. Id. ¶ 63.
For several years, Boston Carriage and Boston Suburban maintained an ongoing business relationship in which both companies outsourced clients to each other and engaged in regular communications regarding their business operations. Id. at ¶¶ 41-43. Specifically, Mr. Kraynitsky (primarily) and Mr. Popovich (less regularly) communicated with Boston Carriage's principals regarding both companies' business operations. Id. at ¶ 42. At minimum once a week between 2011 or 2012 and 2018, Mr. Kraynitsky and Mr. Popovich called Boston Carriage's principals to discuss business operations and to seek advice on how to develop their own company. Id. at ¶ 43. Boston Carriage's principals voluntarily shared their business knowledge with Boston Suburban, including Boston Carriage's business and marketing strategies and its online presence. Id. at ¶¶ 44-47. Additionally, Boston Carriage's principals guided the Individual Defendants in setting up their business and, in a conversation between Boston Carriage's principals and Mr. Kraynitsky that occurred in or around 2017, Boston Carriage's principals told Mr. Kraynitsky that Boston Carriage's business was benefitting from using paid advertisements on Google to promote its website. Id. at ¶¶ 45-48. Mr. Kraynitsky replied that Boston Suburban would not pay for Google advertisement or other online advertisement services because Mr. Popovich would be managing Boston Suburban's online advertising himself. Id. at ¶ 48. Through these numerous interactions, the Individual Defendants became aware of Boston Carriage's use of the “Logan Car Service” service mark. Id. at ¶¶ 49-50.
On December 18, 2017, Boston Suburban registered the domain name “logan-car-service.com.” Id. at ¶ 63. Boston Suburban listed Mr. Popovich as the registrant, administrative contact, and technical contact. Id. Each page of Boston Suburban's website included “Copyright © Logan-car-service.com.” Id. at ¶ 67. Boston Suburban's website shared similarities with Boston Carriage's website, including a similar color scheme, page layout and website architecture, font type, and artwork and photographs. Id. at ¶ 66. Additionally, several of the pages on Boston Suburban's website contained text, client reviews, and other content that matched, almost verbatim, the content that originally appeared on Boston Carriage's website. Id. at ¶¶ 72-84; Am. Compl. Exs. 6-7 [Docs. Nos. 38-6, 7].
In January through April of 2018, Boston Carriage experienced an unexpected decrease in sales. Am. Compl. ¶ 57 [Doc. No. 38]. To increase sales, Boston Carriage took out a business loan to finance additional advertising. Id. at ¶ 60. On April 26, 2018, Boston Carriage discovered Boston Suburban's website under the “logan-car-service.com” domain when one of Boston Carriage's returning clients informed Boston Carriage that when she searched for “Logan Car Service” on Google, she came across Boston Suburban's website called “Logan Car Service,” which to her, looked similar to Boston Carriage's website. Id. at ¶¶ 61-62. Because the client felt there was “something wrong” with Boston Suburban's website, she called in her reservation with Boston Carriage directly instead of booking it online. Id. at ¶ 61.
On or around April 30, 2018, Boston Carriage sent a cease-and-desist letter demanding that Boston Suburban cease the use of its “logan-car-service.com” website. Id. at ¶ 99; Am. Compl. Ex. 8 [Doc. No. 38-8]. Shortly thereafter, Mr. Kraynitsky called Boston Carriage, admitted that the challenged domain name and website belonged to Boston Suburban and was created by Mr. Kraynitsky and Mr. Popovich, and “tried to apologize, proffering as an excuse that [Boston Suburban] had hired a third-party web designer from Ukraine to design that website and [Boston Suburban was] unaware that [the web designer] had illegally copied content from [Boston Carriage's] website.” Am. Compl. ¶ 100 [Doc. No. 38]. On or around May 4, 2018, Boston Carriage received a written response from Boston Suburban, informing Boston Carriage that the website in question was taken down and not operational as of May 1, 2018. Id. at ¶ 102; Am. Compl Ex. 9 [Doc. No. 38-9]. Although Boston Suburban removed its website from the “logan-car-service.com” domain address, for several months visitors to the “logan-car-service.com” domain address were automatically rerouted to Boston Suburban's other website, “bostonsuburbancoach.com.” Am. Compl. ¶¶ 103, 110.
On May 7, 2018, Boston Carriage registered the marks “LoganCarService” and “Logan-Car-Service” under the Massachusetts Statute for Registration and Protection of Trademarks, M.G.L. c. 110H. Id. at ¶ 33; Am. Compl. Ex. 3 [Doc. No. 38-3].
At some point thereafter, Boston Carriage discovered that Boston Suburban had been using and continued to use the “Logan Car Service” mark in online keyword advertising and in metatags. Id. at ¶ 108. Boston Suburban also continued to copy customer reviews from Boston Carriage's website and publish them on online review platforms. Id. at ¶ 109. Although Boston Suburban temporarily paused its use of the logan-car-service.com domain name and the automatic rerouting of visitors to Boston Suburban's main website a few months after receiving Boston Carriage's April 2018 cease-and-desist letter, Boston Suburban resumed promoting and advertising the domain name “logan-car-service.com” for an unknown period of time thereafter. Id. at ¶¶ 110-11. As of late 2020, an operational website where customers could make online reservations with Boston Suburban could be found at the logan-car-service.com domain name. Id. at ¶ 111. Boston Suburban also resumed re-routing visitors to its own website. Id.
On April 23, 2021, Boston Carriage submitted a trademark registration application for the “Logan Car Service” mark with the United States Patent and Trademark Office. Am. Compl. ¶ 33 [Doc. No. 38]; Am. Compl. Ex. 5 [Doc. No. 38-5]. On July 6, 2021, Boston Carriage registered the trademark “Logan Car Service” in Massachusetts. Am. Compl. ¶ 34 [Doc. No. 38]; Am. Compl. Ex. 4 [Doc. No. 38-4].
On April 23, 2021, Boston Carriage submitted a copyright registration to the U.S. Copyright Office. Am. Compl. ¶ 27 [Doc. No. 38]; Am. Compl. Ex. 1 [Doc. No. 38-1]. On September 14, 2021, the U.S. Copyright Office issued a certificate of copyright registration, effective retroactively to April 23, 2021, to Boston Carriage. Am. Compl. ¶ 28 [Doc. No. 38]; Am. Compl. Ex. 2 [Doc. No. 38-2].
In evaluating a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), the court assumes “the truth of all well-pleaded facts” and draws “all reasonable inferences in the plaintiff's favor.” Nisselson v. Lernout, 469 F.3d 143,...
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