Carl v. Bernardjcarl.Com

• Decision Date: 30 September 2009
• Docket Number: Civil Action No. 1:07cv1128.
• Citation: 662 F.Supp.2d 487
• Parties: Bernard J. CARL, Plaintiff, v. BERNARDJCARL.COM, et al., Defendants.
• Court: U.S. District Court — Eastern District of Virginia

662 F.Supp.2d 487

Bernard J. CARL, Plaintiff, v. BERNARDJCARL.COM, et al., Defendants.

Civil Action No. 1:07cv1128.

United States District Court, E.D. Virginia, Alexandria Division.

September 30, 2009.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Bernard J. Carl, Washington, DC, pro se.

ORDER

T.S. ELLIS, III, District Judge.

The matter is before the Court to consider plaintiffs Motion for Default Judgment, U.S. Magistrate Judge Jones's Amended Report and Recommendation, and plaintiffs objections to that report.

I. Facts¹

Plaintiff Bernard J. Carl, a trained lawyer, resides in Washington, D.C., where he works as an investor and businessman. Although he commenced this action by retained counsel, he is now proceeding pro per.

The Amended Complaint names three defendants, two identified defendants and the domain name "bernardjcarl.com."² The two identified defendants are Fabrice Marchisio, a citizen of France and a partner in the second named defendant, the French law firm of Cotty Vivant Marchisio & Lauzeral ("CVM & L").

In 1996, plaintiff founded Brazos Europe, Inc. ("Brazos"), a private equity firm in which he was one of two principals. More recently, Brazos, in 2005, sought to acquire D. Porthault, a prestigious small luxury brand in France. To facilitate this transaction, Brazos retained the French law firm of Darrois Villey & Maillot ("Darrois"). In June 2005, Darrois subcontracted certain tasks associated with the acquisition to defendants Marchisio and CVM & L, all without plaintiffs knowledge. Marchisio and CVM & L claim that they are owed money by Brazos or plaintiff for work done in connection with the acquisition of D. Porthault. Yet, plaintiff contends that Marchisio and CVM & L's work in this regard was defective, threatening to increase the cost of acquisition by $300,000. In these circumstances, Darrois, Brazos, and plaintiff refused to pay defendants for their services. Defendants subsequently sued plaintiff in French court to recover the disputed fee in February 2007. This suit failed and was dismissed.³

Following dismissal of the French suit, Marchisio, in February 2007, acting on behalf of CVM & L, registered the domain name "bernardjcarl.com" with Network Solutions, LLC, whose servers are located in Virginia. Although the registrant listed was "Benjamin Franklin," plaintiff was able to trace the credit card associated with the domain name registration to Marchisio.⁴ Defendants posted the following statement at the domain name:

Message to the attention of Brazos Europe Inc. and managing partners Mr Bernard J. Carl and Mrs Shannon Fairbanks

Dear Mr. Carl,

Dear Mrs. Fairbanks,

We are very sorry to contact you in such a direct and unconventional way but we would be very grateful if you could have the elegance to pay the counsels who allowed you to safely acquire the company D. Porthault, which owns one of France's most prestigious luxury brands, in June 2005.

We have worked very long hours during several months, never spared our efforts and diligently did all you required to assist you in this successful transaction.

You never complained about the quality of our input but surprisingly "disappeared" when invoice payment was due.

We have tried to contact you many times since then .... but silence was the only answer.

Have you forgotten our phone numbers?

It being the case, please do not worry, use the email hereunder and be sure we will be in touch soon!

In the meantime, feel free to meditate

Benjamin Franklin:

"Creditors have better memories than debtors"

Benjamin Franklin, Poor Richard's Almanac (1758)

US author, diplomat, inventor, physicist, politician, & printer (1706-1790) email us

(Ellipses in original.)

Plaintiff alleges that this statement is false and defamatory. Specifically, he maintains that he did not personally retain defendants and therefore is not liable for defendants' outstanding fee claim. According to plaintiffs declarations, defendants' online publication of this statement caused several of Brazos's potential investors to raise questions about the posted material.⁵

II. Procedural History

Plaintiff, by retained counsel, filed his original Complaint on November 6, 2007. Although the action initially proceeded in rem against the domain name and named two John Does, the record reflects that plaintiff was ultimately able to identify defendants as the domain name registrants and thus to file an Amended Complaint eliminating the John Does and naming the defendants, who were then served with process in France pursuant to the Hague Convention on April 2, 2008. Accordingly, the Amended Complaint proceeds not in rem, but in personam against defendants Marchisio and CVM & L.⁶ See 15 U.S.C. § 1125(d)(2)(A)(ii) (allowing suit in rem only where the owner of a mark cannot obtain in personam jurisdiction over a person who would have been a defendant in a civil action for cyberpiracy); Cont'l Airlines, Inc. v. Continentalairlines.com, 390 F.Supp.2d 501, 506-07 (E.D.Va.2005) (same).

The Amended Complaint is in five Counts: (I) Unfair Competition, False Representation and Designation of Origin; (II) Trademark, Trade Name Infringement, Unfair Competition and Misappropriation; (III) Anti-Cybersquatting Consumer Protection Act; (IV) Cyberpiracy; and (V) Libel.

Following defendants' failure to appear or to file any responsive pleadings to the Amended Complaint, plaintiff moved for default judgment on April 28, 2008, at which time the matter was referred to a U.S. Magistrate Judge for a report and recommendation pursuant to 28 U.S.C. § 636. Following a hearing conducted on May 2, 2008, the Magistrate Judge ordered supplemental briefing on the issue of personal jurisdiction. A Report and Recommendation issued on October 29, 2008, with objections due by November 13, 2008. Specifically, the Magistrate Judge reported that personal jurisdiction was lacking in Virginia on Counts I, II, and V, and recommended that these Counts be dismissed or transferred to the District of Columbia. Moreover, the Magistrate Judge concluded that Counts III and IV did not face the same jurisdictional bar because, in his opinion, they proceeded in rem; the Magistrate Judge recommended dismissal of these Counts on the merits.⁷ An Order issued on December 16, 2008, adopting the recommendation that Counts III and IV be dismissed because plaintiff had not objected to the substance of the report as to those claims within the stated 10-day period;⁸ the Order further remanded the remaining Counts and directed the Magistrate Judge to reconsider the issue of personal jurisdiction. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D.Va. Dec. 16, 2008) (Order).

On May 4, 2009, the Magistrate Judge issued an Amended Report and Recommendation as to personal jurisdiction and the merits of Counts I, II, and V. Specifically, the Magistrate Judge, having found personal jurisdiction over defendants upon reconsideration of the issue, recommended dismissal of Counts I and II, but recommended entry of judgment for plaintiff on Count V. Notably, Counts III and IV were not discussed in the Amended Report and Recommendation, as these Counts had been previously dismissed by the December 16, 2008 Order. See id. When plaintiff failed to file timely objections, an appropriate Order issued on May 22, 2009, adopting the Magistrate Judge's recommendations and setting a hearing for May 29, 2009, to determine the extent of plaintiff's libel damages under Count V. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D.Va. May 22, 2009) (Order). At the hearing, plaintiff, now proceeding pro per, represented that he had not received the Amended Report and Recommendation because it had been sent to his former counsel. Consequently, the May 22, 2009 Order was vacated, and plaintiff was afforded additional time to file objections to the Amended Report and Recommendation by 5:00 p.m., Friday, June 12, 2009, with a hearing set for July 10, 2009. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D.Va. May 29, 2009) (Order).

As no objections were filed by the June deadline, an Order issued on July 10, 2009, again dismissing Counts I and II and entering judgment in favor of plaintiff on Count V. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D.Va. July 10, 2009) (Order). Subsequently, however, it was determined that plaintiff had in fact filed timely objections prior to June 12, 2009, but that neither the Magistrate Judge nor the Clerk's Office could locate them. Accordingly, an Order dated July 20, 2009, vacated the July 10, 2009 Order and directed plaintiff to refile his objections. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D. Va. July 20, 2009) (Order). Following receipt of plaintiffs objections, a September 11, 2009 hearing was set to resolve them. On September 4, 2009, plaintiff filed a request for continuance due to necessary attendance at "a scheduled shareholders meeting in New York." A continuance to September 18, 2009, was granted as a matter of grace, despite the absence of good cause or sufficient justification. Carl v. BernardJCarl.com, 1:07cvl 128 (E.D.Va. Sept. 8, 2009) (Order).

In the course of the September 18, 2009 hearing, plaintiff, pro per, presented his arguments with respect to his objections to the Amended Report and Recommendation and with respect to his claim for compensatory and punitive damages. Additionally during the course of the hearing, plaintiff knowingly and voluntarily waived his right to a jury trial as to his libel claim. Following the hearing, the matter was taken under advisement and is now ripe for disposition.

III. Disposition of Claims

A. Count I: Unfair Competition, False Representation and Designation of Origin.

Plaintiffs claim for false representation arises under the Lanham Act. 15 U.S.C. § 1051 et seq. More specifically, § 43(a) of the Act, now codified at 15 U.S.C. § 1125, states:

(a) (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name,...