Carnivale v. Staub Design Llc

• Decision Date: 13 December 2010
• Docket Number: Civ. No. 08–764–SLR.
• Citation: 754 F.Supp.2d 652
• Parties: David John CARNIVALE, Plaintiff,v.STAUB DESIGN, LLC; John Staub; and David Staub, Defendants.
• Court: U.S. District Court — District of Delaware

754 F.Supp.2d 652

David John CARNIVALE, Plaintiff,

v.STAUB DESIGN, LLC; John Staub; and David Staub, Defendants.

Civ. No. 08–764–SLR.

United States District Court, D. Delaware.

Dec. 13, 2010.

David John Carnivale, Staten Island, NY, Pro se Plaintiff.Peter J. Duhig, Esquire of Buchanan Ingersoll & Rooney PC, Wilmington, DE, counsel for Defendants. Of Counsel: S. Lloyd Smith, Esquire and Bryce J. Maynard, Esquire of Buchanan Ingersoll & Rooney PC, Alexandria, VA.

OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Plaintiff David John Carnivale (“plaintiff”) filed a complaint against defendants Staub Design, LLC, John Staub, and David Staub (collectively, “defendants”) in the United States District Court for the Eastern District of New York on May 30, 2007. (D.I. 1) The complaint alleges that defendants' use of the domain name www. the affordable house. com violates the Anticybersquatting Consumer Protection Act (“ACPA”), codified as § 43(d) of the Lanham Act, 15 U.S.C. § 1115(d). (D.I. 1) The case was transferred to this court on October 10, 2008. (D.I. 27)

On March 31, 2010, this court granted in part and denied in part plaintiff's motion for summary judgment and denied defendants' cross-motion for summary judgment.¹ (D.I. 57) The court found that plaintiff sufficiently proved his mark's distinctiveness and that defendants' domain name and plaintiff's mark are identical or confusingly similar, but the court determined that a fact finder must weigh the factors relevant to the bad faith inquiry. ( Id.) A bench trial was held on August 3, 2010 to determine whether defendants acted in bad faith. The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Having considered the documentary evidence and testimony, the court makes the following findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).

II. BACKGROUND

The parties do not contest the following facts. Plaintiff is an architect from Staten Island, New York. (DTX–31) Defendant Staub Design, LLC (“Staub Design”) is a Delaware limited liability corporation that was formed on February 9, 2005 (DTX–25); its principal place of business is in Arlington, Virginia (DTX–27). Staub Design is a residential design company focused on the application of autoclaved aerated concrete (“AAC”), a lightweight building material. ( Id.) Defendants John and David Staub are principals of Staub Design. ( Id.)

Plaintiff wrote a book entitled “The Affordable House,” which was copyrighted on January 26, 1996. (PTX–2) On March 15, 1996, plaintiff published his book on the internet at www. affordable house. com. (DTX–51) Plaintiff registered the domain name www. affordable house. com on July 20, 1998 and has renewed it continuously since that date. (PTX–3–PTX–7) Plaintiffs website contains home plan designs and excerpts from his book, and he uses his website to advertise blueprints and copies of his book for sale. (DTX–31)

In 2000, defendants John and David Staub built a house in South Dakota using AAC as a building material. (8/3/10 Tr. at 78:2–25) Defendants referred to this house as “The Affordable House” and described the house as an embodiment of the “concept of The Affordable House,” representing a house that is “affordable on many angles.” (8/3/10 Tr. at 115:17–25)

In the spring of 2004, defendants brainstormed a list of potential domain names for a website they planned to create. (PTX–34) During their research of various domain names, defendants learned that plaintiff had previously registered the domain name www. affordable house. com. (PTX–34) On May 7, 2004, defendant John Staub registered the domain name www. the affordable house. com under his name and contact information and has renewed the registration using his updated contact information since that date. (DTX–1) Defendants registered several other domain names as well, but none of these other domain names resembled plaintiff's book title and domain name. (DTX–1; DTX–20; DTX–24)

Beginning in December of 2004, defendants posted information on AAC at www. the affordable house. com. (PTX–34) Defendants used the slogan “The Affordable House—a project of Staub Design LLC” at the top of each page on their website and on booths at renewable energy conferences held between 2005 and 2007. ( Id.) The website provided information and links to resources about AAC as well as background on Staub Design's focus on the application of AAC. (PTX–31) Although defendants did not directly offer anything for sale at www. the affordable house. com. they directed viewers to contact John and David Staub with inquiries regarding AAC. ( Id.)

Plaintiff filed his application for registration of the mark THE AFFORDABLE HOUSE on January 4, 2005, certifying use of the mark in commerce since March 15, 1996. (PTX–10) On February 14, 2006, plaintiff secured U.S. Trademark and Service Mark Registration No. 3,058,545 for “architectural plans and specifications” and “on-line retail store services featuring books and sets of blue prints” on the basis of 15 U.S.C. § 1051(a), § 1(a) of the Lanham Act. (PTX–8) Defendants have not licensed the mark THE AFFORDABLE HOUSE. (PTX–34)

Plaintiff discovered defendants' website at www. the affordable house. com in March 2007 and sent defendants a cease and desist letter, asserting his rights to the mark THE AFFORDABLE HOUSE and stating his belief that defendants' use of the domain name www. the affordable house. com constituted infringement. (PTX–25) On May 3, 2007, defendants moved the content of www. the affordable house. com to www. staubdesian. com in response to plaintiff's letter. (PTX–34) Defendants did not offer to sell the allegedly infringing domain name to plaintiff. (8/3/10 Tr. at 101:9–12)

On May 16, 2007, defendants filed a petition for cancellation of plaintiff's registration with the United States Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (“TTAB”), Cancellation No. 92047553. (PTX–34) The TTAB has suspended the cancellation proceeding pending the resolution of this lawsuit. ( Id.); Staub Design, LLC v. Carnivale, Cancellation No. 92047553, # 11 (October 18, 2007), http:// ttabvue. uspto. gov/ ttabvue/ v? pno= 92047553& pty= CAN& eno= 11.

III. FINDINGS OF FACT AND CONCLUSIONS OF LAWA. Legal Standard

To prevail under the ACPA, plaintiff must prove that defendants acted with a bad faith intent to profit from plaintiff's mark. 15 U.S.C. § 1125(d)(1). Section 43(d)(1)(B)(i) of the Lanham Act, 15 U.S.C. § 1125(d)(1)(B)(i), provides a non-exhaustive list of nine factors for determining whether a plaintiff has shown the requisite bad faith:

(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 a 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 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) of this section.

15 U.S.C. § 1125(d)(1)(B)(i). The Third Circuit has stated that applying these factors “is a holistic, not mechanical, exercise.” Green v. Fornario, 486 F.3d 100, 106 (3d Cir.2007). “[T]he presence or absence of any of these [nine] factors may not be determinative.” Sen. Rep. No. 106–140, at 9 (1999). The plaintiff must prove, by a preponderance of the evidence, that these factors weigh in favor of a finding of bad faith. See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:78 (4th ed. 2010).B. Discussion

Applying the nine factors set forth in 15 U.S.C. § 1125(d)(1)(B)(i) to the instant case, the court concludes that plaintiff has met his burden of proving that defendants acted in bad faith. Specifically, the court concludes that the first, second, third, fourth, fifth, and ninth factors weigh in favor of bad faith, and the sixth, seventh, and eighth factors weigh against bad faith. Balancing these factors qualitatively in light of the circumstances in this case, the court concludes that the record supports plaintiff's contention that defendants acted in bad faith.

1. Trademark rights in the domain name

The court must first determine whether defendants owned any trademark or other intellectual property rights in the domain name. See 15 U.S.C. § 1125(d)(1)(B)(i)(I). Defendants do not own, or claim to...