Carr v. Miss. Lottery Corp.
| Decision Date | 10 November 2022 |
| Docket Number | 2021-CA-01304-SCT |
| Citation | 350 So.3d 1068 |
| Parties | Jonathan CARR v. MISSISSIPPI LOTTERY CORPORATION |
| Court | Mississippi Supreme Court |
ATTORNEYS FOR APPELLANT: CHRISTOPHER B. McDANIEL, BRETT W. ROBINSON
ATTORNEYS FOR APPELLEE: BRYAN C. SAWYERS, R. MARK ALEXANDER, JR., JONATHAN P. DYAL
BEFORE RANDOLPH, C.J., COLEMAN AND CHAMBERLIN, JJ.
CHAMBERLIN, JUSTICE, FOR THE COURT:
¶1. This case presents an issue of first impression that asks this Court to interpret and apply the federal Anticybersquatting Consumer Protection Act (ACPA). 15 U.S.C. § 1125(d). Jonathan Carr registered five domain names that included variations of the identifying marks of the Mississippi Lottery Corporation (MLC). After an unfavorable decision from a national arbitration board, Carr brought a reverse domain name hijacking claim in the Harrison County Circuit Court against the MLC, which countersued for cybersquatting. This Court dismissed Carr's first appeal to this Court in this case for lack of a final appealable judgment. Carr v. Miss. Lottery Corp. , 314 So. 3d 108, 112 (Miss. 2021). Carr now appeals the trial judge's Order Granting and Denying Motions for Injunctive Relief, Order on Motion for New Trial, or In the Alternative, Motion for a Trial By Jury, and Order on Motion for New Trial and/or In the Alternative, to Alter or Amend the Judgment. After a careful review of federal and state law, this Court affirms the decisions of the trial court on all issues.
FACTS AND PROCEDURAL HISTORY
¶2. Starting on December 30, 2017, and ending on August 7, 2018, Jonathan Carr registered with GoDaddy.com the following five domain names: mslottery.com, mississippilottery.com, mslottery.us, mississippilottery.us and mississippilottery.org.
¶3. On August 31, 2018, the creation of a Mississippi lottery was approved by the governor. See S.B. 2001, 1st Extraordinary Sess., 2018 Miss. Laws ch. 2. On October 19, 2018, the governor appointed five members to the board of directors for the Mississippi Lottery Corporation as required by Mississippi Code Section 27-115-9 (Supp. 2022). The MLC applied for federal trademarks with the United States Patent and Trademark Office (USPTO) on March 11, 2019, and obtained state trademarks for "Mississippi Lottery Corporation" and "Mississippi Lottery" on March 19, 2019, from the Mississippi secretary of state.
¶4. On March 4, 2019, Carr contacted Lucien Smith, an attorney at the firm representing the MLC, via text message, asking Lucien Smith to call him. On April 3, 2019, Bill Smith, another attorney at the firm representing the MLC, contacted Carr at the request of Lucien Smith. Over the course of the conversation between Bill Smith and Carr, the sale of Carr's domain names was discussed. Carr contends in his affidavit that Bill Smith initiated the discussion regarding the purchase of the domain names and pressured him during the conversation to the point that he became extremely uncomfortable and wished to contact his attorney. Bill Smith avers in his affidavit that Carr stated that he "foresaw the need for a lottery website for the State of Mississippi and, following research and as an investment, registered over 100 variations of Mississippi Lottery-related domain names" which he believed had great value. Bill Smith contends that when he offered to pay Carr a reasonable amount for the domain names, Carr stated that he wished to contact counsel. Scott Andress, another attorney representing the MLC, sat in on the call with Carr and took notes during the conversation that support Bill Smith's recollection of the call.
¶5. On April 9, 2019, attorney Robert Deming contacted Bill Smith on behalf of Carr to discuss the sale of the domain names. Carr does not dispute that Deming called Bill Smith on his behalf.
¶6. On May 10, 2019, the MLC filed a domain name dispute complaint with the National Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy (UDRP). Before service of the NAF complaint was completed, Carr filed a business name reservation with the Mississippi secretary of state on May 16, 2019, for a for-profit business under the name Mississippi Lottery Corporation. On July 15, 2019, the NAF entered its order in favor of the MLC, which required Carr to transfer ownership of all five domain names to the MLC.
¶7. Under the UDRP, Carr had ten days after the arbitration decision to file a lawsuit that would stay the arbitrator's ruling pending the outcome of the case and prevent the transfer of the domain names to the MLC. UDRP 4k, icann.org/resources/pages/policy-2012-02-25-en (adopted Aug. 26, 1999). Carr timely filed suit in the Harrison County Circuit Court seeking to prevent the enforcement of the NAF order. Carr claimed that the MLC was reverse domain-name hijacking his domain names and asked the court for declaratory and injunctive relief from the NAF order. See 15 U.S.C. § 1114(2)(D)(v).
The MLC countersued for breach of the domain-name registration agreement; cyberpiracy under the ACPA; false designation of origin; trademark infringement and negligence per se under Mississippi Code Section 97-33-33 (Rev. 2020). The MLC asked the court for statutory damages up to $100,000, actual damages, costs, attorneys’ fees and preliminary and permanent injunctions. The MLC and Carr both filed motions for a preliminary injunction seeking relief under the ACPA.
¶8. On October 22, 2019, the court held a hearing on the motions for preliminary injunction. Due to the short time period before the MLC planned to launch ticket sales on November 25, 2019, the hearing was consolidated into a trial on the merits under Mississippi Rule of Civil Procedure 65(a)(2). Carr's counsel stated on record that he agreed that time was of the essence and would defer to the court's judgment on whether consolidation was necessary but wanted to ensure that Carr was not waiving his right to a jury trial. The trial court noted that consolidation was limited to the parties claims for injunctive relief and assured Carr's counsel that Carr was not waiving his right to a trial by jury.
¶9. On November 8, 2019, the trial court entered a permanent injunction order in favor of the MLC, finding that the MLC "had established the criteria under the ACPA and Mississippi law warranting injunctive relief." The order required Carr to transfer ownership of the five domain names within seven days of entry of the order; refrain from commercial use of the term "Mississippi Lottery" or any variation thereof and withdraw his name reservation with the secretary of state. Carr's motion for preliminary injunction was denied as moot.
¶10. Carr timely filed a motion for a new trial, which was denied on February 21, 2020. He then appealed to this Court on March 16, 2020. This Court dismissed the appeal upon finding that, according to "Rule 54(b), both the November 8, 2019 order and the February 21, 2020 order are interlocutory and not final." Carr , 314 So. 3d at 112.
¶11. After the appeal was dismissed, the MLC filed a motion in the Harrison County Circuit Court to voluntarily dismiss its remaining counterclaims and claims for damages. Additionally, the MLC filed a motion for entry of final judgment stating that if its motion for voluntary dismissal was granted, then the only remaining claim would be the injunctive relief the court already had denied.
¶12. On June 14, 2021, Carr filed a motion for leave to file an amended complaint under Mississippi Rule of Civil Procedure 15(a). Carr claimed that the consolidation of the hearing with a trial on the merits had prevented him from having his case heard before a jury and wished to seek additional damages including costs, attorneys’ fees, statutory damages and punitive damages. Carr claimed that no prejudice would result from the amendment of the complaint because the matter was still in its initial phase before discovery. On July 19, 2021, Carr also filed a motion to dissolve or modify the permanent injunction.
¶13. The Harrison County Circuit Court entered its final judgment on July 23, 2021. The court granted the MLC's motion to dismiss the remaining counterclaims and claims for damages and also granted its motion for entry of final judgment. The court denied Carr's motions to amend his complaint and dissolve or modify the permanent injunction because they were moot after the grant of the MLC's motions.
¶14. Carr timely filed a motion for new trial or, in the alterative, a motion to alter or amend the judgment. On November 9, 2021, the court denied Carr's motion. Carr timely appealed to this Court.
ISSUES PRESENTED
¶15. The issues Carr raises on appeal can best be summarized as follows:
DISCUSSION
¶16. The Mississippi Supreme Court requires a party to prove the following four factors in order to merit injunctive relief: "(1) whether there exists a substantial likelihood that plaintiff will prevail on the merits; (2) the injunction is necessary to prevent irreparable injury; (3) threatened injury to the plaintiffs outweighs the harm an injunction might do to the defendants; and (4) entry of a preliminary injunction is consistent with the public interest." Elec. Data Sys. Corp. v. Miss. Div. of Medicaid , 853 So. 2d 1192, 1207-08 (Miss. 2003) (citing City of Durant v. Humphreys Cnty. Mem'l Hosp./Extended Care Facility , 587 So. 2d 244, 250 (Miss. 1991) ). In Carr's motion for preliminary injunction, he asked the court to order the release of the domain names from the registrar lock to allow him to revise his website. The MLC asked the court in its motion for...
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