Cline v. 1-888-Plumbing Group, Inc.
| Decision Date | 25 May 2001 |
| Docket Number | No. 99 CIV 1401 RJW.,99 CIV 1401 RJW. |
| Citation | 146 F.Supp.2d 351 |
| Parties | Beth CLINE, Plaintiff, v. 1-888-PLUMBING GROUP, INC, Frank Campisi, and Bruni and Campisi Plumbing and Heating, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Victor M. Serby, Esq. (Victor M. Serby, of counsel), New York City, for Plaintiff.
Reed Smith LLP (Kurt D. Olender, of counsel), Newark, NJ, for Defendants.
Plaintiff Beth Cline cross-moves for summary judgment pursuant to Rule 56, Fed.R.Civ.P. Defendants 1-888-PLUMBING Group, Inc. ("Plumbing Group"), Frank Campisi, and Bruni & Campisi Plumbing and Heating, Inc. ("BCPHI") cross-move to amend their pleadings pursuant to Rule 15(b), Fed.R.Civ.P., and for summary judgment. For the following reasons, Plaintiff's cross-motion is denied and Defendants' cross-motion is granted in part and denied in part.
The Amended Complaint alleges that Defendants infringed on Plaintiff's registered service mark "1-800-PLUMBING" in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); diluted her allegedly famous mark in violation of the Federal Trademark Dilution Act of 1995 ("FTDA"), 15 U.S.C. § 1125(c); committed cyberpiracy in violation of the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d); caused a likelihood of injury to her business reputation and dilution of her allegedly distinctive mark in violation of New York General Business Law ("N.Y.Gen.Bus.Law") § 360 et seq.; and performed deceptive acts and practices in violation of N.Y. Gen. Bus. Law §§ 133 and 349 et seq.1 The claims arise out of Defendants' alleged use of the toll-free telephone number "1-888-PLUMBING," and the registration and alleged use of eight internet domain names: www.1-800-plumbing.com, www.800-plumbing.com, www.800plumbing.com, www.888-plumbing.com, www.888plumbing.com, www.1-888-plumbing.com, www.tripleeightplumbing.com, and www.triple8plumbing.com.
Plaintiff began her plumbing business in 1991 in Maryland where she is a licensed Master Plumber-Gas Fitter. Her business was, and has remained, a sole proprietorship with no employees. In addition to Maryland, Plaintiff performs plumbing services in various locations including California the District of Columbia, Massachusetts, New York, Pennsylvania, and Virginia. The quantity of work she performed in these states is in dispute.
In February 1992, Plaintiff began using as her business telephone number, and continues to use, the toll-free telephone number 1-800-758-6246, corresponding to 1-800-PLUMBING. She filed the mark 1-800-PLUMBING with the Patent and Trademark Office ("PTO") in February 1992. Over one year later, on June 1, 1993, the PTO placed the service mark on the principal register.2 Since 1992 Plaintiff has advertised and promoted 1-800-PLUMBING by, among other things, affixing the mark to her truck, distributing flyers and business cards at events, and advertising on local radio and in newspapers. The amount of advertising by Plaintiff in these various media is in dispute.
Campisi is the sole officer and director of Plumbing Group, a New York corporation incorporated on April 29, 1998. He is also the secretary, treasurer, and director of BCPHI, a New York corporation incorporated on October 4, 1979.
Someone placed a telephone call from Campisi's residence to 1-800-PLUMBING on November 27, 1996. The parties do not agree on who made the call or what was discussed. Ten days later, on December 7, Campisi registered in his own name the eight subject internet domain names with Network Solutions, Inc. ("Network Solutions"), a company that processes and maintains records of domain name registrations. On January 8, 1997, another telephone call was placed from Campisi's residence to 1-800-PLUMBING. Again, the subject matter of the conversation and the identity of the caller are in dispute.
Plaintiff filed a complaint with Network Solutions in April 1997, alleging that Campisi's domain name 1-800-plumbing.com infringes on her registered service mark. Network Solutions initiated an internal proceeding pursuant to its Domain Name Dispute Policy and sent Campisi notification of the proceeding on September 3, 1998. The proceeding is "on-hold" pending resolution of this case.
On May 6 and 7, 1998 and January 12, 1999, additional telephone calls were made from Campisi's residence to 1-800-PLUMBING, the subject matter of which is again disputed. During the months of June and July 1998, Plaintiff sent and Campisi received "cease and desist" letters which included a copy of her registration certificate from the PTO.
Plumbing Group entered into a contract on August 1, 1998 with Tele-Name Communications, Inc. ("Tele-Name") for the use of the toll-free telephone number 1-888-758-6246, which corresponds to 1-888-PLUMBING. The contract listed the local telephone number of BCPHI's offices as the "Terminating Telephone Number," the number to which calls made to 1-888-PLUMBING would be routed. Initially, all calls made to 1-888-PLUMBING were routed to BCPHI's offices; at some point thereafter they were routed to Plumbing Group. The contract also permitted Tele-Name to post a web page on the internet promoting 1-888-PLUMBING for an additional fee. For a period of time Tele-Name did post such a web page on the internet. However, whether Defendants authorized or otherwise caused the web page to be posted is in dispute.
In November and December 1998, and in January 1999, articles appeared in two mechanical contracting industry magazines containing interviews with Campisi. In the articles Campisi described Plumbing Group's plans to market and license the toll-free number 1-888-PLUMBING. The parties dispute whether Defendants caused the articles to be printed.
Summary judgment is appropriate where the moving party has established that "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). On a motion for summary judgment, the court must determine "whether the evidence presents a sufficient disagreement to require submission to [the factfinder] or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In making this determination, the court "must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor." Consarc Corp. v. Marine Midland Bank, N.A., 996 F.2d 568, 572 (2d Cir.1993).
Initially, the moving party must show that there is "an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has carried its burden under Rule 56, the non-moving party must set forth "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The non-moving party is required to introduce evidence beyond the mere pleadings to show that there is an issue of material fact concerning "an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548.
Plaintiff cross-moves for summary judgment, claiming that Defendants infringed upon her registered service mark 1-800-PLUMBING in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). Defendants cross-move for summary judgment, seeking dismissal of Plaintiff's § 32(1) claim and cancellation of her registered mark. Section 32(1) states:
shall be liable in a civil action by the registrant for the remedies hereinafter provided.
15 U.S.C. § 1114(1). To prevail on a Lanham Act infringement claim, the claimant must show that "it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion." The Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 137 (2d Cir.1999). Additionally, the claimant must show that the defendant "used" the mark in commerce. See 15 U.S.C. § 1114(1); see also id. § 1127 (defining "use in commerce").
Plaintiff relies on her registration with the PTO for the validity of her mark. Registration with the PTO provides "prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir.1999); see also 15 U.S.C. § 1115(a). However, registration does not "preclude another person from proving any legal or equitable defense or defect ... which might have been asserted if such mark had not been registered." 15 U.S.C. § 1115(a). Defendants here assert that Plaintiff's mark 1-800-PLUMBING is invalid, arguing that...
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