FC Online Mktg., Inc. v. Burke's Martial Arts, LLC, 14-CV-3685 (SJF)(SIL)

• Decision Date: 08 July 2015
• Docket Number: 14-CV-3685 (SJF)(SIL)
• Parties: FC ONLINE MARKETING, INC., Plaintiff, v. BURKE'S MARTIAL ARTS, LLC and JOHN JACOB BURKE, Defendants.
• Court: U.S. District Court — Eastern District of New York

FC ONLINE MARKETING, INC., Plaintiff, v. BURKE'S MARTIAL ARTS, LLC and JOHN JACOB BURKE, Defendants.

14-CV-3685 (SJF)(SIL)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK

July 8, 2015

OPINION & ORDER

FEUERSTEIN, J.

I. Introduction

On June 11, 2014, plaintiff FC Online Marketing, Inc. ("plaintiff") commenced this action against Burke's Martial Arts, LLC ("BMA") and John Jacob Burke ("Burke") (collectively, "defendants"), asserting claims for copyright infringement under the Copyright Act of 1976 ("the Copyright Act"), 17 U.S.C. §§ 101, et seq.; trademark infringement under the Lanham Act, 15U.S.C. §§ 1114, 1125, et seq.; cybersquatting under the Lanham Act, 15 U.S.C. § 1125(d); and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). On November 13, 2014, plaintiff filed an amended complaint, inter alia, adding claims for trade dress infringement under the Lanham Act, 15 U.S.C. §§ 1114, 1125, et seq. Pending before the Court are: (1) defendants' motion to dismiss the amended complaint in its entirety as against Burke, and to dismiss plaintiff's copyright and trade dress infringement claims against BMA, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim for relief; and (2) plaintiff's motion pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal Rules of Civil Procedure for a preliminary injunction enjoining defendants "from the sale ofservices and goods that infringe [plaintiff's] copyrighted website content, [plaintiff's] trademarked ILoveKickboxing.com mark ("the Mark"), and [plaintiff's] ILoveKickboxing franchisee's trade dress [;] * * * [from] any unauthorized use of the aforesaid website content or Mark[;] and from cybersquatting via the use of the infringing domain name 'ILove2Kickbox.com.'" For the reasons set forth below, defendants' motion is granted in part and denied in part and plaintiff's motion is denied.

II. Background

A. Factual Background

1. Allegations in Amended Complaint

Plaintiff "is a corporation that provides website design, search engine optimization, lead generation and other online marketing services and products to its weight loss through fitness licensees and franchisees." (Amended Complaint ["Am. Compl."], ¶ 3).

BMA is a limited liability corporation that provides kickboxing classes in the State of Rhode Island. (Am. Compl., ¶ 4). Burke is the "Managing Member" of BMA. (Id., ¶ 5).

Plaintiff "owns a website entitled I Love Kickboxing Carle Place, located on the internet at www.ilovekickboxingcarleplace.com (hereinafter referred to as 'Website')." (Am. Compl., ¶ 10). According to plaintiff, "[t]he Website contains 'protectable elements' afforded copyright protection, * * * includ[ing], but not limited to, the unique written content, images, graphics, and * * * expressions set forth in the Website." (Id., ¶ 12). Plaintiff received a Certificate of Registration from the United States Copyright Office indicating, inter alia, that registration had been made for the Website, effective October 20, 2012. (Id., ¶ 13, Exhibit ["Ex."] A). Plaintiffalleges that defendants infringed upon its copyright "by adapting [its] Website content ('the Work') and releasing said adaptation ('Infringing Content') on its company website, located on the Internet at the Infringing Domain Name[,]" (id., ¶ 15), www.ilove2kickbox.com, (id., ¶ 2).

Plaintiff also owns the trademark ILoveKickboxing.com ("the Mark"). (Am. Compl., ¶ 19). Plaintiff's CEO, Michael Parella ("Parella"), is "the driving forc[e] behind the Mark[] [and] is a top gun fitness consultant and thought leader." (Id.) According to plaintiff, "Parella's notoriety [sic] stems in part from running [plaintiff's] iLoveKickboxing.com fitness franchise ('ILKB')[,]" (id.), which "has generated over 100,000 enrollments for schools around the world in its first two years of operation." (Id.) On or about April 23, 2013, the Mark, consisting "of a winged heart with boxing gloves hanging on it behind the text 'iLoveKickboxing.com[,]'" (id., Ex. F), was registered with the United States Patent and Trademark Office ("USPTO"). (Id., ¶ 20, Ex. F). According to plaintiff, it "has used the Mark in commerce on, and in connection with, the sale of its services on hundreds of websites ('the Works' or 'Works') that bear the Mark." (Id., ¶ 21, Ex. G). Plaintiff alleges that defendants infringed upon its Mark "by registering a domain name ('ILove2Kickbox.com') strikingly and confusingly similar to [its] * * * Mark and adopting a confusingly similar trademark, releasing said adaptation ('Infringing Mark') on its company website, located at ILove2Kickbox.com." (Id., ¶ 23, Ex. H).

According to plaintiff, it "became aware of Defendants' use of the Infringing Content [and the Infringing Mark] on or about June 2, 2014." (Am. Compl., ¶¶ 16, 24). On that same date, plaintiff: (1) sent "a first notification of copyright infringement" to defendants, (id., ¶ 17, Ex. C); and (2) sent a "takedown notification" pursuant to the Digital Millennium Copyright Act, ("DMCA"), 17 U.S.C. §§ 512(c)(3) and (d)(3), to defendants' "Internet hosting provider('GoDaddy')." (Id., ¶ 17, Ex. D). The next day, i.e., June 3, 2014, GoDaddy "'suspended' Defendants' website located on the Internet at ILove2Kickbox.com[,]" (Id., ¶ 18, Ex. E), and plaintiff notified defendants that they had infringed upon its Mark. (Id., ¶ 25, Ex. I). According to plaintiff, defendants knew of its Mark "prior to registering the Infringing Mark on GoDaddy because [they] were former * * * licensees [of plaintiff][,]" (id., ¶ 29), and "used the Infringing Mark to divert Internet traffic, and therefore revenue, from users searching for [plaintiff's] well-known fitness Mark, to the Infringing Domain name [ILove2Kickbox.com]." (Id., ¶ 31). Plaintiff alleges, inter alia, (1) that defendants' "unauthorized registration of the Infringing Domain Name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Infringing Domain Name, and is likely to falsely suggest a sponsorship, connection, license, or association of Defendant [sic], and the Infringing Domain Name, with [plaintiff][,]" (id.. ¶ 33); and (2) that defendants' conduct "constitutes unfair competition * * * by, inter alia, directing search engine results toward an unauthorized and Infringing Domain Name and away from [plaintiff's] [W]ebsite and Works, which bear [plaintiff's] distinctive Mark." (Id., ¶ 35).

Plaintiff further alleges that it "has invested substantial time and financial resources in the creation of its extensive ILKB web presence ('Web Presence')[,]" (Am. Compl., ¶ 36, Ex. M), which "focused on a particular 'look and file [sic]' (ILKB 'Trade Dress') that would convert leads into sales." (Id., ¶ 36). According to plaintiff, BMA "in its www.atomickickboxing.com website, copied the 'look and feel' of [its] distinctive elements (24) as well as their corresponding arrangement" ("the Website Trade Dress claim"). (Id., ¶ 37, Ex. N).

In addition, plaintiff alleges that it has "invested substantial time and financial resourcesin the creation of its trade dress for its 'brick and mortar' ILKB stores ('Store Trade Dress')." (Am. Compl., ¶ 41, Ex. O). According to plaintiff, plaintiff's and defendants' stores "are remarkably similar, if not identical. In particular, the brick wall, the red bench, the front desk, the placement of merchandise, the workout area flooring, the use of the respective logos on the wall (and the logo themselves) are all either identical or substantially similar" ("the Store Trade Dress Claim"). (Id., ¶ 42, Ex. O).

B. Procedural History

On June 11, 2014, plaintiff commenced this action against defendants, asserting claims seeking damages and injunctive relief for copyright and trademark infringement, cybersquatting and unfair competition. On November 13, 2014, plaintiff filed an amended complaint, inter alia, asserting claims against defendants seeking damages, injunctive relief, attorney's fees and costs against defendants for copyright infringement (first claim for relief); trademark infringement (second claim for relief); cybersquatting (third claim for relief); unfair competition (fourth claim for relief); and trade dress infringement (fifth claim for relief).

Defendants now move to dismiss the amended complaint in its entirety as against Burke, and to dismiss plaintiff's copyright and trade dress infringement claims against BMA, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim for relief.¹Plaintiff moves pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal Rules of Civil Procedure for a preliminary injunction enjoining defendants "from the sale of services and goods that infringe [plaintiff's] copyrighted website content, [plaintiff's] trademarked ILoveKickboxing.com mark ("the Mark"), and [plaintiff's] ILoveKickboxing franchisee's trade dress[;] * * * [from] any unauthorized use of the aforesaid website content or Mark[;] and from cybersquatting via the use of the infringing domain name 'ILove2Kickbox.com.'"

III. Discussion

A. Defendants' Motion to Dismiss

1. Standard of Review

The standard of review on a motion made pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is that a plaintiff plead sufficient facts "to state a claim for relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955, 1974, 167 L. Ed. 2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009). The plausibility standard requires "more than a sheer possibility that a defendant has acted unlawfully." Id.

"A pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not...