Global Licensing, Inc. v. Namefind LLC
| Decision Date | 28 January 2022 |
| Docket Number | Case No. 21-cv-11101 |
| Citation | 582 F.Supp.3d 467 |
| Parties | GLOBAL LICENSING, INC., a Michigan Corporation, Plaintiff, v. NAMEFIND LLC, a Delaware Limited Liability Company, Defendant. |
| Court | U.S. District Court — Eastern District of Michigan |
Jeffrey S. Sherbow, Law Offices of Jeffrey S. Sherbow, PC, Sylvan Lake, MI, for Plaintiff.
Harper Samuel Seldin, Cozen O'Connor, Philadelphia, PA, Philip T. Carroll, Cozen O'Connor, Chicago, IL, for Defendant.
This is a federal trademark infringement and cybersquatting case involving Defendant Namefind, LLC's alleged unauthorized use of Plaintiff Global Licensing, Inc.’s DEJA VU federally registered family of marks, which includes, among others, DEJA VU SHOWGIRLS, on Defendant's registered, pay-per-click website, dejavushowgirls.com. Now before the Court is Defendant Namefind LLC's Motion to Dismiss Plaintiff's Complaint pursuant to Fed. R. Civ. P. 12(b)(6) (ECF No. 10), which has been fully briefed. The Court does not believe that oral argument will aid in its disposition of the motion; therefore, it is dispensing with oral argument pursuant to Eastern District of Michigan Local Rule 7.1(f)(2). For the reasons that follow, the Court DENIES Defendant's motion to dismiss.
Plaintiff Global Licensing, Inc. (Plaintiff or Global) is a preeminent licensing company and the owner of certain DEJA VU Family of Marks, which Plaintiff, and its predecessor owner of the Marks, Deja Vu Consulting (Consulting), have used for many years in connection with their licensing of "entertainment services and establishments." Plaintiff's DEJA VU Family of Marks includes, among others, the registered mark DEJA VU SHOWGIRLS (Registration Nos. 2297838 and 4208158). (Id. ¶¶ 8-11.) Plaintiff currently licenses the DEJA VU Family of Marks to over 40 businesses throughout the United States under well-known names and trademarks, including Deja Vu, Deja Vu Showgirls, and Deja Vu Erotic Ultra Lounge. (Id. ¶ 9.)
Plaintiff has further developed the DEJA VU Family of Marks in connection to the sale of goods, and on social media sites that incorporate "DEJA VU," and Plaintiff maintains a website for its entertainment services at www.dejavu.com. (Compl. ¶¶ 12-15.) As a result of Plaintiff's over 30 years of continuous and extensive use of the DEJA VU Family of Marks in connection with Plaintiff's licensing of entertainment establishments across the country, the DEJA VU Family of Marks have developed considerable customer recognition and are famous and/or distinctive. (Id. ¶¶ 16, 40.) In addition to its U.S. Registrations, Plaintiff is the owner of registrations for numerous DEJA VU Marks in Australia, Austria, Canada, Germany, France, Great Britain, Japan, Poland, Mexico, Switzerland, and New Zealand. (Id. ¶ 21.)
Defendant Namefind LLC is the registrant of the domain name, dejavushowgirls.com. (Compl. ¶ 37.) Plaintiff alleges that it commenced use of the DEJA VU Family of Marks "long prior" to Defendant's registration of that Domain Name, and that dejavushowgirls.com is identical and/or confusingly similar to Plaintiff's Family of Marks, with .com appended to the end. (Id. ¶¶ 10, 22.) Plaintiff has not authorized Defendant's use of the Domain Name, and Defendant has no intellectual property rights in or to the DEJA VU Family of Marks. (Id. ¶¶ 22, 43.)
When a person attempts to access the dejavushowgirls.com domain, the Defendant Domain Name is configured to display pay-per-click advertisements to visitors, when those visitors were actually seeking the Plaintiff's dejavu.com site. (Compl. ¶ 25.)2
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(ECF No. 1-4, Ex. C to Compl., PageID.58.) The pay-per-click advertisements under Defendant's domain name provide, in part, links to other Adult-related entertainment sites, such as Love Honey and Mature-Quality singles. (Compl. ¶ 26, citing Ex. C, PageID.58-62.)
Plaintiff alleges that the use of dejavushowgirls.com on the top of defendant's website is a use in commerce. (Compl. ¶ 55.) Plaintiff further alleges that the website displayed by Defendant's Domain Name is likely to be confused with Plaintiff's legitimate online location at dejavu.com and the Deja Vu Family of Domains, or cause mistake, or deceive the public as to the source or sponsorship of that website, and to mislead the public into believing that such website emanates from, is approved or sponsored by, or is in some way associated or connected with, Plaintiff. (Id. ¶¶ 34-35.)
Plaintiff alleges, upon "information and belief," that Defendant's Domain Name "was registered for the purpose of obtaining Internet visitors when such visitors, intending to visit thedejavu.com, dejavushowgirl.com or other Global Deja Vu Family of domain sites, accidentally visit" the website resolving from Defendant's Domain Name. (Compl. ¶ 24.) Plaintiff also alleges, "[u]pon information and belief," that "the registrant of the Defendant Domain Name receives compensation when Internet visitors, who were attempting to reach dejavu.com or other Global's [sic] Deja Vu Family of domains, click on a link provided by the Defendant Domain Name to a third-party website." (Id. ¶ 27.) Plaintiff further alleges, "[u]pon information and belief," that the registrant of the Domain Name "intends to divert consumers from Global and its Licensees ... either for commercial gain or with the intent to tarnish or disparage the DEJA VU Family of Marks, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site" resolving from the Domain Name. (Id. ¶¶ 32, 36.)
On May 13, 2021, Plaintiff filed its Complaint for Injunctive Relief and Damages against Defendant. (ECF No. 1, Compl.) Plaintiff alleges two claims: (1) Count I – Violation of the Federal Anti-Cybersquatting Consumer Protection Act (ACPA); and (2) Count II – Federal Service Mark Infringement, 15 U.S.C. § 1114(1)(a).
Defendant has filed a motion to dismiss Plaintiff's Complaint pursuant to Fed. R. Civ. P. 12(b)(6). (ECF No. 10, Def.’s Mot.) Defendant argues that: (1) Plaintiff cannot state an ACPA claim because there are no well-pleaded, non-conclusory allegations demonstrating a "bad faith intent to profit," and (2) Plaintiff cannot state an infringement claim because there are no well-pleaded, non-conclusory allegations demonstrating "use in commerce" or a likelihood of confusion. Defendant argues that the majority of the allegations in the Complaint are pleaded upon "information and belief," but that there are no factual allegations to support those conclusory contentions. Finally, Defendant contends that Plaintiff does not have the exclusive right to control domain names that include the character strings "dejavu" or "deja vu," which Defendant represents has been used by hundreds of other entities holding registered trademarks in this country, and around the world.3
Plaintiff filed a Response in opposition to Defendant's motion to dismiss. (ECF No. 15, Pl.’s Resp.) Plaintiff argues that its Complaint sufficiently pleaded that Defendant's use of dejavushowgirls.com on the top of its website is a use in commerce, and that such use was likely to cause confusion because the dejavushowgirls.com site is identical to Plaintiff's DEJA VU SHOWGIRLS registered trademark. Plaintiff contends that it has stated a claim for cybersquatting under the ACPA, including sufficiently pleading Defendant's bad faith intent to profit.
Defendant filed a reply brief arguing that mere display of a domain name or advertising do not constitute "use" under the Lanham Act, and that there are no allegations in the Complaint that Defendant rendered services or sold goods in connection with the Domain Name. Defendant further contends that Plaintiff fails to plead that Defendant had a bad faith intent to profit, because the only allegations in the Complaint are alleged upon "information and belief."
Federal Rule of Civil Procedure 12(b)(6) allows for the dismissal of a case where the complaint fails to state a claim upon which relief can be granted. To state a claim, a complaint must provide a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). "[T]he complaint ‘does not need detailed factual allegations’ but should identify ‘more than labels and conclusions.’ " Casias v. Wal–Mart Stores, Inc. , 695 F.3d 428, 435 (6th Cir. 2012) (quoting Bell Atlantic Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ).
When reviewing a motion to dismiss under Rule 12(b)(6), a court must "construe the complaint in the light most favorable to the plaintiff, accept its allegations as true, and draw all reasonable inferences in favor of the plaintiff." Handy-Clay v. City of Memphis , 695 F.3d 531, 538 (6th Cir. 2012). The court "need not accept as true a legal conclusion couched as a factual allegation, or an unwarranted factual inference." Id. at 539 (internal citations and quotation marks omitted); see also Total Benefits Planning Agency, Inc. v. Anthem Blue Cross & Blue Shield , 552 F.3d 430, 434 (6th Cir. 2008) (citing Morgan v. Church's Fried Chicken , 829 F.2d 10, 12 (6th Cir. 1987) ). In other words, a plaintiff must provide more than a "formulaic recitation of the elements of a cause of action" and his or her "[f]actual allegations must be enough to raise a right to relief above the speculative level." Twombly , 550 U.S. at 555-56, 127 S.Ct. 1955. The Sixth Circuit has explained that Agema v. City of Allegan , 826 F.3d 326, 331 (6th Cir. ...
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