Gonannies, Inc. v. Goupair.Com, Inc., Civil Action No. 3:06-CV-0631-L.

Decision Date07 December 2006
Docket NumberCivil Action No. 3:06-CV-0631-L.
Citation464 F.Supp.2d 603
PartiesGONANNIES, INC., et al., Plaintiffs, v. GOAUPAIR.COM, INC., et al., Defendants.
CourtU.S. District Court — Northern District of Texas
464 F.Supp.2d 603
GONANNIES, INC., et al., Plaintiffs,
v.
GOAUPAIR.COM, INC., et al., Defendants.
Civil Action No. 3:06-CV-0631-L.
United States District Court, N.D. Texas, Dallas Division.
December 7, 2006.

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COPYRIGHT MATERIAL OMITTED

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H. Demetri Chambers, Walker & Chambers, Dallas, TX, for Plaintiffs.

Stephen G. Gleboff, John W. Patton, Megan K. Dredla, Hughes & Luce, Christopher W. Carr, John Michael Inabnett, Jones Carr McGoldrick, Dallas, TX, David O. Seeley, J. Andrew Sjoblom, Holrne Roberts & Owen, Lisa R. Petersen, Parsons Kinghorn Harris, Salt Lake City, UT, for Defendants.

MEMORANDUM OPINION AND ORDER

LINDSAY, District Judge.


Before the court is Plaintiffs' A/lotion for Preliminary Injunction, filed September 15, 2006.1 Having considered the motion, response, reply, the contents of the appendices submitted by both parties in support of their briefing, Plaintiffs' Verified First Amended Complaint, along with the record and applicable law, the court denies Plaintiffs' Motion for Preliminary Injunction.

I. Factual and Procedural Background

This lawsuit involves two companies in the domestic personnel staffing industry. Plaintiff GoNannies, Inc. ("GoNannies") is a closely held Texas corporation in the business of matching domestic personnel with families who are in need of such services. Plaintiff Monta Caprise Spooner Fleming ("Fleming") owns 100 percent of GoNannies's stock and is its president. Defendants are GoAuPair Operations, LLC ("GoAuPair Operations"), a domestic personnel staffing company doing business in Utah, along with its manager, A. William Kapler, III.2 The following facts pertinent to resolving Plaintiffs' Motion for Preliminary Injunction are taken from the evidence before the court contained in the parties appendices submitted with their supporting briefs, including affidavits and exhibits, and Plaintiffs' First. Amended Complaint, which is verified.3

Plaintiffs first used the term "GoNannies" in commerce in July 2003. Flemming registered the Internet domain name www.gonannies.com on or about July 9, 2003. Fleming applied for federal registration of the mark "GO NANNIES" on or about July 28, 2003, and the United States

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Patent and Trademark Office granted her application and registered the mark on August 23, 2005.

In the beginning of 2004, GoAuPair Operations purchased substantially all of the assets of Exploring Cultural and Educational Learning, Inc. ("Exploring Cultural"). Exploring Cultural did business under the names "goAUPAIR" and "goANI." Explorer Learning began using "goAUPAIR" and "goNANI" as trade names for its business as early as 1999. Sometime in 2000, Explorer Learning launched a website at www.gonani.com. Explorer Learning used the term "goNNI" continuously as part of its print advertising, online advertising and telephone directories. From the time GoAuPair Operations purchased Explorer Learning's assets in early 2004, it has also continuously used the term "goNANI" as part of its print advertising, online advertising and telephone directories, and has continuously used the domain name www. gonani.com.

Defendants have submitted copious documentary evidence that Defendants' and Explorer Learning's use of the term "goANI" began as early as 1999, many years before Plaintiffs adopted and used the term "Go Nannies." See generally Decl. of A. William Kapler, III and Exs. A-P. Such evidence includes, without limitation: records reflecting that the domain name www.gonani.com was registered on December 19, 1999, more than three (3) years before Fleming registered www. gonannies.com (Kapler Decl. ¶ 4 and Ex. A); records reflecting that the website www.gonani.com was online as early as May 2001 (id. ¶ 5 and Ex. J); evidence that "goNANI" was registered as a dba in the State of Utah as of April 20, 2000 (id. ¶ 8 and Ex. C); goNANI advertising flyers and an advertising brochure from 2002 (id. ¶ 6 and Ex. K); and numerous goNANI Employer Background and Information forms from as early as 2001, and fee agreements from as early as 2002 (id. ¶¶ 9-14 and Exs. D-I).

On March 1, 2006, Plaintiffs discovered that Defendants were using the name "goNANI." On April 7, 2006, Plaintiffs sued, among others, GoAuPair Operations and Kapler. In their First Amended Complaint, Plaintiffs allege, inter alia, that Defendants' use of "goNANI," which they allege is almost identical and confusingly similar to their federally registered trademark, "Go nannies," constitutes trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1051, et seq. Plaintiffs also allege unfair competition under the common law, false designation of origin and deceptive trade practices, along with violations of the Anticybersquatting Consumer Protection Act, in connection with Defendants' use of the term "goNANI" and the website www.gonani.com. With regard to Defendants' use of "goNANI" with an ® designation, Plaintiffs have sued Defendants for false advertising and misusing the statutory notice of ® in connection with the unregistered term "goNNI." Defendants have counterclaimed seeking, among other things, cancellation of Plaintiffs' registered "Go Nannies" mark due to Defendants' prior use of "goNANI."

On September 15, 2006, more than six (6) months after discovering Defendants' allegedly infringing use, and more than five (5) months after initially filing this lawsuit, Plaintiffs filed an Emergency Motion for a Temporary Restraining Order and Preliminary Injunction seeking an order from the court barring, among others, Defendants GoAuPair Operations and Kapler from using the term "goNANI" and using the symbol ® in connection with "goNANI." By order dated September 19, 2006, the court denied Plaintiffs' Emergency Motion for Temporary Restraining

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Order, after considering, among other things, the extensive delay between Plaintiffs' filing of this lawsuit and seeking a temporary restraining order. The court set a briefing schedule for Plaintiffs' Motion for Preliminary Injunction, which is now ripe for adjudication. The facts pertinent to resolve Plaintiffs' Motion for Preliminary Injunction have been taken from the evidence before the court contained in the parties appendices submitted with their supporting briefs, including affidavits and exhibits, and Plaintiffs' First Amended Complaint, which is verified.

II. Analysis

A. Applicable Legal Standard

There are four prerequisites for the extraordinary relief of a temporary restraining order or preliminary injunction. To prevail, Plaintiffs must demonstrate: (i) a substantial likelihood of success on the merits; (ii) a substantial threat of immediate and irreparable harm for which it has no adequate remedy at law; (iii) that greater injury will result...

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