Jysk Bed'N Linen v. Dutta-Roy

• Decision Date: 16 December 2015
• Docket Number: No. 13–15309.,13–15309.
• Parties: JYSK BED'N LINEN, as successor to Quick Ship Holding, Inc., d.b.a. By Design Furniture, Plaintiff–Counter Defendant–Appellee, v. Monosij DUTTA–ROY, Defendant–Counter Claimant–Appellant.
• Court: U.S. Court of Appeals — Eleventh Circuit

810 F.3d 767

JYSK BED'N LINEN, as successor to Quick Ship Holding, Inc., d.b.a. By Design Furniture, Plaintiff–Counter Defendant–Appellee,

v.Monosij DUTTA–ROY, Defendant–Counter Claimant–Appellant.

No. 13–15309.

United States Court of Appeals, Eleventh Circuit.

Dec. 16, 2015.

Jonathan H. Fain, Jonathan H. Fain & Associates, PC, Ashutosh Sharadchand Joshi, Joshi Law Firm, PC, Atlanta, GA, for Plaintiff–Counter Defendant–Appellee.

Monosij Dutta–Roy, Atlanta, GA, pro se.

Before TJOFLAT, WILLIAM PRYOR, and BALDOCK,^* Circuit Judges.

TJOFLAT, Circuit Judge:

The Anticybersquatting Consumer Protection Act, § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d), provides: "A person shall be liable ... by the owner of a mark ... if ... that person ... has a bad faith intent to profit from that mark ...; and ... registers, traffics in, or uses a domain name that ... is identical or confusingly similar to that mark." Id. § 1125(d)(1)(A). In this case, the District Court granted Jysk Bed'N Linen an injunction requiring Monosij Dutta–Roy to transfer to Jysk four domain names he had registered in his own name. The court also granted Jysk's motion for summary judgment on Dutta–Roy's counterclaims. Dutta–Roy appeals these two decisions pursuant to 28 U.S.C. § 1291 as if, together, they constitute a final judgment in the case.¹ They do not because still pending resolution in the District Court are claims Jysk brought against Dutta–Roy under §§ 43(a) and (c) of the Lanham Act, 15 U.S.C. §§ 1125(a) and (c), and state law.² Although we lack jurisdiction to entertain Dutta–Roy's appeal under § 1291, we have jurisdiction under 28 U.S.C. § 1292(a)(1) to review the District Court's injunction.³ Exercising that jurisdiction, we find no merit in Dutta–Roy's challenges to the injunction and therefore affirm.

I.

A.

Jysk Bed'N Linen, Inc.⁴ is a retail seller of furniture for the home, office, and patio operating stores in Georgia, New Jersey, and North Carolina. Since 1990, it has operated under the trade name and common-law trademark By Design.⁵ In early 1999, Jysk contracted with Monosij Dutta–Roy, Shashi Sonnad, Ashish Negandhi, and Dev Worah to create an online-shopping website. The website needed a domain name, so Dutta–Roy was instructed to register the name bydesignfurniture.com, listing Jysk as the owner.⁶ Dutta–Roy registered that domain name, in April 1999, but he listed himself, not Jysk, as the owner.

In September 1999, Dutta–Roy, Sonnad, Negandhi, and Worah formed Bazaarworks, LLC, and began working on the website. At first, Dutta–Roy worked on designing the website. After the relationship between Jysk and Bazaarworks fell apart in 2003, Sonnad took over through her company, Dead Dog, Inc., and monitored the website's performance through the filing of this lawsuit.⁷

On April 9, 2012, Dutta–Roy's registration of bydesignfurniture.com expired, which caused Jysk's website to go down. Jysk immediately discovered that it did not own the registration because it was in Dutta–Roy's name, and asked Dutta–Roy to re-register bydesignfurniture.com in its name. Dutta–Roy refused. On April 20, he re-registered bydesignfurniture.com and on April 26 he registered the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com.

Dutta–Roy thereafter offered to transfer the domain names to Jysk "if [he was] adequately compensated solely for the over 4,000 hours work [he] ... performed for [Jysk] pursuant to the Partnership Agreement" between Bazaarworks, LLC and Jysk's predecessor, Quick Ship Holding, Inc. The agreement never existed; therefore, Jysk rejected Dutta–Roy's offer. It filed this lawsuit instead.

B.

Jysk brought this action against Dutta–Roy in the Northern District of Georgia on September 12, 2012. Its complaint contained five counts. Our discussion today deals with only one of the counts, Jysk's claim under the Anticybersquatting Consumer Protection Act ("ACPA").⁸ The ACPA count recited the facts set out in part I.A above, with the exception of Dutta–Roy's registration on April 26, 2012, of the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com, and alleged that Dutta–Roy intended in bad faith "to profit from the registration and use of the Internet domain name bydesignfurniture.com by creating an association with [Jysk]'s famous bydesignfurniture.com trademark as to source or sponsorship and further by intending to dilute the distinctive quality of, [Jysk]'s famous bydesignfurniture.com trademark." The ACPA count sought preliminary and permanent injunctive relief, including an order requiring Dutta–Roy "to relinquish all rights in the Internet domain name bydesignfurniture.com."

Dutta–Roy's answer denied that he was instructed to register the domain name bydesignfurniture.com and designate Jysk as the owner, and that he intended to profit by maintaining the registration in his name.⁹ After answering Jysk's complaint, Dutta–Roy moved the District Court for leave to join Bazaarworks, LLC as a party. The court denied the motion.¹⁰ At this point, Dutta–Roy's attorneys moved the court for leave to withdraw.¹¹ The court granted the motion, and Dutta–Roy decided to proceed pro se.¹² Shortly thereafter, Jysk moved the District Court for a preliminary injunction. Jysk requested the court to enjoin Dutta–Roy from:

I. Doing anything with or to the registration of the bydesignfurniture.com domain that would cause the Plaintiff's website to be unable to be accessed by the public, or result in the removal of the domain from the internet;

II. Transferring ownership of the bydesignfurniture.com domain to anyone, other than the Plaintiff;

III. Altering in any way the current contents of the bydesignfurniture.com domain and website; and

IV. Doing anything that would cause a change in the current status quo of the bydesignfurniture.com trademark.

The court granted the preliminary injunction as to requests I, II, and IV and denied it with respect to request III.¹³

At the close of discovery, Jysk moved the District Court for partial summary judgment. In effect, the motion sought an expansion of the preliminary injunction previously issued with respect to Jysk's ACPA claim so that the injunction would cover the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com in addition to bydesignfurniture.com.¹⁴ The court granted the motion. It found that Dutta–Roy, in re-registering bydesignfurniture.com on April 20, 2012, and in registering bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com on April 26, 2012, did so in bad faith, violating Jysk's rights under the ACPA, and ordered him to transfer the names to Jysk.¹⁵

II.

We review Dutta–Roy's appeal of the District Court's preliminary injunction for an abuse of discretion. BellSouth Telecomms., Inc. v. MCIMetro Access Transmission Servs., LLC, 425 F.3d 964, 968 (11th Cir.2005). " ‘A district court abuses its discretion if it applies an incorrect legal standard, follows improper procedures in making the determination, or makes findings of fact that are clearly erroneous.’ A district court may also abuse its discretion by applying the law in an unreasonable or incorrect manner." Klay v. United Healthgroup, Inc., 376 F.3d 1092, 1096 (11th Cir.2004) (citation omitted) (quoting Martin v. Automobili Lamborghini Exclusive, Inc., 307 F.3d 1332, 1336 (11th Cir.2002) ).

Jysk was entitled to a preliminary injunction if it showed: "(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered unless the injunction is issued; (3) the threatened injury to the moving party outweighs whatever damage the proposed injunction might cause the non-moving party; and (4) if issued, the injunction would not be adverse to the public interest." BellSouth Telecomms., Inc., 425 F.3d at 968 (citing Four Seasons Hotels & Resorts, B.V. v. Consorcio Barr, S.A., 320 F.3d 1205, 1210 (11th Cir.2003) ).¹⁶ We review each of the factors in turn.

A.

Jysk's "substantial likelihood of success on the merits" turns on a preliminary question: whether Dutta–Roy's re-registration of bydesignfurniture.com falls within the ACPA's "registration" hook. We hold that the re-registration constituted a registration under the ACPA and that Jysk is likely to succeed on the merits of its ACPA claim.

1.

Dutta–Roy argues that the District Court erred in determining that his conduct fell within the ACPA. Read generously, his argument is this: his re-registration of bydesignfurniture.com, on which the District Court based its finding of bad faith, could not have violated the ACPA because re-registrations are not "registrations" within the purview of the statute. We disagree.

Internet websites are located at Internet Protocol ("IP") addresses, which consist of a string of numbers. Karl M. Manheim & Lawrence B. Solum, An Economic Analysis of Domain Name Policy, 25 Hastings Comm. & Ent. L.J. 359, 364–65 (2003). "An Internet domain name is an alpha-numeric mnemonic device that can be mapped onto an [IP] address to enable users" to more easily access websites. Jacqueline D. Lipton, Beyond Cybersquatting: Taking Domain Name Disputes Past Trademark Policy, 40 Wake Forest L. Rev. 1361, 1365 (2005). Domain names are unique. Manheim & Solum, supra, at 364. It is therefore important that the trademark owner reserve the domain name closely associated with or identical to its trademark so that it may take advantage of its goodwill. The registration of domain names is managed by the private organization Internet Corporation for Assigned Names and Numbers ("ICANN"). Lipton, supra, at 1366–67. ICANN oversees numerous third-party registries with which the applicant registers the domain name. Id. at 1367. The third-party registry is referred to as the registrar, and the applicant, who later becomes the owner of the domain name, is referred to as the registrant.

The ACPA was enacted to prevent cybersquatting. S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d...