Mayflower Transit, LLC v. Prince

Decision Date30 March 2004
Docket NumberCiv.A. No. 00-5354 (JLL).
Citation314 F.Supp.2d 362
PartiesMAYFLOWER TRANSIT, LLC, Plaintiff, v. Dr. Brett PRINCE, Defendant.
CourtU.S. District Court — District of New Jersey

George W. Wright, Narinder Parmer, George W. Wright & Associates, LLC., Hackensack, NJ, Mark Sableman, Elizabeth S. Eastman, Thompson Coburn LLP, St. Louis, MO, for Plaintiff.

John J. Pischeria, Dennis A. Cipriano, West Orange, NJ, for Defendant.


LINARES, District Judge.

Presently before this Court are the motions for partial summary judgment by both Defendant Brett Prince and Plaintiff Mayflower Transit, LLC ("Mayflower Transit").1 Plaintiff Mayflower Transit filed suit against Defendant Prince alleging violations of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"), the Federal Dilution Act, 15 U.S.C. § 1125(c), and asserting claims for libel and trade libel under state law. This motion is resolved without oral argument. Fed.R.Civ.P. 78. For the reasons set forth below, Defendant's motion for partial summary judgment is granted in part and denied in part, and Plaintiff's motion for partial summary judgment is denied.


Plaintiff Mayflower Transit is a company which provides interstate moving, shipping and storage services nationwide. MAYFLOWER is the service mark of Mayflower Transit. Plaintiff company uses affiliated agents to conduct these moves, who must undergo specific training and adhere to specific procedures mandated by Plaintiff, such as the use of particular forms, trucks, and boxes. Except in Texas and Florida, Mayflower Transit is not licensed to engage in intra-state moves; however, many of its affiliated agents can and do conduct such intra-state moves. When performing an intra-state move, an agent is permitted to use the Mayflower truck, boxes and uniforms, but is not required to do so. Mayflower Transit exercises no control over the intra-state moves of its agents nor does it have the right to monitor, control or alter the company's performance during the intra-state move. Mayflower Transit receives no financial benefit from such moves, and the state agent operates entirely in its own capacity during such moves.

On September 4, 1997, Defendant Prince contacted Plaintiff Mayflower Transit to arrange for a move from West Orange, New Jersey to Freehold, New Jersey. In making these arrangements, Defendant met with Edward Scott, who allegedly identified himself as a sales manager with Mayflower Transit. The contract for the move was, however, ultimately made with Lincoln Storage Warehouses, ("Lincoln Storage"), a New Jersey corporation. As Plaintiff explains, Lincoln Storage is an agent of Mayflower Transit solely for purposes of engaging in intra-state moves. Defendant's moving contracts bore Lincoln Storage's name and intra-state moving license number and did not mention Mayflower Transit. (Pl.Ex. B, C). The "Order for Insurance" form between Defendant and Lincoln Storage did, however, contain the Mayflower name and logo. (Pl.Ex. E).

On September 13, 1997, employees of Lincoln Storage picked up personal property from Defendant's residence, loaded them into a Lincoln Storage moving van and drove the van to the City of Orange, where it was parked overnight. The boxes and truck used in the move bore the Mayflower trademark and logo. While the van was parked overnight, thieves broke in and stole much of Defendant's property. Defendant sued Lincoln Storage and its insurance carrier in Essex County Superior Court for his losses, and the matter was settled between the parties in May 2002.

After the moving incident, Defendant registered the Internet domain name "" and posted a website at this address describing his moving incident. The home page is headlined "Beware of Lincoln Storage Warehouse. Beware of Mayflower Van Line," and states, "If you are thinking about moving or had a bad experience moving with Mayflower Van Lines or Lincoln Storage Warehouses then please read on and reply to me at the following e-mail address:" A link to another page entitled "Don't let this happen to you" includes such language as "I honestly expected fair and reasonable treatment by Lincoln Storage Warehouses/Mayflower Van after their obvious negligence" and continues "Unless you're willing to risk a total loss of your possessions, do not do business with Lincoln Storage Warehouses or Mayflower Van Lines. What happened to me can and will happen to you! Don't be their next victim!" (Def.Mot.S.J., Ex. A).

In March 2000, Defendant also registered the domain names "" and "" Each displayed material similar to that included at "" At some point, Defendant ceased using the domain name "," but continued to use "" and "" Defendant also uses the website "" and linked that domain name to the aforementioned website. In addition, Defendant has registered the website "," the name of the insurer involved in Defendant's claim for stolen property, but no material has been posted on that site.

Through various correspondence and telephone calls, Plaintiff informed Defendant that only Lincoln Storage, and not Mayflower Transit, was involved in his intra-state move. In response to these assertions, Defendant allegedly stated that he desired a resolution of his dispute with Lincoln Storage and would not change his website until he received a satisfactory settlement.

Plaintiff filed suit with the Court on October 30, 2000, requesting injunctive relief and damages for alleged violations of the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. § 1125(d) ("ACPA") (Count I), trademark dilution in violation of the Federal Dilution Act of 1995, 15 U.S.C. § 1125(c) (Count II) and claims for trade libel (Count III) and libel (Count IV) under state law. Both parties seek summary judgment with respect to the cybersquatting, libel and trade libel claims. On September 8, 2003, this Court took both summary judgment motions under advisement.

A. Standard for Summary Judgment

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment may be granted only when the evidence contained in the records shows "that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Serbin v. Bora Corp., 96 F.3d 66, 69, n. 2 (3d Cir.1996). In determining whether there remain any actual issues of factual dispute, the court must resolve all reasonable doubts in favor of the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Meyer v. Riegel Prods. Corp., 720 F.2d 303, 307 n. 2 (3d Cir.1983). At the summary judgment stage, "the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

The moving party bears the initial burden of identifying evidence that demonstrates the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once that burden has been met, it is incumbent upon the nonmoving party to set forth specific facts showing that there is a genuine issue for trial. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The non-movant must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586, 106 S.Ct. 1348. Thus, if the non-movant's evidence on any essential element of the claims asserted is merely "colorable" or is "not significantly probative," the court should enter summary judgment in favor of the moving party. Anderson, 477 U.S. at 249-250, 106 S.Ct. 2505. In other words, the non-moving party must "make a showing sufficient to establish the existence of [every] element essential to that party's case, and on which that party will bear the burden of proof at trial." Serbin, 96 F.3d at 69, n. 2. Bearing in mind that the matter is presented in this particular procedural posture, the Court will now turn to the issues involved in this case.

B. Anti-Cybersquatting Claim

Plaintiff claims that Defendant's actions violate the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(A) ("ACPA"). The ACPA was enacted in an effort to stop cybersquatting, a practice defined as the "deliberate, bad-faith and abusive registration of Internet domain names in violation of the rights of trademark owners." Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 267 (4th Cir.2001) (quoting S. Rep. 106-140, 4). For a plaintiff to succeed on an ACPA claim, it must show that: (1) its marks are distinctive or famous; (2) the defendant's domain names are identical or confusingly similar to the plaintiff's marks; and (3) the defendant registered its domain name with the bad faith intent to profit from them. 15 U.S.C. § 1125(d)(1)(a); Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir.2001).

In the case at bar, there is no dispute that the first two prongs of Plaintiff's ACPA claim have been met. Plaintiff's MAYFLOWER trade mark is "distinctive." Plaintiff Mayflower Transit has five separate federal registrations of the term Mayflower, which "entitles [it] to a presumption that its registered trademark is inherently distinctive." Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497 (2d Cir.2000) (internal citation omitted); Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125, 1130 (D.Colo.2000). Moreover, Plaintiff has used the name Mayflower since 1927, and has registered the service marks as far back as 1948. See, e.g., E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.3d...

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