Mira Holdings, Inc. v. ZoomerMedia, Ltd.

Docket NumberCIVIL 22-cv-01997-PAB-SP
Decision Date07 June 2023
PartiesMIRA HOLDINGS, INC., a Minnesota corporation, Plaintiff, v. ZOOMERMEDIA, LTD., a foreign corporation, Defendant.
CourtU.S. District Court — District of Colorado
ORDER

PHILIP A. BRIMMER CHIEF UNITED STATES DISTRICT JUDGE

This matter comes before the Court on Defendant's Motion to Dismiss Plaintiff's First Amended Complaint for Failure to State a Claim Pursuant to Fed.R.Civ.P. 12(b)(6) [Docket No. 33]. Plaintiff Mira Holdings, Inc. (Mira) did not file a response to defendant ZoomerMedia, Ltd.'s (ZoomerMedia) motion.[1]The Court has jurisdiction under 28 U.S.C. § 1331.

I. BACKGROUND[2]

For nearly ten years, Mira has been in the business of registering domain names for purposes of leasing and selling as well as using the domain names for email services. Docket No. 28 at 4-5, ¶¶ 8, 10-11. Mira has accumulated over 1,000 generic domain names for these purposes. Id. at 4, ¶ 10. On December 14, 2019, Mira purchased the domain name “IDEACITY.COM” for $2,556 and registered the domain with the registrar NameBright.com, LLC (“NameBright”). Id at 2, 4, ¶¶ 3, 9. Mira did not provide false contact information when applying for registration of the domain name. Id. at 8, ¶ 25. Mira has “parked” IDEACITY.COM with monetizer entities since acquisition. Id. at 4, ¶ 9. Mira has offered the domain name for sale, but has never offered to sell IDEACITY.COM to ZoomerMedia. Id. at 8, ¶ 22.

ZoomerMedia is a Canadian company. Id. at 2, ¶ 5. ZoomerMedia owns a Class 41 United States trademark for “IdeaCity,” which is limited to “educational services, namely, conducting seminars and conferences in the fields of technology, entertainment and design namely, art, architecture and product design.” Id. at 5, ¶ 12. Mira has not utilized the domain name IDEACITY.COM in the area of educational services. Id.

On June 8, 2022, ZoomerMedia filed a complaint against Mira with the Canadian International Internet Dispute Resolution Centre (“CIIDRC”), in accordance with the Uniform Domain Name Dispute Resolution Policy (“UDRP”). Id. at 6, ¶ 13. The complaint, related to the IDEACITY.COM domain name, initiated an arbitration proceeding. Id. On June 10, 2022, in accordance with UDRP procedures, NameBright locked the IDEACITY.COM domain name, prohibiting Mira from utilizing the domain name. Id. ZoomerMedia informed the CIIDRC panel that Mira's use of the domain name “create[ed] the possibility of confusion with [ZoomerMedia's] mark.” Id. at 11, ¶ 35. On July 29, 2022, the CIIDRC panel ruled in favor of ZoomerMedia and ordered the transfer of the domain name to ZoomerMedia. Id. at 6, ¶ 14; see also Docket No. 28-1 (CIIDRC decision attached to the amended complaint). The domain name is still locked, pending transfer of the registration to ZoomerMedia. Docket No. 28 at 6, ¶ 14.

Mira “did not have any intent to divert customers” from ZoomerMedia's online sites to IDEACITY.COM. Id. at 8, ¶ 24. Mira would like to use the IDEACITY.COM domain name in the future for a domain name marketplace. Id. at 5, ¶ 12. Mira states that it would file for a trademark in a different class than ZoomerMedia's trademark. Id.

II. LEGAL STANDARD

To survive a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a complaint must allege enough factual matter that, taken as true, makes the plaintiff's “claim to relief . . . plausible on its face.” Khalik v. United Air Lines, 671 F.3d 1188, 1190 (10th Cir. 2012) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “The ‘plausibility' standard requires that relief must plausibly follow from the facts alleged, not that the facts themselves be plausible.” RE/MAX, LLC v. Quicken Loans Inc., 295 F.Supp.3d 1163, 1168 (D. Colo. 2018) (citing Bryson v. Gonzales, 534 F.3d 1282, 1286 (10th Cir. 2008)). Generally, [s]pecific facts are not necessary; the statement need only ‘give the defendant fair notice of what the claim is and the grounds upon which it rests.' Erickson v. Pardus, 551 U.S. 89, 93 (2007) (per curiam) (quoting Twombly, 550 U.S. at 555) (alterations omitted). A court, however, does not need to accept conclusory allegations. See, e.g., Hackford v. Babbit, 14 F.3d 1457, 1465 (10th Cir. 1994) ([W]e are not bound by conclusory allegations, unwarranted inferences, or legal conclusions.”).

[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged - but it has not shown - that the pleader is entitled to relief.” Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009) (quotations and alterations omitted); see also Khalik, 671 F.3d at 1190 (“A plaintiff must nudge [his] claims across the line from conceivable to plausible in order to survive a motion to dismiss.” (quoting Twombly, 550 U.S. at 570)). If a complaint's allegations are “so general that they encompass a wide swath of conduct, much of it innocent,” then plaintiff has not stated a plausible claim. Khalik, 671 F.3d at 1191 (quotations omitted). Thus, even though modern rules of pleading are somewhat forgiving, “a complaint still must contain either direct or inferential allegations respecting all the material elements necessary to sustain a recovery under some viable legal theory.” Bryson, 534 F.3d at 1286 (alterations omitted).

III. ANALYSIS

The amended complaint asserts claims for declaratory relief under 28 U.S.C. § 2201 and injunctive relief under 15 U.S.C. § 1114(2)(D)(v). Docket No. 28 at 9-13. ZoomerMedia moves to dismiss the amended complaint in its entirety, arguing that Mira has failed to plead facts supporting these two claims and that Mira additionally cites various statutes that are “entirely inapplicable” to this case. Docket No. 33 at 2, 4-5.

A. Second Claim - Injunctive Relief under 15 U.S.C. § 1114(2)(D)(v)

Mira's second cause of action asserts a claim for injunctive relief under 15 U.S.C. § 1114(2)(D)(v). Docket No. 28 at 12-13. The Anti-Cybersquatting Consumer Protection Act (“ACPA”) provides some protection to domain name registrants against “overreaching trademark owners.” Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625 (4th Cir. 2003); see also IFIXITUSA LLC v. iFixit Corp., 2022 WL 2117845, at *2 (D. Ariz. June 13, 2022); 15 U.S.C. §§ 1114(2)(D)(iv)-(v). Under § 1114(2)(D)(v),

[a] domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

15 U.S.C. § 1114(2)(D)(v); see also Barcelona, 330 F.3d at 625 (discussing how under the reverse domain name hijacking provision, § 1114(2)(D)(v), “a domain name registrant who is aggrieved by an overreaching trademark owner may commence an action to declare that the domain name registration or use by the registrant is not unlawful”). Section 1114(2)(D)(v) “provides registrants. . . with an affirmative cause of action to recover domain names lost in UDRP proceedings.” ISystems v. Spark Networks, Ltd., 2012 WL 3101672, at *3 (5th Cir. Mar. 21, 2012) (unpublished) (alterations omitted).

To state a claim under § 1114(2)(D)(v), a plaintiff must demonstrate that (1) plaintiff “registered a domain name;” (2) “the domain name was suspended, disabled, or transferred under a policy implemented by a domain name registrar;” (3) the defendant had notice of the action; and (4) plaintiff's “registration or use of the domain name [is] not unlawful under this chapter.” Dent v. Lotto Sport Italia S.p.A., 2018 WL 11318189, at *3 (D. Ariz. Feb. 12, 2018) (citation omitted); see also Barcelona, 330 F.3d at 626. ZoomerMedia argues that the Court must dismiss Mira's second claim because Mira has failed to adequately plead the fourth element. Docket No. 33 at 11.

To establish the fourth element, that the use or registration of the domain name is not “unlawful,” a plaintiff must prove either that (1) it did not register traffic, or use a domain name that is identical or confusingly similar to a distinctive mark, or (2) it did not have a bad faith intent to profit from that mark.” Domain Vault LLC v. Bush, No. 14-cv-02621-WJM-CBS, 2015 WL 1598099, at *10 (D. Colo. Apr. 8, 2015); see also iFixit Corp., 2022 WL 2117845, at *3; Dent, 2018 WL 11318189, at *3; Mira Holdings, Inc. v. Regents of Univ. of California, 2018 WL 8244597, at *3 (M.D. Fla. Dec. 10, 2018). The ACPA provides a list of nine non-exhaustive factors to consider in determining bad faith, including,

(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having
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