Ringcent. Inc v. Quimby

• Decision Date: 08 April 2010
• Docket Number: No. C-09-02693 RS.,C-09-02693 RS.
• Citation: 711 F.Supp.2d 1048
• Parties: RINGCENTRAL, INC., Plaintiff,v.Bill QUIMBY, et al., Defendants.
• Court: U.S. District Court — Northern District of California

711 F.Supp.2d 1048

RINGCENTRAL, INC., Plaintiff,v.Bill QUIMBY, et al., Defendants.

No. C-09-02693 RS.

United States District Court N.D. California.

April 8, 2010.

COPYRIGHT MATERIAL OMITTED

Aaron K. McClellan, James Francis Monagle, Peter Lee Weber, Murphy, Pearson, Bradley & Feeney, San Francisco, CA, for Plaintiff.

Bill Quimby, Salt Point, NY, pro se.

Tollfreenumbers.Com, Inc., Salt Point, NY, pro se.

ORDER ADOPTING REPORT AND RECOMMENDATION REGARDING MOTION FOR DEFAULT JUDGMENT

RICHARD SEEBORG, District Judge.

Plaintiff RingCentral, Inc. moves for default judgment, including entry of a permanent injunction against defendants Bill Quimby and TollFreeNumbers.com, Inc. On February 5, 2010, Judge Spero heard the motion and requested that plaintiff submit certain additional briefing and evidence. On February 26, 2010, Judge Spero issued a Report and Recommendation that the motion for default judgment be granted in part, and denied in part. Docket No. 35. Because defendants have not consented to magistrate jurisdiction, the case was reassigned, and then transferred to the undersigned on March 18, 2010.

No objections per se have been filed. Plaintiff, however, has filed a request that the injunctive language recommended by Judge Spero be expanded to require defendants to turn over to plaintiff the two internet domain names at issue. The Court has reviewed Judge Spero's extensive and thorough report and recommendation, adopts it here in full, and adds the provision that defendants will be expressly required to turn over the domain names to plaintiff. Plaintiff requests that the injunction further provide that if defendants fail to transfer the domain names, then the present registrar of the names will be ordered to effect the transfer. Plaintiff has not offered authority, however, that it would be appropriate for the Court to enter an order purporting to require action to be taken by an entity that has not been party to this action or these proceedings. Accordingly, the injunction will include language authorizing the registrar to transfer the domain names to plaintiff upon plaintiff's request, but it will not enjoin the registrar to do so upon pain of contempt. A separate judgment will be entered.

IT IS SO ORDERED.

REPORT & RECOMMENDATION RE PLAINTIFF'S MOTION FOR ENTRY OF DEFAULT JUDGMENT AND PERMANENT INJUNCTION [Docket No. 29]

JOSEPH C. SPERO, United States Magistrate Judge.

I. INTRODUCTION

In this trademark infringement action, Plaintiff RingCentral, Inc. brings a Motion for Default Judgment and Permanent Injunction (“Motion”) in which it seeks default judgment, an award of damages, attorneys' fees and costs and a permanent injunction against Defendants Bill Quimby and TollFreeNumbers.com, Inc. A hearing on the Motion was held on Friday, February 5, 2010 at 9:30 a.m. For the reasons stated below, it is recommended that the Motion be GRANTED in part and DENIED in part.

II. BACKGROUND

Plaintiff is a California corporation with its principal place of business in San Mateo, California. Compl. ¶ 5. “RingCentral is a telecommunications company providing telephone system service, including the registration and management of toll free numbers, to individuals and small businesses throughout the entire United States.” Id. ¶ 10. It owns the marks “RingCentral” (“the Mark”) and “1800RingCentral” (“the 800 Mark”), both of which are registered with the U.S. Patent and Trademark Office.¹Id. ¶ 11, 13. Registration of the Mark was applied for in 1994 and approved in 1995; registration of the 800 Mark was applied for in 2007 and approved in 2008. Compl. ¶ 11, 13. In addition, Plaintiff operates a website to advertise and promote its products at the domain name www. ringcentral. com. Id. ¶ 12.

Plaintiff filed the Complaint in this action on June 17, 2009, naming Bill Quimby, TollFreeNumbers.com, and Does 1-50 as Defendants. In the Complaint, Plaintiff alleges that Bill Quimby is an individual residing in the state of New York and TollFreeNumbers.com is a New York corporation with its principal place of business in Yonkers, New York. Id. ¶ 6-7. Plaintiff alleges that Defendants maintain a website at www. tollfree numbers. com which offers similar products and services to RingCentral, such as the registration of 800 numbers. Id. ¶ 16. The website allegedly “offers '800' numbers, '800' vanity numbers and '800' premium numbers” and “offers customers the ability to look up available '800' and vanity numbers and activate those numbers for use in exchange for a monthly fee.” Id. Quimby also allegedly maintains other websites that enable customers to use toll free phone numbers, such as www. billquimby. net. Id. ¶ 14.

According to the Complaint, Defendants registered the domain names www. 800 ring central. com and www. 1800 ring central. com on or about April 18, 2003. Id. ¶ 15; Declaration of Vladimir Shmunis in Support of Plaintiff's Motion for Default Judgment and Permanent Injunction (“Shmunis Decl.”) ¶ 8 & Ex. E (database showing registrant of domain names). Users who visit those websites are diverted to Defendants' website at www. tollfree numbers. com. Compl. ¶ 15. Plaintiff claims that at the time Quimby registered the domain names he knew of the existence of Plaintiff's use of the Mark to identify its products and services id., and that he intentionally registered domain names using Plaintiff's mark to divert customers interested in acquiring Plaintiff's services to Defendants' website, Plaintiff's Memorandum of Law in Support of Motion for Default Judgment and Permanent Injunction (“First Supp. Mem.”) at 2. Plaintiff also alleges that on or about August 18, 2004, Quimby registered a toll free vanity number corresponding to “1800RINGCENTRAL” and callers are diverted to Quimby or a business entity related to Quimby. Compl. ¶ 17. Further, Plaintiff alleges that Defendants have made false and misleading statements regarding Plaintiff's products and services on their website. Id. ¶ 18. Finally, Plaintiff alleges that Quimby has made other unauthorized uses of the Mark on websites owned or controlled by Defendants and in publications promoting Defendants' products or services. Id. ¶ 19.

On or about October 8, 2008, Plaintiff sent a letter to Defendants requesting that they cease and desist infringing uses of the Mark, and demanded that Quimby transfer the www. 800 ring central. com and www. 1800 ring central. com domain names to Plaintiff. Id. ¶ 20; Declaration of John Marlow in Support of Plaintiff RingCentral, Inc.'s Second Supplemental Memorandum of Law in Support of Motion for Default Judgment and Permanent Injunction (“Second Marlow Decl.”) ¶ 2 & Ex. A. Plaintiff's California address was located at the bottom of the letter. Second Marlow Decl. ¶ 2 & Ex. A. Additionally, John Marlow, Vice President of Corporate Development and General Counsel for Plaintiff, spoke to Quimby numerous times about the infringing activity. Id. ¶ 4. Quimby refused to cease the infringing activity on or about October 20, 2008 id. ¶ 3, and instead offered to stop routing customers through the domain names to Defendants' websites if Plaintiff would agree to post a link on its website to promote Defendants' products and services, Compl. ¶ 20.

The summons and Complaint were personally served on Defendants on July 17, 2009. Declaration of Peter L. Weber in Support of Plaintiff's Request to Enter Default (“Weber Decl. Supp. Entry of Default”) ¶ 3-4 & Ex. 1, 2. Quimby sent a letter to the Court dated August 14, 2009 in response to the Complaint. In the letter Quimby claims that “[a]ll of the allegations made by RingCentral are entirely false.” Quimby Letter at 1. Quimby admits that he registered the domain name www. 1800 ring central. com but states that the site “has literally been just parked and never used or promoted in any way.” Id. According to Quimby, TollFreeNumbers.com is not a competitor of Plaintiff because TollFreeNumbers.com “only help[s] customers get a toll free number” and does not actually provide toll free services. Id. at 2. Quimby states that TollFreeNumbers.com has listed Plaintiff as a provider of toll free service and that TollFreeNumbers.com has referred customers to Plaintiff. Id. While he has used his website to “write about and offer opinions on things related to toll free service” including expressing opinions on Plaintiff, Quimby denies that he or TollFreeNumbers.com have used the domain name or mark “1800RingCentral” in any way. Id.

The Court accepted Quimby's letter as a responsive pleading and scheduled a case management conference for September 25, 2009. When Defendants failed to appear, the Court issued an Order to Show Cause instructing Defendants to appear on October 23, 2009, to show cause why default should not be entered against them for failing to appear at the case management conference (Defendant Quimby), and for failure to “otherwise defend” pursuant to Fed. R. Civ. Pro. 55(a) and to retain counsel pursuant to Civ. L.R. 3-9(b) (Defendant TollFreeNumbers.com). Defendants did not appear on October 23, 2009 as instructed and the Court entered default under Fed.R.Civ.P. 55(a) on November 18, 2009.

Based on its allegations, Plaintiff asserts nine claims against Defendants in its Complaint: (1) trademark infringement under 15 U.S.C. § 1114; (2) unfair competition under 15 U.S.C. § 1125; (3) false advertising under 15 U.S.C. § 1125; (4) cybersquatting under 15 U.S.C. § 1125(d); (5) state law unfair competition; (6) trade libel; (7) intentional interference with contractual relations; (8) intentional interference with prospective economic relations; and (9) negligent interference with prospective economic relations. Compl. ¶ 22-67; Motion ¶ 1. Plaintiff seeks an injunction prohibiting Defendants from using the mark or any imitation, ordering the transfer of the domain names www. 800 ring central. com and www. 1800 ring central. com from Defendants to Plaintiff, and requiring Defendants to employ corrective...