The N.Y. City Triathlon LLC v. Nyc Triathlon Club Inc

• Decision Date: 04 May 2010
• Docket Number: No. 10 Civ. 1464(CM).,10 Civ. 1464(CM).
• Citation: 704 F.Supp.2d 305
• Parties: The NEW YORK CITY TRIATHLON, LLC, Plaintiff,v.NYC TRIATHLON CLUB, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

704 F.Supp.2d 305

The NEW YORK CITY TRIATHLON, LLC, Plaintiff,v.NYC TRIATHLON CLUB, INC., Defendant.

No. 10 Civ. 1464(CM).

United States District Court,

S.D. New York.

March 9, 2010.

Opinion Denying Motion to Vacate Preliminary Injunction May 4, 2010.

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Peter A. Bicks, Lisa T. Simpson, Aaron G.R. Rubin, New York, NY, for Plaintiff The New York City Triathlon, LLC.

Christopher Vandaele, NYC Triathlon Club, New York, NY, for Defendant NYC Triathlon Club.

DECISION AND ORDER GRANTING PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION

McMAHON, District Judge:

Plaintiff The New York City Triathlon, LLC has filed a motion for a preliminary injunction, pursuant to Federal Rule of Civil Procedure 65, to prevent and restrain Defendant NYC Triathlon Club (“NYC Triathlon Club”) from using “NYC Triathlon Club,” “NYC Tri Club,” and “New York City Triathlon Club” as names, trade names or trademarks, or as a domain name on the Internet, or in any other way that is likely to cause confusion with Plaintiff or its trade name and trademarks, NEW YORK CITY TRIATHLON, NYC TRIATHLON, and NYC TRI (the “NYC TRIATHLON Marks”).

Background

The NYC Triathlon is an Olympic distance triathlon, consisting of a 1500 meter swim in the Hudson River, a 40 kilometer bike ride up the West Side Highway and a ten kilometer run into Central Park. V. Compl. ¶ ¶ 7, 8; Korff Decl. ¶ 8. It has been run every summer in New York City since 2001 and Plaintiff has, since that date, exclusively used its name and mark THE NEW YORK CITY TRIATHLON (and its related variations, THE NYC TRIATHLON and THE NYC TRI) in connection with the event. V. Compl. ¶ ¶ 1, 35, 67; Korff Decl. ¶ 42. This year over 20,000 people vied for the 5600 entry spots, and they sold out in under seven minutes after registration opened online. V. Compl. ¶ 21; Korff Decl. ¶ 27. It is estimated that 250,000 people come out to watch the race. V. Compl. ¶ 21; Korff Decl. ¶ 11.

The race has developed a loyal and enthusiastic following. V. Compl. ¶ ¶ 20, 21, 34; Korff Decl. ¶¶ 27, 41. Thousands of participants have e-mailed John Korff, Plaintiff's principal owner and organizer of the race, to praise the race and to praise Plaintiffs organization and attention to detail. V. Compl. ¶ 34; Korff Decl. ¶ 41. To run a race of this scope and kind, Plaintiff must obtain approvals from over 40 different city and state agencies. V. Compl. ¶ 8; Korff Decl. ¶ 9. In addition, Plaintiff employs 200 people during the week of the race, hires countless additional independent contractors to handle everything from devising an emergency service plan, to building the entrance into and out of the Hudson River, to making plans for accommodating the many disabled athletes who participate, and also engages a team of 1000 volunteers to ensure the success of the race. V. Compl. ¶ 24; Korff Decl. ¶ 12. The NYC Triathlon is sanctioned by USA Triathlon (“USAT”), the independent organization that governs triathlon racing in the United States, and as such, adheres to certain safety guidelines and certifications. V. Compl. ¶ 9; Korff Decl. ¶ 10. The race attracts a diverse field of participants, ranging from elite racers to first time triathletes to physically disabled athletes. V. Compl. ¶ 24, 33; Korff Decl. ¶ 11.

The NYC Triathlon has been covered by numerous news and media outlets, including ABC, NBC, CBS, FOX, CNN, WOR, BBC, WFAN The New York Times, The Wall Street Journal, USA Today, and the Associated Press. V. Compl. ¶ ¶ 14, 16; Korff Decl. ¶ ¶ 16, 20, 21, 22. It has received local coverage in nearly every U.S. State and has also received international media coverage in countries such as Australia, India, and Great Britain. V. Compl. ¶ ¶ 14, 16; Korff Decl. ¶ ¶ 20, 21. The event has been viewed by over 60 million people in the United States and over a billion worldwide. V. Compl. ¶ 14; Korff Decl. ¶ 16. Numerous well-known and famous brands have joined the team as sponsors of the event over the years. Nautica is currently the principal sponsor, and corporations such as Ford Motor Company, Marriott Hotels, Gatorade, JetBlue, Visa, Dasani, Delta Airlines, Accenture, News Corp. (which owns The Wall Street Journal and Fox Broadcasting Company), Toyota, and Janus Capital Group have all sponsored or currently sponsor the race. V. Compl. ¶ ¶ 13, 16; Korff Decl. ¶ ¶ 15, 26.

Defendant, SBR Multisports, Inc. (“SBR”), a retail outlet selling triathlon equipment, owned and operated by Defendant's principal owner, Christophe Vandaele (“Vandaele”), was a sponsor of the NYC Triathlon from 2005-2008 and took a booth at the race Expo in 2009. V. Compl. ¶ ¶ 39, 41; Korff Decl. ¶ 45. By press release dated January 25, 2010, Defendant announced that effective January 1, 2010, it was changing its name from “SBR Triathlon Club” to “NYC Triathlon Club.” V. Compl. ¶ ¶ 45, 56; Korff Decl. ¶ 52. Plaintiff sent Defendant a cease and desist letter dated January 8, 2010 seeking a response by January 15, 2010. V. Compl. ¶ 54; Korff Decl. ¶ 51. Defendant did not respond. Plaintiff commenced this action on February 22, 2010, seeking injunctive relief to protect its name mark and goodwill pursuant to Section 43(a) of the Lanham Act and the common and statutory laws of New York. V. Compl. ¶ 1.

Standard for Obtaining a Preliminary Injunction

A plaintiff seeking a preliminary injunction “must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Natural Resources Defense Council, Inc., --- U.S. ----, 129 S.Ct. 365, 374, 172 L.Ed.2d 249 (2008). Irreparable injury must be “likely in the absence of an injunction”; it is not enough for a plaintiff to face some “possibility” of irreparable harm. Id. at 375. This is because a preliminary injunction is an “extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.” Id. at 376.

Notwithstanding the Supreme Court's decision in Winter, the Second Circuit has continued to allow parties to obtain a preliminary injunction either through: (1) “a likelihood of success on the merits”; or (2) “sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the movant's favor.” Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 242 (2d Cir.2009); Faiveley Transport Malmo AB v. Wabtec Corp., 559 F.3d 110, 116 (2d Cir.2009). The Second Circuit also requires a “likelihood of irreparable injury” to the movant, but does not require any consideration of the public interest as part of the preliminary injunction standard. Zino Davidoff SA, 571 F.3d at 242.

The Court finds that Plaintiffs are entitled to a preliminary injunction under either standard.

I NYC TRIATHLON is Likely to Succeed on the Merits of Its Claims

The Verified Complaint sets forth seven counts arising out of Defendant's use of “NYC Triathlon Club” as a name and domain name: (1) trademark infringement, false designation of origin and unfair competition pursuant to section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)); (2) dilution pursuant to section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)); (3) cybersquatting pursuant to section 43(d) of the Lanham Act (15 U.S.C. § 1125(d)); (4) common law trademark infringement under New York State law; (5) dilution pursuant to New York General Business Law § 360-1; (6) violation of New York General Business Law § 349, New York's deceptive acts and practices statute; and (7) unfair competition pursuant to the common law of New York.

Based upon the application of settled law to the undisputed facts, Plaintiff is likely to succeed on the merits of each of its claims.

Lanham Act § 43(a) Claim

Section 43(a) of the Lanham Act expressly prohibits the use in commerce of any word, term, name, symbol, or device (or any false designation of origin) that is:

likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ....

15 U.S.C. § 1125(a)(1) and (a)(1)(A) (2009).¹ To state a claim under Section 43(a), a plaintiff must show it (1) has a valid trademark entitled to protection and (2) that the defendant's mark is likely to cause confusion in the marketplace. See Virgin Enters. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003); Heisman Trophy Trust v. Smack Apparel Co., 595 F.Supp.2d 320, 325 (S.D.N.Y.2009). The Second Circuit has articulated eight factors (often referred to as “the Polaroid factors”) to be considered when assessing the likelihood of consumer confusion:

(1) the strength of the plaintiff's mark;

(2) the similarity of the plaintiff's and defendant's marks;

(3) the competitive proximity of the products or services;

(4) the likelihood that the plaintiff will “bridge the gap” and offer a product or service similar to the defendant's;

(5) actual confusion between the products or services;

(6) good faith on the defendant's part;

(7) the quality of the defendant's products or services; and

(8) the sophistication of buyers.

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961) cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). See also

Virgin Enters., 335 F.3d at 146-47; Heisman Trophy, 595 F.Supp.2d at 326. The factors apply to competing and non-competing goods and services, and no single factor is intended to be dispositive. See

Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 578 (2d Cir.2005); Fruit-Ices Corp. v. Coolbrands Int'l, Inc., 335 F.Supp.2d 412, 418-19 (S.D.N.Y.2004). Since the analysis used to determine the first prong of a claim under §...