JOHN R. TUNHEIM, Chief District Judge.
Plaintiff Gregory J. LeMond brings this action against Defendants Frederick Harold Stinchfield, II, ("Stinchfield II") and Frederick Harold Stinchfield, III, ("Stinchfield III") (collectively, "Defendants"), alleging claims under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) ("ACPA"). LeMond contends that sixty-six domain names, which Defendants registered and control, are identical or confusingly similar to LeMond's name or trademarks.
LeMond now moves for a preliminary injunction. Because the Court finds LeMond has established a likelihood of success on his ACPA claims, LeMond has shown a threat of irreparable harm, Defendants will suffer no harm in complying with the preliminary injunction, and the public interest favors providing preliminary relief, the Court will grant LeMond's motion.
LeMond is a former professional cyclist and three-time winner of the Tour de France; he was "an early adopter and proponent of carbon fiber technology in cycling," (Decl. of Gregory J. LeMond ¶ 2, June 15, 2017, Docket No. 8). LeMond has used the LEMOND brand and trademark since at least 2004.
At issue are the following sixty-six domain names (the "Domain Names") containing LeMond's name or one of his marks:
(Decl. of Joseph B. Shapiro ("Shapiro Decl.") Ex. A, June 15, 2017, Docket No. 10.) Based on a review by a digital forensics consultant, all of these domain names are registered to "F H Stinchfield II," list Defendants' shared home address as the registrant's address, and list Stinchfield III's email address — hal.stinchfield@gmail.com — as the registrant's email address. (Id. ¶¶ 1-4 & Ex. A.) All of the Domain Names were registered in September or October 2016. (Id., Ex. A.) Several additional domain names registered to hal.stinchfield@gmail.com contain the name or registered mark of other well-known people, including Huma Abedin, Anthony Weiner, Rihanna, Leanne Rimes, and Wheelock Whitney. (Id. ¶ 4 & Ex. B.)
Until recently, one of the Domain Names (lemondindustries.com) hosted a website titled, "LeMond Industries," which consisted of blog posts containing "derogatory allegations about LeMond and his businesses." (Decl. of Kelly Harris ("Harris Decl.") ¶¶ 8, 10, 14, June 15, 2017, Docket No. 9.) The "LeMond Industries" site also contained pictures of LeMond and third-party advertisements. (Id. ¶¶ 8-9.) The website included approximately twenty-five blog posts made since June 2, 2017. (Id. ¶ 10.) One post, from June 8, 2017, was titled "LeMond-Related Domains for Sale!" and offered some of the Domain Names for sale with prices available "on inquiry." (Id. ¶ 11.) By the next day, this post was updated to add "Get these domains for cheap before they are sent to auction!" and to change the email address accepting price inquiries from "Sales@lemondindustries.com" to "BuyLeMondDomains@yahoo.com." (Id. ¶¶ 11-12.) In a post referencing the sale of domains dated June 10, 2017, the author stated that he or she hoped that "someone from the LeMond Composites team would reach out" and that "[t]he amount of traffic driven by the URLS in the list runs in the 1000s per day with no original content."
LeMond brought this ACPA action on June 15, 2017. (Compl., June 15, 2017, Docket No. 1.) LeMond seeks damages, forfeiture of the Domain Names, an injunction preventing Defendants from registering, using, or trafficking in the Domain Names or similar domain names, and attorney fees and costs. (Id. at 14.)
LeMond moved for a temporary restraining order and a preliminary injunction the day he filed the complaint. The Court held a status conference on the motion on June 21, 2017. The Court then granted in part LeMond's request for a temporary restraining order, preventing Defendants from transferring or selling the Domain Names and prohibiting Defendants from registering any additional domain names that incorporate or were confusingly similar to LeMond's name or marks. (Order, June 21, 2017, Docket No. 21.)
The Court held a hearing on LeMond's preliminary injunction motion on July 6, 2017, at which Defendants appeared pro se. Stinchfield II asserts that he had no involvement in the registration or use of the Domain Names. (Stinchfield II Answer, June 27, 2017, Docket No. 24.) Stinchfield III contends that other parties registered the Domain Names,
In deciding whether to grant a preliminary injunction, the Court considers four factors: "(1) the threat of irreparable harm to the movant; (2) the state of balance between this harm and the injury that granting the injunction will inflict . . .; (3) the probability that [the] movant will succeed on the merits; and (4) the public interest." Grasso Enters., LLC v. Express Scripts, Inc., 809 F.3d 1033, 1036 n.2 (8th Cir. 2016) (quoting Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981) (en banc)).
LeMond contends that he is likely to succeed on the merits on his ACPA claims.
To determine if there was an ACPA violation, the Court must consider whether (1) the marks were distinctive or famous at the time of the registration of the Domain Names, (2) the Domain Names are identical or confusingly similar to the marks, (3) Defendants registered, trafficked, or used the Domain Names, and (4) Defendants did so with bad-faith intent to profit from the marks. 15 U.S.C. § 1125(d)(1)(A).
The first question is whether LeMond's marks were distinctive or famous at the time the Domain Names were registered. LeMond contends that at the time of the registration of the Domain Names both the LEMOND and GRAIL marks were already distinctive and the LEMOND mark was already famous.
The LEMOND mark, as a registered mark, is likely entitled to a rebuttable presumption that it is distinctive. E.g., Faegre & Benson, LLP v. Purdy, 447 F.Supp.2d 1008, 1012 (D. Minn. 2006) (citing Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 869 (8th Cir. 1994)). Defendants have not rebutted this presumption, and the Court sees no reason not to apply it here. Accordingly, because the LEMOND mark was registered long before the Domain Names were registered, it was likely distinctive at the time the Domain Names were registered.
It appears that registration for the GRAIL mark was filed in October 2016, while some of the Domain Names were registered the month before, and thus, the presumption of distinctiveness likely does not apply. However, even without a presumption, LeMond could still establish that the GRAIL mark was distinctive at the time the Domain Names were registered "if it
The first route "refers to inherent qualities of a mark," such that "[a] mark may be distinctive before it has been used." Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497 (2d Cir. 2000). Marks that are suggestive, arbitrary, or fanciful are considered inherently distinctive "because their intrinsic nature serves to identify a particular source of a product." Two Pesos, 505 U.S. at 768. Suggestive marks are those that "require imagination, thought, and perception to reach a conclusion as to the nature of the goods." Frosty Treats Inc. v. Sony Comput. Entm't Am. Inc., 426 F.3d 1001, 1005 (8th Cir. 2005). A mark is considered "fanciful" if it is "a combination of letters or other symbols signifying nothing more than the product or service to which the mark has been assigned (e.g., Exxon, Kodak)," while a mark is considered "arbitrary" if it "has a significance recognized in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached (e.g., Camel cigarettes or Apple computers)." Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987). In contrast, descriptive marks — marks that "convey[] an `immediate idea of the ingredients, qualities or characteristics of the goods'" — are protectable only upon a showing of secondary meaning. Frosty Treats Inc., 426 F.3d at 1005 (quoting Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 785-86 (8th Cir. 1995)). Finally, generic marks — that is, marks "that refer[] to the common name or nature of an article" — are not protectable under trademark law. Id.
While GRAIL is an existing word, it does not refer to the "qualities or characteristics of the goods" or "to the common name or nature of an article." Id. Thus, based on the current information before the Court, the GRAIL mark, as used in relation to LeMond's carbon fiber business, is likely inherently distinctive as either suggestive or arbitrary.
Accordingly, the Court finds LEMOND and GRAIL were both likely distinctive marks at the time the Domain Names were registered.
The Court must then consider whether the Domain Names are identical or confusingly similar to the LEMOND or GRAIL marks. "A domain name typically consists of a top level domain extension, such as .com, .org, or .net, and a second level domain name, such as pepsi in pepsi.com." Coca-Cola Co., 382 F.3d at 783. "[C]ourts generally look to the second level domain name to determine whether it is identical or confusingly similar to a given mark." Id. at 783-84.
Some of the Domain Names are identical to the LEMOND mark (e.g., lemond.company and lemond.mobi). Similarly, the Domain Name lemondgrail.com merely combines LeMond's two marks and the Domain Name greglemond.news merely adds LeMond's first name to the mark, and thus, they are identical or confusingly similar to the marks. Many Domain Names combine LeMond's marks with words related to LeMond's business or generic words (e.g., grailcarbon.us, lemondcomposites.cc, lemondcompanies.com, lemondwindenergy.com). But, the addition of generic terms, particularly those relevant to the mark, does not prevent a finding that a domain name is confusingly similar to a mark. Id. at 784 (finding "my-washingtonpost.com, mymcdonalds.com or drinkcoke.org" confusingly similar to the Washington Post, Coke, and McDonald's marks).
Additional factors also suggest a likelihood of confusion. The timing of the registration — the fact that the Domain Names were registered within months of LeMond's announcement of his carbon fiber business — is evidence of likelihood of confusion. Webadviso v. Bank of Am. Corp., No. 09-5769, 2009 WL 5177997, at *4 (S.D.N.Y. Dec. 31, 2009) (finding the timing of the domain names' registration on the day a merger was announced "surely created confusion"). Also, in Coca-Cola Co., the court found a likelihood of confusion in part because the defendant "intended to capitalize on the similarity between his domain names and plaintiffs' marks . . . and intentional infringers are likely to succeed in creating confusion." 382 F.3d at 784. Here, there is some evidence that Defendants intended to create confusion, considering the number of Domain Names registered containing the marks, the post offering some of the Domain Names for sale, and the post stating that the Domain Names received "1000s [of views] per day with no original content," (Harris Decl. ¶ 13), which would also suggest actual confusion.
Overall, the Court finds LeMond will likely be able to show a likelihood of confusion between the Domain Names and his marks.
The next question is whether Defendants registered, trafficked, or used the Domain Names. Stinchfield II stated that he had no involvement with the Domain Names, and Stinchfield III asserted that other individuals were involved in registering the Domain Names. However, there is evidence connecting Defendants to the Domain Names: they were registered in Stinchfield II's name, with the Stinchfields' shared address, and with Stinchfield III's email address. Additionally, Stinchfield III admitted to having control over the Domain Names and to posting on the "LeMond Industries" site. There is also evidence of Stinchfield III's trafficking in many of the Domain Names based on the post on the "LeMond Industries" site offering them for sale. The Court notes that the Defendants' conduct and the possible involvement of other individuals remain somewhat unclear, and additional defendants may eventually need to be added. But the Court finds sufficient evidence at this stage in the proceedings to support a likelihood of success on this element.
Finally, the Court must consider whether there was bad faith intent to profit from the marks. ACPA provides a list of non-exclusive factors for courts to consider in determining whether there is bad faith intent. 15 U.S.C. § 1125(d)(1)(B)(i). "The first four factors have been seen as reasons why a defendant might in good faith have registered a domain name incorporating someone else's mark, and the other five are indicia of bad faith intent." Coca-Cola Co., 382 F.3d at 785.
The first three factors do not weigh in Defendants' favor: Defendants do not have any "trademark or other intellectual property rights" in the Domain Names; the Domain Names do not include Defendants' legal name or a name used to identify them; and Defendants have not used the Domain Names in connection with any "bona fide offering of . . . goods or services." 15 U.S.C. § 1125(d)(1)(B)(i)(I)-(III).
The fourth factor — "the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name," 15 U.S.C. § 1125(d)(1)(B)(i)(IV) — also does not clearly weigh in Defendants' favor. Defendants could argue that the "LeMond Industries" site was a criticism or "gripe site," which may be considered a noncommercial, fair use of LeMond's marks. See Cleary Bldg. Corp. v. David A. Dame, Inc., 674 F.Supp.2d 1257, 1265 (D. Colo. 2009). However, that site represents only one of the sixty-six registered Domain Names containing LeMond's marks, and thus, the notion that just one site may be a "gripe site" does not explain Defendants' conduct. Additionally, the fact that a site contains a noncommercial or fair use of the marks does not prevent a finding of bad faith. Coca-Cola Co., 382 F.3d at 778 ("To recognize such an exemption would `eviscerate the protections of the bill by suggesting a blueprint for cybersquatters who would simply create criticism sites in order to immunize themselves from liability despite their bad-faith intentions.'" (quoting S. Rep. No. 106-140, at *9 (1999))).
The fifth factor may weigh in favor of a finding of bad intent because one could find that the "LeMond Industries" site was "inten[ded] to divert consumers from [LeMond's] online location" to the "LeMond Industries" site. 15 U.S.C. § 1125(d)(1)(B)(i)(V). That site contained advertisements, as well as the post seeking to sell some of the Domain Names, meaning the diversion may have been "for commercial gain." Id. Moreover, the timing of the Domain Names' registration (after the announcement of LeMond's carbon fiber business), the combination of the marks with other terms related to LeMond's business, and the content of the "LeMond Industries" site (containing images and postings related to LeMond and his businesses) clearly demonstrate that Defendants knew about LeMond and his marks at the time the Domain Names were registered.
The sixth factor also weighs in favor of a finding of bad faith because the post on the "LeMond Industries" site offering to sell many of the Domain Names (while those Domain Names were unused) likely counts as an "offer to transfer, sell, or otherwise assign the domain name[s] to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name[s]." 15 U.S.C. § 1125(d)(1)(B)(i)(VI).
The seventh factor is not implicated at this time because it is not clear that "material and misleading false contact information" was used when applying to register the Domain Names or that Defendants "intentional[ly] fail[ed] to maintain accurate contact information." 15 U.S.C. § 1125(d)(1)(B)(i)(VII).
The eighth factor weighs in favor of finding bad faith because Defendants registered sixty-six domain names related to the LEMOND and GRAIL marks. 15 U.S.C. § 1125(d)(1)(B)(i)(VIII) (directing courts to consider "the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others"). Additionally, there is evidence that Defendants registered domain names related to other famous marks or names at the same time, as discussed above. See Bulbs 4 E. Side, Inc. v. Ricks, 199 F.Supp.3d 1151, 1170 (S.D. Tex. 2016) ("[T]he fact that [the defendant] has offered other domain names for sale . . . suggests bad faith."); Web-adviso v. Trump, 927 F.Supp.2d 32, 45 (E.D.N.Y. 2013) ("Plaintiff's bad faith is further demonstrated by the fact that he owns almost two hundred domain names, many of which are obvious appropriations [of] well-known brands."), aff'd sub nom. Yung v. Trump, 648 F. App'x 24 (2d Cir. 2016).
Finally, the ninth factor weighs in favor of a finding of bad faith because the LEMOND mark is likely distinctive and famous and the GRAIL mark is likely distinctive. 15 U.S.C. § 1125(d)(1)(B)(i)(IX).
Overall, the Court finds LeMond has established a likelihood of success on the merits of his ACPA claim.
"Courts generally presume irreparable injury once a plaintiff in a trademark action has established that it is likely to succeed on the merits." Randazza v. Cox, 920 F.Supp.2d 1151, 1158 (D. Nev. 2013) (citing Abercrombie & Fitch Co. v. Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007)); see also Webadviso, 2009 WL 5177997, at *3; Vogster Entm't, LLC v. Mostovoy, No. 09-1036, 2009 WL 691215, at *6 (E.D.N.Y. 2009); Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F.Supp.2d 1088, 1097 (N.D. Cal. 2008). Additionally, there is some evidence of a threat of irreparable harm, including likelihood of customer confusion and loss of good will for LeMond's marks. See Webadviso, 2009 WL 5177997, at *4 (finding a likelihood of irreparable harm because consumers may arrive at the defendants' websites when seeking information about the plaintiffs and because the plaintiffs "may want to use the domain names for bona fide business matters"); see also Bogoni v. Gomez, 840 F.Supp.2d 694, 701-02 (S.D.N.Y. 2011) (finding irreparable harm, noting "the mere fact that both Domain Names are spelled
Defendants have admitted that they have no interest in maintaining ownership over the Domain Names and that they are willing to transfer whatever ownership interest they have over the Domain Names to LeMond. Thus, the Court finds that any harm Defendants would suffer in complying with the preliminary injunction is minimal and would be outweighed by the irreparable harm LeMond would suffer without an injunction.
The Court finds that the public interest favors an injunction in this case, due to the risk of public deception and broader public interests implicated by cybersquatting. See Coca-Cola Co., 382 F.3d at 789-90 ("The danger of consumer deception warrants some regulation of trademark usage and the public interest in free expression is adequately protected by leaving open ample alternative avenues of communication." (internal citation omitted)).
Based on the foregoing, and all the files, records, and proceedings herein,
1. The Court's prior order regarding LeMond's request for a temporary restraining order [Docket No. 21] is
2. LeMond's Motion for a Preliminary Injunction [Docket No. 5] is
3. The Clerk of Court is
15 U.S.C. § 1125(d)(1)(A).
