Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 1 of 23
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF ARIZONA
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`David Dent,
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`Plaintiff,
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`v.
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`Lotto Sport Italia SpA,
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`No. CV-17-00651-PHX-DMF
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`ORDER
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`Defendant.
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`Plaintiff filed his Complaint on March 3, 2017. (Doc. 1)1 Count One requests a
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`finding that Plaintiff’s registration and/or use of domain names <lottostore.com> and
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`<lottoworks.com> is not unlawful pursuant to a claim of reverse domain name hijacking
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`under the Anticybersquatting Consumer Protection Act (“ACPA”) provisions of the
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`Lanham Act in 15 U.S.C. §§ 1114(2)(D)(v)2. (Id. at 9-10) Count Two requests declaratory
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`relief that Plaintiff’s registration and/or use of the domain names <lottostore.com> and
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`1 Citations to the record indicate documents as displayed in the official electronic document
`filing system maintained by the District of Arizona under Case Number CV-17-00651-
`PHX-DMF.
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` 2
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` Count One originally alleged violation of both § 1114(2)(D)(iv) and § 1142(2)(D)(v).
`(Doc. 1 at 9-10) On February 12, 2018, District Judge Silver found that § 1114(2)(D)(iv)
`and § 1114(2)(D)(v) define separate violations, and that only § 1114(2)(D)(v) addresses
`reverse domain name hijacking. (Doc. 17 at 4) Judge Silver concluded that Plaintiff had
`failed to state a claim under § 1114(2)(D)(iv) for fraud in a domain dispute proceeding and
`dismissed any claim under that subsection. (Id.)
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 2 of 23
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`<lottoworks.com> does not violate Defendant’s rights under the Lanham Act. (Id. at 10-
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`12 (citing 15 U.S.C. § 1125(d)(1))) Count Three alleged tortious interference and was
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`dismissed in February 2018, with leave to amend if deficiencies in the claim were cured.
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`(Docs. 1, 17) Plaintiff did not file an amended complaint. Plaintiff and Defendant each
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`move for summary judgment on the remaining claims in Counts One and Two. (Docs. 83,
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`86)
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`The remaining claims in Plaintiff’s Complaint request: (1) a declaration “that
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`[P]laintiff’s registration, ownership and use of the Domain Names <lottostore.com> and
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`<lottoworks.com> is lawful and proper and does not infringe on any right the Defendant
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`may claim in the United States”; (2) his “costs and expenses, including costs under 15
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`U.S.C. § 1114(2)(D)(v) and reasonable attorneys’ fees”; and (3) “‘an award of statutory
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`damages in the amount of not less than $1,000 and not more than $100,000 per domain
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`name, as the court considers just’” pursuant to 15 U.S.C. § 1117(d). (Doc. 1 at 13) In
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`Plaintiff’s briefing associated with the parties’ cross-motions for summary judgment,
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`Plaintiff argues he is entitled to attorneys’ fees (Doc. 86 at 20, Doc. 91 at 18-19, Doc. 96
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`at 13), but does not urge entitlement to statutory damages under 15 U.S.C. § 1117(d).
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`Plaintiff David Dent’s and Defendant Lotto Sport Italia’s cross-motions for
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`summary judgment are fully briefed. (Docs. 83, 91, 95, 86, 89, 96) For the reasons that
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`follow, Plaintiff’s motion for summary judgment (Doc. 86) will be granted and
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`Defendant’s motion for summary judgment (Doc. 83) will be denied.
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`I.
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`BACKGROUND
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`Plaintiff has been engaged in the gaming industry for approximately twenty years.
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`(Doc. 87, Plaintiff’s Statement of Facts “PSOF” ¶¶ 3-16) Plaintiff’s experience includes
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`ownership, development, and management of online gaming companies based in Canada,
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`the Isle of Man, and Gibraltar. (Id. at ¶¶ 3-11) In 2015 and 2016, Plaintiff discussed with
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`associates a business model for entry into the secondary lottery industry. (Id. at ¶¶ 19-23)
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`In June 2016, Plaintiff began negotiations to purchase the domain name <lottostore.com>,
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`which Plaintiff avers was in support of his planned entry into the secondary lottery
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 3 of 23
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`industry. (Id. at ¶ 24) The original owner registered this domain name in January 2011.
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`(Docs. 87 at ¶ 100, 90 at ¶ 100) In September 2016, Plaintiff purchased the domain name
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`<lottostore.com>, which was transferred to his account with GoDaddy, an internet domain
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`name registrar. (Doc. 87 at ¶¶ 28-29) Plaintiff declares he planned to establish a holding
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`company, an online consumer lottery store using the domain name <lottostore.com> as its
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`website, and a business to act as a bookmaking entity which would “hold the license and
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`jackpot insurance, set odds/prices, and develop and manage the lottery products and
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`services offered at lottostore.com.” (Id. at ¶ 32)
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`In October 2016, Plaintiff began negotiations to acquire the additional domain name
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`<lottoworks.com> to be used by the bookmaking company he planned. (Id. at ¶¶ 33-34)
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`The original owner had registered this domain name in July 1998. (Docs. 87 at ¶ 99, 90 at
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`¶ 99) Plaintiff purchased the <lottoworks.com> domain name in December 2016. (Doc.
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`87 at ¶ 43) Shortly thereafter, Defendant filed a World Intellectual Property Organization
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`(“WIPO”) complaint against the use of domain name <lottoworks.com> causing GoDaddy
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`to lock this domain name. (Id. at ¶¶ 48-49)
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`Defendant Lotto currently manufactures, markets, and distributes athletic footwear,
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`sportswear, and sports accessories to over 110 countries, including the United States.
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`(Doc. 84, Defendant’s Statement of Facts “DSOF” at ¶¶ 2-3) Defendant was founded in
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`1973 and took its name from the final five letters of Caberlotto, the last name of the
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`company’s founder. (Id. at ¶ 1) Defendant asserts it has been world famous for decades,
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`having been endorsed by famous athletes in the 1980s and having sponsored teams and
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`athletes in professional tennis and national soccer clubs since the 1990s. (Id. at ¶ 4)
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`Defendant offers its products on the internet as well as in retail stores, and says it uses
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`<lottosport.com> as its primary domain name, which was registered in 1996. (Id. at ¶ 6)
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`Defendant has been using the LOTTO WORKS mark internationally for more than ten
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`years after it received registration for that mark in the European Union in August 2009.
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`(Id. at ¶¶ 7, 10) On March 6, 2018, Defendant obtained registration of the trademark
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`LOTTO WORKS with the United States Patent and Trademark Office (“USPTO”) for
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 4 of 23
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`materials related to eyeglasses and clothing (shoes are included in the clothing category).
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`(Id. at ¶ 9, Doc. 84-9 at 2)3 Defendant does not have trademark rights in the term “lotto”
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`for gambling or lottery. (Docs. 87 at ¶ 82, 90 at ¶ 82)
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`Shortly after Plaintiff purchased the disputed domain names in September and
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`December 2016, Defendant initiated arbitration with WIPO. (Doc. 84 at ¶¶ 11, 12, 20) In
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`a decision dated February 13, 2017, a WIPO sole panelist concluded that: (1) the
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`<lottoworks.com> domain name included the entire LOTTO WORKS mark so that the
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`domain name was confusingly similar to that mark; (2) the <lottostore.com> domain name
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`was also confusingly similar to Defendant’s LOTTO trademark because the domain name
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`incorporates “lotto” and only adds the generic4 word “store,” which “adds no distinctive
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`element”; (3) Plaintiff registered the disputed domain names “to trade off the goodwill of
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`[Defendant’s] mark, which does not provide [Plaintiff] with any rights or legitimate
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`interests”; and (4) the domain names were registered and used in bad faith. (Doc. 85-1 at
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`5-8) The WIPO panelist’s finding of bad faith was premised on the understanding that
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`Plaintiff had neglected to indicate he registered the domain names in 2016, not 1998,5 the
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`webpage for <lottoworks.com> displayed many references to shoes as well as links both
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`to Defendant’s and Defendant’s competitors’ websites, and because it was likely that
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`internet users would visit the <lottostore.com> website intending to find Defendant’s
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`online store. (Id. at 9) The WIPO panelist did not find that Defendant’s complaint was
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`3 The DSOF incorrectly states that Defendant’s application for the trademark of LOTTO
`WORKS was filed on October 26, 2018. (Doc. 84 at ¶ 9) In fact, Defendant applied for
`registration on October 27, 2016, and the trademark was registered by the USPTO on
`March 6, 2018. (Doc. 84-9 at 2-3)
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` 4
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` A term is “generic” when consumers understand the word to refer to a good itself rather
`than to a particular producer’s goods, that is, when the term “is identified with all such
`goods or services, regardless of their suppliers.” KP Permanent Make-Up, Inc. v. Lasting
`Impression I, Inc., 408 F.3d 596, 604 (9th Cir. 2005).
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` 5
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` However, as is discussed below, the Ninth Circuit in GoPets Ltd. v. Hise, 657 F.3d 1024,
`1032 (9th Cir. 2011) held that a re-registration of an existing domain name is not a
`“registration” for the purposes of the ACPA.
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 5 of 23
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`brought in bad faith or was primarily intended to harass the domain name holder and,
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`therefore, declined to grant Plaintiff’s request that WIPO find that Defendant committed
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`reverse domain name hijacking. (Id. at 9-10)
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`The parties now each cross move for summary judgment regarding Count One, in
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`which Plaintiff requests the Court to find Plaintiff’s registration and use of the disputed
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`domain names are not unlawful pursuant to a claim of reverse domain name hijacking
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`under the ACPA provisions of the Lanham Act in 15 U.S.C. §§ 1114(2)(D)(v); and Count
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`Two, in which Plaintiff requests a declaration that Plaintiff’s registration and use of the
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`disputed domains are not unlawful under the Lanham Act pursuant to 15 U.S.C. §
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`1125(d)(1). (Docs. 83, 91, 95, 86, 89, 96)
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`II.
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`STANDARD OF REVIEW
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`“The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a matter
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`of law.” Fed. R. Civ. P. 56(a). “One of the principal purposes of the summary judgment
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`rule is to isolate and dispose of factually unsupported claims or defenses.” Celotex Corp.
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`v. Catrett, 477 U.S. 317, 323-24 (1986). “[S]ubstantive law will identify which facts are
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`material. . . . Only disputes over facts that might affect the outcome of the suit under the
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`governing law will properly preclude the entry of summary judgment.” Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`“The proper question . . . is whether, viewing the facts in the non-moving party’s
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`favor, summary judgment for the moving party is appropriate.” Zetwick v. Cty. of Yolo,
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`850 F.3d 436, 441 (9th Cir. 2017) (citing Arizona ex rel. Horne v. Geo Group, Inc., 816
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`F.3d 1189, 1207 (9th Cir. 2016)). “[W]here evidence is genuinely disputed on a particular
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`issue—such as by conflicting testimony—that ‘issue is inappropriate for resolution on
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`summary judgment.’” Id. (quoting Direct Techs., LLC v. Elec. Arts, Inc., 836 F.3d 1059,
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`1067 (9th Cir. 2016)).
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`The movant bears the initial burden of proving the absence of a genuine issue of
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`material fact. Celotex, 477 U.S. at 323. For issues on which the movant would bear the
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 6 of 23
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`burden of proof at trial, the movant meets the initial summary judgment burden by
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`identifying the evidence foreclosing the possibility that a reasonable jury could find for the
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`non-movant. Adickes v. S. H. Kress & Co., 398 U.S. 144, 157-58 (1970). Where the non-
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`movant would bear the burden of proof at trial, the movant may carry its initial burden by
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`proving the absence of evidence to support the non-movant’s case. Celotex, 477 U.S. at
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`325. If the movant carries its initial burden, the non-movant must designate “significantly
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`probative” evidence capable of supporting a favorable verdict. Anderson, 477 U.S. at 249-
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`50.
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`In determining whether either or both of these burdens have been carried, “[t]he
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`evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn
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`in [that party’s] favor.” Id. at 255; see also Narayan v. EGL, Inc., 616 F.3d 895, 899 (9th
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`Cir. 2010) (explaining an inference is justifiable if it is rational or reasonable). “Credibility
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`determinations, the weighing of the evidence, and the drawing of legitimate inferences
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`from the facts are jury functions, not those of a judge . . . ruling on a motion for summary
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`judgment.” Anderson, 477 U.S. at 255.
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`III. THE PARTIES’ MOTIONS FOR SUMMARY JUDGMENT
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`A.
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`Plaintiff’s Motion for Summary Judgment (Doc. 86)
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`Plaintiff contends he is entitled to summary judgment on his reverse domain name
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`hijacking claim because his re-registration of the domain names is not treated as an initial
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`registration, he did not use the domain names, and even if he did register or use the domain
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`names after he purchased them, it was not with a bad faith intent to profit. (Doc. 86 at 11-
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`20) He also argues that his actions fall within the safe harbor provisions of the ACPA
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`because he had “reasonable grounds to believe that the use of the domain name was fair
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`use or otherwise lawful.” (Id. at 19-20, citing 15 U.S.C. § 1125(d)(1)(B)(ii)) Plaintiff
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`further requests a declaration that his registration and use of the disputed domains are not
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`unlawful under either the ACPA or other provisions of the Lanham Act. (Doc. 1 at 9-12,
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`Doc. 86 at 11 (citing § 1125(d)(1))) Additionally, Plaintiff advises the Court he will file a
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 7 of 23
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`motion for attorneys’ fees if he prevails on his motion for summary judgment. (Doc. 86 at
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`20, Doc. 91 at 19)
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`B.
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`Defendant’s Motion for Summary Judgment (Doc. 83)
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`Defendant moves for summary judgment on Plaintiff’s two claims. (Doc. 83 at 5)
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`Defendant argues that Plaintiff cannot show that his registration and use of the domain
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`names did not violate the ACPA and did not violate the greater Lanham Act because such
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`registration and use created a likelihood of confusion with Defendant’s trademarks. (Id. at
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`6) Defendant also asserts that Plaintiff is not entitled to any attorneys’ fees, and that
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`Defendant instead should be awarded its fees. (Id. at 22)
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`IV. CLAIM ONE – REVERSE DOMAIN NAME HIJACKING
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`A.
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`Purpose and Elements of the Claim
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`The Fourth Circuit Court of Appeals explained ACPA’s purpose and the policy
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`concerns addressed by a claim of reverse domain name hijacking under the ACPA, as
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`follows:
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`In 1999, Congress amended the Trademark Act of 1946 (the Lanham Act)
`with the Anticybersquatting Consumer Protection Act (ACPA), Pub. L. No.
`106–113, § 3001 et seq., 113 Stat. 1501A–545 (codified in scattered sections
`of 15 U.S.C.), principally for the purpose of protecting trademark owners
`against cyberpiracy:
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`The purpose of the bill is to protect consumers and American
`businesses, to promote the growth of online commerce, and to
`provide clarity in the law for trademark owners by prohibiting
`the bad-faith and abusive registration of distinctive marks as
`Internet domain names with the intent to profit from the
`goodwill associated with such marks—a practice commonly
`referred to as “cybersquatting.”
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`S. Rep. No. 106–140, at 4 (1999). Although the ACPA was enacted primarily
`to redress cyberpiracy or “cybersquatting,” it also provides limited liability
`for
`trademark
`infringement by
`registrars who participate
`in
`the
`administration of the registration, transfer, and cancellation of domain names
`pursuant to a “reasonable policy” that is consistent with the purposes of the
`trademark laws. See 15 U.S.C. § 1114(2)(D)(i)-(iii). And to balance the
`rights given to trademark owners against cybersquatters, the ACPA also
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 8 of 23
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`provides some protection to domain name registrants against “overreaching
`trademark owners.” S. Rep. No. 106–140, at 11; see also 15 U.S.C. §
`1114(2)(D)(iv)-(v). Thus, § 1114(2)(D)(v) authorizes a domain name
`registrant to sue trademark owners for “reverse domain name hijacking.”
`Under that reverse domain name hijacking provision, 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 under the Lanham Act. This section provides
`that 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).
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`Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 624-25
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`(4th Cir. 2003).
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`A claim of reverse domain name hijacking is based on the provisions of 15 U.S.C.
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`§ 1114(2)(D)(v), which provides:
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`(2) Notwithstanding any other provision of this chapter, the remedies given
`to the owner of a right infringed under this chapter or to a person bringing an
`action under section 1125(a) or (d) of this title shall be limited as follows:
`. . .
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`(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.
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`As District Judge Martone explained in a 2012 case with facts comparable to those
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`at issue here, to prevail on a claim of reverse domain name hijacking, a plaintiff:
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`must show (1) registration of a domain name; (2) that has been “suspended,
`disabled, or transferred under a policy implemented by a registrar as
`described in 15 U.S.C. § 1114(2)(D)(ii)(II);” (3) “that the owner of the mark
`that prompted the domain name to be suspended, disabled, or transferred has
`notice of the action;” and (4) “that [the plaintiff’s] registration or use of the
`domain name is not unlawful.” Ricks v. BMEzine.com, LLC, 727 F. Supp.
`2d 936, 959 (D. Nev. 2010) (citing Barcelona.com, Inc. v. Excelentisimo
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 9 of 23
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`Ayuntamiento De Barcelona, 330 F.3d 617, 625 & n. 1 (4th Cir. 2003)); see
`also 15 U.S.C. § 1114(2)(D)(v).
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`AIRFX.com v. AirFX LLC, No. CV 11-01064-PHX-FJM, 2012 WL 3638721, at *6 (D.
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`Ariz. Aug. 24, 2012).
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`Here, the parties’ dispute regarding the claim of reverse domain name hijacking
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`under the ACPA centers on the first and fourth elements listed by Judge Martone, that is:
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`(1) when the domain names were registered for purposes of the ACPA; and (2) whether
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`such registration or use of the domain name was lawful. Id. Plaintiff asserts he did not
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`unlawfully “register” the subject domain names, citing the holdings in GoPets Ltd. v. Hise,
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`657 F.3d 1024, 1032 (9th Cir. 2011) and AIRFX, 2012 WL 3638721, at *4. (Doc. 86 at 11-
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`14) He also contends that he has not used either of the disputed domains because they
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`remain locked as a result of this proceeding and Defendant’s Uniform Domain-Name
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`Dispute-Resolution Policy (“UDRP”) action adjudicated by WIPO, and because he has not
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`derived any income from the domains or attempted to sell the domains to anyone, including
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`Defendant. (Id. at 13) Plaintiff further argues that the evidence establishes no bad faith
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`registration or use by him because he merely “pursued a lottery business and purchased
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`names directly descriptive of that business[, n]othing more.” (Id. at 13-19) Additionally,
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`Plaintiff states that the ACPA safe harbor provision applies to his circumstances to exclude
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`a finding of bad faith. (Id. at 19-20, citing 15 U.S.C. § 1125(d)(1)(B)(ii))
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`Defendant urges that Plaintiff did in fact unlawfully register the two disputed
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`domain names because he did so in bad faith. (Doc. 83 at 18) Defendant further argues
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`that Plaintiff is unable to prove that his registration and use of the domain names were not
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`unlawful. (Id. at 16)
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`B. Whether Reference to “under this chapter” Refers to Only the
`ACPA or to the broader Lanham Act Regarding Reverse Domain
`Name Hijacking Statute
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`Before addressing the disputed elements of Plaintiff’s reverse domain name
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`hijacking claim, the Court will consider a foundational disagreement between the parties
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 10 of 23
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`on the law applicable to this claim. In its motion for summary judgment (Doc. 83 at 16-
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`18), Defendant recognizes a split among courts on the scope of language within section
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`1114(2)(D)(v) of the ACPA, which provides that
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`[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.
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`15 U.S.C. § 1114(2)(D)(v) (emphasis added). Defendant notes that the italicized phrase
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`“under this chapter” has been interpreted by courts as either referring to the Lanham Act
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`as a whole or limited specifically to the ACPA. (Doc. 83 at 16) Defendant concludes that
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`Congress must have intended that § 1114(2)(D)(v) would refer to Title 15, Chapter 22 of
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`the United States Code, entitled “Trademarks,” because if Congress’ intent was to limit the
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`phrase “under this chapter” to only the ACPA, “it would not have used such expansive
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`language.” (Id. at 16-17) Defendant further argues that if the phrase “under this chapter”
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`referred only to the ACPA, it would be “easier” to avoid the “hefty statutory damages if a
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`registrant violates the ACPA” than if the registrant had to prove it did not “violate the much
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`broader Lanham Act.” (Id. at 17) Defendant opines that this interpretation of §
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`1142(2)(D)(v) “would require a court to grant equitable relief, in a case under a sub-chapter
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`of the Lanham Act, to a party who violated the Lanham Act, as long as that party was
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`careful enough to avoid violating one smaller sub-section of the Lanham Act.” (Id.)
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`Plaintiff counters that the phrase “under this chapter” is best understood to refer
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`only to the ACPA. (Doc. 96 at 13 (citing Ricks v. BMEzine.com, LLC, 727 F.Supp.2d 936,
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`959-960 (D. Nev. 2010))) This Court concludes that Plaintiff espouses the better argument,
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`which is described below.
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`In Ricks v. BMEzine.com, LLC, the district judge concluded that the phrase “under
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`this chapter” means the ACPA, based on the legislative history and statutory construction
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`of the ACPA. Ricks, 727 F.Supp.2d at 959-60. The District of Nevada judge explained:
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 11 of 23
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`Although as codified the ACPA states the registrant must show its actions
`were not unlawful under “this chapter,” the actual enactment states that the
`registrant must show its actions were not unlawful under “this Act.” Pub. L.
`No. 106–113, 1501A–555, 113 Stat. 21. Courts have differed in describing
`whether the fourth requirement’s reference to “Act” as originally enacted
`refers to the ACPA or the Lanham Act as a whole. See Storey v. Cello
`Holdings, L.L.C., 347 F.3d 370, 382 n. 9 (2d Cir. 2003) (noting issue but
`declining to decide it); Barcelona.com, Inc., 330 F.3d at 628 n. 2 (stating, in
`dicta in a footnote, that “Act” is “defined to refer to the Trademark Act of
`1946 (the Lanham Act)”); Sallen v. Corinthians Licenciamentos LTDA, 273
`F.3d 14, 18 (1st Cir. 2001) (describing, without analysis, a reverse hijacking
`claim as one “for a declaration of nonviolation of the ACPA”).
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`As stated above, statutory construction begins the statute’s plain language.
`Cooper, 596 F.3d at 544. If the statutory language is “plain and
`unambiguous,” the Court's inquiry is at an end. Id. The Court considers the
`statutory language in “the context of the statute as a whole.” Andreiu v.
`Ashcroft, 253 F.3d 477, 480 (9th Cir. 2001).
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`The ACPA as enacted does not define what it means by reference to the term
`“Act.” However, it defines what it means when it is referring to the Lanham
`Act as a whole:
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`Any reference in this title to the Trademark Act of 1946 shall
`be a reference to the Act entitled “An Act to provide for the
`registration and protection of trademarks used in commerce, to
`carry out the provisions of certain international conventions,
`and for other purposes”, approved July 5, 1946 (15 U.S.C.
`1051 et seq.).
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`Pub. L. No. 106–113, 113 Stat. 1501, 1501A–548. The ACPA thus indicates
`that it is not referring to the entire Lanham Act unless it references the
`Trademark Act of 1946. Contextually, the ACPA uses the term “Act” to
`refer to the ACPA, not the Lanham Act in its entirety. For example, it states
`that it “shall apply to domain names registered on or after the date of the
`enactment of this Act.” Id.; see also Pub. L. No. 106–113, 113 Stat 1501,
`1501A–550 (giving Secretary of Commerce 180 days after enactment of
`“this Act” to conduct a study). Indeed, the ACPA refers to the “Act” and the
`“Trademark Act of 1946” within the same section, confirming that in using
`the term “Act,” the ACPA is referring to itself, not the Lanham Act as a
`whole:
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 12 of 23
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`Sections 3002(a), 3003, 3004, 3005, and 3008 of this title shall
`apply to all domain names registered before, on, or after the
`date of the enactment of this Act, except that damages under
`subsection (a) or (d) of section 35 of the Trademark Act of
`1946 (15 U.S.C. 1117), as amended by section 3003 of this
`title, shall not be available with respect to the registration,
`trafficking, or use of a domain name that occurs before the date
`of the enactment of this Act.
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`Pub. L. No. 106–113, 113 Stat. 1501, 1501A–552. The Court therefore
`concludes that to satisfy the ACPA’s requirement that a domain name
`registrant show that its conduct was not unlawful under “this Act,” it must
`show its conduct was not unlawful under only the ACPA, not the entire
`Lanham Act.
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`Id. This Court finds the foregoing analysis persuasive. Accordingly, the Court will
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`consider the issue of whether Plaintiff’s registration or use of the disputed domain names
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`is unlawful under the ACPA and not under the Lanham Act as a whole.
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`C.
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`Registration of the Disputed Domain Names
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`Plaintiff argues that his 2016 registration of the disputed domain names was not a
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`registration as defined for claims of reverse domain name hijacking or otherwise under the
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`ACPA. Rather, Plaintiff asserts he acquired the non-party original registrants’ 1998 and
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`2011 domain name registrations when Plaintiff bought the domain names in 2016.
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`Plaintiff’s argument relies on the Ninth Circuit’s decision in GoPets, 657 F.3d 1024.
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`In GoPets, defendant Edward Hise registered the domain name “gopets.com” in March
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`1999. GoPets, 657 F.3d at 1026. Hise developed a business plan directed at providing pet
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`owner services. Id. at 1027. In 2004, a Korean company named GoPets Ltd. was founded
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`and created a computer game called “GoPets.” Id. GoPets Ltd. applied to register the
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`service mark “GoPets” in the United States in September 2004, and the mark was registered
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`in November 2006. Id. After GoPets Ltd. attempted without success to purchase the
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`domain name from Hise, it filed a complaint with WIPO against Hise. Id. The WIPO
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`arbitrator found in favor of Hise, explaining the gopets.com domain name was
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`“confusingly similar to GoPets Ltd.’s service mark” and that “WIPO rules only
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 13 of 23
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`compel[led] the transfer or a disputed domain name if the name was initially registered in
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`bad faith.” Id. at 1027-28. WIPO concluded that the initial registration could not have
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`been in bad faith because it occurred five years before GoPets Ltd. was founded. Id. at
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`1028. After the WIPO decision, Hise transferred the registration of the gopets.com domain
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`name to a corporation named Digital Overture, which Edward Hise owned with his brother.
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`Id.
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`Among other issues, the Ninth Circuit addressed the question of whether the transfer
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`of the domain name gopets.com from Hise to Digital Overture counted as “registration”
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`pursuant to the ACPA. The Ninth Circuit concluded that, “in light of traditional property
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`law,” there was “no basis in ACPA to conclude that a right that belongs to an initial
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`registrant of a currently registered domain name is lost when that name is transferred to
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`another owner,” Id. at 1031, and held that:
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`Digital Overture’s re-registration of gopets.com was not a registration within
`the meaning of § 1125(d)(1). Because Edward Hise registered the domain
`name gopets.com in 1999, long before GoPets Ltd. registered its service
`mark, Digital Overture’s re-registration and continued ownership of
`gopets.com does not violate § 1125(d)(1).
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`Id. at 1032. This holding has been applied in favor of Plaintiff’s position in this action.
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`In AIRFX.com, District Judge Martone addressed a case in which a non-party
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`registered the domain name “airfx.com” in 2003. AIRFX.com, 2012 WL 3638721 at *2.
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`The parent company of the defendant AIRFX LLC filed a trademark application for
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`“AIRFX” in 2005, identifying June 2005 as the date of first use in commerce. Id. The
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`defendant’s parent company assigned the trademark registration to the defendant in 2011.
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`Id. The defendant used the trademark “in connection with shock absorbers and suspension
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`systems for motorcycles, bicycles, automobiles, and powered vehicles.” Id. In 2007, the
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`plaintiff purchased the domain name “airfx.com” from the non-party and decided to use
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`airfx.com and the brand “AIRFX” in his wind tunnel business. Id.
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`Similar to the case before this Court, (1) the AIRFX.com plaintiff had “not posted
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`any content at the www.airfx.com domain name, and ha[d] not created a website for
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`Case 2:17-cv-00651-DMF Document 97 Filed 03/11/20 Page 14 of 23
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`airfx.com”; (2) the domain name was parked at a “splash page”6 provided by GoDaddy,
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`the domain name registrar; (3) the splash page included third-party advertisements; and (4)
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`the