`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-----------------------------------------x
`MCALLISTER OLIVARIUS,
`
`17 Civ. 9941
`
`(JSR)
`
`OPINION AND ORDER
`
`Plaintiff,
`
`-v-
`
`MARK MYERS MERMEL,
`
`Defendant.
`
`JED S. RAKOFF, U.S.D.J.
`
`This case is the unfortunate devolution of a dispute between
`
`the McAllister Olivarius law firm and its former client Mark Myers
`
`Mermel regarding legal fees. In its single-count Complaint,
`
`plaintiff McAllister Olivarius alleges that defendant Mermel
`
`registered the domain name mcallisterolivariustruth.com in order to
`
`divert potential clients and others seeking information about the
`
`firm and, having done so, to induce plaintiff to reduce the amount
`
`it was seeking from him in unpaid legal fees by threatening to
`
`publish allegedly damaging documents about plaintiff on the website.
`
`Defendant thereby, in plaintiff's view, violated the
`
`Anticybersquatting Consumer Protection Act. Before the Court is
`
`defendant's motion to dismiss for lack of jurisdiction under Federal
`
`Rule of Civil Procedure 12(b) (1) and for failure to state a claim
`
`under Federal Rule of Civil Procedure 12(b) (6). ECF No. 8.
`
`BACKGROUND
`
`1
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 2 of 27
`
`The pertinent allegations of the Complaint are as follows:
`
`Plaintiff is a general partnership that operates as a law firm
`
`both in the United Kingdom and the United States. Complaint
`
`("Compl.") at p.l <JI 1, ECF No. l. Dr. Ann Olivarius, together with
`
`Dr. Jef McAllister, founded McAllister Olivarius in 1996 as a
`
`general practice law firm. See id. at p.2 <JI 1. The firm specializes
`
`in cases involving gender discrimination and sexual harassment in
`
`employment and educational settings. Id.
`
`Since its founding, plaintiff has regularly, continuously, and
`
`systematically used the name "McAllister Olivarius" in connection
`
`with the marketing and promotion of its legal services throughout
`
`the United States and abroad. See id. at p.4 <JI 6. Among other
`
`things, McAllister Olivarius promotes itself through articles about
`
`its cases published in media outlets and online via its website and
`
`social media presence. Id. The firm's cases also have generated
`
`articles in multiple publications, including the New York Times, the
`
`Los Angeles Times, Huff ington Post, and the Chronicle of Higher
`
`Education. Id. Plaintiff's website, mcolaw.com, has attracted more
`
`than 78,000 visitors worldwide since January 1, 2014. Over 800,000
`
`people have viewed information distributed by Olivarius via Twitter
`
`in October and November 2017. Id.
`
`Defendant Mark Myers Mermel is a real estate developer and a
`
`former candidate for Lieutenant Governor of New York. Id. at p.2 <JI
`
`2. Mermel has earned postsecondary degrees from the University of
`
`Vermont, Columbia University, and the Divinity School at Yale
`
`2
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 3 of 27
`
`• r
`
`University. Id. at p.2 ~ 2. Mermel retained plaintiff as counsel on
`
`or about May 15, 2012 in connection with a dispute with Yale. Id. at
`
`p.5 ~ 8. The terms of plaintiff's representation in connection with
`
`this dispute were memorialized in a written engagement letter, which
`
`was signed by Mermel on May 15, 2012 (the "Engagement Letter"). Id.
`
`at p.5 ~ 9; see also id. at Ex. A. The Engagement Letter contains a
`
`provision that "[a]ny dispute or legal issue arising from these
`
`terms of business or the engagement letter will be determined by the
`
`laws of the State of Connecticut, without reference to the
`
`principles of conflicts of law, and considered exclusively by
`
`Connecticut and US courts." Id. at Ex. A, Terms of Business ~ 10.
`
`Between May 2012 and August 2014, plaintiff sent eight invoices
`
`to Mermel, each setting forth the fees owed for its legal
`
`representation of Mermel and detailing the time spent and work
`
`performed. Id. at p.6 ~ 12. Defendant refused, and continues to
`
`refuse, to pay plaintiff as required by the terms of the Engagement
`
`Letter. Id. at p.6 ~ 11. Accordingly, on June 20, 2016, plaintiff
`
`filed a civil action against defendant for breach of contract and
`
`quantum meruit in the Superior Court for New Haven County,
`
`Connecticut. Id. at p.6 ~ 13.
`
`At some point, Mermel registered the domain name
`
`mcallisterolivariustruth.com. Id. at p.6 ~~ 14-15. The website bore
`
`the title "McAllister Olivarius TRUTH" in large letters on every
`
`page. Id. at Ex. B. It had a home page, as well as pages named
`
`"Practice Areas," "Attorneys", and "Contact." Id. The home page
`-,-
`
`3
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 4 of 27
`
`displayed a pict.ure of balance scale and the text "HI, MR JEF!" Id.
`
`The "Practice Areas" page was blank. Id. The "Attorneys" page listed
`
`two lawyers with no connection to McAllister Olivarius. See id.; see
`- - - -
`
`also id. at p.6 ~ 16. This page also displayed the following text:
`
`"When you experience an injury, everything can change - we know that
`
`at Wilson & Doyle. With more than a century of combined experience
`
`litigating on our clients' behalf, you can focus on recovering,
`
`instead of finding yourself overwhelmed and worried about your court
`
`case." Id. at Ex. B. The Contact page included a form for visitors
`
`to send a message. Id. at p.6 ~ 16.
`
`On July 1, 2016, in response to one of plaintiff's written
`
`demands for payment, Mermel threatened to populate the website with
`
`select documents that, Mermel claimed, "would cast Plaintiff and its
`
`principals in a negative light with 'other potential clients' and
`
`'cripple if not close' its business." Id. at p.7 ~ 17. Mermel then
`
`offered to forego this plan if "both parties would simply 'walk
`
`away' from the unpaid balance, or, alternatively, plaintiff
`
`[substantially] reduced its balance." Id. at p.7 ~ 18.
`
`On June 27, 2017, McAllister Olivarius sought leave to amend
`
`its original complaint in New Haven County Superior Court to add an
`
`anticybersquatting claim. Id. at p.7 ~ 19. Mermel subsequently
`
`removed the website from the internet. Id. at p.7 ~ 20. On July 24,
`
`2017, plaintiff sought leave to file a second amended complaint,
`
`adding an intentional spoliation of evidence claim. Id. at p.7 ~ 21.
`
`Mermel opposed. Id. at p.7 ~ 22. The New Haven County Superior Court
`
`4
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 5 of 27
`
`denied plaintiff's request on September 25, 2017, ruling that
`
`plaintiff's new claims were insufficiently related to its debt
`
`collection claims to warrant joinder in that action. Id. at p.7 ~
`
`22. Plaintiff brought the instant action on December 20, 2017. See
`
`ECF No. 1.
`
`DISCUSSION
`
`Defendant, prose, now moves to dismiss plaintiff's complaint
`
`for lack of subject matter jurisdiction and failure to state a
`
`claim. See ECF No. 8. When, as here, a party proceeds pro se, a
`
`court must liberally construe the party's briefs, "reading such
`
`submissions 'to raise the strongest arguments they suggest.'" Bertin
`
`v. United States, 478 F.3d 489, 491 (2d Cir. 2007)
`
`(quoting Burgos
`
`v. Hopkins, 14 F.3d 787, 790 (2d Cir. 1994)). "The policy of
`
`liberally construing pro se submissions is driven by the
`
`understanding that '[i]mplicit in the right to self-representation
`
`is an obligation on the part of the court to make reasonable
`
`allowances to protect pro se litigants from inadvertent forfeiture
`
`of important rights because of their lack of legal training.'" Abbas
`
`v. Dixon, 480 F.3d 636, 639 (2d Cir. 2007). Although one suspects
`
`that these principles were formulated for the benefit of persons
`
`less educated than Mr. Mermel, they nevertheless fully apply here.
`
`I.
`
`Subject Matter Jurisdiction
`
`A motion to dismiss for lack of subject matter jurisdiction
`
`under Federal Rule of Civil Procedure 12(b) (1) can be granted "when
`
`5
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 6 of 27
`
`the court lacks the statutory or constitutional power to adjudicate
`
`the case." Nowak v. Ironworkers Local 6 Pension Fund, 81 F.3d 1182,
`
`1187 (2d Cir. 1996). In reviewing a 12(b) (1) motion, the Court must
`
`"accept as true all factual allegations in the complaint and draw
`
`all reasonable inferences in the Plaintiff's favor." See Merritt v.
`
`Shuttle, Inc., 245 F.3d 182, 186 (2d Cir. 2001).
`
`Defendant's arguments for dismissing under Rule 12(b) (1), even
`
`generously construed, are entirely without merit. Mermel first
`
`argues that this action is procedurally improper because McAllister
`
`Olivarius is the plaintiff and only defendants are entitled to
`
`removal under 28 U.S.C. §§ 1441. See 28 U.S.C. § 1441(a)
`
`("[A]ny
`
`civil action brought in a State court of which the district courts
`
`of the United States have original jurisdiction, may be removed by
`
`the defendant or defendants, to the district court of the United
`
`States for the district and division embracing the place where such
`
`action is pending."). However, this case does not involve removal.
`
`Granted, plaintiff sought to bring this claim in state court, but
`
`its request for leave to amend its complaint to include this
`
`cybersquatting claim was denied by the Connecticut state court. See
`
`Compl. at p.7 ~ 22. Plaintiff thereafter initiated the instant
`
`action in this Court.
`
`Next, Mermel seems to argue that this case does not present a
`
`federal question because the "original complaint" -
`
`that is, the
`
`Connecticut complaint - alleged only breach of contract and quantum
`
`meruit. See Memorandum of Law in Support of Defendant Mark Myers
`
`6
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 7 of 27
`
`Mermel Motion to Dismiss the Complaint ("Def. Mem.") at 17, ECF No.
`
`9. This argument, like the previous one, misconstrues the
`
`relationship between this action and the Connecticut action.
`
`Although there may be a factual nexus between the two lawsuits, they
`
`are procedurally distinct. The cause of action that plaintiff has
`
`pled before this Court is based solely on a federal statute, the
`
`AntiCybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). The
`
`case therefore presents a federal question. See 28 U.S.C. § 1331
`
`("The district courts shall have original jurisdiction of all civil
`
`actions arising under the Constitution, laws, or treaties of the
`
`United States.").
`
`Mermel's final argument relating to jurisdiction depends on a
`
`choice of law provision in the Engagement Letter stipulating that
`
`"(a]ny dispute or legal issue arising from these terms of business
`
`or the engagement letter will be determined by the laws of the State
`
`of Connecticut, without reference to the principles of conflicts of
`
`laws of the State of Connecticut." Compl. at Ex. A. As an initial
`
`matter, plaintiff's anticybersquatting claim does not "aris[e]" from
`
`the terms of the parties' attorney-client relationship or the
`
`Engagement Letter. Therefore, the Engagement Letter's choice of law
`
`provision does not cover this dispute. Moreover, even if the clause
`
`were applicable here, it would govern only which state's law this
`
`Court must apply and therefore would not bar this Court's exercise
`
`of jurisdiction. See Executive Telecard, Ltd. v. Engelman, 1996 WL
`
`19196 7, at * 3
`
`( S . D. N. Y. Apr. 19, 19 9 6)
`
`7
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 8 of 27
`
`II. Failure to State a Claim
`
`Mermel's motion to dismiss under Federal Rule of Civil
`
`Procedure 12(b) (6) presents a closer question. To survive a motion
`
`to dismiss for failure to state a claim under Rule 12(b) (6), "a
`
`complaint must contain sufficient factual matter, accepted as true,
`
`to 'state a claim to relief that is plausible on its face.'"
`
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
`
`(quoting Bell Atl. Corp.
`
`v. Twombly, 550 U.S. 544, 570 (2007)). Mere conclusory statements in
`
`a complaint and "formulaic recitation[s] of the elements of a cause
`
`of action" are not sufficient. Twombly, 550 U.S. at 555.
`
`In considering a Rule 12(b) (6) motion, while the court
`
`generally looks to "the allegations on the face of the complaint,"
`
`"the court may permissibly consider
`
`[d]ocuments that are
`
`attached to the complaint or incorporated in it by reference," which
`
`"are deemed part of the pleading." Roth v. Jennings, 489 F.3d 499,
`
`509 (2d Cir. 2007).
`
`The Anticybersquatting Consumer Protection Act ("ACPA"),
`
`enacted in 1999, is intended "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 'cybersquatt~ng.'"
`
`S. Rep. No. 106-140, at 4; see also Sporty's Farm L.L.C. v.
`
`Sportsman's Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000)
`
`8
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 9 of 27
`
`("Cybersquatting involves the registration of domain names of well-
`
`known trademarks by non-trademark holders who then try to sell the
`
`names back to the trademark owners."). The ACPA provides:
`
`A person shall be liable in a civil action by the
`owner of a mark, including a personal name which
`is protected as a mark under this section, if,
`without regard to the goods or services of the
`parties, that person-
`
`( i) has a bad faith intent to profit from that
`mark, including a personal name which is protected
`as a mark under this section; and
`
`(ii) registers, traffics in, or uses a domain name
`that-
`
`(I) in the case of a mark that is distinctive
`at the time of registration of the domain
`name, is identical or confusingly similar to
`that mark;
`
`famous mark that is
`in the case of a
`(I I)
`famous at the time of registration of the
`domain name,
`is
`identical or confusingly
`similar to or dilutive of that mark;
`
`15 U.S.C. § 1125(d) (1) (A).
`
`Therefore, "[t]o successfully assert a claim under the ACPA, a
`
`plaintiff must demonstrate that (1) its marks were distinctive at
`
`the time the domain name was registered; (2) the infringing domain
`
`names complained of are identical to or confusingly similar to
`
`plaintiff's mark; and (3) the infringer has a bad faith intent to
`
`profit from that mark." Webadviso v. Bank of Am. Corp., 448 F. App'x
`
`95, 97
`
`(2d Cir. 2011). For the reasons provided below, the Court
`
`finds that plaintiff has plausibly alleged that its mark is
`
`distinctive, that defendant's domain name was confusingly similar to
`
`9
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 10 of 27
`
`its mark and that, on the facts pled, plaintiff adequately has
`
`alleged that defendant had a bad faith intent to profit from the
`
`mark.
`
`a. Whether Plaintiff's Mark is Distinctive
`
`Mermel contends that the "McAllister Olivarius" mark is not
`
`distinctive, arguing first that the firm's mark is "MCO Law," not
`
`McAllister Olivarius, and second, even if the firm's mark were
`
`McAllister Olivarius, that mark is not distinctive.
`
`A trademark "includes any word, name, symbol, or device, or any
`
`combination thereof" used "to identify and distinguish
`
`. goods,
`
`including a unique product, from those manufactured or sold by
`
`others and to indicate the source of the goods, even if that source
`
`is unknown. 15 U.S.C. § 1127. A service mark similarly identifies
`
`and distinguishes the source of one's services from those provided
`
`by others. Id.
`
`As an initial matter, plaintiff has pled facts sufficient to
`
`give rise to a reasonable inference that it uses McAllister
`
`Olivarius to identify itself. Specifically, plaintiff alleges that
`
`it has "regularly, continuously, and systematically" used that name
`
`since 1996. Id. at p.4 ~ 6. That the firm also uses the name "MCO
`
`Law" does not entail that "McAllister Olivarius" is not entitled to
`
`trademark protection, since commercial businesses can, and often do,
`
`hold multiple valid and enforceable trademarks. See, e.g., We Media
`
`v. General Elec. Co., 218 F. Supp. 2d 463, 465-66 (S.D.N.Y. 2002)
`
`10
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 11 of 27
`
`("WEM holds several trademarks beginning with the pronoun 'we',
`
`including WE and WEMEDIA.").
`
`The level of protection afforded a mark depends on where it
`
`falls along a spectrum of "five general categories of
`
`distinctiveness: 1) generic; 2) descriptive; 3) suggestive; 4)
`
`arbitrary; and 5) fanciful." Genesee Brewing Co., Inc. v. Stroh
`
`Brewing Co., 124 F.3d 137, 143 (2d Cir. 1997). A generic mark is not
`
`distinctive and never entitled to protection. See Star Indus., Inc.
`
`v. Bacardi & Co., 412 F.3d 373, 385 (2d Cir. 2005). A descriptive
`
`mark is not inherently distinctive, but is protectable if it has
`
`acquired secondary meaning. Id. Suggestive marks, along with
`
`arbitrary or fanciful marks, are inherently distinctive. Id.
`
`Here, to the extent that the McAllister Olivarius mark warrants
`
`any protection, it is only as a descriptive mark. Marks that are
`
`"primarily merely surnames" constitute a specific subcategory of
`
`descriptive marks, in that they describe the fact that the named
`
`individual is affiliated with the firm. Therefore, "McAllister
`
`Olivarius," as a descriptive mark, is protectable only if it has
`
`acquired secondary meaning. See Pirone v. MacMillan, Inc., 894 F.2d
`
`579, 583 (2d Cir. 1990)
`
`(marks which are "primarily merely a
`
`surname" are unregistrable unless they have acquired secondary
`
`meaning) .
`
`Secondary meaning can attach to a descriptive mark where "'the
`
`name and the business have become synonymous in the mind of the
`
`public, submerging the primary meaning of the term in favor of its
`
`11
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 12 of 27
`
`meaning as a word identifying that business.'" Time, Inc. v.
`
`Petersen Pub. Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999)
`
`(quoting
`
`Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 390 (2d Cir.
`
`1995)). "[T]he relevant purchasing public is not the population at
`
`large, but the prospective purchasers of the product" or service.
`
`Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337,
`
`344 (2d Cir. 1999) (citing Blisscraft of Hollywood v. United Platics
`
`Co., 294 F.2d 694, 699 (2d Cir. 1961)).
`
`Courts in this circuit analyze six factors to determine whether
`
`a mark has acquired secondary meaning: "'(1) advertising
`
`expenditures,
`
`(2) consumer studies linking the mark to a source,
`
`(3)
`
`unsolicited media coverage of the product,
`
`( 4) sales success,
`
`( 5)
`
`attempts to plagiarize the mark, and,
`
`(6) length and exclusivity of
`
`the mark's use.'" Christian Louboutin S.A. v. Yves Saint Laurent Arn.
`
`Holdings, Inc., 696 F.3d 206, 226 (2d Cir.2012) (quoting Genesee
`
`Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d
`
`Cir. 1997)). "To establish secondary meaning, a party does not have
`
`to prove every factor and no single factor is dispositive."
`
`A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, LLC, 131 F. Supp. 3d
`
`196, 212 (S.D.N. Y. 2015) (internal citations omitted).
`
`"[D]etermining whether a descriptive mark has acquired
`
`secondary meaning is a fact-intensive inquiry" that is "ill-suited
`
`for resolution at the motion to dismiss stage." Id. at 212-13
`
`(internal citations and quotations omitted). "Accordingly, the
`
`question of whether a descriptive mark has acquired the secondary
`
`12
`
`
`
`,.
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 13 of 27
`
`meaning necessary to be distinctive generally should not .
`
`. be
`
`resolved on a motion to dismiss." Id. (collecting cases). Here,
`
`McAllister Olivarius alleges that it has used its mark exclusively
`
`for over two decades, including engaging in substantial advertising
`
`and marketing of its legal services under the McAllister Olivarius
`
`brand through traditional media and the internet. Compl. at p.4 ~ 6,
`
`p.8 ~ 26. Plaintiff additionally alleges that the firm has received
`
`significant media coverage as a result of its work and reputation.
`
`Id. at p.4 ~ 6. Finally, the Complaint includes an allegation that
`
`this advertising and press has generated substantial traffic to the
`
`Olivarius social media account. Id. Construed in the light most
`
`favorable to plaintiff, these allegations give rise to a reasonable
`
`possibility that the McAllister Olivarius mark has acquired
`
`secondary meaning and, accordingly, is protectable. See, e.g., PGC
`
`Prop. v. Wainscott/Sagaponack Prop. Owners, Inc., 250 F. Supp. 2d
`
`136, 143 (E.D.N.Y. 2003)
`
`(denying motion to dismiss where plaintiffs
`
`claimed that they had advertised on the radio and the Internet, and
`
`in newspapers and magazines, using their alleged mark).
`
`b.Whether Defendant's Domain Name is Identical or Confusingly
`Similar
`
`Mermel also disputes that the mcallisterolivariustruth.com
`
`domain name is identical or confusingly similar to the McAllister
`
`Olivarius mark. Pl. Mem. at 22. "In the cybersquatting context,
`
`'confusingly similar' must simply mean that the plaintiff's mark and
`
`the defendant's domain name are so similar in sight, sound, or
`
`13
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 14 of 27
`
`meaning that they could be confused." J. Thomas McCarthy, McCarthy
`
`on Trademarks and Unfair Competition § 25:78 (4th Ed. 2002). Under
`
`the ACPA, whether a domain name is confusingly similar to a
`
`trademark is to be evaluated "without regard to the goods or
`
`services of [the] parties." 15 U.S.C. § 1125(d) (1) (A); see also
`
`Sporty's Farm L.L.C., 202 F.3d at 498. Moreover, "[t]he fact that
`
`confusion about a website's source or sponsorship could be resolved
`
`by visiting the website is not relevant to whether the domain name
`
`itself is identical or confusingly similar to a plaintiff's mark."
`
`Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. 2004); see also
`
`Sporty's Farm L.L.C., 202 F.3d at 497-98 (concluding that
`
`sportys.com was confusingly similar to plaintiff aviation catalog
`
`company's "Sporty's" mark even though defendant's website advertised
`
`a Christmas tree farm) .
`
`Mermel first suggests that the relevant comparison is between
`
`his domain name and the main website plaintiff uses for its
`
`business: mcolaw.com. 1 This is incorrect. The relevant inquiry is not
`
`whether a defendant's domain name is identical or confusingly
`
`similar to any domain names that a plaintiff uses or may use.
`
`1 Mermel also identifies a handful of other websites that he alleges
`plaintiff uses to offer its legal services. Since these websites are
`not included in the Complaint - and defendant has not asked the
`Court to take judicial notice of them -
`the Court may not consider
`them on this motion to dismiss. See DiFolco v. MSNBC Cable L.L.C.,
`622 F.3d 104, 111 (2d Cir. 2010) (in considering a motion to dismiss
`pursuant to Rule 12(b) (6), a court can consider only the facts
`alleged in the complaint, documents attached to the complaint as
`exhibits, and documents incorporated by reference in the complaint).
`
`14
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 15 of 27
`
`Rather, the ACPA creates liability for a person who registers,
`
`traffics in, or uses a domain name that "in the case of a mark that
`
`is distinctive .
`
`is identical or confusingly similar to that
`
`mark." 15 U.S.C. § 1125(d) (1) (A) (ii) (emphasis added); see also
`
`Coca-Cola, 382 F.3d at 783 ("It is the challenged domain name and
`
`the plaintiff's mark which are to be compared."). Therefore, the
`
`relevant comparison is between the McAllister Olivarius mark and
`
`mcallisterolivariustruth.com.
`
`Mermel contends that his domain name is not confusingly similar
`
`to McAllister Olivarius because it is clear from the domain name
`
`that it is a site for critical commentary. As Mermel explains,
`
`numerous cases have found that attaching the word "sucks" to a
`
`trademark renders the resulting domain name not confusingly similar
`
`to the mark. See Taubman Co. v. Webfeats, 319 F.3d 770, 777 (6th
`
`Cir. 2003); Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d
`
`528, 535 (E.D. Va. 2000); Bally Total Fitness Holding Corp. v.
`
`Faber, 29 F. Supp. 2d 1161, 1164 (C.D. Cal. 1998); cf. Faegre &
`
`Benson, LLP v. Purdy, 447 F. Supp. 2d 1008, 1020 (D. Minn. 2006)
`
`(permanently enjoining defendant from registering or using any
`
`domain name that both incorporates plaintiff's mark and "does not
`
`alert the Internet user to the protest or critical commentary nature
`
`of the attached web site within the language of the domain name
`
`itself"). These courts have explained that the word "'[s]ucks' has
`
`entered the vernacular as a word loaded with criticism," Bally Total
`
`15
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 16 of 27
`
`Fitness Holding Corp., 319 F.3d at 777, and therefore its
`
`combination with a mark eliminates any risk of consumer confusion.
`
`Plaintiff, for its part, points to cases finding that the
`
`addition of "generic words" does not create sufficient dissimilarity
`
`to avoid liability under the ACPA. For example, the Eighth Circuit
`
`has held domain names adding "my," "says," or "drink" to the
`
`"Washington Post," "McDonalds," and "Coke" were confusingly similar.
`
`See Coca-Cola, 382 F.3d at 784. A court in this District has stated
`
`that the similarities between barbiesbeachwear.com and
`
`barbiesclothing.com to the BARBIE trademark were "apparent on their
`
`face." Mattel, Inc. v. Adventure Apparel, No. 00-CV-1035140, 2001 WL
`
`1035140, at *2 (S.D.N.Y. Sept. 7, 2001). Another has held that that
`
`the domain names trumpbeijing, trumpindia, trumpmumbai, and
`
`trumpabudhabi are confusingly similar to the Trump mark because
`
`"names of places .
`
`are similar to the types of corrunon words that
`
`other courts have held do not distinguish a domain name from a
`
`mark." Web-adviso v. Trump, 927 F. Supp. 2d 32, 40-41 (E.D.N.Y.
`
`2013) . 2
`
`2 See also Omega S.A. v. Omega Engineering, Inc., 228 F. Supp. 2d
`112, 127
`(D. Conn. 2002)
`(domain names that added the "generic
`terms" "time" and "watch" to the trademark Omega were confusingly
`similar); Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F.
`Supp. 2d 567, 578 (E.D. Pa. 2002)
`(domain name louisvuitton(cid:173)
`replicas.com constitutes an identical or confusingly similar use of
`the Louis Vuitton mark); Shields v. Zuccarini, 254 F.3d 476, 483 (3d
`Cir. 2001) (finding "strong similarity" between joecartoon.com and
`joescartoon.com, joecarton.com, joescartons.com, joescartoons.com,
`and cartoonjoe.com); Volvo Trademark Holding AB v. Volvospares.com,
`703 F. Supp. 2d 563, 568 (E.D. Va. 2010)
`(volvospares.com is
`confusingly similar to VOLVO) .
`
`16
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 17 of 27
`
`On its face, the word "truth," added to the name
`
`"mcallisterolivarius," is not (unlike "sucks") so self-evidently
`
`intended as criticism as to warrant dismissal on a motion to
`
`dismiss, where every reasonable inference must be drawn in favor of
`
`plaintiff. See Sunlight Saunas, Inc. v. Sundance Sauna, Inc., 427 F.
`
`Supp. 2d 1032, 1064 (D. Kan. 2006)
`
`(concluding the same about the
`
`term "exposed," reasoning that "[a]lthough the term 'exposed' may
`
`involve critical treatment of a subject, it may not immediately
`
`alert an Internet user that he or she is entering a
`
`'gripe site.'").
`
`The Court therefore cannot conclude, at the motion to dismiss stage,
`
`that the use of the word "truth" sufficiently distinguishes
`
`defendant's domain name from plaintiff's mark.3
`
`In short, construing the allegations of the Complaint in the
`
`light most favorable to the plaintiff, it is plausible that
`
`mcallisterolivariustruth.com is confusingly similar to the
`
`McAllister Olivarius mark.
`
`c. Whether Defendant Had a Bad Faith Intent to Profit
`
`Finally, Mermel argues that he did not act with "bad faith intent
`
`to profit" from the mark. The Second Circuit has "expressly note[d]
`
`3 Plaintiff additionally argues that the combination of the word
`"truth" with the name of a law firm would in fact tend to magnify
`the potential for public confusion with plaintiff's mark on account
`of the alleged association, in the mind of the public, between the
`legal profession and the pursuit of truth. Opp. at 12. While this
`Court is skeptical that truth is to the legal profession as a rabbit
`is to a fox, this is, at best, a fact-laden question not suitable
`for resolution on a motion to dismiss.
`
`17
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 18 of 27
`
`that
`
`'bad faith intent to profit' are terms of art in the ACPA and
`
`hence should not necessarily be equated with
`
`'bad faith'
`
`in other
`
`contexts." Sporty's Farm, 202 F.3d at 499 n.13. The ACPA lists nine
`
`factors that courts can look to as evidence of a bad faith intent to
`
`profit, 15 U.S.C. § 1125 (d) (1) (B). These factors are:
`
`(I) the trademark or other intellectual property
`rights of the person
`[who registered the domain
`name], 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;
`
`the person's intent to divert consumers from
`(V)
`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;
`
`the person's offer to transfer, sell, or
`(VI)
`otherwise assign the domain name to the mark owner
`or any third party for financial gain without
`having used, or having an intent to use, the domain
`name in the bona fide offering of any goods or
`services, or the person's prior conduct indicating
`a pattern of such conduct;
`
`the person's provision of material and
`(VII)
`misleading false contact information when applying
`for
`the registration of
`the domain name,
`the
`person's intentional failure to maintain accurate
`contact information, or the person's prior conduct
`indicating a pattern of such conduct;
`
`18
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 19 of 27
`
`the person's registration or acquisition
`(VIII)
`of multiple domain names which the person knows
`are identical or confusingly similar to marks of
`others
`that are distinctive at
`the
`time of
`registration of such domain names, or dilutive of
`famous marks of others that are famous at the time
`of registration of such domain names, without
`regard to the goods or services of the parties;
`and
`
`(IX) the extent to which the mark incorporated in
`the person's domain name registration is or is not
`distinctive and
`famous within
`the meaning of
`subsection (c) .
`
`15 U.S.C. § 1125(d)(l)(B). According to a leading treatise, "[t]he
`
`first four factors suggest circumstances tending to indicate an
`
`absence of bad faith intent to profit from the goodwill of the mark,
`
`the next four tend to indicate that such bad faith does exist and
`
`the last factor points in either direction, depending on the degree
`
`of distinctiveness and fame of the mark." 4 McCarthy on Trademarks
`
`and Unfair Competition§ 25:78 (4th ed.). Additionally, courts "are
`
`not limited to considering just the listed factors when making [a]
`
`determination of whether the statutory criterion has been met."
`
`Sporty's Farm, 202 F.3d at 498. Any "unique circumstances .
`
`. '
`
`which do not fit neatly into the specific factors enumerated" may
`
`also be considered and may be the "most important grounds" showing
`
`bad faith intent. Id. at 499.
`
`Here, three factors straightforwardly weigh in favor of a
`
`finding of bad faith and three straightforwardly do not. Factors I,
`
`II, and III cut against Mermel. He has no trademark or intellectual
`
`property rights in the domain name (Factor I), the domain name does
`
`19
`
`
`
`Case 1:17-cv-09941-JSR Document 13 Filed 04/02/18 Page 20 of 27
`
`not consist of a name commonly used to identify him (Factor II), and
`
`he has not used the domain name in connection with the bona fide
`
`offering of any goods or services (Factor III). On the other hand,
`
`Factors VI, VII, and VIII weigh