`UNITED STATES DISTRICT COURT
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`SOUTHERN JISTRICT OF NEW YORK
`_________________________________________ x
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`MCALLISTE? OLIVARIUS,
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`Plaintiff,
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`—v—
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`MARK MYERS MERMEL,
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`l7 Civ. 9941 (JSR)
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`OPINION AND ORDER
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`<————————————————
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`4rsmmfifi:w,m
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`Defendant.
`_________________________________________ x
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`JED S. RAKOFF, U.S.D.J.
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`This case is the unfortunate devolution of a dispute between
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`the McAllister Olivarius law firm and its former client Mark Myers
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`Mermel regarding legal fees.
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`In its single—count Complaint,
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`plaintiff McAllister Olivarius alleges that defendant Mermel
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`registered the domain name mcallisterolivariustruth.com in order to
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`divert potential clients and others seeking information about the
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`firm and, having done so,
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`to induce plaintiff to reduce the amount
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`it was seeking from him in unpaid legal fees by threatening to
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`publish allegedly damaging documents about plaintiff on the website.
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`Defendant thereby,
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`in plaintiff’s view, violated the
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`Anticybersquatting Consumer Protection Act. Before the Court is
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`.C
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`defendant’s motion to dismiss _or lack o: jurisdiction under Federal
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`Rule of Civil Procedure l2(b)(l) and for failure to state a claim
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`under Federal Rule of Civil Procedure 12(b)(6). ECF No. 8.
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`BACKGROUND
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`,
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`I %
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`The pertinent allegations of the Complaint are as follows:
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`Plaintiff is a general partnership that operates as a law firm
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`both in the United Kingdom and the United States. Complaint
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`(“Comp;.”) at p.l T l, ECF No.
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`l. Dr. Ann Olivarius,
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`together with
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`Dr. Jef McAllister,
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`general practice law firm. See i
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`founded McALlister Olivarius in 1996 as a
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`. at p.2 1 l. The firm specializes
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`in cases involving gender discrimination and sexual harassment
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`in
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`employment and educational settings.
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`Id.
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`Since its founding, plaintiff has regularly, continuously, and
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`systematically used the name “McAllister Olivarius” in connection
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`with the marketing and promotion of its legal services throughout
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`the United States and abroad. See id; at p.4 T 6. Among other
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`things, McAllister Olivarius promotes itself through articles about
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`its cases published in media outlets and online via its website and
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`social media presence. Ed; The firm’s cases also have generated
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`articles in multiple publications,
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`including the New York Times,
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`the
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`Los Angeles Times, Huffington Post, and the Chronicle of Higher
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`Education. "d. Plaintiff’s website, mcolaw.com, has attracted more
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`than 78,000 visitors worldwide since January 1, 2014. Over 800,000
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`people have viewed information distributed by Olivarius via Twitter
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`in October and November 2017.
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`Id.
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`Defendant Mark Myers Mermel is a real estate developer and a
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`former candidate for Lieutenant Governor of New York.
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`Id. at p.2 fl
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`2. Mermel has earned postsecondary degrees from the University of
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`Vermont, Columbia University, and the Divinity School at Yale
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`University. Id; at p.2 I 2. Mermel retained plaintiff as counsel on
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`or about May 15, 2012 in connection with a dispute with Yale. Id; at
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`p.5 T 8. The terms of plaintiff’s representation in connection with
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`this dispute were memorialized in a written engagement letter, which
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`was signed by Mermel on May 15, 2012 (the “Engagement Letter”).
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`Id.
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`at p.5 1 9; see also id. at EX. A. The Engagement Letter contains a
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`provision that “[a]ny dispute or legal issue arising from these
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`terms of business or th cngagcmont letter will be determined by the
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`laws of the State of Connecticut, without reference to the
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`principles of conflicts of law, and considered exclusively by
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`Connecticut and US courts.” Id. at EX. A, Terms 0: Business I 10.
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`Between May 2012 and August 2014, plaintiff sent eight invoices
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`to Mermel, each setting forth the fees owed for its legal
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`representation of Mermel and detailing the time spent and work
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`performed. Id; at p.6 1 12. Defendant refused, and continues to
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`refuse,
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`to pay plaintiff as required by the terms 0: the Engagement
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`Letter.
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`Id. at p.6 1 11. Accordingly, on June 20, 2016, plaintif:
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` filed a civil action against defendant for breach of contract and
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`quantum meruit
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`in the Superior Court for New Haven County,
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`Connecticut. Id; at p.6 1 13.
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`At some point, Mermel registered the domain name
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`mcallisterolivariustruth.com. Id; at p.6 11 14-15. The website bore
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`the title “McAllister Olivarius TRUTH” in large letters on every
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`page.
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`Id. at Ex. B. It had a home page, as well as pages named
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`“Practice Areas,” “Attorneys”, and “Contact.” Id. The home page
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`
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`displayed a picture of balance scale and the text “HI, MR JEF!” Id.
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`The “Practice Areas” page was blank.
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`Id. The “Attorneys” page listed
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`two lawyers with no connection to McAllister Olivarius. See id.; see
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`also id. at p.6 I 16. This page also displayed the following text:
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`“When you experience an injury, everything can change — we know that
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`at Wilson & Doyle. With more than a century of combined experience
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`litigating on our clients’ behalf, you can focus on recovering,
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`instead of finding yourself overwhelmed and worried about your court
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`case.” Id; at Ex. B. The Contact page included a form for visitors
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`to send a message. Id; at p.6 T 16.
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`On July 1, 2016,
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`in response to one of plaintiff’s written
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`demands for payment, Mermel threatened to populate the website with
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`select documents that, Mermel claimed, “would cast Plaintiff and its
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`principals in a negative light with ‘other potential clients’ and
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`‘cripple if not close’ its business.” Id. at p.7 i 17. Mermel then
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`offered to forego this plan if “both parties would simply ‘walk
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`away’
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`from.the unpaid balance, or, alternatively, plaintiff
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`[substantially] reduced its balance.” Id. at p.7 I 18.
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`On June 27, 2017, McAllister Olivarius sought
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`leave to amend
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`its original complaint
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`in New Haven County Superior Court to add an
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`anticybersquatting claim.
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`Id. at p.7 I 19. Mermel subsequently
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`removed the website from the internet.
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`Id. at p.7 T 20. On July 24,
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`
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`2017, plaintiff sought
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`leave to file a second amended complaint,
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`adding an intentional spoliation of evidence claim.
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`Id. at p.7 1 21.
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`Mermel opposed.
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`Id. at p.7 T 22. The New Haven County Superior Court
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`denied plaintiff’s request on September 25, 2017, ruling that
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`plaintiff’s new claims were insufficiently related to its debt
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` collection claims to warrant joinder in that action.
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`Id. at p.7 1
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`22. Plaintiff brought the instant action on December 20, 2017. See
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`ECF No. 1.
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`DISCUSSION
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`Defendant, pro se, now moves to dismiss plaintiff’s complaint
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`for lacg of subject matter jurisdiction and failure to state a
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`
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`claim. gee ECF No. 8. When, as here, a party proceeds pro se, a
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`court must liberally construe the party’s briefs, “reading such
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`submissions ‘to raise the strongest arguments they suggest.’” Bertin
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`V. United States, 478 F.3d 489, 491 (2d Cir. 2007)
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`(quoting Burgos
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`v. Hopkins, 14 F.3d 787, 790 (2d Cir. 1994)). “The policy of
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`liberally construing pro se submissions is driven by the
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`understanding that ‘[i]mplicit in the right to self—representation
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`is an obligation on the part of the court to make reasonable
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`allowances to protect pro se litigants from inadvertent forfeiture
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`of important rights because of their lack of legal training.’” Abbas
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`
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`v. Dixon, 480 F.3d 636, 639 (2d Cir. 2007). Although one suspects
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`that these principles were formulated for the benefit of persons
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`less educated than Mr. Mermel,
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`they nevertheless fully apply here.
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`I.
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`Subject Matter Jurisdiction
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`A motion to dismiss for lack of subject matter jurisdiction
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`under Federal Rule of Civil Procedure 12(b)(1) can be granted when
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`
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`the court lacks the statutory or constitutional power to adjudicate
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`the case.” Nowak v.
`Ironworkers Local 6 Pension Fund, 81 F.3d 1182,
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`1187 (2d Cir. 1996).
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`In reviewing a 12(b)(1) motion,
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`the Court must
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`“accept as true all factual allegations in the complaint and draw
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`all reasonable inferences in the Plaintiff's favor.” See Merritt v.
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`Shuttle, Inc., 245 F.3d 182, 186 (2d Cir. 2001).
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`Defendant’s arguments for dismissing under Rule 12(b)(1), even
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`generously construed, are entirely without merit. Mermel first
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`argues that this action is procedurally improper because McAllister
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`Olivarius is the plaintiff and only defendants are entitled to
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`removal under 28 U.S.C. §§ 1441. See 28 U.S.C. § 1441(a)
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`(“[A]ny
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`civil action brought
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`in a State court of which the district courts
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`0:
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`the United States have original jurisdiction, may be removed by
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`the defendant or defendants,
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`to the district court of the United
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`States for the district and division embracing the place where such
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`action is pending.”). However,
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`this case does not
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`involve removal.
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`Granted, plainti;f sought to bring this claim in state court, but
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`its request for Leave to amend its complaint to include this
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`cybersquatting claim was denied by the Connecticut state court. See
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`Compl. at p.7 1 22. Plaintiff thereafter initiated the instant
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`action in this Court.
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`Next, Mermel seems to argue that this case does no: present a
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`federal question because the “original complaint” — that is,
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`the
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`Connecticut complaint — alleged only breach of contract and quantum
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`meruit. See Memorandum of Law in Support of Defendant Mark Myers
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`xmmw/rzrwmarwmy,,7mwmlermmmww»4m,,W..‘,.Mmmm"
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`Mermel Motion to Dismiss the Complaint
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`(“Def. Mem.”) at 17, ECF No.
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`9. This argument,
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`like the previous one, misconstrues the
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`relationship between this action and the Connecticut action.
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`Although there may be a factual nexus between the two lawsuits,
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`they
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`are procedurally distinct. The cause 0: action that plaintiff has
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`pled before this Court is based solely on a federal statute,
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`the
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`AntiCybersquatting Consumer Protection Act, 15 U.S.C.
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`§ 1125(d). The
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`case therefore presents a federal question. §e§ 28 U.S.C.
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`§ 1331
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`(“The district courts shall have original jurisdiction of all civil
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`actions arising under the Constitution,
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`laws, or treaties of the
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`United States.”).
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`Mermel’s final argument relating to jurisdiction depends on a
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`choice of _aw prOVision in the Engagement Letter stipulating that
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`“[a]ny dispute or legal issue arising from these terms of business
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`or thc cngagcmont letter will be determined by the laws of the State
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`of Connecticut, without reference to the principles of conflicts of
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`laws of the State of Connecticut.” Compl. at Ex. A. As an initial
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`matter, plaintiff’s anticybersquatting claim does not “aris[e]” from
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`the terms of the parties’ attorney—client relationship or the
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`Engagement Letter. Therefore,
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`the Engagement Letter’s choice of law
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`provision does not cover this dispute. Moreover, even if the clause
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`were applicable here, it would govern only which state’s law this
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`Court must apply and therefore would not bar this Court’s exercise
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`of jurisdiction. See Executive Telecard, Ltd. v. Engelman, 1996 WL
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`191967, at *3 (S.D.N.Y. Apr. 19, 1996).
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`II. Failure to State a Claim
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`Mermel’s motion to dismiss under Federal Rule of Civil
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`Procedure l2(b)(6) presents a closer question. To survive a motion
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`to dismiss for failure to state a claim under Rule l2(b)(6),
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`a
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`complaint must contain sufficient factual matter, accepted as true,
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`to ‘state a claim to relief that is plausible on its face.’”
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`
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`Ashcroft V. Iqbal, 556 U.S. 662, 678 (2009)
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`(quoting Bell Atl. Corp.
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`v. Twombly, 550 U.S. 544, 570 (2007)). Mere conclusory statements in
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`a complaint and “formulaic recitation[s] of the elements of a cause
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`of action” are not sufficient. Twombly, 550 U.S. at 555.
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`In considering a Rule l2(b)(6) motion, while the court
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`generally looks to “the allegations on the face 0: the complaint,”
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`“the court may permissibly consider .
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`.
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`.
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`[d]ocuments that are
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`attached to the complaint or incorporated in it by reference,” which
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`“are deemed part of the pleading.” Roth v. Jennings, 489 F.3d 499,
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`509 (2d Cir. 2007).
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`The Anticybersquatting Consumer Protection Act
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`(“ACPA”),
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`enacted in 1999,
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`is intended “to protect consumers and American
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`businesses,
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`to promote the growth of online commerce, and to provide
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`clarity in the law for trademark owners by prohibiting the bad—faith
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`and abusive registration of distinctive marks as Internet domain
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`names with the intent to profit from the goodwill associated with
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`such marks — a practice commonly referred to as
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`‘cybersquatting.’”
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`S. Rep. No. 106—140, at 4; see also Sporty’s Farm L.L.C. v.
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`Sportsman’s Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000)
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`(“Cybersquatting involves the registration of domain names of well—
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`known trademarks by non—trademark holders who then try to sell the
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`names back to the trademark owners.”). The ACPA provides:
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`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
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`parties,
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`that person—
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`from that
`to profit
`a bad faith intent
`(i) has
`mark,
`including a personal name which is protected
`as a mark under this section; and
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`(ii) registers, traffics in, or uses a domain name
`that—
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`in the case of a mark that is distinctive
`(I)
`the time of registration of
`the domain
`at
`name,
`is identical or confusingly similar to
`that mark;
`
`
` (II)
`is
`in the case of a famous mark that
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`the
`famous at
`the time of registration of
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`domain name,
`is
`identical or confusingly
`similar to or dilutive of that mark;
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`15 U.S.C.
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`§ 1125(d)
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`l)(A).
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`Therefore, “[tjo successfully assert a claim under the ACPA,
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`a
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`
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`plaintiff must demonstrate that
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`(1)
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`its marks were distinctive at
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`the time the domain name was registered;
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`(2)
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`the infringing domain
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`names complained of are identical to or confusingly similar to
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`
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`the infringer has a bad faith intent to
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`plaintiff’s mark; and (3)
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`
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`profit from that mark.” Webadviso v. Bank of Am. Corp., 448 F. App’x
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`(2d Cir. 70"). For the reasons provided below,
`'—
`J.
`finds that plaintif: has plausibly alleged that i-s mark is
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`95,
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`97
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`distinctive,
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`that defendant’s domain name was confusingly similar to
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`the Court
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`its mark and that, on the facts pled, plaintiff adequately has
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`alleged that defendant had a bad faith intent to profit from the
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`mark.
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`a.Whether Plaintiff’s Mark is Distinctive
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`Mermel contends that the “McAllister Olivarius” mark is not
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`distinctive, arguing first that the firm’s mark is “MCO Law,” not
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`McAllister Olivarius, and second, even if the firm’s mark were
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` McAllister Olivarius,
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`that mark is not distinctive.
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`A trademark “includes any word, name, symbol, or device, or any
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`combination thereof” used “to identify and distinguish .
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`.
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`. goods,
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`including a unique product,
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`from those manufactured or sold by
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`others and to indicate the source of the goods, even if that source
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`is unknown. 15 U.S.C. § 1127. A service mark similarly identifies
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`and distinguishes the source of one’s services from those provided
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`by others.
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`Id.
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`As an initial matter, plaintiff has pled facts sufficient to
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`give rise to a reasonable inference that it uses McAllister
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`Olivarius to identify itself. Specifically, plaintiff alleges that
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`it has “regularly, continuously, and systematically” used that name
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`since 1996. 1d; at p.4 fl 6. That the firm also uses the name “MCO
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`Law” does not entail that “McAllister Olivarius” is not entitled to
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`trademark protection, since commercial businesses can, and often do,
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`hold multiple valid and enforceable trademarks. See, e.g., We Media
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`v. General Elec. Co., 218 F. Supp. 2d 463, 465-66 (S.D.N.Y. 2002)
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`10
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`(“WEM holds several trademarks beginning with the pronoun ‘we’,
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`including WE and WEMEDIA.”).
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`The level o_ pro-ec-ion afforded a mark depends on where it
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`
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`falls along a spectrum of “five general categories of
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`
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`distinctiveness: 1) generic; 2) descriptive; 3) suggestive; 4)
`
`
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`Inc. v. Stroh
`arbitrary; and 5) fanciful.” Genesee Brewing Co.,
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`Brewing Co., 124 F.3d 137, 143 (2d Cir. 1997). A generic mark is not
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`distinctive and never entitled to protection. See Star Indus.,
`Inc.
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`v. Bacardi
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`& Co., 412 F.3d 373, 385 (2d Cir. 2005). A descriptive
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`mark is not inherently distinctive, but is protectable if it has
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`acquired secondary meaning. 1d; Suggestive marks, along with
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`arbitrary or fanciful marks, are inherently distinctive. 1d;
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`Here,
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`to the extent that the McAllister Olivarius mark warrants
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`any protection, it is only as a descriptive mark. Marks that are
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`“primarily merely surnames” constitute a specific subcategory of
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`descriptive marks,
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`in that they describe the fact that the named
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`individual is affiliated with the firm. Therefore, “McAllister
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`
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`Olivarius,” as a descriptive mark,
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`is protectable only if it has
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`acquired secondary meaning. See Pirone v. MacMillan, Inc., 894 F.2d
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`579, 583 (2d Cir. 1990)
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`(marks which are “primarily merely a
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`surname” are unregistrable unless they have acquired secondary
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`
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`meaning).
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`Secondary meaning can attach to a descriptive mark where “‘the
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`name and the business have become synonymous in the mind of the
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`public, submerging the primary meaning of the term in favor of its
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`11
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`1?
`if
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`
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`
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`
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`meaning as a word identifying that business.’” Time,
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`Inc. v.
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`Petersen Pub. Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999)
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`(quoting
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`Arrow Fastener Co. V. Stanley Works, 59 F.3d 384, 390 (2d Cir.
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`1995)). “[T]he relevant purchasing public is not the population at
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`large, but the prospective purchasers of the product” or service.
`
`
`Lane Capital Mgmt.,
`Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337,
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`344 (2d Cir. 1999)
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`(citing Blisscraft of Hollywood v. United Platics
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`Co., 294 F.2d 694, 699 (2d Cir. 1961)).
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`Courts in this circuit analyze six factors to determine whether
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`a mark has acquired secondary meaning: “‘(1) advertising
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`expenditures,
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`(2) consumer studies linking the mark to a source,
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`(3)
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`unsolicited media coverage 0: the product,
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`(4) sales success,
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`(5)
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`attempts to plagiarize the mark, and,
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`(6)
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`length and exclusivity of
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`the mark’s use.’” Christian Louboutin S.A. v. Yves Saint Laurent Am.
`
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`Holdings, Inc., 696 F.3d 206, 226 (2d Cir.2012)
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`(quoting Genesee
`
`
`Brewing Co.,
`Inc. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d
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`Cir. 1997)). “To establish secondary meaning, a party does not have
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`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
`
`
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`196, 212 (S.D.N.Y. 2015)
`
`(internal citations omitted).
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`“[DJetermining whether a descriptive mark has acquired
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`secondary meaning is a fact—intensive inquiry” that is “ill—suited
`
`
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`for resolution at the motion to dismiss stage.” Id. at 212—13
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`(internal citations and quotations omitted). “Accordingly,
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`the
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`question of whether a descriptive mark has acquired the secondary
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`12
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`meaning necessary to be distinctive generally should not
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`.
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`.
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`. be
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`resolved on a motion to dismiss.” Id.
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`(collecting cases). Here,
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`McAllister Olivarius alleges that it has used its mark exclusively
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`for over two decades,
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`including engaging in substantial advertising
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`and marketing of its legal services under the McAllister Olivarius
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`brand through traditional media and the internet. Compl. at p.4 fl 6,
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`
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`p.8 i 26. Plaintiff additionally alleges that the firm has received
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`significant media coverage as a result of its work and reputation.
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`Ed; at p.4 fl 6. Finally,
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`the Complaint includes an allegation that
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`this advertising and press has generated substantial traffic to the
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`Olivarius social media account.
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`favorable to plaintiff,
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`
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`Id. Construed in the light most
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`
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`these allegations give rise to a reasonable
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`possibility that the McAllister Olivarius mark has acquired
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`secondary meaning and, accordingly,
`
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`is protectable. See, e.g.,
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`PGC
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`Prop. v. Wainscott/Sagaponack Prop. Owners, Inc., 250 F. Supp. 2d
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`136, 143 (E.D.N.Y. 2003)
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`(denying motion to dismiss where plaintiffs
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`claimed that they had advertised on the radio and the Internet, and
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`in newspapers and magazines, using their alleged mark).
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`b.Wmether Defendant’s Domain Name is Identical or Confusingly
`Similar
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`Mermel also disputes that the mcallisterolivariustruth.com
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`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
`
`|
`
`
`
`wry.““WuJ,Wm«H
`
`
`
`
`
`
`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)(l)(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.,
`
`(in considering a motion to dismiss
`622 F.3d 104, 111 (2d Cir. 2010)
`pursuant to Rule l2(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).
`
`l4
`
`
`
`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.
`
`§ ll25(d)(l)(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
`
`\\
`
`II
`
`
`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
`
`.rWNmwar,aA{10‘
`
`alert the Internet user to the protest or critical commentary nature
`
`0:
`
`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
`
`
`
`
`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 Dis:rict has stated
`
`
`
`that the similarities between barbiesbeachwear.com and
`
`
`barbiesclo:hing.com to the BARBIE trademark were “apparent on their
`
`face.” Mattel,
`
`Inc. v. Adventure Apparel, No. 00—CV—1035140, 2001 WL
`
`
`
`1035140, a: *2 (S.D.N.Y. Sept. 7, 2001). Another has held that that
`
`
`
`
`
`wanwzmwrreuo.us.mrmmw-wmmum/Mc,um»,4
`
`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 common 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 (3.3. Pa. 2002)
`(domain name louisvuitton—
`
`replicas.com consti-uces 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
`
`
`
`On its face,
`
`the word “truth,” added to the name
`
`I/
`
`“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.
`
`l7
`
`x—mrwmwmmmw,mmwwmraw/n1».,/MW»Mme“,.,.r.w,.,,U
`6&7an77,7»—n::7wm.w1,.<w7k»We/mmW.«Ww,7allmmflumwmwwmwumuumw
`
`
`
`
`
`
`
`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.l3. 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)(l)(B). These factors are:
`
`the trademark or other intellectual property
`(I)
`.C
`
`rights o_ the person [who registered the domain
`name], if any,
`in the domain name;
`
`the extent to which the domain name consists
`(II)
`
`o: the legal name of the person or a name that is
`otherwise commonly used to identify that person;
`
`
`
`
`
`the person's prior use, if any, of the domain
`)
`(I
`name in connection with the bona fide offering of
`
`any goods or services;
`
`the person's bona fide noncommercial or fair
`(IV)
`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;
`
`
`
`sell, or
`to transfer,
`the person's offer‘
`(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;
`
`and
`the person‘s provision of material
`(VII)
`
`misleading false contact information when applying
`
`for
`tte 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;
`
`
`
`l8
`
`
`
`
`
`
`
`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
`
`
`
`such domain names, without
`registration of
`of
`regard to the goods or services of the parties;
`and
`
`the extent to which the mark incorporated in
`(IX)
`the person's domain name registration is or is not
`distinctive and
`famous within the meaning of
`subsection (c).
`
`15 U.S.C.
`
`§ ll25(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 o; 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
`
`
`
`
`
`
`
`
`
`
`
`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 VT’" weigh against a finding of bad faith
`
`
`
`
`
`intent to profit. Mermei has not registered multiple domain names
`
`(Factor VIII) or attempted to transfer, sell, or otherwise assign
`
`the domain name to McAllister Olivarius (Factor VI) or any third
`
`party for potential gain. There is also is no allegation that Mermel
`
`provided misleading false contact information in registering for the
`
`domain name
`
`(Factor VII).
`
`
`
`Factor IV cuts slightly in Mermel’s favor. Where a defendant
`
`“clearly employed [the domain name]
`
`to criticize [the mark—holder’s]
`
`
`
`
`views,” “Factor "V of the ACPA counse_s against finding a bad faith
`
`intent to profit .
`
`.
`
`. because ‘use of a domain name for purposes of
`
`
`
`comment,
`
`[and] criticism,’ constitutes a
`
`‘bona fide
`
`noncommercial or fair use’ under the statute.” Lamparello v.
`
`Falwell, 420 F.3d 309, 320 (4th Cir. 2005)
`
`(quoting H.R. Rep. No.
`
`106—412, 1999 WL 970519, at *ll)). The legislative history reflects
`
`that Congress thought Factor IV was necessary to “protect[] the
`
`rights of Intern