`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`ASHEVILLE DIVISION
`CIVIL CASE NO. 1:21-cv-00067-MR
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`DMARCIAN, INC.,
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`Plaintiff,
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`vs.
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`DMARCIAN EUROPE BV,
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`Defendant.
`___________________________ )
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`O R D E R
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`THIS MATTER is before the Court on the Defendant’s Response [Doc.
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`61] to the Court’s Show Cause Order [Doc. 54] as to why the Defendant
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`should not be held in contempt for violations of the Court’s Preliminary
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`Injunction [Doc. 39]. The Court conducted a hearing on July 28, 2021, on
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`the return of the Court’s Show Cause Order.
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`I.
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`PROCEDURAL BACKGROUND
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`On May 26, 2021, the Court entered an Order imposing a Preliminary
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`Injunction against the Defendant. [Doc. 39]. The Preliminary Injunction
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`enjoined the Defendant, its officers, agents, servants, employees, attorneys,
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`affiliates, and those persons in active concert or participation with it from:
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`(1) providing services to any customers located
`outside of Europe, Africa, or Russia, except for the
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 1 of 27
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`six customers detailed in the Defendant’s Brief on
`Proposed Voluntary Commitments [Doc. 32 at 4 n.3];
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`(2) providing access to any of its websites to IP
`addresses from countries outside of Europe, Africa,
`or Russia. The Defendant shall inform website
`visitors from outside of those areas that it does not
`create new accounts in that region and shall direct
`those customers to contact dmarcian, Inc. for
`services
`through
`the
`Plaintiff’s
`website
`https://dmarcian.com;
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`(3) making changes to the copyrighted software
`except as specifically and expressly allowed or
`directed by this Order;
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`(4) using the Plaintiff’s trademark in any manner
`unless such use is accompanied by a statement
`which reads: “This trademark is the trademark of
`dmarcian, Inc. This website is produced and
`generated and posted by dmarcian Europe BV,
`which is a different entity from dmarcian, Inc. This
`trademark is being used at this location without the
`permission of dmarcian, Inc. and only pursuant to the
`terms of a court order allowing its temporary use
`during
`litigation between dmarcian,
`Inc. and
`dmarcian Europe BV.” That statement must be at
`least the size of the trademark itself, as presented, or
`12-point type when displayed on a 24” computer
`screen, whichever is larger. Such statement must
`appear immediately adjacent to the location where
`the trademark appears, and must be shown at each
`location where the trademark appears, whether that
`be on the Defendant’s website, in printed material, an
`electronic display, or otherwise;
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`(5) displaying any website with the “dmarcian” name
`unless that website includes a statement that “The
`dmarcian software was originally developed by
`dmarcian, Inc. This is not the website of dmarcian,
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 2 of 27
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`Inc. The website of dmarcian, Inc. can be found at
`https://dmarcian.com.” That statement must be
`displayed as a banner at the top of each page of the
`website on which the dmarcian name appears and
`must be of a size that is at least 12-point type when
`displayed on a 24” computer screen, and the
`reference to the website of the Plaintiff must be a link
`to that website;
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`redirecting, encouraging, or allowing any
`(6)
`customer to change its service provider or payment
`recipient from dmarcian, Inc. to dmarcian Europe,
`BV; or
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`(7) making any public statement about dmarcian, Inc.
`except as expressly allowed or directed herein.
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`[Doc. 39 at 75-77].
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`
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`On June 22, 2021, the Plaintiff filed a Motion for Order to Show Cause.
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`[Doc. 43]. The Plaintiff argues that the Defendant is violating the Preliminary
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`Injunction by continuing to use the Plaintiff’s trademark without the obligatory
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`disclaimers, continuing to display the “dmarcian” name without the obligatory
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`disclaimers, soliciting customers to change service providers from the
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`Plaintiff to the Defendant, and making public statements about the Plaintiff.
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`[Id. at 1-2]. The Plaintiff seeks sanctions, including reasonable attorney’s
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`fees. [Id. at 3].
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`On June 28, 2021, the Court entered the present Show Cause Order,
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`directing the Defendant to show cause why the Court should not impose
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`sanctions for failure to comply with the Preliminary Injunction. [Doc. 54]. On
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`July 6, 2021, the Defendant filed its response to the Court’s Order to Show
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`Cause. [Doc. 61]. On July 13, 2021, the Plaintiff replied. [Doc. 66].
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`Accompanying their filings the parties have presented extensive written
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`testimony and documentary evidence showing the manner in which the
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`Defendant has acted in response to the Preliminary Injunction. The Court
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`conducted a hearing on July 28, 2021, on the return of the Court’s Show
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`Cause Order and thereby provided an opportunity for the Defendant to show
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`why it should not be held in civil contempt.
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`II.
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`STANDARD OF REVIEW
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`District courts have “inherent power to enforce compliance with their
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`lawful orders through civil contempt.” Sullivan v. United States, 384 U.S.
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`364, 370 (1966). “That power includes the ability to award damages and
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`attorney's fees to an aggrieved party.” Rainbow Sch., Inc. v. Rainbow Early
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`Educ. Holding LLC, 887 F.3d 610, 617 (4th Cir. 2018) (citing Hutto v. Finney,
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`437 U.S. 678, 691 (1978)). To establish civil contempt, there must be clear
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`and convincing evidence of four elements:
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`(1) the existence of a valid decree of which the
`alleged contemnor had actual or constructive
`knowledge; (2) that the decree was in the movant's
`“favor”; (3) that the alleged contemnor by its conduct
`violated the terms of the decree, and had knowledge
`(at least constructive knowledge) of such violations;
`and (4) that the movant suffered harm as a result.
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`United States v. Ali, 874 F.3d 825, 831 (4th Cir. 2017).
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`III. FACTUAL BACKGROUND
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`Upon consideration of the evidence presented by the parties, the Court
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`finds the following facts to be established by clear and convincing evidence:
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`A. Defendant’s Refusal to Give Injunction to the Dutch Court
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`1. On January 29, 2021, the Defendant commenced an action against the
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`Plaintiff in a Dutch court. [Doc. 26-1 at ¶ 39].
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`2. On February 1, 2021, the Dutch court entered an injunction against the
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`Plaintiff without the Plaintiff having filed an appearance. [Id.].
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`3. On March 12, 2021, the Plaintiff commenced the present action in this
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`Court. [Doc. 1].
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`4. On March 25, 2021, the Plaintiff filed a motion for a temporary
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`restraining order and preliminary injunctive relief. [Doc. 6].
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`5. On March 30, 2021, the Defendant filed a memorandum in opposition
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`to the Plaintiff’s motion for injunctive relief, arguing in part that an
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`injunction by this Court preventing the Defendant from servicing
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`customers in Europe, Russia, and Africa would “contradict a Dutch
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`court’s recent judgment that Plaintiff and its founder must “grant
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`dmarcian Europe access to the (computer) systems necessary to
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`service its customers,” [Doc. 11 at 1], and that the Plaintiff was “wrong
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`to ask [this] Court to interfere with [the Dutch] proceedings and decide
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`whether . . . dmarcian Europe can continue to operate its business in”
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`Europe, Russia, and Africa [Id. at 2].
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`6. On March 31, 2021, this Court denied the Plaintiff’s motion for a
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`temporary restraining order and held the motion for preliminary
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`injunction in abeyance pending further presentation of evidence and
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`briefing by the parties. A hearing on the motion for preliminary
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`injunction was scheduled for April 23, 2021. [Doc. 12].
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`7. On April 6, 2021, the Plaintiff moved to set aside the injunction entered
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`by the Dutch court. [Doc. 26-1 at ¶ 41].
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`8. On April 19, 2021, the Defendant filed a Motion to Dismiss in this Court
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`for lack of personal jurisdiction and forum non conveniens. [Doc. 22].
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`9.
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`At the April 23, 2021 hearing, the Defendant reiterated its argument
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`that the Plaintiff’s requested injunctive relief was essentially a request
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`for this Court “to second-guess proceedings that are going forward in
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`the Dutch courts under Dutch law.” [Doc. 34 at 190]. The Defendant
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`further argued that “we're potentially going to end up in a situation
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`where the Dutch court is ordering this plaintiff to do one thing, the U.S.
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`court is ordering the defendant to do something that, you know, is going
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`to be like two trains running together.” [Id. at 191].
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`10. Both parties were given the opportunity to submit proposals as to how
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`the Court could order the preservation of the status quo without greatly
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`impacting the business of either party.
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`11. On May 10, 2021, the Dutch court held a hearing on the Plaintiff’s
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`attempt to set aside the injunction. [Doc. 57-1 at ¶ 4].
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`12. The Dutch court advised the parties to expect a written decision on
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`May 31, 2021. [Id. at ¶ 5].
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`13. Under Dutch law, a “judge shall not take note of submissions after the
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`court determined the decision date without consent of the other
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`party[,]” which means that “the case is closed after the hearing and due
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`process prevents unilateral submissions to the court after that date.”
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`[Id. at ¶ 5].
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`14. On May 26, 2021, this Court entered its Preliminary Injunction in this
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`case, finding personal jurisdiction over the Defendant and enjoining the
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`Defendant from performing certain specified actions. The Preliminary
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`Injunction took into account the filings of the parties regarding
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`proposed ways of preserving the status quo. This Court also
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`undertook to narrowly tailor the Preliminary Injunction to respect the
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`actions and jurisdiction of the Dutch court. [Doc. 39]. In that Order,
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`the Court also denied the Defendant’s Motion to Dismiss on the
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`grounds of personal jurisdiction and forum non conveniens. [Id.].
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`15. On May 27, 2021, the Plaintiff posted the bond to activate the
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`Preliminary Injunction.
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`16. On May 28, 2021, the Plaintiff asked the Defendant to provide its
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`consent to the submission of the Preliminary Injunction to the Dutch
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`court. [Doc. 57-1 at ¶ 6].
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`17. The Defendant refused to consent to provide the Preliminary Injunction
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`to the Dutch court, with the Defendant’s Dutch counsel explaining to
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`the Plaintiff’s Dutch counsel that the refusal to provide the Preliminary
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`Injunction to the Dutch court was “in accordance with client’s
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`instruction.” [Doc. 47-1 at 2].
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`18. Because the Defendant withheld the Preliminary Injunction from the
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`Dutch court, the Dutch court issued a ruling on May 31, 2021 without
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`knowledge of what had occurred between these parties in this action,
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`particularly that this Court had denied the Defendant’s Motion to
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`Dismiss and had entered a Preliminary Injunction pertaining to the
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`Defendant’s actions. [Doc. 57-1 at ¶ 6].
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`B. Defendant’s Continued Use of the Plaintiff’s Trademark
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`19. The Court’s Preliminary Injunction found that the Plaintiff owned a valid
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`trademark for the word “dmarcian” and that the Plaintiff had
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`demonstrated a likelihood of confusion stemming from the Defendant’s
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`use of that trademark. [Doc. 39 at 50].
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`20. The Preliminary Injunction explained that customers were being
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`confused by the overlapping services of the Plaintiff and the Defendant
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`and that “[s]uch confusion is unsurprising given that the Defendant is
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`using the Plaintiff’s mark as its domain name[,]” among other actions.
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`[Id. at 51 (citing Doc. 19 at ¶ 138; Doc. 8-1; Doc. 8-2; Doc. 8-3; Doc. 8-
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`4; Doc. 8-6; Doc. 8-7)].
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`21. The Preliminary Injunction prohibited the Defendant from “using the
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`Plaintiff’s [“dmarcian”] trademark in any manner unless such use is
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`accompanied” by a disclaimer regarding the ownership of the
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`trademark. [Doc. 39 at 76].
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`22. Despite the Preliminary Injunction, the Defendant continued to redirect
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`traffic to its website from domain names featuring the Plaintiff’s
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`“dmarcian”
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`trademark,
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`including
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`dmarcian.eu,
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`dmarcian.nl,
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`dmarcian.co.uk, dmarcian.be, dmarcian.es, dmarcian.fr, dmarcian.at,
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`dmarcian.frl, dmarcian.io, dmarcian.jp, and dmarcian.hk. [Doc. 46 at
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`2-4].
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`23. The Defendant did not post the required disclaimer on any of its
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`websites that received internet traffic from those domain names. In
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`fact, the Defendant undertook no action whatsoever to attempt to
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`comply with this Court’s Preliminary Injunction as it pertains to the use
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`of the domain names that contain the Plaintiff’s trademark.
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`24. The Plaintiff sent the Defendant multiple letters complaining about the
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`continued use of the “dmarcian” domain names to redirect visitors to
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`the Defendant’s websites without the display of the required
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`disclaimers. [Doc. 48-1 at 1; Doc. 48-2 at 1; Doc. 48-4 at 2].
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`25. Despite the Plaintiff’s objections, the Defendant refused to stop using
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`the “dmarcian” domain names to redirect visitors to its website or post
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`the disclaimers. [Doc. 48-3 at 1; Doc. 48-5 at 2].
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`26. After the Court held a hearing on the Show Cause Order on July 28,
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`2021, the Defendant filed a declaration stating that on August 5, 2021
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`it voluntarily discontinued redirecting internet traffic to its website from
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`the
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`“dmarcian” domain names,
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`including:
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`“dmarcian.co.uk,
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`dmarcian.nl, dmarcian.fr, dmarcian.es, dmarcian.eu and dmarcian-
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`europe.com . . . and all other domain names under its control that use
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`the word “dmarcian.” [Doc. 78 at ¶ 5].
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`IV. DISCUSSION
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`A. Defendant’s Refusal to Give Injunction to the Dutch Court
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`The Show Cause Order directed the Defendant to explain its decision
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`to withhold the Preliminary Injunction from the Dutch court. [Doc. 54].
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`The Defendant provides several explanations for the refusal to provide
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`the Preliminary Injunction to the Dutch court. First, the Defendant argues
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`that “under Dutch procedural law the adversarial part of the proceedings had
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`already been closed for 3 weeks[.]” [Doc. 57-1 at ¶ 6]. While that is an
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`undisputed statement of fact and law, it does not explain why the Defendant
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`withheld the Preliminary Injunction from the Dutch court.
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`Second, the Defendant states that it refused to provide the Preliminary
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`Injunction to the Dutch court because the Defendant did not believe that the
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`Preliminary Injunction would have changed the Dutch court’s findings,
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`altered the Dutch court’s determination that it had jurisdiction, or persuade
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`the Dutch court to reopen the case and schedule a new hearing. [Id.]. The
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`Defendant’s unilateral determination that the Preliminary Injunction would
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`not alter the Dutch court’s analysis bears little weight. At the very least, the
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`Defendant’s refusal to provide the Preliminary Injunction to the Dutch court
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`increased the possibility that this Court and the Dutch court would issue
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`inconsistent or conflicting judgments. Hypocritically, the Defendant has
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`repeatedly raised concerns about the possibility of conflicting judgments in
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`this Court in its briefs on the Plaintiff’s motions for injunctive relief, its own
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`motion to dismiss, and its own motion to stay the injunction pending appeal.
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`[Doc. 11 at 12; Doc. 32 at 1; Doc. 60 at 14].
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`Third, the Defendant states that it considered the provision of the
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`Preliminary Injunction to be “undesirable, potentially inequitable and contrary
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`to due process in view of the fact that the U.S. Order exists of 78 pages with
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`considerations and findings that require further consultation of the parties to
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`secure due process[.]” [Doc. 57-1 at ¶ 6]. The Defendant does not explain
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`why the length of a judicial order makes its provision to the Dutch court
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`“inequitable” or “contrary to due process.” To the contrary, by withholding a
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`relevant judicial order from the Dutch court, the Defendant thwarted due
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`process, undermined cooperation between the two courts, and generally
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`acted in an inequitable manner.
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`Fourth, the Defendant states that it withheld the Preliminary Injunction
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`from the Dutch court because the Plaintiff “waited until Friday May 28, 2021
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`with its request for consent, knowing that the decision from the Court of
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`Rotterdam would be delivered the next working day and was probably
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`already drafted[.]” [Id.]. This argument is meritless. The Court entered its
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`injunction on May 26 at 3:59 p.m. [Doc. 39]. The Plaintiff posted the bond
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`activating the injunction at 4:24 p.m. the next day (9:24 p.m. in the
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`Netherlands). [Doc. 66 at 15]. The Plaintiff acted reasonably by asking the
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`Defendant for consent to submit the Preliminary Injunction to the Dutch court
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`the next day.
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`Finally, the Defendant states that if “the Rotterdam Court would have
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`reopened the case and scheduled a new hearing upon submission of the
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`U.S. Order, this would have resulted in a further substantial delay which [the
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`Defendant would have] found unacceptable” because the Plaintiff had
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`previously refused to comply with the Dutch court’s order, was attempting to
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`put the Defendant out of business, and had ignored the Defendant’s previous
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`requests to communicate about problems between the parties. [Id.]. By
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`acknowledging the possibility that the Dutch court may have reopened the
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`case and scheduled a new hearing upon learning of the Preliminary
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`Injunction, the Defendant undercuts its other explanations for refusing to
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`provide the Preliminary Injunction to the Dutch court. Moreover, the
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`Plaintiff’s actions, wrongful or not, are not a basis for withholding a clearly
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`relevant order from the Dutch court. Most importantly, the Defendant
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`manifests its contempt for this Court and for its order by unilaterally choosing
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`not to abide by it because the Defendant found such compliance to be
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`“unacceptable” to it. How or why the Defendant or its counsel believed that
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`compliance with this Court’s injunction was purely in its own discretion is not
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`explained.
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`In sum, the Defendant was aware that the Preliminary Injunction was
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`designed to preserve the status quo by placing very limited and reasonable
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`restrictions on the Defendant while the Dutch court conducted its
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`investigation. The Defendant’s decision to withhold the Preliminary
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`Injunction from the Dutch court violated a significant purpose of that order
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`and directly contradicted the Defendant’s prior positions in this Court by
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`creating a risk of conflicting judgments between this Court and the Dutch
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`court. The Defendant’s disingenuous conduct reflects poorly on its
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`credibility, which is relevant as to whether the Defendant attempted to
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`comply with the Preliminary Injunction in good faith.
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`B. Defendant’s Continued Use of the Plaintiff’s Trademark
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`The Plaintiff argues that the Defendant has continued infringing on its
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`trademark by redirecting website traffic for various “dmarcian” domain names
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`to the Defendant’s website without posting the relevant disclaimers that are
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`required by the Preliminary Injunction. [Doc. 49 at 6-9].
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`Although the Defendant admits that it was continuing to redirect traffic
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`to its website from a variety of “dmarcian” domain names, the Defendant
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`argues that employing the Plaintiff’s trademark to redirect visitors to its
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`websites did not violate the Preliminary Injunction and cannot support a
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`contempt finding because “there is no specific command about domain
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`names in the Preliminary Injunction.” [Doc. 61 at 16]. This argument is
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`meritless. The Preliminary Injunction specifically forbade the Defendant from
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`“using the Plaintiff’s trademark in any manner” unless accompanied by the
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`relevant disclaimer. [Doc. 39 at 76 (emphasis added)]. As such, the
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`Preliminary Injunction made clear that the Defendant could not use the
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`Plaintiff’s trademark without the relevant disclaimers (whether in a domain
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`name or otherwise).1 At a minimum, the Defendant had constructive
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`knowledge that continuing to use the “dmarcian” domain names would
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`violate the Preliminary Injunction, as directing internet traffic to the
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`Defendant’s business by using domain names consisting of the Plaintiff’s
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`1 The Court offered both parties the opportunity to submit proposed restraints that would
`preserve the status quo and protect the parties’ business interests during the proceedings
`in this Court and the Dutch courts. [Doc. 34 at 203-205]. While the Defendant submitted
`proposed restraints, [Doc. 32], it did not propose a rebranding such as what it has
`undertaken. After the Court entered its Preliminary Injunction, however, the Defendant
`opted to rebrand rather than comply with the scheme contemplated in the parties’ filings
`and the Preliminary Injunction. If there was any confusion associated with the mandate
`in the Preliminary Injunction, it resulted from the Defendant’s choice to follow a course of
`action that was not contemplated by its proposed restraints or the Preliminary Injunction.
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`trademark is among the purest modern forms of trading on the Plaintiff’s
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`name.
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`The Defendant further argues that its use of the domain names did not
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`create a likelihood of confusion because the domain names merely
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`redirected visitors to the Defendant’s rebranded websites, which “feature the
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`DMARC Advisor name and logo” and “do not mention” the Plaintiff or
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`“dmarcian.” [Doc. 61 at 14-15]. However, the Plaintiff has demonstrated that
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`consumers are actually being confused by the overlapping services being
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`offered by the Plaintiff and the Defendant. As the Preliminary Injunction
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`explained, “[s]uch confusion is unsurprising given that the Defendant is using
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`the Plaintiff’s mark as its domain name[.].” [Doc. 39 at 51 (emphasis added)
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`(citing Doc. 19 at ¶ 138; Doc. 8-1; Doc. 8-2; Doc. 8-3; Doc. 8-4; Doc. 8-6;
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`Doc. 8-7)]. It is unclear why the Defendant now argues that “there is no
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`likelihood of confusion” stemming from its continued use of the domain
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`names when the Preliminary Injunction explicitly stated that the use of the
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`domain names was causing consumer confusion. [Doc. 61 at 14]. This
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`argument is meritless.
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`The Defendant further argues that the use of a domain name cannot
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`constitute trademark infringement under the Fourth Circuit’s decision in
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`Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005). [Doc. 61 at 14]. In
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`Lamparello, Jerry Falwell’s claimed that his “Falwell” trademarks were being
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`infringed by a parody website located at www.Fallwell.com. 420 F.3d 309,
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`310 (4th Cir. 2005). Falwell argued that the mere similarity between the two
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`domain names was sufficient to establish trademark infringement under the
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`“initial interest confusion theory,” which bars “a competitor from luring
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`potential customers away from a producer by initially passing off its goods
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`as those of the producer's, even if confusion as to the source of the goods is
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`dispelled by the time any sales are consummated.” Id. at 316. The Fourth
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`Circuit rejected that argument, explaining that the relevant inquiry was
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`“whether the use in its entirety creates a likelihood of confusion” when viewed
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`“in the context in which it is seen by the ordinary consumer.” Id.2 The Fourth
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`Circuit explained that the similarities between the domain names did not
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`establish a likelihood of confusion because the parody site did not offer
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`similar goods or services as Falwell’s website; the parody site featured a
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`prominent disclaimer explaining that it was not affiliated with Jerry Falwell
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`and provided a hyperlink to Falwell's website; the parody site looked different
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`from Falwell’s website; visitors to the parody website “quickly realized that
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`Reverend Falwell was not the source of the content therein[;]” and the parody
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`2 The Defendant’s discussion of the “initial interest confusion theory” is inapposite. The
`preliminary injunction did not rely on the “initial interest confusion theory” as a basis for
`finding a likelihood of success on the Plaintiff’s trademark infringement claim.
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`website was not attempting to profit from the business interests that were
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`protected by the trademarks. Id. at 315-17. Accordingly, the Fourth Circuit
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`concluded that the parody site did not infringe on Falwell’s trademarks
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`because there was no likelihood of consumer confusion. Id.
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`Unlike Lamparello, there was a serious risk of consumer confusion
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`stemming from the Defendant’s continued use of the “dmarcian” domain
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`names because the Plaintiff and the Defendant offer essentially identical
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`services; the Defendant has refused to post a disclaimer on its websites;
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`visitors have been confused about the similarities between the Plaintiff and
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`the Defendant’s branding; and the Defendant’s site attempts to profit from
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`the business interests that are protected by the Plaintiff’s trademarks. While
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`the Defendant argues that this case is like Lamparello because the parties’
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`websites look different after the Defendant rebranded and changed the logo
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`and color scheme of its websites, the parties’ websites still look substantially
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`similar and have the same layout, the same features in the same places, the
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`same functionality, and virtually identical text. Under such circumstances,
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`the unauthorized use of a company’s trademark to redirect visitors to a
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`different website constitutes trademark infringement. See People for Ethical
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`Treatment of Animals v. Doughney, 263 F.3d 359, 365 (4th Cir. 2001);
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`Herrmann Int'l, Inc. v. Herrmann Int'l Eur., No. 1:17-CV-00073-MR, 2021 WL
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`
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 18 of 27
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`18
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`
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`861712, at *10 (W.D.N.C. Mar. 8, 2021) (Reidinger, C.J.); Buzz Off Insect
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`Shield, LLC v. S.C. Johnson & Son, Inc., No. 1:05-CV-363, 2009 WL
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`10712996, at *2 (M.D.N.C. July 30, 2009).3 After all, any consumer who
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`seeks the Plaintiff’s services by accessing a domain name with the Plaintiff’s
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`trademarked name in it, and there finds a business providing that precise
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`service, the different name displayed by the Defendant would most likely lead
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`the consumer to conclude that the Plaintiff has rebranded.
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`The Defendant further argues its continued use of the “dmarcian”
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`domain names did not violate the Preliminary Injunction because it would
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`have been impossible to place the disclaimer adjacent to a domain name, as
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`required by the injunction. [Doc. 61 at 16]. The Defendant also argues that
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`the disclaimer’s reference to “this trademark” no longer made sense after the
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`Defendant rebranded to DMARC Advisor and started displaying its DMARC
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`Advisor trademark on its website. [Doc. 61 at 16]. The Defendant’s
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`argument that it cannot place a disclaimer immediately adjacent to a domain
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`name is disingenuously technical. Even though the Defendant could not
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`place the disclaimer in the address bar of an internet browser, the Defendant
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`3 Even if the parties’ websites had appeared materially different following the rebrand, the
`touchstone for the likelihood of confusion inquiry is the “content of the website” rather
`than its appearance. Lamparello, 420 F.3d at 315-17. Because the parties’ websites
`offer essentially the same content, the Defendant’s use of the Plaintiff’s trademark is likely
`to cause consumer confusion, particularly because the Defendant and the Plaintiff are
`competitors who offer identical services.
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`
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 19 of 27
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`19
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`
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`made no good faith attempt to comply with the Preliminary Injunction, for
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`instance by posting a slightly modified version of the required disclaimer as
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`the landing page of its websites that received traffic from the “dmarcian”
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`domain names. The consumer could then choose to search out the Plaintiff’s
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`site or proceed to the Defendant’s. The Defendant also could have made a
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`good faith attempt to comply with the Preliminary Injunction by moving the
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`Court to clarify or amend the disclaimer language after it rebranded. Notably,
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`the Defendant filed a motion to amend or clarify the Preliminary Injunction
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`but made no argument asserting any confusion or issues with the disclaimer
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`language. Instead, the Defendant unilaterally chose to ignore the disclaimer
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`requirement. That falls far short of making a good faith attempt to comply
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`with the Preliminary Injunction. It was, in fact, no attempted compliance at
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`all.
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`In sum, the Preliminary Injunction gave the Defendant actual and
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`constructive knowledge that using the Plaintiff’s trademark as a domain
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`name to redirect visitors to its website constituted trademark infringement.
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`The Defendant received multiple notices of those violations and therefore
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`had constructive knowledge that its continued use of the Plaintiff’s trademark
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`in domain names violated the Preliminary Injunction. Rainbow Sch., Inc. v.
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`Rainbow Early Educ. Holding LLC, 887 F.3d 610, 618-19 (4th Cir. 2018).
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`
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 20 of 27
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`20
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`
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`Even though the nature of the infringement makes it difficult to ascertain the
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`exact harm to the Plaintiff because it is impossible to know how many
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`potential customers were redirected to the Defendant’s website after
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`entering the Plaintiff’s trademark into a search engine or an address bar, the
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`Defendant’s continued use of the Plaintiff’s trademark presumptively causes
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`harm. Rainbow Sch., Inc. v. Rainbow Early Educ. Holding LLC, No. 5:14-
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`CV-482-BO, 2016 WL 7243538, at *3 (E.D.N.C. Dec. 14, 2016), aff'd, 887
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`F.3d 610 (4th Cir. 2018) (citing Rebel Debutante LLC v. Forsythe Cosmetic
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`Grp., Ltd., 799 F. Supp. 2d 558, 580 (M.D.N.C. 2011)). Moreover, the
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`Defendant’s continued use of the Plaintiff’s trademark enabled the
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`Defendant to collect consumer information and customer relationships that
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`may otherwise have been obtained by the Plaintiff from users seeking its
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`services by visiting websites under its trademark. [Doc. 45-2]. Further, as
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`demonstrated by the exhibits submitted throughout this matter, the
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`Defendant’s continued use of the Plaintiff’s trademark has caused consumer
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`confusion. [Doc. 19 at ¶ 138; Doc. 8-1; Doc. 8-2; Doc. 8-3; Doc. 8-4; Doc. 8-
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`6; Doc. 8-7); see also Doc. 44 at ¶¶ 1-13; Doc. 64 at ¶¶ 2, 6-9]. That is
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`sufficient to establish harm to the Plaintiff.
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`For these reasons, the Court concludes that there is clear and
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`convincing evidence that the Preliminary Injunction was a valid decree of
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`Case 1:21-cv-00067-MR Document 80 Filed 08/11/21 Page 21 of 27
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`21
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`
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`which the Defendant had actual knowledge; that the Preliminary Injunction
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`was in the Plaintiff’s favor; that the Defendant had at least constructive
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`knowledge that its continued use of the “dmarcian” domain names violated
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`the Preliminary Injunction; and that the Plaintiff suffered harm as a result.
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`Accordingly, the Court concludes that the elements of civil contempt are
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`established here. United States v. Ali, 874 F.3d 825, 831 (4th Cir. 2017).4
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`C. Defendant’s Continued Display of the Plaintiff’s Trademark
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`The Plaintiff also moves for civil contempt on the grounds that the
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`Defendant violated the Preliminary Injunction by c