Law Offices of Diana Maier PC v. DianaMaierLaw.com

1 WO — 2 — — 3 — — 4 — — 5 — 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA — 8 — 9 Law Offices of Diana Maier PC, No. CV-20-02235-PHX-MTL 10 Plaintiff, ORDER 11 v. 12 DianaMaierLaw.com, 13 Defendant. — 14 — 15 Plaintiff Law Offices of Diana Maier PC (“Maier”) moves for default judgment 16 against Defendant DianaMaierLaw.com (“Defendant Domain Name”), pursuant to Rule 17 55(b)(2) of the Federal Rules of Civil Procedure. (Doc. 12.) Defendant Domain Name has 18 not appeared or filed any response. For the reasons discussed below, the motion for 19 default judgment is granted. 20 I. BACKGROUND 21 Maier filed the Complaint on November 20, 2020. (Doc. 1.) It alleges a claim 22 under the Federal Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. 23 § 1125 et seq. (Id. ¶ 17.) 24 All facts alleged in the Complaint (except as to damages) are assumed to be true. 25 See Geddes v. United Fin. Grp., 559 F.2d 557 , 560 (9th Cir. 1977). Maier is a “California 26 professional corporation” that offers “specialized legal and business services to its clients 27 since 2003 in the areas of employment and data privacy.” (Doc. 1 ¶¶ 6, 9.) Maier alleges 28 that it has used its “DIANA MAIER LAW” trademark (the “Mark”) continuously and 1 exclusively since 2003. (Id. ¶¶ 1, 9.) According to Maier, it has “invested thousands of 2 dollars in internet and other advertising to promote the Mark over the years” and has 3 legally registered the Mark “with the California Bar and the County of Marin as an S4 corp.” (Id. ¶ 10.) The Mark has also been used in connection to different networking 5 platforms, advertisements, and promotional materials. (Id.) 6 The firm’s previous assistant, who set up the account for the disputed domain 7 name using her personal contact information, received notice of the expiring registration. 8 (Id. ¶ 11.) That assistant, however, did not tell Ms. Diana Maier that the “registration was 9 expiring, and apparently did not renew the registration herself.” (Id.) As a result, the 10 disputed domain expired. (Id.) Sometime in 2019, someone else registered that domain 11 name. (Id.) Maier contends that the new registrant created a website that has caused 12 confusion in the marketplace and a “number of people have reached out . . . believing that 13 [Maier’s] website had been hacked.” (Id. ¶ 13.) 14 In July 2020, Maier discovered that GoDaddy.com, LLC (“GoDaddy”), an 15 Arizona limited liability company, was the “domain name registrar” for Defendant 16 Domain Name. (Id. ¶ 14.) Maier then “wrote an email to GoDaddy’s abuse hotline to 17 inquire about regaining registration” to the domain name. (Id.) Ms. Maier also placed a 18 phone call to GoDaddy in August 2020. (Id.) None of these attempts to gain information 19 were successful. (Id.) “GoDaddy explained that it could not see the full contact details of 20 the current domain owner . . . .” (Id.) GoDaddy also noted that it was not able to access 21 any information about the disputed domain prior to its transfer to the new registrant and 22 suggested that Maier pursue other legal remedies. (Id.) After more unsuccessful attempts 23 to gain information from GoDaddy, Maier filed this action. (Doc. 1.) After Defendant 24 Domain Name failed to respond, Maier applied for entry of default. (Doc. 10.) The Clerk 25 of the Court entered default against Defendant Domain Name. (Doc. 11.) Maier then filed 26 the pending Motion for Default Judgment. (Doc. 12.) 27 II. LEGAL STANDARD 28 Once default has been entered, the district court has discretion to grant default 1 judgment. See Fed. R. Civ. P. 55(b)(2); Aldabe v. Aldabe, 616 F.2d 1089, 1092 (9th Cir. 2 1980). The court may consider several factors, including (1) the possibility of prejudice 3 to the plaintiff; (2) the merits of the claims; (3) the sufficiency of the complaint; (4) the 4 amount of money at stake; (5) the possibility of a dispute concerning material facts; 5 (6) whether default was due to excusable neglect; and (7) the strong policy favoring a 6 decision on the merits. See Eitel v. McCool, 782 F.2d 1470 , 1471‒72 (9th Cir. 1986). In 7 applying the Eitel factors, the factual allegations of a complaint, apart from damages, are 8 taken as true. TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915 , 917‒18 (9th Cir. 1987). 9 The moving party has the burden to prove all damages. Philip Morris USA, Inc. v. 10 Castworld Prod., Inc., 219 F.R.D. 494, 498 (C.D. Cal. 2003). 11 III. DISCUSSION 12 A. Jurisdiction and Venue 13 “When entry of default is sought against a party who has failed to plead or 14 otherwise defend, a district court has an affirmative duty to look into its jurisdiction over 15 both the subject matter and the parties.” Tuli v. Republic of Iraq, 172 F.3d 707, 712 (9th 16 Cir. 1999). Maier asserts that this Court has subject-matter jurisdiction pursuant to 28 17 U.S.C. § 1338 (a) and 15 U.S.C. § 1125 (d)(2). (Doc. 1 ¶ 3.) The Court agrees because this 18 case involves a federal question arising under the ACPA, a federal law relating to 19 trademarks. See 28 U.S.C. § 1338 (a); 15 U.S.C. § 1125 (d)(2). Thus, subject-matter 20 jurisdiction is satisfied. 21 Maier contends that in rem personal jurisdiction exists over Defendant Domain 22 Name. (Doc. 1 ¶¶ 3–4.) It relies on the ACPA section that states, in relevant part, “[t]he 23 owner of a mark may file an in rem civil action against a domain name” if the court finds 24 that the owner “through due diligence was not able to find a person who would have been 25 a defendant in a civil action.” 15 U.S.C. § 1125 (d)(2)(A)(ii)(II). Maier outlines its “due 26 diligence in attempting to locate” the registrant by outlining the steps it took to retrieve 27 that information from GoDaddy. (Doc. 1 ¶¶ 4, 14.) Further, Maier contends that “upon 28 information and belief, no United States court has jurisdiction over the registrant of the 1 Disputed Domain, as it is believed that said registrant is located in Indonesia.” (Id. ¶ 4.) 2 Each allegation is also supported by a declaration. (See Doc. 12-1.) These allegations 3 meet the statutory requirements to show that in rem jurisdiction is appropriate. See beIN 4 Media Grp. LLC v. bein.ae, No. 3-18-CV-1042-CAB-MDD, 2019 WL 1129153 , at *2–3 5 (S.D. Cal. Mar. 11, 2019) (finding that in rem jurisdiction was appropriate where the 6 registrant resided outside of the United States) (citing 5 J. Thomas McCarthy, McCarthy 7 on Trademarks and Unfair Competition § 25A:74 (4th ed. 2017)). 8 Venue is also proper in this district, as Maier alleges, pursuant to 15 U.S.C. 9 § 1125(d)(2)(A). That section allows for an in rem action to be filed “against a domain 10 name in the judicial district in which the domain name registrar, domain name registry, or 11 other domain name authority that registered or assigned the domain name is located.” Id.; 12 see also id. § 1125(d)(2)(C) (stating that the “domain name shall be deemed to have its 13 situs in the judicial district in which the domain name registrar, registry, or other domain 14 name authority that registered or assigned the domain name is located”). Here, Maier 15 alleges that GoDaddy is the registrar of Defendant Domain Name and is located in this 16 district. (Doc. 1 ¶ 5.) Thus, venue is proper. 17 B. Service 18 Maier contends that service was proper under 15 U.S.C. § 1125 (d)(2)(A)(ii)(II). 19 (See Doc. 12 at 6–7.) The ACPA provides that service of process in an in rem action may 20 be accomplished by sending notice of the alleged violation and intent to proceed under 21 the ACPA to the registrant of the domain name. See 15 U.S.C. 22 § 1125(d)(2)(A)(ii)(II)(aa). Here, Maier served Defendant Domain Name “with the 23 summons, complaint, and other case-initiating documents on November 30, 2020, by 24 sending copies of these documents to Defendant [Domain Name] via GoDaddy.com, 25 LLC by mail and email.” (Doc. 12 at 7.) Thus, service has been satisfied. 26 C. Default Judgment 27 1. The first, fifth, sixth, and seventh Eitel factors 28 In the current case, Defendant Domain Name, nor its most recent registrant, has 1 yet to respond or participate in this litigation. Traditionally, this means the “first, fifth, 2 sixth, and seventh [Eitel] factors are easily addressed.” Zekelman Indus. Inc. v. Marker, 3 No. CV-19-02109-PHX-DWL, 2020 WL 1495210 , *3 (D. Ariz. Mar. 27, 2020). The first 4 factor weighs in favor of default judgment because denying Maier’s application will 5 leave them “without other recourse for recovery.” PepsiCo, Inc. v. Cal. Sec. Cans., 238 F. 6 Supp. 2d 1172, 1177 (C.D. Cal. 2002). The fifth factor also weighs in favor of default 7 judgment because “all well-pleaded facts in the complaint are taken as true, . . . no 8 genuine dispute of material facts would preclude granting” the motion for default 9 judgment. Id. Similarly, the sixth factor weighs in favor of default judgment. Because 10 Maier served Defendant Domain Name to the best of its ability under its statutory 11 obligation, it is unlikely that its failure to answer was the result of excusable neglect. See 12 Twentieth Century Fox Film Corp. v. Streeter, 438 F. Supp. 2d 1065, 1072 (D. Ariz. 13 2006). And while the seventh Eitel factor generally weighs against default judgment, the 14 existence of Rule 55(b) indicates that this preference, standing alone, is not dispositive. 15 PepsiCo, 238 F. Supp. 2d at 1177. The Court, therefore, finds that this factor is not 16 sufficient to preclude the entry of default judgment. Thus, these factors, as a whole, 17 weigh in Maier’s favor. 18 2. The second and third Eitel factors 19 The second and third Eitel factors—the merits of the claim and the sufficiency of 20 the complaint—are often “analyzed together and require courts to consider whether a 21 plaintiff has stated a claim on which it may recover.” Vietnam Reform Party v. Viet Tan22 Vietnam Reform Party, 416 F. Supp. 3d 948 , 962 (N.D. Cal. 2019). The Court addresses 23 Maier’s ACPA claim in turn. 24 The ACPA provides a remedy for cybersquatting when “a person other than the 25 trademark holder registers the domain name of a well known trademark and then attempts 26 to profit from this by either ransoming the domain name back to the trademark holder or 27 by using the domain name to divert business from the trademark holder to the domain 28 name holder.” Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir. 2005) 1 (citation omitted). The elements of a cybersquatting claim are (1) the registration, use, or 2 trafficking in, a domain name (2) that is identical or confusingly similar to a distinctive or 3 famous trademark, (3) with a bad faith intent to profit from the mark. See 15 U.S.C. 4 § 1125(d)(1)(A); see also Bosley, 403 F.3d at 680 . Section 1125(d)(1)(B)(i) outlines nine 5 nonexclusive factors a court may consider in determining whether a registrant had a bad 6 faith intent to profit from the mark. “Courts need not, however, march through the nine 7 factors seriatim because the listed criteria are permissive and the ACPA allows for 8 consideration of the unique circumstances of the case.” beIN Media Grp. LLC, 2019 WL 9 1129153, at *4 (citing Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1202 (9th Cir. 2009)). 10 The Court agrees with Maier that the merits of its claim and the sufficiency of the 11 Complaint favor granting default judgment. 12 As a threshold matter, Maier contends that it owns “common-law trademark 13 rights” in the Mark. (Doc. 12 at 4.) Accordingly, Maier must establish trademark rights in 14 the absence of federal registration. See Hanginout, Inc. v. Google, Inc., 54 F. Supp. 3d 15 1109, 1118 (S.D. Cal. 2014). “To establish enforceable common law trademark rights in 16 a geographical area, a plaintiff must prove that, in that area, (1) it is the senior user of the 17 mark, and (2) it has established legally sufficient market penetration.” Optimal Pets, Inc. 18 v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 959 (C.D. Cal. 2012). Further, to maintain a 19 common law trademark right, there must be a continuing use. See Quiksilver, Inc. v. 20 Kymsta Corp., 466 F.3d 749, 762 (9th Cir. 2006). “To be a continuing use, the use must 21 be maintained without interruption.” Casual Corner Assocs., Inc. v. Casual Stores of 22 Nevada, Inc., 493 F.2d 709, 712 (9th Cir. 1974). Here, Maier has proven its Mark is a 23 valid, distinctive common law trademark. Maier has established that it, and its 24 predecessors-in-interest, have used the Mark continuously and exclusively since 2003. 25 (Doc. 12-1 at 1–4.) Several exhibits show that Maier, for example, has used the Mark as a 26 domain name, in connection with promotional material and legal advertisements, and 27 used the Mark in other forms of commerce. (See Docs. 12-1, 12-2.) That is sufficient to 28 show that there was enough market penetration to establish a common law trademark. 1 Maier has therefore shown that the Mark is a valid common law trademark. 2 With a protected mark, Maier adequately alleges a cybersquatting claim under 15 3 U.S.C. § 1125 (d). An unknown registrant captured Defendant Domain Name and used 4 the protected Mark. “If Defendant Domain Names and Plaintiff’s mark are virtually 5 identical, then they are ‘confusing similar’ under the ACPA.” Opt Out Servs. LLC v. 6 OprOutPrescreen.com, No. 1-20-CV-443-TSE-TCB, 2020 WL 5997310 , at *5 (E.D. Va. 7 Sept. 11, 2020), report and recommendation adopted, No. 1:20-CV-443, 2020 WL 8 5995498 (E.D. Va. Oct. 8, 2020). Here, Defendant Domain Name and Maier’s Mark are 9 identical. This satisfies a showing that these are confusingly similar for purposes of the 10 ACPA. Finally, Maier has shown that there was bad faith intent to profit from this Mark. 11 The unknown registrant’s use of the disputed domain name consisted entirely of Maier’s 12 Mark, was not used in connection with the bona fide offering of goods or services, and 13 was purely commercial. (See Doc. 12-1.) The registrant seemed to intend to, and in fact 14 did, divert consumers from Maier’s location to its own site. (Id.) Thus, after considering 15 the relevant factors, Maier has satisfied its burden to allege a cybersquatting claim and 16 satisfy Eitel’s second and third factors. 17 3. The fourth Eitel factor 18 Under the fourth Eitel factor, the Court considers the amount of money at stake in 19 relation to the seriousness of the defendants’ conduct. See PepsiCo, Inc., 238 F. Supp. 2d 20 at 1176 . If the sum of money at stake is completely disproportionate or inappropriate, 21 default judgment is disfavored. See Twentieth Century Fox Film Corp. v. Streeter, 438 F. 22 Supp. 2d 1065, 1071 (D. Ariz. 2006). In contrast to a complaint’s other allegations, 23 allegations pertaining to damages are not taken as true when considering a motion for 24 default judgment. See Fair Housing of Marin v. Combs, 285 F.3d 899, 906 (9th Cir. 25 2002). A district court has “wide latitude” in determining the amount of damages to 26 award upon default judgment. James v. Frame, 6 F.3d 307, 310 (9th Cir. 1993). Here, 27 Maier does not seek monetary damages. Rather, it “seeks the recovery of the domain 28 name, DianaMaierLaw.com.” (Doc. 12 at 11.) Thus, this factor weighs in favor of the entry of default judgment. 2 4. Conclusion 3 After reviewing the Eite/ factors, the Court finds the Maier is entitled to default judgment against Defendant Domain Name. Because Maier does not seek money 5 || damages, the Court will require GoDaddy to take the necessary steps to have Maier listed 6|| as the registrant of the domain name at issue. 7\| IV. CONCLUSION 8 Accordingly, 9 IT IS ORDERED granting Maier’s Motion for Default Judgment (Doc. 12). 10 IT IS FURTHER ORDERED that GoDaddy shall take all necessary steps to 11 || transfer Defendant Domain Name to Maier and have Maier listed as the registrant of the domain name DianaMaierLaw.com. 13 IT IS FINALLY ORDERED directing the Clerk of the Court to close this case and to enter judgment accordingly. 15 Dated this 12th day of August, 2021. — 16 — Michael T. Liburdi 19 United States District Judge — 20 — — 21 — — 22 — — 23 — — 24 — — 25 — — 26 — — 27 — — 28 — -8-