U.S. Magistrate Judge Theresa Carroll Buchanan granted Plaintiff Metropark USA a permanent injunction transferring ownership of Defendant www.Metropark.net in the Anti-cybersquatting Consumer Protect Act and federal trademark infringement in the case Metropark United States v. Metropark, 2010 U.S. Dist. LEXIS 78674 (D. Va. 2010).
The decision (but because it is a Magistrate ruling it is really only a recommendation) was rendered and entered in default on July 8, 2010 in the U.S. District Court for the Eastern District of Virginia, Alexandria Virginia. In this federal cybersquatting claim, the D.C. for the E.D. Virginia exercised in rem jurisdiction over Defendant Domain Name www.Metropark.net and because the Domain Name registrant failed to reply to the complaint or otherwise appear before the court in these proceedings the Magistrate judge entered her recommendation in a default ruling against the Defendant Domain Name.
Brief history of the parties involved;
Plaintiff Metropark USA is a Delaware corporation and has continued to be the federally registered trademark owner of the mark at issue, the plain text ‘METROPARK’, since September 2004. Metropark USA is also the valid registrant of www.Metroparkusa.com, through which it solicits and offers services in the business of operating retail stores and selling men’s and women’s clothing and accessories to millions of people each year.
On October 2, 2009, a registrant registered the domain name www.Metropark.net (Defendant/Domain Name). Subsequent to registration, the Domain Name has been used commercially by the registrant to advertise the sale of men’s and women’s clothing and accessories in competition with Metropark USA’s services. Web users who visit the Domain Name are presented with links to commercial web sites other than that operated by Plaintiff where they can find goods and services that are substantially identical to and competitive with the goods and services offered by Metropark USA.
Metropark USA sought a permanent injunction to transfer ownership of the Domain Names to Metropark USA;
Plaintiff Metropark USA alleged that it had suffered and continues to suffer, irreparable harm to its reputation and goodwill as a result of the registration and ongoing use of the Domain Name. Therefore, Metropark USA sought a permanent injunction transferring ownership of the Domain Name to Metropark USA.
The Lanham Act under the Anti-cybersquatting Consumer Protection Act;
Under authority provided by the Lanham Act, Metropark USA was able to file an in rem civil action against the Domain Name in the district in which the domain name registrar, registry, or other authority that registered or assigned the domain is located, where that domain name violates any right of the owner of a mark protected under 15 U.S.C. § 1125(a) or (c).
Consequently, Metropark USA was able to bring this action against the www.metropark.net domain name in the U.S. District Court for the Eastern District of Virginia, Alexandria Virginia, because the registry service for that domain name is located within the district.
Although this is an in rem proceeding against the Domain Name and not the registrant (owner), a finding of a history of bad-faith domain name registration on behalf of the registrant does lend weight to a determination of bad-faith registration in the current proceeding. Along these lines, Magistrate Judge Buchanan found these factors highly influential in determining whether the current Domain Name registration was in bad-faith;
1. Registrant previously involved in numerous past actions in which it was accused of engaging in a pattern of bad-faith registration and use of domain names;
2. Registrant lost numerous proceedings in which it was accused of engaging in a bad-faith registration and use of domain names; and
3. Registrant is the current registrant of multiple domain names that typoquat or mimic famous trademarks of third-parties, including <bankofamericaa.com>, <dicksportinggood.com>, <abcnewschicago.com> and <officedeppotcom.com>.
Magistrate Judge Buchanan found: a likelihood of confusion between the Defendant domain name and Plaintiff’s services; Defendant’s registrant engaged in a pattern of bad faith registration; and Defendant domain name was registered with bad faith intent of profiting from Plaintiff’s trademark;
“The Domain Name is continuing to be used to market goods and services that are substantially identical to and competitive with the goods and services that plaintiff offers under the Mark. (Compl. ¶ 20.) The minimal differences between the site associated with the Domain Name and plaintiff’s site merely serves to further deceive customers and harm plaintiff. Additionally, registrant has engaged in a pattern of bad faith registration and use of domains by acquiring multiple domain names which it knows to be identical or confusingly similar to the marks of others that are distinctive at the time of registration of such domain names. (Compl. ¶¶ 40-41.).”
U.S. Magistrate Judge Theresa Carroll Buchanan delivered the opinion of the court, recommending that default judgment be entered in favor of Metropark USA for the transfer of ownership of the Domain Name (www.metropark.net) for violations of the Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(a).