JYSK Bed'N Linen v. MONOSIJ DUTTA-ROY , 810 F.3d 767 ( 2015 )

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[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 13-15309
________________________
D.C. Docket No. 1:12-cv-03198-TWT
JYSK BED'N LINEN,
as successor to Quick Ship Holding, Inc.,
d.b.a. By Design Furniture,
Plaintiff -
Counter Defendant -
Appellee,
versus
MONOSIJ DUTTA-ROY,
Defendant -
Counter Claimant -
Appellant.
________________________
Appeal from the United States District Court
for the Northern District of Georgia
________________________
(December 16, 2015)
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Before TJOFLAT, WILLIAM PRYOR, and BALDOCK, * Circuit Judges.
TJOFLAT, Circuit Judge:
The Anticybersquatting Consumer Protection Act, § 43(d) of the Lanham
Act, 15 U.S.C. § 1125(d), provides: “A person shall be liable . . . by the owner of a
mark . . . if . . . that person . . . has a bad faith intent to profit from that mark . . .;
and . . . registers, traffics in, or uses a domain name that . . . is identical or
confusingly similar to that mark.” Id. § 1125(d)(1)(A). In this case, the District
Court granted Jysk Bed’N Linen an injunction requiring Monosij Dutta-Roy to
transfer to Jysk four domain names he had registered in his own name. The court
also granted Jysk’s motion for summary judgment on Dutta-Roy’s counterclaims.
Dutta-Roy appeals these two decisions pursuant to 28 U.S.C. § 1291 as if, together,
they constitute a final judgment in the case. 1 They do not because still pending
resolution in the District Court are claims Jysk brought against Dutta-Roy under
*
Honorable Bobby R. Baldock, United States Circuit Judge for the Tenth Circuit, sitting
by designation.
1
The full text of 28 U.S.C. § 1291 provides:
The courts of appeals (other than the United States Court of Appeals for the
Federal Circuit) shall have jurisdiction of appeals from all final decisions of the
district courts of the United States, the United States District Court for the District
of the Canal Zone, the District Court of Guam, and the District Court of the
Virgin Islands, except where a direct review may be had in the Supreme Court.
The jurisdiction of the United States Court of Appeals for the Federal
Circuit shall be limited to the jurisdiction described in sections 1292(c) and (d)
and 1295 of this title.
2
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§§ 43(a) and (c) of the Lanham Act, 15 U.S.C. §§ 1125(a) and (c), and state law.2
Although we lack jurisdiction to entertain Dutta-Roy’s appeal under § 1291, we
have jurisdiction under 28 U.S.C. § 1292(a)(1) to review the District Court’s
injunction. 3 Exercising that jurisdiction, we find no merit in Dutta-Roy’s
challenges to the injunction and therefore affirm.
I.
A.
Jysk Bed’N Linen, Inc. 4 is a retail seller of furniture for the home, office,
and patio operating stores in Georgia, New Jersey, and North Carolina. Since
1990, it has operated under the trade name and common-law trademark By
2
Because there has not been a resolution of all claims by all parties, we do not have
jurisdiction under 28 U.S.C. § 1291. See, e.g., Nat’l Ass’n of Bds. of Pharmacy v. Bd. of Regents
of the Univ. Sys. of Ga., 633 F.3d 1297, 1306 (11th Cir. 2011) (“The district court’s . . . order . . .
was not a final appealable order under 28 U.S.C. § 1291 because it did not resolve all pending
claims against all parties.”).
3
The full text of 28 U.S.C. § 1292(a)(1) provides:
(a) Except as provided in subsections (c) and (d) of this section, the courts
of appeals shall have jurisdiction of appeals from:
(1) Interlocutory orders of the district courts of the United States,
the United States District Court for the District of the Canal Zone,
the District Court of Guam, and the District Court of the Virgin
Islands, or of the judges thereof, granting, continuing, modifying,
refusing or dissolving injunctions, or refusing to dissolve or
modify injunctions, except where a direct review may be had in the
Supreme Court.
The injunctive order the District Court issued is interlocutory because four of Jysk’s
claims are still pending resolution.
4
Dutta-Roy initially dealt with Jysk through its predecessor—Quick Ship Holding, Inc.,
d/b/a By Design Furniture, a company Jysk absorbed. For clarity, we refer to these entities
together throughout the opinion simply as Jysk.
3
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Design.5 In early 1999, Jysk contracted with Monosij Dutta-Roy, Shashi Sonnad,
Ashish Negandhi, and Dev Worah to create an online-shopping website. The
website needed a domain name, so Dutta-Roy was instructed to register the name
bydesignfurniture.com, listing Jysk as the owner.6 Dutta-Roy registered that
domain name, in April 1999, but he listed himself, not Jysk, as the owner.
In September 1999, Dutta-Roy, Sonnad, Negandhi, and Worah formed
Bazaarworks, LLC, and began working on the website. At first, Dutta-Roy worked
on designing the website. After the relationship between Jysk and Bazaarworks
fell apart in 2003, Sonnad took over through her company, Dead Dog, Inc., and
monitored the website’s performance through the filing of this lawsuit.7
On April 9, 2012, Dutta-Roy’s registration of bydesignfurniture.com
expired, which caused Jysk’s website to go down. Jysk immediately discovered
that it did not own the registration because it was in Dutta-Roy’s name, and asked
Dutta-Roy to re-register bydesignfurniture.com in its name. Dutta-Roy refused.
On April 20, he re-registered bydesignfurniture.com and on April 26 he registered
the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-
furnitures.com.
5
The parties dispute whether Jysk’s trademark is By Design or By Design Furniture.
Because, as explained in part II.A.2, infra, the domain names at issue are identical or confusingly
similar to both, it is immaterial which trademark Jysk actually owns.
6
As we indicate in part I.B, infra, this point is disputed by the parties.
7
Sonnad’s work included major redesigning of the website in 2006 and 2008.
4
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Dutta-Roy thereafter offered to transfer the domain names to Jysk “if [he
was] adequately compensated solely for the over 4,000 hours work [he] . . .
performed for [Jysk] pursuant to the Partnership Agreement” between
Bazaarworks, LLC and Jysk’s predecessor, Quick Ship Holding, Inc. The
agreement never existed; therefore, Jysk rejected Dutta-Roy’s offer. It filed this
lawsuit instead.
B.
Jysk brought this action against Dutta-Roy in the Northern District of
Georgia on September 12, 2012. Its complaint contained five counts. Our
discussion today deals with only one of the counts, Jysk’s claim under the
Anticybersquatting Consumer Protection Act (“ACPA”). 8 The ACPA count
recited the facts set out in part I.A above, with the exception of Dutta-Roy’s
registration on April 26, 2012, of the domain names bydesignfurniture.org,
bydesignfurnitures.com, and bydesign-furnitures.com, and alleged that Dutta-Roy
intended in bad faith “to profit from the registration and use of the Internet domain
name bydesignfurniture.com by creating an association with [Jysk]’s famous
bydesignfurniture.com trademark as to source or sponsorship and further by
intending to dilute the distinctive quality of, [Jysk]’s famous
8
The counts we do not address in this opinion because they are still pending in the
District Court are claims for unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. §
1125(a); trademark dilution under § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); and unfair
competition and conversion under Georgia law.
5
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bydesignfurniture.com trademark.” The ACPA count sought preliminary and
permanent injunctive relief, including an order requiring Dutta-Roy “to relinquish
all rights in the Internet domain name bydesignfurniture.com.”
Dutta-Roy’s answer denied that he was instructed to register the domain
name bydesignfurniture.com and designate Jysk as the owner, and that he intended
to profit by maintaining the registration in his name. 9 After answering Jysk’s
complaint, Dutta-Roy moved the District Court for leave to join Bazaarworks, LLC
as a party. The court denied the motion. 10 At this point, Dutta-Roy’s attorneys
moved the court for leave to withdraw. 11 The court granted the motion, and Dutta-
Roy decided to proceed pro se.12 Shortly thereafter, Jysk moved the District Court
for a preliminary injunction. Jysk requested the court to enjoin Dutta-Roy from:
9
Dutta-Roy accompanied his answer with a counterclaim containing six counts for
monetary relief based on Jysk’s breach of a partnership agreement Bazaarworks, LLC had
allegedly made with Jysk’s predecessor, Quick Ship Holding, Inc. According to Dutta-Roy,
Quick Ship Holding agreed to compensate Dutta-Roy and Bazaarworks, LLC based upon
levels of revenue generated through the online-shopping website.
Specifically, it was agreed that Dutta-Roy and Bazaarworks, LLC would
receive twelve percent (12%) of sales if the sales were less than One
Million Dollars ($1,000,000.00), eleven percent ( 11%) if the sales were
between One and Two Million Dollars ($1,000,000.00 and $2,000,000.00)
and ten percent (10%) of sales if sales exceeded Two Million Dollars
($2,000,000.00) attributable to the website.
Doc. 5 at 17.
10
The court denied Dutta-Roy’s motion because Bazaarworks, LLC had been dissolved
in 2005.
11
Counsel moved the court for leave to withdraw due to their inability to agree with
Dutta-Roy on an appropriate litigation strategy.
12
Dutta-Roy is prosecuting this appeal pro se.
6
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I. Doing anything with or to the registration of the
bydesignfurniture.com domain that would cause the
Plaintiff’s website to be unable to be accessed by the
public, or result in the removal of the domain from the
internet;
II. Transferring ownership of the bydesignfurniture.com
domain to anyone, other than the Plaintiff;
III. Altering in any way the current contents of the
bydesignfurniture.com domain and website; and
IV. Doing anything that would cause a change in the current
status quo of the bydesignfurniture.com trademark.
The court granted the preliminary injunction as to requests I, II, and IV and denied
it with respect to request III. 13
At the close of discovery, Jysk moved the District Court for partial summary
judgment. In effect, the motion sought an expansion of the preliminary injunction
previously issued with respect to Jysk’s ACPA claim so that the injunction would
cover the domain names bydesignfurniture.org, bydesignfurnitures.com, and
bydesign-furnitures.com in addition to bydesignfurniture.com.14 The court granted
the motion. It found that Dutta-Roy, in re-registering bydesignfurniture.com on
April 20, 2012, and in registering bydesignfurniture.org, bydesignfurnitures.com,
13
A transcript of the hearing the District Court held on Jysk’s motion for a preliminary
injunction is not part of the record on appeal.
14
Jysk also moved the District Court for summary judgment on Dutta-Roy’s
counterclaims. As indicated in the opening paragraph of this opinion, the court granted the
motion.
7
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and bydesign-furnitures.com on April 26, 2012, did so in bad faith, violating Jysk’s
rights under the ACPA, and ordered him to transfer the names to Jysk.15
II.
We review Dutta-Roy’s appeal of the District Court’s preliminary injunction
for an abuse of discretion. BellSouth Telecomms., Inc. v. MCIMetro Access
Transmission Servs., LLC, 425 F.3d 964, 968 (11th Cir. 2005). “‘A district court
abuses its discretion if it applies an incorrect legal standard, follows improper
procedures in making the determination, or makes findings of fact that are clearly
erroneous.’ A district court may also abuse its discretion by applying the law in an
unreasonable or incorrect manner.” Klay v. United Healthgroup, Inc., 376 F.3d
1092, 1096 (11th Cir. 2004) (citation omitted) (quoting Martin v. Automobili
Lamborghini Exclusive, Inc., 307 F.3d 1332, 1336 (11th Cir. 2002)).
Jysk was entitled to a preliminary injunction if it showed: “(1) a substantial
likelihood of success on the merits; (2) that irreparable injury will be suffered
unless the injunction is issued; (3) the threatened injury to the moving party
outweighs whatever damage the proposed injunction might cause the non-moving
party; and (4) if issued, the injunction would not be adverse to the public interest.”
BellSouth Telecomms., Inc., 425 F.3d at 968 (citing Four Seasons Hotels &
15
The court also awarded Jysk statutory damages of $4,000.
8
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Resorts, B.V. v. Consorcio Barr, S.A., 320 F.3d 1205, 1210 (11th Cir. 2003)).16
We review each of the factors in turn.
A.
Jysk’s “substantial likelihood of success on the merits” turns on a
preliminary question: whether Dutta-Roy’s re-registration of
bydesignfurniture.com falls within the ACPA’s “registration” hook. We hold that
the re-registration constituted a registration under the ACPA and that Jysk is likely
to succeed on the merits of its ACPA claim.
1.
Dutta-Roy argues that the District Court erred in determining that his
conduct fell within the ACPA. Read generously, his argument is this: his re-
registration of bydesignfurniture.com, on which the District Court based its finding
16
“‘The standard for [obtaining] a preliminary injunction is essentially the same as for a
permanent injunction with the exception that the plaintiff must show a likelihood of success on
the merits rather than actual success.’” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 32,
129 S. Ct. 365, 381, 172 L. Ed. 2d 249 (2008) (quoting Amoco Prod. Co. v. Vill. of Gambell, 480
U.S. 531, 546 n.12, 107 S. Ct. 1396, 1404, 94 L. Ed. 2d 542 (1987)).
After prevailing on the merits,
“[A] plaintiff seeking a permanent injunction must satisfy a four-factor test before
a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered
an irreparable injury; (2) that remedies available at law, such as monetary
damages, are inadequate to compensate for that injury; (3) that, considering the
balance of hardships between the plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not be disserved by a permanent
injunction.”
Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 156–57, 130 S. Ct. 2743, 2756,
177 L. Ed. 2d 461 (2010) (alteration in original) (quoting eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388, 391, 126 S. Ct. 1837, 1839 164 L. Ed. 2d 641 (2006)).
9
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of bad faith, could not have violated the ACPA because re-registrations are not
“registrations” within the purview of the statute. We disagree.
Internet websites are located at Internet Protocol (“IP”) addresses, which
consist of a string of numbers. Karl M. Manheim & Lawrence B. Solum, An
Economic Analysis of Domain Name Policy, 25 Hastings Comm. & Ent. L. J. 359,
364–65 (2003). “An Internet domain name is an alpha-numeric mnemonic device
that can be mapped onto an [IP] address to enable users” to more easily access
websites. Jacqueline D. Lipton, Beyond Cybersquatting: Taking Domain Name
Disputes Past Trademark Policy, 40 Wake Forest L. Rev. 1361, 1365 (2005).
Domain names are unique. Manheim & Solum, supra, at 364. It is therefore
important that the trademark owner reserve the domain name closely associated
with or identical to its trademark so that it may take advantage of its goodwill. The
registration of domain names is managed by the private organization Internet
Corporation for Assigned Names and Numbers (“ICANN”). Lipton, supra, at
1366–67. ICANN oversees numerous third-party registries with which the
applicant registers the domain name. Id. at 1367. The third-party registry is
referred to as the registrar, and the applicant, who later becomes the owner of the
domain name, is referred to as the registrant.
The ACPA was enacted to prevent cybersquatting. S. Grouts & Mortars,
Inc. v. 3M Co., 575 F.3d 1235, 1246 (11th Cir. 2009). Cybersquatting is
10
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essentially extortion. Cybersquatting can take the form of “register[ing] numerous
domain names containing . . . trademarks or tradenames only to hold them ransom
in exchange for money.” Id. at 1247 (quotation marks omitted) (quoting H.R. Rep.
No. 106-412 (1999)). Another form of cybersquatting occurs when the
cybersquatter “intend[s] to profit by diverting customers from the website of the
trademark owner to the defendant’s own website, where those consumers would
purchase the defendant’s products or services instead of the trademark owner’s.”
Id. (quotation marks omitted) (quoting Utah Lighthouse Ministry v. Found. for
Apologetic Info. and Research, 527 F.3d 1045, 1058 (10th Cir. 2008)). In a sense,
the cybersquatter muddies the clear pool of the trademark owner’s goodwill and
then profits off the resulting murkiness.
The ACPA provides that,
A person shall be liable in a civil action by the owner of a mark . . . if
. . . that person—
(i) has a bad faith intent to profit from that mark . . .; and
(ii) registers, traffics in, or uses a domain name that . . . in the case of
a mark that is distinctive at the time of registration of the domain
name, is identical or confusingly similar to that mark. 17
17
The full text of the relevant provision is as follows:
(1)(A) A person shall be liable in a civil action by the owner of a mark, including
a personal name which is protected as a mark under this section if, without regard
to the goods or services of the parties, that person—
(i) has a bad faith intent to profit from that mark, including a personal
name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that—
11
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15 U.S.C. § 1125(d)(1)(A) (emphasis added). There are three statutory conduct
hooks that can land a defendant within the purview of the ACPA: “register[ing],”
“traffic[king] in,” and “us[ing]” a domain name. Id. That defendant will violate
the ACPA if it commits in bad faith one of these three actions with respect to a
domain name that is identical or confusingly similar to a distinctive mark. Id. The
statute provides a list of nine factors that may be considered by the court when
determining whether the defendant “ha[d] a bad faith intent to profit from th[e]
mark.” Id. Those factors are:
1. Whether the defendant has a “trademark or other intellectual property
rights” in the domain name;
2. Whether the domain name refers to the legal name of the defendant;
3. Whether the defendant ever used the domain name “in connection with
the bona fide offering of any goods or services;”
4. Whether the defendant has a “bona fide noncommercial or fair use of the
mark in a site accessible under the domain name;”
(I) in the case of a mark that is distinctive at the time of registration
of the domain name, is identical or confusingly similar to that
mark; or
(II) in the case of a famous mark that is famous at the time of
registration of the domain name, is identical or confusingly similar
to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section
706 of Title 18 or section 220506 of Title 36.
15 U.S.C. § 1125(d)(1)(A).
12
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5. Whether the defendant has an “intent to divert consumers” from the mark
owner’s website to his own, either for commercial gain “or with the intent to
tarnish or disparage the mark,” when that diversion could cause harm to the
mark owner’s goodwill;
6. Whether the defendant offers to transfer or sell the domain name for
financial gain when he has not used or had an intent to use the domain name
in connection with “the bona fide offering of any goods or services;”
7. Whether the defendant provides “material and misleading false contact
information when applying for the registration of the domain name” or the
defendant “intentional[ly] fail[s] to maintain accurate contact information”;
8. Whether the defendant acquired multiple domain names that the defendant
knows are identical or confusingly similar to distinctive marks; and
9. Whether the mark is distinctive or famous. 18
18
The full text of the statutory factors is as follows:
(B)(i) In determining whether a person has a bad faith intent described under
subparagraph (A), a court may consider factors such as, but not limited to—
(I) the trademark or other intellectual property rights of the person, if any,
in the domain name;
(II) the extent to which the domain name consists of the legal name of the
person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with
the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site
accessible under the domain name;
(V) the person’s intent to divert consumers from 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;
(VI) the person’s offer to transfer, sell, or 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;
13
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Id. § 1125(d)(1)(B)(i). There is also a safe-harbor provision in the ACPA that
provides that “[b]ad faith intent . . . shall not be found in any case in which the
court determines that the person believed and had reasonable grounds to believe
that the use of the domain name was a fair use or otherwise lawful.” Id. §
1125(d)(1)(B)(ii).19
We review a district court’s interpretation of a statute de novo. Silva-
Hernandez v. U.S. Bureau of Citizenship & Immigration Servs., 701 F.3d 356, 361
(11th Cir. 2012) (quoting Serrano v. U.S. Att’y Gen., 655 F.3d 1260, 1264 (11th
Cir. 2011)). The District Court assumed without discussion that a re-registration
(VII) the person’s provision of material and misleading false contact
information when applying for the registration of the domain name, the
person’s intentional failure to maintain accurate contact information, or
the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition 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 names, or
dilutive of famous marks of others that are famous at the time of
registration of such domain names, without regard to the goods or services
of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain
name registration is or is not distinctive and famous within the meaning of
subsection (c) of this section.
15. U.S.C. § 1125(d)(1)(B).
19
The full text of the safe-harbor provision is: “Bad faith intent described under
subparagraph (A) shall not be found in any case in which the court determines that the person
believed and has reasonable grounds to believe that the use of the domain name was a fair use or
otherwise lawful.” 15 U.S.C. § 1125(d)(B)(ii).
14
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falls within the ACPA’s purview under the Act’s registration hook. This is an
issue of first impression for our circuit.
Two of our sister circuits have provided divergent answers to this question.
The Third Circuit, in Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003), found
that a re-registration falls within the registration hook of the ACPA. Id. at 581. It
explained that “the language of the statute does not limit the word ‘registration’ to
the narrow concept of ‘creation registration’” and that “[t]he words ‘initial’ and
‘creation’ appear nowhere in [the statute].” Id. at 582–83. The Third Circuit
likened the registration of the domain name to a contract between the registrar and
the registrant, and specifically held “that the word ‘registration’ includes a new
contract at a different registrar and to a different registrant.” Id. at 583.
The Ninth Circuit came to the opposite conclusion in GoPets Ltd.v. Hise,
657 F.3d 1024 (9th Cir. 2011), holding that a re-registration is not a registration for
purposes of the ACPA. Id. at 1032. The Ninth Circuit viewed the domain-name
registration through the lens of property law, rather than through the Third
Circuit’s analogy to contract law. Id. at 1031. It reasoned that a registrant owns a
property right in the domain name when he registers it, and therefore he is entitled
to transfer that property to another owner. Id. “The general rule is that a property
owner may sell all of the rights he holds in property.” Id. The Ninth Circuit
worried that if it were to hold that a re-registration fell within the purview of the
15
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Act, it “would make rights to many domain names effectively inalienable, whether
the alienation is by gift, inheritance, sale or other form of transfer.” Id. at 1031–
32.
We agree with the Third Circuit. The Act does not define the term register.
The Act nowhere contains the qualifications of initial or creation when it refers to
the act of registering. It refers simply to a registration, and a re-registration is, by
definition, a registration. To “re-register” is “[t]o register again.” Re-register, v.,
Oxford English Dictionary (2015). “When the language of a statute is plain and
unambiguous we must apply that meaning.” Cox Enters., Inc. v. Pension Benefit
Guar. Corp., 666 F.3d 697, 704 (11th Cir. 2012); see also Redus Fla. Commercial,
LLC v. Coll. Station Retail Ctr., LLC, 777 F.3d 1187, 1191 (11th Cir. 2014)
(“Generally, words are interpreted with their ordinary and plain meaning because
we assume that [the legislature] uses words in a statute as they are commonly
understood.” (citation, quotation marks, and alterations omitted)).
Including re-registrations under the registration hook comports with the
purpose of Congress in enacting the ACPA—to prevent cybersquatting. See S.
Grouts & Mortars, Inc., 575 F.3d at 1246–47 (“Registering a famous trademark as
a domain name and then offering it for sale to the trademark owner is exactly the
wrong Congress intended to remedy when it passed the ACPA.” (quotation marks
omitted) (quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir.
16
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2003))). It would be nonsensical to exempt the bad-faith re-registration of a
domain name simply because the bad-faith behavior occurred during a noninitial
registration, thereby allowing the exact behavior that Congress sought to prevent.
We accordingly will not read additional words into the statute such as initial
or creation. The plain meaning of register includes a re-registration. The District
Court correctly held that a re-registration falls within the purview of the ACPA.
2.
Next, we must determine whether the District Court correctly determined
that Jysk was likely to succeed on the merits of its ACPA claim. To show a
violation of the ACPA, Jysk had to show that Dutta-Roy registered the domain
name, that the domain name was identical or confusingly similar to its trademark
that was distinctive at the time of the registration, and that the domain name was
registered in bad faith. 15 U.S.C. § 1125(d). There is no dispute that
bydesignfurniture.com, bydesignfurniture.org, bydesignfurnitures.com, and
bydesign-furnitures.com were registered by Dutta-Roy, and there is no serious
dispute that bydesignfurniture.com, bydesignfurniture.org, bydesignfurnitures.com,
and bydesign-furnitures.com are identical or at least confusingly similar to Jysk’s
17
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marks bydesignfurniture.com and By Design. Jysk has also established that it owns
the marks bydesignfurniture.com and By Design. 20
A distinctive mark “serve[s] the purpose of identifying the source of the
goods or services.” Welding Servs. Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir.
2007). “Trademark law distinguishes four gradations of distinctiveness of marks,
in descending order of strength: fanciful or arbitrary, suggestive, descriptive, and
generic.” 21 Id. A descriptive mark
can acquire distinctiveness or “secondary meaning” by becoming associated
with the proprietor’s product or service. . . . A name has acquired secondary
meaning when “the primary significance of the term in the minds of the
[consuming] public is not the product but the producer.” . . . A proprietor
can make a prima facie showing of “secondary meaning” by showing that
the name has been used in connection with the proprietor’s goods or service
continuously and substantially exclusively for five years.
20
Dutta-Roy suggests that he, rather than Jysk, owns the bydesignfurniture.com mark.
It is true that Dutta-Roy has control of the domain name bydesignfurniture.com. But it is not
clear that Dutta-Roy understands that it is possible for bydesignfurniture.com to serve as both a
domain name and a trademark and for control of these two to vest in different entities, as it does
here. “Common-law trademark rights are ‘appropriated only through actual prior use in
commerce.’” Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1321 (11th Cir. 2011)
(quoting Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193–94 (11th Cir. 2001)).
The District Court correctly concluded that Jysk owns the common-law trademarks By Design
and bydesignfurniture.com because Jysk has been using the marks in commerce in connection
with its goods since at least 1990 and 1999, respectively.
21
A generic mark is not distinctive and “may not be registered as a trademark.” Welding
Servs. Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007). Within the remaining three
gradations, marks can either be inherently distinctive or they can acquire distinctiveness “by
becoming associated with the proprietor’s product or service.” Id. Marks that are merely
descriptive require acquired distinctiveness, while suggestive and fanciful or arbitrary marks are
inherently distinctive. Id. A merely descriptive mark “identifies a characteristic or quality of the
service or product.” Id.
18
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Id. (alteration in original) (quoting Am. Television & Commc’ns Corp. v. Am.
Commc’ns & Television, Inc., 810 F.2d 1546, 1548–49 (11th Cir. 1987)). We need
not determine which gradation of distinctiveness Jysk’s marks fall under; all we
need decide is whether they are distinctive.
Jysk’s marks were distinctive when Dutta-Roy registered the domain names
in 2012. Even if bydesignfurniture.com and By Design are merely descriptive of
Jysk’s furniture, Jysk has been using these marks for far more than five years, and
the marks therefore have acquired secondary meaning. See id. Additionally, in a
November 2012 letter, the United States Patent and Trademark Office responded to
Jysk’s application for acquired distinctiveness status for the bydesignfurniture.com
mark, stating that the application was “unnecessary because the mark appears to be
inherently distinctive and is eligible for registration on the Principal Register
without proof of acquired distinctiveness.” Jysk’s marks bydesignfurniture.com
and By Design are therefore distinctive.
Dutta-Roy argues that he did not act in bad faith when registering the
domain names. The District Court found that at least five of the nine permissive
statutory factors of bad faith were relevant to Dutta-Roy’s actions:
Here, the 2012 registrations of bydesignfurniture.com,
bydesignfurniture.org, bydesignfurnitures.com, and bydesign-
furnitures.com were made in bad faith. The Defendant does not have
intellectual property rights in the bydesignfurniture.com trade name.
The Defendant has never used the websites for a bona fide offering of
goods or services. The Defendant re-registered bydesignfurniture.com
19
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and registered the three similar domain names after the Plaintiff
approached him to recover the bydesignfurniture.com domain name.
Further, the Defendant demanded payment from the Plaintiff for the
domain names, and the Defendant admits he intends to profit from the
registration and use of the domain name.
We agree with the District Court’s analysis. When Dutta-Roy re-registered
bydesignfurniture.com under his own name rather than Jysk’s, he was expressing
his intent or ability to infringe on Jysk’s trademark. He admitted that he never had
used the domain names in the bona fide offering of any goods or services. His
demand for money can be looked at in two ways, and they are two sides of the
same coin. First, the amount of money demanded could show how much he
believes the domain name smudges the goodwill of the trademark—that is, how
much money Jysk would lose out on if Dutta-Roy were to use the domain names to
misdirect Jysk’s customers. Second, the amount of money demanded could show
how much value he believes Jysk puts on the domain names. In either case, bad-
faith intent abounds.
As for the factors, we find one, three, six, and eight relevant.22 Dutta-Roy
does not have any intellectual-property rights in the domain names, nor does he
22
Those factors are, again:
(I) the trademark or other intellectual property rights of the person, if any,
in the domain name; . . .
(III) the person’s prior use, if any, of the domain name in connection with
the bona fide offering of any goods or services; . . .
20
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offer or has ever offered any goods or services in connection with the domain
names. Dutta-Roy did offer to transfer or sell the domain name to the mark owner,
Jysk, for financial gain without having used it in connection with the offering of
any goods or services. Dutta-Roy did register multiple domain names that he knew
are identical or confusingly similar to Jysk’s marks.
Finally, Dutta-Roy is unable to take advantage of the ACPA safe harbor,
which provides that bad faith will not be found when “the person believed and had
reasonable grounds to believe that the use of the domain name was a fair use or
otherwise lawful.” 15 U.S.C. § 1125(d)(B)(ii). Dutta-Roy’s apparent belief that he
was entitled to take the domain name hostage in exchange for the alleged contract
price in the partnership agreement purportedly entered into by Jysk’s predecessor
(VI) the person’s offer to transfer, sell, or 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; . . .
(VIII) the person’s registration or acquisition of multiple domain names
which the person knows are identical or confusingly similar to marks of
others that are distinctive at the time of registration of such domain names,
or dilutive of famous marks of others that are famous at the time of
registration of such domain names, without regard to the goods or services
of the parties.
15 U.S.C. § 1125(d)(1)(B).
21
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and Bazaarworks, LLC 23 is without basis in the agreement or in law, and therefore
unreasonable.
Because Jysk showed that Dutta-Roy registered the domain names, that the
domain names were identical or confusingly similar to Jysk’s distinctive mark at
the time of the registration, that Dutta-Roy had bad-faith intent at the time of the
registrations, and that Dutta-Roy cannot avail himself of the safe harbor’s
protections, Jysk has shown that it is substantially likely to prevail on the merits of
its ACPA claims.
B.
Next, we must determine whether the District Court erred in determining
that Jysk would suffer irreparable injury unless the injunction issued, that the
balance of harms weighed in Jysk’s favor, and that the public interest would not be
disserved by the injunction. BellSouth Telecomms., Inc., 425 F.3d at 968. If the
websites were not transferred to Jysk, Jysk would not have had full control over
websites that bear its trademark and could have lost goodwill. “Although
economic losses alone do not justify a preliminary injunction, ‘the loss of
customers and goodwill is an irreparable injury.’” Id. at 970 (quoting Ferrero v.
Associated Materials Inc., 923 F.2d 1441, 1449 (11th Cir. 1991)). Dutta-Roy was
not using the domain name in any way other than to host Jysk’s website. He was
23
See supra note 9.
22
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not offering any goods or services for sale nor even charging Jysk a licensing price
for the use of the domain name. Therefore, there is no potential harm to Dutta-
Roy, and the balance of harms weighs in Jysk’s favor. Finally, the injunction will
not disserve the public interest because it places the domain names in the hands of
their rightful owner: the trademark holder. Dutta-Roy’s actions are those of a
cybersquatter, and therefore granting an injunction to Jysk fulfills Congress’s
policy goals in enacting the ACPA.
III.
For the foregoing reasons, we conclude that the District Court’s issuance of
the preliminary injunction did not constitute an abuse of discretion and is
accordingly AFFIRMED. 24
AFFIRMED.
24
Dutta-Roy’s appeal of the District Court’s order granting Jysk summary judgment on
his counterclaims is dismissed for lack of jurisdiction. See 28 U.S.C. § 1291.
23