Citation[]
Agri-Supply Co. v. Agrisupply.com, 457 F. Supp. 2d 660 (E.D. Va. 2006) (full-text).
Factual Background[]
Plaintiff sold agricultural supplies under the trademark AGRI-SUPPLY and the domain name "agri-supply.com." Modern Limited-Cayman Web Development ("Cayman") registered the domain name "agrisupply.com," which contained links to plaintiff's competitors. Plaintiff sued the "agrisupply.com" domain name for trademark infringement and cybersquatting.
Trial Court Decision[]
The court initially denied plaintiff's request for in rem jurisdiction, but permitted plaintiff to proceed in rem after plaintiff published notice of this action in a Cayman newspaper. Cayman failed to file an answer and plaintiff moved for default judgment. The court initially noted that by defaulting defendant admitted plaintiff's well-pleaded allegations of fact.
Regarding cybersquatting, the court held that the "agrisupply.com" domain name was "virtually identical" to plaintiff's mark and thus confusingly similar. It also held that defendant acted in bad faith based on plaintiff's allegations that: (1) Cayman had no legitimate interest in the "agrisupply.com" domain name, (2) Cayman used its website to promote plaintiff's competitors, (3) the "agrisupply.com" name used plaintiff's legal name, (4) Cayman conducted no business under the AGRISUPPLY mark, (5) Cayman made no noncommercial or fair use of the mark, and (6) Cayman was "notorious for this type of behavior." On this latter point, plaintiff submitted multiple UDRP decisions against Cayman documenting Cayman's "history of cybersquatting." The court also held that plaintiff alleged the prima facie elements of trademark infringement.
Turning to remedies, the court granted plaintiff's request for an order requiring Verisign, as the registry, to change the registrar of record to a registrar selected by plaintiff, which will then register the domain name in plaintiff's name. Plaintiff also requested attorney's fees and court costs based on Cayman ignoring plaintiff's demands and this suit and on Cayman's history of cybersquatting.
Even though the ACPA provides that "the remedies in an in rem action . . . [are] limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark," 15 U.S.C. § 1125(d)(2)(D)(i), the court held that an in rem plaintiff can also recover the remedies provided under the Lanham Act, 15 U.S.C. §1117(a), including actual damages, costs, and attorney's fees. The court noted that §1117(a) makes no distinction between in personam and in rem cases and specifically mentions a violation of §1125(d) as a basis for recovering the types of monetary relief provided by §1117(a). Moreover, the ACPA also states that "the in rem action established under paragraph (2), and any available remedy under [that] section, shall be in addition to any other civil action or remedy otherwise applicable" 15 U.S.C. §1125(d)(2)(D)(3). The court then awarded attorney's fees because defendant's conduct was "willful, deliberate, and in bad faith," which made the case "exceptional." The court also awarded costs.
Source[]
- This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).