Lewittes v. Cohen, 2004 U.S. Dist. LEXIS 9467 (S.D.N.Y. May 26, 2004).
Factual Background Edit
Plaintiff is a celebrity journalist who frequently appears on national television. Defendants are plaintiff's former sister-in-law and her brother. Following a divorce proceeding between plaintiff's brother and defendant sister-in-law, defendants registered the domain name "lewittes.com" and used it for a website promising to provide details of the divorce proceedings. The website included titles or statements such as "the story will be told" and "soon to be a major motion picture."
Trial Court Proceedings Edit
Plaintiff sued for defamation, unfair competition, trademark dilution and infringement, and cybersquatting. Defendants moved to dismiss the trademark claims for failure to state a claim, and the court denied the motion except for the ACPA claim.
Regarding the claims for infringement and unfair competition, the court held that the following allegations of plaintiff were sufficient to state a claim: (1) his name is a unique mark that possessed a distinctive secondary commercial meaning, (2) defendants' promise to tell a story and references to a "major motion picture" could show a commercial intent to "entertain," and (3) defendants' future motion picture was in direct competition with plaintiff's own commercial enterprises in this field. The court similarly found that plaintiff's allegations regarding the nature and extent of use of his name were sufficient to deny the motion to dismiss on the dilution claim.
Finally, the court dismissed the ACPA claim, finding that plaintiff did not allege facts sufficient to establish bad faith on the part of defendants. First, plaintiff neither alleged that he had his own website nor asserted that defendants intended to divert traffic from any of plaintiff's websites to the "lewittes.com" site. Second, plaintiff did not allege that defendants offered to sell or transfer the domain name for financial gain. Third, plaintiff did not allege that defendants "warehoused" domain names. In short, the court found that "on the whole, the allegations set forth in the Complaint do not even remotely suggest that defendants perpetrated the core activities that threaten to result in the 'paradigmatic harm that the ACPA was enacted to eradicate.'" However, the court dismissed the ACPA claim without prejudice, thus giving plaintiff the opportunity to later reassert the claim with new facts.
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