Citation Edit

PGC Property, LLC v. Wainscott/Sagaponack Property Owners, Inc., 250 F.Supp.2d 136 (E.D.N.Y. 2003) (full-text).

Factual Background Edit

Plaintiffs owned the POXABOGUE golf facility, a 40-acre golf and recreational facility located in the Poxabogue area in Southampton, New York, that had been in business since 1962. The name "Poxabogue" is also the name of a pond, a street, and a local preserve. In September 2000, plaintiff submitted an application to the local zoning authorities to expand the POXABOGUE facility. Defendants, a local nonprofit civic association and some of its members, registered the domain name "" in August 2001 and used the website to voice their opposition to plaintiff's proposed expansion. This website also contained a link to the civic association's website, which allegedly solicited funds for the group's opposition to plaintiffs' expansion efforts.

Trial Court Proceedings Edit

Plaintiffs filed suit for trademark infringement, unfair competition, and cybersquatting. Defendants filed a counterclaim under the New York State Civil Rights Law, which prohibits strategic lawsuits against public participation (i.e., SLAPP suits), alleging that plaintiffs filed this lawsuit solely to inhibit their free exercise of speech. The court denied defendants' motion for summary judgment on their counterclaim and plaintiffs' trademark infringement claims. It also denied plaintiffs' motion for judgment on the pleadings on defendants' counterclaim.

Regarding plaintiffs' trademark infringement claim, the court initially rejected defendants' argument that plaintiffs had no standing to bring a Section 43(a) claim because defendants did not offer any golf-related services and thus could not commercially or competitively injure plaintiffs. Plaintiffs' allegations regarding defendants' diversion of customers and prospective customers from plaintiffs' site to defendants' site, however, were sufficient to give plaintiffs standing.

Turning to the merits of the infringement claim, the court held that genuine issues of material fact existed on whether defendants' use of POXABOGUE was commercial and, if so, whether it caused a likelihood of confusion. Summary judgment was also not appropriate because plaintiffs had not yet had the opportunity to conduct any discovery. Nor was summary judgment appropriate on plaintiffs' cybersquatting claim due to genuine issues of material fact about whether POXABOGUE was distinctive and whether defendants registered "" in bad faith with an intent to profit from plaintiffs' mark. Finally, because no discovery had been taken and the record was limited, the court denied defendants' motion for summary judgment and plaintiffs' motion for judgment regarding defendants' counterclaim.

Source Edit

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