The Software IP Report

Bad Faith Supports Preliminary Injunction Under the ACPA

By Charles Bieneman

Categories: Patent Civil Procedure, The Software IP Report

A motion for a preliminary injunction was granted to prevent continued use of the plaintiff’s mark in the defendants’s domain name where the plaintiff was likely to succeed on the merits of its claim under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). West Coast Corvettes Inc. v. MV Marketing Inc., No. SACV 12-0269 (C.D. Cal. April 23, 2012).  The plaintiff owned the mark WEST COAST CORVETTES, and the defendant had been using the domain name “;” it appeared likely that the plaintiff would be able to show that the defendant had acted in bad faith as required by the ACPA.

After dismissing arguments that the plaintiff had not properly served the defendant, and that its motion violated the local rules, the court turned to whether the plaintiff was likely to succeed on the merits of its ACPA claim. The defendant had registered and used the infringing domain name, which was confusingly similar to the plaintiff’s mark.  Also, the plaintiff’s mark was suggestive of products being offered, and was therefore distinctive.

Considering the factors set forth in the ACPA for determining whether the defendant had acted in bad faith, 15 U.S.C. § 1125(d)(1)(B)(i), the court found that “the majority of factors indicate bad faith and the remainder do not apply.”  The defendant had no trademark rights in the domain name, nor did the plaintiff’s mark consist of its name.  The defendant’s use of the domain name was not in connection with bona fide offerings of goods and services, or bona fide non-commercial use. Instead, the defendant used “the Infringing Domain to siphon consumers away from Plaintiff.”  Moreover, the redirection of plaintiff’s customers “could harm the goodwill represented by [Plaintiff’s] mark, either for commercial gain or with the intent to tarnish or disparage [Plaintiff’s] mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.”  The defendant had offered to sell the domain name, further evidencing bad faith.  Finally, the plaintiff’s mark was distinctive.

The balance of the equities tipped sharply in favor of the plaintiff because its mark was being infringed, whereas the defendant stood merely to lose profits that it had obtained from infringing use of that mark.  Likelihood of confusion had been established, and therefore irreparable harm was presumed.  Further, the plaintiff was likely to suffer irreparable harm by the confusion caused to consumers, by the lost business, and by the defendant’s threat to sell the domain name to a third party.  A preliminary injunction was in the public interest, and courts in similar previous situations had issued preliminary injunctions.

Thus, the court granted plaintiff’s motion for a preliminary injunction “to stop continued use of its Mark–WEST COAST CORVETTES–in Corvette Mike’s domain