ZP NO. 314, LLC v. ILM Capital, LLC et al

Filing 130

ORDER granting in part and denying in part 82 Motion for Summary Judgment; granting in part and denying in part 94 Motion for Summary Judgment; denying 106 Sealed Motion as set out in Conclusion. Signed by Magistrate Judge Sonja F. Bivins on 9/27/18. (mpp) Copies to counsel

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ALABAMA
SOUTHERN DIVISION
ZP NO. 314, LLC,
Plaintiff,
vs.
ILM CAPITAL, LLC, et. al.,
Defendants.

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CIVIL ACTION NO. 16-00521-B

ORDER
This action is before the Court on Plaintiff ZP No. 314, LLC’s
motion for summary judgment and evidentiary materials (Doc. 106),
Defendants’

response

and

evidentiary

materials

in

opposition

thereto (Docs. 115, 116, 117), and Plaintiff’s reply (Doc. 121,
122).

Also pending before the Court are Defendants’ motions for

summary judgment and evidentiary materials (Doc. 82, 84, 85, 94,
95, 96, 97, 98, 99, 100, 101, 102, 103), Plaintiff’s response and
evidentiary materials in opposition thereto (Doc. 87, 88, 121),
and Defendants’ reply (Doc. 89, 90, 91, 123, 124, 125).

These

motions have been fully briefed and are ripe for resolution.
I.

INTRODUCTION
This trademark action involves One Ten Student Living and

Campus Quarters, which are competing off-campus student housing
facilities located in close vicinity to each other and owned and
operated by Plaintiff ZP No. 314, LLC (hereinafter “Plaintiff” or
“ZP”) and the Defendants, respectively.

ZP is a limited liability

company and owner of One Ten Student Living (“One Ten”), which
provides student housing and related services to local college
students.

(Doc. 60 at 4; Doc. 106 at 1).

The One Ten facility is

located at 110 Long Street, in Mobile, Alabama, and its website is
www.liveoneten.com.

(Doc. 60 at 4; Doc. 106-4 at 43-44).

Defendant ILM Capital, LLC (“ILM Capital”) is a real estate
investment firm that owns the Campus Quarters facility.
at 2; Doc. 66 at 2; Doc. 115 at 5).
is

also

located

in

Mobile,

(Doc. 60

The Campus Quarters facility

Alabama,

and

its

website

is

www.campusquarters.com. (Doc. 66 at 4; Doc. 106 at 1; Doc. 115 at
5-6).

Defendant Mobile CQ Student Housing, LLC (“Mobile CQ”) owns

the real property on which Campus Quarters is located.
at 2; Doc. 66 at 4; Doc. 115 at 5).
(“ILM

Management”)

Communities,

LLC

manages

(“WE

(Doc. 60

Defendant ILM Management, LLC

Mobile

Communities”)

CQ.
is

(Id.).
a

Defendant

property

WE

management

company that has managed Campus Quarters since approximately May
2016. (Doc. 60 at 2; Doc. 66 at 4; Doc. 115 at 5).

Defendant Mary

Schaffer-Rutherford (“Rutherford”) is a former employee of WE
Communities who managed Campus Quarters for approximately seven
months.1

Defendant Michael Wheeler (“Wheeler”) is the manager,

CEO, and sole member of ILM Capital, ILM Management, and WE

1

Defendants contend that Rutherford no longer has any relationship
or affiliation with any of her co-defendants or Campus Quarters
student apartments. (Doc. 60 at 2; Doc. 66 at 4; Doc. 115 at 6).

2

Communities.

(Doc. 60 at 2; Doc. 66 at 2; Doc. 115 at 5).

Defendant A.J. Hawrylak (“Hawrylak”) is an employee of ILM Capital.
(Id.).
The events giving rise to the instant cause of action center
around eight domain names purchased by Defendants.2

ZP contends

that, through the registration and/or use of domain names that are
confusingly

similar

to

its

marks,

Defendants

have

willfully

infringed on its marks, have acted as cybersquatters by intending
to profit from the goodwill associated with ZP’s marks, and have
unfairly competed with ZP.

In its amended complaint, ZP has

alleged cybersquatting in violation of the Anti-Cybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d); unfair competition,
contributory unfair competition, and vicarious unfair competition
in violation of the Lanham Act, 15 U.S.C. § 1125(a); common law
unfair

competition;

and

unfair

competition

and

trademark

infringement in violation of Alabama Code Section 8-12-16 and state
common law.
II.

(Doc. 60 at 11-13).

RELEVANT UNDISPUTED FACTS3

2

The eight domain names at issue are sometimes referred to
collectively as the “domains” or “domain names.” Each domain name
is listed in its entirety, infra.
3

The facts set forth in this opinion have been gleaned from the
parties’ statements of facts claimed to be undisputed and the
Court’s own examination of the evidentiary record. All reasonable
doubts about the facts have been resolved in favor of the nonmoving parties.
See Info. Sys. & Networks Corp. v. City of
Atlanta, 281 F.3d 1220, 1224 (llth Cir. 2002); Priester v. City of
3

Plaintiff ZP avers that it adopted the name “One Ten” for its
student housing facility and began using the “One Ten” mark in
interstate commerce as early as October 28, 2015.
2; 106-1 at 3).

(Docs. 106 at

Indeed, ZP used the One Ten mark in connection

with the signing of a Management Agreement with Asset Campus
Housing

(“ACH”),

the

company

that

manages

One

Ten,

and

it

circulated the agreement (which it named the “One Ten Mgmt Agmt
FE”) via email with a subject line titled “One Ten PMA” on October
29, 2015.
On

(Doc. 106-3 at 4; Doc. 106-4 at 2).
December

3,

2015,

ZP

registered

the

“liveoneten.com” with the registrar GoDaddy.com.
Doc. 106-1 at 3; Doc. 106-4 at 68-69).

domain

name

(Doc. 106 at 2;

By February 26, 2016, ZP

was using the domain name, “liveoneten.com” to market One Ten on
ZDC’s then-existing website.

(Doc. 106 at 2; Doc. 106-1 at 3;

Doc. 106-6 at 2-3).
In late 2015, Defendant ILM Capital learned that ZDC would be
building a new student housing facility, and in April 2016, learned
that the facility would be named “One Ten.”
98-1 at 5; Doc. 115 at 6).
general

counsel

advertisement.

accessed

(Doc. 95 at 8; Doc.

On April 12, 2016, Defendant ILM’s
ZDC’s

website

to

view

One

Ten’s

(Doc. 106 at 3; Doc. 106-2 at 9-10; Doc. 106-5 at

Riviera Beach, 208 F.3d 919, 925 n.3 (11th Cir. 2000). (“[T]he
‘facts,’ as accepted at the summary judgment stage of the
proceedings, may not be the ‘actual’ facts of the case.").
4

32; Doc. 106-6 at 2-3). The following month, Defendants ILM and
Hawrylak began registering domain names that incorporated the
words

“one

ten.”

Specifically,

on

May

11,

2016,

Defendant

Hawrylak, acting on behalf of ILM Capital, registered the following
domain

names

Go.Daddy.Com,

through
LLC:

“liveone10.com,”

third

party

“onetenlive.com,”

domain

name

registar

“liveontenmobile.com,”

“onetenstudentliving.com,”

and

“onetenliving.

com”, which are collectively referenced as the “May 11 domains.”
(Doc. 95 at 8; Doc. 98-1 at 5-6; Doc. 106 at 3; Doc. 106-2 at 56, 8; Doc. 106-5 at 20-24, 34; Doc. 106-7 at 5-6; Doc. 115 at 7).
On May 26, 2016, the website for One Ten, www.liveoneten.com,
went live.

(Docs. 60 at 4; 66 at 3; 106 at 4; 106-3 at 3-4).

The

next day, May 27, 2016, Hawrylak registered three additional domain
names, namely: “onetenusa.com,” “liveonetenapartments.com,” and
“liveonetenmobile.com”, which are collectively referenced as the
“May 27 domains.”4

(Doc. 95 at 9; Doc. 98-1 at 7; 106 at 3; Doc.

106-2 at 5-6, 8; 106-5 at 20-24, 34; Doc. 106-7 at 5-6; Doc. 115
at 7).
In May 2016, ZP created social media pages for One Ten and
began making posts on those sites. (Doc. 106 at 3; Doc. 106-3 at
3-4; Doc. 106-4 at 43).

On May 28, 2016, and June 3, 2016, within

4

As discussed, infra, Defendants renewed their registration of
these domain names on March 14, 2017 (Docs. 60 at 7; 66 at 7; 106
at 10; 106-5 at 30-31), and again on May 11 and 27, 2018. (Doc.
112).
5

days of its first social media posts and its website going live,
ZP was contacted by its first prospective tenants. (Doc. 106 at 45; Doc. 106-4 at 63-65).
On June 14, 2016, Defendants began redirecting users of the
May 11 domains to their own website, “campusquarters.com”, such
that, if a user typed in one of the May 11 domains into an internet
browser, the user would be redirected to the website for Campus
Quarters.

(Doc. 95 at 8-11; Doc. 98-1 at 5-7; Doc. 106 at 5; Doc.

106-2 at 10-11; Doc. 115 at 7-8).
On August 18, 2016, online leasing became available for One
Ten, but student occupancy did not occur until a year later in
August 2017.
115 at 6).
redirecting

(Doc. 66 at 3, 83 at 7, 54-55; Doc. 89 at 2, 5; Doc.

On September 19, 2016, ZP learned that Defendants were
users

of

one

of

the

May

11

domains,

“onetenstudentliving.com,” to the Campus Quarters website.5
106 at 7).

namely
(Doc.

On the same day, a representative from ACH, which

manages One Ten for ZP, sent an email to Defendant Hawrylak
requesting that Defendants end the redirection of the domain name.
(Doc. 106 at 7; Doc. 106-5 at 18, 51-52).

Hawrylak forwarded the

email to an ILM representative asking for guidance on how to

5

ZP contends that it did not learn of the existence of four of
the other May 11 domains or any of the May 27 domains until it
received subpoena responses from GoDaddy.com in February 2017.
(See Doc. 60 at 7).
6

respond

to

the

request,

and

the

ILM

representative

advised

Hawrylak, “Tell him FU!” (Doc. 106 at 7; Doc. 106-5 at 51).
On September 19, 2016, ZP’s in-house counsel sent Defendants
cease and desist letters, demanding that Defendants: “(i) transfer
any and all rights in and to the onetenstudentliving.com domain
name to ZP NO. 314, LLC; (ii) cease and desist from any and all
use of the onetenstudentliving.com domain name; and (iii) cease
and desist from any and all use of ZP NO. 314, LLC’s name and the
One Ten name.”

(Doc. 60 at 7; 66 at 7; Doc. 106 at 7-8; Doc. 106-

1 at 3, 31-42; Doc. 106-5 at 25-29; Doc. 106-13 at 2-3).

On

September 20, 2016, after receiving the cease and desist letter
dated September 19, 2016, Defendants ceased the redirection of all
May 11 domains.

(Doc. 83 at 9; Doc. 87-12 at 34-38; Doc. 95 at

12; 115 at 8).6
ZP sent a second cease and desist letter to Defendants on
September 23, 2016. (Doc. 60 at 7; Doc. 66 at 7; Doc. 106 at 8;
Doc. 106-5 at 3-4; Doc. 106-13 at 3, 6-7).

The September 23 letter

included a demand that Defendants relinquish and transfer the

6

Prior to the May 11 domains being redirected on June 14, 2016,
and after the redirection ceased on September 20, 2016, Defendants
“parked” the May 11 domains, meaning that the sites had no
substantive content and no longer redirected the user to the Campus
Quarters’ website. (Doc. 83 at 9; Doc. 87-12 at 34-38; Doc. 95 at
12; Doc. 115 at 8).

7

“onetenstudentliving.com” domain name to ZP.
declined to do so.

(Id.).

Defendants

(Doc. 112).

ZP filed the instant action on October 6, 2016. (Docs. 1).
Subsequent thereto, on December 5, 2016, ZP applied with the
United

States

Patent

and

Trademark

Office

(“USPTO”)

registration of the trademark “One Ten Student Living”.
at 4; Doc. 66 at 3).

for

(Doc. 60

With no objection from Defendants, the USPTO

issued ZP a certificate of registration for the
Living” mark on July 25, 2017.

“One Ten Student

(Doc. 60 at 5; Doc. 60-1; Doc. 66

at 3; Doc. 106 at 10; Doc. 106-17).

Additionally, on March 16,

2017, ZP applied to register the trademark “One Ten” with USPTO.
The application was approved on June 9, 2017 and publication
occurred on October 17, 2017.7
at 10; Doc. 106-17).

(Doc. 60 at 5; Doc. 60-2; Doc. 106

The Alabama Secretary of State issued

certificates of registration for the marks on March 23, 2017.
(Doc. 60 at 5; Doc. 60-3).
III. PROCEDURAL HISTORY
As noted, supra, this action was instituted on October 6,
2016, when ZP filed its initial complaint against ILM Capital, WE
Communities, Rutherford, and Mobile CQ.

(Doc. 1).

On November 3,

2016, Defendants filed a motion to dismiss and/or for a more

7

The marks “One Ten Student Living” and “One Ten” are hereinafter
collectively referred to as the “marks”.
Each individual mark
will continue to be referenced by its name where appropriate.
8

definite statement.

(Docs. 9, 10).

On February 21, 2017, ZP

timely filed a motion for leave to file an amended complaint.
(Doc. 32).
additional

In its motion, ZP requested leave to add three
Defendants

–

Wheeler,

Hawrylak,

and

ILM

Mobile

Management – as well as additional claims against all Defendants
based on vicarious and contributory liability.

On March 30, 2017,

the Court granted ZP’s unopposed motion for Leave to File an
Amended Complaint and denied as moot Defendants’ motion to dismiss
and/or for a More Definite Statement.

(Doc. 39).

Accordingly, ZP

filed its first amended complaint on March 30, 2017, and Defendants
filed their answers on April 13, 2017, April 27, 2017, May 2, 2017,
and June 6, 2017. (Docs. 41, 43, 44, 45, 46, 47, 48, 49, 50).
On August 31, 2017, ZP filed a second motion to amend its
complaint.
correct

(Doc. 55).

the

name

of

In its motion, ZP requested leave to
a

domain

name

that

was

inadvertently

misidentified in its first amended complaint, in addition to adding
facts

related

to

its

claims,

elect

statutory

damages

on

its

cybersquatting claims, and withdraw its trademark dilution claims.
With no opposition from Defendants, ZP’s request to file a second
amended complaint was granted.

The second amended complaint was

filed on September 19, 2017, and Defendants’ answer was filed on
October 3, 2017.

(Doc. 60; Doc. 66).

As noted supra, this action is now before the Court on the
parties’ respective motions for summary judgment and supporting

9

briefs.

The motions have been fully briefed, and are now ripe for

resolution.
IV.

SUMMARY JUDGMENT STANDARD

Summary Judgment is proper “if the movant shows that there is
no genuine dispute as to any material fact and that the movant is
entitled to judgment as a matter of law.”

Fed. R. Civ. P. 56(a);

see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986);
see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986);
Garczynski v. Bradshaw, 573 F.3d 1158, 1165 (11th Cir. 2009)
(“[S]ummary judgment is appropriate even if ‘some alleged factual
dispute’ between the parties remains, so long as there is ‘no
genuine issue of material fact.’” (citation omitted) (emphasis in
original)).

The party seeking summary judgment bears “the initial

burden to show the district court, by reference to materials on
file, that there are no genuine issues of material fact that should
be decided at trial.”

Clark v. Coats & Clark, Inc., 929 F.2d 604,

608 (11th Cir. 1991).

When faced with a properly supported motion

for summary judgment, the burden shifts to the non-movant to show
the existence of a genuine issue of material fact. Id. A plaintiff
may not simply rest on the allegations made in the complaint, but
must instead, as the party bearing the burden of proof at trial,
come forward with at least some evidence to support each element
essential to her case at trial.

Anderson, 477 U.S. at 248 (“[A]

party opposing a properly supported motion for summary judgment

10

‘may not rest upon the mere allegations or denials of [her]
pleading but . . . must set forth specific facts showing that there
is a genuine issue for trial.”).

Summary judgment is mandated in

the absence of such a showing. Celotex Corp., 477 U.S. at 322; see
also Webb v. Ocwen Loan Servicing, LLC, 2012 U.S. Dist. LEXIS
167079, *4-5, 2012 WL 5906729, *1 (S.D. Ala. Nov. 26, 2012) (“[a]
moving party is entitled to summary judgment if the nonmoving party
has failed to make a sufficient showing on an essential element of
her case with respect to which she has the burden of proof.”)
(quoting In re Walker, 48 F.3d 1161, 1163 (11th Cir. 1995); and
Celotex

Corp.,

477

U.S.

at

323)

(internal

quotation

marks

omitted)).
“[A]t the summary judgment stage, the judge’s function is
not [herself] to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for
trial.”
‘whether

Anderson, 477 U.S. at 249.
the

evidence

presents

a

“Essentially, the inquiry is
sufficient

disagreement

to

require submission to the jury or whether it is so one-sided that
one party must prevail as a matter of law.’”

Sawyer v. Southwest

Airlines Co., 243 F. Supp. 2d 1257, 1262 (D. Kan. 2003) (quoting
Anderson, 477 U.S. at 251-52); see also LaRoche v. Denny’s Inc.,
62 F. Supp. 2d 1366, 171 (S.D. Fla. 1999) (“The law is clear . .
. that suspicion, perception, opinion, and belief cannot be used
to defeat a motion for summary judgment.”).

11

V.

DISCUSSION
As noted, supra, ZP’s second amended complaint alleges unfair

competition
contributory

in

violation

unfair

of

15

U.S.C.

§

1125(a)

competition

(Count

II);

(Count

vicarious

I);

unfair

competition (Count III); cybersquatting in violation of 15 U.S.C.
§ 1125(d) (Count IV); common law unfair competition (Count V); and
unfair competition and trademark infringement under Alabama Code
§ 8-12-1, et seq., and Alabama common law (Count VI).
9-14).

(Doc. 60 at

For the reasons set forth below, Plaintiff’s motion for

summary judgment is DENIED; and Defendants’ motions for summary
judgment are GRANTED, in part, and DENIED, in part, as set forth
herein.
A. Cybersquatting (Count IV).
ZP

argues

Cybersquatting

that
Consumer

Defendants

have

Protection

Act

violated

the

(“ACPA”),

15

AntiU.S.C.

§1125(d)(1)(A) because they “registered, trafficked in or used a
domain name that is identical or confusingly similar to a trademark
that is distinctive” and “they had a bad faith intent to profit
from the marks”.

(Doc. 106 at 11-24).

According to ZP, its marks

are distinctive, and Defendants registered and used domain names
that are confusingly similar to ZP’s distinctive marks in order to
promote their own competing commercial interests and to divert
internet users searching for ZP’s website to Defendants’ website,
with the admitted intent to redirect and confuse the public and

12

profit from the goodwill associated with ZP’s distinctive marks.
(Id.).

Defendants, on the other hand, assert that because it is

undisputed that their alleged misconduct occurred in May 2016, and
because ZP had not acquired trademark rights in its marks prior to
that time, ZP cannot prevail on its cybersquatting claim. Further,
according to Defendants, Plaintiff’s claims fail as a matter of
law because Plaintiff’s marks are merely “descriptive,” and they
had not acquired secondary meaning as a matter of law prior to
Defendant’s alleged misconduct.
The Court begins its analysis with Count IV, Plaintiff’s
claim

under

the

Anti-Cybersquatting

(“ACPA”), 15 U.S.C. §1125(d)(1)(A).

Consumer

Protection

Act

The ACPA was enacted to

prevent cybersquatting, which the Eleventh Circuit has described
as “essentially extortion.”

Jysk Bed’N Linen v. Dutta-Roy, 810

F.3d 767, 775 (11th Cir. 2015).

The ACPA provides that:

(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 –
(I) in the case of a mark that is
distinctive
at
the
time
of
registration of the domain name, is

13

identical or confusingly similar to
that mark[.]
. . .
15 U.S.C. § 1125(d)(1)(A).

Thus, a defendant violates the ACPA if

it registers, traffics, or uses a domain name that is identical or
confusingly similar to a distinctive mark with a bad faith intent
to profit from its act(s).

Id.; see also Jysk, 810 F.3d at 775.

With respect to the element of bad faith intent to profit, the
ACPA

provides

an

exception,

the

safe-harbor

provision,

which

provides that “bad 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.”

15

U.S.C.

§

1125(d)(1)(B)(ii).
As a preliminary matter, the undersigned notes that the
parties dispute whether Defendants’ re-registration of the subject
domain names in March 2017 and May 2018 constitutes an actionable
offense under the ACPA.

(Doc. 66 at 7; Doc. 83 at 26-31; Doc. 106

at 10, 24; Doc. 106-5 at 30-31; Doc. 115 at 8).

The Eleventh

Circuit firmly resolved this issue when it held that, “[t]he plain
meaning of register includes a re-registration[,]” such that reregistration falls under the purview of the ACPA.

Jysk, 810 F.3d

at 777 (“It would be nonsensical to exempt the bad-faith reregistration of a domain name simply because the bad-faith behavior

14

occurred during a noninitial registration, thereby allowing the
exact behavior that Congress sought to prevent.”); see also Sound
Surgical Tech., LLC v. Leonard A. Rubinstein, M.D., P.A., 734 F.
Supp. 2d 1262, 1277 (M.D. Fla. 2010) (noting that “a bad faith
intent to profit from a domain name can arise either at the time
of registration or at any time afterwards.”); Heron Dev. Corp. v.
Vacation Tours, Inc., 2017 WL 2895921 at *14, 2017 U.S. Dist. LEXIS
57602

at

*37-40

(S.D.

Fla.

Apr.

13,

2017)

(noting

that

“registration (or re-registration) . . . is sufficient to trigger
liability under the ACPA.”); Xereas v. Heiss, 933 F. Supp. 2d 1,
17 (D.D.C. 2013) (“The terms “register” and “registration” in §
1125(d)(1)(A) should be read to refer to the initial registration
and later re-registrations of the domain name.”); American Cruise
Lines v. HMS Am. Queen Steamboat Co., LLC, 2017 WL 3528606 at *13,
2017 U.S. Dist. LEXIS 130430 at *34 (D. Del. Aug. 16, 2017)
(“Consistent with the purpose and text of the Act, re-registration
is

a

qualifying

registration

for

liability.”).

Accordingly,

Defendants’ March 2017 and May 2018 re-registrations of the domain
names are actionable under the ACPA (see Doc. 112), such that the
Court’s analysis will include consideration of those events.
1. Distinctiveness of Marks before July 2017.
In order for ZP to establish its cybersquatting claim against
Defendants, it must show, among other things, that its marks were
inherently distinctive or that they acquired secondary meaning

15

and,

thus,

became

distinctive

before

the

alleged

trademark

violations occurred, since “[t]rademark or service mark protection
is only available to ‘distinctive’ marks . . . that serve the
purpose of identifying the source of the goods or services. . . .”
Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir.
2007) (internal citations omitted).

Trademarks may be inherently

distinctive or may become distinctive by “becoming associated in
the minds of the public with the products or services offered by
the proprietor of the mark. . . .”

Id.

There are four “gradations of distinctiveness” of marks: (1)
fanciful or arbitrary; (2) suggestive; (3) descriptive; and (4)
generic.

Welding Servs., 509 F.3d at 1351; see also Soweco, Inc.

v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir. 1980).8

Defendants

argue that ZP’s marks, “One Ten” and “One Ten Student Living,” are
descriptive.

(Docs. 83 at 20-21; 115 at 15-17).

As described by

the Eleventh Circuit:
A descriptive term merely identifies a characteristic or
quality of a service. An example of a descriptive service
mark might be “BarnMilk.” Because a descriptive service
mark is not inherently distinctive, it may be protected
only if it acquires a secondary meaning. The personal
name component of a service mark such as “Barney’s” to
denote a milk delivery service is also considered not
inherently distinctive and hence merely descriptive.
However, if the personal name mark acquires secondary
8

All Fifth Circuit decisions handed down prior to the close of
business on September 30, 1981, are binding on the Eleventh
Circuit. Bonner v. City of Prichard, 661 F.2d 1206, 1209, (11th
Cir. 1981).

16

meaning, it is afforded the strength of an inherently
distinctive mark. Marks which are descriptive of
geographic location of the source of the service are
treated in the same manner as personal name marks.
Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519,
1522-23 (11th Cir. 1991) (internal citations omitted); see also
Welding Servs., 509 F.3d at 1357-58; Soweco, 617 F.2d at 1183-84.
Based on the aforementioned, the Court finds that ZP’s marks
are descriptive.9

ZP’s One Ten Student Living facility is located

at 110 Long Street, Mobile, Alabama, 36608.

(Doc. 83 at 5).

Thus,

the marks are “descriptive of the geographic location of the source
of the service[,]” Investacorp, 931 F.2d at 1532, making them
descriptive and not inherently distinctive, which means that they
are only entitled to protection under the ACPA if they acquired

9

To the extent that Defendants assert that the marks are not
entitled to protection under the ACPA simply because they are not
“famous” (see Doc. 115 at 16), the Court rejects this argument.
The text of the ACPA protects marks that are distinctive or famous.
See 15 U.S.C. § 1125 (d)(1)(A)(ii)(I), (II). Where statutory
language is unambiguous, the Court is required to apply the plain
meaning of the words.
Cox Enter., Inc. v. Pension Ben. Guar.
Corp., 666 F.3d 697, 704 (11th Cir. 2012); see also Silva-Hernandez
v. U.S. Bureau of Citizenship and Immigration Servs., 701 F.3d
356, 361 (11th Cir. 2012) (“Those who ask courts to give effect to
perceived legislative intent by interpreting statutory language
contrary to its plain and unambiguous meaning are in effect asking
courts to alter that language, and courts have no authority to
alter statutory language.”) (citation omitted); Country Best v.
Christopher Ranch, LLC, 361 F.3d 629, 632 (11th Cir. 2004) (“When
the import of the words Congress has used is clear . . . we need
not resort to legislative history, and we certainly should not do
so to undermine the plain meaning of the statutory language.”)
(internal quotations omitted).

17

secondary

meaning

registering,

prior

to

trafficking,

or

the

dates

using

the

that

Defendants

began

names.10

See

domain

Investacorp, 931 F.2d at 1524 (noting that a mark “must have
attained secondary meaning before the date that appellee used [a]
similar

term.”)

(internal

citation

omitted);

American

Cruise

Lines, 2017 WL 3528606 at *13, 2017 U.S. Dist. LEXIS 130430 at *34
(noting that “distinctiveness . . . can be determined at the time
of any . . . re-registration[], including Defendant’s most recent
extension of the domain name registration.”).
“Secondary meaning is the connection in the consumer’s mind
between the mark and the provider of the service.” Investacorp,
931 F.2d at 1525; see also Bavaro Palace, S.A. v. Vacation Tours,
Inc., 203 Fed. Appx. 252, 255 (11th Cir. 2006); Vision Ctr. v.
Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979).

It is a question

of fact, and the Plaintiff must sustain “a high degree of proof”
to establish secondary meaning of a descriptive term. Investacorp,
931 F.2d at 1525; Bavaro Palace, 203 Fed. Appx. at 255; Vision
Ctr., 596 F.2d at 119; Coach House Restaurant, Inc. v. Coach & Six
Restaurants, Inc., 934, F.2d 1551, 1560 (11th Cir. 1991).

10

In the instant case, that means that the marks are only entitled
to protection under the ACPA if they had acquired secondary meaning
prior to May 11, 2016, the date on which Defendants began
purchasing and utilizing the domain names; June-September 2016,
the dates during which Defendants redirected the domain names to
their own website; or March 14, 2017, May 11, 2018, or May 27,
2018, the dates on which Defendants re-registered the domain names.
18

A party may make a prima facie showing of acquired 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.”

Welding Servs., 509 F.3d at 1358;

see also Jysk, 810 F.3d at 778-79.
within

the

Eleventh

Circuit

Absent such a showing, courts

generally

examine

the

following

factors to determine whether a mark has acquired secondary meaning:
(1) [T]he length and manner of [the mark’s] use; (2) the
nature and extent of advertising and promotion; (3) the
efforts made by the plaintiff to promote a conscious
connection in the public’s mind between the name and the
plaintiff’s . . . business; and (4) the extent to which
the public actually identifies the name with the
plaintiff’s [service].
Investacorp, 931 F.2d at 1525 (internal citation omitted); see
also Welding Servs., 509 F.3d at 1358; Bavaro Palace, 203 Fed.
Appx. at 255.
In addition, “[r]egistration of a trademark on the principal
register of the USPTO is prima facie evidence of validity and
establishes

a

[rebuttable]

protectable or distinct.”

presumption

that

the

mark

is

Edge Sys. LLC v. Aguila, 186 F. Supp.

3d 1330, 1347 (S.D. Fla. 2016); see also 15 U.S.C. § 1057(b).
However, “[w]hile registration creates a rebuttable presumption of
the validity of the registration and the holder’s right to its
exclusive use, . . . that does not affect the ultimate burden of
proof to be carried by the plaintiff in an . . . action.”

Freedom

Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1182 n.4 (11th Cir. 1985);

19

see also Sun Banks of Fla. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d
311

(5th

Cir.

1981).

Further,

the

presumption

of

acquired

secondary meaning only applies “as of the date that [the mark] was
registered.”

Unique Sports Prods., Inc. v. Babolat VS, 403 F.

Supp. 2d 1229, 1236-37 (N.D. Ga. 2005) (holding that the February
13, 2001 registration of a trademark did not operate against uses
of that mark that began prior to the mark’s registration); see
also Gulf Coast Commercial Corp. v. Gordon River Hotel Assoc., 508
F. Supp. 2d 1157, 1164 (M.D. Fla. 2007) (“Although [plaintiff] is
entitled to a presumption that its mark has acquired secondary
meaning as of the date it was registered . . . the relevant date
for determining secondary meaning is . . . the date [defendant]
began using the [similar mark].”); Aromatique, Inc. v. Gold Seal,
Inc., 28 F.3d 863, 870 (8th Cir. 1994) (finding that plaintiff’s
marks

acquired

secondary

meaning

on

the

date

that

the

USPTO

registered the marks); 2 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 15:34 (2018).
In the instant case, ZP argues that its marks were distinctive
at the time Defendants registered the subject domain names, and
that it is entitled to a rebuttable presumption of distinctiveness
based on its registration of the marks.

The undisputed evidence

shows that ZP applied for registration of the One Ten Student
Living

and

One

Ten

marks

in

December

2016

and

March

2017,

respectively, and that the applications were accepted by, and

20

registration obtained from, the U.S. Patent and Trademark Office
on July 25, 2017 and October 17, 2017. Accordingly, any rebuttable
presumption based on registration of the marks could apply only to
Defendants’ alleged violations occurring after July 25, 2017, when
the first mark was registered.

Defendants’ alleged violations

occurring before July 25, 2017 (which would include Defendants’
May 2016 registration of the domain names, Defendants’ June through
September 2016 redirection of the websites, and Defendants’ March
14, 2017 re-registration of the domain names) would not be subject
to

a

rebuttable

presumption

registration of the marks.

of

distinctiveness

based

on

See Unique Sports, 403 F. Supp. 2d at

1237.
In order to proceed with its ACPA claims against Defendants
(or prevail on its motion for summary judgment) based on violations
occurring before July 25, 2017, ZP must show that the One Ten marks
had

acquired

violations.

secondary

meaning

before

each

of

the

alleged

Applying the factors set forth above, the Court finds

that ZP has failed to show that the One Ten marks had acquired
secondary meaning before July 25, 2017.
First, as discussed, a party may make a prima facie showing
of acquired secondary meaning/distinctiveness “by showing that the
name has been used in connection with the proprietor’s goods or
service

continuously

and

substantially

exclusively

for

five

years.” Welding Servs., 509 F.3d at 1358. However, the undisputed

21

evidence in the instant case shows that the earliest date on which
ZP may argue that the marks were “continuously and substantially
exclusively” in use is October 2015, one year before this action
was instituted and approximately six months before Defendants
registered the May 11 domains, which is substantially less than
the five-year mark required by the Eleventh Circuit to make a prima
facie showing.

Welding Servs., 509 F.3d at 1358.

Therefore, an

examination of the four factors enumerated by the Eleventh Circuit
is required.11

See Investacorp, 931 F.2d at 1525.

Although ZP has failed to address the factors enumerated in
Investacorp, the Court has done so in order to determine whether
the marks acquired a secondary meaning.

With regard to the length

and manner of ZP’s use of the marks, as noted, supra, the earliest
date on which ZP arguably used the marks is October 2015, some six
to seven months prior to Defendants’ registration of the May 11
and May 27 domain names.

11

As noted supra, where there is no prima facie showing
that
marks
were
“continuously
and
substantially
exclusively” in use for at least five years, the
following factors are examined: (1) [T]he length and
manner of [the mark’s] use; (2) the nature and extent of
advertising and promotion; (3) the efforts made by the
plaintiff to promote a conscious connection in the
public’s mind between the name and the plaintiff’s . .
. business; and (4) the extent to which the public
actually identifies the name with the plaintiff’s
[service].

Investacorp, 931 F.2d at 1525 (internal citation omitted).
22

In October 2015, ZP made preparations to use the marks by
determining that its housing facility would be named One Ten
Student

Living,

by

signing

a

management

agreement

with

ACH

utilizing the name, and by updating the ZDC Company Profile to
include the facility by name.

(Doc. 106 at 2; Doc. 106-1 at 3,

24; Doc. 106-3 at 4; Doc. 106-4 at 2).

Between December 2015 and

February 2016, ZP sent ZDC’s Company Profile, which included one
mention

of

the

newly-styled

One

Ten

Student

Living,

to

approximately twenty-seven (27) vendors, lenders, and realtors
throughout the country.

(Doc. 106 at 2; Doc. 106-3 at 4; Doc.

106-4 at 2, 19-22, 24-25, 27-45).

ZP registered its domain name,

“liveoneten.com,” on December 3, 2015 (Doc. 106 at 2; Doc. 106-1
at 3; Doc. 106-4 at 68-69) and created a Twitter page for One Ten
Student Living on May 19 2016, some eight days after Defendants’
purchase of the May 11 domain names.
4; 106-4 at 43).

(Docs. 106 at 3; 106-3 at 3-

These actions by ZP, all taken in the six to

seven months preceding Defendants’ registration of the domain
names, weigh against a determination that the marks had acquired
secondary meaning by May 11 or 27, 2016, or by June 14, 2016, the
date on which Defendants began redirecting the May 11 domains.
See Investacorp, 931 F.2d at 525 (finding that there was no
significance in an appellant’s use of their mark “other than
appellant merely “display[ing] its service mark on nearly all of
its transactional documents.”).

23

An examination of the marks’ use during the period leading to
the

March

similarly

14,

2017,

re-registration

unavailing.

At

the

time

of

the

that

domain

the

names

Defendants

is
re-

registered the domain names on March 2017, in addition to the
aforementioned actions, ZP had applied for federal registration of
the One Ten Student Living mark in the Principal Register of the
USPTO, but that registration had not been approved and, in any
event, would not support a finding of acquired secondary meaning,
as

it

occurred

redirection,

and

after

the

March

initial

2017

2016

registrations,

re-registration

of

the

2016

domains.

Therefore, the length and manner of the marks’ use weigh against
a finding that ZP’s marks had acquired secondary meaning either at
the time of Defendants’ May 2016 domain registrations, June 2016
through

September

registration.

2016

redirection,

or

the

March

2017

re-

See, e.g., id. at 525-525 (finding that secondary

meaning did not attach even though the plaintiff had used the mark
for five years prior to defendant’s use of the mark); Donut Joe’s,
Inc. v. Interveston Food Servs., LLC, 101 F. Supp. 3d 1172, 1182
(N.D. Ala. 2015) (noting that Eleventh Circuit case law leads to
the inference that two years is insufficient for secondary meaning
to attach). But see Conagra, Inc. v. Singleton, 743 F.2d 1508,
1513 (11th Cir. 1984) (holding that the first factor supported a
finding

of

secondary

meaning

when

24

the

plaintiff

prominently

displayed its mark on the majority of its products for over 25
years).
Regarding the nature and extent of ZP’s advertising and
promotion of the marks, in the six to seven months preceding
Defendants’ purchase/registration and use of the domain names, ZP
spent approximately $5,229.83 advertising and promoting One Ten.
(Doc. 85 at 63-67).

In total, between December 2015 and December

2016, ZP spent $43,430.05 on advertising and promotions for One
Ten, including $17,545.71 spent during the period in which the May
11 domains were redirected.

(Id.).

The record reflects that the

domain name, “liveoneten.com,” was registered on behalf of ZP on
December 3, 2015, and that, by February 26, 2016, ZP had begun
using the domain name to market One Ten Student Living on ZDC’s
then-existing website, such that internet users could see the
advertisement for the housing facility.
3; 106-4 at 68-69; 106-6 at 2-3).

(Docs. 106 at 2; 106-1 at

This meager showing is not

sufficient to establish that the marks had acquired secondary
meaning by May 11, 2016.
Further,

in

determining

whether

secondary

meaning

had

attached to the marks by March 2017, the Court notes that the
website for One Ten went live on May 26, 2016 (Doc. 106 at 3; Doc.
106-3 at 3-4; Doc. 106-4 at 43); that ZP began its first open
marketing efforts during the week of September 13, 2016 (Doc. 83
at 7; Doc. 95 at 59; Doc. 94-3 at 3; Doc. 115 at 6); and that ZP

25

advertised

the

grand

opening

for

One

Ten

Student

Living

as

occurring on November 10, 2016 (Doc. 87-9 at 2-3; Doc. 115 at 67).

Again, the amount of money spent by ZP on marketing and

promotion of the marks, coupled with the marketing activities
undertaken by ZP, support a finding that secondary meaning had not
attached at the time of the alleged May 2016 or March 2017
violations.

Compare Investacorp, 931 F.2d at 1519 (finding that

the second factor weighed against secondary meaning when appellant
spent approximately one hundred dollars per month on advertising)
with Conagra, 743 F.2d at 1513 (finding that the second factor of
this analysis supported a finding of secondary meaning in favor of
defendant when they spent over $400,000 per year on marketing and
promotion).
Having found that the first two factors support a finding
that secondary meaning had not attached to ZP’s marks by either
May 2016 or March 2017, the analysis becomes even less favorable
to ZP when considering the final two factors.

For instance, there

is little evidence in terms of the intentional efforts ZP made to
promote a connection in the public’s mind between the marks and
the One Ten Student Living housing facility.

ZP made social media

posts to its Facebook and Instagram accounts on May 25 and 26,
2016, days after Defendants purchased the first domains on May 11,
2016.
2017

Further, as noted, supra, in the months leading to the March
re-registration

of

the

domains,

26

ZP

engaged

in

certain

marketing efforts in September 2016 and November 2016.

However,

these actions, without more, are insufficient to support a finding
that

secondary

meaning

had

attached

to

the

marks

prior

to

Defendants’ alleged violations from May 2016 to March 2017.
Finally, “[w]hether the public actually identifies the name
with plaintiff is the ‘most telling factor’ when determining
whether a mark has acquired a secondary meaning.”

Ala. Credit

Union v. Credit Union of Ala. Fed. Credit Union, 2008 WL 11422049
at *7 (N.D. Ala. Mar. 31, 2008) (citing Conagra, 743 F.2d at 1513);
see also Gulf Coast, 508 F. Supp. 2d at 1165-66 (“The ultimate
test of secondary meaning is whether the term . . . has become
broadly known to the public” in association with the service being
offered).

Without quantifiable proof, actual identification is

difficult to prove.

See Investacorp, Inc. v. Arabian Inv. Banking

Corp., 722 F. Supp. 719, 723-24 (S.D. Fla. 1989).

Here, ZP has

presented no survey evidence or any other quantifiable data that
supports a finding that that the public actually identified ZP’s
marks with its housing facility, effectively precluding the Court
from

determining

whether

this

factor

weighs

against, a finding of secondary meaning.

in

favor

of,

or

See Gulf Coast, 508 F.

Supp. 2d at 1166 (noting that the plaintiff failed to present
quantifiable proof in support of this factor, which prevented the
court from finding that the mark at issue had acquired secondary
meaning).

27

Considering the totality of the undisputed evidence on this
issue, the undersigned finds, as a matter of law, that ZP’s marks
had not acquired the requisite secondary meaning necessary to gain
distinctiveness and sustain a claim under the ACPA before July
2017 (i.e., at the time of Defendants’ 2016 registration and
redirection and March 2017 re-registration of the domain names).
The evidence of the length and manner of the use of the marks
weighs against a finding of secondary meaning, and there is little
evidence to establish the remaining factors.

Thus, ZP has not met

its heavy burden of establishing that the marks had acquired
secondary meaning by May 11, 2016, May 27, 2016, June 14 through
September 20, 2016, or March 14, 2017.
Accordingly, ZP’s motion for summary judgment as to its
cybersquatting

claim

(Count

IV)

is

DENIED

violations occurring before July 2017.

as

to

the

alleged

See Gulf Coast, 508 F.

Supp. 2d at 1166 (denying plaintiff’s motion for summary judgment
when the mark at issue had been used for eight years; plaintiff
spent

over

$7

million

on

advertisements

and

promotions;

and

plaintiff’s actions were consciously taken to promote a connection
between its service and its mark, but plaintiff failed to provide
quantifiable data on whether the public actually identified its
mark with its service).
Conversely,
establishes

that

having
ZP’s

found

that

marks

28

the

lacked

undisputed
acquired

evidence
secondary

meaning/distinctiveness as a matter of law before July 2017,
Defendants’ motions for summary judgment on ZP’s cybersquatting
claim (Count IV) based on violations occurring before July 2017
are GRANTED.
2. Distinctiveness of Marks after July and October 2017.
On May 11, 2018, Defendants filed a “Notice of Auto-Renewal”
with the Court, wherein they advised that they would be reregistering the domain names at issue on May 11 and 27, 2018, in
order to “maintain the status quo while this case is pending.”
(Doc. 112).

ZP argues that the fact that Defendants filed a

“notice” of its re-registration of the domain names with the Court
does not diminish the viability of its ACPA claim.

(Doc. 113).

The Court agrees.
As

noted

supra,

the

re-registration

of

domain

names

is

actionable under the ACPA.

To affirmatively establish a claim of

cybersquatting

ACPA,

under

the

ZP

must

establish

that

(1)

Defendants registered, trafficked, or used (2) a domain name that
was identical or confusingly similar to (3) a distinctive mark (4)
with a bad faith intent to profit.

15 U.S.C. § 1125(d)(1)(A);

Jysk, 810 F.3d at 775.
As stated, it is undisputed that Defendants re-registered the
domain names in May 2018, several months after ZP’s marks had been
granted registration with the USPTO. (Doc. 112). While Defendants
maintain that the 2018 re-registration was intended to maintain

29

the “status quo” during the pendency of this action, they have
cited no case law that would support the proposition that the 2018
re-registration should not be considered actionable under the
ACPA.

Accordingly, having determined that the re-registration of

a domain name constitutes an actionable “registration” under the
ACPA, Defendants’ May 11 and 27, 2018 re-registration of the domain
names falls under the purview of the ACPA.
Also, as previously noted, in determining distinctiveness for
purposes of the ACPA, a mark must have attained distinctiveness or
secondary meaning by the date of a defendant’s allegedly infringing
action. Investacorp, 931 F.2d at 1524. Registration of trademarks
with the USPTO acts as prima facie evidence of distinctiveness as
of the date that the mark was registered.

Unique Sports Prods.,

403 F. Supp. 2d at 1236. While the registrations of ZP’s marks
with the USPTO in July and October 2017 do not act as prima facie
evidence of distinctiveness of the marks prior to the date that
they

were

registration

registered,
with

ZP

regard

may
to

properly
Defendants’

rely

on

alleged

the

USPTO

violations

occurring after July and October 2017, namely, the May 2018 reregistration of the marks.

It is undisputed that ZP’s marks were

granted registration with the USPTO on July 25, 2017 and October
17,

2017,

thus

creating

a

rebuttable

distinctiveness that began on those dates.
Supp. 3d at 1347.

presumption

of

See Edge Sys., 186 F.

There is nothing before the Court that would

30

support a rebuttal of the distinctiveness of ZP’s marks as of the
dates of the marks’ registration with the USPTO, such that the
Court finds, as a matter of law, that the marks were distinctive
after July 2017, and, thus, were distinctive on May 11 and 27,
2018, the dates on which Defendants re-registered the domains.
Accordingly,

the

Court

now

will

consider

the

remaining

elements of ZP’s ACPA claim with respect to the alleged ACPA
violations occurring after July 2017, namely, the May 11 and 27,
2018, re-registrations.
3. Identicality or Confusing Similarity of the Domain
Names with ZP’s Marks.
Defendants’ website is www.campusquarters.com.
is www.liveoneten.com.

ZP’s website

Defendants have registered eight other

domain names that ZP contends are confusingly similar to its “One
Ten”

and

“One

Ten

Student

Living”

marks.

The

domain

names

registered by Defendants are: liveontenmobile.com; onetenlive.com;
liveone10.com;

onetenliving.com,

liveonetenapartments.com;

onetenusa.com;

onetenstudentliving.com;
and

liveonetenmobile.

com.
“In the cybersquatting context, ‘confusingly similar’ means
that the plaintiff’s mark and the defendant’s domain name are so
similar in sight, sound[,] or meaning that confusion is likely.”
Heron Dev. Corp. v. Vacation Tours, Inc., 2018 WL 2943217 at *7
(S.D. Fla. Jun. 12, 2018) (internal quotations and citations

31

omitted).

Further,

“[a]

reasonable

interpretation

of

conduct

covered by the phrase “confusingly similar” is the intentional
registration of domain names that are misspellings of distinctive
or famous names . . .” Shields v. Zuccarini, 254 F.3d 476, 484 (3d
Cir. 2001).
Here, Defendants incorporate ZP’s marks exactly or, at the
very least, in a confusingly similar manner.

For instance, the

domain name liveonetenmobile.com is virtually identical to the
website

for

One

Ten

Student

Living,

www.liveoneten.com.

In

addition, liveontenmobile.com incorporates a misspelling of the
word

“one”

and

substitutes

onetenstudentliving.com

“on”

completely

in

its

place.

incorporates

the

Also,
One

Ten

Student Living mark (for which ZP had attained registration by the
time of Defendants’ 2018 re-registration of the domain names).
For

one

of

the

infringing

domain

names,

Defendants

substituted the word “Ten” for the number 10.

merely

All of these

variations of the One Ten mark, in addition to the complete
incorporation of the One Ten Student Living mark, constitute domain
names that are confusingly similar to ZP’s marks. See, e.g., Dell,
Inc. v. BelgiumDomains, LLC, 2007 WL 6862342 at *7 (S.D. Fla. Nov.
21, 2007) (holding that, where defendants’ domain names included
the

substitution

misspellings
confusingly

of

of

numbers

plaintiff’s

similar).

for
marks,

Further,

32

the

letters
the
fact

and

domain
that

intentional
names
both

ZP

were
and

Defendants

own/operate

off-campus

accommodations

for

university students makes customer confusion more likely.

local
See

John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 976 (“The
greater the similarly between the products and services, the
greater

the

likelihood

of

confusion.”)

(internal

omitted); Heron Dev. Corp., 2018 WL 2943217 at *7.

quotations
Accordingly,

the Court finds, as a matter of law, that Defendants’ domain names
in the case at bar are confusingly similar to ZP’s marks.
4. Bad Faith Intent to Profit.
“[A] bad faith intent to profit is the essence of the wrong
that the [ACPA] seeks to combat.”

Southern Grouts & Mortars, Inc.

v. 3M Co., 575 F.3d 1235, 1246 (11th Cir. 2009).

A plaintiff may

not establish only that a defendant operated in bad faith; rather,
“[a] defendant is liable only where a plaintiff can establish that
the defendant had a bad faith intent to profit.”

Id. (emphasis in

original) (internal quotation marks omitted); 15 U.S.C. § 1125(d).
In determining whether Defendants possessed the bad-faith
intent to profit from ZP’s marks, the ACPA identifies nine nonexhaustive factors for courts to examine: (1) the trademark or
other intellectual property rights of Defendants, if any, in the
domain names; (2) the extent to which the domain names consist of
the

legal

name

or

commonly

used

names

of

Defendants;

(3)

Defendants’ prior use of the domain names for the bona fide
offering of goods or services; (4) any bona fide noncommercial or

33

fair use of the mark under the domain names; (5) Defendants’ intent
to

divert

consumers

from

Plaintiff’s

website

to

Defendants’

website by creating a likelihood of confusion; (6) Defendants’
offer to transfer, sell, or otherwise assign the domain names to
Plaintiff or others for financial gain; (7) Defendants’ provision
of

material

and

misleading

false

contact

information

when

registering the domain names and their intentional failure to
maintain

accurate

contact

information;

(8)

Defendants’

registration or acquisition of multiple domain names that they
know are identical or confusingly similar to marks of others; and
(9)

the

extent

distinctive

and

to

which

famous.

15

Plaintiff’s
U.S.C.

§

marks

are

or

are

not

1125(d)(1)(B)(i)(I)-(IX).

However, the most important grounds for finding a bad faith intent
to profit “are the unique circumstances of [a] case, which [may]
not fit neatly into the specific factors enumerated by Congress
but may nevertheless be considered under the [ACPA].”

Sporty’s

Farm, LLC v. Sportsman’s Mkt., Inc., 202 F.3d 489, 499 (2d Cir.
2000); see also Southern Grouts, 576 F.3d at 1244.
First,

regarding

Defendants’

trademark

or

intellectual

property rights to the domain names, the Court has discovered no
information that would suggest that these rights exist, nor has
Defendant attempted to establish that they do. Second, the extent
to which Defendants’ domain names consist of its legal name or one
that it commonly uses, it is uncontested that the phrases “One

34

Ten”

and

“One

Ten

Student

Living”

are

not

associated

with

Defendants’ legal name or one which it commonly uses. Third, there
is no evidence that Defendants have previously used the domain
names for the bona fide offering of goods or services. Fourth,
there is no evidence that Defendants made any noncommercial or
fair use of the marks.

Fifth, Defendants did intend to divert

internet users from ZP’s site to its own by redirecting the May 11
domains, which are confusingly similar to ZP’s marks, to the Campus
Quarters website.

(See Doc. 106-5 at 54-58).

Sixth, there is no

evidence that Defendants offered to transfer, sell, or otherwise
assign the domain names to Plaintiff or others for financial gain.
ZP relies on Defendants’ internal response of, “Tel him FU!” when
ZP made its pre-suit demand to transfer the domain name prior to
litigation.
faith,

However, this evidence suggests hostility and bad

but

does

not

reasonably

suggest

an

intent

to

profit.

Further, to the extent that ZP relies on communications made during
settlement negotiations in support of this factor (see doc. 106 at
19),

the

Federal

Rules

of

Evidence

clearly

preclude

the

consideration of such communications for the purpose of providing
the validity or invalidity of a claim.

See Fed. R. Evid. 408(a).

Seventh, there has been no affirmative evidence establishing that
Defendants used material and misleading false contact information
when registering the domain names.
registration

of

the

domain

names

35

While ZP points to Defendants’
using

a

privacy

service

as

evidence of using false and misleading contact information (see
doc. 106 at 19, 21, 28), “[u]se of a privacy protection service is
not

the same

information.”

thing

as

providing

false

or

misleading

contact

Career Agents Network, Inc. v. careeragentsnetwork.

biz, 2010 WL 743053 at *5 (E.D. Mich. Feb. 26, 2010).

Eighth, in

May 2018, Defendants re-registered eight domain names that they
knew were confusingly similar to ZP’s marks.

Finally, as noted

supra, ZP’s marks were distinctive on the dates of the 2018 reregistrations.
In addition to the factors enumerated above, the undersigned
looks to the unique circumstances of this case.

The consideration

of whether there has been a violation of the ACPA is limited to
the very attenuated issue of whether a violation occurred when
Defendants re-registered the domain names on May 11 and 27, 2018.
The Southern Grouts court spoke directly to this issue.

There,

the Eleventh Circuit found that a plaintiff failed to establish a
bad faith intent to profit when one of the instances on which the
plaintiff relied included the fact that the defendant maintained
control of the domain name at issue, including re-registering it
after a cease-and-desist letter issued and again after the action
was instituted.

Southern Grouts, 575 F.3d at 1245-46.

The court,

in rejecting this issue as evidence of bad faith intent to profit,
stated, “[t]his circumstance does not, however, tip our analysis
toward

a

conclusion

that

[defendant]

36

has

violated

the

Anticybersquatting Consumer Protection Act.”

Id. at 1246.

As

noted by the Eleventh Circuit:
The Senate Report accompanying the Anticybersquatting
Consumer Protection Act . . . defines cybersquatters as
those who:
(1) “register well-known brand names as
Internet domain names in order to extract
payment from the rightful owners of the
marks;” (2) “register well-known marks as
domain names and warehouse those marks with
the hope of selling them to the highest
bidder;” (3) “register well-known marks to
prey on consumer confusion by misusing the
domain name to divert customers from the mark
owner’s site to the cybersquatter’s own site;”
(4) “target distinctive marks to defraud
consumers,
including
to
engage
in
counterfeiting activities.”
Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806, 810
(6th Cir. 2004) (quoting S. Rep. No. 106-140 (1999),
1999 WL 594571 at *5-6 (emphasis added)). The report
says nothing about those who hold on to a domain name to
prevent a competitor from using it.
Congress enacted the Anticybersquatting [Consumer]
Protection Act in response to concerns over the
“proliferation of cybersquatting – the Internet version
of a land grab.” [internal quotations omitted]. . . .
Southern Grouts accuses 3M not of a design to sell a
domain name for profit but of a refusal to sell one.
Southern Grouts, 575 F.3d at 1246-47.

The court also noted that

a defendant could have an intent to profit when they divert
customers from the trademark owner’s website to the defendant’s
website, such that consumers would purchase defendant’s services
instead of the trademark owner’s services.

37

Id. at 1247.

Here, while ZP has shown that Defendants clearly acted in bad
faith, the question is whether Defendants intended to profit from
their 2018 re-registration of the domain names.

On this issue,

ZP’s evidence includes Defendants’ response to one of its many
demands that Defendants transfer the domain names to ZP, including
the

“onetenstudentliving.com”

domain,

to

which

Defendants

responded: “[i]n brief, that domain name is reserved for potential
future use in business operations.”
added).

(Doc. 106-13 at 21) (emphasis

While the Court agrees with Defendants that its action in

holding onto the domain names to prevent ZP from using them may
not, alone, evince an intent to profit, see Southern Grouts, when
taken together with the other circumstances of this case, including
the

fact

that

the

marks

were

registered

with

the

USPTO

by

July/October 2017; that Defendants had a history of redirecting
the domains to its own website (prior to the marks’ registration)
for the admitted purpose of “achiev[ing] more traffic for the
Campus Quarters website” (see Doc. 95 at 31); and the fact that
Defendants intended to hold onto the domain names for potential
future use in their business operations, such could reasonably
suggest a bad faith intent to profit from the 2018 re-registration
of the domain.

Defendants’ contradictory assertion that their

only motive in re-registering the domain names in 2018 was to
maintain the status quo during the pendency of this litigation
simply places this issue in dispute.

38

In sum, at this juncture, the undersigned cannot find, as a
matter of law, that Defendants did not act with a bad faith intent
to profit with regard to the May 2018 re-registration of the domain
names.

Thus, there remains a genuine issue of material fact as to

the element of bad faith intent to profit that prevents the
issuance of summary judgment on this issue.

Accordingly, for the

foregoing reasons, the Court DENIES both ZP’s and Defendants’
motions for summary judgment on ZP’s cybersquatting claim (Count
IV)

as

to

any

alleged

violations

occurring

after

July

2017

(specifically including, Defendants’ May 11 and 27, 2018, reregistration of the domain names).
B. Unfair Competition Claims Under the Lanham Act and
Based on Federal Common Law (Counts I, V).
In

the

second

amended

complaint,

Plaintiff

also

asserts

claims for unfair competition under the Lanham Act (Count I) and
unfair competition based on federal common law (Count V).
60).

(Doc.

The Lanham Act, 15 U.S.C. § 1125(a), was intended to make

“actionable the deceptive and misleading use of marks[,]” and “to
protect

persons

competition.”

engaged

in

.

15 U.S.C. § 1127.

.

.

commerce

against

unfair

The Act provides a cause of

action for unfair competition by stating:
(1) Any person who, on or in connection with any goods
or services, . . . uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading
description
of
fact,
or
false
or
misleading
representation of fact, which --

39

(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the
origin,
sponsorship, or approval of his or goods,
services, or commercial activities by another
person
. . .
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.
15 U.S.C. § 1125(a)(1)(A).

Actions brought under this section are

commonly referred to as § 43(a) actions.
“Section 43(a) of the Lanham Act creates a federal cause of
action for unfair competition by prohibiting the use in interstate
commerce of any ‘word, term, name, symbol or device, ... or any
false designation of origin ... which is likely to cause confusion
... as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person.’”
F.3d at 772 (quoting 15 U.S.C. § 1125(a).

Tana, 611

“To establish a prima

facie case of trademark infringement under § 43(a), a plaintiff
must show ‘(1) that it had trademark rights in the mark or name at
issue and (2) that the other party had adopted a mark or name that
was the same, or confusingly similar to its mark, such that
consumers were likely to confuse the two.’”12

12

Id. (quoting Lone

Marks (or trademarks) are “any word, name, symbol, or device,
or any combination thereof [used] to identify and distinguish
[one’s] goods ... from those manufactured or sold by others and to
40

Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d
355, 358 (11th Cir. 1997)); Planetary Motion, Inc. v. Techsplosion,
Inc., 261 F.3d 1188, 1193 (11th Cir. 2001); Conagra, 743 F.2d at
1512.
“To satisfy the first element of § 43(a) — proof of a valid
trademark — a plaintiff need not have a registered mark.”
611 F.3d at 773.

Tana,

“[T]he use of another’s unregistered, i.e.,

common law, trademark can constitute a violation of § 43(a) where
the alleged unregistered trademarks used by the plaintiff are so
associated with its goods that the use of the same or similar marks
by another company constitutes a false representation that its
goods came from the same source.”

Id. (quoting Conagra, 743 F.2d

1508, 1512–13 (11th Cir. 1984) (internal quotations and citations
omitted).

“However,

only

those

marks

that

are

capable

of

distinguishing the owner’s goods from those of others, i.e., that
are

sufficiently

‘distinctive,’

are

eligible

for

federal

registration or protection as common law marks under the Lanham
Act.”

Id.

As

previously

discussed,

“though

not

inherently

distinctive, [a mark] may become sufficiently distinctive to enjoy
trademark protection by acquiring ‘secondary meaning.’”
F.3d at 774.

Tana, 611

A mark is entitled to a presumption of acquired

secondary meaning and, thus, protectability, as of the date of the

indicate the source of the goods.” Tana v. Dantanna’s, 611 F.3d
767, 772 (11th Cir. 2010) (quoting 15 U.S.C. § 1127).
41

marks’ registration with the USPTO.

See Unique Sports, 403 F.

Supp. 2d at 1236; Gulf Coast Commercial, 508 F. Supp. 2d at 1164;
Aromatique, 28 F.3d at 870.
Under both the Lanham Act and federal common law, “trademark
rights are appropriated only through actual prior use in commerce.”
Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1022
(11th Cir. 1989).

“For Lanham Act purposes, under § 1125(a), a

defendant may be liable if he has used the plaintiff’s mark ‘in
commerce’ in a way that either ‘is likely to cause confusion, or
to cause mistake, or to deceive as to the affiliation, connection,
or association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services, or
commercial

activities

by

another

person.

.

.

.’”

Planned

Parenthood Fed’n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338,
*1, 1997 WL 133313, *3 (S.D.N.Y. Mar. 24, 1997), aff’d, 152 F.3d
920 (2d Cir. 1998)(quoting § 1125(a)(1)(A)).
In Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d
1188, 1194–95 (11th Cir. 2001), the Eleventh Circuit held that the
distribution of software for end-users over the Internet satisfied
the “use in commerce” jurisdictional predicate.

Id. (citing

Planned Parenthood, 1997 WL 133313 (S.D.N.Y.1997) (“The nature of
the Internet indicates that establishing a typical home page on
the Internet, for access to all users, would satisfy the Lanham
Act's ‘in commerce’ requirement.”).

42

The court in Planetary Motion

further noted that, “[b]ecause Congress’s authority under the
Commerce Clause extends to activity that ‘substantially affects’
interstate

commerce

.

.

.,

the

Lanham

Act’s

definition

of

‘commerce’ is concomitantly broad in scope: ‘all commerce which
may lawfully be regulated by Congress.’”

Id. (quoting 15 U.S.C.

§ 1127).
In sum, to establish its § 43(a) and federal common law unfair
competition claims, ZP must establish that it had prior rights to
the marks at issue; that Defendants adopted a mark or name that
was the same, or confusingly similar to, ZP’s marks, such that
consumers were likely to confuse the two; and that Defendants used
the marks in commerce.

15 U.S.C. § 1125(a)(1); Planetary Motion,

261 F.3d at 1188 (“In the absence of registration, rights to a
mark traditionally have depended on the very same elements that
are now included in the statutory definition. . . . Common law and
statutory trademark infringements are merely specific aspects of
unfair competition.”).

Thus, the legal standard for both common

law and statutory unfair competition is essentially the same, such
that resolution of the former will resolve the latter.
First, having previously found, as a matter of law, that
Defendants’ domain names at issue are confusingly similar to ZP’s
marks, that question is settled.

Second, with respect to ZP’s

prior rights to the marks, the undersigned has previously found,
as a matter of law, that the marks did not acquire secondary

43

meaning before July 2017.

Accordingly, ZP had no protectible

interest in the marks under the Lanham Act or federal common law
before July 2017.

As a result, ZP’s motion for summary judgment

on its Lanham Act and federal common law unfair competition claims
(Counts I and V) is DENIED as to any alleged violations by
Defendants occurring before July 2017.

For the same reason,

Defendants’ motions for summary judgment on ZP’s Lanham Act and
federal common law unfair competition claims (Counts I and V) are
GRANTED as to any alleged violations by Defendants occurring before
July 2017.
On the other hand, the Court has also found, as a matter of
law, that ZP’s marks acquired secondary meaning after they were
registered with the USPTO in July and October 2017 and that ZP had
a protectible interest in the marks at the time of Defendants’ May
2018 re-registration of the domain names.

The question remains,

however, whether Defendants’ re-registration of the domain names
in May 2018 constituted use of

ZP’s marks “in commerce.”

On that

question, the Court finds that reasonable minds could differ.
As previously discussed, the evidence shows that, in May 2016,
Defendants registered eight domain names on the Internet that the
Court has found herein, as a matter of law, are identical or
confusingly

similar

to

the

marks

at

issue

in

this

case.

Thereafter, from June to September 2016, Defendants redirected
Internet users of five of those domain name websites to their own

44

website for the express purpose of “achiev[ing] more traffic for
the Campus Quarters website.”13

(Doc. 95 at 31).

Then, on October

7, 2016, Defendants refused to transfer the “onetenstudentliving.
com” domain to ZP, stating that they were keeping it “for potential
future use in business operations.”
added).

(Doc. 106-13 at 21) (emphasis

Later, with full knowledge that ZP, their competitor,

had obtained registration of the “One Ten Student Living” and “One
Ten” marks in July and October 2017 with the USPTO, Defendants
continued to re-register the domain names on the Internet in May
2018.

This evidence arguably suggests that Defendants were using

the confusingly similar domain names “in commerce” in May 2018
when they re-registered the domain name websites on the Internet.
To the extent that Defendants assert that they merely “parked” the
websites on the Internet after they ceased redirecting users to
their website in September 2016, the undersigned finds that their
actions

in

parking

the

names,

and

thereby

preventing

ZP’s

commercial use of the names, could arguably constitute use “in
commerce,” thus creating a genuine issue of material fact on this
issue.

13

Defendants concede that the marks were used in commerce for
purposes of federal common law and Lanham Act unfair competition
claims from June 14, 2016 through September 20, 2016, the period
in which users of the domain names were redirected to the Campus
Quarters website. (Doc. 115 at 27-28).
45

The Court also notes that Defendants rely on Juno Online
Servs. v. Juno Lighting, Inc., 979 F. Supp. 684 (N.D. Ill. 1997),
to support their position that “registering or holding onto [sic]
a domain name, without more, is not use in commerce.”
at 27).

(Doc. 115

However, as noted by a sister court, “a closer reading of

Juno reveals that the court there addressed a situation where the
‘only factual allegation in the complaint relating to ‘use’ was
that the defendant might have been ‘warehousing the domain name,
and where the plaintiff conceded that the defendant had never used
the domain name in connection with its business.’” Southern Grouts
& Mortars, Inc. v. 3M Co., 2008 WL 11333151 at *3 (S.D. Fla. Apr.
29, 2008); Juno, 979 F. Supp. at 691.

That is a far cry from the

facts of this case which include undisputed use of the domain name
websites, namely, Defendants’ redirection for several months in
2016 of five of the domain name websites to its own website, and
an expressed intent to hold onto the websites for additional
potential future use in commerce.

Thus, Juno is distinct from the

instant matter.
Having undertaken a thorough analysis of whether the May 2018
re-registration of the domains constitutes use in commerce for
purposes of federal common law and the Lanham Act, the undersigned
finds that there is sufficient disagreement that cannot be resolved
at the summary judgment phase.

That is, there remains a genuine

issue of material fact as to whether the 2018 re-registration of

46

the domains constitutes a use “in commerce”
and federal common law.

under the Lanham Act

Accordingly, both ZP’s and Defendants’

cross-motions for summary judgment on Plaintiff’s Lanham Act and
federal common law claims (Counts I and V) alleging violations by
Defendants after July 2017 are DENIED.
C. State Law Claims (Count VI).
In the second amended complaint, ZP asserts that Defendants
are liable for trademark infringement and unfair competition under
Alabama Code § 8-12-1, et seq., and Alabama common law.
at 12-14; Doc. 106 at 26).

(Doc. 60

In support of its motion for summary

judgment on these state law claims, ZP argues that its “proof of
trademark infringement and unfair competition by Defendants under
the

Lanham

Act

also

suffices

to

prove

statutory and common law of Alabama.”

its

claims

under

the

(Doc. 106 at 26).

In

opposition to ZP’s motion and in support of their own countermotions for summary judgment, Defendants argue that ZP’s state law
claims fail because ZP had no protectible rights in the marks.
Also, according to Defendants, there was no likelihood of confusion
between the domain names and the marks, and Defendants did not
“use” the marks (as that term is contemplated in the Alabama
Trademark Act) after September 20, 2016, when Defendants ceased
redirecting users of the domain names to its own website.
115 at 29).

47

(Doc.

1. State Trademark Claims.
Under the Alabama Trademark Act, Ala. Code § 8-12-1, et seq.,
any person who uses a registered mark “in connection with a
business, or with the sale, offering for sale, or advertising of
any goods or services” in a manner that is “likely to cause
confusion or mistake or to deceive as to the source of origin of
such goods or services or the sponsorship of such business” is
liable

to

the

infringement.

owner

of

the

registered

mark

for

trademark

Ala. Code § 8-12-16.

Also, Alabama courts have long recognized a common law cause
of action for trademark infringement (to prevent the infringement
of trade names) under Alabama common law.

Alfa Corp. v. Alfa

Mortg. Inc., 560 F. Supp. 2d 1166, 1175 (M.D. Ala. 2008) (citing
Fuqua v. Roberts, 269 Ala. 59, 110 So. 2d 886, 887 (1959)).

To

set forth this claim, a plaintiff must demonstrate that its “trade
is in danger of harm from the use of its name by the ‘[defendant]
in such a manner as it is likely to deceive the public into the
belief that the [defendant’s] affairs, in the respect complained
of, are those of the [plaintiff].”

Id.

“In other words, a central

element of a claim of trademark infringement under Alabama common
law, just as under the Lanham Act, is the likelihood consumers
will be misled by the similarity of the parties’ marks.”
560 F. Supp. 2d at 1175.

48

Alfa,

“[T]he

test

for

the

state-law

infringement

claim

Alabama common law is same as it is under the Lanham Act.”

under
Id.

(citing Arthur Young, Inc. v. Arthur Young & Co., 579 F. Supp.
384, 389 (N.D. Ala. 1983).

Indeed, “this Court’s analysis of

[plaintiff’s] Alabama . . . common law trademark infringement
counterclaim[] is the same as the analysis for the claims under
federal law.”

Spire, Inc. v. Cellular South, Inc., 2017 WL

3995759, *6 (S.D. Ala. Sept. 11, 2017).
As previously determined, the domain names at issue in this
case are confusingly similar to ZP’s marks.

Therefore, that issue

is settled.
With respect to whether ZP had a protectible interest in its
marks under Alabama state law, the Court notes that the Alabama
Trademark Act, § 8-12-1, et seq., extends coverage only to use of
registered marks.

See Teal v. Gibbs, 2011 WL 13229629, *6 (N.D.

Ala. June 28, 2011) (“The Alabama Trademark Act creates a cause of
action for the infringement of a registered mark. . . . Because
Teal’s name is not registered as a mark in the State of Alabama,
the Court finds that Gibbs is entitled to summary judgment on
Teal’s claim for infringement under the Alabama Trademark Act.”).
Therefore, any use of the marks by Defendants before they were
registered with the Alabama Secretary of State in March 2017 is
not covered by the Act.

Moreover, for the same reasons discussed

with respect to ZP’s cybersquatting and Lanham Act claims, the

49

Court finds that ZP did not have a protectible interest in the
marks under Alabama common law prior to their registration with
the Alabama Secretary of State in March 2017.14

Therefore, ZP’s

state law trademark infringement claims (both statutory and common
law) arising out of Defendants’ use of the marks prior to March
2017 fail as a matter of law.

However, as with the Lanham Act

claims, the Court finds that ZP did have a protectible interest in
the marks after March 2017, when the marks were registered with
the Secretary of State.
The Court further finds, for the same reasons set forth in
the Court’s previous discussion of the Lanham Act claims, that a
genuine issue of material fact exists as to whether Defendants’
re-registration of the marks in May 2018 (when ZP had a protectible
interest in the marks) constitutes “use” of the marks under the
Alabama Trademark Act and state common law.15

See, e.g., Ala. Code

14

As stated, “the test for the state-law infringement claim under
Alabama common law is same as it is under the Lanham Act.” Alfa
Corp., 560 F. Supp. 2d at 1175. Therefore, the Court will not
repeat the lengthy discussion of how and when ZP’s marks acquired
secondary meaning.
Let it suffice to say that, for the same
reasons discussed in relation to the Lanham Act claim, ZP did not
have a protectible interest under state law (nor did the marks
acquire secondary meaning under state law) prior to their
registration with the Alabama Secretary of State in March 2017.
15

Defendants argue, as they did in response to ZP’s Lanham Act
claims, that the domain names “sat inert and parked, with no
content being displayed thereon” in 2018 and, thus, were not being
“used” at that time by Defendants in violation of the Alabama
Trademark Act or state common law. (Doc. 115 at 29). As previously
50

§ 8-12-6 (“[a] mark shall be deemed to be used . . . [i]n connection
with

services

when

it

is

used

or

displayed

in

the

sale

or

advertising of services and the services are rendered in this
state; and . . . [i]n connection with a business when it identifies
the business to persons in this state.”); Alfa, 560 F. Supp. 2d at
1175 (to set forth a common law trademark infringement claim in
Alabama, plaintiff must show that defendant “use[d] its name” (or
mark) “in such a manner as it is likely to deceive the public into
the belief that the [defendant’s] affairs . . . are those of the
[plaintiff].”).
2. State Law Unfair Competition Claim.
Turning next to ZP’s state law unfair competition claim, the
Court observes that “Alabama law does not recognize a common-law
tort of unfair competition.”

Alfa Corp., 560 F. Supp. 2d at 1175.

However, a plaintiff may proceed with its claim if it has alleged
“facts sufficient to establish a cause of action under the Alabama
tort of interference with business relations.”

Id.; see also

Midlothian Lab., LLC v. Pamlab, LLC, 509 F. Supp. 2d 1065, 1083,
vacated in part on other grounds, 509 F. Supp. 2d 1095 (M.D. Ala.
2007).

To present an actionable tort of intentional interference

with business relations, a plaintiff must show: “(1) the existence
of a protectible business relationship; (2) of which the defendant

discussed, Defendant’s evidence related to this argument merely
places the issue in dispute.
51

knew; (3) to which the defendant was a stranger; (4) with which
the defendant intentionally interfered; and (5) damage.”

White

Sands Group, LLC v. PRS II, LLC, 32 So. 3d 5, 14 (Ala. 2009).
In this case, neither side has discussed the factors set forth
above, let alone developed any arguments addressing whether the
required showing has or has not been made.

Doe v. City of

Demopolis, 799 F. Supp. 2d 1300, 1310 n.21 (S.D. Ala. 2011).
(“Courts are not saddled with the obligation to develop summary
judgment arguments for litigants who fail to do so themselves.”).
In the absence of any arguments addressing the required showing,
the Court finds that summary judgment is due to be denied on this
claim.
Accordingly, based on the foregoing, ZP’s motion for summary
judgment

on

its

state

statutory

and

common

law

trademark

infringement claims (Count VI) based on Defendants’ use of the
marks before March 2017 is DENIED, and Defendants’ motions for
summary judgment on said claims are GRANTED.

In addition, both

ZP’s and Defendants’ motions for summary judgment on ZP’s state
law trademark infringement and unfair competition claims (Count
VI) based on Defendants’ use of the marks after March 2017 are
DENIED.

Also, ZP’s and Defendants’ motions for summary judgment

based on ZP’s interference with business relations claim (Count
VI) is DENIED.

52

D.

Contributory and
III).

Vicarious

Liability

(Counts

II,

In the second amended complaint, ZP asserts that each of the
Defendants is vicariously and contributorily liable for use and
promotion of the domain names, unfair competition, and trademark
infringement under the Lanham Act, federal common law, state common
law, and Alabama Code, § 8-12-1 et. seq.

(Doc. 60).

In support

of its motion for summary judgment on these claims, ZP argues that
the undisputed evidence shows that Defendants acted as a “team” to
infringe

on

ZP’s

proprietary

rights

and

to

engage

in

unfair

competition against ZP and that each Defendant is liable under
contributory and vicarious theories of liability for intentionally
inducing each other to infringe on ZP’s trademark rights.

(Doc.

106 at 27-30).
Specifically, ZP argues that Defendants ILM Capital, LLC (a
real estate investment firm that owns Campus Quarters), Michael
Wheeler (the manager, CEO, and sole member of ILM Capital, ILM
Management, and WE Communities), and A.J. Hawrylak (an employee of
ILM

Capital

who

was

involved

in

the

domain

activity

and

communications), each had direct control over the registration,
maintenance, and use of the domain names; that they were identified
by name in the GoDaddy records as having access and control rights
to the various domain name accounts; and that the activity records
show

that

Wheeler

and

Hawrylak

53

specifically

participated

in

management of the domains, including their initial registration,
the masking through the privacy service, the instructions to
redirect the domain names to the Campus Quarters domain and its
website, and in the renewal of the domains during the pendency of
this lawsuit.

(Doc. 106 at 28-29).

In addition, ZP argues that

Defendants ILM Mobile Management LLC, We Communities LLC, Mobile
CQ Student Housing LLC, and Mary Schaffer-Rutherford operated the
Campus Quarters facility and actively participated in the use of
the infringing domain names. (Id. at 29).
In opposition to ZP’s motion and in support of their own
counter-motions

for

summary

judgment,

Defendants

argue

that,

“[b]ecause none of the Defendants bear primary liability for unfair
competition

or

trademark

infringement,

secondarily liable for such conduct.”

no

Defendant

can

(Doc. 115 at 29).

be
In

addition, Defendants dispute the degree of involvement of each of
the Defendants in the decisions to register the domain names
initially, to redirect the domain websites, and then to continue
re-registering domain names.

(Id.).

The Court has previously

found that there are genuine issues of material fact as to whether
Defendants’ re-registration of the domain names in 2018 violated
ZP’s rights in the One Ten and One Ten Student Living marks.

The

Court further finds that, with the exception of Defendant Mary

54

Schaffer-Rutherford, the evidence regarding each Defendant’s level
of direct participation is in dispute.16
Having found as a matter of law that ZP had no protectible
interest

in

the

marks

under

federal

or

state

law

until

the

registration of the marks with the Alabama Secretary of State on
March 23, 2017, and with the USPTO in July and October 2017, all
claims of vicarious and contributory liability based on conduct
occurring before those dates “must fail as a matter of course.”
Midlothian Lab., 509 F. Supp. 2d at 1083.

Therefore, ZP’s motion

for summary judgment as to its claims of vicarious and contributory
liability based on Defendants’ conduct occurring before March 23,
2017 (which would include the 2016 initial registration of the
domain names, the 2016 redirection of the domain names, and the
March 14, 2017, re-registration of the domain names) is DENIED,
and Defendants’ motions for summary judgment on said claims are
GRANTED.
However, because there are genuine issues of material fact as
to (1) whether Defendants’ re-registration of the domain names in
2018 violated ZP’s rights in the One Ten and One Ten Student Living
marks under federal or state law, and (2) the level of involvement
of each Defendant, aside from Defendant Mary Schaffer-Rutherford,
in that conduct, both ZP’s and Defendants’ motions for summary

16

The evidence, or lack thereof, with respect to Defendant Mary
Schaffer-Rutherford will be addressed in the following section.
55

judgment on ZP’s claims for contributory and vicarious liability
occurring after March 23, 2017 are DENIED, except that Defendant’s
motion is GRANTED as to Defendant Mary Schaffer-Rutherford.17
E. Defendant Rutherford’s Motion for Summary Judgment.
In their motions for summary judgment, Defendants universally
dispute ZP’s claims that any conduct in registering, redirecting,
and re-registering the domain names at issue violated state or
federal

trademark

or

unfair

competition

law.

In

addition,

Defendants divide themselves into groups based on the level of
participation they are alleged to have had in the misconduct
alleged in the second amended complaint.
First, Defendants ILM Capital, Michael Wheeler, and Andrew
Hawrylak refer to themselves as the “ILM Defendants.”18
at 3).

(Doc. 95

These Defendants do not deny direct involvement in the

registration, redirection, and re-registration of the domain names
at issue (see id.), although the exact nature and extent of their
involvement in the alleged conduct is not clear.

In any event,

17

As discussed, infra, Defendant Mary Schaffer-Rutherford is
entitled to summary judgment on all of the claims asserted against
her in this action.
18

As stated, ILM Capital is a real estate investment company whose
portfolio includes Campus Quarters in Mobile, Alabama; Wheeler is
the manager and sole member of ILM Capital; and Hawrylak is an
employee of ILM Capital. (Doc. 95 at 4). All of the domain names
at issue in this case were registered through Wheeler’s account
with GoDaddy.com. (Id. at 5 n.4).

56

these Defendants are not entitled to summary judgment on the basis
of non-involvement.19
Defendants ILM Management, WE Communities, and Mobile CQ
filed a separate motion for summary judgment, essentially arguing
that any actions taken with regard to the domain names at issue
were

taken

Hawrylak)

by
and

Management,

WE

the
that

ILM

Defendants

there

is

Communities,

participation in this case.20

no
and

(ILM

Capital,

evidence
Mobile

that
CQ

Wheeler,

and

Defendants

ILM

had

any

(Doc. 96 at 3, 11).

relevant

Defendants

concede, however, that Defendant Wheeler is the manager and sole
member of ILM Management, WE Communities, and Mobile CQ and had
the power to control the affairs of those entities.

(Id. at 5).

In addition, ZP points out that the Campus Quarters property is
owned by Mobile CQ, which is managed by ILM Management, which is

19

According to ZP, these Defendants had administrative authority
over the domain names; they were specifically identified by name
in the GoDaddy records as having access and control rights to the
various domain name accounts; and the activity records show that
Wheeler and Hawrylak specifically participated in management of
the
domains,
including
their
initial
registration,
the
instructions to redirect the domain names to the Campus Quarters
domain and its website; and in the renewal of the domain names
during the pendency of this lawsuit. (Doc. 121 at 32).
20

As previously stated, ILM Management is a non-member manager of
Mobile CQ; Mobile CQ owns the real property on which Campus
Quarters is situated; and WE Communities is a property management
company that manages Campus Quarters. (Doc. 96 at 2). Defendant
Wheeler is the manager and sole member of ILM Management, WE
Communities, and ILM Capital. (Id.).

57

in

turn managed

and

owned

by

Wheeler,

whose

GoDaddy

Hawrylak used to register the infringing domain names.

account

(Doc. 121

at 32).

Given the interrelated nature of the corporate entities

involved

and

Defendant

Wheeler’s

ownership/control

over

these

entities, their specific role in the alleged infringing conduct
murky at best.

Therefore, summary judgment for Defendants ILM

Management, WE Communities, and Mobile CQ is unwarranted at this
stage of the proceedings.
With respect to Defendant Rutherford, she too has filed a
separate motion for summary judgment and argues that she was not
involved in any conduct that would impose liability in this case.
(Doc. 97 at 1).

The Court finds that the undisputed evidence

relating to Defendant Rutherford’s involvement is insufficient to
create a genuine issue of material fact.

The undisputed evidence

shows that Defendant Rutherford was employed by WE Communities, as
the general manager of Campus Quarters, between May and November
2016.

(Doc. 97 at 2).

The GoDaddy Account at issue was not in

her name; she had no access to or control over the account; and
her name does not appear anywhere in the documents produced by
third

parties

relating

to

the

GoDaddy

Account.

(Id.).

In

addition, she was not involved in the redirection of the domain
names, and she no longer has any relationship, affiliation, or
association with Campus Quarters (or any of the Defendants in this
action).

(Id.).

Indeed, there appears to be no evidence of direct

58

involvement by Rutherford in the registration, redirection, or reregistration of the domain names at issue.
ZP responds that Rutherford worked for WE Communities, which
managed the Campus Quarters facility and is managed by Wheeler,
and that “she was feeding Hawrylak information about the One Ten
and

its electronic

marketing

efforts

during

the

time

he

was

registering the infringing Domain Names.” (Doc. 121 at 33).

ZP

also points out that, on May 26, 2018, Rutherford sent an email to
Hawrylak to notify him of One Ten’s Instagram account and that One
Ten’s

website

development.

had
(Id.).

an

image

reflecting

the

appearance

of

the

Assuming these facts to be true, they do not

evidence personal involvement by Rutherford in the registering,
redirection, or re-registration of the domain names at issue.

At

best, they reflect that Rutherford was merely keeping an eye on
her employer’s competition.

Based on the foregoing, the Court

finds that Defendant Rutherford is entitled summary judgment on
all claims alleged against her in the second amended complaint.
Accordingly, Defendant Rutherford’s motion for summary judgment is
hereby GRANTED.
VI.

CONCLUSION

Based

on

the

foregoing,

Plaintiff’s

motion

for

summary

judgment (Doc. 106) is DENIED; and Defendants’ motions for summary
judgment (Doc. 82, 94), are GRANTED, in part, and DENIED, in part,
as follows:

59

Defendants’

motions

for

summary

judgment

on

ZP’s

cybersquatting claim (Count IV) as to alleged violations occurring
before July 2017 are GRANTED, and Defendants’ motions for summary
judgment on ZP’s cybersquatting claim (Count IV) as to alleged
violations

occurring

after

July

2017

are

DENIED;

Defendants’

motions for summary judgment on ZP’s Lanham Act and federal common
law unfair competition claims (Counts I and V) as to alleged
violations occurring before July 2017 are GRANTED, and Defendants’
motions for summary judgment on ZP’s Lanham Act and federal common
law unfair competition claims (Counts I and V) as to alleged
violations

occurring

after

July

2017

are

DENIED;

Defendants’

motions for summary judgment on ZP’s state-law statutory and common
law

trademark

violations
Defendants’

infringement

occurring
motions

claims

before
for

(Count

March

summary

2017

judgment

VI)

as

are
on

to

alleged

GRANTED,
ZP’s

and

state-law

statutory and common law trademark infringement claims (Count VI)
as to alleged violations occurring after March 2017 are DENIED;
Defendants’

motions

for

summary

judgment

based

on

ZP’s

interference with business relations claim (Count VI) are DENIED;
Defendants’

motions

for

summary

judgment

on

ZP’s

claims

of

contributory and vicarious liability (Counts II and III) as to
alleged violations occurring before March 23, 2017, are GRANTED,
and Defendants’ motions for summary judgment on ZP’s claims of
contributory and vicarious liability (Counts II and III) as to

60

alleged violations occurring after March 23, 2017, are DENIED; and
Defendant Rutherford’s motion for summary judgment on all claims
asserted against her in this action is GRANTED.
DONE this 27th day of September, 2018.
/s/ SONJA F. BIVINS
UNITED STATES MAGISTRATE JUDGE

61