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

Filing 196

ORDER denying 191 Motion to Alter Judgment on the grounds that Defendants have failed to show any new evidence suggesting Defendants' entitlementto a judgment in their favor on the claims at issue or any showingof clear error or manifest injustice. Signed by Magistrate Judge Sonja F. Bivins on 11/1/19. (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
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ORDER

This action is before the Court on Defendants’ motion to
alter, amend, or vacate judgment.

(Doc. 191).

The Court finds

that Defendants’ motion can be resolved without the aid of briefing
from Plaintiff, and for the reasons set forth herein, DENIES
Defendants’ motion.
I.

Standard for Motion to Alter, Amend, or Vacate Judgment.
“The only grounds for granting [a Rule 59] motion are newly-

discovered evidence or manifest errors of law or fact.”

Ogburia

v. Alabama Agric. & Mech. Univ., 2009 WL 10688644, *1 (N.D. Ala.
May 4, 2009)(quoting In re Kellogg, 197 F.3d 1116, 1119 (11th Cir.
1999)).

“[A] Rule 59(e) motion [cannot be used] to relitigate old

matters, raise argument or present evidence that could have been
raised prior to the entry of judgment.”

Id. (quoting Michael

Linet, Inc. v. Village of Wellington, Fla., 408 F.3d 757, 763 (11th
Cir. 2005)).

“In the interests of finality and conservation of scarce
judicial

resources,

reconsideration

of

an

order

is

an

extraordinary remedy and is employed sparingly.” Gougler v. Sirius
Products, Inc., 370 F. Supp. 2d 1185, 1189 (S. D. Ala. 2005); see
also Spellman v. Haley, 2002 U.S. Dist. LEXIS 27308, *1, 2004 WL
866837, *2 (M.D. Ala. Feb. 22, 2002)(“litigants should not use
motions to reconsider as a knee-jerk reaction to an adverse
ruling”); Gipson v. Mattox, 511 F. Supp. 2d 1182, 1185 (S.D. Ala.
2007)(a party may not “utilize a motion to reconsider as a vehicle
for rehashing arguments considered and rejected in the underlying
order.”).

“Motions to reconsider are not a platform to relitigate

arguments previously considered and rejected.” Gougler, 370 F.
Supp. 2d at 1189 n.1 (“It is well established in this circuit that
‘[a]dditional facts and arguments that should have been raised in
the first instance are not appropriate grounds for a motion for
reconsideration.’”); see also American Home Assur. Co. v. Glenn
Estess

&

Assoc.,

Inc.,

763

F.2d

1237,

1239

(11th

Cir.

1985)(cautioning against use of motion to reconsider to afford a
litigant “two bites at the apple”); Rossi v. Troy State University,
330 F. Supp. 2d 1240, 1249 (M.D. Ala. 2002)(denying motion to
reconsider where plaintiff failed to submit evidence prior to entry
of order and failed to show good cause for the omission).
The Eleventh Circuit has also stressed that “a motion to
reconsider should not be used by the parties to set forth new

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theories of law.”
(11th

Cir.

1997);

Mays v. U.S. Postal Service, 122 F.3d 43, 46
accord

Russell

Petroleum

Corp.

v.

Environ

Products, Inc., 333 F. Supp. 2d 1228, 1234 (M.D. Ala. 2004);
Coppage v. U.S. Postal Service, 129 F. Supp. 2d 1378, 1379-81 (M.D.
Ga. 2001).
II.

Analysis.

In their motion, Defendants argue that the Court applied the
incorrect legal standard to ZP’s Lanham Act (15 U.S.C. § 1125(a))
and state law trademark infringement/unfair competition claims,
when the Court ruled on the parties’ summary judgment motions over
one

year

ago,

on

September

27,

2018.1

(Docs.

130,

191).

Specifically, Defendants state that the Court “conflated the less
stringent

‘confusingly

similar’

standard

used

in

analyzing

[cybersquatting] claims with the more comprehensive, and more
difficult to satisfy, ‘likelihood of consumer confusion’ standard
used in analyzing unfair competition and trademark infringement
claims.”

(Doc. 191 at 2-3).

Defendants further state that:

[I]n
the
context
of
analyzing
ZP’s
cybersquatting claim at summary judgment, the
Court determined that the Domain Names and
ZP’s trademarks were ‘confusingly similar.’
Then, in the context of analyzing ZP’s unfair
1

Defendants argue that the Court applied the incorrect legal
standard to ZP’s state law claims for trademark infringement, as
they utilize the same standard as the federal trademark
infringement/unfair competition claims under Lanham Act.
(Doc.
191 at 2). For the same reasons that Defendants’ motion to alter,
amend, or vacate is denied as to ZP’s Lanham Act claim, it is also
denied as to ZP’s state law claims for trademark infringement.
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competition/trademark infringement claims,
the Court short-circuited the ‘likelihood of
confusion’ analysis by referencing its finding
that the Domain Names were confusingly similar
to ZP’s marks. The Court carried this same
analysis over into the Trial Order.
(Doc. 191 at 2).
In the Court’s summary judgment order of September 27, 2018,
the

Court

Consumer

analyzed

ZP’s

Protection

Act

claims

under

(“ACPA”),

15

the

Anti-Cybersquatting

U.S.C.

§1125(d)(1)(A),

explaining that 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).

(Doc. 130 at 14).

In the order, the Court

concluded, as a matter of law, that Defendants’ domain names were
identical or confusingly similar to ZP’s protectible marks.

(Id.

at 33).
In the Court’s summary judgment order of September 27, 2018,
the Court also analyzed ZP’s Lanham Act and state law trademark
infringement/unfair competition claims.

(Id. at 39-51).

respect to ZP’s Lanham Act claim, the Court explained:
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 engaged in . . . commerce against
unfair competition.” 15 U.S.C. § 1127. 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

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With

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 -(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
her 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.’”
Tana, 611 F.3d at 772 (quoting 15 U.S.C. §
1125(a). “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.’” Id. (quoting Lone
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.

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. . .
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. . . .
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.
(Doc. 130 at 39-43).
In

their

motion

to

alter,

amend,

or

vacate

judgment,

Defendants acknowledge that the Court set forth the proper standard
when

discussing

the

Lanham

Act

claims.

(Doc.

191

at

3).

Nevertheless, one year later, Defendants take issue with the fact
that the Court “made no mention of the seven factor ‘likelihood of
confusion’ analysis used by courts to a analyze unfair competition
and trademark infringement claims.”

(Id. at 4) (citing cases).

Defendants also take issue with the Court’s statement that, “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.”

(Doc. 130 at 43).

Defendants argue that, by not

repeating the Lanham Act standard in its entirety, although it had
been set forth in its entirety in the previous paragraph, the Court
applied

the

“confusingly

similar”

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standard

of

cybersquatting

claims to the Lanham Act claims, instead of applying the “likely
to cause confusion” standard applicable to Lanham Act claims.
Defendants’ argument is misplaced.
To be clear, the Court analyzed and found as a matter of law
at the summary judgment stage (and that finding has been heretofore
unchallenged in this litigation) that the domain names at issue in
this case were confusingly similar to ZP’s marks, so as to satisfy
that element of ZP’s cybersquatting claim.

(Doc. 130).

The Court

also analyzed and found as a matter of law at the summary judgment
stage (and that finding has been heretofore unchallenged in this
litigation), that the domain names at issue in this case were
confusingly similar such that consumers were likely to confuse the
two, so as to satisfy that element of ZP’s the Lanham Act and state
law trademark infringement claims.

(Id.).

The Court reaffirms

those findings now.
In Tana v. Dantanna’s, 611 F.3d 767, 774–75 (11th Cir. 2010),
the Eleventh Circuit stated:
In evaluating whether there is a likelihood of
confusion between two marks, our court applies
a multifactor test, evaluating the following
seven factors: (1) strength of the mark
alleged to have been infringed; (2) similarity
of the infringed and infringing marks; (3)
similarity between the goods and services
offered under the two marks; (4) similarity of
the actual sales methods used by the holders
of the marks, such as their sales outlets and
customer base; (5) similarity of advertising
methods; (6) intent of the alleged infringer
to misappropriate the proprietor’s good will;

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and (7) the existence and extent of actual
confusion in the consuming public.
Evaluation of these factors overwhelmingly demonstrates that
Defendants adopted a mark that was the same, or confusingly similar
to, ZP’s marks, such that consumers were likely to confuse the
two.

This is particularly true given that the domain names were

identical

or

intentionally

confusingly
chosen

by

similar
Defendants

to

ZP’s
for

marks

that

and

were

reason;

that

Defendants are direct competitors of ZP and offer the same goods
and services in the same locale as ZP; that Defendants and ZP both
use the internet to advertise and compete for the same customer
base; and that the Defendants have repeatedly exhibited bad faith
in their dealings with ZP.
Therefore, Defendants’ motion, which is without merit, is
DENIED.
III. Conclusion.
Based on the foregoing, Defendants’ motion to alter, amend,
or vacate judgment is DENIED on the grounds that Defendants have
failed to show any new evidence suggesting Defendants’ entitlement
to a judgment in their favor on the claims at issue or any showing
of clear error or manifest injustice.
DONE this 1st day of November, 2019.
/s/ SONJA F. BIVINS
UNITED STATES MAGISTRATE JUDGE

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