Migliore & Associates, LLC v. Kentuckiana Reporters, LLC

Filing 20

MEMORANDUM OPINION AND ORDER signed by Judge John G. Heyburn, II on 9/19/13 For reasons stated in the Memorandum Opinion 12 Motion to Dismiss for Failure to State a Claim is DENIED; 16 Motion for Leave to Amend Complaint is SUSTAINED. cc:counsel (SJS)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
AT LOUISVILLE
CIVIL ACTION NO. 3:13-CV-315-H

MIGLIORE & ASSOCIATES, LLC
AND
LISA MIGLIORE BLACK

PLAINTIFFS

V.
KENTUCKIANA REPORTERS, LLC

DEFENDANT

MEMORANDUM OPINION AND ORDER
Plaintiffs Migliore & Associates, LLC (“Migliore & Associates”) and Lisa Migliore
Black (together “Plaintiffs”) bring this action against competitor Kentuckiana Reporters, LLC
(“Kentuckiana”) alleging violations of the Lanham Act (15 U.S.C. § 1125(a)), the
Anticybersquatting Consumer Protection Act (“ACPA,” 15 U.S.C. § 1125(d)), and Kentucky
common law banning unfair competition practices.
Defendant has moved to dismiss each of Plaintiffs’ three claims under Federal Rule of
Civil Procedure 12(b)(6) for failure to state a claim. Defendant also moves to dismiss Lisa
Migliore Black in her personal capacity as an improper plaintiff. Plaintiffs object to the motion to
dismiss and cross-motion to amend the complaint, in part to correct for some of the inadequacies
highlighted in Defendant’s arguments. The Court addresses each request in turn after a brief
overview of the underlying facts.

1

I.
Lisa Migliore began working as a court reporter in the greater Louisville area in 1997. In
2001, Migliore established the Kentucky LLC “Migliore & Associates,” conducting business as
its sole member. In 2009, Migliore married. Because of the name recognition and goodwill her
maiden name had accrued in the community, she chose to retain “Migliore” as part of her
married name and did not alter the name of the business.
In August 2011, Kentuckiana Reporters, a Louisville-based competitor, registered the
domain name “lisamigliore.com” with GoDaddy.com, LLC. At some point after registration,
Defendant directly linked “lisamigliore.com” to its own website, rerouting any web traffic to
itself. Following a letter from Plaintiffs’ counsel dated June 19, 2012, Kentuckiana discontinued
the re-direction to its own website, but refused to transfer the domain name to Plaintiffs.
In August 2012, Plaintiffs proceeded under the Uniform Dispute Resolution Policy and
filed a complaint with an arbitral panel of the World Intellectual Property Organization
Arbitration and Media Center (“WIPO”). Defendant participated in this action, maintaining that
it had registered the disputed domain name for possible use as a “gripe site” for criticism of
Plaintiffs or as a “fact check site” regarding Plaintiffs’ public statements (WIPO decision, p.3).
The WIPO Arbitrator assigned to the case ultimately concluded that Defendant acted in bad faith
in its registration and use of the domain name and ordered the transfer of the domain name to the
Plaintiffs. After Defendant refused to reimburse Plaintiffs for costs associated with the WIPO
dispute, Plaintiffs filed the instant action in federal court.1

1

Plaintiffs have not waived their right to file an action in this Court by previously proceeding under the UDRP and
having their claim heard by an arbitral panel of WIPO. As other district courts and the Fourth Circuit have held,
arbitrating a dispute pursuant to UDRP does not preclude a plaintiff from filing a civil suit, either before or after the
arbitral proceeding. See Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 624-25
(4th Cir. 2003) (“Because the administrative process prescribed by the UDRP is ‘adjudication lite’ as a result of its
streamlined nature and loose rules regarding applicable law, the UDRP itself contemplates judicial intervention,
2

II.
Kentuckiana moves to dismiss each of Plaintiffs’ three claims under Federal Rule of Civil
Procedure 12(b)(6). “To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ A claim has facial
plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)) (internal citation
omitted). When reviewing Kentuckiana’s motion, the Court will construe the complaint liberally
and in the light most favorable to Plaintiffs, accepting as true all well-pleaded factual allegations
and drawing all reasonable inferences from those allegations in favor of the non-moving party.
Bishop v. Lucent Techs., Inc., 520 F.3d 516, 519 (6th Cir. 2009); Logsdon v. Hains, 492 F.3d
334, 340 (6th Cir. 2007).
III.
First, Defendant urges the Court to dismiss Count I (cyberpiracy under the ACPA, 15
U.S.C. §1125(d)) and Count II (false designation of origin and false advertising under §43(a),
codified at 15 U.S.C. 1125(a)) because “actual damages are required to sustain a cause of action
under the Lanham Act” and “plaintiffs failed to sufficiently plead that they were damaged by
Kentuckiana’s alleged conduct.” (MTD, Dock. No. 12-1, p.3-4). Though Kentuckiana levies the
same attack against both Counts I and II, and though the same facts form the basis for each
claim, the elements that comprise the claims are distinct, hence the Court will address
Kentuckiana’s attack on each claim separately.

which can occur before, during, or after the UDRP’s dispute-resolution process is invoked”); see also Paris v.
Netlearning, Inc., 139 F.Supp.2d 745, 751 (E.D.Va. 2001). As discussed at length in §II.A below, ACPA claims
offer more remedies than the cancellation or transfer of a domain name—the only remedies available under UDRP
proceedings.
3

A.
To establish a claim of cyberpiracy under the Anticybersquatting Consumer Protection
Act, 15 U.S.C. § 1125(d)(1)(A) a plaintiff must show that a defendant registered, trafficked in, or
used in bad faith a domain name that incorporates a famous or distinctive mark, including a
personal name, if that mark was famous or distinctive at the time of registration. The facts
alleged in the complaint, taken as true, satisfy each of the statutory requirements to render the
claim to relief “plausible on its face.” Iqbal, 556 U.S. at 678 (internal references omitted).
Defendant complains that “plaintiffs failed to sufficiently plead that they were damaged by
Kentuckiana’s alleged conduct and, therefore, fail to state a cause of action under Count[] I…of
their complaint.” (MTD, Dock. No. 12-1, p.4). This argument fails for the multiple reasons.
First, proof of damages is not part of the prima facie case for cyberpiracy. Section
1125(d) of 15 U.S.C. lays out the elements of the offense of cyberpiracy, while two separate
sections of the Lanham Act, 15 U.S.C. § 1117(a) and § 1117(d), detail the array of remedies
available to successful cyberpiracy claimants. Section 1117(a) allows a successful plaintiff to
recover—subject to principles of equity—“(1) defendant’s profits, (2) any damages sustained by
the plaintiff, and (3) the costs of the action.” In “exceptional cases,” attorney’s fees are available
as well.
As an alternative to recovery under § 1117(a), § 1117(d) provides for the election of
statutory damages in cyberpiracy actions: “In a case involving a violation of [the ACPA], the
plaintiff may elect at any time before final judgment is rendered by the trial court to recover,
instead of actual damages and profits, an award of statutory damages in the amount of not less
than $1,000 and not more than $100,000 per domain name, as the court considers just.” 15
U.S.C. § 1117(d) (emphasis added). Thus, to the extent Kentuckiana faults the complaint for

4

being “silent as to how Kentuckiana’s alleged use of the domain name caused any actual harm,”
the Court points out that no actual damages need be alleged to recover under the ACPA.
Second, the Court is satisfied that the allegations in the complaint do sufficiently link
Defendant’s actions to injury in order to push Plaintiffs’ claim to relief on the cyberpiracy claim
from possible to plausible.2 For instance, Plaintiffs allege that for an unknown period between
August 2011 and June 2012, Kentuckiana used the disputed domain name to directly link any
visitors to “lisamigliore.com” to Kentuckiana’s own website. DN 1, ¶ 23. This extended period
and type of use (together with the fact that registering a domain name with GoDaddy.com LLC
is not free3 and the fact that Kentuckiana allegedly engaged in a pattern of like behavior,
registering and putting to identical use domain names that incorporated three other competitors’
names or slight misspelling thereof, see DN 1, ¶ 33-36) raises the natural inference that
Kentuckiana’s registration and use of the “lisamigliore.com” domain name was intended to make
a profit.
From the time and manner of use that Kentuckiana put the contested domain name, it is at
least “plausible” that Kentuckiana profited from its efforts, comprising injury to Plaintiff and
representing but one category of damages4 Plaintiffs would be able to recover if they are
successful on the merits of their cyberpiracy claim. Plaintiffs’ inability to verify whether and to
what extent Kentuckiana profited from its actions or how many—if any—customers were

2

Because of this, the Court refrains from assessing Plaintiffs’ argument in their Memorandum in Opposition to
Defendant’s Motion to Dismiss that they could have relied on the statutory damages provision of the ACPA without
pleading actual damages (DN 13, p.3) and Defendant’s counter position that Plaintiffs are not entitled to an award of
statutory damages in the absence of a basis for them (DN 15, p.6). Plaintiff’s prayer for relief indicates that each
Plaintiff has already elected to seek the maximum statutory amount available per domain name, but their claim
could have moved forward in spite of the existence of § 1117(d) statutory damages for cyberpiracy violations.
3
Federal Rule of Evidence 201 allows judicial notice of a fact “not subject to reasonable dispute because it….can be
accurately and readily determined from sources whose accuracy cannot reasonably be questioned.” FRE 201(b)(2).
The court may take judicial notice on its own at any stage of the proceeding. FRE 201(c)-(d).
4
If Plaintiffs successfully make out a violation of the cyberpiracy, they will also be entitled to costs of the present
action under 1117(a).
5

diverted is immaterial at this early stage of litigation. Plaintiffs have met their burden of pleading
factual content that allows the Court to draw the reasonable inference that defendant is liable for
the misconduct alleged, allowing Plaintiffs’ cyberpiracy claim to survive Kentuckiana’s motion
to dismiss. See Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556).5
Bolstering this conclusion, although judicial review of a WIPO decision is de novo,6 the
WIPO arbitrator’s decision helps demonstrate that Plaintiffs’ cyberpiracy claim meets the
plausibility standard for pleading. See Fabian v. Fulmer Helmets, Inc., 628 F.3d 278, 280 (6th
Cir. 2010) (“Plausibility requires showing more than the ‘sheer possibility’ of relief but less than
a ‘probable’ entitlement to relief.”) (citations omitted). Indeed, the WIPO arbitrator made
specific findings after hearing each side’s arguments and evidence that Kentuckiana’s
registration and use of the contested domain name was in bad faith. Plaintiffs incorporate the
WIPO decision into their complaint. DN 1, ¶ 38-43.
Kentuckiana’s motion to dismiss Plaintiffs’ ACPA claim is denied.
B.
Plaintiffs next make a claim for false designation of origin and false advertising based
upon § 43(a) of the Lanham Act. The pertinent part of that statute provides:
(1) any person who, … in connection with any goods or services,…uses in
commerce any word, term, name, symbol, or device, or any combination thereof,
5

In their Memorandum in Opposition to Defendant’s Motion to Dismiss, Plaintiffs attempt to construe the costs of
the WIPO action they engaged in as actual damages. DN 13, p.6 (referencing DN 1, ¶ 39, 46). As Kentuckiana
points out, DN 15, p.5, Plaintiffs chose to pursue arbitration when the same type of injunctive relief—namely, an
order to transfer the domain name—could have been afforded in a solitary civil action in federal court. See 15
U.S.C. § 1125(d)(1)(C). The expense of the WIPO action will not be included with any actual damages Plaintiffs
prove in the immediate action. This result is mandated by the plain language of the statutory provision detailing the
remedy for a violation of 1125(a): “[plaintiff shall be entitled to recover] (1) defendant's profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117(a). This language contemplates a
consolidated action in a federal court where there is authority, in the face of an ACPA violation, to order transfer of
domain name(s) (1125(d)(1)(C)), grant injunctions (1116(a)), and/or provide recovery of actual damages (1117(a))
or statutory damages (1117(d)). Still, contrary to Defendant’s assertions, DN 15, p.5, actual damages are not a
“requisite” for Plaintiff’s cyberpiracy claim to proceed.
6
See Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft, 213 F.Supp.2d 612, 617 (E.D.Va. 2002).
6

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
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). Defendant attacks Count II in the same way it faults Count I, lamenting
that Plaintiffs provide no more than “mere labels and conclusions” to describe how Defendant’s
alleged use of the domain name caused any actual harm cognizable under the Lanham Act. ECF
DN 12-1 at p. 6-7. Defendant contends that Plaintiff inadequately alleges that Defendant’s
actions produced actual confusion or that consumers were successfully misled by Defendant’s
actions. Id. This argument fails at this stage of litigation. On a motion to dismiss, the court
simply tests whether the complaint contains “direct or inferential allegations respecting all the
material elements to sustain a recovery under some viable legal theory.” Hunter v. Sec’y of the
U.S. Army, 565 F.3d 986, 992 (6th Cir. 2009) (quoting Advocacy Org. for Patients and Providers
v. Auto Club. Ins. Ass’n, 176 F.3d 315, 319 (6th Cir. 1999)).
Here, Plaintiffs have alleged common law rights in the name “Lisa Migliore” by reason
of use of this name, standing alone and as “Migliore and Associates, LLC” to identify the
Plaintiff’s business for over a decade. The disputed domain name is identical to Lisa Migliore
Black’s maiden name minus the generic top-level domain “.com.” Plaintiffs never authorized
Defendant to use this name and claim that Defendant had no legitimate purpose in its use. For
some period of time after registering “lisamigliore.com” in August 2011 until the end of June
2012, Defendant used the domain to automatically redirect visitors to the site of its own
webpage, “kentuckianareporters.com.” DN 1, ¶ 23. According to Plaintiffs, the intention and

7

effect of this practice was to mislead consumers into believing that Lisa Migliore worked for, or
was somehow affiliated with, Kentuckiana Reporters.
These facts, together with the inferences they raise, are enough to meet the pleading
standard and raise a plausible claim to relief on Count II and Kentuckiana’s motion to dismiss
Plaintiffs’ claim under 15 U.S.C. 1125(a) is denied.
IV.
Next, Kentuckiana urges a general standing problem. In their complaint, Plaintiffs make
such claims as
Defendant intentionally attempted to attract for commercial gain Internet
users to the Defendant’s website or other on-line location by creating a likelihood
of confusion with the Plaintiffs’ name as to the source, sponsorship, affiliation, or
endorsement of the Defendant’s website or location of a product or service on the
Defendant’s website or location.

DN 1, ¶ 51. Kentuckiana argues
…[T]he Migliore plaintiffs have alleged a purely speculative
injury…[t]hey allege only that Kentuckiana attempted to attract Internet users
from www.lismigliore.com, but fail to allege that the domain name had ever
been used for solicitation or advertisement of court reporting services or that any
actual traffic or customers were diverted.
DN 12-1, p.9 (emphasis in original). Kentuckiana is correct that Plaintiffs are required to
establish an “actual or imminent, not conjectural or hypothetical” injury as one of the
“irreducible constitutional minimum[s]” of standing to raise any claim in federal court. Lujan v.
Defenders of Wildlife, 504 U.S. 555, 560. However, it is also true that “each element [of
standing] must be supported in the same way as any other matter on which the plaintiff bears the
burden of proof, i.e., with the manner and degree of evidence required at the successive stages of
litigation.” Lujan v. National Wildlife Federation, 497 U.S. 871-883-89 (1990). This means that
at the pleading stage, “general factual allegations of injury resulting from the defendant’s
8

conduct may suffice.” National Wildlife Federation, 497 U.S. at 889. As discussed in § II.A
above, the fact that Plaintiffs are unable at this time, prior to the performance of any discovery,
to pinpoint exactly how much—if any—business Kentuckiana diverted or confusion it caused by
its use of the contested domain name is immaterial. At this time, the pertinent inquiry is whether
Plaintiffs have alleged adequate facts to enable this Court to find it plausible they suffered injury
cognizable under the Lanham Act.
For the reasons discussed in § II.A above, Plaintiffs have met this burden and
Defendant’s motion to dismiss Plaintiffs’ claims on general standing grounds is denied.
V.
Kentuckiana also moves to dismiss the claims of Lisa Migliore Black in her personal
capacity. Kentuckiana argues these claims are “duplicative” and should be dismissed according
to the authority found in KRS 275.155:
A member of a limited liability company shall not be a proper
party to a proceeding by or against a limited liability company solely by
reason of being a member of the limited liability company….
According to Kentuckiana, Lisa Migliore Black may not tack on a personal claim when the
allegations seek redress “solely on behalf of Migliore and Associates,” as here: “[A]ny actual
damages from the diversion were incurred solely by Migliore and Associates, LLC.” DN 12-1,
p.9.
The Court will not dismiss Lisa Migliore Black’s personal claims at this time. As the
complaint alleges, DN 1, ¶ 15; see also DN 13, p. 8, Lisa Migliore Black has common law rights
akin to an unregistered trademark interest in the name “Lisa Migliore.”7 Under both common law

7

See, e.g., Parks v. LaFace Records, 329 F.3d 437, 446-47 (6th Cir. 2003). In Parks, the Sixth Circuit
held that Rosa Parks, civil rights icon who had international fame and authorized television programs and
books, had a property interest in her name akin to that of a person holding a trademark, and thus, had a
viable cause of action under the product confusion provision of the Lanham Act against record producer and
9

and federal law, “a trademark is a designation used ‘to identify and distinguish’ the goods of a
person.’” J. Thomas McCarthy, MCCARTHY ON TRADEMARKS, § 3.1 (4th ed. 2004) (quoting 15
U.S.C. § 1127). A trademark need not be registered to be entitled to protection under the ACPA.
See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209 (2000); Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992). Rather, “the general principles qualifying a mark for
registration under [the act] are for the most part applicable in determining whether an
unregistered mark is entitled to protection.” Two Pesos, 505 U.S. at 768. The provision
governing registration under the act “requires that registration be granted to any trademark ‘by
which the goods of the applicant may be distinguished from the goods of others’-subject to
various limited exceptions.” Wal-Mart Stores, 529 U.S. at 211 (quoting 15 U.S.C. § 1052).
Lisa Migliore Black has incorporated the personal name “Lisa Migliore” as all or part of
the designation she has used to advertise and promote her business for over 16 years. DN 1, ¶ 11,
15-17. Putting the existence of the LLC plaintiff in the instant case to the side, the language of
the Lanham Act contemplates suits brought by plaintiffs in their personal capacities under the
right circumstances. Further, neither the language of the Act nor Kentucky unfair competition
law poses a bar to two plaintiffs with distinct interests8 in a mark from both bringing suit against
the infringer. While it might be true that actual damages—if any—from Kentuckiana’s infringing
acts would be incurred by Migliore and Associates, DN 12-1, p. 9, it does not follow that “[t]he

musicians who used her name as the title of a song, even though her name might not be eligible for registration as a
trademark, and even though the producer and musicians were not selling her brand of compact discs (CDs), if
consumers falsely believed the celebrity sponsored or approved the song, or was somehow affiliated with the song
or the album. Lanham Trade–Mark Act, § 43(a)(1)(A), 15 U.S.C.A. § 1125(a)(1)(A). In the case at bar, Lisa
Migliore Black, the only court reporter in the vicinity who has ever advertised her services under “Lisa Migliore,”
DN 1, ¶ 15, has alleged, and at this stage in litigation we accept as true, that her identity was invoked and has
commercial value and market recognition. Because of her use of her name, Lisa Migliore Black likely could have
registered “Lisa Migliore” as a trademark, see 15 U.S.C. § 1052, but as discussed in-text above, marks do not have
to actually be registered to warrant protection under the Lanham Act provisions Black relies on.
8

See DN 13, p.8.
10

sole connection Lisa Migliore Black has to this litigation is her membership in Migliore and
Associates, LLC.” DN 12-1, p. 10. Also, as discussed in §§ II.A and II.B above, true “actual
damages” are not the only category of compensation Plaintiffs stand to receive if they prevail on
the merits of the claims.
For these reasons, Kentuckiana’s motion to dismiss the claims Lisa Migliore Black
makes in her personal capacity is denied.
VI.
Lastly, Kentuckiana urges the Court to dismiss Plaintiff’s Count III, unfair competition,
because the complaint references a section of the Kentucky Revised Statutes that deals with the
insurance business. DN 1, ¶ 61. Defendant attempts to construe this citation as Plaintiffs’ attempt
to state a claim under the Kentucky Insurance Code, and points out that none of the factual
allegations in the complaint support a cause of action under the Insurance Code.
Upon review, the Court finds that, erroneous statutory pin cite notwithstanding, Plaintiffs
clearly demonstrated the intent to state a claim under the broader concept of common law unfair
competition which is recognized in a variety of contexts in Kentucky. This is evident by the
header used in that section of the complaint: “Count III – Unfair Competition.” DN 1, p.11.
Assessing the adequacy of the pleading with this reading in mind, we find the totality of the
allegations, incorporated into Count III at paragraph 60, meet the pleading standard we use on a
motion to dismiss. “The common law doctrine of unfair competition has long been recognized
and its coverage…expanded to meet many varying types of business conditions.” Covington Inn
Corp. v. White Horse Tavern, Inc., 445 S.W.2d 135, 137 (Ky. 1969). A “species of fraud or
deceit,” the “universally recognized, and…most common” form of common law unfair
competition is “simulation by one person of the name, symbols, or devices employed by a

11

business rival, so as to induce the purchase of his goods under a false impression as to their
origin or ownership and thus secure for himself benefits properly belonging to his competitor.”
Id. (quoting 52 Am. Jur. Trade-marks, Trade-names, Etc., section 86, page 564). The same
allegations found at § II.A.1-2 herein to be sufficient to meet the plausibility pleading standard
on Plaintiffs’ Lanham Act claims provide the foundation for Plaintiffs’ common law unfair
competition claim.
Kentuckiana’s motion to dismiss Count III is denied.
VII.
In response to Kentuckiana’s motion to dismiss, Plaintiffs have moved for leave to file
their first amended complaint pursuant to Federal Civil Rule 15. In the interests of efficiency and
expediency, the Court will address Plaintiffs’ motion herein. Because Plaintiffs motioned to
amend their complaint more than twenty-one days after Kentuckiana’s 12(b)(6) motion, Rule
15(a)(2) applies and Plaintiffs may only amend with Kentuckiana’s written consent or this
Court’s leave. The rule directs that the “court should feely give leave when justice so requires.”
Id. The grant or denial of leave to amend is within the discretion of the trial court, and review is
for abuse of discretion. Roth Steel Prods. v. Sharon Steel Corp., 705 F.2d 134, 155 (6th Cir.
1983).
To summarize the requested amendments, Plaintiffs seek to redact an accidental reference
to Kentucky’s insurance code in their unfair competition claim based on Kentucky common law,
add punitive damages to their prayer for relief, and add clarification to their damages requests.
DN 16.
At this early date in the present litigation, none of Plaintiff’s requested amendments
“unduly prejudice” Kentuckiana, nor is there evidence of bad faith or a dilatory motive on the

12

part of the Plaintiffs. First, it should already have been clear to Defendant, both from the generic
heading “Count III – Unfair Competition,” DN 1, p. 11, and from the absence of any mention or
relevance of the insurance industry to the underlying facts, that Plaintiffs’ citation to KRS §
304.12-010 in the Complaint was likely accidental. Second, that Plaintiffs now seek to add a
punitive damages claim cannot plausibly be characterized as a surprise to Kentuckiana, given the
WIPO Arbitrator’s finding (which we will review de novo) that Defendant registered and used
the domain name in bad faith.
As to the punitive damages claim Plaintiffs seek to add, Defendant argues “Each decision
made by Kentuckiana in this litigation has been based upon the scope of the action as represented
by the Migliore Plaintiffs in their original complaint. Kentuckiana may have taken any number
of different directions in the litigation had it known of the expanded scope of this action.” DN
17, p.1-2. This argument does not demonstrate undue prejudice; this suit is still in its earliest
stages and Defendant has an array of options before it. Further, the Court has considered
Defendant’s argument that the addition of punitive damages is not based on any “new”
information. DN 17, p.1. Plaintiffs do recite evidence to support their punitive claim they aver
was discovered in preparation for trial discovery, but do not claim they did not have access to
this information before drafting the initial complaint. DN 16. Still, on balance, the Court finds no
bad faith on the part of Plaintiffs and do not find that the addition of punitive damages will
unduly prejudice the Defendant or “radically” expand the scope of this litigation.
Finally, as discussed at length in § II herein, the Court does not agree with Defendant’s
assessment of Plaintiffs’ original complaint as being inadequately pleaded. With this in mind, we

13

find no reason to deny Plaintiffs the opportunity to make the slight clarifications9 they propose to
make to their trademark infringement and unfair competition claims.
Being otherwise sufficiently advised,
IT IS HEREBY ORDERED that the Defendant’s Motion to Dismiss is DENIED.
IT IS FURTHER ORDERED that Plaintiffs’ Motion to Amend the complaint is
SUSTAINED.

September 19, 2013

cc:

Counsel of Record

9

For instance, Plaintiffs already make the following allegation in their original complaint regarding their ACPA
claim: “Defendant intentionally attempted to attract for commercial gain Internet users to the Defendant’s website or
other on-line location by creating a likelihood of confusion with the Plaintiffs’ name as to the source, sponsorship,
affiliation, or endorsement of the Defendant’s website or location of a product or service on the Defendant’s website
or location. Defendant has no interest and should not benefit from the Domain Name.” DN 1, ¶ 50. In their amended
complaint, Plaintiffs seek to add the following paragraph immediately after the one just described: “Defendant did,
in fact, divert and redirect consumers who typed in the disputed Domain Name to Defendant’s own website while
the Domain name was actively linked to the Kentuckiana website.”

14