Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Filing 189

MOTION for Partial Summary Judgment by Weather Underground, Incorporated. (Attachments: # 1 Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit N, # 12 Exhibit P, # 13 Exhibit Q, # 14 Exhibit R, # 15 Exhibit Y, # 16 Exhibit AA - Part 1, # 17 Exhibit AA - Part 2, # 18 Exhibit BB, # 19 Exhibit CC, # 20 Exhibit EE, # 21 Exhibit GG, # 22 Exhibit HH, # 23 [PLACED UNDER SEAL PURSUANT TO 192 ] Exhibit II, # 24 Exhibit JJ, # 25 Exhibit KK, # 26 Exhibit LL - Part 1, # 27 Exhibit LL - Part 2, # 28 Exhibit MM, # 29 Exhibit NN) (Schaefer, Enrico) Modified on 8/2/2011 (DWor).

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
vs.
NAVIGATION CATALYST SYSTEMS,
INC., a Delaware corporation;
CONNEXUS CORP., a Delaware
corporation; FIRSTLOOK, INC., a
Delaware corporation; and EPIC
MEDIA GROUP, INC., a Delaware
corporation;

Case No. 2:09-CV-10756
Hon. Marianne O. Battani

Defendants.
______________________________________________________________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants
William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT
ON ACPA CLAIMS AGAINST DEFENDANTS NAVIGATION
CATALYST SYSTEMS, INC., CONNEXUS CORP. AND FIRSTLOOK, INC.

NOW COMES Plaintiff, The Weather Underground, Inc., by and through its
counsel, Traverse Legal, PLC., and for its Motion for Summary Judgment on Plaintiff’s
Anti-Cybersquatting Consumer Protection Act (“ACPA”) claims against Navigation
Catalyst Systems, Inc. (“NCS”), FirstLook, Inc. (“FirstLook”), and Connexus Corporation
(“Connexus”), filed pursuant to Fed.R.Civ.P. 56, states as follows:
1.

Plaintiff is the owner of all rights, common law or otherwise, and has

achieved registration with the United States Patent and Trademark Office for THE
WEATHER UNDERGROUND (Reg. No. 2,297,683) (First Use in Commerce 3-161995), WUNDERGROUND.COM (Reg. No. 2,324,272) (First Use in Commerce 3-161995), WUNDERSEARCH (Reg. No. 3,647,301) (First Use in Commerce 2-0-1999),
WUNDERPHOTOS (Reg. No. 3,739,351) (First Use in Commerce 8-12-2002), and
WUNDERBLOG (Reg. No. 3,742,092) (First Use in Commerce 6-7-2005) (collectively
“Wunder Marks”).
2.

By virtue of these longstanding registered trademark rights, Plaintiff’s THE

WEATHER UNDERGROUND, WUNDERGROUND.COM, and WUNDERSEARCH
marks have become incontestable pursuant to 15 U.S.C.§ 1065.
3.

Plaintiff’s Wunder Marks are also famous. Plaintiff’s Wunder Marks have

received significant and notable press around the world, including in such major
publications and television networks as Forbes, ABC, MSNBC, People Magazine,
Discover Magazine, Wired, Newsweek, the Wall Street Journal, the Washington Post,
CNet, BusinessWeek, LifeHacker, U.S.A. Today, and the New York Times. (See

Exhibit A, Printout of Notable Press.) Nearly 17 million users visit Plaintiff’s
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http://www.wunderground.com website each month, and Plaintiff’s website has been
recognized as the 50th most popular website in the world. (See Exhibit B, Printout of
Quantcast Results for wunderground.com.) Plaintiff’s websites have received worldwide
notoriety, and Plaintiff offers its http://www.wunderground.com website in dozens of
languages, as evidenced by the [language].wunderground.com domain name
convention that resolves to a website in that particular language. (See Exhibit C,
Printout of http://nihongo.wunderground.com.) Consequently, Plaintiff’s Wunder Marks
are “widely recognized by the general consuming public of the United States as a
source of the goods or services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A).
4.

Plaintiff first started using “WEATHER UNDERGROUND” and

“WUNDERGROUND” as a trademark in 1995. (See Exhibit D, Affidavit of Jeff
Ferguson dated 5/18/2009.)
5.

Wunderground’s official web site, located at <wunderground.com>,

attracts approximately 14 million global visitors each month. 11 million of these visitors
are from the United States alone. As a result, wunderground.com ranks within or near
the top 100 amongst all United States web sites, per quantcast.com. (Dkt. No. 147,
First Amended Complaint, ¶32.)
6.

Hundreds of thousands of Internet users utilize Wunderground’s weather

services at its web sites each day. (Dkt. No. 147, First Amended Complaint, ¶33.)
7.

On August 28, 2008, Plaintiff Weather Underground filed a Complaint with

the National Arbitration Forum (“NAF”) to recover 41 domain names with a listed domain
registrant of “Navigation Catalyst Systems (“NCS”). (See Exhibit E, NAF Amended

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Complaint.) The Uniform Domain Dispute Resolution Policy (“UDRP”) prohibits the
registration of domain names with bad faith intent to profit that are identical or
confusingly similar to either common law or registered trademarks. 1 (See Exhibit D,
Affidavit of Jeff Ferguson dated 5/18/2009.)
8.

On October 13, 2008, UDRP Arbitrator Charles K. McCotter, Jr. (retired

judge) found that because “Respondent is intentionally using the disputed domain
names for commercial gain through a likelihood of confusion with Complainant’s mark,
the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the disputed
domain names is also evidence of registration and use in bad faith.” (See Exhibit F,
NAF Panel Decision.) Consequently, Judge McCotter ordered Respondent NCS to
transfer all 41 domain names, which constituted typographical errors of Plaintiff’s
registered and common law trademarks to Plaintiff.
9.

Even after a UDRP Complaint was filed against Defendants, Defendants

continued to register further domain names infringing Plaintiff’s marks. (See Exhibit G,
list of domains registered, renewed and/or updated after filing of UDRP Complaint.)
10.

Plaintiff’s are not the only trademark holder targeted by Defendant who

have registered typographical variations of many high traffic web sites and registered
trademarks (See Exhibit D, Affidavit of Jeff Ferguson dated 5/18/2009.), including:
a. A search of the top 60 Michigan companies revealed that
Defendants had registered typographical variations of many
other famous Michigan brands such as Pulte Homes, Dow
1

Under §4(k) of the UDRP, the limited right of transfer does not prevent further
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Chemical, DTE Energy, Kelly Services, BorgWarner, Borders
Group, and La-Z-Boy. (See Exhibit H, Sample Listing of
Michigan typosquats and Domain Tools WHOIS data
establishing NCS as registrant.)
b. A random list of Alexa.com “Global Top Sites” of the highest
ranked traffic websites on the internet shows a representative
sampling of typographical variations of such famous trademarks
as Wikipedia, Facebook, MySpace, ESPN, Orkut, Flickr,
Mininova, Bebo, YouTube, NetFlix, and The Huffington Post.
(See Dkt. No. 1, Complaint, ¶88. See also Exhibit I, Domain
Tools WHOIS data establishing NCS as registrant.)
c. Defendant NCS has been sued in Federal Court for
typosquatting violations under the ACPA at least nine times
dating back to 2004. (See Dkt. No. 1, Complaint, ¶89.)
d. Defendants destroyed most threat letters received from third
parties on trademark claims and only kept a spreadsheet
starting in 2007. Mr. Jacoby believes that there could have
been even more letters than the 30 average per month prior to
2007. (See Exhibit J, Jacoby Deposition, pp. 112-113.) A
timeline of the threat letter spreadsheet is included as Exhibit

proceedings under other law, such as the ACPA or Lanham Act.
Page 5 of 29

H. Defendants’ document destruction policy is attached as
Exhibit K.
e. After the Magistrate Judge in this case ordered production of a
variety of items, including Defendants domain portfolio (See Dkt.
No. 82, 05/20/10 Order Compelling Discovery), Plaintiff
identified countless other domains which are, in fact,
typographical versions of famous brands, many of them within
one letter spelling difference of the literal mark. (See Exhibit M;
Supplemental expert report of Chris Schwerzler, Appendix H
and Exhibit N, Defendants’ Responses to First Requests for
Production which defined “Suspect Domains” as all those listed
in the Complaint and “any other domains ….”, incorporating all
or some of Plaintiff’s registered trademarks.)
f. Mr. Schwerzler also ran a search that took the NCS portfolio
(813_RDE_2009-08- 15_full_1.csv) against the Quantcast top
1,000,000 list. More than 42% of the NCS portfolio represented
misspellings of existing popular domains. (See Exhibit M;
Supplemental expert report of Chris Schwerzler, Appendix L (to
be submitted on a disc because of size)).
g. To the extent NCS states that it checked the USPTO trademark
database in order to preclude registration of literal trademarks
(i.e. exact spellings), it was a meaningless exercise “for show”

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since (a) most literal trademarks would already be registered
domain names by the trademark owner, and (b) Defendants
register typographical variations of literal trademarks.
Defendants have intentionally designed the software to allow for
the registration of typographical variations of high traffic web
sites. (See Exhibit M; expert report of Chris Schwerzler).
11.

There has never been a time when Defendants have not been on notice of

trademark infringement and cybersquatting. In fact, since the date Defendants started
keeping track in 2007 (or more accurately stopped destroying their records), Defendants
received approximately 20 to 40 threat letters per month for an average of infringing 27
threat letters per month. (See Exhibit L, Stevenson Deposition Exhibit 101, Timeline.)
12.

Defendants admit that they have infringed trademarks and engaged in

cybersquatting through the years. Seth Jacoby acknowledges that the policy of
Defendants has been that if a cease and desist letter is received with “legitimate rights”,
then the domain name is transferred to the complainant. Even since 2007, thousands
of domain names have been transferred to third party trademark holders or otherwise
deleted from their systems after registration. (See Exhibit J, Jacoby Deposition, pp.
114-115, 331-332.)
13.

In fact, Defendants conducted a review of their entire portfolio after being

sued by Verizon and released a lot of domains that they themselves felt were infringing
on third party trademarks. (See Exhibit J, Jacoby Deposition, pp. 177-178, 180-181.)

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14.

On February 26, 2009, Plaintiff Weather Underground filed a nine count

Complaint that alleged that Defendants NCS, FirstLook, Inc., and Connexus Corp. were
liable for the unlawful registration of, trafficking in, and use of the subject 41 domain
names listed in the UDRP. (Dkt. No. 1)
15.

The Court initially granted a Motion to Dismiss for lack of personal

jurisdiction in favor of Connexus, Basic Fusion and FirstLook on Defendants’
representations that NCS engaged in a variety of activities using such action verbs as
“NCS acquires”, “NCS helps ensure”, “NCS’s system”, and “NCS registers”. 2 This left
NCS as the sole Defendant, over which the Court found personal jurisdiction on the
grounds that, inter alia: “Certainly Plaintiff satisfies the first criteria. (citations omitted)
…After the Complaint was filed, Plaintiff discovered five additional domain names that
target Plaintiff’s mark. (Pl’s Exhibit D, WHOIS Records). Given the business model and
the prior proceedings, there is sufficient evidence, viewed in the light most favorable to
Plaintiff, that NCS knew of Plaintiff and its mark as well as Plaintiff’s location. ” (See
Dkt. No. 21, Opinion and Order Granting in Part and Denying in Part Defendants’
Motion to Dismiss Pursuant to Fed. R. Civ. P. 12(b)(6) or, in the Alternative, Transfer,
pp. 13-14.)
16.

NCS is a shell corporation with no assets, employees or bank accounts,

used by its parent companies FirstLook and Connexus as the listed “registrant” of
millions of domain names, including the ones which are the subject of this lawsuit. (See

2

The evidence ultimately established that NCS did not, in fact, do anything. All actions
and omissions were, in fact, performed by FirstLook and Connexus employees.
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Exhibit O, Stevenson Deposition, pp. 218-219 and Exhibit P, 2/11/10 Hearing
Transcript, pp. 5-7.)
17.

Defendant FirstLook & Connexus employees, or its predecessor in

interest3, reviewed, managed and performed the acts necessary to register the Subject
Domains and Third Party Trademark Domains (See Exhibit J, Jacoby Deposition, p.
30.)
18.

Basic Fusion has no employees of its own. It is a wholly owned subsidiary

of FirstLook. (See Exhibit O, Stevenson Deposition, pp.217-218.)
19.

Basic Fusion acted as the registrar for the Subject Domains and Third

Party Trademark Domains, providing domain registration and proxy services.
Defendants FirstLook and Connexus provided the decision making, resources and
employees for all Basic Fusion related activities for the Subject Domains and Third
Party Trademark Domains.
20.

All employees of FirstLook were employees who received their paychecks

directly from Connexus Corporation. (See Exhibit J, Jacoby Deposition, pp. 32-34.)
21.

Shell Corporation Defendant NCS was listed by Connexus and FirstLook

as the registrant of the domain names listed on Exhibit Q for more than five days.
(See Exhibit Q, List of domain names.) Further domains that were tasted either one
or multiple times by Defendants during the domain tasting period are included as

3

Prior to being FirstLook, the company was over time known as New.net, Vendare
Media Group or NetBlue (Exhibit J, Jacoby Deposition, pp. 21-24). New.net did the
same thing that FirstLook does today. Id.
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Exhibit R. (Collectively these two lists contain the known list of 288 known
cybersquatted domains at issue in this case, referred to as “Subject Domains”.)
22.

Despite NCS being listed as the owner of the domain names, all revenue

from advertisements displayed on the web pages related to those domain names was
collected directly to FirstLook and Connexus.
23.

All actions and omissions related to Plaintiff’s allegations of bad faith

registration, use and trafficking of the subject domains were performed by employees,
officers and/or directors of FirstLook and Connexus. By way of example:
a.

Donnie Misino built software systems for the registration and monetization

of Defendants’ domain names. Mr. Misino testified that he has received pay checks
from Connexus Corporation and FirstLook related to activities on behalf of NCS. (See
Exhibit S, Misino Deposition, pp. 26-27.) Prior to 2008, Mr. Misino received his pay
checks from NetBlue Vendare, which merged with Connexus. (See Exhibit S, Misino
Deposition, p. 27-30.) Mr. Misino acknowledges that Connexus, FirstLook, and Basic
Fusion were involved in the registration, use, or trafficking of domain names registered
by NCS or under the name NCS. (See Exhibit S, Misino Deposition, pp. 113-115, 171172.) Mr. Misino has worked under two email addresses in his duties related to the
registration, use and trafficking of NCS domain names, [e-mail]
and [e-mail]. (See Exhibit S, Misino Deposition, pp. 174-175.)
Mr. Misino acknowledges that the domain names are registered and advertisements
placed on the websites for profit. (See Exhibit S, Misino Deposition, pp. 45, 232-233,
276-277, 301.)

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b.

Dennis Rhee worked for both Connexus and FirstLook and received stock

options under an employment agreement with Connexus. (See Exhibit T, Rhee
Deposition, pp. 32-35.) Mr. Rhee was the senior manager/operations of domain names
for Connexus and FirstLook. (See Exhibit T, Rhee Deposition, pp. 9-10.)
c.

Seth Jacoby is President of FirstLook from 2008 to present, with his actual

employer being Connexus, now Epic Media. Prior to taking his position as President,
he was General Manager of Search for FirstLook, with his employer being Connexus,
and in charge of all monetization/search and domain related activities, including
registration of domains and the advertisements placed on those pages. (See Exhibit J,
Jacoby Deposition, pp. 9-10.)
d.

Chris Pirrone was paid by Connexus and was a Connexus employee.

Chris Pirrone was involved in domain acquisitions, vetting for trademarks, creating
policies for registering related to trademarks (or lack thereof) and related issues. (See
Exhibit J, Jacoby Deposition, pp. 34-35, 41-42.)
e.

Art Shaw, the CEO of Connexus, would also be involved in any disputes

between Chris Pirrone and Seth Jacoby as to whether or not to keep a particular
domain name. (See Exhibit J, Jacoby Deposition, pp. 35-36.)
f.

Lily Stevenson signed a contract in 2005 with Vendare Media, which later

merged with Connexus Corporation, setting forth her terms of employment. Ms.
Stevenson is the primary person in the Compliance Department who manages and
reviews domain names for trademark issues prior to registration. (See Exhibit O,
Stevenson Deposition, pp.63-65 and Exhibit U, Deposition Exhibit 97, Stevenson Offer

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of Employment.) Ms. Stevenson identifies Connexus as her employer prior to the Epic
merger. Ms. Stevenson acknowledges that she does work on behalf of FirstLook
related to domain name registration, use and trafficking. (See Exhibit O, Stevenson
Deposition, pp.63-65.)
24.

Employment contracts with the 20 or so employees and independent

contractors in the FirstLook division are, in fact, employed by Connexus Corporation.
(See Exhibit J, Jacoby Deposition, pp. 328-330, and Exhibit V, Independent
Contractor Agreement between employee handling NCS domain names and Connexus
Corp.)
25.

Connexus, First Look, and NCS are all one enterprise and inextricably
interrelated. For example:
a. While Defendant NCS is the named registrant of the infringing domain
names in this matter, it has absolutely no employees or bank accounts. (See
Exhibit P, transcript of February 11, 2010, hearing on Motion to Compel Initial
Disclosures, p. 6.)
b. There are no monies exchanged among NCS, Connexus, and
FirstLook; no invoices for services among NCS, Connexus, and FirstLook; and,
no communications between NCS, Connexus, and FirstLook (See Exhibit N,
Response to Request for Production No. 16.)
c. There are no written agreements among NCS, Connexus, and
FirstLook (See Exhibit N, Response to Request for Production, number 17-19.)

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d. Connexus, FirstLook, and NCS shared the same CEO, Art Shaw (See
Exhibit W, Connexus Sole Owner).
e. CEO Art Shaw testified he could not explain why NCS existed as a
separate entity simply for the purpose of registering domain names (See Exhibit
X, Art Shaw deposition pp. 27-29.)
26.

On January 14, 2011, this Court granted Plaintiff’s Motion for Joinder to

Add Party Defendants Pursuant to Fed. Rule of Civ. Proc. §21 and found personal
jurisdiction over Connexus Corporation and FirstLook, Inc., on allegations that each had
directly and indirectly participated in the registration, trafficking in and use of the Subject
Domain Names (Dkt. No. 146).
27.

Plaintiff filed an Amended Complaint on January 20, 2011, which added

another Defendant, Epic Media Group, Inc., which is not the subject of this motion, and
additional allegations of alter ego, successor liability and contributory cybersquatting
liability (Dkt. No. 147).
28.

Defendants have never answered the First Amended Complaint, which

would have been due 14 days after the Court’s June 10, 2011 Order. As such, the
allegations in the First Amended Complaint should be taken as true (Dkt. No. 147).
29.

Defendants defense essentially amounts to:
a. Defendants register so many domains that based on DNS error traffic
that they cannot be imputed with any ’intent’ as it relates to any specific
trademark owner.

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b. Defendants turn over infringing typo-domains to trademark owners
when trademark owners provide specific notice of infringement.
c. Defendants are trying to avoid trademarks.
30.

These defenses are wholly inadequate under the ACPA, or are otherwise

beyond belief given the evidence.
31.

Defendants admit that DNS error data includes, in part, people looking for

real web sites but simply misspelling and erroneously typing a URL domain name. DNS
error data includes any traffic where the user may have typed a malformed domain
name that has no destination (i.e., no one has registered the domain name at the time
of the entry). (See Exhibit J, Jacoby Deposition, pp. 16-19.)
32.

Defendants used DNS error data in order to determine how many times a

user would have typed in an unregistered domain name in order to make sure that it
would acquire enough traffic which would result in clicks and revenues to Defendants.
(See Exhibit J, Jacoby Deposition, pp. 59-60.)
33.

Defendants acknowledge that a key source to the traffic at their domains

is people who mistype a real domain name in the web browser. (See Exhibit J, Jacoby
Deposition, pp. 61-64.)
34.

Defendants were sued by Verizon on April 15, 2008, for cybersquatting

with bad faith intent to profit. In that case, the Court found that:
“A review of these factors makes clear that Defendants had the requisite
“bad faith.” They do not claim to have any intellectual property rights in
any of the domain names at issue; nor do they claim that any of these
names consists of any Defendant’s legal name, or the name of any
individual associated with any of Defendants. Nor is there any history of a
prior use by Defendants of any challenged name in connection with either
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the bona fide offering of any commercial goods or services, or any
noncommercial or fair use. The first four factors thus support a finding of
bad faith.
The fifth factor also cuts strongly against Defendants. It is clear that their
intent was to profit from the poor typing abilities of consumers trying to
reach Plaintiffs’ sites…….
In addition, it is clear that Defendants acquired thousands of domain
names that were confusingly similar to any number of famous marks. And
some of the marks to which their domain names are confusingly similar
are unquestionably “distinctive and famous,” including some of Plaintiffs’.
Thus, the eighth and ninth factors also strongly support a finding of bad
faith.”
(Verizon Californa Inc., v. Navigation Catalyst Systems, CACD, 2:08CV2463,
Dkt. No. 32.)
35.

Defendants filed a counterclaim against Verizon for bad faith

cybersquatting for placing advertisements on pages for which a DNS error was returned
on the Verizon network on the following trademarks allegedly owned by Defendants:
ACROPHOBIA (Reg. Nos. 2948164, 2209677), BACKSTAGE PASS (Reg. No.
261334), BLINK (Reg. No. 3307658), BLOWOUT BINGO (Reg. No. 2496867),
CONNEXUS (Reg. No. 77161390), COSMIC CONSENSUS (Reg. No. 2500776), DOT
TRAVEL (Reg. No. 2924877), FLIPSIDE (Reg. No. 2559730), IMGAMES (Reg. Nos.
2493448, 2493447), NEW.NET (Reg. Nos. 2755007, 2802891, 2846296, 3194831),
TRAFFICMARKETPLACE (Reg. No. 3067753), UPROAR (Reg. Nos. 2482118,
2280473), VENDARE MEDIA (Reg. Nos. 3126763, 3126762), and VIRTUAL LAS
VEGAS (Reg. No. 2596493). (See Exhibit Y, Connexus Answer and Counterclaim.)
36.

On nearly identical facts as Plaintiff had brought in this case against

Defendants, Defendants argued to a federal court that they were entitled to up to

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$100,000 per domain name plus attorneys fees against Verizon for violating the ACPA.
(See Exhibit J, Jacoby Deposition, pp. 146-151, 162-168 and Exhibit Y, Connexus
Answer and Counterclaim.)
37.

Defendants state that they used human reviewers for all domains for

trademark issues prior to registration. (See Exhibit J, Jacoby Deposition, pp. 52-53,
58, 88-95, 118-119, 145-147, 170-173.)
38.

The stated objective of the cleansing process was “to identify domains that

may be deemed to be close derivations of reasonably known trademarks of famous
brands/names/movies, including typos and clear misspellings.” (See Exhibit Z,
Stevenson Deposition Exhibit 108, Trademark Review Instructions.)
39.

Defendants admit that, even as late as 2005, their trademark matching

was extremely rudimentary and literal. So for instance, kiderock.com would not have
matched a trademark for “Kid Rock” because of an additional “e”. (See Exhibit J,
Jacoby Deposition, pp. 98-101.)
40.

According to Seth Jacoby, there was not even a manager of the trademark

review department as late as 2005 when many of the subject domains were registered
in this case. (See Exhibit J, Jacoby Deposition, p. 94.)
41.

Mr. Jacoby indicates that their internal process made no effort to identify

the addition of even a single letter to a trademark for vetting. (See Exhibit J, Jacoby
Deposition, pp. 129-131.)

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42.

Defendants did not even attempt to vet domain names for similarity to

trademarks until a fuzzy matching system was implemented sometime in or about 2007.
(See Exhibit J, Jacoby Deposition, pp. 86-87.)
43.

None of the people who were involved in the trademark review process

received any sort of formal training, had any experience with regards to trademark
issues or trademark law. (See Exhibit J, Jacoby Deposition, pp. 91-93, 101-105, 174175.)
44.

In fact, the entire supposed trademark clearance system seemed to be

designed only to exclude famous marks which the particular untrained “operator”
actually personally heard of. (See Exhibit J, Jacoby Deposition, pp. 133-134.) Lily
Stevenson confirmed that she only went with her gut. (See Exhibit O, Stevenson
Deposition, p. 32.)
45.

Mr. Jacoby acknowledged that by simply adding words to the front or the

back of a trademark would allow it to be registered by Defendants. (See Exhibit J,
Jacoby Deposition, pp. 135-136.)
46.

Seth Jacoby, who runs the domain registration and monetization

department for Defendants, has no real depth of understanding of trademark issues or
the Anti-Cybersquatting Consumer Protection Act. (See Exhibit J, Jacoby Deposition,
pp. 106-111, 123-126, 150-162, 257-258, 266-267.)
47.

Although there is inconsistency in the testimony amongst Defendants’

employees, the President of FirstLook indicates that at no time did they even do a
simple Google search for the domain to see what trademark problems might exist. (See

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Exhibit J, Jacoby Deposition, pp. 184-185.) This was confirmed by Lily Stevenson.
(See Exhibit O, Stevenson Deposition, p. 30.)
48.

Defendants state that in 2007, after being sued by Verizon, they began

using additional screening measures, including software which identified how close a
match was for a potential domain name to a trademark registered with the USPTO.
49.

In 2008, Defendants state that they did a review of their entire database of

domains to further clear it for trademarks. (See Exhibit J, Jacoby Deposition, p. 182184.) As a result of this trademark review process, Defendants deleted domain names
worth approximately $1,000,000 in “margins”. (See Exhibit J, Jacoby Deposition, pp.
209-210.)
50.

Defendants’ own expert, John Berryhill, indicated that a Google search is

the easiest and simplest way to check for trademark problems. (See Exhibit AA,
Berryhill Deposition, p. 370-373.)
51.

Mr. Berryhill recommends to “naïve” domain registrants who are

concerned about registration of a particular domain to do a Google search. (See
Exhibit AA, Berryhill Deposition, p. 234.)
52.

Mr. Berryhill has confirmed that “the best trademark … system is Google.”

(See Exhibit AA, Berryhill Deposition, pp. 370-373.)
53.

Mr. Berryhill testified that if you buy “a misspell of Google for the purpose

of capitalizing on the known established status of that as a mark, you are hitting –
definitely hitting the bag, rounding the corner on base two, and heading for home in the
ACPA.” (See Exhibit AA, Berryhill Deposition, pp. 243-244.)

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54.

Mr. Jacoby admits that “in hindsight”, he agrees that it would have been

helpful to do a Google search for the domain name to identify trademark issues. (See
Exhibit J, Jacoby Deposition, pp. 185-188.)
55.

Even after the initial vetting process prior to registration, Defendants go

back and try and optimize the ads showing on that page by placing words on the home
page which will serve up specific categories of ads. The domain categorization team
looks at the domain name (such as <qwunderground.com>) and does a Google search
for the domain name and then places categories. In the instance of
<qwunderground.com>, Defendants added the “weather” related key words after
determining that people going to that page were most likely looking for weather. (See
Exhibit J, Jacoby Deposition, pp. 136-145, 205-207, 234-235, 237-238, 261-262 and
Exhibit BB, <qwunderground.com> snapshot.)
56.

In order to make more money per domain, Defendants started sometime

in mid-2006 or shortly thereafter to add category words to their home pages in order to
allow users to click on categories of ads to be served up. Prior to 2006, Defendants had
to manually optimize the advertisement pages using tags through the Yahoo! service.
(See Exhibit J, Jacoby Deposition, pp. 217-229.)
57.

Defendants “keyword optimizers” purposefully and intentionally select the

keywords to be displayed on the contextual parking pages displayed at Defendants’
typosquatted websites. (See Exhibit T, Deposition of Dennis Rhee, pp. 150, 166.)
When clicked, these keyword-rich links, which contain terms such as “Weather
Forecast,” “Weather Maps,” and “Local Weather,” forward web users to a second,

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internal, webpage of results that display links to third parties and often competitors.
(See Exhibit CC, Printout of Internal Link Page.) When a web user clicks on any of
these internal links, Defendants receive a commission for referring that user to a third
party website. (See Exhibit DD, Deposition of Mavi Llamas pgs. 219-225.) Defendants,
to this day, continue to use the Domain Names to offer these contextual pay per click
advertisements. (See Exhibit EE, Printout of <http://www.ranunderground.com>.)
58.

Essentially, they find the “real” website and then design ads to compete

directly with that website, as in the instance of <qwunderground.com>. (See Exhibit J,
Jacoby Deposition, p. 207 and Exhibit BB, <qwunderground.com> snapshot.)
59.

Defendants generated a document titled “CAT Training”, which stands for

categorization training. (See Exhibit FF, Stevenson Deposition Exhibit 111, CAT
Training and Exhibit J, Jacoby Deposition, pp. 247-259.)
60.

The “CAT Training” document on its face instructs people to categorize

websites after finding the “real website”, which will often be trademark protected. (See
Exhibit O, Stevenson Deposition, pp. 158-159.)
61.

Mr. Jacoby tries to explain his registration of various domain names by

indicating that unless the trademark is generally known by some high percentage of
Americans, even if it is registered as a trademark, it is impossible to know whether or
not they can use it under trademark law. (See Exhibit G, Jacoby Deposition, pp. 269274.)
62.

Defendants have also “trafficked” in the Domain Names. The websites

located at Defendants’ Domain Names contain a link that allows web users to “Inquire

Page 20 of 29

about this domain.” (See Exhibit GG, Printout of http://weatherontheground.com.) Fully
aware of Defendants ACPA liability, Defendants’ state on some of the inquiry forms that
“The existence of this form does not constitute an offer to sell this domain…” (See

Exhibit HH, Printout of Inquiry Form.) Defendants’ sole purpose in implementing this
function is to solicit offers to purchase Defendants’ typosquatted or cybersquatted
domain names. Defendants received inquires sent through these forms at the email
address [e-mail], and then responded to these
inquiries with an offer to sell the domain names through the
[e-mail] email address. (See Exhibit II, Printout of November 17,
2008 Email to [e-mail] concerning YoungChris.com.)
63.

For example, prior to 2008, Defendant Navigation Catalyst Systems was

the Registered Name Holder of the <appogee.com> domain name. On November 26,
2008, an individual sent an email to Navigation Catalyst Systems through the “Inquire
about this domain” function of Defendants’ <appogee.com> website. Hem Vyas, an
employee of Defendant Firstlook, who offered to sell the <appogee.com> domain name
for a fee of $420.00, answered this email. See Exhibit JJ, Offer to Sell <appogee.com>
Domain Name. Thus, it is clear that the “Inquire about this domain” component of
Defendants’ websites, despite any disclaimer, was intended to solicit offers for
Defendants’ typosquatted and cybersquatted domain names. (See also Exhibit KK,
Offer to Sell <omahachildrensmuseaum.com> Domain Name (wherein NCS registered
the <omahachildrensmuseaum.com> domain and then later offered to sell it to the
Omaha Children’s Museum).) Courts have held that a defendant “traffics in” a domain

Page 21 of 29

name where the defendant registered the domain name and then later offered it for
sale. Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003)
64.

By way of example, Mr. Jacoby agrees that the domain

<qwunderground.com> was reviewed by his company, that their own review would have
revealed the WUNDERGROUND trademark, and that they registered it in any event.
(See Exhibit J, Jacoby Deposition, pp. 146-151.)
65.

Despite the fact that Defendants were under constant threat of trademark

infringement and cybersquatting, they destroyed the very spreadsheets which would
include the subject domain names, including those at issue in this case, any blacklist
items, and matching trademarks and scoring for traffic. (See Exhibit J, Jacoby
Deposition, pp. 97-98.)
66.

During the Domain Tasting period, Defendants would register a domain

without any initial trademark review. After four days of “tasting” the domain for traffic,
Defendants would decide which ones qualified because of profitability and then conduct
a supposed trademark review. (See Exhibit J, Jacoby Deposition, p. 45-50, 119-124,
169-170.)
67.

During the Domain Tasting period, the moment that the domain is

registered for tasting by Defendants, an advertisement page is automatically added to
that domain name using the Yahoo! platform of ads. (See Exhibit J, Jacoby
Deposition, pp. 158-159.)
68.

Although the documents are no longer available, Defendants insist that,

even prior to 2006, they would “score” each domain name against the USPTO

Page 22 of 29

database, and those domains would come back in a spreadsheet and reviewed by two,
sometimes three, people before registration with their then registrar GoDaddy. (See
Exhibit J, Jacoby Deposition, p. 54-55.)
69.

Mr. Jacoby acknowledges that domain names which are typographical

errors of an existing website should be excluded from registration. (See Exhibit J,
Jacoby Deposition, p. 65.)
70.

The amount of incredible things which Defendants state in deposition

testimony must be accounted for by the Court in determining whether there are genuine
issues of fact. For instance, Seth Jacoby, in cross-examination about typographical
registrations of the Detroit Red Wings trademark, suggested that he had no idea that it
was a hockey team. He also stated that he had never heard of Henry Ford Hospital or
Auto-Owners Insurance. (See Exhibit J, Jacoby Deposition, pp. 67-74.) The
suggestion is that if the specific person in charge of doing the review has personally
never heard of the brand, there can be no intent to profit from that trademark.
71.

Again, the list of domains which were tasted one or more times by

Defendants and then deleted after four and a half days is included as Exhibit R.
Defendants admit that they registered, used and trafficked all of these domains during
the four and a half day domain tasting period.
72.

Defendants’ expert witness, John Berryhill, is a trademark attorney

specializing in Uniform Domain Name Dispute Resolution Policy matters and the AntiCybersquatting Consumer Protection Act and agrees that willful blindness can rise to

Page 23 of 29

the level of “bad faith” and intent to profit under the ACPA. (See Exhibit AA, Berryhill
Deposition, pp. 163-166.)
73.

Mr. Berryhill also agrees that another bad faith factor under the ACPA is

whether or not it appears that someone is registering many trademark domains. He
used a dolphin analogy which applies perfectly. Dolphin swim at a level above the tuna.
If tuna fishermen are casting their nets “dolphin depth” and they keep the dolphin rather
than throwing them back, this would be another factor in favor of a finding of bad faith
cybersquatting. (See Exhibit AA, Berryhill Deposition, pp. 167-168.) DNS error data is
fishing at “dolphin depth” as evidenced by examples of domains registered by
Defendants which are clear typographical errors of famous trademarks. (See also
Exhibit J, Jacoby Deposition, pp. 16-19, 59-60, 61-64.)
74.

Mr. Berryhill admits that the “quality control process” of registration and

trademark review is one of the things that he looks at to determine bad faith. If you’re
on a tuna ship, you pull up the nets and it’s filled with dolphin, then there’s a suggestion
that they’re intending to pull up dolphin. It is no defense to put a bunch of blind people
on deck so you can say you didn’t know they were dolphin. (See Exhibit AA, Berryhill
Deposition, pp. 369-370.)
75.

From the earliest registration of a subject domain in 2004, the trademark

database through www.uspto.gov has been available online. (See Exhibit AA, Berryhill
Deposition, pp. 188-189.)

Page 24 of 29

76.

Mr. Berryhill agrees that any person who is infringing a trademark that was

registered is deemed to have constructive notice of that trademark. (See Exhibit AA,
Berryhill Deposition, p. 190, 358-359.)
77.

Mr. Berryhill gave several examples of clear bad faith cybersquatting in a

variety of website posts authored by him which are almost identical to the facts in this
case and support a finding of bad faith cybersquatting. (See Exhibit AA, Berryhill
Deposition, pp. 211-220 and Exhibit LL, Berryhill Deposition Exhibits 254, 257, 258,
259, 260, 261 and 284.)
78.

Defendants’ expert, Mr. Berryhill, had apparently forgotten that he had

commented on Defendants’ activities in the Verizon lawsuit by referring to Navigation
Catalyst Systems and Verizon as “pirates”. (See Exhibit AA, Berryhill Deposition, pp.
286-294 and Exhibit MM, Blog regarding the Connexus v. Verizon case.)
79.

Mr. Berryhill is aware of domainers who register typographical variations

of famous trademarks in hopes of diverting traffic. (See Exhibit AA, Berryhill
Deposition, pp. 318-319.)
80.

Mr. Berryhill is aware of people who intentionally go out and seek to

register typographical variations of trademarks in hopes of diverting that traffic. The
more popular the underlying website, the more traffic. “If you own the last gas station
before Disney World, you probably get more business than someone who’s out in a
swamp in Florida.” (See Exhibit AA, Berryhill Deposition, pp. 319-320.)
81.

The reason that some people target typographical variations of

trademarks is because they believe, on a percentage basis, enough people will make a

Page 25 of 29

typographical error in order to make money off ads on that page. (See Exhibit AA,
Berryhill Deposition, pp. 224-225, 229-230, 321-322. 325.)
82.

In determining whether or not a domain name is “confusingly similar” to a

trademark, Mr. Berryhill determines whether or not it is typographically similar or
phonetically similar. (See Exhibit AA, Berryhill Deposition, pp. 335-336.)
83.

Even Mr. Berryhill concedes that if someone registers a variation of a

domain name that includes the word “Microsoft”, no one would believe that they didn’t
have specific intent to profit, even if they argue that they did not know Microsoft was a
trademark or allege that they do not understand trademark law. (See Exhibit AA,
Berryhill Deposition, pp. 632-363.)
84.

Mr. Berryhill gives an example of firing a gun into a nameless crowd and

asks the questions: “Did I have the safety on my gun?; Did I load my gun with blanks?;
Did I think I loaded my gun with blanks?; Did I fire into a crowd?” (See Exhibit AA,
Berryhill Deposition, pp. 363-364.)
85.

A Defendant can’t argue when they fire a gun into the crowd that they

didn’t know specifically that the person’s name was “Bob Smith” (or trademark owner’s
name was The Weather Underground) in order to avoid the intent element. (See
Exhibit AA, Berryhill Deposition, pp. 364-365.)
86.

Mr. Berryhill agrees that ignorance of the law is not an excuse under the

ACPA. Someone saying they don’t understand trademark law or never heard of the
ACPA will not escape liability. (See Exhibit AA, Berryhill Deposition, pp. 363-364.)

Page 26 of 29

87.

Defendants began using a proxy service “Domain Name Proxy, LLC” after

the filing of this lawsuit. The effect of the proxy is that no one can see that any domains
are registered to NCS or its related companies.
88.

As a representative example, prior to November 17, 2009, Defendants’

<wungerground.com> domain name displayed Navigation Catalyst Systems as the
Registered Name Holder of that domain name within the WHOIS database. After
Plaintiff filed suit against Defendants, Defendants attempted to conceal numerous
additional typosquatted Domain Names that were not named in Plaintiff’s Complaint by
changing the Registered Name Holder within the WHOIS database from Navigation
Catalyst Systems to Domains By Proxy, a privacy protection service, including the
representative <wungerground.com>. (See Exhibit NN, Printout of Sept. 3, 2007
WHOIS Entry.)
89.

The law is set forth in Plaintiff’s Brief in Support of Its Motion for Partial

Summary Judgment.
WHEREFORE, Plaintiff, The Weather Underground, Inc., respectfully requests
that this Honorable Court grant its Motion for Partial Summary Judgment against NCS,
FirstLook, and Connexus on Plaintiff’s ACPA claims.

Page 27 of 29

Respectfully submitted this 15th day of July, 2011.
/s/Enrico Schaefer___________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

Page 28 of 29

CERTIFICATE OF SERVICE
I hereby certify that on the 15th day of July, 2011, I electronically filed the
foregoing paper with the Court using the ECF system which will send notification
of such filing to the following:
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff

William A. Delgado (admitted pro hac)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants
Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants
/s/Enrico Schaefer___________________

Page 29 of 29

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,
Plaintiff,
vs.
NAVIGATION CATALYST SYSTEMS,
INC., a Delaware corporation; CONNEXUS
CORP., a Delaware corporation;
FIRSTLOOK, INC., a Delaware corporation;
and EPIC
MEDIA GROUP, INC., a Delaware
corporation;

Case No. 2:09-CV-10756
Hon. Marianne O. Battani

Defendants.
______________________________________________________________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants
William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants

PLAINTIFF’S MEMORANDUM IN SUPPORT OF
MOTION FOR PARTIAL SUMMARY JUDGMENT

TABLE OF CONTENTS
Table of Contents .............................................................................................................ii
Table of Authorities ......................................................................................................... iii
Introduction ..................................................................................................................... 1
I. Facts ........................................................................................................................... 1
II. Standard of Review .................................................................................................... 2
III. Argument................................................................................................................... 3
IV. Law ........................................................................................................................... 3
a. Defendants are liable for directly, contributory and vicarious
cybersquatting under 15 U.S.C. § 1125(d) as a matter of law because
they registered, used, and trafficked in the Domain Names with
a bad faith intent to profit................................................................................. 3
i.

Plaintiff has trademark rights in and to the Marks, which are
distinctive and famous ............................................................................... 4
ii. Defendants’ Domain Names are confusingly similar to Plaintiff’s Marks.... 5
iii. Defendant registered, used, and trafficked in the Domain Names in
commerce and with a bad faith intent to profit. .......................................... 7
A. Factor 1: The trademark or other intellectual property rights of
The person, if any, in the domain name. ............................................ 10
B. Factor 2: The extent to which the domain name consists of the
legal name of the person or a name that is otherwise commonly
used to identify that person. ............................................................... 11
C. Factor 3: The person’s prior use, if any, of the domain name in
connection with bona fide offering of any goods or services. ............. 11
D. Factor 4: The person’s bona fide noncommercial or fair use of
the mark in a site accessible under the domain name........................ 11
E. Factor 5: The person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the domain
name that Could harm the goodwill represented by the mark,
either for commercial gain or with the intent to tarnish or disparage
the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site............................. 11
F. Factor 6: The person’s provision of material and misleading false
contact information when applying for the registration of the
ii

domain name, the person’s intentional failure to maintain accurate
contact information, or the person’s prior conduct indicating a
pattern of such conduct ...................................................................... 13
G. Factor 7: The person’s offer to transfer, sell, or otherwise assign
the domain name to the mark owner or any third party for financial
gain without having used, or having an intent to use the domain
name in a bona fide offering of any goods or services, or the
person’s prior conduct indicating a pattern of such conduct. .............. 14
H. Factor 8: The person’s registration or acquisition of multiple
domain names which the person knows are identical or confusingly
similar to marks of others that are distinctive at the time of
registration of such domain names, or dilutive of famous marks of
others that are famous at the time of registration of such domain
names, without regard to the goods or services of the parties. .......... 14
I. Factor 9: The extent to which the mark incorporated in the
person’s domain name registration is or is not distinctive and
famous within the meaning of subsection (c) of this section............... 15
b. Defendants Epic Media Group, Connexus, and FirstLook are liable for
direct and contributory cybersquatting as a matter of law ............................. 16
Conclusion .................................................................................................................... 17

iii

TABLE OF AUTHORITIES
Cases
A Touch of Class Jewelry Co. v. J.C. Penney Co., No. CIV. A. 98-2949,
2000 U.S. Dist. LEXIS 12898, 2000 WL 1224804, at *5 (E.D. La. Aug. 28, 2000) ....... 9
Allard Enterprises, Inc. v. Advanced Programming Res., Inc.,
249 F.3d 564, 571 (6th Cir. 2001) ................................................................................. 5
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)..................................................... 2
Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 869 (8th Cir. 1994) ............................ 15
Basic Books, Inc. v. Kinko's Graphics Corp, 758 F. Supp. 1522, 1543
(S.D. N.Y. 1991) ......................................................................................................... 10
Berg v. Symons, 393 F. Supp. 2d 525, 539-40 (S.D. Tex. 2005) .................................... 9
Bird v. Parsons, 289 F.3d 865, 880 (6th Cir. 2002) ......................................................... 8
Cable New Network LP, LLLP v. CNNews.com, 177 F. Supp. 2d 506, 526
(E.D. Va. 2001) .......................................................................................................... 14
Cable News Network, LP, LLLP v. CNNews.com, 56 F. App’x. 599 (4th Cir. 2003)....... 14
Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,
78 F.3d 1111, 1123 (6th Cir. 1996) .............................................................................. 9
Coca-Cola v. Purdy, 382 F.3d 774, 784 (8th Cir. 2004) ................................................... 7
Cricket Communications, Inc. v. Domain Name Proxy
aka Navigation Catalyst Systems, Case No. FA10050001324492
(Nat. Arb. Forum June 24, 2010)................................................................................ 15
DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir. 2004) ................................ 2
Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003) ................................... 8
Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 647
(E.D. Mich. 2001) ....................................................................................................... 16
Gucci Am., Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228, 249
(S.D.N.Y. 2010).......................................................................................................... 16
In re Chatam Int’l, Inc., 380 F.3d 1340, 1343 (Fed. Cir. 2004) ........................................ 7
In re Quik-Print Copy Shops, 616 F.2d 523, 526 (C.C.P.A. 1980) .................................. 7
Inwood Laboratories, inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982) ............ 16
Louis Vuitton S.A. v. Lee, 875 F.2d 584, 590 (7th Cir. 1989) .......................................... 9
Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 809 (6th Cir. 2004)........... 9
McDonald’s Corp. v. Burger King Corp., 107 F. Supp. 2d 787, 790 (E.D. Mich. 2000) ... 5
Microsoft Corp. v. Wholesale Club, Inc., 129 F.Supp. 2d 995, 1007 (S.D. Tex. 2000).... 9
N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001) ..................... 5
N. Light Tech., Inc. v. N. Lights Club, 97 F. Supp. 2d 96, 117 (D. Mass. 2000) .............. 5
Natron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405 (6th Cir. 2002) ................... 4
Nike, Inc. v. Circle Group Internet, Inc., 318 F. Supp. 2d 688, 692 (N.D. Ill. 2004) ......... 2
Securacomm Consulting Inc. v. Securacom, 166 F.3d 182, 187 (3d Cir. 1999).............. 9
Shields v. Zuccarini, 254 F.3d 476, 484 (3rd Cir. 2001) ............................................... 4, 6
Shields v. Zuccarini, 89 F. Supp. 2d 634, 637 (E.D. Pa. 2000) ....................................... 8
iv

Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1112 (C.D. Cal. 2009) ...... 16
Super-Krete Int’l, Inc. v. Sadleir, 712 F. Supp. 2d 1023, 1032 (C.D. Cal. 2010).............. 7
Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1181 (1st Cir. 1987).... 9
Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 382 (7th Cir. 1976) .................. 7
Venetian Casino Resort, LC v. Venetiangold.com, 380 F.Supp.2d 737, 743
(E.D. Va. 2005) ............................................................................................................ 6
Verizon at 1096-97. See HER, Inc. v. RE/MAX First Choice, LLC,
468 F. Supp. 2d 964, 975 (S.D. Ohio 2007) ............................................................... 12
Verizon California, Inc. v. Navigation Catalyst Sys., Inc.,
568 F. Supp. 2d 1088, 1094 (C.D. Cal. 2008) .................................................... 4, 6, 14
Victoria’s Secret Stores v. Artco Equip. Co., Inc.,
194 F. Supp. 2d 704, 722-23 (S.D. Ohio 2002).......................................................... 12
Statutes
15 U.S.C. § 1057(b) ........................................................................................................ 4
15 U.S.C. § 1065............................................................................................................. 4
15 U.S.C. § 1072............................................................................................................. 9
15 U.S.C. § 1115........................................................................................................... 15
15 U.S.C. § 1125(c)(2)(A) ............................................................................................... 5
15 U.S.C. § 1125(d) .............................................................................................. 3, 8, 17
15 U.S.C. § 1125(d)(1)(E) ............................................................................................... 8
15 U.S.C. §1117(d) ....................................................................................................... 17
Other Authorities
S. Rep. No. 106-140 (1999) ............................................................................................ 6
Rules
Fed. R. Civ. P. 56(c)........................................................................................................ 2
Treatises
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§ 25:78 (4th ed. 2004) ................................................................................................... 6

v

INTRODUCTION
I. FACTS
Defendants, individually, jointly and collectively, registered, used and trafficked in
288 typographical variations of Plaintiff’s trademarks as domain names, put up website
parking pages to sell consumer ‘clicks’ on advertisements and offered the domain for
sale at inflated prices. (Motion ¶¶s 1, 21.) Defendants identified these typographical
variations of Plaintiff’s trademarks by purchasing and analyzing DNS error data, which
identifies if a consumer mistypes a domain name or trademark into a web browser
address bar. (Motion ¶¶s 31-33, 77.) Defendants admit that they have no trademark
rights in any of the subject domain names and that their intent is to profit from the direct
navigation traffic on those domains. (Motion ¶ 23(a).) Defendants admit that their
portfolio of domains has historically been riddled with ‘legitimate’ claims of trademark
infringement. For their period of record keeping since 2007, Defendants averaged about
27 threat letters concerning 50 domains per month for trademark infringement. (Motion
¶¶s 10(d), 13, 33-34, 37-47.)
Defendants argue against a finding of bad faith intent to profit from trademarks by
arguing that (a) they always give the domain names back to trademark owners on
legitimate request, (b) Defendants’ employees may have never personally heard of
Wunderground or Weather Underground despite their trademark registrations and
status as one of the highest traffic web sites in the United States and (c) Defendants
register so many DNS error domains that it is not possible for them to properly steer
clear of trademark typos.
1

Plaintiff now moves for Summary Judgment as to Counts I and VI of its Amended
Complaint – Direct, Contributory & Vicarious Cybersquatting under the AntiCybersquatting Consumer Protection Act, leaving only the issue of statutory damages
and attorney’s fees for trial.1
II. STANDARD OF REVIEW
Summary judgment is proper under Rule 56 “if pleadings, depositions, answers
to interrogatories, and admissions on file, together with affidavits, if any, show that there
is no genuine issue as to any material fact and that the moving party is entitled to
judgment as a matter of law.” DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th
Cir. 2004) (citing Fed. R. Civ. P. 56(c)). “To create a genuine issue of a material fact…
the non-movant must do more than present some evidence on a disputed issue.” Id.
“[T]her is no issue for trial unless there is sufficient evidence favoring the non moving
party for a jury to return a verdict for that party. If the [non-movant’s] evidence is merely
colorable, or is not significantly probative, judgment may be granted.” Id. (citing
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)). Summary judgment under the
ACPA is proper where the facts “lead to the inescapable conclusion that defendant
acted in bad faith and no reasonable fact finder could conclude otherwise.” Nike, Inc. v.
Circle Group Internet, Inc., 318 F. Supp. 2d 688, 692 (N.D. Ill. 2004).
III.

ARGUMENT

Summary judgment is proper in this case because Defendants Navigation
Catalyst Systems, Inc., Connexus Corp., and Firstlook, Inc., (collectively “Defendants”)
1

If Summary Judgment is granted, Plaintiff will likely waive its remaining Counts and
pursue ACPA damages only.
2

registered, used, and have trafficked in the Subject Domain with a bad faith intent to
profit from Plaintiff’s trademarks.
IV. LAW
a. Defendants are liable for direct, contributory and vicarious
cybersquatting under 15 U.S.C. § 1125(d) as a matter of law because
they registered, used, and trafficked in the Domain Names with a bad
faith intent to profit.
The Anticybersquatting Consumer Protection Act (“ACPA”) was enacted in 1999
as an amendment to the Trademark Act of 1945 to prohibit cybersquatting, which:
occurs when a person other than the trademark holder registers the
domain name of a well known trademark and then attempts to profit from
this by either ransoming the domain name back to the trademark holder or
by using the domain name to divert business from the trademark holder to
the domain name holder.
DaimlerChrysler, at 204. In order to prevail on a claim under the Anticybersquatting
Consumer Protection Act, a Plaintiff must establish the following:
(1) it has a valid trademark entitled to protection;
(2) its mark is distinctive or famous;
(3) the defendant’s domain name is identical or confusingly similar
to… the owner’s mark; and
(4) the defendant used, registered, or trafficked in the domain name
(5) with a bad faith intent to profit.”
Id. Defendants do not seriously contest elements (1)(2)(3)2 and (4)3, but instead
defend the action on element (5) arguing that they did not have a bad faith intent
to profit as to any of the Subject Domains.
2

There are a few domains that Defendants contest as confusingly similar. However,
the vast majorities are incontestably similar thus supporting Summary Judgment. For
3

Typosquatting is the registration of typographical variations of trademarks hoping
to capitalize on the poor spelling or typographical skills of consumers who proceed
directly to the web browser address bar to type in a domain. As decided in a prior case
against Defendants granting an injunction based on a high likelihood of success on the
merits, the ACPA also prohibits “typosquatting,” “that is, registering intentional
misspellings of famous trademarks or names.” Verizon California, Inc. v. Navigation
Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1094 (C.D. Cal. 2008) (citing Shields v.
Zuccarini, 254 F.3d 476, 484 (3rd Cir. 2001)).
A. Plaintiff has trademark rights in and to the Marks, which are
distinctive and famous.
As a result of these federal registrations, Plaintiff is entitled to a presumption that
it has rights in and to the Marks and that the Marks are distinctive. (Motion ¶¶s 1-3 and
Exhibits). See Natron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405 (6th Cir.
2002); see also 15 U.S.C. § 1057(b). Additionally, Plaintiff’s THE WEATHER
UNDERGROUND, WUNDERGROUND.COM, and WUNDERSEARCH marks have
become incontestable pursuant to 15 U.S.C. § 1065 because they have been
consistently used in commerce for over five years since their respective registrations. 4

those few that can be debated, the Court can factor in the similarity requirement on
those few domains in determining statutory damages.
3
Defendants need only ‘register” “use” or “traffic” in the subject domain names in order
to be liable. In this case, Defendant engaged in all three activities. To the extent
Defendants contest that they ‘trafficked’ in domain names by trying to sell them for
profit, Plaintiff has addressed that issue herein.
4
Plaintiff also has common law trademark rights in and to the Wunder Marks. (Motion
¶¶s 1-6.) “At common law, ownership of trademark or service mark rights is obtained by
actual use.” Allard Enterprises, Inc. v. Advanced Programming Res., Inc., 249 F.3d 564,
4

Plaintiff’s Marks are also ‘famous’ as supported by the worldwide press, web traffic and
notoriety of their marks. It is beyond dispute that Plaintiff’s marks are “widely recognized
by the general consuming public of the United States as a source of the goods or
services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). (Motion ¶¶s 1-6.)
B. Defendants’ Domain Names are confusingly similar to Plaintiff’s
Marks.
Plaintiff has rights in and to the distinctive and famous Marks, and Defendants’
Domain Names are, on their face, confusingly similar to those marks. (Motion ¶¶s 1-6,
8, 14, 21, 27-28, 69.) Unlike the test for traditional trademark infringement, which “is
more comprehensive” than the “identical or confusingly similar” requirement of the
ACPA, the test of confusing similarity under the ACPA requires only a “facial”
examination of the similarity of the Plaintiff’s Marks to the Domain Names. N. Light
Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001) (citing N. Light Tech.,
Inc. v. N. Lights Club, 97 F. Supp. 2d 96, 117 (D. Mass. 2000) aff’d sub nom. N. Light
Tech., Inc. v. N. Lights Club, 236 F.3d 57 (1st Cir. 2001)). “Congress intended to use
the bad faith element of a claim not the ‘confusingly similar’ element to tailor the statute
narrowly.” Id. at 117-18. “In the cybersquatting context, ‘confusing similarity’ must
simply mean that the plaintiff’s mark and the defendant’s domain name are so similar in
sight, sound and meaning that they could be confused.” Venetian Casino Resort, LC v.

571 (6th Cir. 2001). “[A] party establishes a common law right to a trademark only by
demonstrating that its use of the mark was ‘deliberate and continuous, not sporadic,
casual or transitory.’” McDonald’s Corp. v. Burger King Corp., 107 F. Supp. 2d 787, 790
(E.D. Mich. 2000).
5

Venetiangold.com, 380 F.Supp.2d 737, 743 (E.D. Va. 2005) (citing J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, § 25:78 (4 th ed. 2004)).
In the context of typosquatting, confusing similarity “is judged not just by
appearances, but by the likelihood that a particular domain name might be typed in
accidentally by someone trying to type in one of Plaintiff’s marks or domain names.”
Verizon at 1095. Courts have recognized that “[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, causing an Internet user
who makes a slight spelling or typing error to reach an unintended site.” Shields at 484.
The ACPA’s legislative history also specifically confirmed that typosquatting is covered
under the purview of the Act:
For example, the Committee was informed of a parent whose child
mistakenly typed in the domain name for “dosney.com,” expecting to
access the family-oriented content of the Walt Disney home page, only to
end up staring at a screen of hard core pornography because a
cybersquatter had registered that domain name in anticipation that
consumers would make that exact mistake.
S. Rep. No. 106-140 (1999).
Defendants’ 288 Domain Names are typosquats of Plaintiff’s distinctive and
famous Marks. Defendants’ Domain Names contain Plaintiff’s Marks in their entirety
and simply remove, add, transpose, or replace letters or components of Plaintiff’s
marks, such as <qwunderground.com>, <swunderground.com>,
<weatherundergrounf.com>, and numerous others. This removal, addition,
transposition, or replacement of non-essential components is dictated by Defendants’
software, which registers domain names by mimicking common misspellings, typing
6

errors, and errors in transcription. Courts interpreting the ACPA have found that minor
variations do not militate against a finding of confusing similarity. See Super-Krete Int’l,
Inc. v. Sadleir, 712 F. Supp. 2d 1023, 1032 (C.D. Cal. 2010) (“minor variation makes
Defendant’s domain name confusingly similar to Plaintiff’s mark.”); see also Union
Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 382 (7th Cir. 1976) (“small changes in
words, such as adding or deleting a hyphen, are insufficient to distinguish marks.”); In re
Quik-Print Copy Shops, 616 F.2d 523, 526 (C.C.P.A. 1980) (no legally significant
difference here between ‘quik’ and ‘quick.’).
Additionally, Defendants’ software also adds descriptive or generic terms to
Plaintiff’s Marks, such as <tropicalweatherunderground.com>,
<ironweatherunderground.com>, and <searchweatherunderground.com>. The addition
of descriptive or generic terms to a domain name, such as the addition of the descriptive
term “search,” does not affect confusing similarity. See Coca-Cola v. Purdy, 382 F.3d
774, 784 (8th Cir. 2004); see also In re Chatam Int’l, Inc., 380 F.3d 1340, 1343 (Fed. Cir.
2004) (“With respect to GOLD, the Board determined that the term denotes a premium
quality, a descriptive term offering little to alter the commercial impression of the
mark.”).
C. Defendant registered, used, and trafficked in the Domain Names
in commerce and with a bad faith intent to profit.
Defendants admit that they are, or were, the registrant of the Subject Domains
and that they put up ‘lander pages’ aka ’parking pages’ with advertisements
automatically upon registration. (Motion ¶¶s 23, 55-60.) Thus, there is no dispute that
7

they “registered” and “used” the Subject Domains as those term is used under the
ACPA. With regard to the domains that were ‘tasted’ and not retained by Defendants
after the 5 day Add Grace Period, Defendants admit that they registered the domains,
and put up advertising links for profit, but are expected to argue that it was for less than
5 days per domain total and only to see if there was enough traffic to cover the cost of
registration and to do a post-registration trademark review. (Motion ¶¶s 67, 71.)
The term “traffics in” refers to transactions that include, but are not limited to,
sales, purchases, loans, pledges, licenses, exchanges of currency, and any other
transfer for consideration or receipt in exchange for consideration. Shields v. Zuccarini,
89 F. Supp. 2d 634, 637 (E.D. Pa. 2000); Bird v. Parsons, 289 F.3d 865, 880 (6th Cir.
2002); 15 U.S.C. § 1125(d)(1)(E). The websites located at Defendants’ Domain Names
contain a link that allows web users to “Inquire about this domain” which, by their own
practice, results in a exchange about purchasing the domain. (Motion ¶¶s 62-64.) It is
clear that the “Inquire about this domain” component of Defendants’ websites, despite
any disclaimer, was intended to solicit offers for Defendants’ typosquatted and
cybersquatted domain names. Courts have held that a defendant “traffics in” a domain
name where the defendant registered the domain name and then later offered it for
sale. Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003).
Under the ACPA, courts examine nine non-exclusive factors in determining
whether the Defendant acted with bad faith intent to profit analyzed below. 15 U.S.C. §
1125(d). The first four of these factors are “those that militate against a finding of bad
faith…,” while the remaining five “are indicative of the presence of bad faith on the part

8

of the defendant.” Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 809 (6th
Cir. 2004).
Interestingly, Defendants fail to address any of the bad faith factors below, and
instead argue for a construction of the ACPA that would disregard these factors and
instead focus on a much higher standard of specific intent. Actual knowledge of
Plaintiff’s trademark isn’t listed in any of the bad faith factors below. More importantly,
"After registration, there can be no new 'innocent' users, and even an innocent prior
user cannot expand the area of its use, because Lanham Act registration puts all wouldbe users of the mark (or a confusingly similar mark) on constructive notice of the mark."
15 U.S.C. § 1072; Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d
1111, 1123 (6th Cir. 1996) (citing Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831
F.2d 1177, 1181 (1st Cir. 1987)).
For instance, for “willful” and “intentional” trademark infringement cases, conduct
can be deemed willful where the defendant acted with "willful blindness." Louis Vuitton
S.A. v. Lee, 875 F.2d 584, 590 (7th Cir. 1989). Furthermore, courts have easily found
willful conduct where a defendant acts with "'reckless disregard for, or [with] willful
blindness'" toward a trademark owner's rights. Berg v. Symons, 393 F. Supp. 2d 525,
539-40 (S.D. Tex. 2005). See also Microsoft Corp. v. Wholesale Club, Inc., 129
F.Supp. 2d 995, 1007 (S.D. Tex. 2000) ("A finding of willfulness can be willful
blindness."); A Touch of Class Jewelry Co. v. J.C. Penney Co., No. CIV. A. 98-2949,
2000 U.S. Dist. LEXIS 12898, 2000 WL 1224804, at *5 (E.D. La. Aug. 28, 2000)
(quoting Securacomm Consulting Inc. v. Securacom, 166 F.3d 182, 187 (3d Cir. 1999))
9

("Knowing or willful infringement . . . involves an intent to infringe or a deliberate
disregard of the mark holder's rights."). A plaintiff sustains its burden of proving
willfulness "by showing [the] defendant knew or should have known it infringed [the
plaintiff's] copyrights. . . . Willful does not mean malicious, rather, it means with
knowledge, whether actual or constructive." Basic Books, Inc. v. Kinko's Graphics Corp,
758 F. Supp. 1522, 1543 (S.D. N.Y. 1991).
No doubt in anticipation of the defense of subjective ‘good faith’, Congress
provided Courts the following factors in order to gauge “bad faith intent to profit.” While
any one of these factors could support a finding of bad faith, Defendants conduct in this
case is so extreme as to support a finding against Defendant on every factor.
A. Factor 1: The trademark or other intellectual property rights of
the person, if any, in the domain name.
Defendants; actions fail to meet any of the factors that militate against a finding
of bad faith. Defendant clearly has no trademark or other intellectual property rights in
the Subject Domains, which consist of common misspellings, typographical errors, and
transcription errors of Plaintiff’s Marks.
B. Factor 2: The extent to which the domain name consists of the
legal name of the person or a name that is otherwise commonly
used to identify that person.
The Subject Domains do not consist of Defendants’ legal names or names
otherwise commonly used to identify Defendants.

10

C. Factor 3: The person’s prior use, if any, of the domain name in
connection with bona fide offering of any goods or services.
Defendants have not used any of the Subject Domains in connection with a
bona fide offering of goods or services.
D. Factor 4: The person’s bona fide noncommercial or fair use of
the mark in a site accessible under the domain name.
Defendants have not made a bona fide non-commercial or fair use of Plaintiff’s Marks in
the Subject Domains. Instead, Defendants have used the Subject Domains to provide
pay per click advertisements for goods and services in direct competition with Plaintiff’s
goods or services, without any content, business purpose or goal beyond generating
advertising revenue.
E. Factor 5: The person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the domain
name that could harm the goodwill represented by the mark,
either for commercial gain or with the intent to tarnish or
disparage the mark, by creating a likelihood of confusion as to
the source, sponsorship, affiliation, or endorsement of the site.
There is no other reasonable conclusion than that Defendants intended to divert
consumers from Plaintiff’s online locations, namely www.weatherunderground.com, and
www.wunderground.com, to generate revenues from low quality pay per click parking
pages located at the typographical error versions of the subject Domain Names. In fact,
Defendant’s optimized the keyword lander pages to include keywords related to the ‘real
11

web sites.’ (Motion ¶¶s 55-60.) Defendants readily admit their purpose to generate profit
from the Disputed Domains. (Motion ¶ 23(a).) DaimlerChrysler at 207 (“[I]t can be
inferred that the defendants intended to divert customers from the plaintiff’s website
from the fact that the defendants’ “foradodge” domain name is identical to plaintiff’s
4ADODGE mark.”). Previous courts have held that a defendant’s registration of
typographical errors of distinctive or famous trademarks clearly evidences intent to profit
from the plaintiff’s marks:
The fifth factor also cuts strongly against Defendants. It is clear that
their intent was to profit from the poor typing abilities of consumers
trying to reach Plaintiffs’ sites: what other value could there be in a
name like ve3rizon.com? Further, the sites associated with these
names often contained links to products directly competitive with
Plaintiffs’ cellphone and internet businesses, potentially diverting
consumers who would otherwise have purchased goods or services
from Plaintiffs away from Plaintiffs. Defendants clearly intended “to
register a domain name in anticipation that consumers would make
a mistake, thereby increasing the number of hits [their] site would
receive, and consequently, the number of advertising dollars [they]
would gain.
Verizon at 1096-97. See HER, Inc. v. RE/MAX First Choice, LLC, 468 F. Supp. 2d 964,
975 (S.D. Ohio 2007) (“The diversion creates confusion because the domain names
used are identical to or nearly identical to the Plaintiffs’ personal and professional
names.”); see also Victoria’s Secret Stores v. Artco Equip. Co., Inc., 194 F. Supp. 2d
704, 722-23 (S.D. Ohio 2002).
/
/
/
/
12

F.

Factor 6: The person’s provision of material and misleading false contact

information when applying for the registration of the domain name, the person’s
intentional failure to maintain accurate contact information, or the person’s prior
conduct indicating a pattern of such conduct.
Defendants have also intentionally failed to maintain accurate contact
information, which further evidences their bad faith intent to profit under factor VII.
Defendants initially failed to identify in response to discovery that there were any further
domains beyond the 41 identified in the Complaint in response to discovery. (Motion
¶¶s 10(e).) Defendants further indicated that they could not produce in discovery a list of
domain names registered by them. Defendants did produce a document destruction
policy that required employees to destroy emails, documents and data on a regular
schedule (Motion ¶ 10(d).), despite the fact that Defendants were under constant threat
by third party trademark holders of cybersquatting and trademark infringement (Motion ¶
10(d).). Only after being Ordered to produce discovery did Defendants provide a partial
database of their domain names which Plaintiff then discovered revealed hundreds of
additional infringing domain names. (Motion ¶¶s 10(e).) In fact, Defendant NCS is a
shell company with literally no assets, when the real companies which engaged in the
mass typosquatting were Firstlook and Connexus, hidden behind the empty “Navigation
Catalyst Systems” name. (Motion ¶¶s 16-25.)
Defendants have further attempted to shield their identities by implementing
WHOIS privacy protection for many of the Domain Names after the initiation of this
lawsuit. Defendants’ attempt to conceal its typosquatting by providing material and
13

misleading WHOIS contact information evidences its bad faith intent to profit. See Cable
New Network LP, LLLP v. CNNews.com, 177 F. Supp. 2d 506, 526 (E.D. Va. 2001) aff’d
in part, vacated in part sub nom. Cable News Network, LP, LLLP v. CNNews.com, 56 F.
App’x. 599 (4th Cir. 2003).
G. Factor 7: The person’s offer to transfer, sell, or otherwise assign
the domain name to the mark owner or any third party for
financial gain without having used, or having an intent to use the
domain name in a bona fide offering of any goods or services, or
the person’s prior conduct indicating a pattern of such conduct.
Defendants offered to sell the domain names for financial gain to anyone willing
to pay. Defendants had no use for the domains beyond PPC, or pay per click,
advertising. Defendants had no current or contemplated trademark use for the domains.
H. Factor 8: The person’s registration or acquisition of multiple
domain names which the person knows are identical or
confusingly similar to marks of others that are distinctive at the
time of registration of such domain names, or dilutive of famous
marks of others that are famous at the time of registration of such
domain names, without regard to the goods or services of the
parties.
Defendants are habitual and notorious cybersquatters that have been ruled
against on numerous occasions. See Verizon California, Inc. v. Navigation Catalyst
Sys., Inc., 568 F. Supp. 2d 1088, 1094 (C.D. Cal. 2008); see also Cabela’s Inc. v.

14

Navigation Catalyst Systems, Case No. FA0909001283152 (Nat. Arb. Forum Oct. 22,
2009); Cricket Communications, Inc. v. Domain Name Proxy aka Navigation Catalyst
Systems, Case No. FA10050001324492 (Nat. Arb. Forum June 24, 2010). Defendants
have registered, used, and trafficked in domain names that contain the trademarks of
numerous famous brands, such as Star Wars (syarwars.com), Facebook
(facebhook.com, facebooko.com, favebook.com), Apple (ap-ple.com), The Onion
(yheonion.com), OK CUPID (okcupids.com, okcupis.com), Samsung (wamsung.com),
Taco Bell (acobell.com), Gawker (gawkeer.com), MySpace (mytsapce.com,
myspqce.com), Coca Cola (cocscola.com), and Pizza Hut (pizzaqhut.com,
pizzagut.com). The registration, use, and trafficking in domain names that Defendants
knew were confusingly similar or dilutive of the distinctive or famous trademarks of
others evidences Defendants’ intent “to profit from the poor typing abilities of consumers
trying to reach Plaintiff[‘s] sites: what other value could there be in a name like
ve3rizon.com?” Verizon at 1096. The list of obvious typographical variations of
trademarks is massive. (Motion ¶¶s 10-13.)
I. Factor 9: The extent to which the mark incorporated in the
person’s domain name registration is or is not distinctive and
famous within the meaning of subsection (c) of this section.
Plaintiff’s Marks are incontestably distictive and famous. “Registered marks… are
presumed to be distinctive and nonfunctional.” Aromatique, Inc. v. Gold Seal, Inc., 28
F.3d 863, 869 (8th Cir. 1994); see also 15 U.S.C. § 1115.

15

b. Defendants Epic Media Group, Connexus, and Firstlook are liable for
direct and contributory cybersquatting as a matter of law.
As Defendants readily admit, NCS has no employees, assets, or bank accounts.
NCS merely serves as the fall guy in an elaborate shell game, and Connexus and
Firstlook employees have been the ones to actively engage in the ‘registration, use and
trafficking” of the disputed domains. (Motion ¶¶s 16-27.) These companies reaped the
financial benefits of NCS’ cybersquatting activities, with all advertising revenue flowing
directly to Firstlook and Connexus. Id. As such, Connexus, and Firstlook may be held
liable for direct and contributory cybersquatting as a matter of law. See Ford Motor Co.
v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 647 (E.D. Mich. 2001), Inwood
Laboratories, inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982), Solid Host, NL v.
Namecheap, Inc., 652 F. Supp. 2d 1092, 1112 (C.D. Cal. 2009). Defendants not only
took “’affirmative steps… to foster infringement’” or that the “’Defendants promoted
their…system as a means to infringe’” But were actually the ones controlling all the
cybersquatting decisions and activities. Gucci Am., Inc. v. Frontline Processing Corp.,
721 F. Supp. 2d 228, 249 (S.D.N.Y. 2010).
Defendants only expert, John Berryhill, was provided no information about this
case or any of the Defendants’ companies. He was retained only to opine that domain
tasting does not ipso facto establish bad faith. However, his testimony lays the
foundation for a finding of bad faith as a matter of law. (Motion ¶¶s 51-53, 73-86.) Mr.
Berryhill himself referred to Defendant NCS as “pirates.” (Motion Exhibit 78.)

16

Defendant cannot escape its admission that it engaged in bad faith
cybersquatting given its counterclaims against Verizon seeking statutory damages
under ACPA for violating Defendants’ trademarks on virtually the identical Verizon
business model. (Motion ¶¶s 34-37.)
VI. CONCLUSION
Defendants registered, used, and trafficked in the Domain Names, which are
typosquats of and confusingly similar to Plaintiff’s distinctive registered and common law
trademarks. In fact, Defendants entire business model is knowingly corrupt and appears
to have been designed from the outset to provide superficial defenses to liability under
the ACPA.
Defendants may have caught a few tuna along the way, but clearly landed nets
full of protected dolphin. Any effort by Defendants to avoid trademarks, or return legally
protected domain names to trademark owner’s, even if found credible, amounts to little
more than “too little too late.” The ACPA creates liability immediately upon registration,
use or trafficking, without any mitigation for voluntarily transferring domain names after
getting caught.
Defendants should be held liable for cybersquatting under 15 U.S.C. § 1125(d)
as a matter of law, leaving only the issue of statutory damages under 15 U.S.C.
§1117(d) on Counts I and VI of Plaintiff’s First Amended Complaint.
/
/
/
/
/
/
17

Respectfully submitted this 15th day of July, 2011.
/s/Enrico Schaefer___________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

18

CERTIFICATE OF SERVICE
I hereby certify that on the 15th day of July, 2011, I electronically filed the
foregoing paper with the Court using the ECF system which will send notification of
such filing to the following:
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Attorneys for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Attorneys for Plaintiff

William A. Delgado (admitted pro hac)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Boulevard, Suite 3850
Los Angeles, CA 90017
[phone]
[e-mail]
Lead Counsel for Defendants
Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
Bruce L. Sendek (P28095)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
[e-mail]
Local Counsel for Defendants

/s/Enrico Schaefer___________________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff

19