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

Filing 267

RESPONSE to 241 MOTION in Limine No. 2 filed by Weather Underground, Incorporated. (Attachments: # 1 Exhibit A) (Schaefer, Enrico)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,

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

Plaintiff,
vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; BASIC FUSION, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; and FIRSTLOOK, INC.,
a Delaware corporation,
Defendant.

/

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 Counsel 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]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants
/

PLAINTIFF’S RESPONSE TO DEFENDANTS’ MOTION IN LIMINE NO. 2
REGARDING NATIONAL ARBITRATION FORUM COMPLAINT IN THIS CASE

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NOW COME Plaintiff, by and through counsel, TRAVERSE LEGAL, PLC and
HOOPER HATHAWAY, P.C., and hereby submits its response to Defendants’ Motion in
Limine No. 2 regarding the National Arbitration Forum (“NAF”) Complaint in this case and
states as follows:
I.

Introduction

Defendants seek to exclude the Uniform Domain Dispute Resolution Policy (“UDRP”)
Complaint and exhibits filed by Plaintiff against Navigation Catalyst Systems, as well as the
Panel’s decision.

Defendants argue that the UDRP pleadings and decision are irrelevant,

prejudicial and a waste of time.

Defendants also argue that the documents are hearsay under

FRE 801.
II.

Argument

In this case, issues of intent, notice, and timeline are critical for the jury’s understanding
of the case.

Defendants essentially argue that the registration of approximately 270

typographical variations of Plaintiff’s trademarks do not evidence a bad faith intent to profit from
those marks because:
a.

Defendants supposedly try “really hard” to avoid trademarks during the
registration process, but there are too many trademarks out there to be 100%
accurate.

b.

While Defendants take reasonable efforts to avoid registration of domain names
which incorporate third party trademarks, Defendants always transfer domains
which they agree infringe third party trademarks once actual notice is provided by
the trademark owner.
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c.

Defendants have a variety of systems in place to avoid registration of third party
infringing domains after they receive actual notice from a trademark owner.
Specifically, Defendants incorporate the complaining party’s trademarks and
variations of those trademarks in a “blacklist” which precludes matching domains
from being considered for registration by Defendants’ software.

A key issue for the jury will be whether or not Defendants can establish that registration
of third party trademarks is the exception rather than the rule. Plaintiff will also have to assess
Defendants’ credibility that they try and avoid third party trademarks during the registration
process and, as importantly, whether or not Defendants’ internal procedures for avoiding further
infringement after actual notice by a trademark owner is contrived.
A.

The UDRP Complaint and Panel Decision Are Relevant.

The question under FRE 402 is whether the UDRP complaint filed in this case and Panel
decision makes an issue of consequence more probably than not. First of all, since Defendants
process is heavily dependent on receiving “actual notice” of infringement by a trademark owner.
The UDRP complaint, including the specific list of 41 then known domains on that complaint, is
relevant because it is the first “actual notice” in Defendants’ language provided by Plaintiff to
Defendants. Further, Defendants state that when they receive a threat letter or UDRP complaint,
they analyze the trademark issues and make a determination as to whether the trademark claims
they are valid. In instances where Defendants agree that their domain name is infringing a third
party mark, they offer to transfer or delete that domain name from their portfolio. Defendants
agreed Plaintiff’s trademark claims in the UDRP were valid and thus offered to transfer those
domains. (Exhibit A, August 22, 2008, email from Chris Pirrone to Brian Hall.) It is important
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to note that Defendants, while admitting that the 41 subject domain names infringed Plaintiff’s
marks, will argue at trial that their offer to transfer those domains to Plaintiff after receiving
actual notice is evidence of their “good faith” process. Defendants’ may challenge Plaintiff’s
trademark claims at trial, contrary to their prior admission during the UDRP that the trademark
claims were valid.
Plaintiff will seek to establish that, contrary to Defendants’ primary defense, Defendants
continue to register domain names infringing on Plaintiff’s trademarks even after receiving
Plaintiff’s UDRP. In fact, Plaintiff will establish that Defendants moved some new infringing
registrations into “Domain Name Proxy” as the registrant in order to hide Navigation Catalyst
Systems, Connexus, and Firstlook from the public WhoIS database.
Because the UDRP complaint is being offered to establish “notice” and “knowledge” of
Plaintiff’s trademarks, and notice is a key issue in the case, the evidence is highly relevant.
Because Defendants’ handling of the UDRP establishes that Plaintiff’s trademark infringement
claims were valid, Defendants’ credibility at trial to deny validity should be subject to crossexamination using the UDRP complaint. Moreover, the arguments and attachments included in
that UDRP proceeding provide valuable context to the jury. Not only were Defendants put on
notice of a trademark violation, they were provided substantive argument and evidence of
Plaintiff’s trademark rights and proof of infringement. Why Defendants blacklisted certain
trademarks and not others after notice of a UDRP complaint and the information therein
confirmed is also for the jury.

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B.

The UDRP Exhibits Are Not Hearsay or Otherwise an Admission.

Because these documents aren’t being offered for the “proof of the matter asserted” but
instead to show notice, they are not hearsay under FRE 801. Even if they were considered
hearsay, these records were kept in the ordinary course of business by Defendants supposedly to
avoid further trademark infringement and, thus, are admissible under FRE 803(6). This UDRP
proceeding was placed in Defendants’ trademark infringement spreadsheet and supposedly
Defendants’ software blacklist as part of its regularly conducted business activity. Defendants’
handling of the UDRP in this case is an admission that Plaintiff’s trademark claims are valid.
With regards to the UDRP Panelist’s decision, admission of that decision could not
possibly be considered prejudicial or a waste of time. By Defendants’ own testimony, they had
already determined that Plaintiff’s trademark rights were valid and offered to transfer the
domains. Again, the decision is not being offered to establish the truth of the matter asserted, but
to provide further evidence of notice that Plaintiff’s were pursuing trademark claims against
them. Keep in mind that Defendants analyzed Plaintiff’s trademark infringement claims. The
existence of a UDRP panel decision is part of the history and process of Defendants’ analysis.
Finally, the UDRP transfer explains how the initial 41 domains ended up in Plaintiff’s control.
III.

Conclusion

The existence of a UDRP proceeding is directly relevant to the issue of Defendants’
notice and knowledge of Plaintiff’s trademark claims. The UDRP decision is integral to
Defendants’ own business process in supposedly “avoiding further infringement” after receiving
actual notice. The UDRP proceeding is the reason Defendants blacklisted Plaintiff’s trademarks

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so that further infringing domains would not be registered. The jury can be provided a limiting
instruction with regards to this evidence as necessary.
Respectfully submitted this 27th day of February, 2012.

/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]
Co-Counsel for Plaintiff

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CERTIFICATE OF SERVICE
I hereby certify that on the 27th day of February, 2012, 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 Counsel 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]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead 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

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