Gioconda Law Group PLLC v. Kenzie

Filing 56

MEMORANDUM AND ORDER denying 40 Motion to Appoint Rule 706 Experts. The plaintiff, Gioconda Law Group PLLC (GLG), commenced this action against Arthur Wesley Kenzie (Kenzie), who is proceeding pro se, asserting claims for federal cybersquatting, tr ademark infringement, false designation of origin and unlawful interception and disclosure of electronic communications... and for related New York State law claims. Before the Court is Kenzies motion, made pursuant to Rule 706 of the Federal Rules o f Evidence, for the Court to: (a) appoint an independent expert witness to assist in assessing the evidence with regards to (1) the Uniform Domain Name Dispute Resolution Policy (UDRP); (2) alleged violations of The Wiretap Act; (3) alleged violation s of the Lanham Act; (4) alleged violations of the Anti-Cybersquatting Consumer Protection Act; (5) a trade-mark fair use defense in the intersecting contexts of information/network/cyber security and cybersquatting; [and] (6) proposed extensions to the Electronic Communications Privacy Act; and (b) [apportion] all costs of such experts to the plaintiff. The plaintiff opposes the motion. For the foregoing reasons, the defendant's motion for the Court to appoint an expert witness(es), pursuant to Rule 706 of the Federal Rules of Evidence, Docket Entry No. 40, is denied. SO ORDERED. (Signed by Magistrate Judge Kevin Nathaniel Fox on 5/31/2013) Copies Mailed By Chambers. (rsh).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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GIOCONDA LAW GROUP PLLC, a New York
:
Professional Limited Liability Company,
:
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Plaintiff,
:
:
-against:
:
ARTHUR WESLEY KENZIE, an individual,
:
:
Defendant.
:
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KEVIN NATHANIEL FOX
UNITED STATES MAGISTRATE JUDGE

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MEMORANDUM AND ORDER
12 Civ. 4919 (JPO)(KNF)

INTRODUCTION
The plaintiff, Gioconda Law Group PLLC (“GLG”), commenced this action against Arthur
Wesley Kenzie (“Kenzie”), who is proceeding pro se, asserting claims for “federal cybersquatting,
trademark infringement, false designation of origin and unlawful interception and disclosure of electronic
communications . . . and for related New York State law claims.” Before the Court is Kenzie’s motion,
made pursuant to Rule 706 of the Federal Rules of Evidence, for the Court to: (a) appoint an “independent
expert witness to assist in assessing the evidence with regards to (1) the Uniform Domain Name Dispute
Resolution Policy (“UDRP”); (2) alleged violations of The Wiretap Act; (3) alleged violations of the
Lanham Act; (4) alleged violations of the Anti-Cybersquatting Consumer Protection Act; (5) a trade-mark
‘fair use’ defense in the intersecting contexts of information/network/cyber security and cybersquatting;
[and] (6) proposed extensions to the Electronic Communications Privacy Act”; and (b) “[apportion] all
costs of such experts to the plaintiff.” The plaintiff opposes the motion.
GLG’s Complaint/Kenzie’s Answer
According to the complaint, GLG is “a professional limited liability company duly organized
under the laws of the State of New York, engaged in the authorized practice of law.” GLG alleges, inter
alia, that Kenzie “registered the Internet Domain Name GIOCONDOLAW.COM . . . to intentionally
mimic the plaintiff’s domain name GIOCONDALAW.COM.” GLG maintains that Kenzie “engaged in an
unlawful course of conduct to intentionally intercept electronic communications that were intended for the
plaintiff by utilizing electronic devices, including computers connected to the internet,” to enrich himself.
In his answer to the complaint, Kenzie does not deny the underlying allegations made by GLG – that he
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created a domain name that is substantially similar to GLG’s domain name. Instead, he offers explanations
and justification for his actions and disputes GLG’s contentions regarding his intentions.
Kenzie’s Motion for Appointm ent of an Expert Witness(es)
According to Kenzie, an expert witness(es) should be appointed by the Court because he
faces an immensely challenging situation with this case, given the stature and resources of
the plaintiff, as well as the wide range of claims, and enormous financial relief sought, while
the Defendant has been unemployed since January 2008 and now is essentially
unemployable in his trade as a direct result of this case [,] considering how it began and has
unfolded. The Defendant lacks the financial resources to pay for expert witnesses that would
provide clarity of the multiple complex issues in this case. Appointment by the court of
neutral experts would be proper and just in these circumstances, in order to guard against the
very real possibility of a one-sided abuse of justice.
To support his contention that the matters at issue in this action are complex and warrant the appointment
of an expert(s), Kenzie contends, for example, that his “answer partially relies on a defense of trade-mark;
fair use in the intersecting contexts of information/network/cyber security and cybersquatting that is
substantially new and complex.” Furthermore, Kenzie avers that the “various claims made by the Plaintiff,
along with the defenses plead by the Defendant, are of such significance in today’s Internet-enabled world
of commerce, social interaction and national security that this Court must make every effort to include
expert opinions in its deliberations, and in its jury’s deliberations.”
GLG’s Opposition
According to GLG, “there is nothing particularly novel or complicated about the technical facts of
this case”; thus, no need exists for the Court to appoint an expert witness(es). GLG contends that the
Court should not consider Kenzie’s claim of poverty, when evaluating this motion, because, despite
Kenzie’s assertion that he has been unemployed since January 2008, “the Defendant saw fit to invest over
ten thousand dollars ($10,000.00) in the registration (and renewal) of over one thousand (1000) Internet
dom ain nam es since 2007, many of which clearly infringed upon and ‘typosquatted’ on the names of
numerous established law firms, companies and banks, including that of the Plaintiff.” (emphasis in
original). Moreover, GLG asserts that it is not being compensated by a client to pursue the instant action,
“but is litigating this case to protect its own valuable intellectual property, and to protect the public from
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further harm, as the Defendant’s conduct has been subject to a widespread public outcry.” In addition,
GLG maintains that “[t]he factual evidence already before the Court is clear: The Defendant is a recidivist
cybersquatter who seeks to promote his own ‘security services’ for profit by registering many internet
domain names intended to imitate the names of established businesses and law firms.”
Legal Standard
Federal Rule of Evidence 706(a) provides that
[o]n a party’s motion or on its own, the court may order the parties to show cause why
expert witnesses should not be appointed and may ask the parties to submit nominations.
The court may appoint any expert that the parties agree on and any of its own choosing.
But the court may only appoint someone who consents to act.
“The determination to appoint an expert [witness] rests solely in the Court’s discretion and is to be
informed by such factors as the complexity of the matters to be determined and the Court’s need for a
neutral, expert view.” Eldridge v. Williams, 10 Civ. 0423, 2012 WL 1986589, at *1 (S.D.N.Y. June 1,
2012). “The most important factor in favor of appointing an expert [witness] is that the case involves a
complex or esoteric subject beyond the trier-of-fact’s ability to adequately understand without expert
assistance.” Id. (citation omitted). Appointing an expert witness under Rule 706 is intended to aid the
trier-of-fact in its understanding and assessment of technical or scientific issues, not to further the “partisan
interests of any party.” Benitez v. Mailloux, 05-cv-1160, 2007 WL 836873, at *1 (N.D.N.Y. Mar. 15,
2007). Where no complex, highly technical litigation exists, appointing an expert witness, pursuant to
Rule 706, should generally be denied. See Daker v. Wetherington, No. 01-CV-3257, 2006 WL 648765, at
*5 (N.D. Ga. Mar. 15, 2006).
Application of Legal Standard
The matters to be determined in this action are, in essence, whether, as alleged by GLG, Kenzie
violated federal and analogous state laws proscribing, inter alia, cybersquatting, trademark infringement
and the interception and disclosure of electronic communications, when he created a domain name that is
confusingly similar to its own in order to profit financially therefrom, at GLG’s expense. Kenzie has not
demonstrated how or why these matters are either “complex or esoteric” or are beyond the ability

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of "the trier-of-fact ... to adequately understand without [an] expert [witness's] assistance." Eldridge,
2012 WL 1986589, at *1. Instead, Kenzie has made conclusory assertions about the complexity of the
federal and state laws that are germane to this action and urged that his lack of economic resources
warrants the Court's appointing an expert witness(es). Kenzie's complexity assertions, without more,
provide no basis upon which the Court can conclude that the matters in controversy are of sueh a eomplex
or esoteric nature that appointing an expert witness(es), pursuant to Rule 706, is necessary. Furthermore,
since appointing an expert witness(es) under Rule 706 is intended to aid the trier-of-fact in its
understanding and assessment of technical or scientific issues, and is not a vehicle for furthering a
litigant's partisan interests, Kenzie's inability to engage an expert witness(es)
resources

owing to his lack of

is not a proper consideration for the Court in determining whether a Rule 706 expert

witness(es) appointment ought to be made. See Benitez, 2007 WL 836873, at *1.

CONCLUSION
For the foregoing reasons, the defendant's motion for the Court to appoint an expert witness(es),
pursuant to Rule 706 of the Federal Rules of Evidence, Docket Entry No. 40, is denied.
Dated: New York, New York
May 31, 2013

SO ORDERED:

Copy mailed to:

KEVIN NATHANIEL FOX
UNITED STATES MAGISTRATE JUDGE

Arthur Wesley Kenzie

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