Amplify Car Wash Advisors LLC v. Car Wash Advisory LLC et al

Filing 89

MEMORANDUM OPINION AND ORDER re: 73 MOTION for Partial Summary Judgment as to Counts I and II against Defendants. filed by Amplify Car Wash Advisors LLC. The Court has considered all of the parties' arguments. To the extent not specifically addressed, those arguments are either moot or without merit. For the foregoing reasons, the plaintiff's motion for partial summary judgment is granted. The Clerk is directed to close ECF No. 73. SO ORDERED. (Signed by Judge John G. Koeltl on 3/10/25) (yv)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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AMPLIFY CAR WASH ADVISORS LLC,
Plaintiff,
- against –
CAR WASH ADVISORY LLC, ET AL.,
Defendants.
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22-cv-5612 (JGK)
MEMORANDUM OPINION
AND ORDER

JOHN G. KOELTL, District Judge:
The plaintiff, Amplify Car Wash Advisors LLC (“Amplify”),
filed this action against the defendants, Car Wash Advisory LLC
(“CWA”) and Harry Caruso (“Caruso”), alleging claims for
cybersquatting, 15 U.S.C. § 1125(d), common law trademark
infringement, 15 U.S.C. § 1125(a), unfair competition, N.Y. Gen.
Bus. Law § 349(a), and tortious interference with prospective
economic advantage; all arising out of the defendants’ purchase
of the domain name “amplifycarwash.com.” The plaintiff now moves
for partial summary judgment on the first two of these claims:
cybersquatting and common law trademark infringement.
For the following reasons, the plaintiff’s motion for
partial summary judgment is granted.
I.
The following facts are taken from the parties’ Local Rule
56.1 statements, counterstatements, and supporting papers and
are undisputed unless otherwise noted.

The plaintiff, Amplify, was formed in 2020 and specializes
in mergers and acquisitions, capital advising, site selection,
and financial services for car wash businesses. Pl.’s 56.1
Statement of Facts (“Pl.’s 56.1 Statement”) ¶¶ 1–2, ECF No. 75.
Although Amplify was formed only four years ago, Amplify’s
founders have prior experience in the commercial real estate
industry and one founder owns Commercial Plus, a commercial real
estate brokerage firm founded in 1983 that also operates in the
car wash industry. Id. ¶¶ 3, 34, 38. Amplify conducts business
through its website, “amplifywash.com.” Id. ¶¶ 28–31. Commercial
Plus also operates a website under the domain name:
“commercialplus.com.” Id. ¶ 39.
Caruso formed CWA in 2019. Id. ¶ 11. CWA provides car wash
businesses with services related to mergers and acquisitions,
raising capital, and investment. Defs.’ Resp. to Pl.’s 56.1
Statement of Facts (“Defs.’ 56.1 Resp.”) ¶ 7, ECF No. 80. Caruso
is the sole founder, equity owner, and member of CWA. Pl.’s 56.1
Statement ¶¶ 13-14. At the time of CWA’s founding, Caruso had no
prior experience in the car wash industry. Id. ¶¶ 11–12. CWA
conducts business, in part, through its website:
“carwashadvisory.com.” Id. ¶ 19.
In November 2021, both Amplify and CWA were exhibitors at
“The Car Wash Show”—a convention for members of the car wash
industry. Id. ¶ 40. Defendant Caruso attended the convention.
2

Id. ¶ 44. The parties had exhibitor booths in the same
convention hall and Caruso interacted with Amplify employees at
the convention. Id. ¶¶ 45, 47.
On November 18, 2021—one day after the convention—Caruso
purchased three new website domains using his personal PayPal
account: amplifycarwash.com, amplifywashes.com, and
amplifycarwashes.com. Id. ¶¶ 49, 52. For a period of time, CWA’s
“amplifycarwash.com” domain redirected visitors to CWA’s
website, “carwashadvisory.com.” Id. ¶ 55. The defendants contend
that the website has not redirected to CWA’s website since June
2022. Defs.’ 56.1 Counterstatement of Facts (“Defs.’ 56.1
Counterstatement”) ¶ 81, ECF No. 80. On December 7, 2021, Caruso
also purchased “commercialpluscarwash.com.” Pl.’s 56.1 Statement
¶ 57. In total, CWA owns approximately seventy-five different
URLs although it maintains only three websites. Id. ¶ 59.
The defendants contend that multiple search engine
analytics sources showed no traffic to CWA’s website originating
from any domain containing the word “amplify” and no organic
traffic to the contested domain names during the relevant
period. See Defs.’ 56.1 Counterstatement ¶¶ 82-84. 1 The parties
The plaintiff contends that exhibits 3 and 4 which support
these facts are unauthenticated hearsay for which no exceptions
apply and therefore fail to comply with Local Rule 56.1 which
requires that each statement “be followed by citation to
evidence that would be admissible.” See Pl.’s Resp. to Defs.’
56.1 Counterstatement ¶¶ 83–84, ECF No. 81.
1

3

dispute whether any of the amplify domains purchased by CWA can
be found in a general web search and whether evidence that the
domains cannot be found in a web search would be admissible.
Pl.’s Resp. to Defs.’ 56.1 Counterstatement ¶ 107.
On May 25, 2022, Amplify sent a letter to Caruso, advising
him of the alleged unauthorized use of the domain name
“amplifycarwash.com” and asking CWA to cease using the amplify
mark and to transfer the allegedly infringing domain to the
plaintiff. De Preter Decl., Ex. O, ECF No. 76. On May 31, 2022,
the defendants replied and noted that “[a]s [the] letter does
not mention any compensation for such transfer, it appears to be
a thinly veiled attempt to intimidate our client into
surrendering his property.” Id., Ex. P. 2 The defendants then
suggested that “the best resolution may be for [CWA] to cease
usage of the domain and, in return, for [Amplify] to cease using
the mark “Car Wash Advisors” in [Amplify’s] title, website and
marketing materials.” Id.
In June 2022, Amplify sought to register the mark “Amplify
Car Wash Advisors.” Hadden Decl., Ex. 1, ECF No. 78. That
application has been suspended because of a prior, potentially
conflicting, pending application. Id., Ex. 2. In July 2022, the

Unless otherwise noted, this Memorandum Opinion and Order
omits all alterations, omissions, emphasis, quotation marks, and
citations in quoted text.
2

4

plaintiff brought this action for cybersquatting, common law
trademark infringement, unfair competition, and tortious
interference with prospective economic advantage based on the
defendants’ alleged purchase of the domain
“www.amplifycarwash.com.” See Compl., ECF No. 3. In Amplify’s
prayer for relief, it requested injunctive relief, compensatory
and punitive damages, and that the Court order the defendants to
turn over the infringing domains. Id. ¶¶ 96–107.
In connection with this litigation, Caruso testified that
he “always believed [it] to be [a] common marketing practice . .
. to buy derivations on other versions of your name or
associated names or competitor names.” De Preter Decl., Ex. F.
at 41:5–8. Caruso provided the rationale that purchasing related
domains-including competitor domains—increased “domain
authority” and would allow his business to perform better on
search engines. Id. 43:4–16. He also testified that “[t]he big
thing why we have these [domain names] is to prevent others from
having them.” Id. 44:2–3. Caruso’s deposition also included the
following exchange:
Q:
And
through
your
ownership
of
amplifycarwash.com
that’s
blocking
your
competitors from purchasing that same domain
name; true, lie? . . .
A: No, no. The answer is no, absolutely not
no. It doesn’t block them from buying it. It
blocks them from buying it direct[ly] from a
domain registrar.
5

Q: I am not sure I understand your answer. Are
you saying that they could still buy it, they
would just have to buy it from you?
A: Yeah. We offered to give it back to them,
just to be clear.
Id. at 82:14-83:3.
The plaintiff has now moved for summary judgment on its
cybersquatting and trademark infringement claims. ECF. No. 73.
In Amplify’s motion for partial summary judgment, it also
contends that Caruso should be held individually liable for the
claims. See Mem. of Law in Supp. of Mot. for Summ. J. at 21, ECF
No. 74. The Court heard oral argument on the motion on January
10, 2025.
II.
The standard for granting summary judgment is well
established. “The court shall grant summary judgment if the
movant shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477
U.S. 317, 322—23 (1986); Gallo v. Prudential Residential Servs.
L.P., 22 F.3d 1219, 1223 (2d Cir. 1994). “[T]he trial court’s
task at the summary judgment motion stage of the litigation is
carefully limited to discerning whether there are any genuine
issues of material fact to be tried, not to deciding them. Its
duty, in short, is confined at this point to issue-finding; it
6

does not extend to issue-resolution.” Gallo, 22 F.3d at 1224.
However, “disputed legal questions . . . present nothing for
trial and are appropriately resolved on a motion for summary
judgment.” Flair Broad. Corp. v. Powers, 733 F. Supp. 179, 184
(S.D.N.Y. 1990).
The moving party bears the initial burden of “informing the
district court of the basis for its motion” and identifying the
materials in the record that “it believes demonstrate the
absence of a genuine issue of material fact.” Celotex, 477 U.S.
at 323. If the movant meets that burden, “the nonmoving party
must come forward with specific facts showing that there is a
genuine issue for trial.” Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 587 (1986). At the summary judgment
stage, the court must resolve all ambiguities and draw all
reasonable inferences against the moving party. See id. The
substantive law governing the case will identify those facts
that are material and, “[o]nly dispute[] over facts that might
affect the outcome of the suit under the governing law will
properly preclude the entry of summary judgment.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
III.
The plaintiff raises a claim for trademark infringement
under the Lanham Act, 15 U.S.C. § 1501, et seq. The Lanham Act

7

provides a cause of action against any person who, in connection
with goods and services, uses in commerce:
any word, term, name, symbol, or device, or
any combination thereof . . . which (A) is
likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another
person,
or
as
to
the
origin,
sponsorship, or approval of his or her goods,
[or] services . . . .
15 U.S.C. § 1125(a)(1). To prevail on a claim of trademark
infringement, a plaintiff must show “(1) that the plaintiff[]
hold[s] a valid mark entitled to protection; (2) that the
defendant used the mark; (3) in commerce; (4) in connection with
the sale or advertising of goods or services; (5) without
plaintiff[’s] consent; and (6) that the defendant’s use of a
similar mark is likely to cause confusion.” Gym Door Repairs,
Inc. v. Young Equip. Sales, Inc., 331 F. Supp. 3d 221, 250
(S.D.N.Y. 2018).
A.
The plaintiff claims two marks, as it made clear at oral
argument on this motion: (1) “amplify car wash advisors” and (2)
“amplify,” as used within the context of the car wash financial
services industry. Both marks are valid and entitled to
protection. Although the plaintiff’s marks are not registered,
the Lanham Act protects unregistered trademarks from
infringement. Now-Casting Econ., Ltd. v. Econ. Alchemy LLC, 628
8

F. Supp. 3d 501, 516 (S.D.N.Y. 2022). “[T]he general principles
qualifying a mark for registration under § 2 of the Lanham Act
are for the most part applicable in determining whether an
unregistered mark is entitled to protection under § 43(a).” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). “The
main difference is that the owner of the unregistered mark does
not benefit from the presumption of validity created by
federally registering the mark.” See Now-Casting, 628 F. Supp.
3d at 516.
Before showing that a mark is valid and protectable, “a
plaintiff [claiming infringement of an unregistered mark] must
demonstrate its own right to use the mark . . . in question.”
ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 154 (2d Cir. 2007). A
plaintiff possesses the right to use a mark “if it made the
first use of the mark to identify his goods or service and
continues to use the mark commercially.” Now-Casting, 628 F.
Supp. 3d at 516. In this case, the parties do not contest that
Amplify has the right to use the amplify mark.
Next, for an unregistered mark to be protectable, the “mark
must be sufficiently distinctive to distinguish” the mark
owner’s goods from those of others. Louis Vuitton Malletier v.
Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006). To
assess the distinctiveness of a mark, courts consider whether
the mark is (1) generic; (2) descriptive; (3) suggestive; or (4)
9

fanciful or arbitrary. Bristol-Myers Squibb Co. v. McNeilP.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir. 1992).
Generic marks consist only of words identifying a category
of goods or services. Star Indus., Inc. v. Bacardi & Co. Ltd.,
412 F.3d 373, 385 (2d Cir. 2005). Descriptive marks consist “of
words identifying qualities of the product.” Id. By contrast,
suggestive marks, although not purely descriptive, “do suggest a
quality or qualities of the product through the use of
‘imagination, thought and perception.’” Id. (quoting Time, Inc.
v. Petersen Publ’g Co., 173 F.3d 113, 118 (2d Cir. 1999)).
Finally, “[a]rbitrary or fanciful marks are ones that do not
communicate any information about the product either directly or
by suggestion.” Id.
Generic marks are unprotectable. Bristol-Myers Squibb, 973
F.2d at 1039; see also RiseandShine Corp. v. PepsiCo, Inc., 41
F.4th 112, 120–21 (2d Cir. 2022) (observing that public
recognition as a source identifier cannot “justify denying
others the right to refer to their product as what it is”).
Descriptive marks become protectable only when they acquire
secondary meaning—“i.e. an acquired public recognition as a mark
identifying the source.” RiseandShine, 41 F.4th at 121; Two
Pesos, 505 U.S. at 769. Meanwhile, suggestive and fanciful or
arbitrary marks are inherently distinctive and are protectable
without a showing of secondary meaning. Bristol-Myers Squibb,
10

973 F.2d at 1039 (“Suggestive, arbitrary and fanciful marks,
because their inherent nature serves to identify a particular
source of a product, are deemed inherently distinctive and are
entitled to protection.”); see also Two Pesos, 505 U.S. at 768.
“Amplify” is defined as “to make something louder,” or “to
increase the size or effect of something.” See Pl.’s 56.1
Statement ¶ 6. Amplify does not identify a category of products
or the qualities of those products and therefore is not a
generic or descriptive mark. However, “amplify” also is not
fanciful or arbitrary. Imagination, thought, and perception link
its definition—to “increase the size or effect of something”—to
the plaintiff’s business—an advisory service designed to grow
car wash businesses. This link between the Amplify’s mark and
its business is particularly evident when “amplify” is used in
conjunction with the word “wash” or “car wash”—as it is in the
contested domain name.
Because “amplify” and “amplify car wash advisors” are
suggestive marks, they are inherently distinctive even without
acquired secondary meaning and are entitled to protection under
the Lanham Act.
B.
Additionally, the defendants used the plaintiff’s marks in
commerce. Pursuant to the Lanham Act, a mark is used in
commerce:
11

(1)

On goods when—

A. it is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes
such
placement
impracticable,
then
on
documents associated with the goods or their
sale, and
B. the goods are sold or transported in commerce,
and
(2)

on services when it is used or displayed in
the sale or advertising of services and the
services are rendered in commerce . . . .

15 U.S.C. § 1127.
“[D]istrict courts in [the Second] Circuit and elsewhere
have sustained trademark infringement and Lanham Act unfair
competition claims where a defendant has used a competitor’s
name as its own domain name, . . . .” Soter Techs., LLC v. IP
Video Corp., 523 F. Supp. 3d 389, 399 (S.D.N.Y. 2021)
(concluding that “use of [a] domain name . . . to redirect
customer traffic to its website constitutes a ‘use in
commerce’”). For example, in OBH, Inc. v. Spotlight Mag., Inc.,
86 F. Supp. 2d 176, 185–86 (W.D.N.Y. 2000), a court held that
the use of the plaintiffs’ trademark in the domain name of a
website that the defendant operated satisfied the use in
commerce requirement “because the website was used for
commercial purposes and affected plaintiffs’ ability to offer

12

their services in commerce.” Soter Techs., 523 F. Supp. 3d at
399 (citing OBH, 86 F. Supp. 2d at 185–86).
In this case, both Amplify and CWA operated websites for
commercial purposes. See Pl.’s 56.1 Statement ¶¶ 20, 56. At a
minimum, CWA’s temporary use of the “amplifycarwash.com” domain
to redirect traffic to its own website constitutes a use in
commerce. See Soter Tech., 523 F. Supp. 3d at 399.
C.
Because the defendants used the plaintiff’s protected marks
in commerce without the plaintiff’s consent, the Court must
consider whether the defendants’ use of the domain name creates
a likelihood of consumer confusion. Courts in this Circuit apply
a multi-factor test, (the “Polaroid Test”) to evaluate the
likelihood of consumer confusion. See Brennan’s, Inc. v.
Brennan’s Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). The
test requires courts to consider (1) the strength of the
plaintiff’s mark; (2) the degree of similarity between the two
marks; (3) the competitive proximity of the products; (4) the
likelihood that the plaintiff will bridge the gap; (5) actual
confusion; (6) the defendant’s good faith in adopting the mark;
(7) the quality of the defendant’s products; and (8) the
sophistication of the buyers. See Polaroid Corp. v. Polarad
Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); see also Lois

13

Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,
871–72 (2d Cir. 1986).
The first factor—the strength of the mark—does not strongly
support the plaintiff. The plaintiff treats this factor as
identical to the framework for evaluating the distinctiveness of
a mark and concludes that because the two marks are inherently
distinctive, they are strong. However, the Second Circuit Court
of Appeals has “defined the strength of a mark as its tendency
to identify the goods sold under the mark as emanating from a
particular source.” Lois Sportswear, 799 F.2d at 873.
Accordingly, when evaluating the strength of a mark, courts
consider both the degree of distinctiveness of a mark and
whether it has acquired secondary meaning. See id. (concluding
that the Levi Strauss back pocket stitching pattern was a strong
mark because it had “a very strong secondary meaning” and that
“[v]irtually all jeans consumers associate the stitching pattern
with [Levi’s] products”). In this case, the plaintiff has not
demonstrated that the marks have acquired any sort of strong
secondary meaning. Moreover, unlike in Lois Sportswear, the
plaintiff’s marks are suggestive, and suggestive marks “receive
a narrower scope of protection than the protection accorded to
arbitrary or fanciful marks.” RiseandShine, 41 F.4th at 121.
By contrast, the second factor—the degree of similarity
between the two marks—favors the plaintiff. The plaintiff’s
14

mark, “amplify,” is wholly contained in the allegedly infringing
domain name. The mark “amplify car wash advisors” is almost
entirely contained in the domain name. As a result, there is a
high degree of similarity between the marks and the defendant’s
domain name.
The third factor—the proximity of the products—also
favors the plaintiff. The plaintiff and the defendants offer
overlapping services within the same industry. Both parties
offer merger and acquisition advice and financial advice to car
wash businesses. The defendant’s use of the plaintiff’s marks in
one of its domain names therefore makes consumer confusion more
likely. Any possible confusion may have been further exacerbated
during the period when the “amplifycarwash.com” domain
redirected to the defendants’ website.
The fourth factor—bridging the gap—although closely related
to the third factor, is not at issue in this case. “Under this
factor, if the owner of a trademark can show that it intends to
enter the market of the alleged infringer, that showing helps to
establish a future likelihood of confusion as to source.” Lois
Sportswear, 799 F.2d at 874. These parties already operate
within the same market. To the extent the defendants may offer
services that the plaintiff does not, the plaintiff provides no
indication that it intends to begin offering those services.

15

The defendants emphasize the fifth factor—actual confusion—
to contend that the plaintiff has not established trademark
infringement. Indeed, the plaintiff has failed to show any
actual confusion. However, “it is black letter law that actual
confusion need not be shown to prevail under the Lanham Act,
since actual confusion is very difficult to prove and the Act
requires only a likelihood of confusion.” Lois Sportswear, 799
F.2d at 875. Although this factor weighs in favor of the
defendant, it is not dispositive. Brennan’s, 360 F.3d at 130
(“No single factor is dispositive, nor is a court limited to
consideration of only these factors.”).
The sixth Polaroid factor asks whether the defendant acted
in good or bad faith in adopting the mark. “The inquiry into
willfulness or bad faith considers whether the defendant adopted
its mark with the intention of capitalizing on the plaintiff’s
reputation and goodwill and on any confusion between his and the
senior user’s product.” Capri Sun GmbH v. Am. Beverage Corp.,
595 F. Supp. 3d 83, 172 (S.D.N.Y. 2022). In this case, several
factors indicate that the defendants acted in bad faith. Within
twenty-four hours of encountering Amplify at the Car Wash Show,
the defendants had purchased three domains containing Amplify’s
marks. Shortly thereafter, the defendants purchased a domain
containing the mark of Commercial Plus—a closely related
business. Moreover, the defendants apparently had a practice of
16

buying domain names and owned seventy-five such names. And
importantly, at least temporarily, the “amplifycarwash.com”
domain redirected to the defendant’s website. Furthermore,
Caruso testified that he purchased the alleged infringing
domains in large part “to prevent others from having them” and
to benefit his own business. Pl.’s Decl., Ex. F. at 44:2–3. In
sum, Caruso’s conduct suggests that he purchased the allegedly
infringing domains to sell them to the owner of the infringed
mark rather than to use them to identify CWA’s own services.
Factor seven—the respective quality of the parties’
products—neither hurts nor significantly helps the plaintiff’s
case. This factor “is primarily concerned with whether the
inferior quality of a junior user’s [services] could jeopardize
the senior user’s reputation.” Bath & Body Works Brand Mgmt.,
Inc. v. Summit Ent., LLC, 7 F. Supp. 3d 385, 398 (S.D.N.Y.
2014). Although the plaintiff contrasts the Amplify executives’
years of experience with the defendants’ comparatively recent
entry into the car wash industry, there is nothing to show that
CWA’s services are inferior in such a way as to jeopardize
Amplify’s reputation.
Finally, factor eight—the sophistication of the purchasers—
favors the defendants. “This factor usually militates against a
finding of a likelihood of confusion, though it might on
occasion increase the likelihood of confusion, depending upon
17

the circumstances of the market and the products.” Akiro LLC v.
House of Cheatham, Inc., 946 F. Supp. 2d 324, 341 (S.D.N.Y.
2013). “Generally, the more inexpensive the product, the less
careful the retail consumer is presumed to be” because confusion
is “more likely where the goods are cheap and bought casually.”
Capri Sun, 595 F. Supp. 3d at 176 (quoting CJ Prod. LLC v.
Snuggly Plushez LLC, 809 F. Supp. 2d 127, 156 (E.D.N.Y. 2011) &
Louis Vuitton Malletier v. Dooney & Burke, 561 F. Supp. 2d 368,
389 (S.D.N.Y. 2008)) (concluding that buyers of inexpensive
Capri Sun drink pouches were not sophisticated).
In this case, the plaintiff concedes that car wash mergers
and acquisitions are not small transactions. Mem. of Law in
Supp. of Mot. for Summ. J. at 20. However, Amplify contends that
merger and acquisition advisory services are typically one-time
transactions, and that customers do not acquire the repeat
experience necessary to develop sophistication in the industry.
Nevertheless, car wash owners seeking financial advice in
connection with the purchase and sale of companies likely have
greater business acumen and conduct more research than consumers
who casually purchase inexpensive products. Factor eight
therefore weighs in favor of the defendant.
Although the Polaroid factors cut in multiple directions,
on balance, the Court finds that there was a likelihood of
consumer confusion because of the similarity of the marks, the
18

proximity of the markets, and the defendant’s bad faith.
Accordingly, because the plaintiff’s marks are protectable and
because there is a likelihood of confusion, the plaintiff’s
motion for summary judgment on its trademark infringement claim
is granted.
IV.
The plaintiff also moves for summary judgment on its
cybersquatting claim. Congress passed the Anticybersquatting
Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), in part
“to protect consumers and American businesses” from “the badfaith and abusive registration of distinctive marks as Internet
domain names with the intent to profit from the goodwill
associated with such marks—a practice commonly referred to as
‘cybersquatting.’” Sporty’s Farm L.L.C. v. Sportsman’s Market,
Inc., 202 F.3d 489, 495 (2d Cir. 2000). To allege a
cybersquatting claim, a plaintiff must show (1) that the
infringed-on mark is “distinctive or famous”; (2) that the
domain name is “identical or confusingly similar to” the mark;
and (3) that the alleged cybersquatter acted with a “bad faith
intent to profit.” Id. at 497–99.
A.
First, to plead a cybersquatting claim, the plaintiff must
show that the relevant mark is “distinctive or famous.”
Distinctiveness and famousness are separate concepts. Id. at
19

497. “A mark may be distinctive before it has been used—when its
fame is not existent,” whereas “even a famous mark may be so
ordinary, or descriptive as to be notable for its lack of
distinctiveness.” Id. Amplify contends that its mark is
distinctive.
A federally registered mark is presumptively distinctive.
Id. Alternatively, “a plaintiff can establish a mark as
distinctive by showing that the mark is ‘inherently
distinctive,’ i.e., intrinsically capable of identifying its
source, or by demonstrating that the mark has acquired
‘secondary meaning.’” Louis Vuitton Malletier, 454 F.3d at 116.
Pursuant to the secondary meaning doctrine, marks that lack
inherent distinctiveness may nevertheless be protected where
they “ha[ve] become distinctive of the applicant’s goods in
commerce.” Two Pesos, 505 U.S. at 769.
Courts apply the same distinctiveness continuum to
questions of distinctiveness in the cybersquatting context. See,
e.g., McAllister Olivarius v. Mermel, 298 F. Supp. 3d 661, 669
(S.D.N.Y. 2018); Monbo v. Nathan, 623 F. Supp. 3d 56, 125
(E.D.N.Y. 2022). Namely, courts classify marks as “(1) generic,
(2) descriptive, (3) suggestive, [or] (4) arbitrary or
fanciful.” Bristol-Myers Squibb, 973 F.2d at 1039. Only
suggestive and arbitrary or fanciful marks are “inherently

20

distinctive”—other marks must have acquired secondary meaning.
Two Pesos, 505 U.S. at 768.
As previously discussed with reference to the plaintiff’s
trademark infringement claim, the plaintiff’s “amplify” and
“amplify car wash advisors” marks are suggestive, not generic or
descriptive. The marks are therefore inherently distinctive, see
Bristol-Myers Squibb, 973 F.2d at 1039 (“Suggestive, arbitrary
and fanciful marks, because their inherent nature serves to
identify a particular source of a product, are deemed inherently
distinctive . . . .”); see also Two Pesos, 505 U.S. at 768, and
the plaintiff need not demonstrate that the mark acquired
secondary meaning to satisfy the first element of a
cybersquatting claim.
B.
Second, the court must evaluate whether the plaintiff’s
marks—“amplify” and “amplify car wash advisors”—are confusingly
similar to the domain name—www.amplifycarwash.com. 3 To determine
whether a mark and a domain name are confusingly similar, courts
compare the “plaintiff’s marks and defendants’ domain names,

Although the defendants purchased multiple domain names
containing the plaintiff’s marks, in the complaint, the
plaintiff asserted a claim only with regard to
www.amplifycarwash.com. However, the Court may consider the
other domain names when evaluating whether the defendants acted
in bad faith.
3

21

including their intrinsic sound, sight, and meaning, without
reference to goods or services with which the domain name is
associated by the parties’ use.” Omega S.A. v. Omega Eng’g,
Inc., 228 F. Supp. 2d 112, 127 (D. Conn. 2002). In this case,
the plaintiff’s claimed mark, “amplify,” is wholly contained in
the domain along with language identifying the type of business.
The plaintiff’s other mark, “amplify car wash advisors,” has
even greater overlap with the domain name. Therefore, although
not identical, the domain name is clearly confusingly similar to
the mark. The defendants concede as much in their opposition
brief. See Opp. to Mot. for Summ. J. at 10–11, ECF No. 77.
C.
Finally, the court must consider whether Caruso purchased
the infringing domain with a bad faith intent to profit. See
McAllister, 298 F. Supp. 3d at 672. 4 The ACPA contains nine
factors for courts to consider in determining whether a
defendant had a bad-faith intent to profit. Courts may look to:
(I)

the trademark or other intellectual
property rights of the person, if any,
in the domain name;

The Court already determined that the defendants acted in bad
faith in its review of the Polaroid factors. However, bad faith
in the cybersquatting context evaluates whether there was bad
faith intent to profit, whereas bad faith in the likelihood of
confusion context considers whether the defendant operated in
good faith in adopting the mark. Moreover, the ACPA provides
specific factors to assist courts in evaluating bad faith in the
cybersquatting context.
4

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(II)

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;

(III)

the person’s prior use, if any, of the
domain name in connection with the
bona fide offering of any goods or
services;

(IV)

the person’s bona fide noncommercial
or fair use of the mark in a site
accessible under the domain name;

(V)

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;

(VI)

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 the bona fide offering of any
goods or services, or the person’s
prior conduct indicating a pattern of
such conduct;

(VII)

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;

(VIII) the
person’s
registration
or
acquisition of multiple domain names
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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; and
(IX)

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).

15 U.S.C. § 1125(d)(1)(B)(i).
However, as the defendants note, the ACPA “expressly allows
consideration of factors beyond the nine enumerated indicia” and
“a number of courts—including the Second Circuit—have departed
from strict adherence to the statutory indicia and relied
expressly on a more case-specific approach to bad faith.”
Gioconda Law Grp. PLLC v. Kenzie, 941 F. Supp. 2d 424, 432-33
(S.D.N.Y. 2013); see also McAllister, 298 F. Supp. 3d at 673
(“Any unique circumstances, which do not fit neatly into the
specific factors enumerated may also be considered and may be
the most important grounds showing bad faith intent.”)
Certain activities fall closest to the ACPA’s heartland.
See Gioconda, 941 F. Supp. 2d at 433. Two of these
“quintessential examples” of bad faith include: (1) where a
defendant purchases a domain name very similar to the trademark
and then offers to sell the domain to the trademark owner at an
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exorbitant price and, (2) where a defendant “intends to profit
by diverting customers from the website of the trademark owner
to the defendant’s own website, where those consumers would
purchase the defendant’s products or services instead of the
trademark owner’s.” Id. (quoting Utah Lighthouse Ministry v.
Found. for Apologetic Info. & Rsch., 527 F.3d 1045, 1058 (10th
Cir. 2008)).
In this case, several statutory factors indicate that the
defendants acted in bad faith. CWA has no intellectual property
rights in “amplify” or “amplify car wash advisors,” see
§ 1125(d)(1)(B)(i)(I), and the domain name does not consist of a
name commonly used to identify CWA, see § 1125(d)(1)(B)(i)(II).
CWA also has never used the domain name in connection with the
bona fide offering of any goods or services, see
§ 1125(d)(1)(B)(i)(III), and has not used the marks in
connection with a bona fide noncommercial or fair use, see
§ 1125(d)(1)(B)(i)(IV). Additionally, the defendants registered
“multiple domain names” that Caruso seemingly knew were
“identical or confusingly similar to marks of [the plaintiff]
that [were] distinctive at the time of registration of such
domain names.” See § 1125(d)(1)(B)(i)(VIII). In addition to the
three “amplify”-related domain names that the defendants
registered, the defendants purchased “commercialpluscarwash.com”

25

and apparently had a practice of buying domain names and owned
seventy-five such names. 5
Moreover, for a time, the “amplifycarwash.com” domain
redirected to the defendant’s own site. Although the plaintiff
does not allege that this redirect was an attempt to “harm the
goodwill represented by the mark,” see § 1125(d)(1)(B)(i)(V),
courts may look beyond the factors identified in ACPA and where
a defendant intends to profit by diverting customers from the
trademark owner’s site to the defendant’s site, “the case for
bad faith is at its peak.” See Gioconda, 941 F. Supp. 2d at 434.
Finally, the parties dispute whether the defendants
“offer[ed] to transfer, sell, or otherwise assign the domain
name to the mark owner . . . for financial gain without having
used, or having an intent to use, the domain name in the bona
fide offering of goods or services.” See § 1125(d)(1)(B)(i)(VI).
Caruso asserts that he has “repeatedly offered to surrender the
domains,” Opp. to Mot. for Summ. J. at 14, and testified that he
“offered to give [the domain] back to them, just to be clear,”
De Preter Decl., Ex. F at 83:2–3. Caruso appears to refer to
CWA’s response to Amplify’s cease and desist letter. See id.,
Ex. P. In that letter the defendants offered to surrender the

Although the complaint only raises a claim regarding one of the
three domain names, all can be considered for the purpose of
establishing bad faith.
5

26

domains in exchange for Amplify ceasing to use the phrase “car
wash advisors” on its site. The defendants contend that this was
merely an offer of “mutual exchange,” and not indicative of an
intent to profit. Opp to Mot. for Summ. J. at 14. However, the
fact that the “offer to settle was noncommercial makes no
difference since the ACPA does not require commercial activity
or gain as an element of liability.” McAllister, 298 F. Supp. 3d
at 675.
When considered in their totality, the uncontested facts
underlying this case give rise to an inference that the
defendants acted in bad faith as a matter of law. Within twentyfour hours of encountering Amplify, the defendants purchased
three domains containing Amplify’s marks. Shortly after, the
defendants purchased a domain containing the mark of Commercial
Plus—a business closely related to the plaintiff. At least
temporarily, the “amplifycarwash.com” domain redirected to the
defendant’s own website. Caruso testified that he purchased the
infringing domains in large part “to prevent others from having
them” and to benefit his own business. Accordingly, the
plaintiff’s motion for summary judgment on the cybersquatting
claim is granted.

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V.
Finally, the plaintiff moves for summary judgment on its
claim that Caruso should be held personally liable for
cybersquatting and trademark infringement. “It is wellestablished in the Second Circuit that under the Lanham Act, a
corporate officer may be held personally liable for trademark
infringement and unfair competition if the officer is a moving,
active, conscious force behind the defendant corporation’s
infringement.” KatiRoll Co., Inc. v. Kati Junction, Inc., 33 F.
Supp. 3d 359, 367 (S.D.N.Y. 2014). “A showing that the officer
authorized and approved the acts of unfair competition which are
the basis of the corporation’s liability is sufficient to
subject the officer to personal liability.” Cartier v. Aaron
Faber, Inc., 512 F. Supp. 2d 165, 170 (S.D.N.Y. 2007).
Caruso is CWA’s sole founder, equity owner, and manager.
Pl.’s 56.1 Statement ¶¶ 13–14. He has sole authority to make
binding decisions on behalf of CWA. Id. ¶ 16. Caruso used his
personal PayPal account to purchase the amplify domain names
after attending the car wash industry convention. Id. ¶¶ 49, 52,
54. Caruso also testified extensively to his rationale for
buying domain names, lending credence to the conclusion that he
carried out, “authorized and approved the acts” that form the
basis of the complaint in this case. Accordingly, Caruso should

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