HealthNow New York Inc. v. Romano et al
Filing
17
ORDER granting 16 Motion for Default Judgment and referring the case to Magistrate Judge Hugh B. Scott to issue a Report and Recommendation on damages, lost profits, attorney's fees, and costs. Defendants must file with Judge Scott and serve upon the plaintiff a report setting forth the manner of their compliance with this order. SO ORDERED. (AMD). Signed by Hon. Lawrence J. Vilardo on 10/10/2018. -CLERK TO FOLLOW UP-
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
HEALTHNOW NEW YORK INC.,
Plaintiff,
v.
17-cv-310
DECISION AND ORDER
DINO ROMANO, individually and doing
business as HEALTH NOW NETWORKS,
LLC and HEALTH NOW WELLNESS
MANAGEMENT, INC.,
Defendants.
On April 10, 2017, the plaintiff, Health Now New York Inc. (“HealthNow”), filed a
complaint alleging trademark infringement under § 32 of the Lanham Act, 15 U.S.C.
§ 1114; unfair competition under § 43 of the Lanham Act, 15 U.S.C. § 1125; trademark
infringement under New York common law; unfair competition under New York common
law; and trademark dilution under New York General Business Law § 360-l. Docket
Item 1. The defendants failed to appear and defend this action, and the time to do so
expired. As a result, the plaintiff asked the Clerk of Court to enter a default, Docket Item
13, which the Clerk entered accordingly on July 20, 2017, Docket Item 14. Now before
this Court is the plaintiff’s motion for default judgment pursuant to Rule 55(b)(2) of the
Federal Rules of Civil Procedure. After reviewing the plaintiff’s supporting papers and
the applicable law, this Court GRANTS the plaintiff’s motion.
BACKGROUND
The complaint tells the following story.1 HealthNow is a New York not-for-profit
corporation that provides health insurance benefits and related services in Buffalo, New
York. Docket Item 1 at 3. HealthNow changed its name from New York Care Plus
Insurance Co., Inc., to HealthNow, and launched the HEALTHNOW mark, in about
1999. Id. In 2001, HealthNow registered U.S. Trademark Registration No. 2,457,947
for HEALTH NOW in International Classes 36 and 42 (the “’947 Registration”), and it
remains the owner of the ‘947 Registration.2 Id. at 4. HealthNow also owns two other
relevant marks—U.S. Trademark Registration No. 4,531,758 for “HEALTHNOW &
design in International Classes 35, 36, and 42” (the “’758 Registration”) and U.S.
Trademark Registration No. 4,531,759 for “HEALTHNOW & design in International
Classes 35, 36, and 42” (the “’759 Registration”)—both registered on May 20, 2014. Id.
And HealthNow owns and operates a website under the domain name
https://www.healthnowny.com. Id. at 5. It displays the ‘947 Registration, the ‘758
Registration, and the “759 Registration (collectively, the “HealthNow Marks”) at
locations, in pamphlets, on its website, and in other advertising promoting its services,
and the HealthNow Marks have become widely known as identifying HealthNow’s
services. Id.
1
On a motion for default judgment, the factual allegations in the complaint are accepted
as true. See Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61, 65 (2d Cir. 1981).
2
On June 16, 2007, the Patent and Trademark office accepted the incontestability of the
validity of the mark under 15 U.S.C. §§ 1058, 1065. Id. Thus the ’947 Registration is
conclusive evidence of HealthNow’s ownership of the mark under 15 U.S.C. § 1115(b).
2
The defendants also provide health care goods and services to consumers,
including within New York State. Id. at 6. Beginning sometime after HealthNow
acquired protectable exclusive rights in the HealthNow Marks, the defendants began
using a mark that is virtually identical to the HealthNow Marks without HealthNow’s
authorization. Id. The HealthNow Marks and the infringing mark include the identical
phrase “HEALTHNOW.” Id. The defendants also operate a website under the domain
name http://healthnow.co, which uses the same two words in the same order and
combination as HealthNow’s website. Id. In fact, only three letters separate the two
internet addresses.
The defendants’ services are closely related to those offered by HealthNow, and
the infringing mark is likely to cause confusion between the services offered by the
defendants and those offered by HealthNow. Id. at 7. In fact, this confusion may
already have occurred. When the defendants caused a data breach—resulting in the
records of nearly one million patients being publicly exposed—many news outlets
reported the incident without drawing any distinction between HealthNow and the
defendants. Id. at 7-8. For that reason and others, the defendants’ infringing marks
and acts already have caused and are likely to cause damage to HealthNow and its
reputation. Id. at 7. Indeed, an article discussing the defendants’ breach in
databreaches.net noted that “it wouldn’t be surprising if some patients hearing the name
‘HealthNow’ may have erroneously assumed some connection to the respected health
insurance plan” HealthNow. Docket Item 1-1 at 14.
3
HealthNow therefore brought this suit seeking declaratory relief that the
defendants are illegally infringing its trademark, injunctions preventing further
infringement, treble damages, attorney’s fees, and costs.
DISCUSSION
I.
DEFAULT JUDGMENT
To obtain default judgment, a party must secure a clerk’s entry of default by
demonstrating, “by affidavit or otherwise,” that the opposing party “has failed to plead or
otherwise defend” the case. Fed. R. Civ. P. 55(a). The clerk’s entry of default does not
mean that a default judgment is warranted automatically. See Bricklayers & Allied
Craftworkers Local 2, Albany, N.Y. Pension Fund v. Moulton Masonry & Const., LLC,
779 F.3d 182, 187 (2d Cir. 2015). But it does mean that the court accepts as true the
complaint’s factual allegations, except those relating to damages, and draws all
reasonable inferences in the moving party’s favor. See Finkel v. Romanowicz, 577 F.3d
79, 84 (2d Cir. 2009).
“[T]he court may, on [the] plaintiff[’s] motion, enter a default judgment if liability is
established as a matter of law when the factual allegations of the complaint are taken as
true.” Bricklayers & Allied Craftworkers, 779 F.3d at 187. As to injunctive relief, “[a]
court may issue an injunction on a motion for default judgment provided that the moving
party shows that (1) it is entitled to injunctive relief under the applicable statute, and (2)
it meets the prerequisites for the issuance of an injunction.” Commscope, Inc. of North
Carolina v. Commscope (U.S.A.) Intern. Group Co., Ltd., 809 F. Supp. 2d 33 (N.D.N.Y.
2011) (quoting Pitbull Prods., Inc. v. Univ. Netmedia, Inc., 2007 WL 3287368, at *5
(S.D.N.Y. Nov 7, 2007). To satisfy the second condition, a party seeking an injunction
4
must demonstrate “irreparable harm and the absence of an adequate remedy at law.”
Id. (quoting Kingvision Pay-Per-View Ltd. v. Laleo, 429 F. Supp. 2d 506, 516 (E.D.N.Y.
2006). As to damages, the court should take steps, including by hearing or referral
when necessary, to establish their proper amount with reasonable certainty.
Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105, 111 (2d
Cir. 1997).
II.
LIABILITY
A.
Federal Trademark Infringement and Unfair Competition Claims
HealthNow asserts that the defendants’ use of an infringing mark constitutes
trademark infringement under 15 U.S.C. § 1114 and is likely to cause consumer
confusion, mistake, or deception. Docket Item 1 at 9. HealthNow further alleges that
the defendants have engaged in unfair competition under 15 U.S.C. § 1125(a). Id. at 9.
To succeed on these claims, the plaintiff “must show that it has a valid mark that is
entitled to protection under the Lanham Act and that [the defendants’] actions are likely
to cause confusion with [the plaintiff’s] mark.” The Sports Auth., Inc. v. Prime Hospitality
Corp., 89 F.3d 955, 960 (2d Cir. 1996); see also Brennan’s, Inc. v. Brennan’s Rest.,
L.L.C., 360 F.3d 125, 129 (2d Cir. 2004) (analyzing plaintiff’s claims of imitation of
registered mark, 15 U.S.C. § 1114, and false designation of origin, id. § 1125(a), under
the same legal standard).
HealthNow has alleged facts that satisfy both prongs under the Lanham Act.
First, HealthNow has shown that the HealthNow Marks are “protectable trademark[s],”
that it has used and registered them, and that it has developed substantial goodwill
around them. Docket Item 1 at 6. HealthNow registered and owns the HealthNow
5
Marks. It has invested “considerable time, money, and resources” marketing services
under the marks. Id. And the marks are “widely known as identifying HealthNow.” Id.
All these facts establish that the marks are valid and entitled to protection. See The
Sports Authority, Inc., 89 F.3d at 960.
HealthNow also has shown the likelihood of confusion.3 The defendants are
“using the Infringing Mark in connection with the sale, offering for sale, distribution,
and/or advertising of their goods and services,” which is “likely to cause consumer
confusion.” Docket Item 1 at 8-9. That confusion is especially likely because the
defendants are “providing health care goods and services” in competitive proximity to
the services offered by HealthNow. Id. at 6. The defendants use a mark that displays
the same phrase in capital letters, and the domain name for the defendants’ website
“contains the same two words in the same order and combination” as the HealthNow
website. Id. HealthNow alleges that the defendants adopted their mark with actual
knowledge of the HealthNow Marks. Id. at 8. The defendants’ brand may also be
inferior after the data breach, and the confusion will inure to the plaintiff’s detriment. For
all these reasons, the plaintiff has plausibly suggested a likelihood of confusion between
the parties’ business names, domain names, and marks. See Polaroid Corp., 287 F.2d
3
To determine whether a mark is likely to cause confusion among consumers,
courts generally rely upon the eight-factor balancing test enumerated in Polaroid Corp.
v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). These factors include (1) the
strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3)
the competitive proximity of the products or services; (4) the existence of actual
confusion; (5) the likelihood that the plaintiff will ‘bridge the gap’ between the two
markets; (6) the defendant’s good faith in adopting its mark; (7) the quality of the
defendant’s product; and (8) the sophistication of the purchasers. Id. The first four
factors clearly weigh in favor of the plaintiff’s claim here, and the others may well do so,
too.
6
at 495. Taking the undisputed facts in the plaintiff’s complaint as true suffices to
establish the defendants’ liability under the Lanham Act.
B.
Common Law Trademark Infringement and Unfair Competition
HealthNow also claims that the defendants have violated the New York common
law on trademark infringement and unfair competition. Id. at 10-11. There is little
difference between these claims and those brought under the Lanham Act. “Courts
employ substantially similar standards when analyzing claims for trademark
infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1114(1)(a);
false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a); trademark
infringement under New York common law; and unfair competition under New York
common law.” Mitsubishi Motors North America Inc. v. Grand Automotive, Inc., 2018
WL 2012875, at *9 n.9 (E.D.N.Y. April 30, 2018); see also Lorillard Tobacco Co. v.
Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005) (“It is well-established
that the elements necessary to prevail on causes of action for trademark infringement
and unfair competition under New York common law mirror the Lanham Act claims.”).
Because HealthNow has alleged facts sufficient to establish the defendants’ liability
under the Lanham Act, and because the standards under New York common law mirror
those under the Lanham Act, the plaintiff has sufficiently alleged facts to establish the
defendants’ liability under New York common law for trademark infringement and unfair
competition.
C.
Trademark Dilution under NY General Business Law § 360-l
HealthNow also asserts a claim under Section 360-l of New York’s General
Business Law, which entitles a plaintiff to injunctive relief when there is a “[l]ikelihood
7
. . . of dilution of the distinctive quality of a mark or trade name . . . notwithstanding the
absence of competition between the parties or the absence of confusion as to the
source of goods or services.” N.Y. Gen. Bus. Law § 360-l. To prevail on a claim under
that section, “a plaintiff must prove that (1) its mark possesses a distinctive quality
capable of dilution, and (2) there is a likelihood of such dilution.” CommScope, Inc., 809
F. Supp. 2d 33 at 39 (quotations omitted). “Distinctiveness, in this context, is measured
by the ‘strength of a mark for infringement purposes.’” Lyons P’Ship, L.P. v. D& L
Amusement & Entm’t, Inc., 702 F. Supp. 2d 104, 116 (E.D.N.Y. 2010) (quoting Johnson
& Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374, 394 (E.D.N.Y. 2008). And
dilution is “either the blurring of a mark’s product identification or the tarnishment of the
affirmative associations a mark has come to convey.” Deere & Co. v. MTD Prods., Inc.,
41 F.3d 39, 42-43 (2d Cir. 1994).
The plaintiff has alleged ownership of the HealthNow Marks for the trademark
“HEALTHNOW” in international classes 36 and 42.4 Docket Item 1 at 4. The plaintiff
further alleges that the defendants use the identical phrase “HEALTHNOW” in
connection with goods and services, that they operate a website with a domain name
that uses those same words, and that their data breach may have been erroneously
attributed to HealthNow. Docket Item 1 at 6-7.
These allegations plausibly suggest that the defendants’ website and use of the
infringing mark to market its services has diluted the plaintiff’s business name and
reputation. See CommScope, Inc., 809 F. Supp. 2d at 39 (finding that plaintiffs
established liability in motion for default judgment when defendants used the word
4
The ’758 Registration and ’759 Registration also includes international class 35.
8
“Commscope” in its corporate name and licensed it to third parties, which was likely to
injure the business name and reputation of plaintiff’s mark, “CommScope.”). The
plaintiff has shown dilution for the same reasons noted above: the defendants’ mark
uses the same two words as the plaintiff’s; the parties’ websites differ by only three
letters; and the parties engage in the same type of business. Accordingly, the
defendants are liable for injury to business reputation and dilution under § 360-l of New
York General Business Law.
For all those reasons, pursuant to Fed. R. Civ. P. 55(b), the Court GRANTS the
plaintiff’s motion for the issuance of a default judgment on the issue of liability with
regard to all five above-referenced claims.
III.
REQUESTED RELIEF
The plaintiff seeks legal and equitable relief. HealthNow asks that the
defendants be permanently enjoined from any further acts of trademark infringement.
Docket Item 1 at 14. It asks that the defendants be required to file a report detailing the
manner in which they have complied with the Court’s injunction; to destroy all infringing
materials; and to transfer the http://healthnow.co domain name to HealthNow. Id.
Finally, it seeks an award of damages sustained as a result of defendants’ infringement;
trebled damages with prejudgment interest; disgorgement of all profits received by the
defendants from sales and revenues of any kind made as a result of their infringing
actions, again trebled; and its attorneys’ fees and costs. Id.
1.
Injunctive Relief
“A Court may issue an injunction on a motion for default judgment provided that
the moving party shows that (1) it is entitled to injunctive relief under the applicable
9
statute, and (2) it meets the prerequisites for the issuance of an injunction.”
CommScope, Inc., 809 F. Supp. 2d at 41 (quoting Pitbull Prods., Inc. v. Univ. Netmedia,
Inc., 2007 WL 3287368, at *5 (S.D.N.Y. Nov. 7, 2007)).
The Lanham Act entitles HealthNow to each form of injunctive relief that it
requests. The act vests courts with the “power to grant injunctions, according to the
principles of equity and upon such terms as the court may deem reasonable, to prevent
the violation of any right of the registrant of a mark.” 15 U.S. C. § 1116(a). A court
therefore has the power to enjoin defendants from engaging in further acts of trademark
infringement and unfair competition and to direct the destruction of all infringing
materials. See, e.g., Rolls-Royce PLC v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150,
151 (E.D.N.Y. 2010) (directing the defendants to “destroy or to surrender to Plaintiff any
and all materials . . . wherein . . . Rolls-Royce Marks may appear.”). Moreover, the act
explicitly provides that “[a]ny such injunction may include a provision directing the
defendant to file . . . a report in writing under oath setting forth in detail the manner and
form in which the defendant has complied with the injunction.” Id. Finally, while
“[d]istrict courts are expressly authorized [by 15 U.S.C. § 11259d)(1)(C)] to order the
transfer or surrender of domain names in an in rem action against a domain name . . .
courts have not limited the remedy to that context.” Chanel, Inc. v. besumart.com, 240
F. Supp. 3d 1283, 1291 (S.D. Fl. 2016). So the statute also entitles HealthNow to
transfer of the domain name www.healthnow.co. See Ford Motor Co. v. Cross, 441 F.
Supp. 2d 837, 853 (E.D. Mich. 2006) (ordering defendants to transfer registration of a
particular domain under authority of 15 U.S.C. § 1116(a)); Phillip Morris USA, Inc. v.
Otamedia Ltd., 331 F. Supp. 2d 228, 230 n.2 (S.D.N.Y. 2004) (“15 U.S.C. § 1125
10
neither states nor implies that an in rem action against the domain name constitutes the
exclusive remedy for a plaintiff aggrieved by trademark violations in cyberspace.”).
But before HealthNow can actually obtain such relief, it must meet the
prerequisites for an injunction: irreparable harm and the absence of an adequate
remedy at law. See Kingvision Pay-Per-View Ltd., 429 F. Supp. 2d at 516. “In
trademark disputes, a showing of likelihood of confusion establishes . . . irreparable
harm.” Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 537 (2d
Cir. 2005) (internal quotation marks omitted). Accepting HealthNow’s allegations as
true—particularly as they relate to the likelihood of confusion and that consumers will
misattribute fault for the defendants’ data breach to HealthNow—the Court finds that the
plaintiff “has alleged likelihood of confusion and thus also established irreparable injury.”
Commscope, Inc., 809 F. Supp. 2d at 41 (citing Pitbull Prods., Inc., 2007 WL 3287368,
at *6).
The final inquiry is whether HealthNow has an adequate remedy at law. “[I]n
cases where confusion about the origin of goods or services leads to damage to
reputation or loss of a potential relationship with a client that ‘would produce an
indeterminate amount of business in years to come[,]’ monetary damages are difficult to
establish and are unlikely to present an adequate remedy at law.” Century 21 Real
Estate LLC v. Bercosa Corp., 666 F. Supp. 2d 274, 296 (E.D.N.Y. 2009) (quoting
Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 404 (2d Cir. 2004). Furthermore, there
is no adequate remedy at law when the defendants’ infringing conduct is likely to
continue without an injunction. See Chanel, Inc. v. Sea Hero, 234 F. Supp. 3d 1255,
1262 (S.D. Fla. 2016) (“Plaintiff has no adequate remedy at law so long as Defendants
11
continue to operate the Seller IDs because Plaintiff cannot control the quality of what
appears to be its products in the marketplace.”); Commscope, Inc., 809 F. Supp. 2d at
41-42 (finding no adequate remedy at law where the defendant would continue to use a
name that was confusingly similar to a protected trademark absent an injunction). And
that may be especially so when the internet is involved: the “[p]laintiff has no adequate
remedy at law so long as Defendants continue to operate the Subject Domain Names.”
Chanel, Inc. v. besumart.com, 240 F. Supp. 3d 1283, 1290 (S.D. Fla. 2016).
HealthNow has alleged that the defendants’ acts “are causing and will continue
to cause damage to plaintiff HealthNow and to its valuable reputation and goodwill with
the consuming public for which plaintiff HealthNow has no adequate remedy at law.”
Docket Item 16-2 at 3. The defendants have not appeared, nor have they indicated any
intent to cease using the infringing marks or names.
Accepting the complaint’s
allegations as true, this Court finds that HealthNow has no adequate remedy at law.
Because HealthNow has shown irreparable harm and the absence of any
adequate remedy at law, it meets the prerequisites for a permanent injunction.
2.
Damages
HealthNow also seeks a monetary award for “damages it sustained as a result of
Defendants’ acts of infringement and unfair competition,”—trebled—along with
prejudgment interest pursuant to 15 U.S.C. § 1117.5 Docket Item 1 at 14. In addition,
5
The plaintiff requests lost profits in the complaint, but in its proposed order filed
with its motion for a default judgment, it asks the Court only to order the defendants to
account for their profits. The Court therefore grants that requested relief as part of its
referral to the magistrate judge and will revisit the request for trebled lost profits at the
appropriate time.
12
HealthNow asks for disgorgement of “all profits received by Defendants . . . as a result
of their infringing actions,” also trebled. Docket Item 1 at 15.
15 U.S.C. § 1117 entitles a plaintiff who has established “a violation of any right
of the registrant of a mark . . . to recover (1) defendant’s profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action.” In the Second Circuit, “a
finding of defendant’s willful deceptiveness is a prerequisite for awarding profits” under
the Lanham Act. George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d Cir.
1992); see also Pedinol Pharmacal, Inc. v. Rising Pharm., Inc., 570 F. Supp. 2d 498,
502 (E.D.N.Y. 2008) (discussing “[t]he continuing viability of the wilfulness requirement
set forth in Basch”). But “many courts in [the Second Circuit] treat a default as evidence
of willfulness.” Sream, Inc. v. Khan Gift Shop, Inc., 2016 WL 1130610, at *5 (S.D.N.Y.
Feb. 23, 2016) (quoting Rolls-Royce PLC, 688 F. Supp. 2d at 157. This Court does that
here.6
6
Courts finding that default establishes willfulness have done so when the
complaint alleges the defendants’ willfulness with more clarity than the complaint does
here. See, e.g., Complaint at 6, Rolls-Royce PLC v. Rolls-Royce USA, Inc., 688 F.
Supp. 2d 150, 157 (E.D.N.Y. 2010) (No. 09-1381) (“Defendant adopted Plaintiffs’ RollsRoyce Marks in its corporate and business title and trade marks for the purpose of
deceiving, misleading and confusing the public . . . .”) (emphasis added). HealthNow
does not mention willfulness in the complaint and does not explicitly allege that the
defendants acted with bad faith, intent, or misconduct. Docket Item 1 at 12.
Nonetheless, HealthNow alleges the defendants acted with knowledge when
infringing the plaintiff’s marks, and that, together with the defendants’ default, satisfies
this Court that HealthNow has sufficiently alleged willfulness. More specifically, the
complaint alleges that the defendants “engaged in infringing activity despite having
constructive notice of HealthNow’s federal registrations [and] despite having actual
knowledge of [the HealthNow Marks],” Docket Item 1 at 8, and the Court accepts those
allegations as true in light of the defendants’ default; see Finkel, 577 F.3d at 84. Actual
knowledge of infringement may suffice to show willfulness. See Kepner-Tregoe, Inc. v.
Vroom, 186 F.3d 283, 288 (2d Cir. 1999) (“The standard for willfulness is ‘whether the
defendant had knowledge that [his] conduct represented infringement or perhaps
recklessly disregarded the possibility.’”) (quoting Twin Peaks Prods., Inc. v. Publ’ns Int’l
13
Before granting a default judgment for a specific amount of damages, the court
should take steps, including by hearing or referral if necessary, to find the appropriate
amount to award with reasonable certainty. In fact, 15 U.S.C. § 1117 provides that
“[t]he court shall assess such profits and damages or cause the same to be assessed
under its direction.” See Transatlantic Marine Claims Agency, Inc., 109 F.3d at 111.
“Although the default establishes a defendant’s liability, unless the amount of damages
is certain, the court is required to make an independent determination of the sum to be
awarded.” Griffiths v. Francillon, 2012 WL 1341077, at *1 (E.D.N.Y. Jan. 30, 2012).
This Court has no information upon which to base an award of damages and
therefore cannot determine the damage award to include in a judgment. The Court
therefore refers the case to United States Magistrate Judge Hugh B. Scott to issue a
report and recommendation to this Court on the amount of damages, and HealthNow is
invited to present proof to Judge Scott on the damage that it has suffered. In that
regard, the defendants are ordered to account for all profits derived from actions
infringing the HealthNow Marks and to render an accounting before Judge Scott.
3.
Attorney’s Fees and Costs
HealthNow also seeks an award of attorney’s fees and costs. Docket Item 1 at
15. 15 U.S.C. § 1117 provides that “[t]he court in exceptional cases may award
reasonable attorney fees to the prevailing party.” These exceptional cases exist only
when there is “evidence of fraud or bad faith.” Gordon & Breach Sci. Publishers S.A. v.
Ltd., 996 F.2d 1366, 1382 (2d Cir. 1993)); see also Fitzgerald Pub. Co., Inc. v. Baylor
Pub. Co., Inc., 807 F.2d 1110, 1115 (2d Cir. 1986) (“willfully means with knowledge”)
(quotations omitted). Therefore, HealthNow has alleged enough to meet the willfulness
standard and seek damages.
14
Am. Inst. of Physics, 166 F.3d 438, 439 (2d Cir. 1999) (quoting Twin Peaks Prods., Inc.,
996 F.2d at 1383. When the plaintiff pleads the necessary facts for willful infringement
and the defendants default, the “defendant’s violations are deemed willful and thus
constitute exceptional circumstances.” Prot. One Alarm Monitoring, Inc. v. Exec. Prot.
One Sec. Serv., LLC., 553 F. Supp. 2d 201, 208 (E.D.N.Y. 2008) (awarding attorney’s
fees to trademark plaintiff). Therefore, HealthNow has shown that it may well be
entitled to an award of attorney’s fees and costs.
“In the Second Circuit, applications for attorney's fees must be supported by
contemporaneous time records specifying relevant dates, time spent, and work done.”
Prot. One Alarm Monitoring, Inc, 553 F. Supp. 2d at 208 n.1 (citing New York State
Ass'n for Retarded Children, Inc. v. Carey, 711 F.2d 1136, 1147–48 (2d Cir.1983)). But
here HealthNow has submitted no such records to support an award of attorney’s fees.
So the Court invites plaintiff’s counsel to submit an application for costs and attorney’s
fees to Judge Scott for inclusion in his report and recommendation, explaining why this
case is exceptional and including records supporting its application.
CONCLUSION
In light of the above, it is hereby
ORDERED that that the defendants, Dino Romano, individually and doing
business as HealthNow Network and Health Now Wellness Management, and their
officers, agents, servants, employees, attorneys, parents, successors, assigns,
affiliates, and all others acting in concert or participating with them be and hereby are
permanently enjoined and restrained from further acts infringing upon plaintiff
HealthNow’s United States Trademark Registrations Nos. 2,457,947; 4,531,758; and
15
4,531,759 by using names or marks confusingly similar thereto or otherwise infringing
upon the HealthNow Marks; and it is further
ORDERED that the defendants must file with Judge Scott and serve upon
HealthNow, within thirty (30) days after the entry of this injunction, a report, in writing
and under oath, setting forth in detail the manner and form in which they have complied
with the terms of the Court’s injunction; and it is further
ORDERED that the defendants shall deliver for destruction all products, and all
promotional and/or advertising materials of any kind, bearing the infringing marks and
any other marks that are confusingly similar to or otherwise violate the HealthNow
Marks; and it is further
ORDERED that the defendants shall transfer the www.healthnow.co domain
name, and any other confusingly similar domain names, to plaintiff HealthNow; and it is
further
ORDERED that the defendants shall render an accounting, pursuant to 15
U.S.C. § 1117, of all profits derived from sales of any kind made as a result of their
infringing actions; and it is further
ORDERED that HealthNow shall prove any damages, attorney’s fees, and costs
claimed in connection with this matter before Judge Scott.
SO ORDERED.
Dated:
October 10, 2018
Buffalo, New York
s/ Lawrence J. Vilardo
LAWRENCE J. VILARDO
UNITED STATES DISTRICT JUDGE
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