Vivint v. Christensen
Filing
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MEMORANDUM DECISION AND ORDER granting in part and denying in part 15 Motion for Entry of Default. The court grants Vivints requests for an order directing Christensen to transfer the www.vivint.io domain name to Vivint and for a permanent injunction against Christensen. The court denies Vivints requests for statutory damages and attorney fees. Signed by Judge Jill N. Parrish on 1/25/2019. (jds)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
VIVINT, INC.,
Plaintiff,
v.
MEMORANDUM DECISION AND ORDER
GRANTING IN PART AND DENYING IN
PART MOTION FOR DEFAULT
JUDGMENT
BRIAN CHRISTENSEN,
Case No. 2:18-cv-00313-JNP-PMW
Defendant.
District Judge Jill N. Parrish
Before the court is a motion for default judgment filed by Vivint, Inc. [Docket 15.] Vivint
initially requested four items of relief: (1) an order for Brian Christensen to transfer the
www.vivint.io domain name to Vivint, (2) a permanent injunction against Christensen, (3) statutory
damages in the amount of $5,000, and (4) an award of attorney fees and costs in the amount of
$17,582.99. The court ordered Vivint to provide additional evidence and argument to support its
claim for statutory damages and attorney fees. In Vivint’s response, it elected not to submit
additional argument in support of its claim for statutory damages. But Vivint provided a declaration
and a brief in support of its claim for attorney fees. Upon consideration of the evidence and
argument provided by Vivint, the court determines that it is not entitled to an award of statutory
damages or attorney fees.
Vivint originally sought an award of statutory damages under a statute that permitted such
an award in cases involving counterfeiting. See 15 U.S.C. § 1117(c). In its prior order, the court
noted that the allegations of the complaint do not show that Christensen had engaged in
counterfeiting. By explicitly declining to provide additional evidence, Vivint effectively concedes
this point. The court denies Vivint’s request for statutory damages under 15 U.S.C. § 1117(c).
Vivint also seeks attorney fees pursuant to 15 U.S.C. § 1117(a), which provides that the
“court in exceptional cases may award reasonable attorney fees to the prevailing party.” Recently,
the Supreme Court has interpreted an identical “exceptional case” provision found in the Patent
Act. The Court construed “exceptional” according to its ordinary usage to mean “‘uncommon,’
‘rare,’ or ‘not ordinary.’” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554
(2014) (citation omitted). The Court, therefore, held that
an “exceptional” case is simply one that stands out from others with
respect to the substantive strength of a party’s litigating position
(considering both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated. District courts
may determine whether a case is “exceptional” in the case-by-case
exercise of their discretion, considering the totality of the
circumstances.
Id.
In support of its claim for attorney fees, Vivint has provided additional evidence regarding
the substance of its claims against Christensen. One of Vivint’s attorneys declared that Christensen
had created a website associated with the domain name www.vivint.io. The website purported to
gather information from potential customers interested in installing solar energy panels, a service
provided by Vivint licensees. Vivint does not know if the website generated any sales leads or
whether any leads were delivered to Vivint licensees or to a competing provider. Vivint’s attorney
sent a letter to Christensen demanding that he transfer the www.vivint.io domain name to Vivint.
After receiving the letter, Christensen redirected people who visited www.vivint.io to the official
website of a Vivint licensee that installed solar panels. Christensen retained an attorney who
contacted Vivint’s attorney. Christensen’s attorney represented that he wanted to enter into a
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business relationship with Vivint whereby Christensen received commissions for sales leads before
he transferred the web domain name to Vivint. Vivint declined this offer or to even meet with
Christensen to discuss a settlement until after he transferred the domain name.
Vivint subsequently sued Christensen. It asserted a number of claims, including trademark
infringement, unfair competition, and the violation of federal and state anticybersquatting statues.
Christensen did not answer the complaint.
The court determines that this is not an exceptional case meriting an award of fees under
15 U.S.C. § 1117(a). Vivint has produced additional evidence that Christensen used the
www.vivint.io domain name for a period of time to collect sales leads. But while the use of Vivint’s
trademark in the domain name of an active website could conceivably lead to customer confusion,
Vivint has not produced evidence that it was actually harmed by the website. It has not alleged or
shown that it lost sales or that Christensen was unjustly enriched because of customer confusion
caused by the domain name. The court, therefore, finds that this is not one of the rare cases where
the plaintiff has made an exceptionally strong showing of trademark infringement.
As the court noted in its prior order, Vivint’s complaint alleges facts to support its state and
federal cybersquatting claims. But merely establishing the existence of meritorious causes of
action is not enough to show that the claims are exceptionally strong. Otherwise, the exceptional
case clause would be converted into a prevailing party clause. Vivint has produced evidence that
Christensen attempted to extract a commissions arrangement in exchange for the transfer of the
domain name. But Christensen’s failure to unconditionally turn over the domain name is not
enough to make this case exceptional. Presumably most cybersquatting lawsuits are filed against
defendants that did not respond favorably to prelitigation letters or notices. The fact that Vivint
had to file a lawsuit cannot itself make this case rare or exceptional. Moreover, the fact that
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Christensen stopped using the web domain name after Vivint delivered its first letter weighs against
finding this to be an exceptional case.
Finally, for the reasons stated in the court’s prior order [Docket 20] Christensen’s failure to
answer the complaint does not make this case exceptional. Defaulting in an action is not the type
of egregious litigation conduct that would justify an award of fees under the exceptional case
clause of the Lanham Act. The court, therefore, concludes that Vivint is not entitled to attorney
fees under 15 U.S.C. § 1117(a).
CONCLUSION
The court GRANTS IN PART and DENIES IN PART Vivint’s motion for entry of a default
judgment. [Docket 15.] The court grants Vivint’s requests for an order directing Christensen to
transfer the www.vivint.io domain name to Vivint and for a permanent injunction against
Christensen. The court denies Vivint’s requests for statutory damages and attorney fees.
Signed January 25, 2019.
BY THE COURT
______________________________
Jill N. Parrish
United States District Court Judge
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