Entrepreneur Media, Inc. v. B-Entrepreneur.com et al

Filing 22

OBJECTION to 21 Report and Recommendations by Entrepreneur Media, Inc.. (Zurawski, Tara)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division
ENTREPRENEUR MEDIA, INC.,
PLAINTIFF,
v.
B-ENTREPRENEUR.COM & SENTREPRENEUR.COM, each an Internet
Domain Name,
DEFENDANTS.

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Civil Action No. 1:11-cv-583-AJT-TCB

PLAINTIFF ENTREPRENEUR MEDIA, INC.’S OBJECTION TO THE REPORT AND
RECOMMENDATION ON PLAINTIFF’S MOTION FOR DEFAULT JUDGMENT
Pursuant to Federal Rule of Civil Procedure 72(b)(2), Plaintiff Entrepreneur Media, Inc.
(“EMI”) respectfully submits the following objection to footnote 2 of the Report and
Recommendation issued on January 31, 2012 (Dkt. No. 21) as to Plaintiff’s Motion for Default
Judgment in the above-captioned matter. EMI contends that, contrary to footnote 2, a plaintiff
can claim bad faith cyberpiracy as set forth in 15 U.S.C. Section 1125(d)(1)(A), when bringing
an action in rem under 15 U.S.C. Section 1125(d)(2). EMI does not object to any other portion
of the Report and Recommendation.
ARGUMENT
Footnote 2 of the Report and Recommendation reads as follows:
Plaintiff’s Memorandum of Law in Support its of Motion for
Default Judgment incorrectly asserts that plaintiff must show a
violation of the 15 U.S.C. § 1125(d)(1)(A) to prevail on its in rem
claim. Section 1125(d)(1)(A) governs in personam civil actions
against trademark infringers. See Mattel, Inc. v. Barbie-Club.com,
310 F.3d 293, 298 (2d. Cir. 2002). When proceeding in rem, the
Act requires plaintiffs to show that the Infringing Domain Names
violate any rights in a registered mark, or any rights protected

under subsections (a) or (c). Id. at § 1125(d)(2)(A)(i); see also
Volkswagen, AG v. Volkswagentalk.com, 584 F. Supp. 2d. 879,
882 n.1 (E.D. Va. 2008). Based on the facts asserted in the
Verified Complaint, the undersigned has elected to analyze
plaintiff’s motion under the requirements of a trademark
infringement action.
Report and Recommendation at 8, n.2 (Dkt. No. 21).
EMI agrees that under 15 U.S.C. § 1125(d)(2), a Plaintiff may prevail in an in rem action
against a domain name by showing federal trademark infringement under Section 1125(a) or
dilution under Section 1125(c). EMI also agrees that the S-Entrepreneur.com and BEntrepreneur.com domain names (“Infringing Domain Names”) infringe EMI’s federally
registered trademarks under Section 1125(a). However, EMI submits that, based on the language
of Section 1125(d)(2), under Fourth Circuit precedent, and consistent with the practice of the
District Court for the Eastern District of Virginia, a plaintiff may also plead a bad faith claim
under 15 U.S.C. § 1125(d)(1)(A) in an in rem action brought pursuant to § 1125(d)(2).
Section 1125(d)(2) of the Anticybersquatting Consumer Protection Act (the “ACPA”)
allows for in rem actions regarding domain names. Specifically, Section 1125(d)(2) provides
that in rem actions can be brought when “the domain name violates any right of the owner of a
mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of
this section.” 15 U.S.C. Section 1125(d)(2)(A)(i) (emphasis added). The phrase “any right of
the owner of a mark registered in the Patent and Trademark Office” encompasses a bad faith
cyberpiracy action brought under Section 1125(d)(1)(A).
In Harrods Ltd. v. Sixty Internet Domain Names, an in rem action under the ACPA, the
Fourth Circuit interpreted “any right of the owner of a mark” to encompass claims brought under
Section 1125(d)(1)(A). Harrods Ltd., 302 F.3d 214, 228 (4th Cir. 2002). The Fourth Circuit
noted: “The broad language “any right of the owner of a mark” . . . appears to include any right a
trademark owner has with respect to the mark. This language, by itself, would include rights
under § 1125(d)(1) . . . [for marks registered with the USPTO].” Id. Accordingly, after

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analyzing the statute and considering at length the claims available in an in rem action under 15
U.S.C. Section 1125(d)(2), the Fourth Circuit held:
Thus, we conclude that the best interpretation of § 1125(d)(2) is
that the in rem provision not only covers bad faith claims under
§ 1125(d)(1), but also covers infringement claims under § 1114
and § 1125(a) and dilution claims under § 1125(c).
Harrods Ltd., 302 F.3d 214 at 232 (emphasis added).1
Other decisions in the Eastern District of Virginia are in accord with the Fourth Circuit’s
ruling in Harrods. This Court routinely analyzes in rem cyberpiracy claims under the bad faith
standard set forth in Section 1125(d)(1)(A). See Volvo Trademark Holding AB v.
Volvospares.com, 703 F.Supp.2d 563, 567, (E.D. Va. 2010) (Trenga, J.) (awarding summary
judgment in in rem action based on 15 U.S.C. § 1125(d)(1)(A)); Continental Airlines, Inc. v.
Continentalair.com, No. 1:09cv0770, 2009 WL 4884534, *8 (E.D. Va. 2009) (awarding default
judgment in in rem action against domain name and applying test in § 1125(d)(1)(A)); AgriSupply Company, Inc. v. Agrisupply.Com, 457 F.Supp.2d 660, 663 (E.D. Va. 2006) (awarding
default judgment in in rem action for cybersquatting and applying factors in § 1125(d)(1)(A)).
Accordingly, EMI contends that footnote 2 of the Report and Recommendation is
erroneous to the extent it suggests that in rem actions can only be brought based on federal
trademark infringement under 15 U.S.C. § 1125(a) or dilution under 15 U.S.C. § 1125(c).

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Footnote 2 cites Mattel, Inc. v. Barbie-Club.com, a Second Circuit opinion, to support
the proposition that 15 U.S.C. § 1125 (d)(1)(A) governs in personam actions, but that case does
not state or imply that an in rem plaintiff cannot also claim bad faith cyberpiracy under § 1125
(d)(1)(A). Mattel, Inc., 310 F.3d 293, 298 (2d. Cir. 2002). The other opinion cited, Volkswagen,
AG v. Volkswagentalk.com, 584 F. Supp. 2d. 879, 882 n.1 (E.D. Va. 2008), is not binding on this
Court, and itself does not cite any authority.

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CONCLUSION
For the reasons stated above, EMI respectfully requests that footnote 2 to the Report and
Recommendation be omitted from the Court’s final ruling.
Dated: February 7, 2012

Respectfully submitted,
/s/ Tara Lynn R. Zurawski
Edwin L. Fountain (Va. Bar No. 31918)
Tara Lynn R. Zurawski (Va. Bar No. 73602)
Lucy Jewett Wheatley (Va. Bar. No. 77459)
JONES DAY
51 Louisiana Avenue, N.W.
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Mark A. Finkelstein
JONES DAY
3161 Michelson Drive, Suite 800
Irvine, CA 92612
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Counsel for Plaintiff Entrepreneur Media, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on this 7th day of February, 2012, I electronically filed the foregoing
with the Clerk of the Court using the EC/ECF system and that a true and correct copy of the
foregoing and a copy of the Notification of Electronic Filing (NEF) were sent to the following nonfiling users by electronic mail:

Registrants:
Pamela Lynn
2445 McCabe Way, Suite 400
Irvine, CA 92614
[e-mail]
B-ENTREPRENEUR.COM
Entrepreneur Inc.
Verita Powell
2445 McCabe Way, Suite 400
Irvine, CA 92614
[e-mail]
S-ENTREPRENEUR.COM

By:

/s/ Tara Lynn R. Zurawski
______________________________
Tara Lynn R. Zurawski (Va. Bar No. 73602)
JONES DAY
51 Louisiana Avenue, N.W.
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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