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

Filing 7

Memorandum in Support re 6 MOTION for Service by Publication filed by Entrepreneur Media, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Proposed Order)(Zurawski, Tara)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division
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ENTREPRENEUR MEDIA, INC.,
2445 McCabe Way, Suite 400
Irvine, California 92614
Plaintiff,
v.
B-ENTREPRENEUR.COM & SENTREPRENEUR.COM, each an Internet
Domain Name,
Registrants:
Pamela Lynn
2445 McCabe Way, Suite 400
Irvine, CA 92614
B-ENTREPRENEUR.COM &
Entrepreneur Inc.
Verita Powell
2445 McCabe Way, Suite 400
Irvine, CA 92614
S-ENTREPRENEUR.COM
Defendant.

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Civil Action No. 1:11-cv-00583AJT-TCB

MEMORANDUM IN SUPPORT OF PLAINTIFF’S
MOTION FOR AN ORDER TO PUBLISH NOTICE OF ACTION
Plaintiff Entrepreneur Media, Inc. (“Plaintiff” or “EMI”) has filed an in rem civil action
alleging a cybersquatting claim against the Internet Domain Names b-entrepreneur.com and sentrepreneur.com (collectively, the “Defendant Domain Names”) in this District where the
domain name registry is located, because Plaintiff is not able to obtain in personam jurisdiction
over the owners of the Defendant Domain Names. EMI now brings its Motion for an Order to
Publish Notice of Action under 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(bb). In support of its Motion,
Plaintiff submits the following.

ATI-2484632v1

INTRODUCTION
Under 15 U.S.C. § 1125(d)(2)(A), a trademark owner may file an in rem action against an
infringing domain name registration if the trademark owner is not able to obtain in personam
jurisdiction over the owner of the infringing domain name. The ACPA specifically provides that
service of process in an in rem action is made by “sending a notice of the alleged violation and
intent to proceed under this paragraph to the registrant of the domain name at the postal and
email address provided by the registrant to the registrar” and “publishing notice of the action as
the court may direct promptly after filing the action.” 15 U.S.C. §§ 1125(d)(2)(A)(ii)(II)(aa) &
(bb). For the reasons set forth below, Plaintiff requests that notice be published once in The
Washington Times and in the form reflected in the Proposed Order submitted herewith.
ARGUMENT
Plaintiff is a well-known publisher of magazines and business guides, including
ENTREPRENEUR® magazine and other publications incorporating the ENTREPRENEUR®
trademark (the “ENTREPRENEUR Mark”) in their titles. ENTREPRENEUR® magazine is
published monthly with a current paid circulation, including both subscriptions and newsstand
sales, of more than 600,000. ENTREPRENEUR® magazine is sold and currently distributed in
over 100 foreign countries. (Verified Complaint ¶ 11.) The ENTREPRENEUR mark is a wellknown brand, which identifies EMI as the source of its various goods and services and
distinguishes those goods and services from those of its competitors. The ENTREPRENEUR
Mark also represents enormous goodwill of great value belonging exclusively to EMI. (Verified
Complaint ¶16.) EMI has used the ENTREPRENEUR Mark in commerce continuously since
1978 (Verified Complaint ¶12) and owns numerous United States trademark registrations for the
ENTREPRENEUR Mark, including United States Trademark Registration Nos. 1,453,968;
2,502,032; and 2,263,883. (Verified Complaint ¶ 14.) EMI also owns numerous United States
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trademark registrations for marks incorporating the term “ENTREPRENEUR” and used in
connection with print and digitized books and online and/or Internet services: 3,470,064
(ENTREPRENEUR PRESS®); 3,924,374 (ENTREPRENEUR ASSIST®); 3,519,022
(ENTREPRENEUR.COM®); 3,470,063 (EP ENTREPRENEUR PRESS®); 3,266,532
(ENTREPRENEURENESPANOL.COM®); 3,374,476 (WOMENENTREPRENEUR.COM®);
3,204,899 (ENTREPRENEUR’S STARTUPS®); and 3,652,950 (ENTREPRENEUR
CONNECT®). (Verified Complaint ¶ 15.)
The registrants of the Defendant Domain Names have intentionally provided false and
misleading WHOIS contact information in connection with the registration and operation of the
Defendant Domain Names. In particular, “Pamela Lynn” is listed in the WHOIS record as the
registered owner of the b-entrepreneur.com Defendant Domain Name with Plaintiff’s physical
address and phone number listed as the contact information. (Verified Complaint ¶ 9.) The
administrative contact information provided by “Pamela Lynn” and reflected in the WHOIS
records for the b-entrepreneur.com Defendant Domain Name is also Plaintiff’s contact
information: Entrepreneur.com, Inc., Michael Frazier, 2445 McCabe Way, Suite 400, Irvine,
California 92614, phone number +1.9492612325, along with an email address of [e-mail]. (Verified Complaint ¶ 25.) Likewise, “Entrepreneur Inc., Verita Powell” is
listed in the WHOIS record as the registered owner of the s-entrepreneur.com Defendant
Domain Name with Plaintiff’s physical address and phone number listed as the contact
information. (Verified Complaint ¶ 10.) The administrative contact information provided by
“Entrepreneur Inc., Verita Powell” for the s-entrepreneur.com Defendant Domain Name is also
Plaintiff’s contact information: Entrepreneur, Inc., Michael Frazier, 2445 McCabe Way, Suite

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400, Irvine, California 92614, along with an email address of [e-mail].
(Verified Complaint ¶ 25.)
The Defendant Domain Names encompass the ENTREPRENEUR Mark in its entirety
and are confusingly similar to the ENTREPRENEUR Mark and to the Entrepreneur.com domain
name owned by EMI. (Verified Complaint ¶¶ 18 & 20.) The unauthorized use of the
ENTREPRENEUR Mark and confusingly similar variations thereof in the Defendant Domain
Names and throughout the related websites in connection with content related to starting a
business, business ideas, technology and similar content is likely to cause confusion as to the
source or sponsorship of the Defendant Domain Names, the related websites, and the content
displayed thereon. (Verified Complaint ¶ 23.) Further, the Defendant Domain Names are
registered and being used in bad faith as evidenced by the provision of false and misleading
contact information in the WHOIS records by the owners of the Defendant Domain Names.
(Verified Complaint ¶ 24.)
Plaintiff has filed an in rem civil action against the Defendant Domain Names in this
District, where the domain name registry is located, because the registrants who control the
Defendant Domain Names have provided false and/or misleading contact information to the
domain name registry and registrar through which the Defendant Domain Names are registered.
15 U.S.C. § 1125(d)(2)(A)(ii)(II). The ACPA expressly provides that in such cases the following
actions “shall constitute service of process”:
(aa) sending a notice of the alleged violation and intent to proceed
under this paragraph to the registrant of the domain name at the
postal and e-mail address provided by the registrant to the
registrar; and
(bb) publishing notice of the action as the court may direct
promptly after filing the action.
15 U.S.C. §§ 1125(d)(2)(A)(II) and 1125(d)(2)(B).
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Plaintiff has provided actual e-mail notice dated June 30, 2011 to the registrants of the
Defendant Domain Names. See Exhibit A. Plaintiff cannot provide actual postal notice to the
registrants of the Defendant Domain Names due to the registrants’ provision of false contact
information for the Defendant Domain Names. Plaintiff has provided actual postal and e-mail
notice dated June 30, 2011 of this dispute to the registrar of the Defendant Domain Names,
Register.com, Inc. See Exhibit B. Register.com, Inc. has acknowledged receipt of Plaintiff’s
notice of June 30, 2011 by e-mail dated July 5, 2011. See Exhibit C. The registrants of the
Defendant Domain Names have not acknowledged Plaintiff’s notice; however, in light of the
provision of false contact information for the WHOIS data for the Defendant Domain Names,
Plaintiff has exhausted all possible measures to contact and notify the owners of the Defendant
Domain Names.
In light of the multiple forms of notice provided under the ACPA, the published notice
need not be multiple or extensive, and the ACPA does not require multiple published notices.
Accordingly, one publication in The Washington Times is sufficient notice. Further, orders
issued by the Court in other cases brought under the ACPA demonstrate that publishing a single
notice is appropriate. See Atlas Copco AB v. Atlascopcoiran.com et al., Case No. 1:07cv1208
(E.D. Va. December 12, 2007) (authorizing publication in The Washington Times), attached as
Exhibit D.
CONCLUSION
For the reasons set forth above, Plaintiff requests that this Motion be granted and that the
Court enter the Proposed Order submitted with this Memorandum.

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Dated: August 26, 2011

Respectfully submitted,
/s/ Tara Lynn R. Zurawski
Edwin L. Fountain (Va. Bar No. 31918)
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]
Email: [e-mail]
Of Counsel:
Mark A. Finkelstein
JONES DAY
3161 Michelson Drive, Suite 800
Irvine, CA 92612
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Ashley H. Zito
JONES DAY
1420 Peachtree Street, N.E.
Suite 800
Atlanta, GA 30309
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 26th day of August, 2011, I will electronically file 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 non-filing users by electronic mail:
B-ENTREPRENEUR.COM
Pamela Lynn
2445 McCabe Way, Suite 400
Irvine, CA 92614
[e-mail]
&
S-ENTREPRENEUR.COM
Entrepreneur Inc.
Verita Powell
2445 McCabe Way, Suite 400
Irvine, CA 92614
[e-mail]

By:

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/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]