Pro-Concepts, LLC v. Resh
Filing
30
OPINION AND ORDER denying 3 Plaintiff's motion seeking preliminary injunction. Signed by District Judge Mark S. Davis on 10/21/2013 and filed on 10/22/2013. Mailed to defendant.(rsim, )
FILED
UNITED STATES DISTRICT COURT
OCT 2 2 2013
EASTERN DISTRICT OF VIRGINIA
Norfolk Division
PRO-CONCEPTS,
CLERK, U.S. DISTRICT COURT
NORFOLK, VA
LLC,
Plaintiff,
v.
Civil Action No.
2:12cv573
TIMOTHY MARK RESH,
Defendant.
OPINION AND ORDER
This
matter
Preliminary
Deny
is
Injunction,"
Preliminary
Court
will
"Motions
before
filed
by
Injunction,"
address
for
the
as
Ruling"
respective parties
a
on
Court
plaintiff,
filed
response
both
requesting
on
by
in
of
"Motion
and
a
defendant,
opposition,
these
ruling
a
on
"Motion
which
as
motions
for
well
from
to
the
as
their
their pending motions.
Plaintiff's written request for a preliminary injunction pending
the outcome of this case is predicated on the alleged offending
use
of
plaintiff's
trademark
through a
through registration and use of
plaintiff's
"Defendant")
plaintiff
sale,
in
product
breach
of
and defendant.
"Plaintiff")
Injunction
software
requests
ordering
distributing,
that website,
by
the
Timothy
Resh
to:
marketing,
the
Court
(1)
cease
LLC
Resh
("Resh"
contract
selling,
a
or
between
("Pro-Concepts"
issue
telemarketing,
cybersquatting
and conversion of
Mark
employment
Pro-Concepts,
that
website,
or
Preliminary
offering
for
advertising and/or
placing advertising,
and/or promoting a website or services that
use any designs or marks confusingly similar to or which would
dilute
Pro-Concepts'
transfer
RISK
ownership
RADAR mark
and
www.riskradarenterprise.com
all
copies
including
any
electronic
software
of
copies
data;
and
belonging
software
and
any
to
of
control
to
(4)
cease
other
and
materials,
Pro-Concepts.
(3)
all
Pro-Concepts,
and
use
any
of
electronic
Following
website
return any and
to
Enterprise
any
immediately
the
belonging
Radar
(2)
in
Pro-Concepts;
programs
Risk
("Mark");
related
Risk
or
Radar
otherwise,
notification
to
Resh
regarding the preliminary relief sought by plaintiff and receipt
of Resh's responsive motion to deny preliminary injunction,
Court
conducted
stated
a
below,
hearing
on
plaintiff's
their
motions.
motion
For
seeking
the
a
the
reasons
preliminary
injunction is DENIED, pending the outcome of this case.
I.
Defendant
FACTUAL1 AND PROCEDURAL BACKGROUND
Resh
is
Concepts,
LLC.
Concepts,
Resh worked
Prior
in the development of
a
to
former
employee
beginning
for American
his
of
Plaintiff
employment
Systems
Corporation
the Risk Radar software.
and Risk Radar Enterprise are project management
and
licensed
by
Pro-Concepts
to
with
governmental
ProPro-
("ASC")
Risk Radar2012
software sold
and
private
1 The facts reproduced here are merely preliminary facts and do not
represent
factual
findings
of the instant motion.
for any purpose
other
than
the resolution
organizations.
No.
4.
Mem.
Risk
Radar2012
program designed to
Risk
Radar
government
analyze,
in Supp. of Mot.
is
private
track,
a
self-contained,
Inj. 917,
ECF
browser-based
facilitate proactive risk management.
Enterprise
and
is
for Prelim.
a
web-based
sector
mitigate,
and
software
project
control
program
managers
potential
to
Id.
used by
identify,
project
risk.
Id.
During
website
at
website"),
Resh's
issue,
employment
ASC,
Resh
of
the Risk Radar product.
"Tr.
ASC
Prelim.
").
for
the
Inj.
After
acquired
the
(hereinafter
www.riskradarenterprise.com
independently
(hereinafter,
with
"RRE
purpose
Tr.
17
acquiring
&
of
51,
the
protecting
ECF No.
website,
20
Resh
requested reimbursement from ASC for the registration of the RRE
website and ASC denied reimbursement and further
that,
due
to
ASC's
their
services,
policy
he was
not
of
maintaining
to
link or
to the official ASC website.
Resh was
hired
as
an
Tr.
one
redirect
instructed Resh
website
for
all
the RRE website
52-53.
employee by
Pro-Concepts
to
program
the annual updates for the Risk Radar software in January 2012.
Resh
and
Dennis
transferring
to
Edwards,
Pro-Concepts,
another
were
ASC
employee
responsible
for
that
was
copying and
bringing over the Risk Radar source code and associated files to
the "development box" at Pro-Concepts.
at Pro-Concepts,
After Resh began working
he set up a redirect on the RRE website to the
Pro-Concepts'
discussions
to
official
website.
There
regarding the potential
Pro-Concepts,
is
also
transfer of
but no agreement between
evidence
of
the RRE website
the parties was
ever
reached.
Pro-Concepts
asserting
alleges
False
seven
causes
filed the
counts
of
of
Cybersquatting
Unfair
against
Resh.
Pro-Concepts'
action for Trademark Infringement
Designation
II),
instant action on October
Origin
under
Competition
under
under
15
U.S.C.
15 U.S.C.
Virginia
§
law
§
(Count
(Count
IV),
same
and Conversion
day,
(Count VII).
Pro-Concepts
injunction,
Complaint,
based
on
requiring
promoting a website
confusingly
similar
See,
separately
Counts
Resh
moved
I,
(1)
to
III,
cease
or services
to
Compl.,
III),
Trademark
or
that
VI,
a
and
selling
use
dilutive
ECF No.
for
(Count
1.
That
preliminary
VII
or
of
Risk
the
otherwise
any designs
of
I),
(Count
Dilution under Virginia law (Count V) , Breach of Contract
VI),
2012
Complaint
1125(A)
1125(d)
(Count
19,
or marks
Radar;
(2)
immediately transfer ownership and control of the RRE website to
Pro-Concepts;
(3)
return any and all copies of software programs
belonging to Pro-Coneepts; and (4) cease any and all use of Risk
Radar software or any other materials belonging to Pro-Concepts.
See, Mot.
for Prelim.
Resh
Answer,
but,
twice
as
Inj.,
moved
neither
ECF No.
for
an
motion
3.
extension
sought
an
of
time
extension
to
file
an
of
time
to
file
a
response
injunction,
However,
to
Resh
Pro-Concepts'
failed
to
motion
respond
for
timely
to
preliminary
that
motion.
Resh did file a separate motion to deny the injunction
on January 15, 2013.
As Resh is proceeding pro-se,
required to construe his
filings liberally.2
the Court is
The Court will
treat his motion to deny injunction as a response in opposition.
The Court held a hearing on Pro-Concepts'
injunction
on
Wednesday,
January
16,
motion for preliminary
2013
at
1:30
p.m.
where
each side presented testimony and offered argument in support of
their respective positions.
the
Court
directed
took
the
At
Pro-Concepts'
parties
to
a
the conclusion of
motion
under
settlement
the hearing,
advisement
conference
and
before
a
Magistrate Judge.
On January 23,
in
which
he
including
granted,
2013,
2013,
asserted
failure
to
Resh filed his Answer to the Complaint
twenty-two
state
a
claim
and seven counterclaims.
the
parties
Magistrate Judge
attended
Prince.
(22)
a
affirmative
upon
which
ECF No.
16.
settlement
defenses,
relief
can
be
On January 28,
conference
The case did not settle,
before
but as
Pro-
Concepts represented to the Court in their motion to stay filed
2 "As
the Court
complaint,
unanimously held
'however
inartfully
in Haines
pleaded,'
v.
must
Kerner,
be
held
a pro se
to
'less
stringent standards than formal pleadings drafted by lawyers' and can
only be dismissed for failure to state a claim if it appears '"beyond
doubt that the plaintiff can prove no set of facts in support of his
claim which would entitle him to relief."'" Estelle v. Gamble, 429
U.S. 97, 106 (1976). (quoting Haines v. Kerner, 404 U.S. 519, 520-521
(1972))(internal citations omitted).
on
January
30,
2013,
the
parties
agreed
settlement
discussions
settlement
conference.
to
continue
the
over
the
ten
(10)
days
following
the
ECF
No.
17.
This
Court
granted
the
Agreed Order on Pro-Concepts' motion to stay on January 30, 2013
and stayed the case for ten (10)
February 8, 2013,
motion
for
described
by
days.
ECF No.
preliminary
injunction,
[Pro-Concepts]
Inj. 510,
On
February
However,
on
Pro-Concepts filed a motion for ruling on its
in
its
"[b]ecause
Motion
...
issues described therein remain unresolved."
Prelim.
18.
ECF. No.
19,
dismiss
Resh's
Federal
Rule of Civil
continue
Mot.
harms
and
the
for Ruling on
19.
2013,
counterclaims
Pro-Concepts
for
failure
Procedure 12(b)
pursuant to Rule 12(f).
the
ECF No.
filed
to
a
state a
motion
to
claim under
and to strike such claims
21.
The next day,
Resh filed
a motion for ruling on his motion to deny injunction.
ECF No.
23.
Then,
based
on
on February 27,
2013,
representations
Pro-Concepts'
settlement conference.
ECF No.
Resh filed a
24.
Resh's motion to dismiss on March 7,
a reply to this response.
ECF No.
motion to dismiss
counsel
Pro-Concepts
made
at
the
responded to
2013 and Resh has not filed
25.
On March 21,
2013,
Pro-
Concepts requested a hearing on both pending motions to dismiss.
ECF
No.
directing
26.
the
Subsequently,
parties
to
the
appear
Court
at
issued
a
a
second
settlement
order
conference
before a Magistrate Judge on April 1, 2013.
a
telephonic
status
conference
with
The Court then held
the
parties
upon
their
request on May 7, 2013.
Having
oral
try
received
argument,
to
such written
and having given
resolve
their
dispute
filings,
oral
the parties
in
testimony,
sufficient
settlement
and
time
conferences,
to
this
matter is now ripe for decision.
II.
PRELIMINARY
INJUNCTION STANDARD
"A preliminary injunction is
'an extraordinary remedy that
may only be awarded upon a clear showing that
entitled to
649
Res.
F.3d
such relief.'"
287,
290
Def. Council,
(4th
Dewhurst v.
Cir.
Inc.,
2011)
555 U.S.
Winter
Telecommunications & Information Admin.,
2d
317
Breakthrough
(E.D.
Med.
Va.
2006)
Corp. ,
952
(quoting
F.2d
(recognizing
that
"[a]
extraordinary
remedy
involving
reaching
power,
circumstances
which
which
Direx
802,
811
preliminary
is
to
be
the
Natural
505 F.
Israel,
(4th
exercise
of
only
Cir.
it'").
In
v.
1992))
is
'an
very
a
in
Supp.
Ltd.
injunction
applied
clearly demand
v.
(2008)); see Peterson v.
National
313,
is
Century Aluminum Co.,
(quoting
7, 22
the plaintiff
far-
the
order
to
limited
obtain
the extraordinary remedy of a preliminary injunction, the moving
party must establish:
merits";
the
(2)
absence
"that he
of
(1)
is
"that he is
likely to
likely to suffer
preliminary
relief";
(3)
succeed on the
irreparable harm in
"that
the
balance
of
equities tips in his favor"; and
the
public
quotation
interest."
marks
and
(4)
Dewhurst,
citations
"that an injunction is in
649
F.3d
omitted).
setting forth the above four-part test,
of Appeals
for the Fourth Circuit
at
In
290
(internal
Dewhurst,
after
the United States Court
("Fourth Circuit")
separately
highlighted the fact that controlling precedent from the Supreme
Court
of
the
plaintiff
States
"clearly show"
merits.
Id.
see Direx
party
United
that
Israel,
bears
the
Supreme
standard
she
(quoting Winter,
952
burden
of
Court's
which
'possibility'
is
likely
812
requires
to
at 22)
succeed on
a
the
(emphasis added);
(indicating
demonstrating
that
the
that
the moving
propriety
of
a
The Fourth Circuit has also reiterated
rejection
"allowed
of
Court")
555 U.S.
F.2d at
preliminary injunction).
the
("Supreme
the
of
a
preliminary
plaintiff
irreparable
harm"
as
to
injunction
demonstrate
"'inconsistent
only
with
a
our
characterization of injunctive relief as an extraordinary remedy
that may only be awarded upon a clear showing that the plaintiff
is
entitled
Fed.
to
Election
such
relief.'"
Com'n,
575
vacated on other grounds,
555 U.S.
The
F.3d
Truth About
342,
559 U.S.
346-47
1089
Obama,
(4th
(2010)
Cir.
Inc.
v.
2009),
(quoting Winters
at 22).
demanding
exacting when
mandates
Real
a
action,
standard
plaintiff
as
outlined
seeks
contrasted
8
a
above
becomes
preliminary
with
the
even
more
injunction
that
typical
form
of
preliminary
injunction
pending trial.
F.3d
808,
F.2d
(4th Cir.
286
preliminary
merely
preserves
the
status
quo
See East Tennessee Natural Gas Co. v. Sage, 361
828
283,
that
(4th
2004)
Cir.
injunctions
do
(quoting Wetzel
1980))
not
(noting
preserve
v.
Edwards,
that
the
635
"'mandatory
status
quo
and
normally should be granted only in those circumstances when the
exigencies of
the situation demand such relief").
As recently
explained by the Fourth Circuit:
Ordinarily,
preliminary
injunctions
are
issued
to
"protect the status quo and to prevent irreparable
harm during the pendency of a lawsuit ultimately to
preserve the court's ability to render a meaningful
judgment on the merits."
In re Microsoft Corp.
Antitrust Litig., 333 F.3d 517, 525 (4th Cir. 2003).
Movant,
however,
seeks to alter the status quo by
having a federal court order the Board to include his
name
on
a
primary
election
ballot.
But
such
"[m]andatory preliminary
injunctive
relief
in
any
circumstance is disfavored, and warranted only in the
most extraordinary circumstances."
Id.
(citation
omitted).
Consequently,
our "application of th[e]
exacting
standard
of
review
[for
preliminary
injunctions] is even more searching when" the relief
requested "is mandatory rather than prohibitory in
nature."
Perry
v.
Judd,
"Therefore,
necessary
merits
of
I:12cvl77,
471
'a
both
deteriorating
preserve
Id.
the
Fed.
Appx.
mandatory
to
court's
the same
2012
WL
223-224
preliminary
protect
circumstance
219,
against
created
ability
to
kind.'"
W.
966028
at
(4th
injunction
irreparable
by
enter
the
ultimate
(E.D.
Va.
2012).
must
harm
defendant
relief
Indus. -N. , LLC v.
*1
Cir.
in
and
be
a
to
on
the
Lessard,
No.
Mar.
21,
2012)
reconsideration denied,
(quoting Microsoft,
2012 WL 2046502
On October 19,
claims
of
VII
of
2012,
and
Resh
conversion,
website
or
to
5,
2012)
(1)
services
DISCUSSION
Pro-Concepts
filed a motion seeking a
based
infringement,
the Complaint.
require
June
injunction,
preliminary
trademark
contract,
Va.
333 F. 3d at 526).
III.
"mandatory"
(E.D.
Pro-Concepts'
cybersquatting,
respectively
Counts
I,
breach
III,
VI,
of
and
The preliminary injunction sought would
cease
that
similar to or dilutive of
ownership and control
on
of
selling
use
or
otherwise
any designs
Risk Radar;
the RRE
(2)
website
or
promoting
marks
a
confusingly
immediately transfer
to
Pro-Concepts;
(3)
return any and all copies of software programs belonging to ProConcepts;
and
(4)
cease any and all
use of
Risk Radar software
or any other materials belonging to Pro-Concepts.
Prelim. Inj.,
As
the
ECF No.
party
See, Mot.
for
3.
seeking preliminary
injunctive
relief,
Pro-
Concepts bears the burden of clearly establishing that the four-
prong test is satisfied.3
The Court begins such analysis by
3 Pro-Concepts has suggested at various places in its brief that the
Court may presume
irreparable injury or likelihood of success on the
merits.
Although such presumptions were previously available in this
Circuit, the Supreme Court's ruling in Winter that the moving party
must clearly show that it is entitled to preliminary injunctive relief
did away with such presumptions.
See Real Truth About Obama, Inc. v.
Fed.
Election Com'n,
other grounds,
575 F.3d 342,
559 U.S.
1089
346-47
(2010).
10
(4th Cir.
2009),
vacated on
carefully
considering
demonstrated
a
whether
likelihood
of
Pro-Concepts
success
on
the
has
clearly
merits
of
such
claims, as required by the controlling precedent cited above.
A.
The
first
Likelihood of Success
hurdle
that
Pro-Concepts
must
overcome
in
order
to obtain a preliminary injunction is demonstrating a likelihood
of
success
Dewhurst,
on
649
the
merits
F.3d at
290.
of action are alleged,
success
on
one
Indus.-North,
*2
(E.D.
claim
LLC v.
of
"In general,
to
justify
Lessard,
where
Mar.
21,
F.
Supp.
198,
201
No.
2012)
919
the
request
for
as
here,
the
claims.
where multiple
injunctive
I:12cvl77,
(citing
preliminary
two
requests
relief."
causes
1995)).
relief
Western
2012 WL 966028,
McNeil-PPC
(E.D.N.C.
injunction to maintain the status quo
relief,
asserted
a plaintiff need only show likelihood of
Va.
Inc.,
plaintiff's
v.
at
Granutec,
But,
"in
encompasses
cases
both
an
and to provide mandatory
must
be
viewed
separately,
with the request for mandatory relief being subjected to a more
exacting standard of review."
99 F. Supp.
2d 695,
In this case,
with
its
claim
703
Id.
(E.D. Va.
(quoting Cornwell v. Sachs,
2000)).
the relief Pro-Concepts seeks in conjunction
of
trademark
infringement,
request
(1) ,
is
prohibitive in nature as it would prevent Resh from continuing
to
use
relief
the
Risk
sought
Radar
based
or any
on
confusingly
Pro-concepts'
11
similar marks.
claim
of
The
conversion,
request
(4),
is also prohibitive in nature as
it would prevent
Resh from continuing to use the Risk Radar software or any other
materials
belonging
requested,
requests
of
and
(4)
is
and
and
are
and
breach
of
in
requests
the
relief
from
mandatory
subject
the more exacting standard of
conversion
Thus,
claims
respectively,
for
and
nature.
separately
to
remaining
contract
associated with
conversion
the
The
(3), which are based on the claims
clearly mandatory
which
infringement
Pro-Concepts.
(2)
cybersquatting,
respectively,
(1)
to
of
must
requests
trademark
be
relief,
viewed
which
are
showing extraordinary
circumstances in which denial of a preliminary injunction would
not only result in irreparable harm but prevent
the
ultimately being able to order relief on the merits.
However,
court from
id.
at *1.
Pro-Concepts must still clearly show that it is likely
to succeed on the merits as to all four of the underlying claims
in order to obtain the relief sought in its entirety.
1. Count I—Trademark Infringement
To
prevail
Lanham Act,
protectable
colorable
on
a
trademark
Pro-Concepts
trademark,
imitation
must
and
of
(2)
the
infringement
show
"that
(1)
the
trademark
that
claim
it had
under
a valid,
defendant's
use
is
to
likely
the
of
a
cause
confusion among consumers."
Synergistic Intern., LLC v. Korman,
470 F.3d 162, 171
2006)
(4th Cir.
12
(quoting Lone Star Steakhouse
& Saloon,
Inc. v. Alpha of Va.,
Inc.,
43 F.3d 922,
930
(4th Cir.
1995)) .
(i) Valid,
"A
facie
certificate
evidence
of
of
the
U.S.C.
§
1057(b);
Publ'g,
364 F.3d 535,
attached to
for
Risk
Protectable Mark
registration
validity
see
also
542
(4th Cir.
and
the
the
assignment
a
the
Retail
the Complaint both
Radar
of
of
mark
...
registered
Servs.,
2004).
which
v.
15
Freebies
Pro-Concepts has
Certificate
by
prima
mark."
Inc.
As
[is]
of
it
Registration
obtained
sole
rights to Risk Radar as well as an affidavit from its president
swearing
that
the
trademark
is
subsisting and unrevoked,
Concepts has shown that it has a valid mark.
O'Rourke Aff. 5 7.
valid trademark,
Compl.
Ex.
Pro-
1 & 2;
Having established that Pro-Concepts has a
the
Court
next
examines
whether
that mark
is
protected.
The protection afforded a trademark is directly related to
the
mark's
distinctiveness.
[the
(4th
mark]
is
Cir.
U.S.
"[t]o ascertain whether a mark is protected,
whether
523
v.
Accordingly,
determine
517,
LLC
Inc.,
must
F.3d
Search,
Search.com,
Court]
300
U.S.
1)
2002).
[the
generic,
2) descriptive, 3) suggestive or 4) arbitrary or fanciful."
A
generic mark
product
or
is one
service"
that
serves
and
is
as
"the
common name
subsequently
id.
for a
ineligible
for
protection because "the public has an inherent right to call a
13
product
or
service
by
its
generic
name."
id.
However,
a
certificate of registration from the PTO is prima facie evidence
that the mark is not generic in the eyes of the relevant public.
Retail Servs.,
Inc.,
Pro-Concepts
364 F.3d at 542.
does
or arbitrary mark,4
Risk
Radar
is
a
suggestive mark
some
quality
not
argue that Risk Radar
a
fanciful
thus the Court need only consider whether
suggestive
uses
"words
mark
that
or
characteristic
marks
Suggestive
is
"suggest[]
or
descriptive
connote,
of
a
a
a
rather
product
or
characteristic
mark.
A
than describe
service."
of
a
Id.
product,
permitting a consumer to infer something about the product from
the mark."
Inc. ,
240
arbitrary
and
Hunt
F.3d
251,
marks,
thus
Masters,
254
Inc.
(4th
suggestive
receive
v.
Cir.
marks
the
Landry's
Seafood Restaurant,
2001) .
"are
Like
fanciful
inherently
greatest
and
distinctive,
protection
against
infringement."
Id.
(citing Sara Lee Corp. v. Kayser-Roth Corp.,
81
464
(4th
F.3d
455,
descriptive
Corp. ,
81
describe[s]
purpose
of
"paradigm"
mark
F.3d
a
"is
at
not
of
a
1996)).
On
the
other
inherently
descriptive
hand,
distinctive."
Rather,
464.
function,
the
Cir.
use,
product."
descriptive
a
characteristic,
Id.
(citing
mark).
A
size,
Sara
mark
or
Coca-Cola
a
Lee
"merely
intended
the
mark
descriptive
as
is
4 A fanciful mark consists of "made-up words expressly coined to serve
as
trade
or
service
marks."
U.S.
Search,
300
F.3d
at
523.
arbitrary mark is one using "common words in unfamiliar ways."
14
An
Id.
eligible
for
meaning'
in the minds of
523.
A
protection
mark
substantial
understand
business
the
to
Entm't
six
Ltd.,
the public."
of
to
a
575
factors
acquisition of
or
a
court
information directly,
particular
it
is
meaning"
if
person
customers
or
Inc.,
"a
with
a
business
915 F.2d 121,
LLC v.
Imagination
394
(4th Cir.
2009)
(setting forth
to
consider
when
assessing
Generally
If
courts
the mark
it
the
imparts
stands
for
an
the imagination to connect
it is suggestive."
v.
speaking,
"[I]f
descriptive.
(quoting Pizzeria Uno Corp.
(4th Cir.
300 F.3d at
connection
Perini Const.,
idea which requires some operation of
394
in
following distinction:
it with the goods,
Search,
'secondary
prospective
used
secondary meaning).
have drawn the
U.S.
see also George & Co.
F.3d 383,
for
acquired a
"secondary
when
Perini Corp. v.
1990);
a
present
designation
refer
(4th Cir.
it has
acquired
number
enterprise."
125
has
"only if
George & Co,
Temple,
747
575 F.3d at
F.2d 1522,
1528
1984)).
A certificate of
registration from the
PTO provides prima
facie evidence that a mark "at a minimum is descriptive and has
obtained secondary meaning."
Thus,
Pro-Concepts'
descriptive mark.
the
Servs.,
Risk Radar mark is,
Pro-Concepts
least a suggestive mark,
describe
Retail
services
argues
15
and
F.3d at
542.
at least, a protectable
that
because the mark,
provided
364
Risk Radar
Risk Radar,
because
the
PTO
is
at
does not
allowed
registration of Risk Radar without a claim of secondary meaning.
See Pizzaria Uno,
747 F.2d at 1528-29
(noting that if a mark's
registration is refused because it is descriptive, the applicant
can secure registration by asserting and proving that the mark
has acquired a secondary meaning but that if "the Patent and
Trademark Office finds
registration
See also,
without
the mark suggestive
requiring
George & Co.,
F.3d at 934)
("If
575
proof
F.3d at
of
395
. . ., it will grant
secondary meaning.").
(citing Lone Star,
the USPTO believes a mark is descriptive,
43
the
registrant must provide evidence of secondary meaning before the
USPTO will
has
not
Servs.
grant
registration.")
provided
364
F.3d
evidence
at
542
("The
from trademark registration
requiring
the
party
mark
is
of
against
this
Defendant
presumption.
presumption
of
validity
Resh
Retail
flowing
. . . has a burden-shifting effect,
a
registered
mark
to
produce
establish that the mark is generic by a
evidence.")
suggestive
protection
rebut
challenging
sufficient evidence to
preponderance
to
Additionally,
and
as
Thus,
such
infringement."
Pro-Concepts'
"receive [s]
Hunt
Masters,
Risk
the
Radar
greatest
240
F.3d
at
254.
(ii)
To show that
it
Likelihood of Confusion
is
trademark infringement,
"use
of
a
colorable
entitled to relief based on its claim of
Pro-Concepts must
imitation
of
16
the
also show that Resh's
trademark
is
likely
to
cause confusion among consumers."
at 171.
Synergistic Intern.,
470 F.3d
The Fourth Circuit has set forth nine factors governing
this inquiry:
(1) the strength or distinctiveness of the plaintiff's
mark as actually used in the marketplace;
(2)
the
similarity of the two marks to consumers;
(3) the
similarity of the goods or services that the marks
identify; (4) the similarity of the facilities used by
the markholders;
(5)
the similarity of advertising
used by the markholders; (6) the defendant's intent;
(7)
actual
confusion;
(8) the
quality
of
the
defendant's product; and (9) the sophistication of the
consuming public.
George & Co. , 575 F.3d at 393.
These judicially created factors
are not exhaustive or mandatory.
Inc. ,
676
F.3d
factors are of
144,
154
equal
(4th
(4th Cir.
Inc.
1992)).
Cir.
importance,
in any given case.'" George
Anheuser-Busch,
Rosetta Stone Ltd. v. Google,
v.
L
&
'nor are
"Not
Wings,
Inc.,
the confusion
all
of
these
they always relevant
& Co. , 575 F.3d
L
"Rather,
2012) .
at 393
962
F.2d
(quoting
316,
320
'factors are only a
guide - a catalog of various considerations that may be relevant
in determining the ultimate statutory question of likelihood of
confusion.'"
Busch,
Rosetta Stone, 676 F.3d at 154 (quoting Anheuser-
962 F.2d at 320)).
In
consumer
some
cases,
confusion.
there
is
a
Such
presumption
presumption
of
likelihood
"arises
from
of
the
'intentional copying' of plaintiff's trade dress or trademark by
a defendant."
Id.
at 160 n.5.
17
The presumption applies
"only
when the copier intends
already
registered
Silstar Corp.
another's
services
where
mark
as
mark
manner,
an
this
the
to
nor
presumption
pass
mark
Id.
Radar"
(quoting
239
the
does
off
owner,
However
RRE
not
as
(4th Cir.
copies
its
Resh
to
Co.
1997)).
or
own
v.
adopts
goods
or
presumption
the
website
apply
created by an
Shakespeare
intentionally
effort
of
the good will
110 F.3d 234,
party
applied.
"Risk
Id.
Inc.,
one
those
appropriately
the
in
exploit
mark."
of Am.,
Accordingly,
to
is
is
in
using neither
any
the
commercial
instant
case.
The Court thus considers the relevant factors enumerated above.
(1)
"Generally,
the
Strength of the Mark
stronger
the
mark,
the
greater
the
likelihood that consumers will be confused by competing uses of
the mark."
George & Co. , 575
F.3d at
strength of a plaintiff's mark,
conceptual
strength
and
393.
In evaluating the
a court should consider both the
the
commercial
strength.
id.
Conceptual strength is determined, in part, by which category of
distinctiveness
the mark falls
into.
Id.
As discussed above,
Risk Radar is a suggestive mark and thus, a conceptually strong
mark.
However,
likelihood
degree
to
of
the
strength
confusion
which
the
of
inquiry
designation
a
is
Id. at 396.
18
for
"ultimately
purchasers with a particular source,"
is the dispositive factor.
mark
associated
thus,
purposes
depends
on
of
a
the
by prospective
commercial strength
Commercial strength is "a concept similar to the 'secondary
meaning' inquiry considered in evaluating the mark's validity."
Id.
at
395.
Secondary
commercial-strength
inquiry
CareFirst
of Maryland,
269
Cir.
(4th
substantial
understand
business
to
125
U.S.
817
.
v.
First Care,
designation
Perini Corp.
v.
when
a
1990)
.
by
.
looks
present
to
Grocery Corp.,
371
of
refer
(4th Cir.
and,
or
extension,
at
the
434
exists
if
in
F.2d
particular
person
Perini Const.,
(1962)).
156,
160-61
The Court
Inc.,
required
fact
a
customers
or
with
a
business
915 F.2d 121,
Inc.
(4th Cir.),
is
in
connection
(quoting Food Fair Stores,
301
F.3d 263,
prospective
used
"[t]he
marketplace."
P.C.,
"Secondary meaning
number
enterprise."
Inc.
2006) .
the
meaning
v.
cert.
to
Lakeland
denied,
consider six
factors in assessing the acquisition of secondary meaning in a
commercial strength analysis:
expenditures;
(3)
the
media
"(1)
the plaintiff's advertising
(2) consumer studies linking the mark to a source;
plaintiff's
coverage of
record
of
success;
the plaintiff's business;
plagiarize the mark; and (6)
plaintiff's use of
sales
(4)
(5)
unsolicited
attempts
to
the length and exclusivity of the
the mark."
George & Co. , 575
F.3d at
395
(citing Perini, 915 F.2d at 125).
Pro-Concepts has argued only the conceptual strength of its
Risk Radar mark.
Although it appears
to have a conceptually
strong mark (in that a suggestive mark is generally entitled to
19
the greatest protection from infringement) , there is no evidence
before the Court concerning the commercial strength of the mark.
A mark's
lack of
commercial strength "renders
the mark weak for
purposes of [the] strength of the mark analysis."
George & Co.,
575 F.3d at 396
(noting that even a suggestive mark may be weak
for purposes of
the likelihood of confusion factor if commercial
strength
is
lacking).
strength of
argument,
Despite
evidence
the Risk Radar mark,
regarding
of
the lack of
commercial
strength
the
conceptual
evidence,
means
or even
the
overall
strength of the mark is weak.
(2) Similarity of the Marks
In assessing
factor,
the similarity of
Restaurants,
so doing,
43
rather
(E.D. Va. 2003).
In
the Court should "focus on the dominant portions of
F.3d
Specifically,
at
George & Co., 575 F.3d at 396.
396;
confusion."
"Risk
use
Pizzeria
Uno,
747
F.2d
at
See, Lone
1534-35.
the Court is to "focus on whether there exists a
similarity in sight,
Resh's
the second
Sweetwater Brewing Co. v. Great Am.
Inc., 266 F. Supp. 2d 457, 462
the parties' marks."
that
under
the Court should consider the marks as a whole,
than their component parts.
Star,
the marks
sound,
and meaning which would result in
George & Co., 575 F.3d at 396.
Radar"
of
is
the
the
mark
dominant
in
part
"Risk
Pro-Concepts argues
of
Radar
its
mark
and
Enterprises"
sufficiently similar for purposes of the Court's inquiry.
20
that
is
ECF
No.
4 at 15 (citing Sweetwater Brewing Co. , 266 F. Supp. 2d at
463 for the proposition that when a single unitary word is in
contention,
similar
to
"any prominent use of
the
tradedress.") ) .
"risk
radar
trademark,
The
RRE
enterprise,"
the word will necessarily be
regardless
website
which
and
of
its
the
URL
predominantly
surrounding
use
the
consists
phrase
of
the
trademark "Risk Radar" and thus looks and sounds very similar to
the
mark.
The
phrase
prominently as well,
the website.
website
"risk
radar
enterprise"
is
used
appearing in large lettering at the top of
Based on the prominent use of the mark in the RRE
(attached
as
Ex.
7
to
the
Compl.)
and
its
URL,
Pro-
Concepts has shown the requisite similarity of the marks.
(3)
Similarity of Good or Services
To satisfy this prong, the goods or services offered by the
parties
"need not
each other."
be
George &
identical
Co.,
or
in
direct
575 F.3d at 397.
competition with
It
is
sufficient
if "the products or services provided by the two companies serve
the same purpose."
Concepts argues
Pizzeria Uno Corp.,
747 F.2d at 1535.
Pro-
that both parties are using the Risk Radar mark
in the area of software services, but Pro-Concepts acknowledges
that Resh's website does not contain any information regarding
project management services or related software.5
Instead, Pro-
5 Although the heading of Resh's website is "Risk Radar Enterprise
Software."
21
Concepts asks the Court to infer similarity of services based on
the following facts:
(2)
Resh
is
an
(1)
software design is Resh's profession,
expert
in
that
field;
operated his own software company,
possession
contact
of
Pro-Concepts'
its
sole
Inc.,
officer
and
a
of
"transacting
commerce
Management,
any
Pro-Concepts'
with
is
(5)
the
connected
that
lists
that
in
to
Resh
he
has
to
Risk
Radar,
Risk
or any services which conflict with [Pro-Concepts]."
hearing
that
he
was
not
using
the preliminary injunction
the
website
or
the
mark
"Risk
for any commercial purposes and that Whisper Technology,
is a former company. Tr.
Pro-Concepts
to
bears
succeed
50-51,
the burden
on
its
Evidence of Resh's profession,
not
and
contends
regards
Resh also testified at
likely
previously
software and that he is not
12.
Inc.
website
Resh
ECF No.
Radar"
software,
technology company
director.
purged all copies
Resh
Resh is allegedly
proprietary
information provided on Resh's
Whisper Technology,
as
(4)
(3)
establish that
54,
to
60.
clearly show that
infringement
expertise,
and prior company do
Enterprise
Software
is offering a good or
is
that he
in possession of
does
not
is
trademark
he
allegation
it
suffice
a
to
service,
claims.
and the
copy
of Risk
show
that
Radar
Resh
is
offering software and technology services or products under the
Risk Radar name, especially given Resh's sworn testimony that he
is not
using
the
mark
commercially
22
in
any
way.
Thus,
Pro-
Concepts has not met its burden to show that the parties are
offering similar services.
(4) Similarity of Facilities
Pro-Concepts
does
not
argue
this
factor
and
there
is
limited evidence before the Court concerning the facilities used
by either party.
To
the
extent
the Court regarding this factor,
that
there
an
individual
residing
evidence before
it appears the Pro-Concepts has
its principle offices in Virginia Beach,
is
is
in Virginia
Virginia and that Resh
Beach,
Virginia
and is
currently seeking employment and thus does not have a separate
professional
parties
office.
maintain
a
Pro-Concepts
web
presence
does
that
represent
refers
to
that
Risk
both
Radar
Enterprise, however web advertising is addressed under the fifth
factor, similarity in advertising.
Additionally, if the product
is for the most part sold via internet or phone transaction,
similarity of facilities would be irrelevant.
Thus, there does
not appear to be any similarity of physical facilities and the
extent to which non-physical facilities may resemble each other
is adequately addressed by the fifth factor.
(5) Similarity in Advertising
In considering similarity of advertising,
the Court should
look to both the advertising media used and the areas in which
the parties advertise.
Concepts
argues
that
Pizzeria Uno,
both
parties
23
747 F.2d at 1535.
are
advertising
on
Pro-
the
internet
Exhibit
and
4
attaches
to
copies
their brief.
of
their
Resh's
website utilizes
in its domain name and website heading,
"RiskRadar"
as
"Risk Radar
a
product
Enterprise"
on its
respective
as
"Risk Radar"
while Pro-Concepts lists
website.
and,
large
number
both.
widespread
of
See id.
plaintiff
availability
consumers
will
of
appears
to
parties are using the same advertising media (the Internet)
the
it
refer
both
on
Thus,
Both sites
that
based
software.
websites
the
encounter
internet,
that
advertisements
a
for
(finding geographic overlap unlikely where the
advertised
nationally
and
the
defendant
advertised
locally in a locality not expressly targeted in the plaintiff's
national
campaign).
Therefore,
Pro-Concepts
has
shown
sufficient similarity in advertising.
(6)
Evidence
of
the
Defendant's Intent
defendant's
intent
is
prevail on a trademark infringement claim.
Co.,
266
F.
Supp.
2d
defendant's intent can,
the
Court's
"[i]f
public,
is
this
since
there
strong
one
463.
George
is
&
intent
evidence
intending
evidence
of
the
be a "major" factor for
Co. , 575
to
F.3d
confuse
establishing
to
to
Sweetwater Brewing
However,
in some cases,
consideration.
Specifically,
confusion,
at
not required
profit
at
the
buying
likelihood
from
397.
of
another's
reputation generally attempts to make his signs, advertisements,
etc.,
to resemble
the other's
24
so as
to deliberately
induce
confusion."
Id.
(quoting
Pizzeria
Uno,
747
F.2d
at
1535).
However, "[t]he intent of a junior user is relevant only if the
junior user intended to capitalize on the good will associated
with
the senior user's
F.3d at
273.
mark."
Pro-Concepts
argues
intent because Resh knew of
Pro-Concepts,
Concepts'
two
the
from
the
purpose
Furthermore,
of
issue
termination,
he
O'Rourke,
the
Risk
employment at
away
from
Pro-
and has since received
cease
Radar
President
of
434
Resh had the requisite
at
that
Inc.
using
the
mark.
that he originally obtained the website
protecting
Mr.
website
Pro-Concepts
testified
that
of Maryland,
the mark through his
website after his
demands
Resh has
redirected
CareFirst
product
Tr.
Pro-Concepts,
51,
for
53.
testified
that this was Resh's intent in registering the RRE website.
Tr.
17,
the
19-20.
Resh
also
website to Pro-Concepts
asserts
several
that
he
offered
to
sell
times and that such offers were
rejected.
This
does
not
appear
to be
a
case
in which
was unaware of the mark when he began using it.
Brewing Co. , 266 F.
Supp.
2d at 463.
However,
the defendant
See Sweetwater
neither is
this a
case where intent to confuse or intent to profit from another's
reputation is shown.
Resh is not using the RRE website or
"Risk Radar" mark for commercial purposes.
is
not
trying
to
establish
recognition,
Tr.
association,
will of his own product through use of the mark.
25
50-51,
See,
54.
or
the
Resh
good
CareFirst
of Maryland,
F.
Supp.
Inc.
434
at
463.
2d
demonstrate
a
F.3d at 273;
Sweetwater Brewing Co.,
Therefore
likelihood
of
Pro-Concepts
success
on
the
has
merits
266
failed
under
to
this
factor.
(7)
Actual Confusion
The seventh factor is
& Co. , 575 F.3d at 398.
both
anecdotal
Equip.
654,
Co.
661
v.
and
(4th Cir.
George
"Actual confusion can be demonstrated by
survey
champ
the "most important factor."
evidence."
Frame
Id.
Straightening
1996)).
(citing Tools
Equip.,
Confusion can be as
F.3d
to the source,
connection,
F.3d at 157.
In weighing the evidence of actual confusion:
of
the
sponsorship.
87
affiliation,
[E]vidence
or
Inc.,
USA &
number
of
Rosetta
instances
Stone,
of
676
actual
confusion must be placed against the background of the
number of opportunities for confusion before one can
make an informed decision as to the weight to be given
the evidence.
If there is a very large volume of
contacts or transactions which could give rise to
confusion and there is only a handful of instances of
actual confusion,
the evidence of actual confusion may
receive relatively little weight.
George & Co.,
such cases,
575
F.3d at
"[e]vidence of
398.
(citing McCarthy
only a
§ 23:14).
small number of
instances
actual confusion may be dismissed as de minimis."
Petro Stopping,
of
actual
of
(citing
130 F.3d at 95).
Pro-Concepts
cases
Id.
In
represents
that
it has
confusion by customers
26
documented over sixty
or potential
customers.
ECF No.
4.
However,
Pro-Concepts'
and 10 to support this
attached
the
to
that
another
case
present
in
clients,
but
this
case.
it appears
brief.
was
failed
this
references
Exhibits
9
claim and there are only four exhibits
Pro-Concepts'
hearing
brief
an
to
Pro-Concepts
argument
address
Given
from
whether
that
acknowledged at
a
prior
actual
Pro-Concepts
brief
in
confusion
is
has
to be a fairly small company,
only
120
in which case
a small number of instances of actual confusion would likely not
be de minimis.
instances
sold
of
500,000
See George & Co. , 575 F.3d at 399
actual
games
confusion
per
de
year).
minimis
(finding four
where
However,
as
the
plaintiff
Pro-Concepts
has
failed to provide the Court with any evidence in support of this
factor,
it
has
failed
to
establish
that
defendant
has
caused
actual confusion.
(8) Quality of Defendant's Product
This
production
factor
of
is
cheap
trademark-protected
relevant
copies
goods."
(quoting Sara Lee Corp.,
that
this
factor
using
the
RRE
or
&
Furthermore,
or
the
27
has
involving
a
575
the
competitor's
F.3d
at
399
Pro-Concepts concedes
and there
or services
Resh
of
Co.,
81 F.3d at 467).
goods
website
"situations
knockoffs
George
is not relevant
Resh has priced any
Pro-Concepts.
in
is
no
evidence
that
below those offered by
testified
trademark
at
that
issue
he
is
not
for
any
commercial purpose.
Tr. 50-51,
54.
Therefore,
the Court finds
this factor irrelevant in the instant case.
(9) Sophistication of the Consuming Public
The ninth factor is only relevant "when the relevant market
is
not
the public
at-large."
George
&
Co.,
575
F.3d at
400.
"If the typical consumer in the relevant market is sophisticated
in the use of—or possesses
product,
such
determining
F.3d
at
sophistication
the
sophisticated,
or
likelihood of
467.
considering
an expertise regarding—a particular
Where
this
the
expertise
may be
confusion."
the
consuming
Sara Lee
market
factor may even trump all
likelihood
of
pertinent
confusion
is
a
81
extremely
other
as
Corp.,
in
factors
in
sophisticated
consumer is unlikely to confuse one company for another based on
the name alone.
Perini,
915 F.2d at 127-128.
Pro-Concepts argues that this factor is not relevant to the
Court's analysis.
However,
because Pro-Concepts offers software
for sale and has a limited number of clients,
rule
out
this
assertion alone.
Pro-Concepts
factor's
Mr.
acquires
relevancy
O'Rourke
two
or
the Court does not
based
on
testified at
three
clients
Pro-Concepts'
the hearing
a
month
that
and
that
advertising for their Risk Radar products has been done through
the
Risk
Management
limited client pool,
Risk
Management
Buyer's
Guide.
along with
Buyer's
Guide,
28
Tr.
25.
their
advertising
which
describes
Pro-Concepts'
through
itself
as
the
a
database
that
dedicated
the
"Risk
to
risk
Radar"
sophisticated market
of
software
is
consumers.
targeted
The
a
fairly
sophistication of its
O'Rourke testified to range from at least $7,800,
unlikely
that
software
program
names,
The
a
purchase,
consumer
would
up
to
paying
suffer
the
at
which Mr.
product
by
indicates
is
initial
supported
professionals,
consumers
an
further
management
cost
of
$32,000.
Tr.
thousands
confusion
the
of
from
software,
25.
It
dollars
a
for
is
for
similarity
a
in
especially where only one is offering a product for sale.
sophistication
thus likely trumps
of
Risk
Radar
software's
typical
consumer
the two factors which Pro-Concepts has shown
to support a likelihood of confusion.
(iii) Summary
Pro-Concepts
protectable
mark
demonstrate
that
confusion
among
has
in
established
"Risk
Resh's
the
Radar."
RRE
website
consuming
or adopt Pro-Concepts'
it
has
creates
there is
a
it
However,
public.
Concepts has a weak mark because
mark's commercial strength.
that
has
a
valid
and
failed
to
likelihood
of
Specifically,
no evidence as
Proto the
Defendant lacked the intent to copy
Risk Radar mark in an effort to pass his
own goods or services off under that mark as Resh is not using
the mark in a commercial manner and is not offering a good or
service.
Although
Resh
is
employing
a
similar
mark
via
functionally and geographically similar methods of advertising,
29
these are the only factors which support Pro-Concepts' assertion
of a likelihood of confusion and they are likely trumped by the
sophistication of
the consuming public.
presently
the
before
Court,
it
is
likely
consumer of the Risk Radar software is
of—or possesses
software
at
expertise
issue.
Additionally,
actual
an
confusion
Pro-Concepts has
among
thus
that
evidence
the
typical
"sophisticated in the use
regarding—"the particular
Sara
Pro-Concepts
Based on the
Lee
has
Corp.,
failed
customers
81
to
and
F.3d
show
any
potential
failed to establish that
type
at
of
467.
cases
of
customers.
it is likely to
succeed on the merits of its trademark infringement claim.
2. Count Ill-Cybersquatting
The Court
success
on
turns
Pro-Concepts'
Pro-Concepts
prevent
now
states
Resh
that
to
consideration
cybersquatting
it
seeks
from maintaining
of
the
claim.
likelihood of
In
its
brief,
a preliminary injunction
a website
using
to
the Risk Radar
mark as part of the domain name by either "redirecting the site
to send any visitors to Plaintiff's website or by shutting down
the site."
ECF No. 4 at 7.
Pro-Concepts' motion, however, asks
the Court to "[iImmediately transfer ownership and control in
the website www.riskradarenterprise.com to Pro-Concepts."
No.
3.
Thus,
Pro-Concepts requests mandatory injunctive relief
in its motion (transfer of ownership)
mandatory
ECF
injunctive
relief
in
its
30
but argues for different
brief
(redirection back
to
Pro-Concepts' website or shutting down the website) .
The Court
asked for clarification as to which form of relief was sought at
the hearing and Pro-Concepts stated that the mandatory relief,
either through a transfer of the ownership of the RRE website or
establishing a redirect to the Pro-Concepts' website, was indeed
sought, but that it would settle for the prohibitive relief of
preventing the website from appearing in searches and removing
it temporarily from the public domain.
the
standard
of
review
minimum standard which
review must
be
for
prohibitive
applies,
satisfied
Tr. 70.
injunctions
the more
before
the
As such, while
is
the
exacting standard of
mandatory
relief
will
be
granted.
Cybersquatting is "the practice of registering 'well-known
brand
names
as
Internet
domain
names'
in
order
to
force
the
rightful owners of the mark 'to pay for the right to engage in
electronic commerce under their own brand name.'" Virtual Works,
Inc.
v.
2001).
Volkswagen
Am.
Inc.
238
F.3d
as cybersquatting.
267
(4th
Cir.
2005).
To
from the mark owner's site may also qualify
Lamparello v. Falwell,
prevail
on
a
420 F.d 309, 318
cybersquatting
Anticybersquatting Consumer Protection Act
must demonstrate
to
264,
Counterfeit activities and the misuse of the domain name
to divert customers
Cir.
of
profit"
that
from
(1)
("ACPA"),
the defendant had a
plaintiff's
mark;
31
and
claim
under
(4th
the
a plaintiff
"bad faith intent
(2)
the
defendant
registered,
trafficked
in,
or
used
a
domain
name
that
"is
identical or confusingly similar to, or dilutive of" plaintiff's
distinctive mark.
2005);
that
see
also
Resh's
7.
As
Enterprise,"
15
U.S.C.
website
identical terms"
at
Lamparello v.
as
Resh's
§
domain
Falwell,
1125(d)(1)(A).
name
Pro-Concepts'
RRE
website
which includes
420 F.3d 309
and
(4th Cir.
Pro-Concepts
verbiage
"use
the
mark "Risk Radar."
uses
the phrase
the
term
argues
exact,
ECF No.
"Risk
"Risk Radar,"
4
Radar
the second
prong of the ACPA's test is met in this case.
In determining whether Resh acted with a bad faith intent
to
profit
nine
from
statutory
Specifically,
Pro-Concepts'
factors.
with
mark,
See
respect
Court
U.S.C.
to
cybersquatting on another's mark,
such as,
15
the
the
should
§
consider
1125(d)(1)(B).
person
allegedly
"a court may consider factors
but not limited to—"
(I)
the
trademark or other intellectual property
rights of the person, if any, in the domain name;
(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
mark owner's online location to
consumers from the
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
32
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
information,
or
to
maintain
accurate
contact
the person's prior conduct indicating
a pattern of such conduct;
(VIII)
the person's registration or acquisition of
multiple domain names 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) of this section.
15
U.S.C.
§
1125(d) (1) (B) (i) .
The
Court
may
not
find
the
requisite bad faith if "the court determines that the person
believed and had reasonable grounds
to believe that
the use of
the domain name was a fair use or otherwise lawful."
15 U.S.C.
§
statutory
1125(d) (1) (B) (ii) .
factors
them
are permissive,
all.
Lamparello,
Additionally,
the Court
420
F.3d
because
is not
at
319.
the
required to consider
The
factors
serve
merely as a guide, and the Court should still carefully consider
whether the conduct at issue was motivated by a bad faith intent
to profit.
Id.
at 319-20.
33
Regarding
the
first
factor,
Resh
acknowledged
at
the
hearing that he has no trademark or intellectual property rights
in
the
domain
itself.
Tr.
name
name
or
first
two
name
his
Nor does
58.
beyond
the
readily
statutory
used
to
factors
ownership
of
the
domain
domain name consist
identify
appear
Resh.
to
of
a
name
legal
Therefore,
weigh
in
favor
the
of
a
finding of bad faith.
Resh owned the domain name before Pro-Concepts acquired its
interest
show
in
that
the
Resh
mark
did
and,
not
Concepts'
predecessor
acquired
exclusive
further,
acquire
in
the
interest
interest
the
in
domain
and
the
facts
before
on
that,
Risk
although there is
prior use,
for
of
the
benefit
offering of
goods
the
all
behalf
when
and
not
or services by Resh and as
mark,
website.
such use appears
mark-holder
of
Court
Pro-
Pro-Concepts
Radar
redirected the website at issue to Pro-Concepts'
the
Resh
Thus,
to have been
any
bona
fide
such factor
three
weighs against a finding of bad faith.
Resh denies
that he acquired the RRE website on behalf
Pro-Concepts' predecessor in interest,
hearing
that
he
acquired
the
RRE
ASC,
and testified at the
website
to
Radar product which he was helping develop.
stated
interest
that
after
he
in the website
acquired
the
RRE
of
protect
Tr.
51.
website,
and prohibited Resh
the
Risk
Resh also
ASC
had
no
from setting up a
redirect or putting company information on the RRE website under
34
ASC's policies which prohibited setting up a website outside the
main company website.
Tr.
53.
Thus,
while there are no facts
suggesting that Resh has ever made a bona fide noncommercial or
fair use of the Risk Radar mark using the site accessible under
the
domain
name
at
issue,
factor
four
only
weakly
weighs
in
favor of a finding of bad faith.
The
fifth
factor
faith in this case.
on
behalf
of
beginning
also
does
not
support
Pro-Concepts'
predecessor
at
in
Pro-Concepts,
redirected the domain name to Pro-Concepts'
Resh disabled the redirect.
domain name and the
finding
of
bad
The domain name at issue was not purchased
employment
termination,
a
timing of
Resh's
interest.
Resh
After
voluntarily
site and,
after his
The prior use of
redirection of
the
the domain
name do not suggest with certainty whether Resh did or did not
intend
own.
to
divert
However,
Radar"
in
its
customers
from
Pro-Concepts'
while the RRE website does
domain name and as
website
to
his
use the phrase "Risk
the header,
it
does not list
any information related to Pro-Concepts nor indicate any product
or services beyond the name "Risk Radar Enterprise," and Resh is
not using the RRE website in a commercial manner.
the
fifth
factor
bears
a
significant
Furthermore,
similarity
to
the
likelihood of confusion factor addressed above in the trademark
infringement
show a
claim
analysis,
on
which
Pro-Concepts
likelihood of success on the merits.
35
failed
to
With
respect
while
Resh's
sell
the
to
the
sixth
representations
RRE
website
factor,
that
to
both
he
the
Court
notes
offered several
ASC
and
that
times
Pro-Concepts
to
would
generally weigh in favor of a finding of bad faith, in this case
the finding is more ambiguous as there is evidence that Resh did
so,
not
for
financial
gain,
as
presented
to
evidence,
attempted to
equal
to
the cost
cases where
to
transfer
owner,
owner had a
the
the site
for
Court,
to
reimbursement.
indicates
the markholder
acquiring and maintaining
the domain name
the mark
name
of
but
the
bad
owner
courts
faith
tries
have
to
that
Resh
for an amount
the domain.
sell
In
the domain name
generally
found
to profit,
intent
The
yet
the
domain
in most
of
those cases the domain name owner had no legitimate use for the
domain name to begin with and they asked a price not based on
compensation but on how much they felt they could get the mark
owner to pay.
F.
App'x 108,
See, Domain Names Clearing Co v. F.C.F.
111
(4th Cir.
2001)
(where
Inc., 16
the domain name owner
did not use the domain or have plans to use the domain name, but
it tried to sell it to the mark owner based on the price of a
high
exposure advertisement);
People
of Animals v. Doughney, 263 F.3d 359,
for
the
Ethical
Treatment
369 (4th Cir. 2001) (where
defendant had no right to the PETA name or mark and encouraged
the mark owner to "'settle'
and 'make him an offer'");
Works,
267
Inc. ,
238
F.3d
at
36
(where
the
domain
Virtual
name
owner
threatened to
sell
the
domain
mark owner bought the rights
Mr.
to
the highest bidder unless
to the domain name).
O'Rourke denied any discussions
purchase of the RRE website.
Tr.
with Resh
24.
Mr.
only initial discussions on the potential
website took place.
Tr.
the
time,
Court
at
this
22.
Thus,
the
the
Furthermore,
over a potential
O'Rourke stated that
"transfer"
of
the RRE
based on the evidence before
sixth
factor
weighs
against
a
finding of bad faith intent to profit.
Regarding
attempted
to
the
hide
suspected alias,
the
his
Pro-Concepts
continued
on
ownership
alleges
Resh
using
by
the registration for a home
ECF No. 4 at 9.
renewed
factor,
"the
Timothy Alston as the domain registrant and by
using an address
father."
seventh
domain
Pro-Concepts has provided a copy of
registration,
continue to be the case.
owned by his
which
ECF No. 29,
shows
that
Ex. A.
these
However,
hearing Resh clarified that the name used to register
website,
Timothy Alston,
at the
the RRE
was actually a name he had previously
used and that his
name changed in high school.
stated reason
using
for
facts
this prior
name
Tr.
59.
to register
His
the RRE
website was that, at the time, Yahoo! did not have the security
in place to protect registrant's information and Resh wanted to
avoid being spammed.
lack
of
a pattern
Tr.
or
59.
history
Nevertheless,
of
such
prior
despite Resh's
conduct,
he
did
provide "material and misleading false contact information when
37
applying
for
the
"fail[ed]
to maintain accurate contact information." 15 U.S.C.
1125 (d) (1) (B) (i) .
registration
Thus,
the
of
the
seventh
domain
factor
name"
tends
to
and
has
weigh
§
in
favor of a finding of bad faith.
The
bad
eighth
faith.
factor,
however,
Specifically,
registered multiple
issue in this case.
domain
does
there
is
names.
not
no
Only
See Lamparello,
support a
evidence
one
finding of
that
Resh
domain name
420 F.3d at 320-21
has
is
at
(finding
no bad faith where the defendant registered only one domain as a
"gripe" site).
It is unclear what weight,
ninth factor,
if any,
should be given to the
which requires the Court to consider the extent to
which the mark incorporated in the domain name is distinctive or
famous under the ACPA.
A mark is
is "widely recognized by
"distinctive and famous"
if it
the general consuming public of
the
United States as a designation of [sic] source of the goods or
services of the mark's owner."
15 U.S.C. § 1125(c)(2)(A).
Pro-
Concepts has not argued that its Risk Radar mark is "distinctive
and
famous"
under
the
ACPA.
Accordingly,
there is nothing
currently before the Court that would enable it to determine how
the ninth factor applies,
in this case.
if at all,
to the bad faith analysis
However, the balance of the preceding factors and
a careful consideration of the facts in this case do not support
a finding of bad faith in and of themselves and it is unlikely
38
that
evidence
as
to
the
ninth
factor
would
be
sufficient
to
require a finding of bad faith.
Specifically,
the
evidence
before
the
absence of any bad faith intent to profit.
any commercial use of
for
the
thus,
well.
benefit
for
the
of
shows
an
Resh is not making
the mark and he obtained the RRE website
the
overall
Furthermore,
Court
product
associated with
benefit
Resh's
of
the
testimony
original
shows
some
the
mark
and,
markholder
basis
as
for
a
reasonable belief that he could use the RRE website based on his
pre-existing
ownership
at ASC and failure
to
domain after acquiring
and Mr.
O'Rourke's
follow up
refusal
regarding the
the Risk Radar mark
to
reimburse
transfer of
the
for Pro-Concepts.
There is no likelihood of confusion, no registration of multiple
domain names, and no attempt to sell the domain for profit. See,
Lamparello at 321.
While there are a few factors that weigh in favor of Pro-
Concepts,
these factors alone are not sufficient to support a
finding of bad faith intent to profit.
As to factor one, Resh
has no trademark or intellectual property rights in the domain
name beyond his ownership of the domain name itself.
Nor does
the domain name consist of a legal name or name readily used to
identify Resh,
factor two.
Factor four weakly weighs in favor
of a finding of bad faith due the Resh's lack of prior bona fide
noncommercial or fair use of the RRE website.
39
Additionally,
Resh's provision of false contact
the
domain name
case,
factor
also
supports
seven.
a
information when registering
finding of
However,
these
bad
are
faith in
the
only
this
factors
weighing in favor of a finding of bad faith and the inference of
bad faith from these factors should not be relied upon based on
the
total
absence
maintenance
of
of
the
bad
RRE
faith
website
in
as
the
acquisition
established
by
and
Resh's
testimony at the hearing.
Pro-Concepts
will succeed on
Pro-Concepts
has
failed
to
make
a
clear
showing
that
the merits of its claim of cybersquatting.
has
failed to show a
likelihood of success
on
it
As
the
merits that would support a prohibitive preliminary injunction,
it has necessarily also failed to show likelihood of success on
the merits
that
would satisfy the more
exacting standard that
applies to requests for mandatory injunctive relief.
3.
The
Court
must
success on Count VI.
his
employment
requiring
him
immediately.
Count VI—Breach of Contract
also
Pro-Concepts'
Pro-Concepts claims
agreement
to
consider
return
supports
a
Risk
Based on the fact that such
action (i.e., the return of the software),
40
of
that Resh's breach of
preliminary
Pro-Concepts'
the more exacting standard to Count VI.
likelihood
Radar
injunction
software
injunction mandates
the Court will apply
To state a
show:
claim for breach of
contract,
"(1) a legally enforceable obligation of a defendant to a
plaintiff;
(2)
the
obligation;
and
(3) injury or damage to
defendant's
the breach of obligation."
(Va.
Pro-Concepts must
violation
or
breach
of
that
the plaintiff caused by
Filak v. George,
594 S.E.2d 610,
614
2004).
(i) Legally Enforceable Obligation
Pro-Concepts argues that its employment agreement with Resh
created
in
Concepts.
entered
Resh
a
legally
Specifically,
into
a
valid,
enforceable
Pro-Concepts
binding,
and
obligation
claims
that
to
Pro-
the parties
unambiguous
employment
agreement in which Resh affirmed that all work performed by him
for Pro-Concepts belongs solely to Pro-Concepts or its clients
and that Resh had no ownership or licensing rights to that work.
ECF No. 4 at 27.
Under Virginia law an employment agreement may
constitute a legally enforceable obligation,
however, when such
an agreement contains restrictive covenants,
it is the province
of
the Court
enforceable.
Resh's
to determine whether
the
restrictive covenant
is
Simmons v. Miller, 544 S.E.2d 666, 678 (Va. 2001).
contract
contains
restrictive
covenants
(including
a
confidentiality clause and a non-compete clause), however, these
covenants do not appear to be at issue in this case.
Rather,
Pro-Concepts seeks to enforce its work products clause, 3 10 and
termination clause, 1 13.
Mot. for Prelim. Inj. Memo, Ex. 2 at
41
4-5, ECF No. 4.
performed
for
Clients."
Id.
The work products clause states that "all work
Pro-Concepts
belongs
at
The allegedly breached portion of
4,
SI
10.
the termination clause states
to
Pro-Concepts
or
its
that:
Upon termination of employment,
[Resh]
agree[s]
to
return to Pro-Concepts all Company or Client property
in my possession, including but not limited to any
computers, . . . and other tangible manifestations of
Confidential
Information
(and
all
copies
and
reproductions thereof)
Id.
this
9[
at
5,
91
13(b).
Resh
suggested
contract upon termination,
13(c),
specifically states
that
however
that
he was
the
released
termination clause,
termination does
not
Resh from the obligations set forth in the agreement.
Thus,
as
the
employment
enforceable obligation,
agreement
did
from
create
release
Id. at 5.
a
legally
we next turn to whether that obligation
was breached.
(ii) Breach of Obligation
Pro-Concepts
argues
that
Resh
breached
his
employment
agreement by retaining the Risk Radar Enterprise software after
his
termination.
appears
company
Specifically,
to violate 91
or
termination.
client
retention
13 (b) , which requires
property
in
his
of
the
software
Resh to return all
possession
upon
his
Because 91 10 of the employment agreement states
that any work performed for Pro-Concepts belongs solely to Pro-
Concepts
or
its
clients
and
that
42
Resh has no
ownership
or
licensing rights in such work product,
Radar
software
after
beginning
Resh's work on the Risk
employment
with
Pro-Concepts
(including the updates retained on his personal laptop)
appears
to constitute work product that Resh was required to return upon
his
termination.
Resh
testified
at
the
hearing
that
he
has
purged all Risk Radar software from his personal computer except
the files which were taken from ASC at
of
Risk
Thus,
Radar
between
ASC
and
the
time of
Pro-Concepts.
while Resh may have been in violation of
agreement
when
he
left
Pro-Concepts
in
the transfer
Tr.
60,
65-66.
the employment
possession
of
the
software code, as Resh has since that time purged all copies of
the
work
Concepts'
performed
Cease
for
and
Pro-Concepts,
Desist
letter
as
of
instructed
August
10,
by
2012,
Prothe
mandatory relief requested is no longer possible with regards to
those copies
of
the software and the question is moot
purposes of a preliminary injunction.
No.
Compl. , Ex.
for the
5 at 2,
ECF
1.
However,
Resh
software
version
servers.
Thus,
testified that he still had a copy of the
and
files
which
were
copied
from
the
ASC
whether Resh is in breach of the employment
agreement hinges on Pro-Concepts'
version of the Risk Radar software.
property rights in the ASC
This is a factual dispute
on which Pro-Concepts has offered testimony and the affidavit of
Mr. O'Rourke, which states that "Risk Radar Enterprise and Risk
43
Radar
2012
are
the
property
of
Pro-Concepts,
owns and controls all proprietary rights
No.
4,
Ex.
1
violation of
they
have
91
5.
Pro-Concepts
bears
and
in the software."
the
burden
the obligation and they have done
shown
that
Resh
was
and
is
Pro-Concepts
still
so,
in
to
ECF
show
a
inasmuch as
possession
of
software in which Pro-Concepts has proprietary rights.
(iii) Damages
To
breach
show
of
suffered
that
it
contract
injury
obligation.
is
likely
claim,
or
to
succeed on
Pro-Concepts
damage
must
because
of
Filak, 594 S.E.2d at 614.
essential
element"
and
the merits
establish
Resh's
of
that
breach
a
it
of
"Proof of damages is an
Pro-Concepts
"bears
'the
burden
of
proving with reasonable certainty the amount of damages and the
cause
from
which
they
resulted;
speculation
cannot form the basis of recovery.'"
Ass'n,
Inc.
v.
Batt,
Shepherd v. Davis,
this
burden,
and
circumstances
least
an
intelligent
739
(Va.
required,
(Va.
2012)
to
and
permit
the
probable
there
"Proof
must
with
be
at
44
fact-finder
estimate
Hall,
mathematical
least
of
(quoting
To satisfy
"furnish evidence of
(quoting Dillingham v.
1988)).
but
699
574 S.E.2d 514, 524 (Va. 2003)).
Pro-Concepts must
Id.
conjecture
Manchester Oaks Homeowners
732 S.E.2d 690,
facts
sustained."
and
sufficient
to
the
make
at
damages
365 S.E.2d 738,
precision
sufficient
is not
evidence
to
permit
an
damage."
intelligent
and probable
estimate of
the amount
of
Id.
Pro-Concepts
has
argued
that,
as
a
result
of
Resh's
retention of all software updates performed during the course of
his
employment,
semi-annual
Concepts]
client
has
attempt
to
no
forced
use
this
to
one
been
update.
spend
the
least
ECF No.
president,
that,
at
longer
expires."
support
been
has
software
recreate
Additionally,
[to]
Pro-Concepts
has
[Pro-Concepts']
4
argument
at
27-28.
is
a
"As
after Resh's termination,
result,
of
dollars
announced
services
The only
ECF No.
complete
programmed
once
by
its
its
[Pro-
in an
[Resh].
intention
its
contract
evidence offered
sworn affidavit
Shawn T. O'Rourke.
to
a
thousands
changes
client
unable
to
from Pro-Concepts'
4 Ex.
1,
9[ 22
(noting
Pro-Concepts discovered that the
versions of Risk Radar Enterprise and Risk Radar 2012 remaining
with the company were nonfunctional and lacked months of
work,
requiring Pro-Concepts
to
hire
a
replicate
hearing,
new
Mr.
programmer
O'Rourke
to
Resh's
"spend thousands of dollars"
testified
that
Resh's
it
work).
had
taken
to
At
the
a
new
developer from August 1st to the middle of September to "make a
build of the software" and that new issues with old versions of
the software,
cropped up.
for which they don't have the original code, have
Tr. 27-28.
However, Pro-Concepts failed to provide
evidence as to the actual cost or as to the developer's salary.
45
Although
Pro-Concepts'
argument
and
O'Rourke's
affidavit
provide some basis upon which the Court could estimate damages,
the
evidence
permit
an
suffered
that
currently
"intelligent
to
the
date.
true
before
and
is
Court
probable
Further,
damage
the
is
estimate"
Pro-Concepts'
not
software after his termination,
insufficient
from
Resh's
left.
codes
Tr.
and
56.
Mr.
that
those
O'Rourke
of
were
confirmed
likelihood
contract claim,
of
success
on
still
that
the merits
the
Resh testified at
he
brief walk-through of the file storage with Resh.
show a
of
lack of copies
the source code,
files
damages
indicate
retention
but Pro-Concepts'
the hearing that he saved copies
the
arguments
of the software build code and updates to it.
and build
of
to
of
runtimes,
there when
he
remembered
Tr. 36.
a
To
their breach
of
Pro-Concepts must show "injury or damage to the
plaintiff
caused
S.E.2d at
614.
by
the
breach
(emphasis
added)
of
As
obligation."
the
Filak,
594
files must have been
present for the file storage demonstration to have taken place
and Resh has testified that he did not remove them, Pro-Concepts
has failed to show at this stage of the litigation that its lack
of software build codes and source codes is due to Resh's breach
of the obligation.
(iv)
Summary
While the Court finds that Resh's employment agreement with
Pro-Concepts
created
a
legally
46
enforceable
obligation,
Pro-
Concepts did not adequately flesh out the amount of damages they
suffered and has
Resh's
actions,
updates'
failed
failed
to
show
especially
as
that
Resh
source code at Pro-Concepts'
to
clearly
show
that
the
it
is
damages
purged
his
request.
likely
were
copy
due
of
to
the
Pro-Concepts has
to
succeed
on
the
merits of Count VI under the more exacting inquiry applicable to
requests for mandatory injunctive relief.
4.
Pro-Concepts
Count VII
in
Concepts
Count VII—Conversion
must
order
claims
to
also
show
a
likelihood
succeed on its
that
Resh's
of
success
injunction motion.
conversion
of
on
Pro-
Pro-Concepts'
proprietary software supports a preliminary injunction requiring
him to immediately return Pro-Concepts' Risk Radar software.
with Pro-Concepts' breach of contract argument,
that,
because
return
of
the
the
relief
sought
software),
the
mandates
Court
it would appear
action
should
As
(i.e.,
apply
the
the
more
exacting standard to Count VII.
Under Virginia
law,
a person is
liable
for
conversion for
"the wrongful exercise or assumption of authority over another's
goods,
depriving the owner of their possession, or any act of
dominion
wrongfully
exerted
over
property
inconsistent with, the owner's rights."
S.E.2d at 679.
Concepts]
Thus,
in
denial
of,
Simmons v. Miller, 544
"to assert a claim for conversion,
must prove by a preponderance of
47
or
the evidence
[Pro-
(1)
the
ownership or right to possession of the property at the time of
conversion and (2)
by
[Resh]
over
Concepts]
of
Pishvaian,
the wrongful exercise of dominion or control
[Pro-Concepts']
property,
Airlines
possession."
155 F. Supp. 2d 659,
Pro-Concepts
argues
thus
Reporting
664
that,
(E.D.
since
possessed sole and complete rights
to
Va.
depriving
[Pro-
Corp.
v.
2001).
its
inception,
it
has
the Risk Radar Software.
Although Pro-Concepts has provided the Court with the trademark
registration
and
assignment,
Pro-Concepts
has
submitted
physical evidence concerning the Risk Radar software.
the only evidence currently before
testimony at
the hearing and his
the Court
is
As above,
Mr.
sworn affidavit,
little
O'Rourke's
which states
that "Risk Radar Enterprise and Risk Radar 2012 are the property
of
Pro-Concepts,
and
Pro-Concepts
controls
all
4, Ex. 1 91 5.
The
affidavit goes on to state that Resh was hired on March 30,
2009
proprietary rights in the software."
owns
and
ECF No.
to work on the Risk Radar Enterprise software.
on these representations,
a
property
right
in
the
Resh's employment began,
Id.
91 10.
Based
it would appear that Pro-Concepts had
Risk
Radar
Enterprise
software before
a right that has allegedly continued to
the present time.
The
prong
of
analysis
Court
the
in
should
apply
conversion
Count
VI.
the
inquiry
same
that
Specifically,
48
analysis
it
applied
the
to
the
to
employment
second
the breach
agreement
states
work
that
Resh
performed
return
all
retaining
has
for
such
of
computer
Concepts
that
he
control
left
Resh
no
or
(91
his
Radar
his
licensing
10)
and
Enterprise
over
Resh
Pro-Concepts'
did
over
property
because
working
any
him
software
however,
with
in
to
(9(13 (b) ) .
conduct,
its
rights
requires
termination
termination,
control
Pro-Concepts
proprietary software,
Furthermore,
Risk
or
Resh's
of
upon
after
exercised dominion
software).
ownership
Pro-Concepts
work
copies
personal
no
on
his
wrongfully
property
(the
deprive
Pro-
not
Resh
copies
including the build codes,
In
testified
of
their
runtimes,
etc.
as the Court finds from Resh's sworn testimony that
longer
has
possession
of
such
software,
beyond
the
original code from ASC,6 it need not consider the mandatory
injunctive relief under Counts VI and VII with regard to any
software beyond
while
the
code still
in his
possession.
Therefore,
the Court is satisfied as to Pro-Concepts' ownership or
possessory rights
in
show that
wrongful
Concepts
Resh's
of
the
possession.
clearly shown that
software,
exercise
Pro-Concepts
of
Accordingly,
dominion
has
failed
deprived
Pro-Concepts
has
to
Pronot
they are likely to succeed on the merits of
6 Resh testified that he no longer has possession of any other version
of the Risk Radar software as all other versions in his possession
were purged from his computer as instructed by Pro-Concepts' Cease and
Desist letter of August 10, 2012. Tr. 65-66.
However, Resh testified
that he still had a copy of the software version and files which were
copied from the ASC servers.
Tr. 60, 65-66.
49
Count VII under the more exacting inquiry applicable to requests
for mandatory injunctive relief.
5.
Based
Court,
to
on
the
Conclusion
evidence
and
currently
before
the
Pro-Concepts has failed to clearly show that it is likely
succeed
on
Therefore,
the
the
mandatory
merits
Court
injunctive
as
will
relief
failed to meet this standard,
factors,
to
Counts
not
I,
grant
sought.
III,
the
VI,
and
VII.
prohibitive
Pro-Concepts
Since
and
has
even if it satisfied the remaining
the Court cannot grant the injunctive relief requested.
However,
address
argument
in
the
interest
these factors
of
clarity,
the
Court
will
briefly
as well.
B. Likelihood of Irreparable Harm (Absent Preliminary
Injunction Relief)
In addition to showing likelihood of success on the merits,
a
showing
of
the
likelihood
of
irreparable
injunctive relief is also required.
mere possibility of
irreparable harm is
irreparable harm must be
prong of
Corp.,
the inquiry.
952
plaintiff
F.2d
can
that
not
555 U.S.
enough.
"actual and imminent"
Direx Israel,
802,
show
Winter,
812
(4th
Ltd.
Cir.
"irreparable
injury
v.
at 22.
Id.
A
The
to satisfy this
Breakthrough Med.
1991).
injury
absent
Generally,
is
suffered
a
when
monetary damages are difficult to ascertain or are inadequate."
Multi-Channel
TV
Cable
Co.
v.
50
Charlottesville
Quality
Cable
Operating
Co.,
22
Danielson v.
Local
Additionally,
F.3d
the
Winters)
that
creates
the
546,
275,
479
Fourth
"when
551
F.2d
failure
of
Cir.
1033,
Circuit
the
possibility
(4th
1973)).
stated
loss
(albeit
before
preliminary
grant
permanent
(quoting
(2d Cir.
1037
has
to
1994)
relief
of
customers
to
a
competitor or the loss of goodwill, the irreparable injury prong
is satisfied."7
often
Id.
require
potential
Courts considering this prong post-Winter
specific
loss
of
customers
irreparable injury.
v.
See,
Landow Aviation
Va.
Jan.
14,
requirement
Ltd.
a
e.g.,
This
not
to
specific
say
losses,
but
goodwill
2009
WL
approach
plaintiff
that
the
actual
before
or
finding
Signature Flight Support Corp.
show
likely and not merely possible.
is
concerning
or
P'ship,
2009) .
that
evidence
111603,
is
555 U.S.
is
rather
Pro-Concepts
(E.D.
with
irreparable
Pro-Concepts
that
*2-5
consistent
that
Winter,
at
harm
at 22.
required
to
the
is
This
establish
must
present
sufficient evidence for the Court to find that it is likely that
such
losses
have
occurred
or
will
occur
absent
preliminary
injunctive relief.
Pro-Concepts argues that this Court may presume irreparable
injury
because
Resh
is
seeking
to
confuse
and
mislead
Pro-
7 The Court notes that this case predates Winters and therefore, it is
likely
that
the
Court
must
customers or good will, but
conduct alleged in this case.
find
not
that
such
51
only
a
losses
possibility
are
likely
of
given
lost
the
Concepts' customers and, under Fourth Circuit law, a presumption
of irreparable injury applies in trademark infringement actions
where
the Court
finds
a
likelihood of confusion.
17 (citing Scotts Co. v. United Indus. Corp.,
(4th Cir. 2002)).
As a threshold matter,
ECF No.
4 at
315 F.3d 264, 273
it is unlikely that
the presumption alleged in the context of trademark infringement
remains
viable
Specifically,
after
the
Supreme
the Supreme Court
Court's
decision
held that
in
Winter.
the plaintiff bears
the burden to clearly show entitlement to preliminary injunctive
relief and that,
to satisfy this burden,
a
irreparable
likelihood of
555
U.S.
at
22.
presumption of
Resh's
Thus,
evidence
Concepts'
ability
Concepts'
good will,
Having
to
presented
obtain
determinations
requirement
possibility.
should
and
not
the
to
retain
of
these
and his
the
the
facts
in
of
the
on
effect,
customers
should
on
and
Pro-
on
Pro-
the website,
then purging at
Risk
Radar
context
of
software.
the
above
regarding likelihood of success on the merits
various claims,
of
being
a
confuse
the Court
retention,
copies
rely
likely to
Instead,
as
Winter,
likelihood that
of both Resh's maintenance of
request,
considered
Pro-Concepts'
Court
customers.
www.riskradarenterprise.com,
Pro-Concepts'
a
intentional or not—are
or mislead Pro-Concepts'
the
the
not
irreparable injury based on
actions—whether
consider
harm,
the plaintiff must show
of
the harms alleged do not meet the
"actual
and
52
imminent"
and
irreparable
absent
the
Furthermore,
requested
as
preliminary
injunctive
relief.
Resh has voluntarily taken the RRE website down
pending the outcome of this case
(at
the request of the Court) ,
there is no opportunity for confusion among potential customers.8
Additionally,
except
not
as Resh is no longer in possession of any software
the version which was
shown
that
the
relief
copied from ASC,
requested
would
Pro-Concepts has
remedy
the
harm
alleged with regard to the software.
C.
The
third
prong
Balance of Equities
of
the
preliminary
injunction
analysis
requires Pro-Concepts to establish that the balance of equities
tips in its favor.
equities
between
Winter,
the
competing claims of
555 U.S. at 20.
parties,
the
Court
480 U.S.
24
(quoting Amoco Prod.
531,
542
"must
balance
the
injury and must consider the effect on each
party of the granting or withholding of
Id. at
In considering the
Co.
the relief requested."
v. Village of Gambell,
AK,
(1987)) .
Pro-Concepts has alleged several injuries, including damage
to its goodwill and the reputation of its Risk Radar mark based
on
Resh's
maintenance
Additionally,
of
his
own
website
using
the
mark.
Pro-Concepts has alleged that Resh's retention of
8 While the Court acknowledges Mr. Byers' submitted declaration, ECF
No. 29, regarding Resh's renewal of his registration of the RRE
website, the fact remains that Resh has voluntarily taken down the RRE
website and the RRE website remains inaccessible.
53
the only working copy of Risk Radar Enterprise software has left
Pro-Concepts
software
unable
update
thousands
work.
However,
copies
of
comply
obligations
expend
have
to
of
with
and
dollars
in
has
an
Radar
current
required
attempt
testimony from Resh
any Risk
its
to
indicates
software beyond
and that when he was terminated,
contractual
Pro-Concepts
recreate
Resh's
that he does
the ASC
to
not
version
he left working copies at Pro-
Concepts .
On
the
other
hand,
there
is
no
evidence
before
the
Court
concerning any injury Resh might suffer if the Court grants the
relief sought.
mark,
nor
in
agreement).
than
the
Risk
Radar
software
allegedly
wrongful
(not the Risk Radar software)
claim
Pro-Concepts
(per
his
employment
Resh does not assert any injury in his motion other
Pro-Concepts'
property
Resh's
Resh apparently has no rights in the Risk Radar
is
thus
seeks.
apparently
Therefore,
retention
certain
after Resh's termination.
unrelated
on
of
the
to
facts
the
relief
that
currently before
the Court, the relief sought would require Resh to cease using
Pro-Concepts'
proprietary
appear
to be
mark
and
software
to
still
injuries
that
balance of the equities.
in Pro-Concepts'
return
in
all
his
copies
possession.
of
Pro-Concepts'
These
do
not
the Court should countenance in its
Therefore,
favor.
54
this prong at least weighs
D.
The
Supreme
requirement,
Court
stating
discretion,
courts
Public
has
emphasized
that,
of
Interest
"[i]n
equity
the
public
exercising
should
pay
interest
their
particular
sound
regard
for
the public consequences of employing the extraordinary remedy of
injunction."
notes,
Winter,
the purpose
555
of
at
24.
As
trademark is
Pro-Concepts
to protect
correctly
the public
from
confusion "as to the identity of the enterprise from which goods
and services
(4th
Cir.
are purchased."
1976) .
violation
of
A
the
preliminary
Lanham
Act
preventing
future
Steakhouse,
43 F.3d at 939.
when
an
401,
404
public
customers
injunction
deceptively.
an
Cir.
facts
2005)
in
evidence
from
F.2d
currently before
down
for
before
the
the
public
1185
further
interest
misled."
Lone
by
Star
The public interest is also served
trademarks
from
(unpublished).
the
enforcement
being
used
145 Fed.
App'x
Additionally,
of
at *16.
the Court,
valid
contracts.
However,
the public
the
based on
interest
does
favor as Resh has willingly taken the
duration
Court
1181,
preventing
"the
being
2012 WL 966028,
not weigh in Pro-Concepts'
website
540
injunction
serves
prevents
interest
Western Indus.-North,
the
Foy,
Bowe Bell & Howell Co. v. Harris,
(4th
has
AMP v.
of
of
this
actual
case
or
and
there
potential
is
no
confusion.
While the public interest in the enforcement of valid contracts
does weigh in Pro-Concepts'
favor,
55
this
is
somewhat moot as
the
relief
they request
is,
Resh's
compliance
with
Particularly
in
view
for the most
their
of
the
own
part,
unavailable due
cease-and-desist
countervailing
Resh's conduct with regard to the RRE website,
the public
interest
does
not
weigh
in
favor
to
letter.
explanation
for
it appears
that
of
a preliminary
injunction.
IV.
This
record,
findings
instant
Court's
and
the
for
analysis
facts
any
motion.
CONCLUSION
is
constrained
discussed above
purpose
other
Similarly,
the
than
by
do not
the
Court's
the
preliminary
represent
resolution
ruling
is
factual
of
not
the
a
predictor as to the likelihood that either party will ultimately
prevail in this case,
dictate
the
final
as further factual development will likely
resolution.
standard not having been met,
The
preliminary
injunction
the Court finds that an injunction
should not issue at this early stage of the proceedings.
Based
on
the
detailed
analysis
above,
the
Plaintiff's motion seeking preliminary injunction.
56
Court
DENIES
The Clerk is REQUESTED to send a copy of
this Opinion and
Order to all counsel of record.
It is SO ORDERED.
/./•ffll&feMark S.
UNITED
Norfolk, Virginia
October 3l\
, 2013
57
Davis
STATES DISTRICT JUDGE
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