Virginia Lawyers Weekly//November 14, 2022
Virginia Lawyers Weekly//November 14, 2022//
Where GoSecure owns the mark GOSECURE and operates in the cybersecurity space, a man was liable for trademark infringement for using GOSECURE on his website, blog and Twitter account, all of which contained information about cybersecurity services and goods.
GoSecure Inc. has raised a federal trademark infringement claim under the Lanham Act against Billa Bhandari for his use of the incontestable mark GOSECURE. Defendant has raised a counterclaim of malicious prosecution for plaintiff’s previous arbitration action against him under Uniform Domain-Name Dispute-Resolution Policy, or UDRP, proceedings. Both parties have filed motions for summary judgment.
To prove a trademark infringement claim under 15 U.S.C. § 1114(1)(a), a plaintiff must demonstrate (1) that it owns a valid and protectible mark and (2) that the defendant’s use of a reproduction, counterfeit, copy or colorable imitation of that mark creates a likelihood of confusion. Only the second element is at issue here.
It is undisputed that defendant used an identical mark to GOSECURE in several contexts, including his website, blog, Twitter account, email and foreign ventures. It is undisputed that at one point in time, his website sold cybersecurity goods and services, the same market covered by plaintiff’s trademark registration. It is undisputed that his blog offers information on cybersecurity developments. It is undisputed that his Twitter profile contains information about cybersecurity services and goods.
The record also shows that defendant’s blog and Twitter account were directly linked to his website, and both the blog and Twitter account remained accessible to web users even after plaintiff obtained trademark rights in 2016. Therefore, the court finds that web users encountering defendant’s website, blog or Twitter profile would be confused as to their affiliation with plaintiff’s products.
Defendant argues he cannot be held liable for trademark infringement because he stopped selling goods on his website in 2011, which was years before plaintiff registered the trademark. However, a defendant can still be held liable for trademark infringement even if the defendant’s use of the mark does not result in actual sales, so long as the use would cause a likelihood of confusion in connection with the plaintiff’s sale of such goods.
Defendant also argues that he cannot be held liable because plaintiff has not produced evidence that its use of the mark predated any of defendant’s uses. This priority defense fails because defendant has not established that he acquired common law rights in the mark prior to plaintiff’s registration, or that he has continuously used the mark in commerce.
With respect to his assertion of common law rights, defendant has not offered any evidence of market penetration, sales, advertising efforts or secondary meaning as to his use of the mark before plaintiff’s registration. Even if defendant did have such common law rights, he has admitted to having abandoned use of the mark in commerce by 2011. Defendant is thus liable for trademark infringement in relation to his use of the mark on his website, blog and Twitter account.
With respect to defendant’s other uses of the mark, however, the court finds there is either insufficient evidence of infringement, or that any uses overseas are not covered by the Lanham Act. Therefore defendant is entitled to summary judgment as to his uses of the mark in his email and foreign ventures.
Defendant is also entitled to summary judgment as to whether his conduct was willful. Defendant stopped selling goods on his website in 2011 and had no history of selling goods and services on his blog and Twitter page. Moreover, defendant’s website and Twitter page have been unaltered since 2011. His blog has not featured any sales content since 2011.
With respect to the defenses of laches and acquiescence, the court finds that plaintiff is entitled to summary judgment because defendant has provided no evidence that plaintiff brought its trademark infringement claim with unreasonable or prejudicial delay, or consented to defendant’s infringing uses. Next, while plaintiff seeks statutory damages in lieu of actual damages, because plaintiff has not made the requisite showing under either 15 U.S.C. §§ 1117(c)(1) or (2), the court finds it is not entitled to statutory damages. Finally, plaintiff is entitled to a permanent injunction against the defendant.
The court finds that plaintiff’s UDRP action to force the transfer of domain rights was not objectively baseless because plaintiff possessed a registered trademark that was identical to the disputed domain name and was simply seeking to assert its trademark rights. The court also finds that plaintiff did not bring the UDRP action solely to interfere with defendant’s business practices. Plaintiff’s action, even if ultimately unsuccessful, was neither objectively frivolous nor brought in bad faith, and is therefore immunized under the Noerr-Pennington doctrine. Accordingly, plaintiff is entitled to summary judgment on defendant’s malicious prosecution counterclaim.
Plaintiff’s motion for summary judgment granted. Defendant’s motion for summary judgment denied.
GoSecure Inc. v. Bhandari, Case No. 1:21-cv-01222, Oct. 26, 2022. EDVA at Alexandria (Hilton). VLW 022-3-483. 21 pp.