The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court ruling imposing a mandatory injunction requiring transfer of certain domain names to the trademark rights holder. Jysk Bed’N Linen, Inc. v. Monosij Dutta-Roy, Case No. 13-15309 (11th Cir., Dec. 16, 2015) (Tjoflat, J.).
Jysk has operated under the common law trademark BY DESIGN since 1990. In 1999, Jysk contracted with several people, including Monosij Dutta-Roy, to create an online retail site. Under the contract, Dutta-Roy was instructed to register the domain name bydesignfurniture.com, listing Jysk as the owner. However, when Dutta-Roy registered the domain in April 1999, he listed himself, not Jysk, as the owner.
After the relationship between Jysk and the group of contractors fell apart in 2003, one of the members took over management of the bydesignfurniture.com website through her own company. In April 2012, Dutta-Roy’s registration of the bydesignfurniture.com domain expired, and the Jysk website went down. Jysk immediately discovered that it did not own the domain and asked Dutta-Roy to re-register the domain in Jysk’s name. Instead, Dutta-Roy re-registered the domain in his own name along with three other domains containing the BY DESIGN trademark. Dutta-Roy then offered to transfer the four domains to Jysk in exchange for compensation for work performed under an alleged partnership agreement with Jysk’s predecessor. As no such agreement existed, Jysk rejected Dutta-Roy’s offer and instead filed a lawsuit under the Anticybersquatting Consumer Protection Act (ACPA).
The ACPA was enacted to prevent cybersquatters, namely, the registration of domain names containing trademarks for the purpose of holding them ransom from the trademark owner or causing consumer confusion by diverting customers to other website(s) through use of the owner’s trademark. Under the ACPA, a person is liable to a trademark owner if that person registers a domain that is identical or confusingly similar to a distinctive trademark and has a bad-faith intent to profit from the domain.
The district court determined that Dutta-Roy registered and re-registered the domains in bad faith and ordered him to transfer the domain names to Jysk. In reviewing Dutta-Roy’s appeal, the Court examined the four preliminary injunction factors for an abuse of discretion, namely, the likelihood of success on the merits, irreparable injury absent injunction, the potential damage to the moving party vs. the non-moving party and consideration of public interest.
As for the substantial likelihood of success on the merits, the 11th Circuit considered whether Dutta-Roy’s re-registration of the bydesignfurniture.com domain constituted “registration” of the domain under the ACPA and examined divergent answers to the question by the U.S. Courts of Appeal Third and Ninth Circuits—the 3d finding that re-registration of the domain falls within the ACPA’s meaning of “registration” (Schmidheiny v. Weber), with the 9th coming to the opposite conclusion (GoPets v. Hise). Finding the language of the ACPA to be “plain and unambiguous,” the court agreed with the 3d Circuit and held that “a re-registration is, by definition, a registration.”
The 11th Circuit then determined that Jysk was likely to succeed on the merits of its ACPA claim. First, there was no dispute that the domain names at issue were registered by Dutta-Roy, nor was there any dispute that the domains were identical or confusingly similar to the BY DESIGN trademark, of which Jysk was the established owner. Second, the 11th Circuit identified at least five of the nine “bad faith” factors under the ACPA that were relevant to Dutta-Roy’s registration of the domain names including the fact that the domains were never used by Dutta-Roy for a bona fide offering of goods and services, and that Dutta-Roy demanded payment for the domain names.
The 11th Circuit quickly affirmed the district court’s assessment with regard to the remaining preliminary injunction factors, finding no potential harm to Dutta-Roy and affirming the public interest by placing the domains in the hands of the rightful owner. The 11th Circuit confirmed that “Dutta-Roy’s actions are those of a cybersquatter” and affirmed the lower court’s issuance of the preliminary injunction.