Internet Evidence: Whois.com Printout ID’ing Website Owner Is Hearsay But OK on Summary Judgment — Right to SJ Must Be Proved Even if No Opp — Default Alone Insufficient for Default Judgment

Black Point Marine, LLC v. Black Fin Yacht Corp., 2016 U.S. Dist. LEXIS 127699 (M.D. Fla. Sept. 20, 2016):

Introduction

The original Black Fin Yacht Corporation ("Original-BFYC") was a boat manufacturing company that dissolved and was reestablished ("Old-BFYC"). Old-BFYC had an established trademark, U.S. Reg. No. 1500457 ("'One Word' BLACKFIN"). But, [*4]  after a bankruptcy in the late 1990s, its assets, including the "One Word" BLACKFIN mark, were bought and sold from one owner to another. Plaintiff eventually acquired Old-BFYC's assets and the "One Word" BLACKFIN mark. The "One Word" BLACKFIN mark expired and Plaintiff subsequently registered the identical BLACKFIN mark, U.S. Reg. No. 3821920.

While Old-BFYC's assets were being sold from one owner to another and the market for luxury sport fishing boats was dwindling, a new company, BFYC, emerged. It claimed that Plaintiff's BLACKFIN mark was identical to its mark, U.S. Serial. No. 77746747 ("New-BLACK FIN YACHT") and filed a petition to have the BLACKFIN mark cancelled with the United States Patent and Trademark Office ("USPTO"). BFYC also claimed it was the previous owner by assignment to the mark, U.S. Reg. No. 1287835 ("Old-BLACKFIN YACHT"). The Cancellation Proceeding [*8]  is suspended pending a resolution of this action. (Dkt. 43 ¶ 9).

Plaintiff brings this action against BFYC for trademark infringement pursuant to 15 U.S.C. § 1114(1) and Florida common law, against all Defendants for unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), against Leonardo Llaneza, Sr.9 for violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), against BFYC for injury to business reputation and trademark dilution, and against BFYC and Hidromega10 for common law unfair competition. (Dkt. 8).

9   Llanzeza is listed as the registered agent for BFYC. (Dkt. 8-2).

10   Hidromega registered the fictitious name Blackfin Yacht with the State of Florida on April 29, 2014, (Dkt. 8-6), and is listed as an Officer/Director of BFYC,(Dkt. 8-2).

Standard

Default Judgment

Upon entry of a default, the defendant admits the plaintiff's well-pleaded allegations of fact. Nishimatsu Constr. Co., Ltd. v. Houston Nat'l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975).11 The default, however, does not in itself warrant a default judgment. Id. "[T]he well-pleaded allegations in the complaint [must] actually state a substantive cause of action" and there must be "a substantive, sufficient basis in the [*10]  pleadings for the particular relief sought." Tyco Fire & Sec., LLC v. Alcocer, 218 F. App'x 860, 863 (11th Cir. 2007). Even after liability has been established, "[a] court has an obligation to assure that there is a legitimate basis for any damage award it enters . . . ." Anheuser Busch, Inc. v. Philpot, 317 F.3d 1264, 1266 (11th Cir. 2003); Adolph Coors Co. v. Movement Against Racism & the Klan, 777 F.2d 1538, 1544 (11th Cir. 1985) (explaining that damages may be awarded on default judgment only if the record adequately reflects the basis for the award). Under Federal Rule of Civil Procedure 55(b), an evidentiary hearing may be held to determine appropriate damages, but it is not required. See Tara Prods., Inc. v. Hollywood Gadgets, Inc., 449 F. App'x 908, 911-12 (11th Cir. 2011) (citing SEC v. Smyth, 420 F.3d 1225, 1230 n.13 (11th Cir. 2005)).

11   In Bonner v. City of Prichard, Ala., 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), the Eleventh Circuit adopted as binding precedent all decisions of the former Fifth Circuit handed down prior to October 1, 1981.

Summary Judgment

Summary judgment is appropriate where "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "A genuine factual dispute exists only if a reasonable fact-finder 'could find by a preponderance of the evidence that the [non-movant] is entitled to a verdict.'" Kernel Records Oy v. Mosley, 694 F.3d 1294, 1300 (11th Cir. 2012) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986)). "An issue of fact is 'material' if it is a legal element of the claim under the applicable substantive law which might affect the outcome of the case." Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir. 1997) (citations omitted). Facts are viewed and reasonable inferences are drawn in the light most favorable to the non-moving [*11]  party. Scott v. Harris, 550 U.S. 372, 378, 127 S. Ct. 1769, 1774-75, 167 L. Ed. 2d 686 (2007).

If the motion for summary judgment is unopposed, the movant still bears the burden of satisfying the Rule 56(a) requirements and it must be supported by the submitted evidence. See U.S. v. $688,670.42 Seized from Regions Bank Account No. XXXXXX5028, 449 F. App'x 871, 873 (11th Cir. 2011). "The district court need not sua sponte review all of the evidentiary materials on file at the time the motion is granted, but must ensure that the motion itself is supported by evidentiary materials." U.S. v. One Piece of Real Prop. Located at 5800 SW 74th Ave., Miami, Fla., 363 F.3d 1099, 1101 (11th Cir. 2004) (citation omitted). At the least, however, "the district court must review all of the evidentiary materials submitted in support of the motion for summary judgment." Id. at 1101-02 (citing Jaroma v. Massey, 873 F.2d 17, 20 (1st Cir. 1989) (per curiam)).

Discussion

***

Trademark Infringement 15 U.S.C. § 1114, Unfair Competition 15 U.S.C. § 1125(a), Florida Common Law Trademark Infringement, Florida Common Law Unfair Competition

Federal trademark infringement, federal unfair competition, Florida common law trademark infringement, and Florida common law unfair competition are distinct causes of action that share similar elements. See SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77 F.3d 1325, 1334 (11th Cir. 1996) ("To establish a prima facie case in an ordinary [federal] trademark infringement suit, a claimant need only demonstrate that: (1) it enjoys enforceable rights in its mark, and (2) the alleged infringer adopted a mark that is the same or confusingly similar."); PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213, 1218 (S.D. Fla. 2004) (the elements of a federal unfair competition claim include the plaintiff showing that it had rights [*14]  to the mark and "that the defendant adopted a mark or name that was the same, or confusingly similar, to plaintiff's mark such that consumers were likely to confuse the two."); Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1521 (11th Cir. 1991) (holding that the Florida common law trademark infringement and unfair competition claims analysis is the same as the federal trademark infringement analysis). Because the legal standards are essentially the same and/or identical, these claims are analyzed simultaneously. See Contemporary Rest. Concepts, Ltd. v. Las Tapas-Jacksonville, Inc., 753 F. Supp. 1560, 1563 (M.D. Fla. 1991)

As discussed supra, Plaintiff has established that it owns the BLACKFIN mark. Thus, the first element of each claim has been met. See Suntree Techs., 693 F.3d at 1346; PetMed Express, 336 F. Supp. 2d at 1218; Investacorp, 931 F.2d at 1521.

"A defendant, by his default, admits the plaintiff's well-pleaded allegations of fact, is concluded on those facts by the judgment, and is barred from contesting on appeal the facts thus established." Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F.3d 1298, 1307 (11th Cir. 2009) (citations and internal quotations omitted). By virtue of the default, BFYC and Hidromega have admitted that they adopted either the same mark, (Dkt. 8 ¶¶ 31-35), or a confusingly similar mark, (Id. ¶ 41-42), and that consumers were likely to confuse the two, (Id. ¶¶ 44, 68, 75-76). See Eagle Hosp. Physicians, 561 F.3d at 1307. Accordingly, default judgment is due to be entered against BFYC on the federal trademark infringement, federal unfair [*15]  competition, Florida common law trademark infringement, and Florida common law unfair competition claims, and against Hidromega on the claims of federal unfair competition and Florida common law unfair competition. See Eagle Hosp. Physicians, 561 F.3d at 1307; Suntree Techs., 693 F.3d at 1346; PetMed Express, 336 F. Supp. 2d at 1218; Investacorp, 931 F.2d at 1521.

Plaintiff argues that Llaneza engaged in unfair competition with its BLACKFIN mark because he is the "registrant" for the domain name blackfinboats.com and the homepage of the website prominently displays the mark, pictures of boats, and offers "Parts for Old Blackfin." See (Dkts. 8-4, 8-5).

"Domain names are unique." Jysk Bed'N Linen v. Dutta Roy, 810 F.3d 767, 774(11th Cir. 2015) (citing Karl M. Manheim & Lawrence B. Solum, An Economic Analysis of Domain Name Policy, 25 Hastings Comm. & Ent. L.J. 359, 364-65 (2003)). "It is . . . important that [a] trademark owner reserve the domain name closely associated with or identical to its trademark so that it may take advantage of its goodwill." Id. at 774-775. Domain names are managed by the Internet Corporation for Assigned Names and Numbers that oversees third-party registries. Id. at 775. A third-party registry is referred to as the "registrar" and is where the applicant registers the domain name. Id. at 775. The "registrant" of the domain name, is also the owner of the domain name. Id.

Blackfinboats.com has infringed on Plaintiff's mark by using a name similar [*16]  closely associated with Plaintiff's mark and displaying Plaintiff's mark on the site. See Jysk Bed'N Linen 810 F.3d at 774-75; PetMed Express, 336 F. Supp. 2d at 1218.

The document Plaintiff relies on to support that Llaneza adopted its mark is a 3rd party website containing hearsay statements attributing the ownership of blackfinboats.com to Llaneza.13 "When [as the case is here] the moving party has the burden of proof at trial, that party must show affirmatively the absence of a genuine issue of material fact: it "must support its motion with credible evidence . . . that would entitle it to a directed verdict if not controverted at trial." United States v. Four Parcels of Real Prop. in Greene & Tuscaloosa Ctys. in State of Ala., 941 F.2d 1428, 1438 (11th Cir. 1991) (alterations and emphasis in original) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 331, 106 S.Ct. 2548, 2557, 91 L.Ed.2d 265 (1986)). Although the Court has serious questions about the admissibility of the 3rd party website in its current form as evidence, it presumably can be reduced to an admissible form, it is not controverted by Llaneza, and despite ample opportunity for Llaneza to respond to the Plaintiff's motion, he has failed to do so. See id.; Jones, 683 F.3d at 1293-94. Thus, because Llaneza is the owner of a website with a similar name that displays Plaintiff's mark, summary judgment is due to be granted on the unfair competition claim against him.

13   Generally, "inadmissible hearsay cannot be considered on a motion for [*17]  summary judgment." Jones v. UPS Ground Freight, 683 F.3d 1283, 1293 (11th Cir. 2012). But, it may be considered if the statement could be reduced to admissible evidence. Id. at 1293-1294. Thus, "[w]hether [a] statement could be reduced to admissible form at trial - is a necessary condition [before] consideration of hearsay evidence at summary judgment." Id. at n. 37 While a representative from Whois.com is likely without personal knowledge that Llaneza is the registrant of the domain name, presumably a representative from Wild West Domains, LLC, the registrar of blackfinboats.com, could provide admissible evidence that Llaneza is the owner of the site.

Conclusion

Accordingly, it is ORDERED that:

1. Plaintiff's Motion for Summary Judgment and Memorandum of Law is GRANTED against Leonardo Llaneza, Sr on Count II.

2. Plaintiff's Motion for Default Judgment against Black Fin Yacht Corporation and Hidromega, LLC is GRANTED.

3. Plaintiff is directed to submit a brief, not to exceed 10 pages including the certificate of service, in support of its claim for maximum statutory damages against each Defendant and an affidavit detailing its reasonable attorney's fees and costs within fourteen (14) days of the date of this Order.

4. Defendants Black Fin Yacht Corporation, Hidromega, LLC, and [*18]  Leonardo Llaneza, Sr. and their divisions, subsidiaries, owners, officers, agents, employees, successors, assigns, and all those persons in active concert or participation with them are hereby permanently enjoined and restrained from:

(i) making any present or future use of the marks BLACKFIN, U.S. Reg. No. 3821920, New-BLACK FIN YACHT, U.S. Serial No. 77746747, or any other mark confusingly similar to the BLACKFIN mark;

(ii) making any present or future use of the fictitious name Blackfin Yacht or any other name confusingly similar to the BLACKFIN mark;

(iii) making any present or future use of the domain name www.blackfinboats.com or any other domain name confusingly similar to the BLACKFIN mark;

(iv) engaging in activity constituting infringement of Plaintiff's rights in the BLACKFIN mark.

5. The Clerk is directed to terminate all pending motions and ADMINISTRATIVELY CLOSE the file.

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