By Robert Margolis, J.D.
The federal district court in Oakland has issued a preliminary injunction against Individuals and entities, who allegedly created websites and marketed various services under names such as "g0daddydesigns," from operating and using the websites and using GoDaddy’s trademarks and marks confusingly similar to them. The court also denied the defendants’ motion to dismiss GoDaddy’s various Lanham Act and California state law claims (Go Daddy Operating Co., LLC v. Ghaznavi,February 28, 2018, Hamilton, P.).
Go Daddy Operating Company, LLC, sued two individuals, Usman and Salman Ghaznavi (a/k/a Usman and Salman Anis), along with Silicon Valley Graphics (SVG) and several unidentified "Doe" defendants for injunctive relief and damages arising from alleged unauthorized use of GoDaddy’s trademarks. Defendants are alleged to have used GoDaddy’s trademarks, and marks confusingly similar to them— such as g0daddydesigns—on several websites advertising logo design, business design, and website design services. Defendants allegedly contacted GoDaddy customers and non-customers to solicit business based on false claims of affiliation with GoDaddy. GoDaddy sued the defendants for trademark infringement, false designation of origin, trademark dilution, and cybersquatting, all under the Lanham Act, as well as for various state and common law claims.
The defendants moved to dismiss the complaint on several grounds, and GoDaddy sought preliminary injunctive relief. As a preliminary matter, the court denied Salman’s motion to quash service of process on him and deferred ruling on his motion to dismiss for lack of personal jurisdiction (he claimed to live in Pakistan), ordering the parties to engage in jurisdictional discovery. The motions proceeded against the other two defendants.
Trademark infringement. The court found GoDaddy’s allegations sufficient to state a trademark infringement claim against Usman and SVG. GoDaddy alleged, for example, that an email from "g0daddydesigns.com" was sent "On Behalf of GoDaddy," that the domain hosted a website displaying infringing marks, and that the domain was hosted by an account paid for by Usman and registered to an address connected to the defendants. While the defendants contended that they could not be tied to the infringement, the court held otherwise, highlighting allegations that: (1) the defendants sought to disguise their identities when registering domains; and (2) they were tied to the same addresses to which several of the domains at issue were registered. Though GoDaddy pleading of SVG’s actions was relatively sparse, the court found sufficient GoDaddy’s allegations tying SVG to an address connected to Usman and that SVG’s website was registered by the same account that registered several of the allegedly-infringing domains.
GoDaddy also sufficiently alleged "use in commerce," according to the court, based solely on the domain registrations. In addition, GoDaddy pointed to confusingly similar images to GoDaddy’s registered marks on defendants’ websites and in email communications advertising services in direct competition with GoDaddy’s own services.
False designation of origin. The same allegations described above sufficed to state a claim for false designation of origin against Usman and SVG, the court held.
Trademark dilution. Similarly, the court denied Usman and SVG’s motion to dismiss the trademark dilution claim, rejecting their argument that GoDaddy failed to allege that they were "making commercial use" of GoDaddy’s trademarks in commerce. The court cited several of GoDaddy’s allegations, including that the defendants: (1) operated websites "confusingly related" to GoDaddy’s, which displayed the marks to siphon traffic from GoDaddy’s websites; (2) registered confusingly similar domain names to GoDaddy’s; (3) made public communications purporting to be related to GoDaddy; and (4) paid for several of the accounts.
Cybersquatting. GoDaddy’s allegations that the defendants "registered, trafficked in, or used" certain domains, which contain GoDaddy’s protected marks or confusingly similar marks, and that defendants acted with bad faith intent to profit from the trademarks were sufficient to state a claim under the Anti–Cybersquatting Consumer Protection Act, the court also held.
Preliminary injunction. The court granted GoDaddy’s motion for a preliminary injunction, finding that GoDaddy’s declarations provided sufficient evidence that it was likely to succeed on the merits and would suffer irreparable harm absent the injunction. While the defendants did not dispute that GoDaddy was likely to succeed on the merits against some defendant, they argued that GoDaddy could not tie them to the conduct at issue. As noted above, the court rejected that argument in denying the motion to dismiss, and the same allegations cited, which GoDaddy supported with evidence in moving for the injunction, established "serious questions going to the merits" for GoDaddy.
GoDaddy also established irreparable harm due to reputational harm and loss of goodwill. GoDaddy submitted the declaration by an employee, who stated that GoDaddy has received several customer complaints based on communications originating from the domains established by defendants. The court also rejected the defendants’ argument that GoDaddy’s size mitigates against a finding that it is immune from suffering irreparable reputational harm.
The court thus enjoined the defendants from "[o]perating, registering, continuing to use, continuing to display GoDaddy trademarks upon, siphoning traffic from, generating sales, leads, or internet traffic from, or otherwise continuing to utilize in any manner, any domain containing the words ‘go’ and ‘daddy,’ or domains using a combination of characters creating a confusingly similar display, for example containing ‘g0’ rather than ‘go.’"
The case is No. 4:17-cv-06545-PJH.
Attorneys: Nathan Dooley (Cozen O' Connor) for GoDaddy Operating Co., LLC. Brenda Ann Prackup (Law Office of Brenda A. Prackup, A Professional Corp.) for Usman Ghaznavi.
Companies: Go Daddy Operating Company, LLC; Silicon Valley Graphic, LLC
MainStory: TopStory Trademark TechnologyInternet CaliforniaNews
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