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Inc. v. Ricks

United States District Court, S.D. Texas, Houston Division

July 18, 2017

BULBS 4 EAST SIDE, INC., d/b/a JUST BULBS, Plaintiff,
v.
GREGORY RICKS, d/b/a MOTHERBOARDS.COM, Defendant.

          MEMORANDUM AND ORDER

          FRANCES H. STACY UNITED STATES MAGISTRATE JUDGE

         Before the Court is Plaintiffs Motion for Summary Judgment for a permanent injunction, to direct transfer from defendant to plaintiff of the domain name www.justbulbs.com (the "Domain Name"), and to determine and award damages, attorney's fees and costs, and other relief the Court deems just and appropriate.

         Plaintiff Bulbs 4 East Side Inc., d/b/a Just Bulb ("Just Bulbs") established in this case he possessed a valid, incontestable trademark registration in JUST BULBS for light bulbs. Additionally, Hon. Judge Melinda Harmon determined Defendant Gregory Ricks ("Defendant" or "Ricks"), individually and d/b/a/ M0THERB0ARDS.COM, as a matter of law engaged in cybersquatting, in violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (the ACPA). Thereafter, by order dated October 12, 2016, the Court granted Just Bulb's motion to amend the complaint to include only claims under the ACPA for cybersquatting.

         Summary Judgment Standard

         The United States Supreme Court has held that Rule 56 of the Federal Rules of Civil Procedures mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish an essential element of that party's case, and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, Ml U.S. 317, 322 (1986).

         Rule 56 (c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). This standard provides that the mere existence of some factual dispute will not defeat a motion for summary judgment. See Krim v. Banc Texas Group, Inc., 989 F.2d 1435, 1442((5th Cir. 1993); Thomas v. Price, 975 F.2d 231, 235 (5th Cir. 1992). Rather, Rule 56 mandates that the fact dispute be genuine and material. Willis v. Roche Biomedical Laboratories, Inc., 61 F.3d 313, 314 (5th Cir. 1995). The substantive law determines which facts are material, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986), and the Court must view these facts and the inferences to be drawn from them in the light most favorable to the opposing the motion. Matsushita Elec. Indus. Co, Ltd. V. Zenith Radio Corp., 475 U.S. 574, 587-88 (1986) (Citing United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)); Kelley v. Price Macemon, Inc., 992 F.2d 1408, 1413 (5th Cir. 1993), cert, denied, 510 U.S. 10433 (1994); Reidv. State Farm Mut. Auto. Ins. Co., 784 F.2d 577, 578 (5th Cir. 1986).

         The party moving for summary judgment bears the initial burden of showing an absence of evidence to support the non-moving party's case. Celotex, 477 U.S. 317 at 322-27. Once this burden has been met, the non-moving party can resist the motion for summary judgment by making a positive showing that a genuine dispute of material fact does indeed exist that it consists of more than bare allegations in briefs and pleadings. Anderson, 477 U.S. at 250. The non-movant must go beyond the pleadings and designate specific facts showing that there is a genuine issue of material fact for trial. Celotex, 477 U.S. at 325. "This burden is not satisfied with some metaphysical doubt as to the material facts, by conclusory allegations, by unsubstantiated assertions, or by only a scintilla of evidence." Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994). Once the parties have submitted evidence of contradictory facts, justifiable inferences are to be drawn in the light most favorable to the non-movant. Anderson, 477 U.S. at 255.

         Even if the standards of Rule 56 are met, a court may deny a motion for summary judgment if, in its discretion, it determines that "a better course would be to proceed to a full trial." Anderson, 477 U.S. at 257; Veillon v. Exploration Services, Inc., 875 F.2d 1197, 1200 (5th Cir. 1989).

         Procedural History

         Plaintiff brought forth three claims against Ricks for Federal Trademark Infringement, Cybersquatting, and violating the Texas Anti-Dilution Statute. Judge Harmon rejected Plaintiffs claims Ricks violated the Federal Trademark Infringement and Texas Anti-Dilution Statute and granted Plaintiffs motion for summary judgment that Ricks engaged in cybersquatting and violated the ACPA. In determining that Plaintiff was entitled to summary judgment on its ACPA claim Judge Harmon discussed the three elements of that claim: (1) its mark is a distinctive or famous mark entitled to protection; (2) [defendant's] domain names are identical or confusingly similar to [plaintiffs] mark; and (3) [defendant] registered the domain names with bad faith intent to profit from them. Texas Int'l Prop. Associates v. Hoerbiger Holding AG, 624 F.Supp.2d 582, 587 (N.D. Tex. 2009). With respect to the first two elements, Judge Harmon determined "Just Bulbs" is a distinctive mark entitled to protection, and Ricks had not contested the Domain Name is identical to Plaintiffs trademark. Judge Harmon's analysis for the third prong then focused on nine non-exclusive factors set forth in TMI, Inc. v. Maxwell, 368 F.3d 433, 436 (5th Cir. 2004). The factors are:

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 use 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 consumers from the mark owner's online location to 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, 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 use, the domain name in the bona fide offering of any goods or services, or the person's prior ...

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