United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
FRANCES H. STACY UNITED STATES MAGISTRATE JUDGE
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.
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
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).
(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).
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.
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).
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
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 ...