Bogoni v. Gomez

847 F.Supp.2d 519

Paul BOGONI, Plaintiff,

v.Vicdania GOMEZ, Defendant.

No. 11 Civ. 08093.

United States District Court, S.D. New York.

Jan. 6, 2012.

David Dong Ann Lin, Lewis & Lin, LLC, Brooklyn, NY, for Plaintiff.

Vicdania Gomez, New York, NY, pro se.

MEMORANDUM OPINION & ORDER

RICHARD J. HOLWELL, District Judge:

Before the Court is plaintiff Paul Bogoni's motion pursuant to Federal Rule of Civil Procedure 65 for an order preliminarily enjoining pro se defendant Vicdania Gomez and all others acting in concert with her from using various Internet domain names registered to the defendant and associated with the plaintiff's name. For the following reasons, the motion is GRANTED.

BACKGROUND

I. Factual Background

Plaintiff Paul Bogoni is a “prominent real estate investor and philanthropist in the New York metropolitan area.” Compl. ¶ 14 (Nov. 9, 2011), ECF No. 1. Defendant Vicdania Gomez is the owner and registrant of Internet domain names located at paulbogoni.org and paulbogoni.com (the “Domain Names”). See Compl. ¶¶ 6–7. Gomez purchased and registered the Domain Names on or about October 25, 2011, without the plaintiff's authorization. See Compl. ¶¶ 10, 13. The relationship of the parties prior to this litigation is not fully documented in the record, but during oral argument before the Court it became clear that the matter here is one in a series of domestic disputes between them.

The Web site at paulbogoni.org ¹ purports to be written and run by the defendant's minor daughter, Vittoria Gomez.²See Profile (“VFB Profile”), Vittoria's Freedom Blog, http:// www. paulbogoni. org/ profile. html (Oct. 26, 2011), Exh. C to Compl.; see also Compl. ¶ 7 (alleging that paulbogoni.com “was falsely registered in the name of Victoria Bogoni, who is Defendant's minor daughter”). A public notice on paulbogoni.org's “About” page, dated October 26, 2011, states: “Hi, I'm Vittoria and this my first website that my mommy helped me launch in order to begin my journey in making the world a better place.” VFB Profile, http:// www. paulbogoni. org/ profile. html. The page explains that Vittoria's “first stop” in her “journey” is “the basic fundamental freedom granted to us by the constitution which is ‘Freedom of Speech.’ ” Id. The page represents that at an arts institution named “Make Meaning in the Upper West Side of Manhattan,” Vittoria constructed an “Angel” and her mother (the defendant) constructed an “Airplane.” ³Id. Photographs of the Airplane reveal that the object has the name “Bogoni” painted on it in black letters; the Angel does not have any words on its surface. The page concludes by stating: “I will be putting my Angel and Mommy's Jet up for auction soon and donating all proceeds to organizations that aid in the protections of free speech. I promise not steal your money or give it to unscrupulous money managers or lawyers that will lie, cheat and steal it or invest it in Mortgage Backed Securities.” Id. The page concludes, in bold letters: “I will am [sic] also selling this domain name www. PAULBOGONI. ORG and www. PAULB 0 G 0 NI. COM for $1 Million (ONE MILLION DOLLARS) each.” Id.; see Compl. ¶ 10.

Aside from the Profile page, Vittoria's Freedom Blog hosts only two items. The first, posted October 25, 2011, reproduces the text of the First Amendment. See First Post, Vittoria's Freedom Blog, http:// www. paulbogoni. 0 rg/ blog/ 1/ first- blog. html (Oct. 25, 2011). The second, posted December 13, 2011, includes a photograph of the “Airplane,” or “Jet,” see Exh. A to Answer, ECF No. 8, and is titled “For Sale!! Call Vicky Gomez 917–596–4441.” For Sale, Vittoria's Freedom Blog, http:// www. paulbogoni. Org/ blog/ 2/ for– sale– call– vicky– gomez– 917– 596– 4441. html (Dec. 13,

2011).

Up to the date of the filing of the Complaint, the plaintiff alleges, Gomez “ha[d] not made any legitimate noncommercial or fair use of the Domain Names” and “ha[d] not used the Domain Names in connection with any bona fide offering of goods and services.” Compl. ¶ 16. The plaintiff further alleges that Gomez's “conduct has caused [him] to lose control over the reputation and goodwill associated with this personal name, both for personal and business purposes, and he has suffered and continues to suffer other immeasurable damages.” Id. ¶ 17. Without an injunction, the plaintiff represents, he “will suffer irreparable harm because the damages sustained will be immeasurable, unpredictable, and unending.” Id.

II. Procedural Background

On November 9, 2011, the plaintiff filed the initial Complaint in this matter in U.S. District Court for the Southern District of New York. The next day, Judge Robert W. Sweet, the District's on-duty Part I judge, endorsed an Order to Show Cause for Preliminary Injunction (the “Order”) and set a hearing for November 21, 2011.⁴ The Court later adjourned that hearing date until December 20, 2011. On December 2, 2011, the plaintiff filed a memorandum of law in support of the preliminary-injunction motion in conjunction with his earlier filings, and the defendant filed an opposition memorandum on December 19, 2011. The parties attended oral argument before the Court on December 20, 2011, at the conclusion of which the Court reserved decision pending the issuance of this Order.

PRELIMINARY INJUNCTION LEGAL STANDARD

In order to justify a preliminary injunction, a movant must demonstrate (1) “irreparable harm absent injunctive relief”; (2) “either a likelihood of success on the merits, or a serious question going to the merits to make them a fair ground for trial, with a balance of hardships tipping decidedly in the plaintiff's favor”; and (3) “that the public's interest weighs in favor of granting an injunction.” Metro. Taxicab Bd. of Trade v. City of N.Y., 615 F.3d 152, 156 (2d Cir.2010) (citations and internal quotation marks omitted).

DISCUSSION

I. Likelihood of Success on the Merits & Balance of Hardships

A. Governing Law

The plaintiff's complaint, and motion for a preliminary injunction, contends that the defendant's conduct violates a provision of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 8131, which provides cyberpiracy protections for individuals. Section 8131 provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

15 U.S.C. § 8131(1)(A) (emphases added). The statute also provides for one exception to civil liability:

A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person.

Id. § 8131(1)(B) (emphases added). Finally, the statute authorizes a court to “award injunctive relief, including the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff,” as well as, “in its discretion, [to] award costs and attorneys fees to the prevailing party.” Id. § 8131(2).

B. Application

The plaintiff argues that the defendant's conduct very clearly tracks the statutory language of section 8131(1)(A) and that the defendant is liable for violation of the statute. The defendant contends that the plaintiff cannot and has not demonstrated her specific intent to profit from the sale of the Domain Names, and that, in any event, she qualifies for the good-faith exception embodied in section 8131(1)(B). The court concludes that the plaintiff has satisfied his burden to demonstrate a likelihood on the merits of his claim, that the defendant does not meet the requirement of good faith necessary to qualify for the statutory exemption, and that the balance of hardships tips strongly in favor of the plaintiff.

Section 8131(1)(A)

As applicable here, a violation of section 8131 requires that the plaintiff demonstrate that the defendant (1) registered a domain name that consists of the name of the defendant, (2) did so without the defendant's consent, and (3) had the specific intent to profit from the defendant's name by selling the domain name for financial gain. See id. § 8131(1)(A). The first two elements—registration of a domain name in the name of the defendant without the defendant's consent—are uncontested by the defendant here. The defendant does dispute, however, that the plaintiff has demonstrated her specific intent to profit from the sale of the Domain Names.

There is very little case law interpreting section 8131, and even less discussing the meaning of the statutory term “specific intent to profit.” In one of the lone decisions to address the issue—Carl v. Bernardjcarl.com, 662 F.Supp.2d 487 (E.D.Va.2009)—the district court discussed the meaning of that phrase where a magistrate judge had recommended the dismissal of a cyberpiracy claim under 15 U.S.C. § 1129, later transferred to 15 U.S.C. § 8131. See Carl, 662 F.Supp.2d at 497–98. The court agreed with the magistrate that the plaintiff'scomplaint failed to allege a violation of the statute because the plaintiff had merely alleged that the “defendants intended ... that plaintiff pay them money to settle an alleged debt.” Id. at 498. In the court's view, the defendants' conduct fell short of specific intent to profit because their true objective was not a “profit,” but only a demand that a past debt...