Creuzot v. Green

JOHN C. CREUZOT, Plaintiff, v. ALVIN GREEN Defendant.

Civil No. 3:17-CV-0404-M-BK

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION

May 23, 2017

FINDINGS, CONCLUSION, AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE

Pursuant to the Chief Judge Lynn's Standing Order of Reference, Doc. 19, this case was referred to the undersigned United States magistrate judge for proceedings consistent with the authority conferred by 28 U.S.C. § 636. Came on to be heard Plaintiff's Application for Preliminary Injunction, Doc. 6. Upon review of the pleadings, applicable law, and the evidence and argument presented at the hearing on the same, and for the reasons that follow, it is recommended that Plaintiff's application be GRANTED.

I. BACKGROUND AND PROCEDURAL HISTORY

On February 22, 2017, Plaintiff John C. Creuzot filed his Verified Amended Complaint and Application for Preliminary Injunction, alleging a violation of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 8131, stemming from Defendant's registration of three domain names: ; ; and (collectively "the Domain Names").¹ Doc. 6. Defendant Alvin Green, proceeding without the assistance of legal counsel, filed a timely answer, in which he denies Plaintiff's allegations and specifically asserts that thedomain names are not protected by the ACPA and that he never offered to sell them to Plaintiff. Doc. 14. On May 15, 2017, an evidentiary hearing was held, at which Plaintiff and Defendant each testified and presented documentary evidence.²

Plaintiff alleges that in December 2016, he began publicly announcing his intention to run for Dallas County District Attorney in 2018. Doc. 6 at 2. Plaintiff and Defendant agree that the same month, while Defendant was visiting Plaintiff at his office, Defendant strongly encouraged Plaintiff to drop out of the race, opining that Plaintiff could not win. Doc. 6 at 2-3 & Doc. 14 at 9. Defendant avers, inter alia, that this was because Plaintiff, who previously had been appointed and successfully run for judge as a Democrat, had also been elected to that position as a Republican, and now planned to run for D.A. as a Democrat. Doc. 17 at 1. However, Plaintiff alleges that Defendant advised him that he was supporting a different candidate for the Democratic nomination in the D.A's race. Doc. 6 at 2. Regardless of Defendant's motive for telling Plaintiff not to run, the parties agree that Plaintiff refused the advice and, shortly thereafter, Defendant, unbeknownst to Plaintiff, registered the Domain Names.³ Doc. 6-1 at 2-6 & Doc. 14 at 2.

When Plaintiff discovered this fact, the parties met on February 6, 2017, and Plaintiff offered to purchase the Domain Names for Defendant's out-of-pocket expenses- $11.99 to register each of the Domain Names. Doc. 6 at 3 & Doc. 17 at 4. Defendant declined, and Plaintiff initiated this action seven days later. Doc. 6 at 3 & Doc. 17 at 4; see Doc. 1. According to Plaintiff's testimony, Defendant dismissed the offer as being too little; however, Defendant testified that he declined the offer because he had plans for the Domain Names and was shocked to learn that this lawsuit had been filed within a few days of that conversation.

The parties' testimony was largely consistent with the factual averments in their respective pleadings. Of particular relevance, both parties testified that after the conversation in which Defendant refused Plaintiff's offer to purchase the Domain Names and this lawsuit was filed, Defendant sent Plaintiff and Plaintiff's counsel a total of three email offers in March 2017, in which he offered to conclude the lawsuit and return the Domain Names to Plaintiff: the first for $10,150; then $5,000; and finally $2,500. While Defendant contends that the offers were proper offers to settle and compromise this legal action, Plaintiff contends that Defendant's offers were attempts to sell the Domain Names at inflated costs, couched in terms of a legal settlement, as evidenced by the improper requests for legal fees, even after Defendant was informed that proceeding pro se, he was not entitled to recoup them.

II. LEGAL STANDARD

The decision to grant or deny a preliminary injunction lies within the sound discretion of the district court. Miss. Power & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th Cir. 1985). Still, a preliminary injunction is an "extraordinary and drastic remedy," granted "only when the movant, by a clear showing, carries the burden of persuasion." Holland Am. Ins. Co. v. Succession of Roy, 777 F.2d 992, 997 (5th Cir.1985) (citation omitted). To obtain a preliminary injunction, the movant must establish each of the following: (1) a substantial likelihood that the movant will prevail on the merits; (2) a substantial threat that the movant will suffer irreparable harm if the injunction is not granted; (3) that the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) that granting the preliminary injunction will not disserve the public interest. Clark v. Prichard, 812 F.2d 991, 993 (5th Cir. 1987).

III. ANALYSIS

A. Success on the Merits

To establish liability under the ACPA, Plaintiff must prove that Defendant (1) registered a domain name; (2) consisting of the name of another living person, or a name "substantially and confusingly similar" thereto; (3) without that person's consent; (4) with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party. 15 U.S.C. § 8131(1)(A).⁴ However, an individual will not be liable under section 8131 where they register a domain in good faith and the name is

used in, affiliated with, or related to a work of authorship protected under 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.

15 U.S.C. § 8131(1)(B). Defendant does not argue that the exception at subsection (1)(B) applies and admits that he registered the Domain Names without Plaintiff's consent.

Doc. 14 at 3 (admitting the allegation in Plaintiff's complaint that Defendant registered the Domain Names without Plaintiff's consent); see Doc. 6 at 3. The Court, therefore, need only determine at this stage whether (1) the Domain Names consist of Plaintiff's name or a name "substantially and confusingly similar" thereto; and (2) Defendant registered the Domain Names with the specific intent to profit.

i. Whether the Domain Names consist of Plaintiff's name, or a name "substantially and confusingly similar" thereto.

Plaintiff argues that this requirement is satisfied because the Domain Names "include one or more of Plaintiff's personal names." Doc. 6 at 6. In response, Defendant contends, inter alia, that section 8131 applies only to domain names composed of an individual's exact full name, e.g., . Doc. 14 at 8. Therefore, because Plaintiff's name is not "John Creuzot for DA," "Creuzot for DA," or "Creuzot 2018," the Domain Names do not trigger section 8131 liability. Doc. 14 at 8.

The majority of courts do not read section 8131 as narrowly as Defendant, applying the statute to domain names composed entirely of an individual's (1) first and last names plus descriptive words⁵; (2) last name⁶; and (3) last name plus descriptivewords.⁷ In fact, the Court's research has revealed only one opinion suggesting that section 8131 applies only to domain names that consist of an individual's exact first and last name, or a name substantially and confusingly similar to an individual's full name with nothing more included.⁸

Indeed, there would be no need to include in the statute the qualifier "substantially and confusingly similar thereto" if only the exact, full name of an individual is subject to its protections. In this case, Defendant confirmed by his testimony that the purpose of obtaining the particular Domain Names was to capture the internet traffic of those users searching for information about Plaintiff's bid for the D.A.'s office - all but admitting that the Domain Names are "substantially and confusingly similar" to Plaintiff's actual name.

Finally, the restrictive reading Defendant suggests appears at odds with the legislative history of section 8131. See 145 Cong. Rec. S14696, S14715, 1999 WL 1041313 (Nov. 17, 1999) (section-by-section analysis) ("[Section 8131] is broad enough to apply to the registration of full names (e.g., johndoe.com), appellations (e.g., doe.com), and variations thereon (e.g., john-doe.com or jondoe.com)[.]"). In fact, the application of section 8131 to campaign websites similar to those at issue here was envisioned by Senator Patrick Leahy, the bill's co-sponsor. See 145 Cong. Rec. S14986, S15026, 1999WL 1050353 (Nov. 19, 1999) (statement of Sen. Leahy noting that section 8131 "addresses [the] problem" of "Senators and presidential hopefuls . . . finding that domain names like bush2000.org and hatch2000.org are . . . snatched up by cyber poachers intent on reselling these domain names for a tidy profit").

The undersigned thus finds that the Domain Names, which contain of one or both of Plaintiff's names and "for DA" and "2018,"consist of Plaintiff's name, or a name substantially and confusingly similar thereto, and therefore, come within the parameters of 15 U.S.C. § 8131(1)(A).

ii. Whether Defendant had the specific intent to profit.

Plaintiff argues that Defendant's intent to profit is evidenced by his refusal to sell the Domain Names at cost, his demand for payment beyond the Domain Names' actual cost, and his previous cybersquatting behavior. Doc. 6 at 6. Specifically, Plaintiff notes that in 2009, an arbitration panel found that Defendant "registered domain names in bad faith without any rights or legitimate interests...