Graduate Management Admission Council v. Raju

267 F.Supp.2d 505

GRADUATE MANAGEMENT ADMISSION COUNCIL, Plaintiff, v. RVR Narasimha RAJU, d/b/a "Gmatplus.com," Defendant.

No. CIV.A.02-581-A.

United States District Court, E.D. Virginia, Alexandria Division.

May 19, 2003.

COPYRIGHT MATERIAL OMITTED

Joseph Edward Hartmen, Fulbright & Jaworski, LLP, Washington, DC, for Plaintiff.

ORDER

ELLIS, District Judge.

Upon consideration of the March 14, 2003 Report and Recommendation of the United States Magistrate Judge designated to conduct a hearing in this matter, no objections having been filed, and upon an independent review of the record, it is hereby ORDERED that the Court adopts the findings of fact and recommendations of the United States Magistrate Judge, as set forth in the March 14, 2003 Report and Recommendation.

Accordingly, it is hereby ORDERED that judgment is ENTERED by default in favor of plaintiff and against defendant in the total amount of $3,500,000.

It is further ORDERED that, pursuant to 17 U.S.C. § 502, defendant, his agents, servants, employees, attorneys, assigns and all persons in concert or participation with him are PERMANENTLY ENJOINED AND PROHIBITED from infringing in any manner on GMAC's existing or future copyrights and from copying, duplicating, distributing, displaying, selling, adapting, publishing, reproducing, preparing derivative works based on, renting, leasing, offering or otherwise transfer or communicating in any manner, orally or in written, printed, photographic, or any other form, any test questions that are identical or substantially similar to actual, copyrighted GMAT test questions or any other copyrighted material obtained from GMAC's tests, test forms, computer-based item pools, or any other source, or aiding abetting or licensing any other person to do the same.

It is further ORDERED that, pursuant to 17 U.S.C. § 503(b), defendant is DIRECTED to destroy all copies of GMAT test questions and related materials found to have been made or used in violation of the plaintiffs exclusive copyright rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies may be reproduced, and to file a pleading with the Court certifying that he has done so.

It is further ORDERED that, pursuant to 15 U.S.C. § 1116, defendant is PEMANENTLY ENJOINED AND PROHIBITED from using the GMAT trademark or any other mark or domain name substantially similar thereto in advertising or selling any goods or services; using registering or holding registrations for the domain names < gmatplus.com > and , as well as any other domain name or mark that includes the mark GMAT, any other mark owned by GMAC, or any confusingly similar mark; from unfairly competing with GMAC, diluting the distinctiveness of GMAC's marks, and otherwise injuring GMAC's business reputation.

It is further ORDERED that, pursuant to 15 U.S.C. § 1118, defendant is DIRECTED either to deliver to plaintiff or destroy all software, computer screen printouts, advertisements, labels, signs, prints, packages, wrappers, receptacles, and all other materials in his possession or under his control that resemble or bear the name or mark GMAT or domain names and or any other name or mark containing the term "GMAT" or any other reproduction, counterfeit, copy or colorable imitation of GMAC's service marks and trademarks and all plates, molds, matrices and other means of making or duplicating the same, and to file a pleading with the court certifying that he has done so.

It is further ORDERED that, pursuant to 15 U.S.C. § 1125(d), defendant is DIRECTED to take all steps necessary to transfer the domain names and to GMAC, and that defendant is PERMANENTLY ENJOINED AND PROHIBITED from displaying on any web site without GMAC's consent these domain names, any other domain names or marks that include the GMAT mark, and any other mark owned by GMAC or confusingly similar to such mark. It is further ORDERED that, should defendant fail to comply with this transfer order, the current registrars, DomainPeople, Inc. and Enom, Inc., or any subsequent registrars with which the domain names < gmatplus.com > and are registered, are DIRECTED to take all steps necessary to transfer the domain names < gmatplus.com > and < gmatplus.net > to plaintiff. It is further ORDERED that, should the applicable registrars fail to comply with this transfer order, the ".com" and ".net" registry, Verisign, Inc., is DIRECTED to take all steps necessary to transfer the domain names and to plaintiff.¹

It is further ORDERED that plaintiff is awarded reasonable attorneys' fees and costs.

The Clerk is directed to send a copy of this Order to all counsel of record.

1. See America Online, Inc. v. Aol.org 259 F.Supp.2d. 449 (E.D.Va.2003); GlobalSantaFe Corp. v. GlobalSantaFe.com, 250 F.Supp.2d 610 (E.D.Va.2003).

REPORT AND RECOMMENDATION

WELTON CURTIS SEWELL, United States Magistrate Judge.

This matter came on for hearing on March 7, 2003 for ex parte proof of damages following default. On April 24, 2002, Plaintiff Graduate Management Admission Council ("GMAC") initiated this action against Defendant RVR Narasimha Raju, d/b/a GMATPLUS.com ("Raju") alleging copyright infringement, federal trademark infringement, trademark dilution, cyberpiracy and federal unfair competition. That same day the Clerk of the Court mailed a summons and copy of the complaint to Raju via international registered mail. Raju was required to plead or otherwise defend this lawsuit or or before May 14, 2002. Raju has not answered or entered an appearance.

I. FACTS

Based on the Complaint and documents submitted in proof of damages, the magistrate judge finds as follows:

GMAC is a non-profit Virginia corporation formed as a supporting organization for university business schools. GMAC develops and owns all rights to the Graduate Management Admission Test ("GMAT"). The GMAT is used to assess the qualifications of applicants by approximately 1,700 graduate; business management programs. The GMAT test forms and questions created by GMAC are original, copyrightable materials, and GMAC enjoys exclusive rights to copy, distribute, display, publish and prepare derivative works. GMAC routinely registers all of its test forms and questions with the Register of Copyrights.

The GMAT is a "secure" test, which means that a certain number of questions on each examination have appeared on prior examinations. Questions are repeated in order to equate test scores from one administration to another. Because they are secure, copyrighted examinations, copies of GMAT test forms and test questions are not intended to be made available to the public except during actual test administration or under such circumstances as GMAC authorizes. GMAC has published some previously administered GMAT questions to allow prospective test-takers to familiarize themselves with the types of questions contained on the GMAT.

GMAC began using the mark "GMAT" in commerce on or around November 1, 1975 and has continuously used the mark worldwide since then. As a result, the GMAT mark has amassed enormous goodwill. The GMAT mark is an inherently distinctive mark by which the public identified and recognizes the source of its products and services. In addition, the GMAT mark has acquired distinctiveness through GMAC's long use and extensive promotion of the mark and services offered under the mark. The public widely recognizes the GMAT mark and associates the mark with GMAC and its products and services.

GMAC's sales of products and services under the GMAT mark have been extensive and GMAC has spent significant sums of money developing and promoting the GMAT mark and products. The GMAT mark is famous. GMAC has developed valuable goodwill and has acquired valuable common law rights in the GMAT mark. The GMAT mark is also the subject of several United States trademark and service mark registrations. Each of the registrations is owned by GMAC and is valid, subsisting and in full force and effect.

On or about April 3, 2000, Raju registered the Internet domain name "GMATPLUS.com" with the registrar wespe.de, and Network Solutions, Inc., a private company located in Herndon, Virginia. Thereafter, Raju switched registrars by registering the domain name "GMATPLUS.com" with Domain People, Inc. On or about May 16, 2001, he registered the Internet domain name "GMATPLUS.net" with Enom, Inc. At the time the Complaint was filed, it appeared that the domain name was registered by 123Register.com.

Raju posted a web page at both sites that prominently uses and displays the term "GMATPLUS" in connection with the advertising and sale of GMAT test questions to which GMAC owns the copyrights. The web page includes claims offering "100% actual questions which were never published in any GMAT books or materials." The web page also claims that a significant percentage of test takers obtaining high scores are from India, China, Korea, Japan and Taiwan, because individuals from those countries have access to the unpublished questions.

Raju does not have a license and has not otherwise been authorized by GMAC to reproduce, publish or distribute copies of any released or unreleased GMAT test questions. Raju's use and distribution of GMAC's copyrighted materials has at all relevant times and continues to be a willful and knowing violation and infringement of GMAC's copyrights. Likewise, Raju has derived revenue through the advertising and sale of GMAC's copyrighted test questions through the internet, within this judicial district, and in interstate commerce under the domain names "GMATPLUS.com" and "GMATPLUS.net" and the mark "GMATPLUS."

In promoting his services, Raju has attempted to create the false impression that he is affiliated with, sponsored by, approved by and/or endorsed by GMAC. Raju's use of a mark similar to that owned by GMAC, for services identical to those offered by GMAC, is likely to cause confusion among prospective customers....