ICON Health & Fitness, Inc. v. Davis

ICON HEALTH & FITNESS, INC., Plaintiff, v. ANTHONY DAVIS, an individual,d/b/a IFIT SPORTS PERFORMANCE, Defendant.

Case No.: 2:19-cv-00449-MHH

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ALABAMA SOUTHERN DIVISION

FILED: May 11, 2020

May 8, 2020

MEMORANDUM OPINION

Plaintiff ICON Health & Fitness, Inc. has asked the Court to enter default judgment against defendant Anthony Davis, d/b/a IFIT Sports Performance. (Doc. 13). ICON filed this action on March 14, 2019, to enforce its "IFIT" and "IFIT.com" trademarks. (Doc. 1, p. 3, 18-19, ¶ 9). The Clerk made an entry of default against Mr. Davis on August 1, 2019. (Doc. 12). In support of its motion for default judgment, ICON has filed an affidavit describing ICON's attempts to communicate with Mr. Davis. (Doc. 13-1). For the reasons below, the Court grants ICON's motion and enters default judgment against Mr. Davis.

I. DEFAULT JUDGMENT STANDARD

Federal Rule of Civil Procedure 55 establishes a two-step procedure for obtaining a default judgment against a defendant who has not appeared after being properly served with a complaint. First, when a defendant fails to defend a lawsuit, as in this case, the Clerk of Court may enter a clerk's default. Fed. R. Civ. P. 55(a). Second, after entry of the clerk's default, if the defendant is not an infant or an incompetent person, the Court may enter a default judgment against the defendant because of the defendant's failure to appear or defend. Fed. R. Civ. P. 55(b)(2). "A default judgment must not differ in kind from, or exceed in amount, what is demanded in the pleadings." Fed. R. Civ. P. 54(c).

"A motion for default judgment is not granted as a matter of right." Pitts ex rel. Pitss v. Seneca Sports, Inc., 321 F. Supp. 2d 1353, 1356 (S.D. Ga. 2004) (internal footnote omitted). After a clerk enters a default pursuant to Rule 55(a), the Court must review the sufficiency of the complaint and the substantive merits of the complaint to determine whether a moving party is entitled to default judgment. Chudasama v. Mazda Motor Corp., 123 F.3d 1353, 1370 n.41 (11th Cir. 1997). The Court must ensure that the well-pleaded allegations in the complaint state a substantive cause of action and that an adequate basis exists in the pleadings for the relief sought. Cotton v. Mass Mut. Life Ins. Co., 402 F.3d 1267, 1278 (11th Cir. 2005). In addition to the pleadings, the Court may consider evidence presented in the form of an affidavit or declaration. Frazier v. Absolute Collection Serv., Inc., 767 F. Supp. 2d 1354, 1362 (N.D. Ga. 2011). A defaulting defendant "admits the plaintiff's well-pleaded allegations of fact" for purposes of liability. Buchanan v.Bowman, 820 F.2d 359, 361 (11th Cir. 1987) (quoting Nishimatsu Constr. Co., Ltd. v. Houston Nat'l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975) (internal quotation marks omitted)).

II. FACTUAL ALLEGATIONS

ICON is one of the world's largest manufacturer and seller of exercise and fitness equipment. (Doc. 1, p. 3, ¶ 8). In 1999, ICON launched a new line of fitness products called "IFIT." (Doc. 1, p. 3, ¶ 10). To accompany the new line, "ICON created an online service at www.ifit.com . . . that provided users with personalized video and audio workouts" and other features. (Doc. 1, pp. 3-4, ¶ 10). The "IFIT" product line now includes wearable equipment that tracks a user's fitness and wellness information. ICON developed a mobile app that interfaces with and collects data from "IFIT" products, allowing users to "track their nutrition and weight loss, set personal health fitness, and nutrition goals, and otherwise manage their activities and lifestyles." (Doc. 1, p. 5, ¶¶ 13-14).

ICON registered and owns seven trademarks related to its "IFIT" product line—"IFIT.COM" and six variations of "IFIT." (Doc. 1, pp. 7-9, ¶ 22). ICON's "IFIT.COM" mark has a registration date of July 3, 2001. (Doc. 1-1, p. 2). The earliest variation of ICON's "IFIT" mark has a September 20, 2002 registration date. (Doc. 1-2, p. 2). The most recent variation of the "IFIT" mark has a July 31, 2018 registration date. (Doc. 1-7, p. 2).

ICON alleges that Mr. Davis "operates a sports, exercise, and fitness-related business" and "us[es] the trade names, DBAs, and/or service marks 'IFIT Sports Performance' and/or 'iFIT Fueled by Coach Davis.'" (Doc. 1, p. 10, ¶ 31). ICON contends that these uses infringe on its "IFIT" trademarks. According to ICON, its counsel sent to Mr. Davis an email on August 4, 2017, asking Mr. Davis to "transition away from using the IFIT Sports Performance name/mark and the ifitsp.com domain name." (Doc. 1, p. 12, ¶ 39).

III. DISCUSSION

A. Subject Matter Jurisdiction

Before the Court enters a default judgment, the Court first must ensure that it has subject matter jurisdiction over the case. Smarter Every Day, LLC v. Nunez, 2017 WL 1247500, at *2 (N.D. Ala. Apr. 5, 2017) (citing Sys. Pipe & Supply, Inc. v. M/V Viktor Kurnatovskiy, 242 F.3d 322, 324 (5th Cir. 2001)). ICON contends that the Court has jurisdiction to hear this case pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1332, 1338(a), (b), and 1367. (Doc. 1, p. 2). The Court has subject matter jurisdiction over ICON's federal claims under 15 U.S.C. § 1121(a) and 28 U.S.C. § 1331 and subject matter jurisdiction over ICON's state law claims under 28 U.S.C § 1367.

B. Personal Jurisdiction

To enter a valid default judgment, the Court also must determine that it has personal jurisdiction over the defendant. Oldfield v. Pueblo De Bahia Lora, S.A., 558 F.3d 1210, 1217 (11th Cir. 2009). Under Rule 4 of the Federal Rules of Civil Procedure, "[s]erving a summons or filing a waiver of service establishes personal jurisdiction over a defendant . . . who is subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located." Fed. R. Civ. P. 4(k)(1)(A). ICON alleges that Mr. Davis "is an individual who resides in the State of Alabama and operates his sports, exercise, and fitness-related business commonly known as iFit Sports Performance at 2809 Central Avenue, Homewood, Alabama 35209 and at 3106 6th Avenue South, Birmingham, Alabama 35233." (Doc. 1, pp. 1-2, ¶ 2). The record indicates that ICON served Mr. Davis with process at 506 Windsor Drive in Homewood, Alabama, on March 18, 2019. (Doc. 5, p. 2). Therefore, the Court is satisfied that is has personal jurisdiction over Mr. Davis and iFit Sports Performance.

C. Federal Claims

ICON brings the following federal claims against Mr. Davis: trademark infringement under § 32(1) of the Lanham Act; unfair competition and false designation of origin under § 43(a) of the Lanham Act; and false advertising under § 43(a) of the Lanham Act. (Doc. 1, pp. 14-16).

To establish liability under the Lanham Act, "a plaintiff must show (1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two." Tana v. Dantanna's, 611 F.3d 767, 773 (11th Cir. 2010) (quotations and citation omitted). ICON has registered "IFIT" as a trademark. (Doc. 1, pp. 7-9, ¶ 22). Accordingly, ICON has rights in the "IFIT" mark.

To determine whether there is a likelihood of confusion between two marks, a district court balances the following seven factors:

(1) strength of the mark alleged to have been infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods and services offered under the two marks; (4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of the alleged infringer to misappropriate the proprietor's good will; and (7) the existence and extent of actual confusion in the consuming public.

Dantanna's, 611 F.3d at 774-75 (citing Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007)). Based on these factors, the Court concludes that ICON has adequately pleaded likelihood of confusion.

At least five of the factors plausibly support a finding of likelihood of confusion. First, as a registered trademark, "IFIT" is a strong mark. See Sovereign Military Hospital Order v. Fla. Priory of Knights Hospitallers, 809 F.3d 1171, 1184(11th Cir. 2015) ("[I]ncontestable marks are presumptively strong."). Second, ICON's marks and Mr. Davis's mark share identical spelling and spacing, with some variations in font. (Compare Doc. 1-2, p. 2, with Doc. 1, p. 11). Third, there are similarities between ICON's services and Mr. Davis's services: ICON's "IFIT" products are designed to "complement [ICON's] exercise and fitness products and provide users with additional innovative resources to help them meet their personal exercise and fitness goals" (Doc. 1, p. 3, ¶ 9); Mr. Davis provides "'every athlete with a training experience that supports achievement of their individual performance goals'" (Doc. 1, p. 11, ¶ 34). Fourth, ICON and Mr. Davis share similar customer bases. Fifth, ICON and Mr. Davis both engage in internet marketing. (Doc. 1, pp. 6, 11, ¶¶ 16, 33, 35).

"The extent to which two marks are confusingly similar cannot be assessed without considering all seven factors . . . ." Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484, 1488 (11th Cir. 1987). Here, ICON also alleges that it sent an August 4, 2017 letter asking Mr. Davis to "transition away from using the IFIT" mark and that Mr. Davis "disregarded ICON's August 4, 2017 letter and subsequent correspondence and continued to market, promote, and provide his . . . services using the IFIT" mark. (Doc. 1, pp. 12-13, ¶¶ 38-40). These allegations do not plausibly demonstrate that Mr. Davis intended to appropriate ICON's good will, but they do support ICON's position regarding the sixth factor. As for the seventhfactor, ICON did not specifically allege that the consuming public had actually confused its mark with...