New World Solutions, Inc. v. NameMedia Inc.

150 F.Supp.3d 287

New World Solutions, Inc., Plaintiff,

v.NameMedia Inc., et al., Defendants.

Case No. 11-CV-2763 (KMK)

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

Signed December 15, 2015

Ronald S. Kossar, Law Office of Ronald S. Kossar, Middletown, NY, for Plaintiff.

Cameron Sean Reuber, Martin Bernard Schwimmer, Leason Ellis LLP, White Plains, NY, for Defendants.

OPINION AND ORDER

KENNETH M. KARAS, District Judge:

Plaintiff New World Solutions, Inc. (“NWS” or “Plaintiff”) brings this Action against Defendant NameMedia, Inc. (“NameMedia” or “Defendant”).¹ NWS alleges that NameMedia's registration of and activities associated with the domain name “www.newworldsolutions.com” (the “Domain Name”), constitute trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c), cybersquatting in violation of the Lanham Act, 15 U.S.C. § 1125(d), deceptive acts and false advertising in violation of the New York General Business Law, (“NYGBL”) §§ 349 –50, and dilution under NYGBL § 360–l. (First Am. Compl. (“FAC”) ¶¶ 22–44 (Dkt. No. 23).) NameMedia asserts counterclaims under the Lanham Act for a declaratory judgment that U.S. Service Mark Registration No. 3,919,493 (the “Mark Registration”) of the Mark “New World Solutions” (the “Mark”) is invalid and unenforceable pursuant to 15 U.S.C. § 1119, a declaratory judgment under 15 U.S.C. § 1120 that NWS is liable to NameMedia for all damages incurred by NameMedia as a result of NWS's attempts to enforce its registration of the Mark, and attorneys' fees pursuant to 15 U.S.C. § 1117(a). (Def.'s Answer and Counterclaims to First Am. Compl. (“Def.'s Counterclaims”) ¶¶ 7–30 and Prayer for Relief (Dkt. No. 25).)

The Parties have filed Cross Motions for Summary Judgment. (See Dkt. Nos. 68, 76.) Specifically, NameMedia moves for summary judgment on all of Plaintiff's claims and Defendant's counterclaims and NWS moves for summary judgment as to NameMedia's counterclaims. In addition, the Parties have filed Cross Motions To Strike Evidence. (See Dkt. Nos. 87, 94.) For the reasons stated herein, NameMedia's Motion To Strike is granted in part and denied in part, NWS's Motion to Strike is granted in part and denied in part, NameMedia's Motion for Summary Judgment is granted with respect to NWS's claims and denied with respect to NameMedia's counterclaims, NWS's Motion for Summary Judgment is denied, and NameMedia's request declaring this case “exceptional” pursuant to the Lanham Act 15 U.S.C. § 1117 is denied.

I. Background

A. Facts

1. The Parties

In this Action, NWS describes itself as a “staffing company” whose employees “[t]ypically” provide technology consulting services. (Videotaped Examination of David Shaun Neal (“Neal Tr.”) 21–22.)² Those services “include technology consulting, technology outsourcing, telephon[e] consulting, network support, network monitoring, mobile application development and many other technology related services.” (Decl. of Martin B. Schwimmer, Esq. in Supp. of Def.'s Mot. for Summ. J. (“Schwimmer Decl. I”) Ex. 7 (“Pl.'s Resps. to Def.'s First Set of Interrogs.”) No. 12 (Dkt. No. 69).)³ NWS asserts that it “has advertised and publicized” the Mark for “over 8 years and in 4 countries,” currently “provides services to 15 companies,” “has done business with over 50 companies under the [M]ark [since July of 2004],” and has “offered its services under the [M]ark to hundreds of thousands of companies since 2004.” (Id. at Nos. 10, 12.) Together with its wholly-owned subsidiaries, NWS allegedly employs over 100 people, (FAC ¶ 9), and, since 2007, has generated “about a million and a half to [two] million a year” in revenue, (Neal Tr. 147). Plaintiff allegedly “maintains a website, regularly engages in direct mail marketing and retains a full time sales staff which regularly solicits business for clients in several US states and worldwide.” (FAC ¶ 8.)⁴ NWS asserts that, “[i]t is widely known and recognized in the industry.” (Pl.'s Resps. to Def.'s First Set of Interrogs. No. 10.)

In the First Amended Complaint, Plaintiff alleges that it is a Wyoming Corporation that “provides business services to large, multinational corporations worldwide and has done so since June of 2004.” (FAC ¶¶ 3, 7.) It is undisputed, however, that “[t]here is no documentary evidence in the record that any purported predecessor-in-interest to Plaintiff existed prior to 2007.” (Def.'s Rule 56.1 Statement of Material Facts Not in Dispute in Supp. of Its Mot. for Summ. J. (“Def.'s 56.1”) ¶ 29 (Dkt. No. 71); Pl.'s Resp. to Def.'s Statement of Material Facts Not in Dispute and Pl.'s Statement of Material Facts Not in Dispute in Supp. of Pl.'s Cross-Mot. for Summ. J. Pursuant to Local Rule 56.1 (“Pl.'s 56.1”) ¶ 29 (Dkt. No. 80); see also Schwimmer Decl. I ¶ 23.) A Certificate of Incorporation from the Office of the Secretary of State of Wyoming identifies that on May 25, 2010, a “New World Solutions, Inc.” was incorporated in Wyoming (the “2010 Wyoming Entity”); Shaun Neal (“Neal”), NWS's principal, testified that NWS was also registered in Delaware in 2007 (the “2007 Delaware Entity”); a nunc for tunc document dated November 24, 2008 states that a “New World Solutions, Inc.” was incorporated under the laws of the State of Delaware on March 26, 2007; and Neal identifies himself and Robert Coyne (“Coyne”) as having been the co-owners of both the 2007 Delaware Entity and the 2010 Wyoming Entity, until the Fall of 2012, when Neal became the sole owner of the Wyoming Entity. (Def.'s 56.1 ¶¶ 29–33; Pl.'s 56.1 ¶¶ 29–33; see also Schwimmer Decl. I Exs. 11–12.)

Defendant contends that “[t]here is no evidence identifying ownership of either the 2007 Delaware Entity or the 2010 Wyoming Entity, or that any assets were transferred from the 2004 ‘d/b/a/’ to the 2007 Delaware Entity, or from the 2007 Delaware Entity to the 2010 Wyoming Entity.” (Def.'s 56.1 ¶ 35.) Plaintiff disputes this. (Pl.'s 56.1 ¶ 35.) Plaintiff's account of its history and activities—which is strongly contested by Defendant—proceeds as follows: beginning in 2004, a “d/b/a” run jointly by Neal and Coyne (the “d/b/a entity”) “performed ... services” using the name “New World Solutions.” (See Neal Tr. 27–28; see also Decl. of David Shaun Neal in Supp. of Pl.'s Mem. of Law in Opp'n to Def.'s Mot. for Summ. J. and in Supp. of Pl.'s Mem. of Law for Summ. J. (“Neal Decl.”) ¶ 40 (Dkt. No. 79) (stating that between 2004 and the date of his declaration, Neal was employed full time at NWS).) Coyne and Neal split the revenues from the d/b/a entity. (Neal Tr. 91.) Although Coyne claims that his “business activities with ... Neal commenced in early 2004 and continued until late 2012, [when he] transferred all of [his] interest in [NWS] to ... Neal,” he cites to nothing in the record to support this assertion, and in particular that he had business activities with Neal in 2004. (Decl. of Robert F. Coyne in Supp. of Pl.'s Mem. of Law in Opp'n to Def.'s Mot. for Summ. J. and in Supp. of Pl.'s Mem. of Law for Summ. J. (“Coyne Decl. I”) ¶ 10 (Dkt. No. 78).)

NWS has no documentary evidence that establishes the existence of the d/b/a entity, or its promotional activities, services, or revenues, allegedly because Neal had a “simultaneous failure of the primary and the secondary hard drive” on his computer in 2007 and because Plaintiff was unable to locate any documents relating to the d/b/a entity or its activities by any other means. (See Neal Tr. 28–29, 32, 37–38, 143–45, 147–49, 159.) However, Neal testified that the d/b/a entity engaged in marketing activities, which consisted of (1) “one-on-one sales techniques,” which means that Coyne and Neal “cold call[ed]” and e-mailed potential clients, and (2) sending promotional postcards to a mailing list obtained from a company called American Business Lists. (Id. at 31–32.) Neal also testified that he recalled three clients of the d/b/a entity in 2004, namely “Merrill Lynch ... a real estate company in Arizona ... [and] an institutional foreign exchange trader.” (Id. at 36–37.) Moreover, although Neal stated in his deposition that NWS's revenue figures were “a few hundred thousand” in 2004, “over a million,” in 2005–06, and “about a million and a half to 2 million a year” in 2007–12, Neal has testified that he does not have any documents to support NWS's revenue for 2004–07 because “they were on the crash on the hard drive.” (Def.'s 56.1 ¶¶ 57–58; Neal Tr. 147–48.)

The “original legal entity” for NWS was created on March 26, 2007, when Coyne allegedly incorporated New World Solutions, Inc. as a Delaware C Corporation. (Neal Tr. 27; see also Schwimmer Decl. I Ex. 11; Coyne Decl. I ¶ 3; id. at Ex. 1.) Coyne dissolved the 2007 Delaware Entity on July 12, 2010 and transferred all of its assets and liabilities, including all of the rights to the trade name New World Solutions, to the 2010 Wyoming Entity, which was formed on May 25, 2010. (Coyne Decl. I ¶¶ 5, 7–9; id. at Exs. 2–3.) Coyne and Neal each owned 50% of the Delaware and Wyoming entities, but on December 6, 2012, Coyne transferred to Neal the entirety of his interest in NWS so that, at present, Neal is the “managing partner” and “sole shareholder” of NWS. (Neal Decl. ¶¶ 1–2; Coyne Decl. I ¶¶ 4, 6, 10.) Coyne does not cite to anything in the record to support this transfer. Neal states that he “determined that [he] possess[es] evidence of ownership of New World Solutions, Inc[.] (DE), New World Solutions, Inc[.] (WY)[,] and the transfers of ownership between [himself] and ... Coyne which occurred during the relevant time of this [A]ction.” (Neal Decl. ¶ 41.) Neal also states that he “testified that ... Coyne possesses th[e]se records, however [he does] not believe that any request was made by [D]efendant to ... Coyne for any records.” (Id. ¶ 41.) In other words, there yet again are no documents that support Coyne's or Neal's statements.

NameMedia is a Delaware Corporation with headquarters in Waltham, Massachusetts. (FAC ¶ 4.) NameMedia offers a marketplace...