Klivington-Evans v. PassingYourOBGYNBoards.com

• Court: District Court, D. Arizona
• Decided: October 8, 2024
• Docket: 2:24-cv-02677
• Status: Unknown

Opinion

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA

9 Diane Klivington-Evans, No. CV-24-02677-PHX-DWL

10 Plaintiff, ORDER

11 v.

12 PassingYourOBGYNBoards.com, et al.,

13 Defendants. 14 15 Pending before the Court is Plaintiff’s ex parte application for a temporary 16 restraining order (“TRO”) and order to show cause (“OSC”) as to why a preliminary 17 injunction should not issue. (Doc. 2.) For the following reasons, the TRO application is 18 granted as to Defendants, denied without prejudice as to nonparty GoDaddy, Inc. 19 (“GoDaddy”), and denied as to nonparty Domains by Proxy, LLC (“Domains by Proxy”). 20 RELEVANT BACKGROUND 21 On October 4, 2024, Plaintiff filed a verified complaint in rem, alleging 22 cybersquatting by Defendants and unknown John 23 Does. (Doc. 1.) The complaint alleges that Plaintiff has been running a business since 24 2012 via her company “PassingYourOBGYNboards.com LLC and its successor company 25 PASSINGYOUROBGYNBOARDS LLC” (“the Company”), which provides physicians 26 with “test preparation services and goods to study for their oral OB/GYN medical boards 27 to become board certified obstetricians and gynecologists.” (Id. ¶ 2.) “Since at least as 28 early as December 17, 2014, until very recently,” Plaintiff has used the domain name 1 (“the Domain Name”) to conduct her business, but 2 due to a missed payment caused by identity theft and the resulting closure of her credit 3 card, Plaintiff’s registration of the Domain Name lapsed. (Id. ¶¶ 3-4, 54-64.) During the 4 lapse—at some point between July 29, 2024 and August 4, 2024—one or more unknown 5 cybersquatters registered the Domain Name, “loaded the webpage with malware and 6 viruses,” and “used the Domain Name to reset passwords to other accounts linked to the 7 Domain Name, including accounts at Shopify, PayPal, and Zoom.” (Id. ¶¶ 5-6, 65-68.) 8 Nonparty GoDaddy is the registrar of the Domain Name. (Id. ¶¶ 18, 66.) Nonparty 9 Domains by Proxy provides a mailing address “for registrants who wish to keep their 10 information private on GoDaddy,” and this mailing address is the contact information 11 currently listed for the Domain Name. (Id. ¶ 22.) 12 On the same day the complaint was filed, Plaintiff filed the pending ex parte 13 application for a TRO/OSC (Doc. 2), a memorandum in support thereof (Doc. 5), and two 14 supporting declarations (Docs. 3, 4). Plaintiff seeks a TRO enjoining Defendants from 15 continued use of the Domain Name and associated malfeasance (Doc. 2-1 at 1-2, (1)(A)- 16 (D)) and an OSC as to why a preliminary injunction against Defendants should not issue 17 (id. at 3). Plaintiff also seeks a TRO directing GoDaddy to place a registry hold on the 18 Domain Name and transfer it back to Plaintiff (id. at 2, (2)(A)-(C)) and a TRO directing 19 Domains by Proxy to disclose the identities and contact information for the current 20 registrant(s) of the Domain Name (id. at 2, (3)). Finally, Plaintiff seeks leave to serve 21 process via alternative means. (Doc. 2-1 at 2-3.) 22 ANALYSIS 23 I. TRO Requests 24 A. Legal Standard 25 Under Rule 65 of the Federal Rules of Civil Procedure, a party may seek injunctive 26 relief if it believes it will suffer irreparable harm during the pendency of an action. There 27 are two types of injunctions available under Rule 65: TROs and preliminary injunctions. 28 Although both are governed by the same substantive standards, see Stuhlbarg Int’l Sales 1 Co., Inc. v. John D. Brush & Co., 240 F.3d 832, 839 n.7 (9th Cir. 2001), a TRO may be 2 issued without notice to the adverse party. More specifically, under Rule 65(b)(1), the 3 Court “may issue a temporary restraining order without written or oral notice to the adverse 4 party or its attorney” if two requirements are met: (1) “specific facts in an affidavit or a 5 verified complaint clearly show that immediate and irreparable injury, loss, or damage will 6 result to the movant before the adverse party can be heard in opposition”; and (2) “the 7 movant’s attorney certifies in writing any efforts made to give notice and the reasons why 8 it should not be required.” The Ninth Circuit has cautioned that “very few circumstances 9 justify the issuance of an ex parte TRO.” Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 10 1126, 1131 (9th Cir. 2006). 11 On the merits, “[a] preliminary injunction is an extraordinary and drastic remedy, 12 one that should not be granted unless the movant, by a clear showing, carries the burden of 13 persuasion.” Lopez v. Brewer, 680 F.3d 1068, 1072 (9th Cir. 2012) (cleaned up). See also 14 Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008) (“A preliminary injunction is 15 an extraordinary remedy never awarded as of right.”) (citation omitted). “A plaintiff 16 seeking a preliminary injunction must establish that [1] he is likely to succeed on the merits, 17 [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that 18 the balance of equities tips in his favor, and [4] that an injunction is in the public interest.” 19 Winter, 555 U.S. at 20. “But if a plaintiff can only show that there are serious questions 20 going to the merits—a lesser showing than likelihood of success on the merits—then a 21 preliminary injunction may still issue if the balance of hardships tips sharply in the 22 plaintiff’s favor, and the other two Winter factors are satisfied.” Shell Offshore, Inc. v. 23 Greenpeace, Inc., 709 F.3d 1281, 1291 (9th Cir. 2013) (cleaned up). Under this “serious 24 questions” variant of the Winter test, “[t]he elements . . . must be balanced, so that a 25 stronger showing of one element may offset a weaker showing of another.” Lopez, 680 26 F.3d at 1072. Regardless of which standard applies, the movant “carries the burden of 27 proof on each element of either test.” Env’t. Council of Sacramento v. Slater, 184 F. Supp. 28 2d 1016, 1027 (E.D. Cal. 2000). 1 B. TRO As To Defendants 2 One of the threshold requirements under Rule 65(b)(1) when a party seeks an ex 3 parte TRO is that the “movant’s attorney certifies in writing any efforts made to give notice 4 and the reasons why it should not be required.” Here, Plaintiff’s counsel has provided a 5 detailed declaration that establishes that notice has been attempted by the only means 6 available, as the Domain Name registrants have taken affirmative steps to conceal their 7 identities and contact information. (Doc. 4.) Furthermore, as stated in the memorandum 8 in support of the TRO motion, “[u]nknown cybersquatters in possession of the in rem 9 Defendant Domain Name has already moved registrars to, upon information and belief, 10 prevent Plaintiff from recovering the Domain Name. . . . If given the opportunity, the 11 cybersquatters may attempt to move the Domain Name to a registrar outside of the United 12 States.” (Doc. 5 at 12.) The Court is satisfied that notice should not be required under 13 these circumstances. 14 The other threshold requirement under Rule 65(b)(1) is that the movant come 15 forward with “specific facts in an affidavit or a verified complaint [that] clearly show that 16 immediate and irreparable injury, loss, or damage will result to the movant before the 17 adverse party can be heard in opposition.” That requirement is satisfied here by the verified 18 complaint (Doc. 1) as well as Plaintiff’s declaration (Doc. 3). The facts in those documents 19 demonstrating harm to the Company’s goodwill establish both the irreparability and 20 immediacy of the harm that Plaintiff will suffer in the absence of a TRO. Cf. Disney 21 Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848, 866 (9th Cir. 2017) (affirming district 22 court’s finding that second Winter factor was satisfied in copyright infringement action, 23 even though “damages could be calculated based on [lost] licensing fees,” because other 24 forms of harm caused by the challenged conduct, including “loss of goodwill,” “cannot 25 readily be remedied with damages”). 26 Turning to the merits, the first Winter factor addresses the likelihood of success on 27 the merits. “In order to combat . . . bad-faith registration or use of domain names, Congress 28 enacted the ACPA [Anticybersquatting Consumer Protection Act] as a supplement to the 1 federal trademark statute.” Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293, 295 (2d Cir. 2 2002). “Cybersquatting can be understood as registering a domain name associated with a 3 protected trademark either to ransom the domain name to the mark holder or to divert 4 business from the mark holder.” Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 5 F.3d 546, 550 n.3 (9th Cir. 2013). “The [ACPA] establishes civil liability . . . where a 6 plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) 7 the domain name is identical or confusingly similar to a protected mark owned by the 8 plaintiff; and (3) the defendant acted with bad faith intent to profit from that mark.” DSPT 9 Int’l, Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010) (cleaned up). 10 Here, the verified complaint and supporting declarations are easily sufficient to 11 establish a likelihood of success on the first (Defendants “registered . . . or used a domain 12 name”) and third (bad-faith intent to profit) elements of Plaintiff’s ACPA claim. See 13 generally Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1202 (9th Cir. 2009) (“Congress has 14 enumerated nine nonexclusive factors for courts to consider in determining whether bad 15 faith exists. We need not, however, march through the nine factors seriatim because the 16 ACPA itself notes that use of the listed criteria is permissive. Instead, the most important 17 grounds for finding bad faith are the unique circumstances of the case.”) (cleaned up). 18 Plaintiff has also established a likelihood of success on one component of the second 19 element, which is that the Domain Name be “identical or confusingly similar” to the mark 20 owned by Plaintiff (i.e., PASSING YOUR OBGYN BOARDS). 21 The only debatable question is whether the mark owned by Plaintiff is a “protected” 22 mark, as also required to satisfy the second element. Plaintiff’s theory is that she possesses 23 a “common law trademark” in the Company’s name. (Doc. 5 at 6.) “To establish 24 enforceable common law trademark rights within a geographical area, a plaintiff must 25 prove that (1) it was the first to use a mark, and (2) it has established legally sufficient 26 market penetration. Additionally, a plaintiff must show continuing use of the mark—that 27 is, use without interruption.” PragmaticPlay Int’l Ltd. v. Agenpragmaticplay.live, 2024 28 WL 113306, *5 (D. Ariz. 2024) (cleaned up). See also Hanginout, Inc. v. Google, Inc., 54 1 F. Supp. 3d 1109, 1118 (S.D. Cal. 2014) (“To establish common law trademark rights in 2 the absence of federal registration, a plaintiff must plead and prove that it is the senior user 3 of the mark with sufficient market penetration to preclude the defendant from using the 4 mark in a specific geographic market. . . . [T]wo independent determinations—seniority 5 of use and market penetration—both . . . must be satisfied in the absence of federal 6 registration.”) (citations omitted). Here, the verified complaint establishes that Plaintiff, 7 for about a decade, continuously ran a business known as “PASSING YOUR OBGYN 8 BOARDS” (the “Mark”) (Doc. 1 ¶ 19), “has maintained social media pages on platforms 9 including Facebook, YouTube, Twitter (now X) which prominently display Passing Your 10 OBGYN Boards” (id. ¶ 39), and has used the Mark “on and in the Domain Name, 11 blogposts, the Company’s Shopify and PayPal storefronts, in marketing materials, on social 12 media accounts, in written communications to customer and potential customers, and on 13 invoices” (id. ¶ 40). “Approximately 15,000 to 20,000 physicians have used the 14 Company’s services and goods to pass their medical boards.” (Id. ¶ 45.) Plaintiff’s 15 business generates approximately $53,000 to $110,000 in profit per year. (Id. ¶ 52.) 16 Plaintiff also “founded PassingYourOBGYNboards.com LLC” in 2011. (Doc. 3 ¶ 2.) 17 These facts are sufficient to establish a likelihood of success on, and at a minimum serious 18 questions going to the merits of, Plaintiff’s claimed entitlement to a common law 19 trademark. PragmaticPlay Int’l, Ltd., 2024 WL 113306 at *5 (“Here, taking the 20 Complaint’s factual allegations as true, Plaintiff has used its PRAGMATIC PLAY word 21 mark as part of its domain name since 2015 and has actively marketed its online goods and 22 services under both the word and composite marks since 2016. Plaintiff’s continual 23 marketing of its games and services using such marks has [led] to significant consumer and 24 industry recognition. This is sufficient to show that Plaintiff has common law trademark 25 rights in the PRAGMATIC PLAY marks predating its 2021 PTO registrations.”). Thus, 26 Plaintiff has made a sufficient showing as to the first Winter factor. 27 The second Winter factor addresses the likelihood of irreparable harm in the absence 28 of preliminary relief. The verified complaint alleges that “[t]hrough referral sources, 1 Plaintiff has been notified that there are issues with the Domain Name being loaded with 2 viruses, and that persons referred to Plaintiff through the website, experienced issues. After 3 personally reviewing the Domain Name, the computer of at least one referral source was 4 infected with a virus.” (Id. ¶ 68.) This is sufficient to establish irreparable harm to 5 goodwill. Disney Enterprises, 869 F.3d at 866. 6 The third Winter factor addresses the balance of equities. The balance tips 7 overwhelmingly in Plaintiff’s favor here, where (at least on this record) Plaintiff is an 8 innocent victim of cybersquatting while Defendants are calculated cybersquatters who 9 have taken steps to hide their identities and infect the computers of Plaintiff’s prospective 10 clients with malware. 11 The fourth Winter factor addresses the public interest. This factor favors Plaintiff 12 for the same reasons. 13 Finally, the Court agrees with Plaintiff (Doc. 5 at 12) that a bond is unnecessary. 14 Thus, Defendants are temporarily restrained for 14 days. Fed. R. Civ. P. 65 (b)(2). 15 C. TRO As To GoDaddy 16 Plaintiff is not entitled to obtain a TRO against non-party GoDaddy at this early 17 juncture because the allegations are insufficient to establish that GoDaddy is “in active 18 concert or participation” with Defendants. See. e.g., Whaleco Incorporated v. Arslan, 2024 19 WL 342459, *2 (D. Ariz. 2024) (“Whaleco’s proposed TRO . . . goes too far . . . [because] 20 much of the proposed TRO is directed toward non-party Namecheap Incorporated, the 21 domain name registrar for the websites at issue. This Court previously has rejected the 22 argument that domain registrars necessarily act in concert or participation with a client who 23 uses a domain to commit intellectual property violations. Although a domain registrar who 24 receives notice of [a TRO directed against the Defendants] cannot thereafter take actions 25 that facilitate an effort by Defendants to evade or violate the TRO, the Court remains 26 convinced that it lacks authority to order a non-party domain registrar to act before it even 27 has notice of the injunction, and before it has been asked by any defendant to facilitate a 28 potential violation of that order. The Court therefore denies Whaleco’s motion for a TRO 1 to the extent that it asks the Court to order Namecheap or other non-party domain registrars 2 to act.”) (citations omitted); Fornix Holdings LLC v. Unknown Party, 2022 WL 992546, 3 *2 (D. Ariz. 2022) (“Plaintiffs’ argument fails because they do not allege that . . . 4 Namecheap knew of the defendant’s allegedly infringing conduct and nevertheless 5 continued to provide services that facilitated that infringement. They cannot be said to be 6 aiding and abetting the defendant, and thus, the Court cannot bind them to a TRO absent 7 them being named parties.”). 8 The TRO as to GoDaddy is denied without prejudice. If necessary, Plaintiff may 9 renew this request, either by motion or stipulation, see, e.g., Wavve Americas Inc. v. 10 Unknown Party, 2024 WL 4120365, *4 (D. Ariz. 2024) (“Under the circumstances and in 11 light of Namecheap’s actual awareness of this action and willingness to be bound, the Court 12 sees little harm in binding Namecheap.”), although it is possible that GoDaddy, upon being 13 shown this order, will voluntarily act to ensure that it cannot be found, through continued 14 provision of services to Defendants, to be “in active concert or participation” with 15 Defendants, in which case nothing further would be needed from the Court. 16 D. TRO As To Domains By Proxy 17 Plaintiff has not demonstrated that a TRO is necessary to obtain information from 18 Domains by Proxy. Instead, the Court construes the application as a request for leave to 19 conduct early discovery, which is granted. Plaintiff may attempt to obtain the information 20 sought via the procedures set forth in Rule 45 of the Federal Rules of Civil Procedure. See 21 generally J.P. Morgan Securities LLC v. Chamberlain, 2022 WL 4094151, *2 (D. Ariz. 22 2022) (discussing the standards governing a request to conduct expedited discovery). 23 II. Service 24 “The ACPA, which was adopted in 1999, provides two different methods for the 25 owner of a trademark or service mark to seek the transfer of an Internet domain name that 26 is identical or confusingly similar to the owner’s mark.” Hi-Rise Tech., Inc. v. 27 Amatuerindex.com, 2007 WL 1847249, *1 (W.D. Wash. 2007). “Under 15 U.S.C. 28 § 1125(d)(1)—which is sometimes referred to as ‘paragraph 1’ of the ACPA—the owner 1 of a mark may bring an in personam action against a person who registers, traffics in, or 2 uses the domain name.” Id. “In the alternative, 15 U.S.C. § 1125(d)(2)—also known as 3 ‘paragraph 2’ of the statute—authorizes the owner of the mark to bring an in rem action 4 against the domain name itself, provided that the in rem action is brought in the judicial 5 district in which the domain name registrar or registry is located1 and that other conditions 6 required by the statute are satisfied.” Id. “Paragraph 2” provides in relevant part:

7 (A) The owner of a mark may file an in rem civil action against a domain 8 name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered 9 or assigned the domain name is located if— 10 (i) the domain name violates any right of the owner of a mark 11 registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and 12

13 (ii) the court finds that the owner—

14 (I) is not able to obtain in personam jurisdiction over a 15 person who would have been a defendant in a civil action under paragraph (1); or 16

17 (II) through due diligence was not able to find a person who would have been a defendant in a civil action under 18 paragraph (1) by— 19 (aa) sending a notice of the alleged violation and 20 intent to proceed under this paragraph to the 21 registrant of the domain name at the postal and e-mail address provided by the registrant to the 22 registrar; and 23 (bb) publishing notice of the action as the court may 24 direct promptly after filing the action.

25 (B) The actions under subparagraph (A)(ii) shall constitute service of 26 process.

27 1 Plaintiff alleges that “GoDaddy is the registrar of Defendant Domain Name and 28 GoDaddy is located within the U.S. District Court for the District of Arizona.” (Doc. 1 ¶ 18.) 1 15 U.S.C. § 1125(d)(2)(A)-(B). 2 The Court previously determined in a cybersquatting case where, as here, “the 3 registrant of a domain name has concealed his or her identity by registering the domain 4 name under a fictitious name and has made himself or herself impossible to find . . . and 5 there is no way to know the city or even the country in which he or she might reside,” that 6 “there is simply no manner of publication that reasonably could be expected to reach the 7 registrant. Impossibility is reason enough for the Court to decline to direct publication. 8 The Court further notes that the registrant’s efforts to make himself or herself unfindable 9 cut against imposing upon Plaintiff a burdensome publication requirement.” Ent. USA Inc. 10 v. Baldinsky, 641 F. Supp. 3d 794, 800-01 (D. Ariz. 2022). 11 The statutory definition of “due diligence” has therefore been satisfied, as Plaintiff’s 12 counsel sent a notice and intent to proceed by both email to abuse@godaddy.com and by 13 first-class mail at Domains By Proxy, LLC, 100 S. Mill Ave, Suite 1600, Tempe Arizona 14 85281, which are the postal and email address provided by the registrant to the registrar. 15 (Doc. 1 ¶¶ 20-23; Doc. 4 ¶¶ 7-9.) Plaintiff’s counsel also notified the unknown registrant(s) 16 via an alternative process. (Doc. 1 ¶¶ 24-29.) 17 Thus, service of process is deemed effected. 18 III. Order To Show Cause 19 The Court orders Defendants to show cause why a preliminary injunction should 20 not issue by filing a memorandum in opposition, not to exceed 10 pages, by October 18, 21 2024. Upon receiving a memorandum in opposition from Defendants, the Court will set a 22 preliminary injunction hearing at the earliest possible date (and will, if necessary, extend 23 the duration of the TRO for an additional 14 days). If no memorandum in opposition is 24 filed, the TRO will convert into a preliminary injunction without further order from the 25 Court. 26 … 27 … 28 … 1 Accordingly, 2 IT IS ORDERED that service of process is deemed effected. 3 IT IS FURTHER ORDERED that Plaintiff may pursue expedited discovery from 4 Domains By Proxy to ascertain Defendants’ identities and contact information. 5 IT IS FURTHER ORDERED that Plaintiff’s request for an ex parte TRO (Doc. 6 22) as to Domains by Proxy is denied. 7 IT IS FURTHER ORDERED that Plaintiff’s request for an ex parte TRO (Doc. 8 22) as to GoDaddy is denied without prejudice. 9 IT IS FURTHER ORDERED that Plaintiff’s request for an ex parte TRO and 10 OSC (Doc. 22) as to Defendants is granted. 11 IT IS FURTHER ORDERED that Defendants shall show cause why a preliminary 12 injunction should not issue by filing a memorandum in opposition, not to exceed 10 pages, 13 by October 18, 2024. Upon receiving a memorandum in opposition from Defendants, the 14 Court will set a preliminary injunction hearing at the earliest possible date (and will, if 15 necessary, extend the duration of the TRO for an additional 14 days). 16 IT IS FURTHER ORDERED that, for a period of 14 days, Defendants are 17 prohibited from: 18 1. creating, operating, owning, overseeing, or otherwise exercising control over 19 any infringing website, web page, or parked page, incorporating, including, or 20 otherwise displaying the trademark PASSING YOUR OBGYN BOARDS; and 21 2. registering, using, linking, transferring, selling, exercising control over, or 22 otherwise owning the domain name or any other domain name that uses 23 “PassingYourOBGYNBoards” or Plaintiff’s name; and 24 3. effecting any assignment or transfer, forming new entities or associations, or 25 utilizing any other device for the purpose of circumventing or otherwise 26 avoiding any of the prohibitions set forth in this Order; and 27 4. impersonating the Company, or otherwise interfering with the Company’s social 28 media accounts, customers, e-commerce accounts, point of sale accounts and/or 1 payment platforms. 2 IT IS FURTHER ORDERED that if Defendants fail to respond to the OSC by 3|| October 18, 2024, the restrictions above shall constitute a preliminary injunction that shall remain in effect throughout the pendency of this litigation. 5 IT IS FURTHER ORDERED that Plaintiff shall serve Defendants with this order 6 || via email to abuse @ godaddy.com and by first-class mail to Domains By Proxy, LLC, 100 7\| S. Mill Ave, Suite 1600, Tempe, Arizona 85281 and file a notice on the docket when 8 || service of this order is completed. 9 Dated this 8th day of October, 2024. 10 11 fm ee” 12 f t _o——— Dominic W. Lanza 13 United States District Judge 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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