Mira Holdings Incorporated v. UHS of Delaware Incorporated

• Court: District Court, D. Arizona
• Decided: August 18, 2023
• Docket: 2:23-cv-00169
• Status: Unknown

Opinion

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

9 Mira Holdings Incorporated, No. CV-23-00169-PHX-MTL

10 Plaintiff, ORDER

11 v.

12 UHS of Delaware Incorporated,

13 Defendant. 14 15 This case involves a dispute over the internet domain name ProminenceHealth.com 16 (the “Disputed Domain”). Plaintiff Mira Holdings Inc. (“Mira”) brought this action to halt 17 the transfer of that domain name to Defendant UHS of Delaware Inc. (“UHSD”). 18 Defendant moves to dismiss Plaintiff’s First Amended Complaint (“FAC”) (Doc. 12). 19 (Doc. 24.) The motion is fully briefed, and the Court heard oral argument on the same. 20 (Docs. 24, 26, 29.) For the reasons stated below, the Court will grant the motion in part and 21 deny the motion in part. 22 I. BACKGROUND 23 On April 15, 2021, Plaintiff purchased the Disputed Domain in connection with 24 Mira’s business plan to acquire and use various generic domain names containing the word 25 “health” “as and when they become available for leasing, sale or email services.”1 (Doc. 26 12, ¶¶ 8-10.) Plaintiff then registered the Disputed Domain with third-party registrar 27 GoDaddy, Inc. (“GoDaddy”). (Id., ¶ 9, 13.) Since acquiring the Disputed Domain, Mira

28 1 The Disputed Domain was originally registered on March 7, 2014 by a different owner, but this fact is not pleaded in Plaintiff’s FAC. (See Doc. 1 at 18.) 1 has “parked” the domain name with a “parking company” monetizer, Bodis.com, a 2 common practice for domain registrants.2 (Id., ¶ 9.) 3 Defendant UHSD is in the healthcare services industry. (See Doc. 1 at 18.) 4 Defendant applied for a trademark registration for “Prominence Health Plan” in connection 5 with, inter alia, “health insurance administration.” (Id.) The mark registered on November 6 3, 2015. (Id.) After learning of Plaintiff’s registration of the Disputed Domain, Defendant 7 initiated a domain name transfer proceeding with the World Intellectual Property 8 Organization (“WIPO”) in October 2022.3 (Doc. 12, ¶ 13.) On January 12, 2022, WIPO 9 issued a decision ordering GoDaddy to initiate the transfer of the Disputed Domain to 10 Defendant.4 (Id., ¶ 14.) As of the filing of the FAC, “the domain name continues to be 11 ‘locked’ pending the transfer of the registration to the Defendant. . . .”5 (Id.) 12 Plaintiff brought this action to prevent the transfer of the Disputed Domain, 13 asserting claims under the Anticybersquatting Consumer Protection Act (“ACPA”), Pub. 14 L. No. 106-113, §§ 3001-01, 113 Stat. 1501 (1999). Count one of the FAC seeks a 15 declaration that Plaintiff’s registration and use of ProminenceHealth.com is not unlawful 16 under Section 1125(d). (Doc. 12, ¶¶ 28-38); see 15 U.S.C. § 1114(2)(D)(v). Count two 17 seeks an injunction against the pending transfer under Section 1114(2)(D). (Doc. 12, 18 2 A “parking company” provides related ad content for the domain webpage and may share 19 the revenue earned with the domain owner. Ricks v. BMEzine.com, 727 F. Supp. 2d 936, 943 (D. Nev. 2010). 20 3 WIPO is a United Nations Agency that provides various intellectual property services, including domain name dispute resolution pursuant to the Uniform Domain Name 21 Resolution Policy (“UDRP”). “This administrative proceeding allows entities to challenge ownership of domain names and, upon prevailing, obtain ownership and control over the 22 domain names.” Dent v. Lotto Sport Italia SpA, No. CV-17-00651-PHX-ROS, 2018 WL 11318189, at *1 (D. Ariz. Feb. 12, 2018). 23 4 The WIPO panel concluded that the domain name was confusingly similar to the “Prominence Health Plan” mark, Plaintiff had no right or legitimate interest in the domain, 24 and Plaintiff had registered and used it in bad faith. (See Doc. 1 at 19-20.) “The WIPO decision ‘is not accorded deference on the merits in federal court.’” IFIXITUSA LLC v. 25 iFixit Corp., No. CV-21-00887-PHX DGC, 2022 WL 2117845, at *1 n.2 (D. Ariz. Jun. 13, 2022) (quoting Dent v. Lotto Sport Italia SpA, No. CV-17-00651-PHX-DMF, 2021 WL 26 242100, at *1 (D. Ariz. Jan. 25, 2001) (citations and alterations omitted)); AIRFX.com v. AirFX LLC, No. CV 11-01064-PHX-FJM, 2011 WL 5007919, at *4 (D. Ariz. Oct. 20, 27 2011) (“[F]indings of the UDRP panel . . . are not binding on this [C]ourt.”). 5 Plaintiff alleges that because the domain is “locked” by GoDaddy, Plaintiff is prohibited 28 from using the domain name and GoDaddy will transfer the domain to Defendant unless Plaintiff secures an injunction from this court. (Doc. 12, ¶ 13; Doc. 26 at 4.) 1 ¶¶ 39-43); see 15 U.S.C. § 1114(2)(D)(v)-(iv). Defendant moves to dismiss both counts 2 under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. (Doc. 24.) 3 II. LEGAL STANDARD 4 A. Rule 12(b)(6) 5 To survive a motion to dismiss for failure to state a claim, a complaint must contain 6 “a short and plain statement of the claim showing that the pleader is entitled to relief” such 7 that the defendant is given “fair notice of what the . . . claim is and the grounds upon which 8 it rests.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting Fed. R. Civ. P. 9 8(a)(2)). Dismissal under Rule 12(b)(6) “can be based on the lack of a cognizable legal 10 theory or the absence of sufficient facts alleged under a cognizable legal theory.” Balistreri 11 v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir. 1988). A complaint should not be 12 dismissed “unless it appears beyond doubt that the plaintiff can prove no set of facts in 13 support of the claim that would entitle it to relief.” Williamson v. Gen. Dynamics Corp., 14 208 F.3d 1144, 1149 (9th Cir. 2000). 15 The Court must accept material allegations in the Complaint as true and construe 16 them in the light most favorable to Plaintiff. North Star Int’l v. Arizona Corp. Comm’n, 17 720 F.2d 578, 580 (9th Cir. 1983). “Indeed, factual challenges to a plaintiff’s complaint 18 have no bearing on the legal sufficiency of the allegations under Rule 12(b)(6).” Lee v. City 19 of Los Angeles, 250 F.3d 668, 688 (9th Cir. 2001). In general, review of a Rule 12(b)(6) 20 motion is “limited to the content of the complaint.” North Star Int’l, 720 F.2d at 581; 21 see also Fed. R. Civ. P. 12(d). “There are two exceptions to this rule: the 22 incorporation-by-reference doctrine, and judicial notice under Federal Rule of Evidence 23 201.” Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 998 (9th Cir. 2018); see also 24 Tellabs, Inc. v. Makor Issues & Rts., Ltd., 551 U.S. 308, 322 (2007) (“[C]ourts must 25 consider the complaint in its entirety, as well as other sources courts ordinarily examine 26 when ruling on Rule 12(b)(6) motions to dismiss, in particular, documents incorporated 27 into the complaint by reference, and matters of which a court may take judicial notice.”). 28 1 III. DISCUSSION 2 A. Standing 3 Defendant argues that Plaintiff does not have standing to bring this lawsuit because 4 it is not the “domain name registrant” as that term is used in the ACPA. (Doc. 24 at 4-5.) 5 Defendant asserts that Plaintiff’s domain privacy service, “Above Privacy,” is the actual 6 domain name registrant so Plaintiff is without standing to bring this suit. (Id.) Although 7 Defendant does not address which type of standing Plaintiff is lacking, it appears that 8 Defendant attacks Plaintiff’s statutory standing. Shenzhen Big Mouth Tech. Co., Ltd. v. 9 Factory Direct Wholesale, LLC, No. 21-cv-09545-RS, 2022 WL 1016666, at *3 (N.D. Cal. 10 Apr. 5, 2022) (“This motion addresses who is allowed to bring a claim under section 11 1114(2)(D)(iv), which concerns the statute’s restrictions on who may sue, not Article III 12 standing.”); see also Graden v. Conexant Sys. Inc., 496 F.3d 291, 295 (3d Cir. 2007) 13 (“Statutory standing is simply statutory interpretation: the question it asks is whether 14 Congress has accorded this injured plaintiff the right to sue the defendant to redress his 15 injury.”) 16 Under Section 1114(2)(D)(iv), a trademark owner that causes a domain name 17 transfer by making a knowing and material misrepresentation regarding the domain name’s 18 similarity to a protected mark is liable for any damages incurred by the “domain name 19 registrant.” 15 U.S.C. § 1114(2)(D)(iv). Similarly, Section 1114(2)(D)(v) allows a “domain 20 name registrant” “to file a civil action to establish that the registration or use of the domain 21 name . . . is not unlawful . . .” when its domain name has been “suspended, disabled, or 22 transferred.” Id. § 1114(2)(D)(v). Under both sections, the “domain name registrant” may 23 be entitled to injunctive relief. Id. § 1114(2)(D)(iv)-(v). Additionally, Section 24 1125(d)(1)(D) limits liability for cyberpiracy to the domain name registrant “or that 25 registrant’s authorized licensee.” Id. § 1125(d)(1)(D). 26 Defendant only invokes Facebook Inc. v. Namecheap Inc., No. CV-20-00470-PHX- 27 GMS, 2020 WL 6585534 (D. Ariz. Nov. 10, 2020) to support its position. In Facebook 28 Inc., the original domain name registrants used domain privacy service WhoisGuard to 1 shield their contact information from the public. Id., at *1. There, WhoisGuard 2 “register[ed] [its] customers’ domain names in [its own] name and license[d] the domain 3 names back to the customers. As the domain name registrant, WhoisGuard’s name, not the 4 name of the customer, is listed in the WHOIS record, a directory that contains the identity 5 and contact information for domain names.”6 Id. When the trademark owner requested the 6 customer’s contact information from WhoisGuard related to potential ACPA violations, 7 WhoisGuard refused. Id., at *2. This Court found that it could exercise personal jurisdiction 8 over WhoisGuard for alleged violations of the ACPA based on its contractual arrangements 9 and its refusal to identify the underlying alleged infringers. Id., at *3 (“Once a [] customer 10 elects to use WhoisGuard’s proxy service, WhoisGuard becomes the domain name 11 registrant for that customer’s domain.”) 12 Facebook Inc. did not address the question presented here, whether a domain name 13 owner has statutory standing under the ACPA when it uses a domain privacy service to 14 shield its contact information from the public. Facebook Inc. did not address standing at 15 all, but instead evaluated personal jurisdiction over the third-party domain privacy service 16 based on its own actions in failing to disclose its customer’s identities during an ACPA 17 dispute. 2020 WL 6585534, at *1-3. Thus, the Court declines to apply the Facebook Inc. 18 holding to this case.7 Defendant does not provide any other support for its position, and the 19 Court is not aware of any cases holding that a domain name owner forgoes its rights under 20 the ACPA by electing to use a domain privacy service to shield its personal information. 21 Instead, other courts have implicitly recognized that domain name registrants may properly 22 conceal their identity through a domain privacy service. See, e.g., Getir U.S., Inc. v. 23 , No. 1:21cv1237 (RDA/WEF), 2023 WL 3061870, at *8 (E.D. Va. Mar, 24 14, 2023) (evaluating whether “anonymous registrants” acted in bad faith under the

25 6 “WHOIS is a database maintained by domain name registrars which [identifies] the person who owns particular domain names.” Ricks, 727 F. Supp. 2d at 943 n.2 (citing 26 Kremen v. Cohen, 325 F.3d 1035, 1049 n.12 (9th Cir. 2003)). 7 Even if the Court were persuaded to apply Facebook Inc., there are not enough facts 27 presented here regarding the arrangement between Mira and its domain privacy service, Above Privacy, to draw conclusions about Mira’s status as the actual owner and user of the 28 domain name. 1 ACPA); Guo v. 8bo.com, No. 13-cv-05299 NC, 2014 WL 2581315, at *2–3 (N.D. Cal. 2 Jun. 6, 2014) (recognizing that a plaintiff must properly serve the “real owner” of a domain 3 name via the intermediate privacy service registrant’s address listed in the WHOIS record 4 for the domain name); Doggie Dental, Inc. v. Shahid, No. 4:19-cv-01705-KAW, 2021 WL 5 4582112, at *3-4 (N.D. Cal. Jun. 17, 2021) (finding service of process adequate for 6 purposes of default judgment where the plaintiff, inter alia, personally served a subpoena 7 on a domain privacy service listed as the domain name registrant requesting the identity of 8 the website owner). 9 The ACPA does not define “domain name registrant” and is silent regarding who 10 has standing to sue when a domain privacy service is used to conceal the domain owner’s 11 personal information from the public. “When construing a statute a court must ‘interpret 12 the relevant words not in a vacuum, but with reference to the statutory context, structure, 13 history and purpose.’” Blair v. Automobili Lamborghini SpA, No. CV-22-01439-PHX- 14 ROS, 2023 WL 4548352, at *4 (D. Ariz. July 14, 2023) (quoting Abramski v. United States, 15 573 U.S. 169, 179 (2014)). “When faced with two proposed meanings of a particular 16 statutory term, both of which have some basis, a court should adopt ‘the interpretation that 17 is more consistent with the broader context and primary purpose of the statute.’” Id. 18 (quoting Connell v. Lima Corp., 988 F.3d 1089, 1097 (9th Cir. 2021)). “Sections 19 1114(2)(D)(iv) and (v) are part of the same clear statutory scheme: to provide a form of 20 relief to domain name registrants who risk losing their registrations by reverse hijackers.” 21 Shenzhen Big Mouth Tech. Co., Ltd., 2022 WL 1016666, at *4. And the purpose of the 22 ACPA is “to protect the rights of domain name registrants against overreaching trademark 23 owners.” Id. at *5 (quoting S. Rep. No. 106-140 at 11 (1999)) (emphasis removed). 24 Interpreting Section 1114 as suggested by Defendant would frustrate these purposes of the 25 ACPA. See Blair, 2023 WL 4548352, at *4. 26 If only domain privacy services, when used, had statutory standing to sue for reverse 27 domain name hijacking under the ACPA, thousands of website operators who actually 28 maintain and control their domains would lose their statutory right to challenge UDRP 1 proceeding determinations in federal court. Instead, they would be required to rely on their 2 domain privacy service to file an action to recover access to their domain, even if their 3 domain privacy service had no active role in maintaining or controlling the domain. In any 4 event, it is not clear that a domain privacy service would have a cognizable injury under a 5 constitutional standing analysis, potentially resulting in a situation where no one has 6 standing to sue to regain possession of the disputed domain name. See Lujan v. Defenders 7 of Wildlife, 504 U.S. 555, 560 (1992) (“[T]he plaintiff must have suffered an ‘injury in 8 fact’—an invasion of a legally protected interest which is (a) concrete and particularized; 9 and (b) actual or imminent, not conjectural or hypothetical[.]”) (internal quotations 10 omitted). 11 Plaintiff avers that it “parks” its website with ad-monetizer Bodis.com, suggesting 12 that Defendant’s actions in instituting the UDRP proceedings have negatively affected 13 Plaintiff’s own ad-revenue profits, not those of Above Privacy. (Doc. 12, ¶ 9, 27.) In accord 14 with the purpose of the ACPA, “it reasonably follows that the person who can sue is the 15 person who incurred the harm and has a right to the remedy. . . .” Shenzhen Big Mouth 16 Tech. Co., Ltd., 2022 WL 1016666, at *4. Here, that “person” is Mira, not Above Privacy, 17 regardless of whose contact information is displayed on the WHOIS record.8 At the 18 pleading stage, the Court must credit Mira’s allegation in the FAC that it is the domain 19 name owner and “faces losing valuable rights in its Internet domain name.” (Doc. 12, ¶¶ 6, 20 27.) Thus, the Court finds that Plaintiff has established its statutory standing to sue under 21 the ACPA at this stage of the case.9 22 B. Count One 23 Count one of the FAC generally seeks a declaration that Plaintiff’s registration and 24 8 The Court notes that, in general, a company does not lose its standing to sue for 25 business-related injuries merely because a registered agent is listed on the secretary of state’s website for service of process. In the absence of authority suggesting otherwise, the 26 Court presumes, without deciding, that the same is true for original domain name registrants that utilize a domain privacy service but maintain operation and control of the 27 domain in all other respects. 9 Plaintiff conceded at oral argument, however, that Defendant may reassert its standing 28 argument at the summary judgment stage, should facts elicited during discovery support it as a matter of law. 1 use of ProminenceHealth.com is not unlawful under Section 1125(d). (Doc. 12, ¶¶ 28-38.) 2 Within that count, Plaintiff invokes Section 1114(2)(D)(v) and alleges that Defendant 3 “intentionally misrepresented” facts about the domain name and Defendant’s trademark to 4 the WIPO panel, which is a required element of Section 1114(2)(D)(v). (Id., ¶¶ 29-30, 34.) 5 “These are actually two separate violations: one for fraud in the domain dispute proceeding, 6 (15 U.S.C. § 1114(2)(D)(iv)), and a second for reverse domain name hijacking, (15 U.S.C. 7 § 1114(2)(D)(v)).” Dent v. Lotto Sport Italia SpA, No. CV-17-00651-PHX-DMF, 2021 WL 8 242100, at *2 (D. Ariz. Jan. 25, 2001). The Court thus analyzes these as separate causes of 9 action for the purposes of this Order. 10 1. Section 1114(2)(D)(iv) 11 Under Section 1114(2)(D)(iv), “a domain name registrant may sue a trademark 12 owner for making certain material misrepresentations in the domain name dispute 13 proceeding.” IFIXITUSA LLC, 2022 WL 2117845, at *2. “To state a claim [under Section 14 1114(2)(D)(iv)], a plaintiff must show that the disputed domain name was ‘suspended, 15 disabled, or transferred’ by a domain registrar because of a knowing and material 16 misrepresentation by [a] defendant.” Baklan v. All Answers Ltd., No. 17 CV-20-00707-PHX-JZB, 2020 WL 6063254, at *2 (D. Ariz. Oct. 14, 2020) (quoting 15 18 U.S.C. § 1114(2)(D)(iv)). The knowing and material misrepresentation must be “that a 19 domain name is identical to, confusingly similar to, or dilutive of a mark.” IFIXITUSA 20 LLC, 2022 WL 2117845, at *6. “Even if the alleged misrepresentations were knowing and 21 material, [Section 1114(2)(D)(iv)] ‘includes a causation requirement. The transfer must be 22 “based on” the knowing and material misrepresentations.’” IFIXITUSA LLC, 2022 WL 23 2117845, at *6 (quoting ISystems v. Spark Networks Ltd., No. 3:08-CV-1175-N, 2014 WL 24 12714837, at *4 (N.D. Tex. Sept. 19, 2014)). 25 There is only one paragraph in the FAC addressing the misrepresentation 26 requirement of Section 1114(2)(D)(iv): 27 The Defendant intentionally misrepresented to the UDRP 28 Panel that the disputed Domain Name was used to attract, for commercial gain, Internet users to the Plaintiff’s website or 1 other on-line locations, creating the possibility of confusion with the mark of the Defendant as to the source or commercial 2 origin of those products, though Defendant knew that there 3 were no products of Defendant or Defendant’s competitors being promoted by Plaintiff. 4

5 (Doc. 12, ¶ 34.) The remainder of Plaintiff’s allegations broadly refer to “the actions of 6 Defendant” without discussing any misrepresentation. (See id., ¶¶ 6, 27.) In the three 7 paragraphs in the FAC discussing the WIPO panel decision, Plaintiff merely alleges that 8 Defendant initiated the UDRP proceeding and the panel “rendered a decision requiring the 9 transfer of the domain name to Defendant.” (Doc. 12, ¶ 14.) 10 Assuming that Plaintiff’s allegations of Defendant’s intentional misrepresentations 11 to the panel are sufficient to survive a motion under Rule 12(b)(6), Plaintiff’s FAC is 12 devoid of any factual allegations related to WIPO’s decision-making process. To state a 13 claim, the FAC must include facts to support a conclusion that the panel based its decision 14 to transfer the disputed domain name on Defendant’s alleged misrepresentations. See 15 Balkan, 2020 WL 6063254, at *3; see also IFIXITUSA LLC, 2022 WL 2117845, at *6. 16 Because Plaintiff’s FAC does not allege sufficient facts about what misstatements the 17 WIPO panel relied on, Plaintiff has not sufficiently stated a claim for relief under Rule 18 12(b)(6). See Baklan, 2020 WL 6063254, at *4.10 Therefore, the Court need not address 19 the parties’ myriad arguments related to whether Plaintiff plausibly alleged that Defendant 20 made a knowing and material misrepresentation that the domain name is identical to, or 21 confusingly similar to, or dilutive of a mark. 22 2. Section 1114(2)(D)(v) 23 Under Section 1114(2)(D)(v), “a domain name registrant who is aggrieved by an 24 overreaching trademark owner may bring an action to declare that the domain name 25 registration and use is not unlawful under the ACPA’s ‘cyberprivacy prevention’ clause,

26 10 Defendant asserts that the applicable pleading standard here is the heightened standard under Federal Rule of Civil Procedure 9(b) because a claim under Section 1114(2)(D)(iv) 27 is a claim sounding in fraud. (Doc. 24 at 5-6.) Plaintiff disagrees, arguing that the Rule 8 notice pleading applies instead. (Doc. 26 at 7-9.) The Court finds that Plaintiff fails to state 28 a claim under Section 1114(2)(D)(iv) that satisfies Rule 8, let alone Rule 9(b)’s heightened standard. 1 [Section] 1125(d).” IFIXITUSA LLC, 2022 WL 2117845, at *2. This “reverse domain 2 hijacking claim,” requires Plaintiff to establish four elements: (1) Plaintiff is the domain 3 name registrant; (2) Plaintiff’s domain name was suspended, disabled, or transferred under 4 a policy implemented by a domain name registrar; (3) Defendant, as the trademark owner 5 seeking the domain name transfer, had notice of the action; and (4) Plaintiff’s use or 6 registration of the domain name was not unlawful under the ACPA.11 Id.; 15 U.S.C. § 7 1114(2)(D)(v). 8 The parties agree that Plaintiff satisfies the first three requirements.12 Thus, the only 9 remaining question is whether Plaintiff’s FAC sufficiently alleges that Plaintiff’s 10 “registration or use of the disputed domain name is not unlawful under [the ACPA].” 15 11 U.S.C. § 1114(2)(D)(v). Courts have held that, to satisfy the lawful registration or use 12 element of Section 1114(2)(D)(v), Plaintiff need only establish that its conduct did not 13 violate one of the two provisions of Section 1125(d)(1). IFIXITUSA LLC, 2022 WL 14 2117845, at *2; Strong Coll. Students Moving Inc. v. Coll. Hunks Hauling Junk 15 Franchising LLC, No. CV-12-01156-PHX-DJH, 2015 WL 12602438, at *8 (D. Ariz. May 16 15, 2015). 17 To show that [its] conduct is not unlawful under [Section] 18 1125(d)(1), Plaintiff[] must “prove either (1) [it] did not register, traffic, or use a domain name that is identical or 19 confusingly similar to [a mark that is distinctive at the time of 20 registration of the domain name], or (2) [it] did not have a bad faith intent to profit from that mark.” 21 IFIXITUSA LLC, 2022 WL 2117845, at *3 (quoting Strong Coll. Students Moving Inc., 22 2015 WL 12602438, at *8) (alterations added); see also Mira Holdings, Inc. v. Regents of 23 University of California, No. 6:18-cv-190-Orl-37GJK, 2018 WL 8244597, at *3 (M.D. Fla. 24 Dec. 10, 2018); 15 U.S.C. §§ 1125(d)(1)(A)(i)–(ii), 1125(d)(1)(B)(i)–(ix). Defendant 25

26 11 “The ACPA is codified in scattered sections of Title 15 of the United States Code, including 15 U.S.C. §§ 1114(2)(D) and 1125(d).” IFIXITUSA LLC, 2022 WL 2117845, at 27 *1 (citations omitted). 12 Although Defendant challenges whether Plaintiff is the domain name registrant for the 28 purposes of statutory standing, Defendant does not repeat those arguments related to whether Plaintiff states a claim under Section 1114(2)(D)(v). 1 argues that Plaintiff’s FAC is deficient on both prongs of the test. (Doc. 24 at 7, 10, 15.) 2 The Court will address each of Defendant’s arguments in turn. 3 a. Distinctiveness 4 To satisfy the distinctiveness prong of Section 1125(d)(1), Plaintiff’s FAC must 5 allege that it did not register, traffic in, or use a domain that is identical or confusingly 6 similar to a mark “that is distinctive [or famous] at the time of registration of the domain 7 name.” 15 U.S.C. § 1125(d)(1)(A)(ii)(I)–(II). In GoPets Ltd. v. Hise, the Ninth Circuit held 8 that “registration,” as used in Section 1125(d), is limited to the first registration of a domain 9 name and does not encompass subsequent re-registrations. 657 F.3d 1024, 1032 (9th Cir. 10 2011). In other words, the distinctiveness or famousness of a mark, for the purposes of 11 liability under Section 1125(d)(1), is judged at the time of the initial registration of a 12 domain name. Id. at 1030. To find a domain name registrant liable under Section 13 1125(d)(1) for cyberpiracy, then, the asserted mark must have been distinctive or famous 14 prior to the initial domain name registration. Id. at 1032 (“Because Edward Hise registered 15 gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture’s 16 re-registration and continued ownership of gopets.com does not violate [Section] 17 1125(d)(1).”). Because civil actions under Section 1114(2)(D)(v) seek a declaration that a 18 domain name registrant did not violate Section 1125(d)(1) with its registration or use of a 19 domain name, the GoPets holding necessarily applies here too. See IFIXITUSA LLC, 2022 20 WL 2117845, at *2; Strong Coll. Students Moving Inc., 2015 WL 12602438, at *8. 21 Defendant’s argument that the GoPets holding does not apply to the “traffics in or 22 uses” element of Section 1125(d)(1) is not well taken. (See Doc. Doc. 29 at 8-9.) Section 23 1125(d)(1)(A) states:

24 A person shall be liable in a civil action by the owner of a mark. . . , if. . . , that person— . . . registers, traffics in, or uses 25 a domain name that—in the case of a mark that is distinctive at the time of registration of the domain name, is identical or 26 confusingly similarly to that mark[.] 27 Id. (emphasis added). By its own text, Section 1125(d)(1) liability only attaches to a domain 28 owner’s registration, trafficking, and use of a domain name if that domain name is identical 1 or confusingly similar to “a mark that is distinctive at the time of registration of the domain 2 name.” Id. GoPets interpreted what it means for a mark to be “distinctive at the time of 3 registration of the domain name,” contrary to Defendant’s assertions. 657 F.3d 1024, 1030. 4 Under GoPets, the distinctiveness of a mark is judged at the time of the initial registration 5 of a domain name, not at the time of any subsequent re-registration of that domain name. 6 Id. at 1030–32. Although Defendant points to disagreement with GoPets in other circuits, 7 this Court is in the Ninth Circuit and is bound to apply its law. Moreover, to the extent 8 Defendant asks this Court to rely on DSPT Int’l v. Nahum, 624 F.3d 1213 (9th Cir. 2010) 9 instead of GoPets, the Court need not reach this issue. Even applying GoPets, as Plaintiff 10 asks this Court to do, Plaintiff fails to state a claim for relief.13 11 In the FAC, Plaintiff alleges that it purchased and registered the disputed domain 12 name in April of 2021. (Doc. 12, ¶ 9.) Plaintiff further asserts that “Defendant [UHSD] has 13 no registered U.S. trademarks for ‘Prominence Health.’” (Id., ¶ 12.) Plaintiff alleges that 14 Defendant filed a trademark registration application for “Prominence Health” on June 2, 15 2021, but that it has not yet been approved. (Id.) In its response, however, Plaintiff asserts 16 an entirely new set of facts to support its Section 1114(2)(d)(v) claim. (Doc. 26 at 9-16.) 17 Plaintiff’s response alleges, for the first time, that the initial registration of the disputed 18 domain name occurred in 2014 prior to Defendant’s first use of its mark in commerce. (Id. 19 at 11.) Importantly, though, the FAC contains no allegations relating to the initial 2014 20 domain name registration of ProminenceHealth.com or Defendant’s first use of its marks 21 in commerce. So, to the extent Plaintiff now attempts to argue that the initial 2014 22 registration of the domain name satisfies its burden to show that it did not register, traffic

23 13 Defendant also argues that GoPets should not apply to this case because it alleges that Plaintiff is not a “bona fide purchaser” under traditional property law principles because 24 Defendant inadvertently let the domain name registration lapse after settling a dispute with the previous owner of the domain. (Doc. 29 at 7.) Regardless of the GoPets court’s 25 discussion of common law property principles as support for its statutory interpretation, whether Plaintiff constitutes a bona fide purchaser of the website is not the relevant legal 26 test. Instead, the relevant inquiry is whether Plaintiff registered, trafficked in or used a domain name identical or confusingly similar to a mark that was distinctive or famous at 27 the time of the domain name registration. 15 U.S.C. § 1125(d)(1)(A)(ii)(I). GoPets limits that inquiry to the initial domain name registration. 657 F.3d at 1030–32. Defendant’s 28 reliance on apparent dicta about property law principles to distinguish GoPets from this case is misplaced. 1 in, or use a domain name that is identical or confusingly similar to a distinctive mark, 2 Plaintiff failed to include these allegations in its FAC.14 Plaintiff concedes that “the 3 Complaint is admittedly not entirely clear about the[] dates” related to the first domain 4 name registration and Defendant’s trademark registration. (See Doc. 26 at 11.) Because 5 GoPets requires the Court to analyze the distinctiveness of the mark at the time of the initial 6 registration for violations of Section 1125(d)(1), and Plaintiff failed to allege facts for the 7 Court to engage in that analysis without looking outside of the FAC, Plaintiff has failed to 8 state a claim under the distinctiveness prong of the analysis.15 9 b. Bad Faith 10 Section 1125(d)(1)(B) enumerates nine factors for courts to consider in evaluating 11 whether a person has a bad faith intent to profit from a protected mark. 15 U.S.C. 12 § 1125(d)(1)(B)(i)–(ix). “Courts need not march through the nine factors seriatim because 13 their use is merely permissive and the most important grounds for finding bad faith are the 14 unique circumstances of the case.” IFIXITUSA LLC, 2022 WL 2117845, at *4 (quotations 15 omitted). 16 Plaintiff addresses several of the bad faith intent factors in the FAC. Many of 17 Plaintiff’s allegations are merely conclusory statements that are identical to the bad faith 18 factors recited in Section 1125(d)(1)(B), but some of them are not. Plaintiff alleges that it 19 has maintained a legitimate, generic domain name investment business for the last ten 20 years. (Doc. 12, ¶ 11.) Plaintiff further alleges that as part of its business plan, it began 21 14 The Court notes that the WIPO panel generally discusses these dates in its decision and 22 Plaintiff attached that decision to its Complaint. (See Doc. 1 at 18.) At oral argument, however, Plaintiff argued that the Court should not rely on the WIPO panel’s recitation of 23 the facts. Thus, Plaintiff’s incorporation-by-reference of the WIPO panel decision cannot save its deficient complaint. 24 15 To support its new allegations, Plaintiff relies on screen captures of both the WHOIS record for the disputed domain name and a USPTO trademark search page for Defendant’s 25 “Prominence Health Plan” mark. (Doc. 26 at 11-12.) Both parties extensively discuss these records in their respective briefs and ask the Court to take judicial notice of them, but they 26 appear to dispute the inferences to be drawn from the facts within those records. (Doc. 26 at 11-12; Doc. 24 at 2; Doc. 29 at 3 n.2.) Neither party supplies the Court with “the 27 necessary information” required to determine that the facts are “not subject to reasonable dispute” and “can be readily and accurately determined.” See Fed. R. Evid. 201. Thus, the 28 Court cannot take judicial notice of the disputed facts contained in those documents, even if they are otherwise susceptible to judicial notice. See Khoja, 899 F.3d at 999. 1 acquiring two-word domain names that contain the word “health.” (Id.) Plaintiff further 2 alleges that “Defendant UHS has no registered U.S. trademarks for ‘Prominence Health,’” 3 and a trademark search for those terms returned zero registrations for “Prominence Health” 4 prior to Plaintiff’s registration of the domain name. (Id., ¶ 9.) Plaintiff further avers that 5 although the domain name is currently for sale, “Plaintiff has never sold, transferred, or 6 trafficked in the domain name” “[n]or has it at any time specifically offered to sell the 7 domain name to Defendant.” (Id., ¶ 22.) “At all times, Plaintiff utilized the domain name 8 in a bona fide manner for bona fide purposes.” (Id., ¶ 23.) Plaintiff also alleges that it did 9 not have “any intent to divert customers from the mark owner’s online location” or 10 otherwise create “a likelihood of confusion” with Defendant’s mark. Plaintiff asserts that 11 the disputed domain name is generic. (Id., ¶ 11.) 12 At the pleading stage, Plaintiff’s allegations, taken as true and viewed in the light 13 most favorable to Plaintiff, are enough to state a claim for relief. See Twombly, 550 U.S. at 14 555. Defendant recounts each factor over five pages of its motion, “relying on disputed 15 facts, evidence not relied on in the complaint, and evidence not subject to judicial notice in 16 an effort to demonstrate Plaintiff’s purpose was unlawful.” Dent, 2018 WL 11318189, at 17 *3. Although the Court agrees with Defendant that Plaintiff “could have provided greater 18 detail,” Defendant invites the Court engage in a fact-intensive analysis of Plaintiff’s alleged 19 bad faith intent to profit from Defendant’s mark that is inappropriate on a motion to dismiss 20 under Rule 12(b)(6). See IFIXITUSA LLC, 2022 WL 2117845, at *3–4 (finding that a 21 “motion to dismiss is not the proper vehicle to engage in a fact-specific analysis” regarding 22 a Plaintiff’s violation of Section 1125(d)(1) where the claims were plausible) (citations 23 omitted).16 24 C. Count Two – Injunction Under Section 1114(2)(D) 25 Section 1114(2)(D) provides that the court may “grant injunctive relief to the

26 16 Defendant also argues that Plaintiff fails to plausibly allege that it qualifies for the ACPA’s safe harbor provision. (Doc. 24 at 15-16.) Nowhere in Plaintiff’s FAC nor 27 Plaintiff’s response does it assert that the safe harbor provision applies to its conduct. Thus, the Court need not weigh in on whether Plaintiff sufficiently states a claim under the 28 ACPA’s safe harbor provision in Section 1125(d)(1)(B)(ii). 1 domain name registrant, including the reactivation of the domain name or transfer of the 2 domain name to the domain name registrant.” 15 U.S.C. § 1114(2)(D)(iv)-(v). Although 3 the parties do not address count two specifically, the Court notes that, to the extent Plaintiff 4 seeks injunctive relief under Section 1114(2)(D)(iv), Plaintiff failed to state a claim for 5 which relief could be granted under that statutory section. See Part III.B.1, supra. Because 6 Plaintiff’s Section 1114(2)(D)(v) claim survives dismissal, Plaintiff’s request for injunctive 7 relief under the same section also survives. See IFIXITUSA LLC, 2022 WL 2117845, at *7. 8 D. Leave to Amend 9 Plaintiff argues that the Court should grant it leave to amend its deficient allegations. 10 (Doc. 26 at 7, 17.) Defendant does not appear to oppose Plaintiff’s request. Federal Rule 11 of Civil Procedure 15(a) provides that leave to amend should be freely granted “when 12 justice so requires.” Fed. R. Civ. P. 15(a)(2). “The power to grant leave to amend . . . is 13 entrusted to the discretion of the district court, which ‘determines the propriety of a motion 14 to amend by ascertaining the presence of any of four factors: bad faith, undue delay, 15 prejudice to the opposing party, and/or futility.’” Serra v. Lappin, 600 F.3d 1191, 1200 16 (9th Cir. 2010) (quotation omitted). District courts properly deny leave to amend if the 17 proposed amendment would be futile or the amended complaint would be subject to 18 dismissal. Saul v. United States, 928 F.2d 829, 843 (9th Cir. 1991). “[A] proposed 19 amendment is futile only if no set of facts can be proved under the amendment to the 20 pleadings that would constitute a valid and sufficient claim.” Miller v. Rykoff-Sexton, Inc., 21 845 F.2d 209, 214 (9th Cir. 1988). Based on th e dearth of factual allegations in Plaintiff’s 22 FAC related to its Section 1114(2)(D)(iv) claim, the Court cannot say that amendment 23 would be futile or prejudicial to Defendant, nor that Plaintiff engaged in bad faith or undue 24 delay in amending its original complaint. Moreover, the parties briefing addresses the 25 relevance of the initial registration of the Disputed Domain and Defendant’s first use of its 26 mark in commerce, and these facts do not appear in the FAC. Accordingly, the Court grants 27 Plaintiff leave to amend its FAC, as discussed herein. 28 1 ||IV. CONCLUSION 2 Accordingly, 3 IT IS ORDERED that Defendant’s Motion to Dismiss (Doc. 24) is granted in part 4|| and denied in part as follows: 5 1. Plaintiff's Section 1114(2)(D)(iv) claim is dismissed for failure to state a 6|| claim under Rule 12(b)(6). 7 2. The Motion is denied in all other respects. 8 IT IS FURTHER ORDERED that Plaintiff may file an amended complaint within 9|| 14 days from the date of this Order. 10 Dated this 18th day of August, 2023. 11 Michak T. Shure 13 Michael T. Liburdi 14 United States District Judge 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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