Protect-A-Car Wash Systems, Inc. v. Car Wash Partners, Inc.

276 F. Supp. 3d 439
CourtDistrict Court, D. Maryland
DecidedAugust 15, 2017
DocketCivil No. 16-cv-534-JFM
StatusPublished

This text of 276 F. Supp. 3d 439 (Protect-A-Car Wash Systems, Inc. v. Car Wash Partners, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Maryland primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Protect-A-Car Wash Systems, Inc. v. Car Wash Partners, Inc., 276 F. Supp. 3d 439 (D. Md. 2017).

Opinion

MEMORANDUM

J. Frederick Motz, United States District Judge

Plaintiff Protect-A-Car Wash Systems, Inc. (“Protect-A-Car”) brings suit against Defendants Car Wash Partners, Inc. (“CWP”), and CWP’s CEO, John L. Lai (“Lai”). Protect-A-Car alleges claims of: (1) trademark infringement under the Lanham Act; (2) unfair competition under the Lanham Act; (3) cybersquatting in violation of the Anti-Cybersquatting Consumer Protection Act; (4) cancellation of CWP’s registration and application under the Lanham Act; and (5) unfair competition under Maryland law. Now pending is Defendants’ motion for summary judgment [ECF No. 48], and Protect-A-Car’s motion for partial summary judgment [ECF No. 49]. The parties have fully briefed the motions, and no oral argument is necessary. See Local Rule 105.6. For the reasons set forth" below, Defendants’ motion is granted, and Protect-A-Car’s motion is denied.

[443]*443BACKGROUND

The uncontested facts are as follows. Protect-A-Car Wash Systems, Inc. (“Protect-A-Car” or “Plaintiff’) is a corporation that was organized and incorporated under the laws of the District of Columbia on January 12, 1960. [ECF No. 1, ¶ 4]. Protect-A-Car describes its operations as a business “that has been professionally cleaning cars in the greater Washington area since 1958.” [ECF No. 48, at p. 6]. Proteet-A-Car currently operates six car washes, and all six locations are currently located within 14 miles of Washington, D.C.1 Id. Plaintiff maintains its principal place of business at 101 North Glebe Road, Arlington, Virginia, 22203. [ECF No. 1, ¶ 4]. Protect-A-Car has been aware of Defendants since approximately 1995, and Defendants explored a possible acquisition of Protect-A-Car in 2000. [ECF No. 48, at p. 8; ECF No. 52, at p. 5].

Defendant Car Wash Partners, Inc. (“CWP”) is a corporation that was organized and incorporated under the laws of Delaware on January 16, 1996. [ECF No. 1, ¶ 5]. CWP maintains its principal place of business at 222 East Fifth Street, Tucson, Arizona, 85705. Id. CWP is the nation’s largest car wash operator, with 212 car washes and 34 lube centers in 21 states. [ECF No. 48 at p. 4]. Defendant John L. Lai (“Lai”) is a natural person who maintains his residence and domicile in Tuscon, Arizona. [ECF No. 1, ¶ 6]. Lai joined CWP in 2002, and was promoted to CEO in 2013. [ECF No. 48, at p. 5].

[444]*444[[Image here]]

[ECF No. 48, at p. 7; ECF No. 49-1, p. 7-8].

Defendant CWP created the website, www.mistercarwash.com in 1996 for use in connection with its business. [ECF No. 48, at p. 5]. In January of 2015, CWP entered the Maryland market for the first time, acquiring two car wash locations (“Maryland Locations”) in Severna Park and Annapolis, Id. The Protect-A-Car car wash closest to either of the two CWP Maryland Locations is over 28 miles away. Id. There are several third-party car washes between these two locations as well.4 Fur[445]*445thermore, there are other car wash companies, both nationally and within the Washington D.C. metro area, with “MR.” and “Wash” as part of their names.5 Id. at 7. The vast majority of car wash customers do not frequent car washes that are beyond three miles from their homes, and the statistics diminish even more dramatically after 10 miles. [ECF No. 48-18 ¶ 16], Despite this, Protect-A-Car has provided some evidence to suggest it has brand awareness and customers outside of this 10-mile radius. For example, there are registered members of Protect-A-Car’s “Car Wash .Club”—which was discontinued in 2004—that have zip codes in Anne Arundel County. [ECF No. 52, at p. 7]. Furthermore, there are online reviews of Protect-A-Cár’s services' by individuals who identify their locations as being more than 10 miles from a Protect-A-Car car wash. Id.

Protect-A-Car washes over one million cars per year. [ECF No. 48, at p. 10]. Protect-A-Car alleges 22 instances of purported “actual confusion” by customers mixing, up CWP and Protect-A-Car. Id. at 9. Only five instances of purported confusion occurred in Maryland. Id. at 10. Of these five instances, two involved an individual purportedly contacting Protect-A-Car in order to cancel a CWP “Unlimited Wash Club” plan.6 Id. One instance is an email sent by Protect-A-Car’s controller to himself, memorializing a conversation he had with a mistaken individual who believed she was working with Protect-A-Car. Id. Another instance occurred when a CWP customer was mistakenly given a Protect-A-Car location phone, number when she called a CWP location to dispute her plan. Id. The final instance of Maryland “confusion” involves an email sent to Steven Harris, owner of Protect-A-Car, from a family friend, Barbara Morrison.7 Id. It was revealed at deposition that Barbara Morrison’s email was sent after Steven Harris requested her . to send it in order to “demonstrate that people are confused” 8 [ECF No. 52, at p. 11-12]. Steven Harris never mentioned anything to Barbara Harris about this lawsuit. Id. Lastly, Protect-A-Car alleges two additional instances of confusion involving third party suppliers or vendors sending invoices to [446]*446Protect-A-Car that were apparently meant to go to CWP, or- vice versa. Id.

On February 24, 2016, plaintiff Protect-Á-Car filed its complaint against CWP and Mr. Lai. [ECF No. 1]. Plaintiff alleges claims of: (1) trademark infringement under Section 32(l)(a) of the Lanham Act, 15 U.S.C.§ 1114(l)(a); (2) unfair competition and false advertising ünder Section 43(a)(1) of the Lánham Act, 15 U.S.C. § 1125(a)(1); (3) cybersquatting in violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); (4) cancellation of CWP’s registration and application under Section 37 of the Lanham Act, 15 U.S.C. § 1119; 'and (5) unfair competition under Maryland law. Defendant John Lai filed a motion to dismiss for lack of personal jurisdiction, which was denied by this court on Juñe 16, 2016. [ECF No. 31]. Defendants then filed this instant motion for summary judgment on all counts on February 10, 2017. [ECF No. 48]. Protect-A-Car, in turn, also filed its motion for partial summary judgment on February 10, 2017. [ECF No. 49].

STANDARD

Rule 56(a) of the Federal Rules of Civil Procedure provides the “court shall grant summary judgment if the movant shows that there is no genuine' dispute as to any material fact and the movant is entitled to judgment as a, matter of law.” Fed. R. Civ. P. 56(a). The Supreme Court has clarified this does not mean that any factual dispute will defeat the motion.

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Cite This Page — Counsel Stack

Bluebook (online)
276 F. Supp. 3d 439, Counsel Stack Legal Research, https://law.counselstack.com/opinion/protect-a-car-wash-systems-inc-v-car-wash-partners-inc-mdd-2017.