United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER TO PROVIDE FURTHER
LEGAL ARGUMENT OR ADDITIONAL EVIDENCE
N. PARRISH UNITED STATES DISTRICT COURT JUDGE.
the court is a motion for default judgment filed by Vivint,
Inc. [Docket 15.] At this point, the court is disinclined to
award the full measure of relief Vivint seeks. The court
ORDERS Vivint to provide further legal argument or additional
evidence to support its claims for statutory damages and
sued Brian Christensen. It asserted a number of claims,
including trademark infringement, unfair competition, and the
violation of federal and state anticybersquatting statues.
The complaint alleged that Christensen, without Vivint's
knowledge or permission, registered the domain name
www.vivint.io. The complaint also alleges that
[o]n information and belief, Defendant used the Infringing
Domain to wrongly trade on the goodwill associated with the
[Vivint's trademark] by, among others, a) offering
services not provided by Plaintiff or its affiliates on or
through the Infringing Domain and/or b) making an
unauthorized offer to consumers of Plaintiff's services
through the Infringing Domain.
complaint contains no other description of how Christensen
used the www.vivint.io domain name.
did not respond to the complaint, and the clerk of the court
issued a default certificate. Vivint moved for default
judgment and requested four items of relief: (1) an order for
Christensen to transfer the www.vivint.io domain name to
Vivint, (2) a permanent injunction against Christensen, (3)
statutory damages in the amount of $5, 000, and (4) an award
of attorney fees and costs in the amount of $17, 582.99.
court is inclined to grant the first two requests for relief.
The allegations of the complaint support Vivint's claims
that Christensen violated federal and state
anticybersquatting statues by registering a domain name that
incorporates Vivint's trademark. An order to transfer the
domain name to Vivint and a limited permanent injunction
appear to be warranted.
court is currently unwilling to award statutory damages or
attorney fees. Vivint has not adequately demonstrated that
the allegations of the complaint establish its right to such
relief. Nor has it provided any evidence demonstrating a
right to recover statutory damages or attorney fees.
argues that it is entitled to statutory damages under 15
U.S.C. § 1117(c), which provides: “In a case
involving the use of a counterfeit mark . . . in connection
with the sale, offering for sale, or distribution of goods or
services, the plaintiff may elect, at any time before final
judgment is rendered by the trial court, to recover, instead
of actual damages and profits . . . an award of statutory
damages . . . .” A statutory award shall amount to
“not less than $1, 000 or more than $200, 000 per
counterfeit mark per type of goods or services sold, offered
for sale, or distributed, as the court considers just.”
Id. § 1117(c)(1). “[C]ounterfeiting is
the ‘hard core' or ‘first degree' of
trademark infringement that seeks to trick the consumer into
believing he or she is getting the genuine article, rather
than a ‘colorable imitation.'” Gucci Am.,
Inc. v. Guess?, Inc., 868 F.Supp.2d 207, 242 (S.D.N.Y.
2012) (quoting 4 McCarthy on Trademarks and Unfair
Competition § 25:10).
complaint does not allege counterfeiting. It asserts
generally, upon information and belief, that Christensen used
the www.vivint.io web domain either to offer services that
Vivint does not provide or to make an unauthorized offer to
sell Vivint's actual services. The complaint does not
aver that Christensen used counterfeit Vivint trademarks to
trick consumers into purchasing second-rate copies of
Vivint's services. Nor does Vivint provide any evidence
that Christensen engaged in this type of counterfeiting.
Absent such evidence, the court may not award statutory
damages. If Vivint wishes to produce evidence of
counterfeiting to justify an award of statutory damages under
15 U.S.C. § 1117(c), the court orders Vivint to provide
the evidence within 14 days of this order.
also requests an award of attorney fees under 15 U.S.C.
§ 1117(a) and Utah Code § 13-5a-103(1)(b). The
court finds that Vivint has not proven that it is entitled to
attorney fees under either statute.
15 U.S.C. ...