WFTV, Inc. v. Maverik Production Ltd. Liability Co.

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Infringement
  • Date Filed: 06-18-2013
  • Case #: 6:11–cv–1923–Orl–28KRS
  • Judge(s)/Court Below: United States District Court, M.D. Florida, Orlando Division
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 86134
  • Westlaw Citation: 2013 WL 3119461
  • Full Text Opinion

Statutory damages were found appropriate in a default judgment.

Plaintiff WFTV, Inc. (“WFTV”) is a Delaware corporation that owns and operates an Orlando-based television station. It owns a website associated with the station that shares news, weather, and other information to residents of Florida. The website is available at www.insidecentralflorida.com and www.icflorida.com. As such, WFTV, has used the marks INSIDE CENTRAL FLORIDA®, ICFLORIDA.COM ®, and ICFLORIDA in connection with the website. Years after WFTV launched its website, defendant Maverik Production Limited Liability Company (“Maverik”) launched an internet news program called “Inside Central Florida Show” and registered the domain name www.insidecentralfloridashow.com. Jonathan Aldridge (“Aldridge”) is Maverik's registered agent and managing member. After receiving a cease and desist notice, Maverik offered to sell to WFTV the www.insidecentralfloridashow.com domain for $2.2 million. In order to prevail on its claim of trademark infringement, WFTV needed to establish that: (1) it possessed a valid mark, (2) defendant used the mark or a colorable imitation of the mark, (3) defendant’s use of the mark occurred “in commerce,” (4) defendant used the mark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services,” and (5) defendant used the mark in a way likely to confuse consumers. Upon analysis, the court found all five elements of trademark infringement established, and thus Maverik was liable. To be guilty of cybersquatting under the ACPA, defendant must have registered the domain name and then attempted to profit either by ransoming the domain name back to the trademark holder or by using the domain name to divert business from the trademark holder to the domain holder. To establish a claim under the ACPA, WFTV needed to establish: (1) it had a valid trademark entitled to protection; (2) its marks were distinctive or famous; (3) Maverik's domain name was identical or confusingly similar to the owner's mark; and (4) Maverik used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. The court found all elements were met, and thus defendant should be held liable. The court also found Maverik liable for false designation of origin, common law trademark infringement, and deceptive and unfair trade practices. As such, the court assessed statutory damages of $20,000 against Aldridge; costs of $1,170.50 against Maverik and Aldridge, jointly and severally; and GRANTED IN PART WFTV’s request for destruction of any materials bearing the name “Inside Central Florida Show,” or any mark confusingly similar to the marks INSIDE CENTRAL FLORIDA®, ICFLORIDA.COM ®, and ICFLORIDA. The court also GRANTED WFTV’s request for transfer of the www.insidecentralfloridashow.com domain name and ordered defendants and their domain registrar, Network Solutions, Inc., to transfer the www.insidecentralfloridashow.com domain to WFTV.

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