Baklan v. All Answers Limited

WO

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF ARIZONA

Iaroslav Baklan,

Plaintiff, v. All Answers Limited,

Defendant.

No. CV-20-00707-PHX-JZB ORDER

Count Three of Complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure. (Doc. 15.) The Court will grant I. Background.

On April 4, 2020, Plaintiff Iaroslav Baklan filed this action alleging that Defendant

2)(D

On September 17, 2015, Defendant AAL applied for a trademark registration in the United Kingdom for the mark UKESSAYS, in connection with: Information services related to education; Library services related to April 3, 2016.

(Id. at 4.)

On October 16, 2019, Defendant . . . applied for a trademark registration in the United Kingdom for the mark UKESSAY, in connection with: Advisory services relating

to education; Editing of written text; Educating at universities or colleges; Education and training services; Education services. The mark registered on January 10, 202 Id.) mark for the purposes stated in the 2016 and 2020 applications. (Id. at 6.)

Plaintiff purchased , the disputed domain name, in 2017 to support his online writing service for university students in the United Kingdom. (Id. at 3). The disputed domain name was registered by a third party in 2005. (Id. at 4). On April 9, 2020, g against Plaintiff . 1

(Id. at 2.) [Godaddy.com Ltd., the domain name host, to initiate] the transfer of the disputed domain name to Defendan Id. at 6.)

On April 9, 2020, Plaintiff brought this action to prevent the transfer of the domain. (Id. at 16.) Therein, Plaintiff pleads three counts: (1) Declaration Under Anticybersquatting Consumer Protection Act, wherein Plaintiff claims that rights under the ACPA; (2) Declaratory Judgment, wherein Plaintiff requests that the Court

the ACPA; and (3) Reverse Domain Name Hijacking, wherein Plaintiff claims that

Defendant, in bad faith, used the UDRP proceeding to attempt to deprive him of the disputed domain. (Doc. 1.)

On July 15, 2020, Defendant filed a Motion to Dismiss Count Three Complaint for failure to state a claim. Defendant argues that (Doc. 15 at 5.) The

Motion was fully briefed. (See docs. 20 and 23.) 1 WIPO is a United Nations Agency that provides various intellectual property services. World Intellectual Property Organization, https://www.wipo.int/portal/en/. WIPO operates the Madrid International Trademark Registration System and offers forums for alternative dispute resolution, including domain name dispute resolution. Id. Domain name disputes are resolved under the UDRP. Id.

II. Legal Standard. A successful 12(b)(6) motion must show either that the complaint lacks a cognizable legal theory or fails to allege facts sufficient to support its theory. Godecke v. Kinetic Concepts, Inc., 937 F.3d 1201, 1208 (9th Cir. 2019) (citing Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1988)). A complaint that sets forth a cognizable legal theory will survive a motion to dismiss provided Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570,

allows the court to draw the reasonable inference that the defendant is liable for the Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556).

-pleaded factual allegations as true and construes them in the light most favorable to the plaintiff. Cousins v. Lockyer, 568 F.3d 1063, 1067 (9th Cir. 2009). Legal conclusions couched as factual allegations are not entitled to a presumption of truth and are not sufficient to defeat a 12(b)(6) motion. Iqbal, 556 U.S. at 678. A complaint does not need to have detailed -defendant-unlawfully-harmed-me Id. III. Analysis.

To state a claim for reverse domain name hijacking, a plaintiff must show that the because of a knowing and material misrepresentation by defendant. 15 U.S.C.

§1114(2)(D)(iv). In its Motion, Defendant argues Count Three should be dismissed for two

or transferred, and thus Pl 5.) The Court will address each argument

below.

a. Premature. Defendant argues that the Court should dismiss Count Three Complaint because the claim is premature. (Doc. 15 at 4). Specifically, Defendant argues

suspended, Id. The Court disagrees.

A reverse domain name hijacking claim requires the disputed domain name to be at the time of filing. 15 U.S.C. § 1114(2)(D)(v). Language within the statute indicates an intent to include pending, but inevitable transfers. 15 U.S.C. § 1114 ( . . . a domain name, referenced by 1114(2)(D)(v).). While the Ninth Circuit has yet to

ther circuits consistently § 1114(2)(D)(ii)(II), the statutory provision referenced in § 1114(2)(D)(v), covers situations where a transfer by [the registrar] is inevitable unless a court action is filed Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 25 n. 11 (1st Cir. 2001); see also Barcelona.com, Incorporated v. Excelentisimo Ayuntamiento De Barcelona, 330 Bcom, Inc. is a domain name registrant, and its domain name was suspended, disabled, or transferred . . . . Although the domain name had not actually been transferred . . .as of the time that Bcom, Inc. commenced this action, the . . . transfer was certain to occur absent the filing of this action to stop it Therefore, a reverse domain name hijacking claim requires an inevitable or completed transfer of the disputed domain before a plaintiff may state a claim.

Here, laim in Count Three is not premature under the ACPA because the filing of this action prevented the imminent transfer of the rights to to Defendant. (Doc. 1 at 6). There is no dispute that Godaddy.com has been ordered to transfer the disputed domain name and paused the transfer process pending resolution of this action. (See doc. 23 at 5.) Sallen, 273 F.3d at 25 n. 11.

nt Three is not premature.

b. Misrepresentation. Defendants next argue that the Court should dismiss Count Three of

The Court agrees.

To support an inference that WIPO ordered the disp must allege facts (1) that establish that Defendant made a knowing and material representation to the WIPO panel and (2) that support the inference that the WIPO panelist made its ruling based 15 U.S.C. 1114(2)(D)(iv). Neither burden is met.

Here, Plaintiff does not plead facts which, when accepted as true, support a reasonable inference that Defendant knowingly described the mark inaccurately or manipulatively to WIPO. Plaintiff argues DRP panel with incomplete and misleading information presenting an invalid trademark. (Doc. 1 at 14.) The validity of the mark, however, is irrelevant; the unlawful action described by 15 U.S.C. §1114(2)(D)(iv) is making a knowing and material misrepresentation of a trademark notwithstanding or lack thereof. 2

Plaintiff does not show that Defendant knowingly misstated information about the trademark during the UDRP proceedings, nor does Plaintiff provide facts in the Complaint showing what information Defendant provided to the UDRP panel. (Doc. 1 at 3-10.) Instead, Plaintiff merely raises the possibility that Defendant misrepresented the mark as valid to the UDRP panel. (See id.) This contention is insufficient to meet the requirements set forth in Iqbal.

. (See doc. 1). Therefore, Plaintiff fails to show that Defendant made a 2 The Court notes that validity is at issue in Count One of and that Defendant has agreed that Plaintiff stated a claim in Count One. Since Plaintiff has alternate routes to relief based on validity disputes, the Court will focus on the narrow issue presented by 15 U.S.C. §1114(2)(D)(iv).

knowing and material misrepresentation to the URDP panel sufficient to sustain his claim.

Even if this Court found a knowing and material misrepresentation by Defendant, Plaintiff fails to show that WIPO took action on the basis of that material misrepresentation. Cf. Strong College Students Moving Incorporated v. College Hunks Hauling Junk Franchising LLC, 2015 WL 12602438, at *12 (D.Ariz., 2015) (finding that plaintiffs disputing the validity of a trademark based on fraud must prove that the agency adjudicating Specifically, Plaintiff does not allege any facts

-making process, much less facts that support a conclusion that WIPO ordered the transfer of based on a knowing material misrepresentation by Defendant. (See doc. 1.)

Although Plaintiff provides many reasons why the WIPO panel may have made a poor decision, (see doc. 1 at 6), a reverse domain name hijacking claim based on knowing and material misrepresentation. 15 U.S.C. §1114(2)(D)(iv). Since Plaintiff has

not alleged facts sufficient to support that Defendant made a knowing and material misrepresentation to WIPO, or that WIPO made its decision based on a knowing and material misrepresentation by Defendant, Plaintiff has not stated a claim on which relief can be granted. 3 // // // // 3 To the extent that Plaintiff argues Dismiss because Defendant failed to comply with LRCiv 12.1(c), the Court disagrees. To filing, the movant notified the opposing party of the issues asserted in the motion and the parties were unable to agree that the pleading was curable . . . by a permissible amendment 12.1(c). Here, Defendant complied with LRCiv 12.1(c) by notifying (Doc. 23 at 6). Defendant also included a certification in the Motion to Dismiss. (Doc. 15 at 1). Therefore, Defendant complied with the requirements of LRCiv 12.1(c).

IT IS ORDERED granted.

Dated this 14th day of October, 2020.

Honorable John Z. Boyle United States Magistrate Judge