Twin Cities Publictelevision, Inc. v. RH Reality Check Coorporation

MOTION to Dismiss for Failure to State a Claim

D. Md.October 12, 2016

1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND ) TWIN CITIES PUBLIC TELEVISION, ) INC. ) ) ) Plaintiff, ) ) v. ) Case No: 8:16-cv-02189-GJH ) REWIRE CORP. a/k/a REWIRE ) (formerly known and sued as RH ) REALITY CHECK CORP.) ) ) Defendant. ) DEFENDANT’S RULE 12(b)(6) MOTION TO DISMISS COUNTS I AND IV OF THE FIRST AMENDED COMPLAINT Defendant, REWIRE CORP., by counsel, in accordance with Fed. R. Civ. P. 12(b)(6), hereby submits its Motion to Dismiss Counts I and IV of the First Amended Complaint and respectfully requests that the Court dismiss Counts I and IV with prejudice. An accompanying Memorandum in Support is filed herewith for the Court’s consideration. Dated: October 12, 2016 Respectfully submitted, REWIRE CORP., By Counsel /s/ John D. McGavin John D. McGavin, Esquire (No. 18859) Michael E. Thorsen (No. 18696) BANCROFT, McGAVIN, HORVATH & JUDKINS, P.C. 9990 Fairfax Boulevard, Suite 400 Fairfax, Virginia 22030 Telephone: (703) 385-1000 Facsimile: (703) 385-1555 E-mail: jmcgavin@bmhjlaw.com mthorsen@bmhjlaw.com Counsel for Defendant Case 8:16-cv-02189-GJH Document 30 Filed 10/12/16 Page 1 of 2 2 CERTIFICATE OF SERVICE I hereby certify that on this 12th day of October 2016, a true and correct copy of the foregoing Defendant’s Rule 12(b)(6) Motion to Dismiss Counts I and IV of the First Amended Complaint was electronically filed with the Clerk of Court using the CM/ECF system, which will then send a notification of such filing to all counsel of record: /s/ John D. McGavin John D. McGavin, Esquire (No. 18859) Michael E. Thorsen (No. 18696) BANCROFT, McGAVIN, HORVATH & JUDKINS, P.C. 9990 Fairfax Boulevard, Suite 400 Fairfax, Virginia 22030 Telephone: (703) 385-1000 Facsimile: (703) 385-1555 E-mail: jmcgavin@bmhjlaw.com mthorsen@bmhjlaw.com Counsel for Defendant Case 8:16-cv-02189-GJH Document 30 Filed 10/12/16 Page 2 of 2 1 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND ) TWIN CITIES PUBLIC TELEVISION, ) INC. ) ) ) Plaintiff, ) ) v. ) Case No: 8:16-cv-02189-GJH ) REWIRE CORP. a/k/a REWIRE ) (formerly known and sued as RH ) REALITY CHECK CORP.) ) ) Defendant. ) MEMORANDUM IN SUPPORT OF DEFENDANT’S RULE 12(b)(6) MOTION TO DISMISS COUNTS I AND IV OF THE FIRST AMENDED COMPLAINT I. PROCEDURAL HISTORY AND ALLEGATIONS IN FIRST AMENDED COMPLAINT This is a traditional trademark infringement case arising from Defendant’s use of the word “Rewire” as the name for Defendant’s daily online publication. The publication provides original and evidence-based news, analysis, commentary, investigative reporting, and multi- media content on issues of reproductive and sexual health, rights, and justice. Plaintiff, Twin Cities Public Television, Inc. (“TPT”) maintains an online blog called “TPT Rewire.” The blog repurposes content (much of which also appears on TPT’s main website) on a wide range of lifestyle and related issues and focuses on a local area and local audience. The crux of the suit is whether there exists a likelihood of confusion among consumers as to the source or origin of Defendant’s content and reporting. The evidence will show there is no confusion and no likelihood of confusion. However, Plaintiff attempts to go beyond trademark infringement and morph the case into something it is not. This is not “trademark counterfeiting” or Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 1 of 13 2 “cybersquatting” case, and the counts (Counts I and IV) alleging such claims should be dismissed with prejudice for failure to state a claim. On June 17, 2016, Plaintiff filed its Complaint, alleging infringement of federally registered marks under 15 U.S.C. § 1114(1) (Count I), false designation of origin under 15 U.S.C. § 1125(a) (Count II), and unfair competition under common law (Count III). (See ECF Doc. 1.) Counsel for Defendant subsequently accepted service on behalf of Defendant and filed an Answer. (See ECF Doc. 14.) On September 15, 2016, the Court convened a Rule 16 telephone conference, at which time the parties agreed to stay discovery and have the case referred to Magistrate Judge Charles B. Day for mediation. The mediation is set for November 4, 2016. On September 28, 2016, Plaintiff filed its First Amended Complaint, adding two additional counts for trademark counterfeiting and cybersquatting. (See ECF Doc. 29.) The Amended Complaint alleges that in November 2013, Plaintiff, a PBS affiliate located in St. Paul, Minnesota, launched the TPT Rewire blog, which Plaintiff describes as “a multimedia platform aimed at engaging a new generation of public media consumers, creators, and collaborators.” (Amend. Compl. ¶¶ 7-8.) A copy of the blog’s homepage is referenced in the Amended Complaint as Exhibit A, 1 and the REWIRE mark appears as follows: Plaintiff owns two “REWIRE” federal trademark registrations. (Amend. Compl. ¶ 12.) In March 2016, Defendant, a nonprofit corporation operating out of Bethesda, Maryland, launched its daily online news publication Rewire. The publication provides original and evidence-based news, 1 It does not appear Plaintiff filed its Exhibit A as an attachment to the First Amended Complaint (ECF Doc. 29). However, Exhibit A is referenced in the First Amended Complaint (See ¶ 8), and was filed as Exhibit A to the original Complaint (See ECF Doc. 1-2). Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 2 of 13 3 analysis, commentary, investigative reporting, and multi-media content on issues of reproductive and sexual health, rights, and justice. (See Amend. Compl. ¶ 15.) A copy of Rewire’s homepage is referenced in the Amended Complaint as Exhibit C, 2 and depicts “Rewire as follows: Defendant’s Rewire publication is located at http://rewire.news, and it has registered other domain names. (Amend. Compl. ¶ 17.) It also publishes its content through various social media accounts. (Amend. Compl. ¶ 18.) Despite significant differences in both the content published and the people consuming the content, Plaintiff alleges that Defendant’s use of Rewire “is likely to cause confusion, mistake, or deception in the market as to the source or origin of Defendant’s services, and to falsely suggest that Defendant and its services are sponsored by, connected to, or associated with Plaintiff.” (Amend. Compl. ¶¶ 20, 29.) Plaintiff alleges that “[u]pon information and belief, Defendant commenced its competing use of the designation REWIRE with actual and constructive knowledge of the REWIRE Mark and Plaintiff’s services offered under the REWIRE Mark, and registered and/or used the Domain Names in bad faith.” (Amend. Compl. ¶ 23.) This is a legal conclusion and not supported by any factual allegations. There is no allegation as to how or when Defendant learned of Plaintiff’s mark, and no allegations showing bad faith. Count I of the First Amended Complaint alleges Trademark Counterfeiting under 15 U.S.C. § 1114(1). Count II alleges Infringement of Federally Registered Marks under 15 U.S.C. § 1114(1). There are no facts alleged that would distinguish between a cause of action under 2 It does not appear Plaintiff filed its Exhibit C as an attachment to the First Amended Complaint (ECF Doc. 29). However, Exhibit C is referenced in the First Amended Complaint (See ¶ 16), and was filed as Exhibit C to the original Complaint (See ECF Doc. 1-4). Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 3 of 13 4 Count I for trademark counterfeiting, and a cause of action under Count II for trademark infringement. Count III alleges False Designation of Origin under 15 U.S.C. § 1125(a). Count IV alleges Cybersquatting under 15 U.S.C. § 1125(d). Count V alleges Trademark Infringement and Unfair Competition under common law. For the reasons stated below, the alleged facts are not sufficient to state a claim for either trademark counterfeiting or cybersquatting, and therefore Counts I and IV should be dismissed with prejudice pursuant to Rule 12(b)(6). II. STANDARD ON 12(B)(6) MOTION TO DISMISS Federal Rule of Civil Procedure 8(a)(2) requires the Complaint to include a “short and plain statement of the claim showing that the pleader is entitled to relief.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (hereafter, “Iqbal”); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 (2007) (hereafter, “Twombly”). The U.S. Supreme Court held that although “Rule 8 does not require ‘detailed factual allegations,’...it demands more than an unadorned, the-defendant- unlawfully-harmed-me accusation.” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 555). In clarifying the pleading standard applicable in federal proceedings, the Court continued, “a pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action will not do.’” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 555). “Nor does a complaint suffice if it tenders ‘naked assertions’ devoid of ‘further factual enhancement.’” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 555). In evaluating a motion to dismiss, this court should consider whether the Amended Complaint “contain[s] sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 570). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 556). Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 4 of 13 5 The Supreme Court articulated two key principles applicable to the evaluation of a complaint on a motion to dismiss. First, the district court need not accept as true allegations that are legal conclusions. Iqbal, 129 S.Ct. at 1949. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 555). “Second, only a complaint that states a plausible claim for relief survives a motion to dismiss.” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 556). The second step requires the court “to draw on its judicial experience and common sense” and determine whether the facts allow it to “infer more than the mere possibility of misconduct.” Iqbal, 129 S.Ct. at 1949. Justice Kennedy succinctly summarized these principles as follows: a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth. While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Iqbal, 129 S.Ct. at 1949. In reviewing a threshold motion to dismiss, a district court should only consider the factual allegations made in the complaint; the court is not required to accept as true legal conclusions set forth in the complaint. Papasan v. Allain, 478 U.S. 265, 286 (1986); see also Walker v. Prince George’s County, Md., 575 F.3d 426, 431 (4th Cir. 2009). III. COUNT I (TRADEMARK COUNTERFEITING) SHOULD BE DISMISSED BECAUSE PLAINTIFF FAILS TO ALLEGE THAT DEFENDANT’S MARK IS A COUNTERFEIT, AND FAILS TO ALLEGE THAT DEFENDANT INTENDED TO USE A COUNTERFEIT MARK IN COMMERCE. A federal trademark counterfeiting claim under 15 U.S.C. § 1114(1) requires that a plaintiff plead and proof that “(1) defendant intentionally used a counterfeit mark in commerce; (2) knowing the mark was counterfeit; (3) in connection with the sale, offering for sale, or distribution of goods; and (4) its use was likely to confuse or deceive.” Chanel, Inc. v. Banks, 2010 U.S. Dist. LEXIS 135374, at *15 (D. Md. Dec. 22, 2010) (citing State of Idaho Potato Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 5 of 13 6 Comm’n v. G&T Terminal Packaging, Inc., 425 F.3d 708, 721 (9th Cir. 2005)). A “counterfeit” mark is defined by the Lanham Act as “a spurious mark which is identical with, or substantially indistinguishable from” the plaintiff’s mark. 15 U.S.C. § 1127; see also Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252, 268 (4th Cir. 2007). Counterfeiting is substantially more than infringement - it is “the act of producing or selling a product with a sham trademark that is an intentional and calculated reproduction of the genuine trademark.” Schneider Saddlery Co. v. Best Shot Pet Prods. Int’l, LLC, 2009 U.S. Dist. LEXIS 27227, at *12 (N.D. Ohio Mar. 31, 2009). “While infringement may well create confusion in the minds of consumers, counterfeiting is the ‘passing off’ of the infringement mark as the registered mark.” Id. (citing Larsen v. Terk Techs. Corp., 151 F.3d 140, 142 (4th Cir. 1998)). In determining whether a mark is counterfeit, courts look at how the marks appear “in the marketplace” rather than in the abstract. See, e.g., Schneider Saddlery Co., 2009 U.S. Dist. LEXIS at *13; Colgate- Palmolive Co. v. J.M.D. All-Star Imp. & Exp., 486 F. Supp. 2d 286, 289 (S.D.N.Y. 2007) (“[A]n allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.”); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 495, 506 (E.D. Va. 2006). Trademark counterfeiting “is a high bar, because slight differences, so long as they are apparent to the typical consumer upon minimal inspection, will defeat the allegation that a mark is counterfeit.” Schneider Saddlery Co., 2009 U.S. Dist. LEXIS at *13-14; see also Louis Vuitton Malletier S.A., 507 F.3d at 268 (no counterfeiting where the “design and the coloring patterns” of the marks were different); Colgate-Palmolive, 486 F.Supp.2d at 289 (holding that “Colddate Toothpaste” is not a counterfeit of “Colgate Toothpaste,” despite exceedingly similar packaging) (citing 130 Cong. Rec. HI2076, H21078) (daily ed. Oct. 10, 1983) (Joint Statement on 1984 trademark counterfeiting legislation, explaining that the statute was not intended to treat as Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 6 of 13 7 counterfeiting what would formerly have been arguable, but not clear cut, cases of trademark infringement)); Bacardi & Co. v. New York Lighter Co., 2000 U.S. Dist. LEXIS 19852, at *4 (E.D.N.Y. Sept. 5, 2000) (“BACARBI lighters” not a counterfeit of “BACARDI”); Associated Gen. Contrs. Of Am. v. Stokes, 2013 U.S. Dist. LEXIS 38680, at *16-18 (E.D. Va. Mar. 19, 2013) (finding that although the defendant’s “A.G.C.” mark was substantially indistinguishable from the plaintiff’s “AGC” mark despite separating the letters with periods, the defendant’s mark was not counterfeit because the defendant’s logo bore “significant stylistic and graphical differences”); Tovey v. Nike, Inc., 2013 U.S. Dist. LEXIS 16084, at *8 (N.D. Ohio Feb. 6, 2013) (use of “BOOM” on the front of apparel not a counterfeit of the plaintiff’s trademark of “BOOM YO!”). In the instant case, Count I is nothing more than a formulaic recitation of 15 U.S.C. 1114(1) and fails to allege “plausible factual support for trademark counterfeiting beyond bare recitation” of the elements of the claim. See Milo & Gabby, LLC v. Amazon.com, Inc., 12 F. Supp. 3d 1341, 1352 (W.D. Wash. 2014) (granting a Rule 12(b)(6) motion to dismiss trademark counterfeit claim because the plaintiffs “simply provide[d] a formulaic recitation of the elements establishing liability” and “offered no plausible, factual basis for their allegations, and thus suppl[ied] no more than mere ‘labels and conclusions’”) (citing Twombly, 550 U.S. at 555). Tellingly, there is no allegation that Defendant’s use of Rewire is “spurious” (i.e. false or fake), and no facts to support the conclusory allegation that Defendant’s use of Rewire is “identical with, or substantially indistinguishable from” Plaintiff’s mark. Exhibits A and C to the First Amended Complaint actually show the opposite - that Defendant’s mark is not “spurious” and is not “identical with, or substantially indistinguishable from” Plaintiff’s mark. Exhibit A to the Amended Complaint depicts Plaintiff’s REWIRE mark as it appears in the marketplace: Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 7 of 13 8 Plaintiff’s Mark appears with both the well-recognized PBS logo and the “TPT” logo in front of REWIRE. Plaintiff’s website is “rewire.tpt.org” and its Twitter Handle is “@tptRewire.” (Amend. Compl. ¶¶ 8, 21.) REWIRE appears in all caps, it is in a distinct font, and each letter is a different color. By contrast, Exhibit C to the Amended Complaint depicts Defendant’s mark as it appears in the marketplace: Defendant’s use of Rewire appears without any reference to “TPT” or the PBS logo, the letters are not all capitalized, the font style is unique, and the font color is black. Defendant’s website is “http://rewire.news,” and its Twitter handle is “@Rewire_News.” (Amend. Compl. ¶¶ 17-18.) Even if there is potential for confusion (Defendant maintains there is not), the differences set forth above, which are show in the Amended Complaint itself, are more than sufficient to remove this case from the realm of trademark counterfeiting. There are no factual allegations that Defendant is “passing off” its mark as Plaintiff’s mark. Schneider Saddlery Co., 2009 U.S. Dist. LEXIS at *12. There are no factual allegations that Defendant is producing or selling its product or services “with a sham trademark that is an intentional or calculated reproduction of the genuine trademark.” Id. There are otherwise no factual allegations that distinguish this case from a traditional trademark infringement case, which Plaintiff has alleged in Count II of the Amended Complaint. Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 8 of 13 9 Additionally, there are no factual allegations that Defendant intentionally used a counterfeit mark in commerce. The Amended Complaint merely states that “[u]pon information and belief, Defendant commenced its competing use of the designation REWIRE with actual and constructive knowledge of the REWIRE Mark and Plaintiff’s services offered under the REWIRE Mark, and registered and/or used the Domain Names in bad faith” (Amend. Compl. ¶ 23) and that Defendant’s actions were “willful and/or knowing” (Amend. Compl. ¶ 35). These allegations are nothing more than “naked assertions” devoid of “further factual enhancement.” Iqbal, 129 S.Ct. at 1949 (citing Twombly, 550 U.S. at 555). Plaintiff likely added the trademark counterfeiting claim in an attempt to seek statutory damages that would not otherwise be available. The Lanham Act provides for enhanced or statutory damages pursuant to 15 U.S.C. § 1117(c), which is part of the relief Plaintiff explicitly seeks in this case pursuant to the trademark counterfeiting count. (See Prayer for Relief of First Amend. Compl. ¶ G.) Statutory damages under the Lanham Act are reserved for cases involving “large-scale distribution of counterfeit goods,” which is consistent with “legislative history indicating that the broader measure of damages available by statute is intended to address situations involving ‘sophisticated, large-scale counterfeiters.’” Chanel, Inc. v. Banks, 2010 U.S. Dist. LEXIS 135374, at *33-34 (D. Md. Dec. 22, 2010). As pled by Plaintiff in the First Amended Complaint, this is simply not a case of trademark counterfeiting, and there are no facts alleged to support “large-scale distribution of counterfeit goods” let alone any distribution of counterfeit goods. This case is nothing more than a traditional trademark infringement claim, and the Amended Complaint fails on its face to plead a plausible claim for trademark counterfeiting. Count I should therefore be dismissed with prejudice, including any damages sought arising from the alleged trademark counterfeiting claim. Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 9 of 13 10 IV. COUNT IV (CYBERSQUATTING) SHOULD BE DISMISSED BECAUSE PLAINTIFF FAILS TO ALLEGE FACTS TO SUPPORT A BAD-FAITH INTENT TO PROFIT FROM USING THE DOMAIN NAME. Count IV of the First Amended Complaint fails on its face to state a plausible claim for cybersquatting under 15 U.S.C. § 1125(d). To bring a cybersquatting claim, a plaintiff must plausibly plead and show that the defendant (1) had a bad faith intent to profit from using the domain name, and (2) the domain name is identical or confusingly similar to, or dilutive of, the distinctive mark. See, e.g., Lamparello v. Falwell, 420 F.3d 309, 318 (4th Cir. 2005); 15 U.S.C. § 1125(d)(1)(A). “The paradigmatic harm that [the cybersquatting statute] was enacted to eradicate is the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark.” Lamparello, 420 F.3d at 318. “The Act was also intended to stop the registration of multiple marks with the hope of selling them to the highest bidder….” Id.; see also Gioconda Law Group PLLC v. Kenzie, 941 F. Supp. 2d 424, 437 (S.D.N.Y. 2013) (explaining that the cybersquatting statute “is not an all-purpose tool” but instead was created to curtail the act of registering someone else’s name as a domain for the purpose of demanding remuneration from the person in exchange for the transfer of the domain name) (citations and quotations omitted); Translucent Communs., LLC v. Ams. Premiere Corp., 2010 U.S. Dist. LEXIS 16459, at *45-46 (D. Md. Feb. 24, 2010) (“A more formal definition [of cybersquatting] is the practice of registering well-known brand names as Internet domain names in order to force the rightful owners of the marks to pay for the right to engage in electronic commerce under their own brand name.”) (internal quotations omitted). “The Act was not intended to prevent ‘noncommercial uses of a mark, such as for comment, criticism, parody, news reporting, etc.,’ and thus they ‘are beyond the scope’ of the [the cybersquatting statute].” Lamparello, 420 F.3d at 318-19 (internal citations omitted). Finally, the statute contains a safe harbor provision stating that bad faith intent “shall not be found in any case in which . . . . the Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 10 of 13 11 person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful.” 15 U.S.C. § 1225(d)(1)(B)(ii). In this case, there are no facts alleged to support Plaintiff’s conclusory allegation that Defendant registered and/or used their domain names “with a bad-faith intent to profit from Plaintiff’s REWIRE Mark.” (Amend. Compl. ¶ 53.) This is a legal conclusion supported by no factual allegations. The only allegation potentially relating to “bad faith” is the allegation that “[u]pon information and belief, Defendant commenced its competing use of Rewire with actual and constructive knowledge of the REWIRE Mark and Plaintiff’s services offered under the REWIRE Mark.” (Amend. Compl. ¶ 23.) First, this allegation is itself conclusory and not supported by any facts as to when, how, or what Defendant knew about Plaintiff’s REWIRE Mark. Second, mere knowledge of a mark does not amount to a bad faith intent to profit. See 15 U.S.C. § 1225(d)(1)(B)(ii) (safe harbor provision for reasonable belief that a domain name is fair use or otherwise lawful); see also, e.g., Renaissance Greeting Cards, Inc. v. Dollar Tree Stores, Inc., 227 Fed. Appx. 239, 245 (4th Cir. 2007) (no intent or bad faith even though defendant failed to conduct a trademark search and continued to use the mark after being contacted by the plaintiff because the defendant believed Plaintiff’s mark to be too weak to prevent the defendant’s use); Action Temporary Services, Inc. v. Labor Force, Inc., 870 F.2d 1563, 1566 (Fed. Cir. 1989) (“[M]ere knowledge of the existence of the prior user should not, by itself, constitute bad faith.”) (internal quotation and citation omitted); CareFirst of Md., Inc. v. First Care, P.C., 350 F. Supp. 2d 714, 724 (E.D. Va. 2004) (finding no intent by the defendant to trade on the plaintiff’s goodwill despite the defendant continuing to use the name after the plaintiff asked them to cease and desist because “[t]he idea that Defendant First Care is required to give Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 11 of 13 12 up a name they have good reason to believe they are entitled to use in order to demonstrate that they have good faith is ridiculous.”) Plaintiff improperly attempts to turn this traditional trademark infringement case into a cybersquatting claim in order to reach statutory damages that would not otherwise be available. (See Prayer for Relief of First Amended Compl, ¶ F.) (seeking statutory damages under 15 U.S.C. § 1117(d) for each domain name registered to Defendant). But the Amended Complaint does not allege and this is not a case in which Defendant has registered domain names in an effort to then sell them to the legitimate owners. There are no facts alleged or that could be alleged to support bad faith on the part of Defendant to profit from the use of registering domain names. This case is a traditional trademark infringement claim, and Count IV should therefore be dismissed with prejudice, including any damages arising from the alleged cybersquatting claim. V. CONCLUSION For the foregoing reasons, and for any additional reasons to be stated during oral argument on this matter, Defendant, Rewire Corp., respectfully requests the Court dismiss, with prejudice, Counts I and IV of the First Amended Complaint for failure to state a claim. Dated: October 12, 2016 Respectfully submitted, REWIRE CORP., By Counsel /s/ John D. McGavin John D. McGavin, Esquire (No. 18859) Michael E. Thorsen (No. 18696) BANCROFT, McGAVIN, HORVATH & JUDKINS, P.C. 9990 Fairfax Boulevard, Suite 400 Fairfax, Virginia 22030 Telephone: (703) 385-1000 Facsimile: (703) 385-1555 E-mail: jmcgavin@bmhjlaw.com mthorsen@bmhjlaw.com Counsel for Defendant Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 12 of 13 13 CERTIFICATE OF SERVICE I hereby certify that on this 12th day of October 2016, a true and correct copy of the foregoing Memorandum in Support of Defendant’s Rule 12(b)(6) Motion to Dismiss Counts I and IV of the First Amended Complaint was electronically filed with the Clerk of Court using the CM/ECF system, which will then send a notification of such filing to all counsel of record: /s/ John D. McGavin John D. McGavin, Esquire (No. 18859) Michael E. Thorsen (No. 18696) BANCROFT, McGAVIN, HORVATH & JUDKINS, P.C. 9990 Fairfax Boulevard, Suite 400 Fairfax, Virginia 22030 Telephone: (703) 385-1000 Facsimile: (703) 385-1555 E-mail: jmcgavin@bmhjlaw.com mthorsen@bmhjlaw.com Counsel for Defendant Case 8:16-cv-02189-GJH Document 30-1 Filed 10/12/16 Page 13 of 13