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Smith v. Director's Choice, LLP

United States District Court, D. New Jersey

March 27, 2018

RUSS SMITH, Plaintiff,

          Mr. Russ Smith Plaintiff, pro se

          Matthew A. Kaplan, Esq. ABBOTT BUSHLOW & SCHECHNER LLP Attorney for Defendant



          JEROME B. SIMANDLE U.S. District Judge


         This case involves a dispute between Plaintiff Russ Smith, pro se (“Smith”) and Defendant Director's Choice, LLP (“Director's Choice”) over Smith's registration and use of the domain name <>. Smith brings claims against Director's Choice under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1114(2)(D)(v), challenging an arbitration panel's decision that Director's Choice should own the domain name. Director's Choice, in turn, brings counterclaims against Smith and third party claims against, LLC (“”), a business entity owned by Smith, under the ACPA and the Lanham Act, 15 U.S.C. § 1114(1).

         Presently before the Court are separate motions by Smith for summary judgment as to Count One and Count Two of the Third Amended Complaint. [Docket Items 83 & 91.] Director's Choice opposes both motions on substantive and procedural grounds. [Docket Items 95 & 100.] Because discovery was in its early stages when the motions for summary judgment were filed and is in fact still ongoing, and for the reasons discussed below, the Court will deny both motions without prejudice under Fed.R.Civ.P. 56(d).

         II. BACKGROUND[1]

         The background of this case is set forth in more detail in this Court's Opinions of November 11, 2015 [Docket Item 25] and July 11, 2017. [Docket Item 125.] For the purposes of these motions, the Court focuses on the procedural history and facts relevant to Counts and Two of Third Amended Complaint.

         Smith operates a variety of business entities, which develop websites that generate income through the display of advertisements. [Docket Item 108 at ¶ 1.] These entities regularly buy and sell websites and domain names “in the normal course of business.” [Id.] On March 7, 2000, a now-dissolved business entity operated by Smith registered the domain name <> (“domain name”). [Id. at ¶ 4; Docket Item 109 at ¶ 24.] Smith continued to operate the domain name as a movie-review website through at least March 7, 2018.[2] [Id. at ¶¶ 38-41.]

         Director's Choice is a Texas-based company that operates performance opportunities, concert events, and travel for music education programs across the country. [Docket Item 70 at ¶¶ 10-12, 15.] The company was created in 1996 and began hosting concerts and organizing music education travel in 1997. [Id.] According to Director's Choice's Answer to the Third Amended Complaint, clientele refer to the company and/or its services as “Director's Choice, ” and the company “developed a widespread reputation and enjoys a high degree of recognition in the relevant marketplace and with the general public” using that name. [Id. at ¶¶ 16-17.]

         For more than a decade, Director's Choice made numerous attempts to purchase the disputed domain name from Smith and/or his business entities, but neither side was able to agree on terms of sale. [Id. at ¶¶ 29-31; Docket Item 108 at ¶ 5.] According to Director's Choice, in or about June or July 2014, Smith asked Director's Choice to pay $45, 000 for the domain name and “appeared to be unwilling to entertain any counteroffers.” [Docket Item 70 at ¶ 32.] Ultimately, Director's Choice opted against purchasing the domain name at this price. [Docket Item 108 at ¶ 5.]

         On November 18, 2014, Director's Choice filed a complaint regarding the disputed domain name against and Smith, pursuant to to the Internet Corporation for Assigned Names and Numbers' Uniform Domain Name Dispute Resolution Policy [See generally Docket Item 96-1.] On December 22, 2014, a three-member administrative panel of the National Arbitration Forum unanimously found that did not have any rights or legitimate interests in the disputed domain name and that had registered and was using the disputed domain name in bad faith. [Docket Item 96-2 at 12-14.] Accordingly, the panel ordered the transfer of the domain name from to Director's Choice. [Id. at 14.]

&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;On December 25, 2014, three days after the administrative panel found in favor of Director&#39;s Choice, filed a use-based trademark application with the U.S. Patent and Trademark Office (&ldquo;USPTO&rdquo;) for the mark &ldquo;Director&#39;s Choice&rdquo; for &ldquo;entertainment services, namely, providing on-line reviews of movies.&rdquo; [Id. at ¶ 42.] On September 25, 2015,'s trademark application matured to registration and was issued U.S. Trademark registration No. 4, 821, 299. [Docket Item 96-4.] On November 5, 2015, Director's Choice filed a Petition for Cancellation of Trademark Registration No. 4, 821, 299. [Docket item 96-5.] On December 31, 2015, Smith dissolved and assigned its rights and goodwill in the “Director's ...

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