United States District Court, D. New Jersey
WILLIAM J. MARTINI, U.S.D.J.
InvenTel Products, LLC's ("InvenTel" or
"Plaintiff) brings this action for various direct and
contributory violations of its intellectual property rights.
The matter comes before the Court on Defendants GoDaddy Inc.,
and GoDaddy.com, LLC's ("GoDaddy's") motion
to dismiss. ECF Nos. 41-42. For the reasons set forth below,
the motion is GRANTED IN PART and
DENIED IN PART.
sells a variety of consumer products in the United States via
mail-order and online sales, including the HD MIRROR CAM®
("HD MIRROR CAM"). The HD MIRROR CAM is a security
camera for automobiles. InvenTel holds patents, copyrights,
and trademarks on HD MIRROR CAM technology and marketing
Jimmy Li, Lin Amy, and Wu Jinzhao ("Li Defendants")
allegedly produce counterfeit HD MIRROR CAMs
("Counterfeit Products") in China and market them
to U.S. customers online. The online sale of the Counterfeit
Products is the subject of a related action ("Prior
Action") brought by InvenTel against the Li Defendants,
Google, GoDaddy, Shopify, and others (collectively,
"Defendants"). See InvenTel Products, LLC v.
voluntarily dismissing GoDaddy from the Prior Action,
InvenTel learned of a new website created by the Li
Defendants to further market the Counterfeit Products:
www.hdmirrorcambuy.com ("Website"). On April 2,
2019, InvenTel initiated this suit alleging similar acts of
infringement to the Prior Action but occurring on the new
Website. As relevant here, InvenTel alleges that despite
knowledge of the Prior Action, GoDaddy registered the Website
and continues to host it. Compl. ¶¶ 74-84, ECF No.
April 16, 2019, the Court entered an order temporarily
restraining Defendants from infringing on InvenTel's
intellectual property rights. See Order, ECF No. 6
("TRO"). After Google, GoDaddy, and Shopify
submitted briefing and supporting material, the Court
terminated the TRO and denied InvenTel's motion for a
preliminary injunction. Op. & Order, ECF Nos. 18-19,
29-30. Now before the Court is GoDaddy's motion to
dismiss pursuant to Federal Rule of Civil Procedure
("FRCP") 12(b)(6). ECF No. 41.
STANDARD OR REVIEW
12(b)(6) provides for the dismissal of a complaint if the
plaintiff fails to state a claim upon which relief can be
granted. The movant bears the burden of showing that no claim
has been stated. Hedges v. United States, 404 F.3d
744, 750 (3d Cir. 2005). "[A]ll allegations in the
complaint must be accepted as true, and the plaintiff must be
given the benefit of every favorable inference to be drawn
therefrom." Malleus v. George, 641 F.3d 560,
563 (3d Cir. 2011). But the court is not required to accept
as true "legal conclusions," and "[t]hreadbare
recitals of the elements of a cause of action, supported by
mere conclusory statements, do not suffice."
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
survive a 12(b)(6) motion, "a complaint must contain
sufficient factual matter ... to 'state a claim to relief
that is plausible on its face.'" Id.
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,
570 (2007)). "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." Id. "The
plausibility standard is not akin to a 'probability
requirement,' but it asks for more than a sheer
possibility that a defendant has acted unlawfully."
asserts six claims against GoDaddy stemming from its alleged
hosting and registration of the Website: (1) federal
trademark infringement, (2) copyright infringement, (3)
patent infringement, (4) unfair competition, false
advertising, and false designation of origin (due to alleged
Lanham and Patent Act violations), (5) New Jersey trademark
infringement, and (6) violations of the New Jersey Consumer
Fraud Act ("CFA"). In its opposition papers,
InvenTel "withdr[e]w the allegations without
prejudice" regarding GoDaddy's hosting of the
Website. Opp. at 2, ECF No. 48. Accordingly, the only facts
alleged against GoDaddy are that it provided domain-name
registration services to the Website despite being notified
of the Li Defendants' infringing activity using other
websites via the Prior Action. Id. at 8-9
(discussing non-hosting allegations against GoDaddy).
Lanham Act Violations (Counts One and Four (in
Counts One and Four (in part), InvenTel asserts liability
pursuant to the Lanham Act, specifically 15 U.S.C. 1125(a).
Compl. ¶ 111, 129. GoDaddy argues that as a domain name
registrar, it is immune from Lanham Act liability pursuant to
15 U.S.C. § 1114(2)(D)(iii). InvenTel argues
"GoDaddy confuses 15 U.S.C. § 1125 and 15 U.S.C.
§ 1114(2)(D). Either GoDaddy does not realize these are
two different statutes or they are trying to pretend they are
[not] two different statutes." Opp. at 10. InvenTel is
U.S.C. §1114(2)(D) states:
Notwithstanding any other provision of this chapter, the
remedies given to the owner of a right infringed under this
chapter or to a person bringing an action under section
1125(a) or (d) of this title shall be limited as follows ...
A domain name registrar, a domain name registry... shall not
be liable for damages under this section for the registration
or maintenance of a domain name for another absent a showing
of bad faith intent to profit from such registration or
maintenance of the domain name.
Section 1114 provides the remedy for all Lanham Act
violations, Section 1114(2)(D) limits liability for Section
1125 claims despite the "under this section"
phraseology. Petroliam Nasional Berhad v. GoDaddy.com,
Inc., 737 F.3d 546, 551 (9th Cir. 2013). Accordingly,
GoDaddy is immune "absent a showing of bad faith intent
to profit." 15 U.S.C. § 1114(2)(D).
argues it "pled and established in detail through
Declaration of Yasir Abdul [sic] and documentary evidence
previously submitted to the Court that GoDaddy was provided
with multiple notices of the infringement," and thus
acted in bad faith in registering the Website.Opp. at 13-15. The
Court disagrees. The only pleaded basis for GoDaddy's
knowledge that the Website would be used to infring is the Li
Defendants' conduct using other websites and the
Prior Action. See Compl. ¶¶ 76-83. But
GoDaddy's domain name registration system is automatic.
See May 7, 2019 Op. at 3, ECF No. 29 (discussing
registration "computer systems");
McTernan., 577 F.3d 521, 530 (permitting findings
and conclusions at preliminary injunction stage to have
preclusive effect). Therefore, without a warning that the
specific URL being registered would be used for an illicit
purpose, GoDaddy did not have a "bad faith intent to
profit" from the automatic registration of
"www.hdmirrorcambuy.com." 15 U.S.C. § 1114(2)(D).
In other words, failing to prevent its computer system from
registering the Website does not constitute "bad
faith." Plaintiff provides no basis for the proposition
that GoDaddy must predict which URLs will be used for
infringement purposes and proactively stop them from being
registered. Accordingly, Plaintiffs Lanham-Act based claims
(Count One and part of Four) are DISMISSED.