N.D. Ga.

Default Judgment for Cybersquatting and Counterfeit Trademark Granted

Sigman U.S.A., LLC v. John Doe et al., Civil Action No. 1:21-cv-02817-AT (N.D. Ga. July 15, 2021)

Plaintiff Sigman U.S.A., LLC filed suit against Defendants John Doe, the unknown registrant of the <mytairp.com> domain name and owner of the website at the URL http://www.mytairp.com in the Northern District of Georgia (Atlanta Division) on July 15, 2021 and the case was assigned to Judge Amy Totenberg. Plaintiff is a Georgia limited liability corporation that sells tarps and related products through its website, http://www.MyTarp.com, and at retail stores throughout the United States. Plaintiff is the owner of federally-registered trademark MYTARP, which it has used in connection with its products on its website since at least as early as 2007. Plaintiff has also sold tarps, plastic sheeting, vehicle covers, polyester fabrics, and floor covering using the federally-registered trademark SIGMAN on its website, http://www.SigmanTarp.com, since at least as early as 2010. Defendant has its own website, http://www.MyTarip.com, through which it sells tarps among other items using the marks MYTAIRP and SIGMAN. The Complaint alleges that Defendant has constructive notice of Plaintiff’s registered mark and began using the MYTAIRP and SIGMAN marks on its website after Plaintiff’s first use of its registered marks. The Complaint further alleges that Plaintiff uses a privacy service to maintain its anonymity and prevent its identity from being discovered. The Complaint asserts causes of action for counterfeit trademark and cybersquatting in violation of 15 U.S.C. 1114 and violation of the federal Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). The Complaint seeks a preliminary and permanent injunction, an accounting of Defendant’s profits in addition to statutory damages and any other compensatory damages, as well as monetary damages for corrective advertising.

Plaintiff moved for an ex parte temporary restraining order and order to show cause on July 23, 2021 alleging that Defendant’s website, http://www.mytairp.com, was shut down shortly after Plaintiff filed suit but that Defendant “quickly moved the site to a new ISP so that it is now accessible again.” Plaintiff requested an ex parte order ordering NameCheap, the domain name registrar of Defendant’s website, “to suspend and lock the <mytairp.com> domain name so that it no longer resolves to the infringing site.” Plaintiff also requested an order “requiring NameCheap and the ISPs to identify the Defendant” in addition to an asset freeze order. The Court granted Plaintiff’s request for an ex parte temporary restraining order, asset freeze order, and order requiring certain third parties to identify Defendant on July 28, 2021. Specifically, the Court ordered the Defendant cease and desist from using the MYTAIRP and SIGMAN marks and further ordered that the <mytairp.com> domain name be disabled. The Court further ordered Defendant to appear at a hearing to show cause why a preliminary injunction should not issue. The Defendant failed to appear at the hearing, and the Court subsequently issued a Preliminary Injunction on August 24, 2021 and authorized service of process on Defendant by electronic means.

On May 26, 2022, the Clerk entered Default against Defendant for failure to file a responsive pleading by the deadline. On June 17, 2022, the Court granted Plaintiff’s motion for default judgment and found Defendant liable for trademark infringement and cybersquatting based on the well-pleaded allegations in the Complaint. The Court awarded Plaintiff statutory damages in the amount of $6,000 for Defendant’s use of a counterfeit mark, finding that Defendant’s use of Plaintiff’s marks was willful, and awarded Plaintiff statutory damages of at least $1,000 for Defendant’s bad faith registration and use of the <mytairp.com> domain name, for a total of $7,000 in statutory damages. The Court further awarded Plaintiff a permanent injunction against further infringement of its marks and an order that the <mytairp.com> domain name should be transferred to Plaintiff. Finally, the Court ordered NameCheap, Inc., Cloudflare, Withheld for Privacy, and any other service provider receiving actual notice of its Order to disclose all names, physical addresses, email addresses, phone numbers for the Defendant as well as the name and account information for any payment processing service used by Defendant.

Categories: N.D. Ga., PI/TRO, Trademark

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