M+A Matting, LLC v. Entrymatsonline.com et al, Civil Action No. 3:23-cv-00069-TCB (N.D. Ga., Apr. 24, 2023)
In a recently filed case styled M+A Matting, LLC v. Entrymatsonline.com, C.A. No. 3:23-cv-00069-TCB (N.D. Ga.), Judge Batten took the extraordinary step of granting Plaintiff M+A Matting, LLC’s ex parte motion for a temporary restraining order (TRO) from alleged trademark infringement and unfair competition involving one named and 200 unnamed Defendants. The Order commands Defendants’ hosting site and web hosting service providers to not only drop the infringing name, but also to reveal the unknown Defendants’ identities.
M+A Matting claims to be a high-quality manufacturer of floor mats that offers customers vetted products and services. It alleges that the company “has worked for half a century to establish itself as the pinnacle of flooring mat products, customer service, and safety.” Complaint at 19. The Plaintiff’s registered trademarks, protected as U.S. Registration Nos. 5,904,376 and 5,904,377, depict stylized capital letters M and A drawn above the company’s name. Plaintiff sells floor mats online using their logo.
“Defendants, by contrast, hold themselves out as ‘offering a cheapest price’’’ of products” that threatens to “confuse, disserve, and disappoint” customers and ultimately damage their brand. Id. at 19-20. The Defendant is accused of willfully infringing Plaintiff’s mark in order to imitate their brand.
Specifically, Defendants’ website, www.entrymatsonline.com, uses Plaintiff’s exact Mark and closely simulates and/or imitates M+A Matting’s own websites. Moreover, when a user hovers their cursor over Defendants’ URL, the popup window holds Entrymatsonline.com out as “M+A Matting Official store” [sic]. Thus, Plaintiffs claim that Defendants must have known of M+A Matting before creating their website in February 2023 – which is evidence of willful infringement.Complaint at 17.
Plaintiff’s TRO follows various failed attempts at serving cease and desists letters, each of which left Plaintiff suspicious of the identity of the Defendants. [pull quote: “Defendants have made identification impossible.” Complaint at 6.] According to the Complaint, “Plaintiff sent a cease-and-desist letter to Defendants’ domain registrar, Gname.com, but received no response,” and “sent a cease-and-desist letter to the owner of the WordPress and WooCommerce software platforms underpinning Defendants’ website, Automattic. Inc., only to be told Automattic would not provide any assistance in taking down the infringing site.” Complaint at 6. In fact, Plaintiff believes “Defendants provided fake business and mailing addresses on their website and have left Plaintiff with nothing other than two suspicious email addresses by which to attempt to provide notice of a TRO.” Id. at 6-7. As a result, Plaintiff M&A convinced the Court that these “fictitious names” justify the Court in taking ex parte action.
In view of these alleged facts, Judge Batten granted the ex parte TRO, concluding that the Plaintiff has demonstrated that immediate and irreparable injury would result before Defendant could be heard in opposition. Applying Eleventh Circuit standards for preliminary injunctive relief, Judge Batten found all four relevant factors weighed in favor of the requested relief. See Schiavo ex. rel Schindler v. Schiavo, 403 F.3d 1223, 1225–26 (11th Cir. 2005); see also Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F. 3d 982, 985 (11th Cir. 1995). These factors are: (1) likelihood of success on the merits, (2) likelihood of irreparable harm; (3) balance of the harms, and (4) public interest. Id.
For the first factor, the Court found Plaintiff sufficiently demonstrated a likelihood of success on the merits for its allegations of counterfeiting, infringement, and false designation of origin based on the Eleventh Circuit’s seven-factor balancing test for the likelihood of confusion. See Lipscher v. LRP Publ’ns, Inc., 266 F.3d 1305, 1313 (11th Cir. 2001); see also Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989); Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160, 1164 (11th Cir. 1982). Noting that no one factor is dispositive, the Court highlighted the strength of the Plaintiff’s mark, the Defendant’s intent to pass itself off as genuine, the similarity of the target customers, and the Defendant’s bad faith to siphon the Plaintiff’s brand reputation as the support needed to demonstrate Plaintiff’s probably success.
For the second factor, the Court found the Plaintiff’s evidence more than sufficient to establish a likelihood of irreparable harm. Noting that while the Eleventh Circuit acknowledges the establishment of the first factor allows a presumption of irreparable harm, “the strength of this presumption has been called into question by the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).” Order at 10. Yet, despite the discretion to do so, Judge Batten did not rely on the permitted presumption. Instead, he recognized the Plaintiff’s sufficient demonstration of evidence showing imminent and unquantifiable damage to their reputation and goodwill.
The Order’s quick treatment of the balance of hardships factor echoes the findings established by the first and second factors. In other words, since the Defendant seems to have no legal right to use Plaintiff’s marks, then the Defendant will not suffer any legitimate hardship caused by temporarily suspending its use.
Finally, Judge Batten aligned the public interest factor with the interest inherit to trademark law, stating “[t]he public has an interest in not being misled as to the origin, source, or sponsorship of trademarked products.” Order at 12, citing Nike, Inc. v. Leslie, 227 U.S.P.Q. 574, 575 (1985). Judge Batten cited additional caselaw support for the position that trademark laws protect consumers from confusion or from being misled into buying imitation goods.
The fact that the Defendants are unknown and allegedly difficult to reach did not dissuade the Judge’s decision. In fact, the electronic anonymity hiding the alleged infringers seemed to underscore the rationale for the ex parte order. Judge Batten even noted that “[t]he justification for an ex parte order is even more compelling where a significant amount of evidence pertaining to the infringing activity is in electronic form, and therefore subject to quick, easy, and untraceable destruction by Defendant.” Order at 5, citing Dell Inc. v. BelgiumDomains, LLC, 2007 WL 6862341 at *2 (S.D. Fla. 2007); see alsoChanel, Inc. v. Chanel255.ORG, et al., 2012 WL 12845630 at *5 (S.D. Fla. 2012).
To rectify the Plaintiff’s irreparable injury, the TRO commands the named and any unnamed hosting sites to suspend or disable the domain name, and to prevent the Defendant from transferring the name to another party or registrar. In a similar vein, the Order commands the named and any unnamed service providers to cease services and disable access. Further, the hosting sites and service providers are ordered to disclose the Defendants’ identities. The Order does not require M+A Matting to post a bond or security at this time, unless or until a Defendant challenges this portion of the Order.
In addition to the injunctive relief just granted, Plaintiff’s Complaint seeks damages, judgment as to infringement, unfair competition, and willfulness, as well as attorneys’ fees, costs, and expenses.
A hearing for the requested preliminary injunction is set for May 8 before Judge Batten.
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This is an interesting case that highlights the difficulty of identifying anonymous defendants in trademark infringement cases. The ex parte TRO granted by Judge Batten seems appropriate given the strength of the plaintiff’s evidence of infringement and the likelihood of irreparable harm to their reputation and goodwill. It will be interesting to see how the case develops further.
Thanks, Ely Shemer