*

The Honorable Joseph M. Hood, United States District Judge for the

Eastern District of Kentucky, sitting by designation.

1

RECOMMENDED FOR FULL-TEXT PUBLICATION

Pursuant to Sixth Circuit Rule 206

ELECTRONIC CITATION: 2004 FED App. 0071P (6th Cir.)

File Name: 04a0071p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

_________________

LUCAS NURSERY AND

LANDSCAPING, INC.,

Plaintiff-Appellant,

v.

MICHELLE GROSSE,

Defendant-Appellee.

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No. 02-1668

Appeal from the United States District Court

for the Eastern District of Michigan at Detroit.

No. 01-73291—Bernard A. Friedman, District Judge.

Argued: October 31, 2003

Decided and Filed: March 5, 2004 

Before: BATCHELDER and COLE, Circuit Judges;

HOOD, District Judge.*

2 Lucas Nursery and

Landscaping v. Grosse

No. 02-1668

_________________

COUNSEL

ARGUED: Kevin L. Bennett, HEMMING, POLACZYK,

CRONIN, SMITH & WITTHOFF, Plymouth, Michigan, for

Appellant. Jeffrey D. Wilson, RAYMOND & PROKOP,

Southfield, Michigan, for Appellee. ON BRIEF: Kevin L.

Bennett, HEMMING, POLACZYK, CRONIN, SMITH &

WITTHOFF, Plymouth, Michigan, for Appellant. Jeffrey D.

Wilson, RAYMOND & PROKOP, Southfield, Michigan, for

Appellee.

_________________

OPINION

_________________

R. GUY COLE, JR., Circuit Judge. Plaintiff-Appellant

Lucas Nursery and Landscaping, Inc. (“Lucas Nursery”)

appeals the district court’s grant of summary judgment for

Defendant-Appellee Michelle Grosse in this action alleging

that Grosse violated the Anticybersquatting Consumer

Protection Act, 15 U.S.C. § 1125(d)(1)(A) (2000) (“the

ACPA”), by registering the domain name “lucasnursery.com”

and creating a web site on which she detailed her complaints

against Lucas for its allegedly bad service in landscaping her

front yard. The central issue on appeal is whether the district

court erred in granting summary judgment in favor of Grosse

based upon its conclusion that the she did not act in bad faith

within the meaning of the ACPA. For the reasons that follow,

we AFFIRM the judgment of the district court. 

I. BACKGROUND

This case arises from a dispute related to landscaping work

that was performed by Lucas Nursery at the residence of

Michelle Grosse. In March 2000, Grosse hired Lucas
No. 02-1668 Lucas Nursery and

Landscaping v. Grosse

3

Nursery to correct a dip in the soil (known as a swale) that ran

horizontally through the center of her front yard. Lucas

Nursery’s representative, Bob Lucas, Jr., stated that the swale

could be corrected by using five large loads of topsoil. Lucas

Nursery performed the work on May 16, 2000. 

Grosse contends that the work was performed inadequately.

After allegedly contacting Lucas Nursery on numerous

occasions to express her displeasure with the work and to

seek some repair, Grosse filed a complaint with the Better

Business Bureau (“the BBB”). After the BBB ended its

investigation without making a recommendation, Grosse

remained dissatisfied by what she felt had been poor service

by Lucas Nursery, and decided to inform others about her

experience with the company. 

On August 12, 2000, Grosse registered the domain name

“lucasnursery.com.” She then posted a web page for the sole

purpose of relaying her story to the public. The web page was

titled, “My Lucas Landscaping Experience.” The web page

included complaints regarding the poor preparation of the soil

prior to Lucas Nursery’s laying of the sod, the hasty nature of

Lucas Nursery’s work, the ineffectiveness of the BBB in

addressing her complaint, and the fact that she had to pay an

additional $5,400 to a second contractor to repair the work

originally performed by Lucas Nursery. 

On September 27, 2000, Grosse received a letter from

Lucas Nursery’s attorney demanding that she cease operating

the web site. On October 2, 2000, Grosse removed the

web site’s content. However, after removing the web site’s

content, Grosse contacted the Michigan Bureau of

Commercial Services Licensing Division and the U.S. Patent

& Trademark Office to determine whether there was a

registered trademark for Lucas Nursery. After learning that

no trademark registration existed, Grosse concluded that

Lucas Nursery could not prevent her from retaining the

web site. On April 13, 2001, Grosse posted a new narrative

4 Lucas Nursery and

Landscaping v. Grosse

No. 02-1668

on the web site, again describing her experience with Lucas

Nursery. 

Lucas Nursery filed suit against Grosse on August 17,

2001. Thereafter, each party moved for summary judgment.

On April 23, 2002, the district court denied Lucas Nursery’s

motion for summary judgment and granted Grosse’s motion

for summary judgment.

II. ANALYSIS

A. Standard of Review

We review a district court’s decision to grant summary

judgment de novo. Stephenson v. AllState Ins. Co., 328 F.3d

822, 826 (6th Cir. 2003). Summary judgment is proper if “the

pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, show

that there is no genuine issue of material fact and that the

moving party is entitled to a judgment as a matter of law.”

Fed. R. Civ. P. 56(c). When reviewing a motion for summary

judgment, the evidence, all facts, and any inferences that may

be drawn from the facts must be viewed in the light most

favorable to the nonmoving party. Matshusita Elec. Indus.

Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).

However, a “mere scintilla” of evidence is insufficient; the

evidence must be such that a reasonable jury could find in

favor of the plaintiff. Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 252 (1986).

B. The ACPA

“The ACPA was enacted in 1999 in response to concerns

over the proliferation of cybersquatting – the Internet version

of a land grab.” Virtual Works, Inc. v. Volkswagen of

America, Inc., 238 F.3d 264, 267 (4th Cir. 2001). It was

enacted because then-existing law did not expressly prohibit

the practice of cybersquatting, and cybersquatters had begun
No. 02-1668 Lucas Nursery and

Landscaping v. Grosse

5

to insulate themselves from liability under the Federal

Trademark Dilution Act, 15 U.S.C. § 1125. Id. 

In the Senate Report accompanying the ACPA,

cybersquatters are defined as those who: (1) “register wellknown brand names as Internet domain names in order to

extract payment from the rightful owners of the marks;”

(2) “register well-known marks as domain names and

warehouse those marks with the hope of selling them to the

highest bidder;” (3) “register well-known marks to prey on

consumer confusion by misusing the domain name to divert

customers from the mark owner’s site to the cybersquatter’s

own site;” (4) “target distinctive marks to defraud consumers,

including to engage in counterfeiting activities.” S.REP. NO.

106-140 at 5-6. 

Pursuant to the ACPA, a cybersquatter is potentially liable

to the owner of a protected mark if that person:

(i) has a bad faith intent to profit from the mark . . . ; and

(ii) registers, traffics in, or uses a domain name that --

(I) in the case of a mark that is distinctive . . . , is

identical or confusingly similar to that mark;

(II) in the case of a famous mark . . . , is identical or

confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of

section 706 of Title18 or section 220506 of Title 36. 

15 U.S.C. § 1125(d)(1)(A).

1. Non-Commercial Activity and the ACPA

Although there is some dispute between the parties as to

whether the ACPA covers non-commercial activity, we see no

reason to consider these arguments, as the statute directs a

reviewing court to consider only a defendant’s “bad faith

intent to profit” from the use of a mark held by another party.

We, therefore, turn to this consideration.

6 Lucas Nursery and

Landscaping v. Grosse

No. 02-1668

2. Bad Faith Analysis

In order for liability to attach under the ACPA a court must

conclude that the defendant’s actions constitute “bad faith.”

ACPA § 3002 (codified at 15 U.S.C. § 1125(d)(1)(A)-(B)).

An analysis of whether a defendant’s actions constitute bad

faith within the meaning of the ACPA usually begins with

consideration of several factors, nine of which are listed in the

ACPA. See Sporty’s Farm v. Sportman’s Market, Inc., 202

F.3d 489, 498 (2d Cir. 2000). The first four factors are those

that militate against a finding of bad faith by providing some

reasonable basis for why a defendant might have registered

the domain name of another mark holder. These factors focus

on: whether the defendant has trademark or other rights in the

domain name; the extent to which the domain name consists

of the defendant’s legal name or other common name; any

prior use of the domain name for the offering of goods and

services; and the bona fide noncommercial use of the site. 

Each of the first three factors cuts against Grosse. She does

not hold a trademark or other intellectual property rights to

the domain name or names included in the registered domain

name. The domain name neither consists of her legal name

or any name used to refer to her. Grosse has also not used the

domain name in connection with any offering of goods or

services. The fourth factor cuts in Grosse’s favor because the

site was used for noncommercial purposes. 

Factors five through eight are indicative of the presence of

bad faith on the part of the defendant. These factors focus on:

whether the defendant seeks to divert consumers from the

mark holder’s online location either in a way that could harm

good will or tarnish or disparage the mark by creating a

confusion regarding the sponsorship of the site; whether there

has been an offer to transfer or sell the site for financial gain;

whether the defendant provided misleading contact

information when registering the domain name; and whether
No. 02-1668 Lucas Nursery and

Landscaping v. Grosse

7

the defendant has acquired multiple domain names which

may be duplicative of the marks of others. 

The paradigmatic harm that the ACPA was enacted to

eradicate – the practice of cybersquatters registering several

hundred domain names in an effort to sell them to the

legitimate owners of the mark – is simply not present in any

of Grosse’s actions. In its report on the ACPA, the Senate

Judiciary Committee distilled the crucial elements of bad faith

to mean an “intent to trade on the goodwill of another’s

mark.” S. REP. NO. 106-140, at 9. See also Ford Motor Co.

v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003)

(“Registering a famous trademark as a domain name and then

offering it for sale to the trademark owner is exactly the

wrong Congress intended to remedy when it passed the

ACPA.”). There is no evidence that this was Grosse’s

intention when she registered the Lucas Nursery domain

name and created her web site. It would therefore stretch the

ACPA beyond the letter of the law and Congress’s intention

to declare anything to the contrary. 

None of these factors militates against Grosse. There is no

dispute that Lucas Nursery did not have an online location,

and hence Grosse’s creation of a web site to complain about

Lucas Nursery’s services could not have been intended “to

divert consumers from the mark owners’s online location.”

Nor is there any evidence that Grosse ever sought to mislead

consumers with regard to the site’s sponsorship. The web site

explicitly stated that the site was established by Grosse for

the purposes of relaying her experience with Lucas Nursery.

Moreover, Grosse never offered to sell the site to Lucas

Nursery. She also did not provide misleading contact

information when she registered the domain name. Finally,

she has not acquired any additional domain names, which

would be indicative of either an intent to sell such names to

those entities whose trademarks were identical or similar, or

exploit them for other uses.

8 Lucas Nursery and

Landscaping v. Grosse

No. 02-1668

Lucas Nusery contends that the Fourth Circuit’s decision in

People for the Ethical Treatment of Animals (PETA) v.

Doughney, 263 F.3d 359 (4th Cir. 2001), is applicable to the

instant action. Although the defendant in Doughney did not

make commercial use of his web site, the court concluded that

he had, nonetheless, acted with a bad faith intent to profit.

Doughney had “made statements on his website and in the

press recommending that PETA attempt to ‘settle’ with him

and ‘make him an offer’” and that he had “registered other

domain names that [were] identical or similar to the marks or

names of other famous people and organizations.” Id. at 369.

Here, Grosse has engaged in no such offensive conduct. 

Lucas Nursery seeks to buttress its argument with TorontoDominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass.

2002). There, the district court granted Toronto-Dominion’s

motion for summary judgment against the defendant,

concluding that there was sufficient evidence to show that the

defendant had acted in bad faith under the ACPA. The

defendant, a disgruntled customer, registered sixteen domain

names composed of various misspellings of the name

tdwaterhouse.com. Id. at 111. On the web sites associated

with these names, the defendant attacked Toronto-Dominion

for “webfacism” and involvement with white collar crime,

among other things. Id. at 112. The court concluded that the

defendant had acted in bad faith, citing four factors: (1) his

intention to divert customers from the “tdwaterhouse”

web site by creating confusion as to its source or sponsorship;

(2) the fact that he had registered sixteen domain names; (3)

the fact that he offered no goods or services on the site; and

(4) the fact that he had no intellectual property rights in the

site. See id. at 114.

Although Grosse’s actions would arguably satisfy three of

the four aforementioned factors, she does not fall within the

factor that we consider central to a finding of bad faith. She

did not register multiple web sites; she only registered one.

Further, it is not clear to this Court that the presence of simply
No. 02-1668 Lucas Nursery and

Landscaping v. Grosse

9

one factor that indicates a bad faith intent to profit, without

more, can satisfy an imposition of liability within the

meaning of the ACPA. The role of the reviewing court is not

simply to add factors and place them in particular categories,

without making some sense of what motivates the conduct at

issue. The factors are given to courts as a guide, not as a

substitute for careful thinking about whether the conduct at

issue is motivated by a bad faith intent to profit. Perhaps

most important to our conclusion are, Grosse’s actions, which

seem to have been undertaken in the spirit of informing

fellow consumers about the practices of a landscaping

company that she believed had performed inferior work on

her yard. One of the ACPA’s main objectives is the

protection of consumers from slick internet peddlers who

trade on the names and reputations of established brands. The

practice of informing fellow consumers of one’s experience

with a particular service provider is surely not inconsistent

with this ideal. 

CONCLUSION

For the foregoing reasons, weAFFIRM the district court’s

grant of summary judgment in favor of Grosse.