* The Honorable Joseph M. Hood, United States Distr ict Judge for the

Eastern District

of Kentucky, sit

ting by designat ion.
1 RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Six

th Circuit Rul e 206
ELECTRO NIC CIT

ATION: 2004 FED App . 0071P (6th C ir.) File Name: 04a00 71p.06



### UNITED STATES COURT OF APPEALS

FOR THE SIXT H CIR CUIT

_________________
L UCAS N URSER

Y AND L ANDSCAPI

NG , I NC ., Plaintiff- Appellant
,

v.

M ICHEL LE G ROSSE , Defendant-Appellee. X

- - - - > , - - - - N No. 02-1668

Appeal from the United States District Court for the E astern D istrict of Michiga n at Detr oit. No. 01-73291—Bernard A. Friedman, D istrict Judge.

Argued: October 31, 2003 Decided and Filed: March 5, 2004
Befor e: BATCHELDER and COL E, Circuit Judges; HOOD, District Judge. * 2 Lucas Nursery and Landscapi

ng v. Gros

se No. 02-1668

_________________ COUNSEL
ARGUED: Kevin L. Bennet t, HEMMING, POL

ACZYK, CRONIN, SMIT

H & WITTHOFF, Ply

mouth, Michigan, for Appellan t. Jeffrey D. Wilson, RAYMOND & PROKOP, Southfield, Michigan, for Appellee. ON BRI EF: Kev in L. Benne tt , HEMMING, POL ACZYK, CRONIN, SMI TH & WITTHOFF, Plymouth, Michigan, for Appellant. Jeffrey D. Wilson, RAYMOND &

PROKOP, Southfield, Michigan, for Appellee.

_________________

OPINION

_________________ R. GUY COL

E, JR., Circu

it Judge. Pl aintif

f-Ap pellant Lucas Nursery a

nd Landscaping, I

nc. (“Lucas Nur

sery”) appeals the district court’s grant of summary judg men t for Defendant-AppelleeMichelle Grosse in th is action alleging that Grosse violated th e Anticy bersqua tting Co n sumer ProtectionAct, 15 U.S.C. § 1125(d)(1)(A) (2000) ( “the ACP A”), by registering the domain name “lucasnursery .c om ” and creating a web site on which she detailed her complain ts agains tLucas 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 infavor of

Grosse based upon its conclusi on that the she did not

act in ba d faith within the meaning of the ACPA. For the reasons that follow,
we AFFIRM

the judgment of the district court.
I. BACKGROUND
This casearises f

rom a disp

ute rela ted to landscaping work that was pe rformed by L

ucas Nursery

at the residence of Michelle Grosse. In March 2000, G rosse hired LucasNo. 02-1668 Lucas Nursery and Landscapi

ng v. Gros

se 3

Nursery to correct a dip in the

soil (know

n as a swale) that ran horizonta lly through the center of her fr ont yard. L

ucas Nursery’ s repres entative , Bob L ucas, Jr., stated tha

t the swal e could be corrected by

using five large loads of topsoil. L ucas Nursery pe

rformed the work on May 16, 2000.
Grosse contends that the work was performed inadeq uately

. Afte rall egedly

contacting Luca s Nursery on nume rous occasions to express her

disple asure with the wor k and to seek some repair, Grosse filed a complaint with the Better Busines s Burea

u (“the B BB”). After th e BBB ended its i nvestigation

without making a recommendation, Gros s e remained dissatisfied by w hat she felt had been poor service by Luc as Nursery, a

nd decided to inform others about her experience with the company

. OnAugust 12, 20 00, Grosse r egiste red the d omain nam e “lucasnursery .com.” She then p osted a w eb pag e for the sole purpose of relay ing her story

to the public. The web page was titled, “My L

ucas Landscaping

Experience.” Th e web pa ge included complain ts rega rding th e poor pr

eparat ion of the soil prior to Lucas Nursery ’s laying of the sod, the hasty natur e of Lucas Nursery ’s w ork, th e ineff ectiven ess of the

BBB in addressingher complaint, and the fact that she had

to pay an additional $5,400 to asecon d contractor to repair the work originally pe

rformed by L

ucas Nursery

. OnSeptember 27, 2000, Gros se received a letter from Lucas Nursery’ s attorney dema nding that she cease operating t he web site. On Octobe r 2, 2000, Grosse r

emo ved th e web site’s content. Howeve r, after removing the web site’s content, Grosse con ta cted the Michigan Bureau of Commercial Services Licensing Division and the U.S. Patent & Trademark Office to determine whe ther there w as a regist ered tradema rk for L ucas Nursery . After l earning th a t no tradema

rk registrati on existed, Grosse concluded that Lucas Nursery c ould not prevent her from retaining the web site. OnApril 13, 2001, Grosse posted a new narrative 4 Lucas Nursery and Landscapi

ng v. Gros

se No. 02-1668

on the we b sit e, again descri bing he r experience with Lucas Nursery.
Luc as Nursery f

iled suit against Grosse on August 17 , 2001. Thereafter, e ach par ty moved for summa

ry judgmen t. OnApril 23, 2002, the district court denied Lucas Nur

sery’s motion for summary

judgment and granted Grosse’s motion for summa

ry judgmen t.
II. ANALY SIS 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 pleading s, depositions, answers to interrogatories , a nd admissions on file, to ge th er wi th th e a ff id av it s, if an y, show th at there is no genuine issue of material fact and that th e moving party

is entitle d to a j udgment as a matter of law.” Fed. R. Civ. P. 56(c). When reviewing a motion for summary judgmen t, the evidence, all facts, and any inferences that may be drawn from the facts must be viewed in the ligh t most favora ble to t he no nmoving party. Matshusita Elec. In dus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587 (1986 )

. However, a “mere scintilla” of evidence is i nsufficient; the evidence must be suc

h that a reas onable ju

ry could fin

d in f avor of the plaintiff. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 252 (1986).
B. The ACPA
“The ACPA was enact ed in 1999 in response to concerns
over the proliferation

of cyber squatting – the Internet ve rsion 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

cybersqua

tting, and cy

bersquatters had begunNo. 02-1668 Lucas Nursery and Landscapi

ng v. Gros

se 5

to insulate them selv es from liability under the F ederal Trademark Dilution Act, 15 U.S.C. § 1125. Id

. Inthe Senate Report accompany ing the ACPA, cybersqua tters are defined as those who: (1) “reg is ter well

knownbrand names as Inter net domain names in or d er to extrac t p ay

ment from

the rig htful owne

rs of the marks;” (2) “regi ster wel l-known ma rks a s dom ain names and wareho use those mar

ks with the

hope of se llin g them to the highest bidder;” (3) “register

well- known marks to prey on
consumer confusion by

misusing the doma in name to divert customers from the mark owner’s site to the cy bersquatter’s
ownsite;” (4 ) “targ et distinc tive mark s to defr aud cons umers, including to engag e in count erfeiti ng acti vities.” S

. R EP . N O

. 106-140 at 5-6.
Pursuant to the ACPA , a cy

bersqua tter is pot entially 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 na me that -- (I) in th e c ase of a

mark tha

t is distinc tive . . . , i s identical or confusingly

similar to that mark; (II) in the case of a famous mark . . . , is id entical 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
Alth ough there is s ome disput e betw een the parties a s to whether the ACPA covers non-commer cial activ ity, we see no
reason to consider these arguments, a s the statute di rects a reviewing court to consider on ly a d efenda nt’s “ba d faith intentto pr of

it ” f ro m t he us e o f a ma rk he ld by a no th er pa rt y. We, therefore, turn to this consideration. 6 Lucas Nursery and Landscapi

ng v. Gros

se No. 02-1668

2. Bad Fait

h Analysis
Inorder for liability to attac h under the ACPA a

court mus t conclude that the d

efenda nt’s acti ons consti

tute “ bad faith.” ACPA § 3002 (codified at 15 U.S.C. § 1125(d)( 1)(A)- (B)). An a nalysis of whether

a defendant’s actions constitute ba d faith within the

meanin g o f the ACPA

usually begins w

ith consideration

of several factors, nine of which are listed in the A CP A. See Sporty’s Farm v. Sportman’s Market, Inc. , 202 F.3d 489, 498 (2d Cir. 20 00). The first fou r facto rs are th

ose that militate against a finding of

bad fait h by providing

some re asonable

basis for wh y a defendan t migh t have regi stere d the domain name of another mark holder. These fa ctors focus
on: whether the defendant has tradema rk or othe r right s in the domain name; the

extent to which the

domain na

me consis ts of the defendant’s legal name or ot h er common name; any prior use of the

domain na

me for th e offering of goods and services; and the bona fide noncommercial use of the site.
Each of the first three factors cuts aga inst Grosse. She does nothold a trademark or other intellectual prop erty rights to the domain name or names included in the re gister

ed domain
nam e. The doma

in name ne ither co nsists of he r lega l n am e or any name use d to refer to her. Grosse has also not used the domain name in c onnection with any offerin g of g oods o r service s. The fourth factor cuts in Grosse’s favor bec ause the site was used for noncommercial purposes.
Factors five through eight are indicative of the presence of bad faith on the part of

the defe ndant. Th ese factors focus on: whether the defend ant se eks to divert consumers from the mark holder’s online location either in a way that c ould harm good will or tar

nish or dis

parag e the mar

k by creati ng a confusionregarding

the sponsorship of the site; whether there has been an offer to transfer or se ll the site for financial gain; wheth er the defendant provided misleading contact informationwhen

registering the domain name; and whetherNo. 02-1668 Lucas Nursery and Landscapi

ng v. Gros

se 7

the defenda

nt has ac quired mu

ltiple doma

in names which may be duplicative of

the marks of others.
The paradig

matic har m that t he ACPA was e

nacted t o eradic ate –

the practice of cy

bersquatters registering se veral hundred domain names in an e ffort to sell them to the legitima te owners of the ma

rk – is simply not present in any of Grosse’s actions. In its report o n the ACPA, the Senat e Jud iciary Committee distilled the crucial elements of bad fait h to mean an “intent to trade on the goodwill of ano th er’s mark.” S. R EP . N O . 106-140, at 9. See also Ford Motor Co.
v. Catalanotte , 342 F.3d 543, 549 ( 6th Cir . 2003) (“Registering

a famous tradema rk as a domain name

and then offering it for sale to the trade mark owner is exactly the wrong Co ng re ss in te nd ed to re me dy w hen i t passed the ACPA.”). There is no evidence that this was Grosse’s intention when she

regist ered the L

ucas Nursery

domain
name and created her web site. It wo uld therefore stretch the ACPA beyond the

letter of the law and Congress’s intention to declare any

thing to the contrary

. None of these factors militates against Grosse. There is no dispute that L ucas Nursery

did not hav e an online locati on , and hence Grosse’s creation of a web site to complain about Lucas Nursery’ s services could not have been inte

nded “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 s ite explicitly stated that the site was established by Grosse for the purposes of relay

ing her experience wi th Luc as Nu rs er y. Moreover, Grosse never offered to sell the site to L ucas Nu rs er y. She al so di d not provi de mis leadi ng c ont act informationwhen she re gis te re d t he do ma in na me . F in al ly, she has not acquired any add it ional domain names, which would be indica tive of e ither an

intent to se ll such na

mes to those ent ities whos e trademarks were identical or similar, or exploit them

for othe r uses. 8 Lucas Nursery and Landscapi

ng v. Gros

se No. 02-1668

Lucas Nusery c ontends that the Fourth Circuit’s decision in People for the Eth ic al Tre atment of Animals (PETA) v. Doughney , 263 F.3d

359 (4th Cir . 2001), is

applica ble to the instantaction. Although the defendant in Doughney did not make commercial use of his web site, the court concluded that he had, none

thele ss, acted with a bad f aith inten t to profit

. Doughney

had “mad e statem ents on his website and in the press recomme

nding tha t PETA atte

mpt to ‘set

tle’ with h

im and ‘make him an offer’” and that he had “ register ed o ther domain names that [were] identical or similar to the marks or
names of other famous people and organizations.” Id . at 369. Here, Grosse has engag ed in no such offensive conduct.
Lucas Nursery se eks 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 summa

ry judgmen

t again st the def

endant, concluding that ther

e was suf ficient e vidence to show that the defendant had acted in bad fai th under the ACPA. The defenda nt, a disgruntled

customer, registered

sixteen doma

in
names composed of various misspellings of the name tdwater house.c om. I

d

. at 111. On the web sites associated with these names, the defendant attacked Toronto-Dominion for “we bfacism” and involvement with white collar crime, among other things. Id . at 112. The court concluded that the defendant had acted in bad f

aith, citi ng four factor s: (1) his intention to divert customers from the “tdw at erhouse” web site by

creating confusion as to its source or sponsorship; (2) the fact that he had reg istered sixteen domain names; (3) th e fact that he offered no goods or services on the site; an d (4) the fact that he had no intellectual property rights in the site. See id . at 114.
Alth ough Grosse’ s actions would arguably satisfy three of the four aforementioned factors, she does not fa ll within t he factor that we consider centralto a finding of bad faith. She did not register multiple web sites; she only reg istered one. Further, it is not clea

r to this Cou

rt that the presenc e of simplyNo. 02-1668 Lucas Nursery and Landscapi

ng v. Gros

se 9

one factor

th at indica tes a bad faith intent to profit, without more, c a n 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 th em in par

ticular c ategor

ies, without making s ome sense of what motivates the conduct at issue. The factors are

given to courts a s a guide , not as a substitute for careful

think ing about whether the conduct at issue is motivated by a bad fa ith intent to profit. Perhaps most important to our

conclusion are, Grosse’s actions, which
seem to have been undertaken in the spirit of info rming fellow consume

rs a bout the practices of a landscaping company that she believed had performed infe rior 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 o f informing fellow consumers of one’s experience with a partic ular ser vic e prov ider is surely not inconsistent with this ideal.
CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s grant of summary

judgment in favor of Grosse.