UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

WEATHER UNDERGROUND, INC., a Michigan

corporation, 

Plaintiff,

v.

NAVIGATION CATAYLST SYSTEMS, INC., a

Delaware corporation; BASIC FUSION, INC., a

Delaware corporation; CONNEXUS CORP., a

Delaware corporation; and FIRSTLOOK, INC., a

Delaware corporation, 

Defendants.

 /

CASE NO. 09-10756

HON. MARIANNE O. BATTANI

OPINION AND ORDER DENYING MOTIONS 

FOR PARTIAL SUMMARY JUDGMENT

This matter is before the Court on Defendants Connexus, Firstlook, and NCS’

Motion for Summary Adjudication (Doc. No. 187), and Plaintiff’s Motion for Partial Summary

Judgment against National Catalyst Systems, Inc., Connexus Corp., and FirstLook Inc.

(Doc. No. 189). The Court heard oral argument on September 14, 2011, and at the

conclusion of the hearing took these matters under advisement. For the reasons that

follow the motions are DENIED.

I. INTRODUCTION AND FACTUAL BACKGROUND

Plaintiff, Weather Underground, Inc. (“Weather Underground”), filed suit on October

26, 2009, against Defendants, alleging violations of federal and state law, including a claim

that Defendants engaged in cybersquatting in violation of the Anticybersquatting

Consumer Protection, 15 U.S.C. § 1125(d). Plaintiff, a commercial weather service,

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indexes information provided to it by multiple weather stations. Plaintiff owns

approximately 125 web addresses or domain names, including “Weather Underground,”

“Wund,” “Wunderground,” “Weather Sticker,” “Wundersearch,” “Wundermarp,” and

“Wunderradio.” The majority integrate its trademarks and service marks. 

According to Plaintiff, Defendants’ business model capitalizes on Internet users’

errors in typing the web addresses to businesses whose websites they intend to visit, a

practice known as “typo squatting.” Weather Underground alleges that Defendants

infringed its trademarks by registering domain names with various misspellings of Plaintiff’s

web properties, <weatherunderground.com>, and <wund.com> in order to redirect

Plaintiff’s customers to competitors and third-party advertisers. 

On August 28, 2008, Plaintiff filed a Complaint with the National Arbitration Forum

to recover forty-one domain names registered by NCS. (Doc. No. 189, Ex. E). The

Uniform Domain Dispute Resolution Policy (“UDRP”) prohibits the registration of domain

names with bad faith intent to profit that are identical or confusingly similar to either

common law or registered trademarks.

On October 13, 2008, the arbitrator, Charles K. McCotter, Jr., found that NCS “is

intentionally using the disputed domain names for commercial gain through a likelihood of

confusion with [Plaintiff’s] mark,” and therefore the use “of the disputed domain names is

also evidence of registration and use in bad faith.” McCotter ordered NCS to transfer all

41 domain names, which constituted typographical errors of Plaintiff’s registered and

common law trademarks to Plaintiff. 

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II. STANDARD OF REVIEW

Federal Rule of Civil Procedure 56(a) authorizes a court to grant summary judgment

if “the movant shows there is no genuine dispute as to any material fact and the movant

is entitled to judgment as a matter of law.” There is no genuine issue of material fact if

there is no factual dispute that could affect the legal outcome on the issue. Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether to grant summary

judgment, this Court “must construe the evidence and draw all reasonable inferences in

favor of the nonmoving party.” Hawkins v. Anheuser-Busch, Inc., 517 F.3d 321, 332 (6th

Cir. 2008). However, the nonmoving party “cannot rely merely on allegations but must set

out specific facts showing a genuine issue for trial.” Chappell v. City of Cleveland, 585

F.3d 901, 906 (6th Cir. 2009).

III. ANALYSIS

Both motions before the Court are directed to the anticybersquatting claims; both

turn, at least in part, on whether Plaintiff can or cannot, as a matter of law, show

Defendants’ bad faith intent to profit as required under the Anticybersquatting Consumer

Protection Act. Congress enacted the ACPA “to prohibit ‘cybersquatting,’ which occurs

when a person other than the trademark holder registers the domain name of a well known

trademark and then attempts to profit from this by either ransoming the domain name back

to the trademark holder or by using the domain name to divert business from the

trademark holder to the domain name holder.” Sporty's Farm LLC v. Sportsman's Market,

Inc., 202 F.3d 489 493 (2d Cir. 2000). A defendant engages in typosquatting when it

“register[s] domain names that are intentional misspellings of distinctive or famous

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names.” Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001); see also Green v.

Fornario, 486 F.3d 100, 103 n. 5 (3d Cir. 2007) (describing typosquatting as a “subgenera

of cybersquatting” that “involves registering a domain name that is but a letter or two off

from a distinctive mark”).

To succeed on a claim under the ACPA, the trademark holder must establish five

elements: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or

famous; (3) the defendant's domain name is identical or confusingly similar to, or in the

case of famous marks, dilutive of, the owner's mark; and (4) the defendant used,

registered, or trafficked in the domain name (5) with a bad faith intent to profit. Ford Motor

Co. v. Catalanotte, 342 F.3d 543, 546 (6th Cir. 2003). Only two elements are discussed

below–confusing similarity and bad faith intent to profit.

A. Confusing Similarity

The partes disagree on how the issue of confusing similarity of the 288

typographical variations and word swaps of Plaintiff’s trademarks must be pursued.

Plaintiff asks the Court to defer examination of the specific variations to the context of an

assessment of statutory damages. According to Plaintiff, at that time, the Court could

review on a domain by domain basis. (Tr. at 7). The Court declines Plaintiff’s invitation.

Defendants are correct that the issue of confusing similarity is an element of the claim.

Therefore, the Court must rule on each of the challenged domain names before entering

a judgment of liability. Only after such a ruling do damages become relevant.

Accordingly, Plaintiff has not met its burden to show it is entitled to judgment on its

cybersquatting claims.

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B. Bad Faith Intent

 The parties’ briefs focus primarily on the last factor of a trademark holder’s

claim–bad faith intent to profit. The statute sets out a list of nine nonexclusive factors that

“a court may consider” in determining whether the “bad faith intent to profit” standard is

satisfied. 15 U.S.C. § 1125(d)(1)(B)(i). The factors provided in the ACPA are “given to

courts as a guide, not as a substitute for careful thinking” about the ultimate issue in a

cybersquatting claim—“whether the conduct at issue is motivated by a bad faith intent to

profit.” Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 811 (6th Cir. 2004).

The factors include:

(I) the trademark or other intellectual property rights of the person, if any, in

the domain name;

(II) the extent to which the domain name consists of the legal name of the

person or a name that is otherwise commonly used to identify that person;

(III) the person's prior use, if any, of the domain name in connection with the

bona fide offering of any goods or services;

(IV) the person's bona fide noncommercial or fair use of the mark in a site

accessible under the domain name;

(V) the person's intent to divert customers from the mark owner's online

location to a site accessible under the domain name that could harm the

goodwill represented by the mark, either for commercial gain or with the

intent to tarnish or disparage the mark, by creating a likelihood of confusion

as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person's offer to transfer, sell, or otherwise assign the domain name

to the mark owner or any third party for financial gain without having used,

or having an intent to use, the domain name in the bona fide offering of any

goods or services, or the person's prior conduct indicating a pattern of such

conduct;

(VII) the person's provision of material and misleading false contact

information when applying for the registration of the domain name, the

person's intentional failure to maintain accurate contact information, or the

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person's prior conduct indicating a pattern of such conduct;

(VIII) the person's registration or acquisition of multiple domain names which

the person knows are identical or confusingly similar to marks of others that

are distinctive at the time of registration of such domain names, or dilutive of

famous marks of others that are famous at the time of registration of such

domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person's domain name

registration is or is not distinctive and famous within the meaning of

subsection (c) of this section. 

15 U.S.C. § 1125(b)(1). In assessing the factors, the Court is mindful of the harm the

ACPA seeks to prevent. Congress designed the ACPA to “target a narrow class of

cybersquatters consisting of those who have the bad faith intent to profit, and not to tread

on the rights of those with any other motives.” Mayflower Transit, LLC v. Prince, 314 F.

Supp.2d 362, 370 (D. N.J. 2004). In Lucas Nursery and Landscaping, 359 F.3d at 810

(quoting S.Rep. No. 106-140 (1999), 1999 WL 594571, at *5-6 (emphasis added), the

court elaborated:

The Senate Report accompanying the Anticybersquatting Consumer

Protection Act bolsters our understanding that a “bad faith intent to profit” is

the essence of the wrong that the Act seeks to combat. That report defines

cybersquatters as those who:

(1) “register well-known 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.”

With this harm in mind, the Court considers the arguments.

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1. Level of intent

The parties’ positions that they are entitled to partial summary judgment turn on

whether Plaintiff can show a genuine dispute as to Defendants’ bad faith. Plaintiff argues

that the Court may apply a willful blindness standard to the bad faith requirement. Plaintiff

builds its argument on the absence of the term “subjective intent” in the statute, an

omission that, according to Plaintiff, frees the Court to incorporate a willful blindness

standard. In contrast, Defendants argue that bad faith intent requires that Defendants

knew of and targeted Plaintiff’s good will. Consequently, the standard is neither willful

blindness nor negligence–it is a specific intent standard. 

Weather Underground’s argument has no support in case law; no court has applied

a willful blindness standard to a cybersquatting case. Moreover, the factors included in

the statute undermine Plaintiff’s position. For example, factor V, requires consideration

of “the person’s intent to divert customers”. 15 U.S.C. § 1125 (B)(1) (V) (emphasis

added). Factor VI likewise includes an assessment of the person’s offer to sell a domain

name it never used or had “an intent to use” in conjunction with the sale of goods and

services. 15 U.S.C. § 1125 (B)(1) (VI) (emphasis added). Factor VII analyzes the

registration or acquisition of multiple domain names despite “know[ing]” they are

confusingly similar. 15 U.S.C. § 1125 (B)(1) (VIII) (emphasis added). The language in the

statute undermines Plaintiff’s position that willful blindness is all that it must show.

Accordingly, the Court considers the statutory factors evidencing intent.

2. Evidence of Good Faith

The first four statutory factors “militate against a finding of bad faith by providing

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some reasonable basis for why a defendant might have registered the domain name of

another mark holder.” Lucas Nursery and Landscaping, 359 F.3d at 809. Here, it is

undisputed that Defendants have no trademark or other intellectual property rights in the

wunderground.com domain name. The domain names registered by Defendants are not

consistent with Defendants’ names; nor is there any history of legitimate use of the domain

name in connection with offering Defendants’ services (see factors I-III). Moreover, the use

here is strictly commercial (see factor IV). 

 Nevertheless, Defendants’ witnesses have testified that they did not know about

Plaintiff before Plaintiff filed a UDRP action against NCS. This testimony, although

favorable to Defendants, fails to establish the absence of bad faith as a matter of law. A

trademark holder does not need an admission from the accused infringer to prevail; a

denial merely presents a credibility issue. Circumstantial evidence of an intent to profit

satisfies the statute. And in this case, Defendants have no evidence supporting a good

faith rationale for registering the contested domain names. Accordingly, the Court directs

its attention to the facts suggesting bad faith intent to profit. 

3. Evidence of Bad Faith

Although Plaintiffs offer some evidence that Defendants’ sites have an inquiry option

that they use to solicit the sale of their sites, the statute does not prohibit this conduct.

There is no evidence presented that Defendants offered to transfer or sell the disputed

sites to Plaintiff or its competitors. Because the websites contained a link that allowed

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web users to “inquire about this domain”, (see Doc. No. 189, Ex. GG), and Defendants

included a legal disclaimer on some of the inquiry forms, which reads, “The existence of

this form does not constitute an offer to sell this domain”, (see Doc. No. 189. Ex. HH),

Plaintiff conclude that the disclaimer is a ruse to avoid liability. Plaintiff is free to argue its

interpretation to the jury. 

The strongest evidence of bad faith presented to the Court at this juncture in the

proceedings is Defendants’ acquisition of multiple domain names which may be

duplicative of the marks of others. (See Factor 8). According to Weather Underground,

Defendants registered 288 variations of its trademark. In addition, Plaintiff maintains that

Defendants did not limit registration to Plaintiff’s mark, they registered variations of other

third-party trademarks, received threat letters for trademark infringement, and have been

involved in arbitrations and lawsuits on allegations of cybersquatting. The sheer number

of sites creates an inference the Defendants acted with a bad faith intent to profit.

Nevertheless, the number cannot be assessed in a vacuum. Other evidence plays into

the analysis.

4. Additional Considerations

In addition to the statutory factors, both parties rely on Defendants’

selection/exclusion system criteria, categorization training, and the optimization of ads

process as evidence supporting their respective positions. Plaintiff focuses on the

inadequacies; Defendants focus on the improvements. 

The evidence, even when viewed cumulatively, does not support an award of

summary judgment for either side. It merely demonstrate to the Court the existence of a

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genuine dispute as to the issue of bad faith intent. 

IV. CONCLUSION

For the reasons stated above, both motions are DENIED.

IT IS SO ORDERED.

s/Marianne O. Battani 

MARIANNE O. BATTANI

UNITED STATES DISTRICT JUDGE

Date: November 9, 2011

CERTIFICATE OF SERVICE

Copies of this Order were mailed and/or electronically filed to counsel of record on this

date.

s/Bernadette M. Thebolt

Case Manager

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