IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,

a Michigan corporation,

Case No. 2:09-cv-10756

Plaintiff, Hon. Marianne O. Battani

vs.

NAVIGATION CATALYST SYSTEMS, INC., 

a Delaware corporation; CONNEXUS CORP., 

a Delaware corporation; and FIRSTLOOK, INC.,

a Delaware corporation,

Defendant.

/

Enrico Schaefer (P43506) Nicholas J. Stasevich (P41896)

Brian A. Hall (P70865) Benjamin K. Steffans (P69712)

TRAVERSE LEGAL, PLC Bruce L. Sendek (P28095)

810 Cottageview Drive, Unit G-20 BUTZEL LONG, PC

Traverse City, MI 49686 150 West Jefferson, Suite 100

231-932-0411 Detroit, MI 48226

enrico.schaefer@traverselegal.com (313) 225-7000

brianhall@traverselegal.com stasevich@butzel.com

Lead Counsel for Plaintiff steffans@butzel.com

sendek@butzel.com

Local Counsel for Defendants

Anthony Patti (P43729) William A. Delgado (admitted pro hac vice)

HOOPER HATHAWAY, P.C. WILLENKEN WILSON LOH & DELGADO 

126 South Main Street LLP 

Ann Arbor, MI 48104 707 Wilshire Blvd., Ste. 3850

734-662-4426 Los Angeles, CA 90017

apatti@hooperhathaway.com 213-955-9240

Co-counsel for Plaintiff williamdelgado@willenken.com

Lead Counsel for Defendants

/

PLAINTIFF’S REPLY BRIEF IN SUPPORT OF EMERGENCY MOTION TO 

COMPEL PRODUCTION OF ASSET TRANSFER DOCUMENTATION 

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Defendants’ Response to Plaintiff’s Emergency Motion to Compel Production of Asset 

Transfer Documentation completely ignores the unique legal and factual context of this case. 

This is an ACPA claim. Unlike other statutes, the ACPA specifically invites a court to consider 

behavior which may not relate directly to the cybersquatter’s specific conduct vis-a-vis the 

plaintiff-victim, but rather to consider such things as a defendant’s “intentional failure to 

maintain accurate contact information” and its registration of “multiple domain names” --

which may or may not be the plaintiff’s own domain names -- and to analyze a defendant’s 

“pattern of such conduct.” 15 U.S.C. § 1125(d)(1)(B)(i)(VII) and (VIII). This is so because 

the ACPA permits statutory damages, with the goal of deterring or punishing particularly 

abhorrent conduct, such as that which occurred here. In order for the court to properly assess 

the appropriate statutory damages, and to understand the egregiousness of the conduct and 

exactly what it is that needs to be deterred or punished, a defendant’s overall behavior with 

respect to both the plaintiff-victim’s specific marks and the marks of others, and patterns of 

conduct relating to an entire domain portfolio (in this case containing hundreds of thousands at 

any given time and millions of domains over the course of time) may be considered in 

evaluating the cyber-pirate’s bad faith.

Moreover, the factors enumerated by Congress in the ACPA are not exclusive; a court 

may and should evaluate “‘the unique circumstances of the case, which do not fit neatly into 

the specific factors enumerated by Congress but may nevertheless be considered under the 

statute.’” Virtual Works, Inc. v Volkswagen of America, Inc., 238 F.3d 264, 268 (4th Cir. 2001) 

(quoting Sporty’s Farm, LLC v Sportsman’s Market, Inc., 202 F.3d 489, 499 (2nd Cir. 2000)). 

As the Second Circuit reasoned in Sporty’s Farm, supra:

The most important grounds for our holding that Sporty’s Farm acted 

with a bad faith intent, however, are the unique circumstances of this 

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case, which do not fit neatly into the specific factors enumerated by 

Congress but may nevertheless be considered under the statute. *** 

Several months later, and after this lawsuit was filed, Omega created 

another company in an unrelated business that received the name 

Sporty’s Farm so that it could (1) use the sportys.com domain name in 

some commercial fashion, (2) keep the name away from Sportsman’s, 

and (3) protect itself in the event that Sportsman’s brought an 

infringement claim alleging that a “likelihood of confusion” had been 

created by Omega’s version of cybersquatting. *** Given these facts 

and the district court’s grant of an equitable injunction under the FTDA, 

there is ample and overwhelming evidence that, as a matter of law, 

Sporty’s Farm’s acted with a “bad faith intent to profit” from the domain 

name sportys.com as those terms are used in ACPA.

202 F.3d at 499 (emphasis added). The Second Circuit’s reasoning should be instructive here. 

In evaluating bad faith, it is entirely appropriate for the Court to consider such things as 

Defendants’ actions to shift or hide domains in newly created (but related) business entities, 

even if this occurred after the lawsuit was filed. Consideration of Defendants’ post-lawsuit 

machinations with respect to its extraordinarily voluminous domain portfolio by the trier of fact 

is entirely appropriate. This is a especially true because the statute itself mentions the 

cybersquatter’s “registration or acquisition of multiple domain names” as a factor to be 

considered. 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). The statute has no temporal component with 

respect to this factor or with respect to the cybersquatter’s intentional failure to maintain 

accurate contact information.”1

Furthermore, Defendants’ blanket argument that all of its actions after 2009 are 

irrelevant in this lawsuit is not well taken. In making this argument, Defendants skillfully blur 

 1 Although factor VII does modify consideration of “a pattern of such conduct” with the words 

“prior conduct”, the ACPA does not prohibit consideration of ongoing patterns of conduct. On 

its face, the statute states that, “a court may consider factors such as, but not limited to” the 

eight factors listed. 15 U.S.C. § 1125(d)(1)(B)(i) (emphasis added). As the Second and Fourth 

Circuit recognized in the cases cited above, these bad faith factors are suggestive, not 

restrictive, and a court may consider all of the circumstances of a case in coming to its 

conclusion about bad faith, even subsequent shell games and asset transfers.

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the distinction between the act of typosquatting Plaintiff’s domains and the bad faith nature of 

Defendants’ activities. While Defendants may be correct in asserting that their more recent 

transfer and concealment of their domain portfolio may not be relevant to the question of 

whether they typosquatted in excess of 250 of Plaintiff’s domains between 2004 and 2009, this 

behavior is relevant to the bad faith factors of maintaining inaccurate contact information and 

the registration and acquisition of multiple domain names which Defendants “knows are 

identical or confusingly similar to marks of others ....” 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). It 

may also be relevant to the Court’s consideration of Defendants’ ongoing pattern of conduct for 

purposes of deterrence or punishment in assessing statutory damages. 

Most importantly, evidence of this behavior undermines Defendants’ repeated assertion 

in these proceedings that its mass typosquatting of famous and distinctive marks was somehow 

inadvertent, unintentional, and constituted mere instances of some marks “slipping through the 

cracks.” It also undermines Defendants’ claim that they solved this whole problem with their 

2008 “scrub,” which supposedly searched for and removed famous marks from their domain 

portfolio. Defendants’ subsequent and recent actions belie that contention. Rather than 

“scrubbing and removing” domains which obviously violated the intellectual property rights of 

numerous well-known companies, Defendants did just the opposite, hiding marks which ought 

to have been removed behind phantom owners and offshore, related companies. Contrary to 

their claim that they voluntarily gave up control of these offending marks by dumping them, 

they intentionally hid them behind proxy registrars, moved them to Vietnam, and transferred 

them for what appears to be dubious consideration to their former president.

Courts have long recognized that Defendants’ subsequent actions may be considered for 

a variety of purposes. Defendants actions in 2010 and 2011 with respect to the ongoing shell 

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game of “guess who really controls this massive portfolio” may certainly be considered by the 

trier of fact. If, as Defendants contend, they have “nothing to hide,” why are they hiding it?2

Even if analyzed under the subsequent remedial measure rule – which is a real stretch 

here, since Defendants themselves affirmatively assert the success of their corrective measures 

and the evidence indicates that not much was actually remediated -- the court “may admit ...

evidence for another purpose, such as impeachment or -- if disputed -- proving ownership, 

 

Defendants’ actions in the 2009-2011 period certainly appear to be inconsistent with their 

present contention that “we cleaned out the bad stuff in 2008 and since then have nothing to 

hide.” Were this a murder trial, evidence that the defendant was seen hiding, moving, burying 

or shipping the body overseas after the fact is certainly relevant, even if it’s only circumstantial. 

Here, we have analogous evidence, albeit in a civil context, and the ACPA invites the trier of 

fact to consider just such behavior. Evidence that tends to corroborate charges or undermines 

the defense is relevant, even if it would neither prove the charges nor necessarily be 

inconsistent with the defense. New Jersey v T.L.O., 469 U.S. 325, 345 (1985). The 

transactional documents at issue here may well support an inference of bad faith by the 

Defendants, not just in 2011, but going back to 2008, when they supposedly changed their ways 

and cleaned out their portfolio, yet still felt the need to hide ownership. The “basic test of 

relevance” is, “‘[D]oes the evidence offered render the desired inference more probable than it 

would be without the evidence.’” North Am. Phillips Co. v Church, 375 F.2d 93, 96 (2nd Cir. 

1967) (internal citations omitted). Here the requested documents may well render the inference 

of bad faith more probable than it would otherwise be. 

 2 Actually, we know the answer to this rhetorical question: to hide ownership and to keep the 

domains from being seized by an American court. (Jacoby Dep., pp. 211-212). The Court is 

also reminded that the full extent of how many of Plaintiff’s domains had been typosquatted by 

Defendants was kept under wraps until 20 months into this litigation.

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control, or the feasibility of precautionary measures.” FRE 407. Likewise here, evidence of 

Defendants’ furtive maneuvers with respect to its enormous portfolio -- demonstrably including 

numerous marks, such as the various misspellings of Ryannair -- are relevant to: (1)

impeachment3 (since they contradict Defendants’ claim of having scrubbed its domains and its 

claim of operating completely above board); (2) proving ownership and control, and, (3) the 

effectiveness of its supposed “precautionary measures.” All of this evidence, including the 

August 2011 transaction between Defendants and Seth Jacoby, are consistent with an overall 

scheme of bad faith cybersquatting, under the enumerated factors and under the general 

circumstances of this case.4

For all of these reasons, this Court is respectfully asked to recognize the value or 

potential value of the documents requested and order their immediate production. 

 

 3 By way of example, the transactional documents in question may well contradict Mr. Jacoby’s 

recent testimony, and may have impeachment value with respect to future witnesses who 

appear live in court.

4 Defendants also suggest that Plaintiff relied upon a “truncated version” of Judge Morgan’s 

discovery order, but the language of that order, even as quoted in Defendants’ response brief, 

fully supports Plaintiff’s position, so long as one overlooks the selective highlighting done in 

Defendants’ quotation. The order is written conjunctively: the first part calls for e-mails 

“shown on the bottom or all parked pages”, as emphasized by Defendants; the second part after 

the word “and” more generally calls for the production of e-mails “for all domains registered 

by NCS during the period of January 1, 2008 through January 1, 2009.” Thus, if there are emails relating to the transfer of the 2008-2009 portfolio, or any portion thereof, to a proxy 

service, Vietnam, Seth Jacoby or anyone else, they should be produced.

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Respectfully submitted this 15th day of May, 2012.

/s/Anthony P. Patti__________ 

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Co-Counsel for Plaintiff 

Enrico Schaefer (P43506)

Brian A. Hall (P70865)

TRAVERSE LEGAL, PLC

810 Cottageview Drive, Unit G-20

Traverse City, MI 49686

231-932-0411

enrico.schaefer@traverselegal.com

Lead Counsel for Plaintiff 

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CERTIFICATE OF SERVICE

I hereby certify that on the 15th day of May, 2012, I electronically filed the foregoing 

paper with the Court using the ECF system which will send notification of such filing to the 

following:

Enrico Schaefer (P43506) Nicholas J. Stasevich (P41896)

Brian A. Hall (P70865) Benjamin K. Steffans (P69712)

TRAVERSE LEGAL, PLC Bruce L. Sendek (P28095)

810 Cottageview Drive, Unit G-20 BUTZEL LONG, PC

Traverse City, MI 49686 150 West Jefferson, Suite 100

231-932-0411 Detroit, MI 48226

enrico.schaefer@traverselegal.com (313) 225-7000

brianhall@traverselegal.com stasevich@butzel.com

Lead Counsel for Plaintiff steffans@butzel.com

sendek@butzel.com

Local Counsel for Defendants

Anthony Patti (P43729) William A. Delgado (admitted pro hac vice)

HOOPER HATHAWAY, P.C. WILLENKEN WILSON LOH & DELGADO 

126 South Main Street LLP 

Ann Arbor, MI 48104 707 Wilshire Blvd., Ste. 3850

734-662-4426 Los Angeles, CA 90017

apatti@hooperhathaway.com 213-955-9240

Co-counsel for Plaintiff williamdelgado@willenken.com

Lead Counsel for Defendants

/s/Anthony P. Patti__________ 

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Co-Counsel for Plaintiff

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