121061.1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,

a Michigan corporation,

Plaintiff, 

Case No. 2:09-CV-10756

vs. Hon. Marianne O. Battani

NAVIGATION CATALYST SYSTEMS, INC.,

 a Delaware corporation; CONNEXUS CORP., 

 a Delaware corporation; FIRSTLOOK, INC.,

 a Delaware corporation; and EPIC MEDIA

GROUP, INC., a Delaware corporation,

Defendants.

______________________________________________________________________

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

brianhall@traverselegal.com

Lead Attorneys for Plaintiff

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Attorneys for Plaintiff 

William A. Delgado 

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)

Benjamin K. Steffans (P69712)

BUTZEL LONG, P.C.

150 West Jefferson, Suite 100

Detroit, MI 48226

(313) 225-7000

stasevich@butzel.com

steffans@butzel.com

Local Counsel for Defendants

______________________________________________________________________

CONNEXUS, FIRSTLOOK, AND NCS’S EVIDENTIARY OBJECTIONS AND 

RESPONSES TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION AND 

STATEMENT OF FACTS IN OPPOSITION THERETO

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TO THIS HONORABLE COURT, PLAINTIFF, AND ITS ATTORNEYS OF RECORD:

Connexus, Inc., Firstlook, Inc., and Navigation Catalyst Systems, Inc. (collectively the 

―Connexus Defendants‖) hereby submit their evidentiary objections and responses to Plaintiff‘s 

Motion for Summary Adjudication on its Anti-Cybersquatting Consumer Protection Act 

(―ACPA‖) Claim (―Motion,‖ Docket No. 189). 

This document is divided into two parts. The first part is a paragraph-by-paragraph

Response to Plaintiff‘s Motion containing the Connexus Defendants‘ evidentiary objections and 

factual responses. As a result, the numbered paragraphs in the first part of this document 

correspond to the numbered paragraphs in Plaintiff‘s Motion. The second part of this document 

is a Statement of Facts submitted in opposition to Plaintiff‘s Motion. Immediately following the 

second part of this document is the Connexus Defendants‘ Memorandum of Points and 

Authorities in Opposition to Plaintiff‘s Motion.

PART ONE: EVIDENTIARY OBJECTIONS AND RESPONSES TO MOTION

As a general matter, the Connexus Defendants object to Plaintiff‘s wholesale attempt to 

introduce inadmissible evidence (e.g., documents that have not been authenticated, statements 

that are not contained in a sworn affidavit, documents that contain hearsay without any 

exception, statements that lack foundation, and improper opinion testimony) in connection with 

its Motion. Turner v. Scott, 119 F.3d 425, 430 (6th Cir. 1997) (noting that ―summary judgment 

rulings must be based on admissible evidence‖); Peake v. Martinrea Fabco Hot Stamping, Inc., 

2011 WL 1157864 (E.D. Mich. Feb. 28, 2011) (―[I]n resolving a Rule 56 motion, the Court 

should not consider unsworn or uncertified documents, unsworn statements, inadmissible expert 

testimony, or hearsay evidence.‖) (citations omitted), report and recommendation adopted by

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2011 WL 1118572 (E.D. Mich. Mar. 28, 2011); Thomas v. City of Detroit, 2007 WL 674593 at 

*5 (E.D. Mich. Feb. 28, 2007) (Battani, J.) (―Moreover, in this Circuit, it is well settled that only 

admissible evidence may be considered by the trial court in ruling on a motion for summary 

judgment.‖) (internal quotations and citations omitted).

Specifically, the Connexus Defendants object and respond to Plaintiff‘s Motion as 

follows:

1. The Connexus Defendants object to this statement because it is not contained 

within a sworn affidavit or declaration of someone with personal knowledge. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602, 603.

2. The Connexus Defendants object to this statement because it is not contained 

within a sworn affidavit or declaration of someone with personal knowledge. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602, 603.

3. The Connexus Defendants object to this paragraph because it is not contained 

within a sworn affidavit or declaration of someone with personal knowledge. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602, 603. Further, Plaintiff‘s contention that its marks are ―famous‖ is an 

inadmissible opinion/legal conclusion for which there is no foundation by someone with personal 

knowledge. Fed. R. Evid. 701, 602. The Connexus Defendants further object to the statements 

that ―Plaintiff‘s websites have received worldwide notoriety‖ and ―Plaintiff‘s Wunder Marks are 

 ̳widely recognized by the general consuming public of the United States as a source of the goods 

or services of the mark‘s owner‘‖ as lacking foundation and inadmissible legal opinions. Fed. R. 

Evid. 701, 602.

a. The Connexus Defendants object to the newspaper articles in Exhibit A as 

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hearsay. Fed. R. Evid. 801, 802; Park West Galleries, Inc., v. Global Fine 

Art Registry, LLC, 2010 WL 987772 *3 (E.D. Mich. Mar. 12, 2010); 

Turner v. City of Taylor, 412 F.3d 629, 652 (6th Cir. 2005) (finding 

newspaper article to be inadmissible hearsay); Larez v. City of Los 

Angeles, 946 F.2d 630 (9th Cir. 1991) (―[N]ewspaper articles have been 

held inadmissible hearsay as to their content.‖).

b. The Connexus Defendants object to Exhibit B (printout from third party 

website, Quantcast) because it lacks authentication and no foundation is 

laid as to the contents (e.g., not contained in a sworn statement indicating 

that the document is what it purports to be by someone with personal 

knowledge). Fed. R. Evid. 901; Fed. R. Evid. 602, 603; In re 

HomeStore.com, Inc., 347 F. Supp. 2d 769, 782-83 (C.D. Cal. 2004) (web 

page press and earnings releases were not properly authenticated and, 

therefore, inadmissible); see also St. Luke’s Cataract and Laser Inst. v. 

Sanderson, 2006 WL 1320242 *2 (M.D. Fla. May 12, 2006) (to 

authenticate web page printouts, party must submit ―statement or 

affidavit‖ from someone ―with personal knowledge of the contents of 

the...website.‖); Toytrackerz LLC v. Koehler, 2009 WL 2591329 *6 (D. 

Kan. 2009) (same).

4. Plaintiff‘s statement is untrue. Plaintiff commenced using the marks THE

WEATHER UNDERGROUND and WUNDERGROUND.COM in 1995 (bold emphasis added). 

See Declaration of William A. Delgado, dated August 15, 2011 at ¶¶ 2-3, Exs. K and L.

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5. The Connexus Defendants object to this paragraph because (i) it is not within a 

sworn affidavit of someone having personal knowledge (Fed. R. Civ. P. 56(c)(2), Fed. R. Evid. 

602, 603) and (ii) it appears to be based on the contents of a third party website, 

<quantcast.com>, which would be unauthenticated hearsay (Fed. R. Evid. 901, 801, 802); see

also Response to Paragraph 3(b).

6. The Connexus Defendants object to this paragraph because it is not within a 

sworn affidavit of someone having personal knowledge. Fed. R. Civ. P. 56(c)(2); Fed. R. Evid. 

602, 603. Instead, Plaintiff merely cites to an unverified First Amended Complaint which cannot 

be used for purposes of its motion. Jones v. Barnett, 2007 WL 5227005 at *2 (E.D. Mich. Feb. 

14, 2007) (―It is true that Plaintiff‘s complaint is not verified and, therefore, may not be used at 

the summary judgment stage.‖).

7. The Connexus Defendants object to the introduction of the prior National 

Arbitration Forum (―NAF‖) UDRP between Plaintiff and Navigation Catalyst Systems, Inc. as 

irrelevant (Fed. R. Evid. 402) and inadmissible hearsay (Fed. R. Evid. 801, 802). Eurotech, Inc. 

v. Cosmos European Travels Aktieng-Esellschaft, 213 F. Supp. 2d 612, 618 n.10 (E.D. Va. 2002) 

(―Worth noting here is that the result reached in the WIPO proceeding is neither admissible nor 

entitled to any deference, with respect to the merits issues presented in this suit.‖); Dynamis, Inc. 

v. Dynamis.com, 2001 WL 1659570 (E.D. Va. Apr. 27, 2011) (―[I]t is well settled that  ̳any 

decision made by a panel under the UDRP is no more than an agreed-upon administration that is 

not given any deference under the ACPA.‘ Indeed, generally speaking, the UDRP panel‘s 

conclusion is inadmissible hearsay that cannot be considered in resolving this case.‖).

8. See Response to Paragraph 7.

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9. The Connexus Defendants object to this paragraph and Exhibit G because (i) they 

lack authentication (Fed. R. Evid. 901) and (ii) they are not contained within the sworn affidavit 

of someone having personal knowledge (Fed. R. Civ. P. 56(c)(2), Fed. R. Evid. 602, 603).

10. The Connexus Defendants object to the following statements: (i) that ―Plaintiff‘s 

[sic] are not the only trademark holder targeted by Defendant...‖ because it is simply 

argumentative and lacks foundation. Fed. R. Evid. 602; (ii) the statement ―many high traffic web 

sites and registered trademarks‖ lacks foundation (Fed. R. Evid. 602) and relies on hearsay (Fed. 

R. Evid. 801, 802).

a. The Connexus Defendants object to the statement ―[a] search of the top 60 

Michigan companies‖ as lacking authentication (i.e., who conducted the 

search, how, when, etc.) (Fed. R. Evid. 901) and lacking foundation (i.e., 

how is ―top 60‖ defined) (Fed. R. Evid. 602). The Connexus Defendants

further object to the sample list in Exhibit H as unauthenticated and 

lacking foundation. Id.

b. This paragraph is based on the contents of a third party website, 

<alexa.com>. As a result, it is inadmissible because the information is not 

authenticated, lacks foundation, and constitutes hearsay. See Response to 

Paragraph 3(b). Also, Plaintiff‘s reference to ―famous trademarks‖ is not 

authenticated, lacks foundation, and constitutes an inadmissible opinion

(i.e., there is no evidence that any of those words are actually trademarks 

or that they have found to be ―famous‖ under the Lanham Act, which is a 

very high standard). Fed. R. Evid. 901, 602, and 701.

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c. The Connexus Defendants object to this paragraph as inadmissible as it 

simply relies on the unverified First Amended Complaint. Jones, 2007 

WL 5227005 at *2 (cannot rely on allegations in an unverified complaint 

for purposes of motion for summary judgment).

d. The Connexus Defendants object to the first sentence in this paragraph as 

inadmissible because it contains no citation to admissible evidence. Fed. 

R. Evid. 602. The Connexus Defendants object to Exhibit H as lacking 

authentication and foundation. Fed. R. Evid. 901, 602. In response, the 

Connexus Defendants note that the document in Exhibit L is actually 

called ―Connexus Document Retention Policy‖ and contains a provision 

that ―[i]n the event any legal action or government investigation is or is 

likely to be initiated, the General Counsel will order all destruction 

activities to be suspended immediately.‖ Lastly, Plaintiff‘s statement is 

untrue. In this matter, NCS produced nearly 20,000 pages of third party 

communications, UDRP complaints, and cease-and-desist letters. Delgado 

Decl. at ¶ 4.

e. The Connexus Defendants object to this paragraph and Exhibit M on the 

basis that Christopher Schwerzler and his opinions in this matter do not 

satisfy Fed. R. Evid. 702. The Connexus Defendants have concurrently 

brought a separate motion pursuant to Daubert to strike his report and 

testimony and prevent the use of same at trial.

f. See Response to Paragraph 10(e); also, this paragraph relies on 

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information from Quantcast, a third party website, and is, therefore, 

inadmissible because it lacks authentication and foundation and is hearsay. 

See Paragraph 3(b).

g. The Connexus Defendants objects to the first sentence as purely 

argumentative and not a statement of fact with a citation to admissible 

evidence. Fed. R. Evid. 602. The Connexus Defendants object to the 

second sentence as inadmissible pursuant to Daubert. See Response to 

Paragraph 10(e).

11. The Connexus Defendants object to the first sentence as argumentative and not a 

statement of fact with a citation to admissible evidence. Fed. R. Evid. 602. The Connexus 

Defendants object to the ―Timeline‖ as lacking authentication (Fed. R. Evid. 901) and foundation 

(Fed. R. Evid. 602).

12. The Connexus Defendants object to the first sentence as argumentative and not a 

statement of fact with a citation to admissible evidence. Fed. R. Evid. 602. The Connexus 

Defendants object to the introduction into evidence of the cease-and-desist letters pursuant to 

Fed. R. Evid. 801, 802 (hearsay); see also Cook v Caruso, 2010 WL 5887814 at *3 (E.D. Mich. 

Dec. 20, 2010) (―The Court cannot consider either the letters or  ̳declarations.‘  ̳[A]n 

unnotarized statement...constitutes nothing more than unsworn hearsay that may not be 

considered on a motion for summary judgment.‖) (citation omitted), report and recommendation 

accepted by 2011 WL 768076 (E.D. Mich. Feb. 28, 2011) (―The Court agrees with the 

Magistrate Judge that the unnotarized declarations and letters cannot be considered as evidence 

on a motion for summary judgment.‖).

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13. No evidentiary objection.

14. No evidentiary objection.

15. The Connexus Defendants object to the characterization that ―the Court found 

personal jurisdiction...‖ The motion at issue was a Motion to Dismiss for Lack of Personal 

Jurisdiction. As such, the Court merely found that, viewed in the light most favorable to the 

Plaintiff because no evidentiary hearing had taken place, Plaintiff had alleged enough facts to 

support assertion of personal jurisdiction at that point in time.

16. The Connexus Defendants object to the characterization of NCS as a ―shell‖ 

corporation on the basis that it is simply argumentative and not a statement of fact with a citation 

to admissible evidence. Fed. R. Evid. 602.

17. The Connexus Defendants object to this statement as lacking foundation. Fed. R. 

Evid. 602. Plaintiff cites to Page 30 of the Deposition of Seth Jacoby (which is not included in 

Exhibit J). In fact, page 30 of the Deposition contains no testimony to support this alleged fact. 

See Page 30 of Jacoby Deposition, attached as Exhibit M of Delgado Decl.

18. No evidentiary objection.

19. The Connexus Defendants object to this paragraph as inadmissible as it does not 

contain any citation to admissible evidence. Fed. R. Civ. P. 56(c)(2); Fed. R. Evid. 602.

20. No evidentiary objection.

21. The Connexus Defendants object to this paragraph and Exhibits Q and R as 

lacking authentication (Fed. R. Evid. 901) and foundation (Fed. R. Evid. 602).

22. The Connexus Defendants object to this paragraph as inadmissible as it does not 

contain any citation to admissible evidence. Fed. R. Civ. P. 56(c)(2); Fed. R. Evid. 602.

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23. The Connexus Defendants object to this paragraph as inadmissible as it does not 

contain any citation to admissible evidence. Fed. R. Civ. P. 56(c)(2); Fed. R. Evid. 602.

a. The Connexus Defendants object to the first sentence as inadmissible as it 

does not contain any citation to admissible evidence. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602.

b. No evidentiary objection.

c. Seth Jacoby is not employed by Epic Media for the reasons set forth in 

The Epic Media Group‘s Motion for Summary Judgment (Docket No. 

178) (indicating that Connexus employees continued to be paid through 

Connexus and its Federal Employer Identification Number).

d. As indicated in the Jacoby Deposition Transcript, Mr. Pirrone was only 

―involved‖ to the extent a particular activity required legal advice. Jacoby 

Depo. at 34:19-35:6.

e. No evidentiary objection.

f. No evidentiary objection.

24. The Connexus Defendants object to this paragraph as irrelevant (Fed. R. Evid. 

401, 402) and lacking authentication (Fed. R. Evid. 901).

25. The Connexus Defendants object to the first sentence in this paragraph as simply 

argumentative and not a statement of fact with a citation to admissible evidence. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602.

a. No evidentiary objection.

b. No evidentiary objection.

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c. No evidentiary objection.

d. No evidentiary objection.

e. No evidentiary objection.

26. The Connexus Defendants object to this paragraph in that the Court‘s Order 

permitting Joinder did not find ―personal jurisdiction over Connexus and Firstlook, Inc.‖ In fact, 

subsequent to the Order permitting Joinder, Connexus and Firstlook brought a Motion to Dismiss 

for Lack of Personal Jurisdiction.

27. No evidentiary objection.

28. Defendants have now answered the First Amended Complaint rendering this 

paragraph irrelevant. In any event, the named Defendants fully participated in discovery, and no 

default was ever entered against any named defendant. Plaintiff‘s Motion for Summary 

Judgment must be supported by admissible evidence (Fed. R. Civ. P. 56(c)(1)) not the entry of 

default.

29. The Connexus Defendants object as follows:

a. The Connexus Defendants object to this paragraph as inadmissible as it 

does not contain any citation to admissible evidence. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602.

b. The Connexus Defendants object to this paragraph as inadmissible as it 

does not contain any citation to admissible evidence. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602. 

c. The Connexus Defendants object to this paragraph as inadmissible as it 

does not contain any citation to admissible evidence. Fed. R. Civ. P. 

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56(c)(2); Fed. R. Evid. 602.

30. The Connexus Defendants object to the first sentence in this paragraph as simply 

argumentative and not a statement of fact with a citation to admissible evidence. Fed. R. Civ. P. 

56(c)(2); Fed. R. Evid. 602.

31. No evidentiary objection.

32. No evidentiary objection.

33. The Connexus Defendants object to this paragraph as lacking foundation because 

the citation to the Jacoby Deposition transcript does not support Plaintiff‘s statement. Fed. R. 

Evid. 602.

34. The Connexus Defendants object to this paragraph and the introduction of the 

lawsuit Verizon California, Inc. v. Navigation Catalyst Systems as irrelevant. Fed. R. Evid. 401, 

402. That case involved different parties, different trademarks, and different evidence.

35. See Response to Paragraph 34.

36. See Response to Paragraph 34. Also, the paragraph lacks foundation as the 

citations to the Jacoby Deposition Transcript do not support the purported statement of fact. Fed. 

R. Evid. 602.

37. No evidentiary objection.

38. No evidentiary objection but one clarification: this document refers to the 2008 

scrub of the portfolio not the daily registration process. 

39. No evidentiary objection. For its response, the Connexus Defendants note that, 

when asked whether the trademark matching system was literal, Jacoby actually testified ―I 

believe so. I don‘t exactly remember what that—I don‘t know. I can‘t recall...‖ Jacoby Depo. 

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at 100:9-18. As set forth in the Statement of Facts and the concurrently filed Declaration of 

Mavi Llamas, the Connexus Defendants actually did have a fuzzy matching system in place as of 

Fall 2004, making this statement disputed.

40. No evidentiary objection.

41. No evidentiary objection. For its response, the Connexus Defendants note that, in 

reality, Jacoby testified that the registration process, in 2005, probably did not catch a 

typographical variation. Jacoby Depo at. 130:21-23. However, as set forth in the Statement of 

Facts and the concurrently filed Declaration of Mavi Llamas, the Connexus Defendants actually 

did have a fuzzy matching system in place as of Fall 2004, making this statement disputed.

42. No evidentiary objection. For its response, the Connexus Defendants note that, as 

set forth in the Statement of Facts and the concurrently filed Declaration of Mavi Llamas, the 

Connexus Defendants actually did have a fuzzy matching system in place as of Fall 2004, 

making this statement disputed.

43. No evidentiary objection. For its response, the Connexus Defendants note that it 

is unclear what ―formal training‖ Plaintiff is referring to (i.e., formal training in what?) as is its 

reference to ―experience with regards to trademark issues or trademark law.‖

44. The Connexus Defendants object to this statement as purely argumentative and 

not a statement of fact supported by a citation to admissible evidence (e.g., when Jacoby is asked 

―So the test is whether or not your two or so operators would have actually personally heard of 

the website?‖, Jacoby responds ―That‘s part of the test, yes.‖) Jacoby Depo. Tr. 133:24-135:7.

45. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) since the citation to the Jacoby transcript does not support the statement.

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46. The Connexus Defendants object to this paragraph as argumentative and not a 

statement of facts (e.g., what constitutes ―real depth of understanding of trademark issues‖). 

Fed. R. Evid. 401, 402.

47. No evidentiary objection. In response, the Connexus Defendants note that 

Plaintiff admits ―there is inconsistency in the testimony amongst Defendants‘ employees.‖ As a 

result, given the inconsistency, this statement cannot be an undisputed statement of fact that 

supports a motion for summary judgment.

48. The Connexus Defendants object to this paragraph as inadmissible as it does not 

contain any citation to admissible evidence. Fed. R. Civ. P. 56(c)(2); Fed. R. Evid. 602.

49. No evidentiary objection.

50. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) as the citation to the Berryhill Deposition Transcript does not support Plaintiff‘s 

statement.

51. No evidentiary objection.

52. No evidentiary objection. In response, the Connexus Defendants note that Mr. 

Berryhill did not ―confirm‖ anything. He merely acknowledged that he had once made that 

statement.

53. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402. Mr. Berryhill was testifying with respect to a registrant who ―has [publicly] stated an 

intention to register these domain names because they are – because he states that they are 

misspells of established sites, presumably Google and Yahoo.‖ Berryhill Depo. at 243:13-19. 

There is no evidence (or even argument) here that the Connexus Defendants intentionally 

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registered any domain name because they were misspellings of Plaintiff‘s marks. 

54. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) because the cite to the Jacoby Deposition Transcript does not support Plaintiff‘s 

statement. In actuality, Jacoby testifies that ―in hindsight, I wish I could have, you know, done a 

lot of things in life but, you know, it‘s not necessarily – I mean—.‖ Jacoby Depo. at 185:24-

186:2.

55. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) insofar as it pertains to <qwunderground.com>. It is true that Firstlook attempts to 

optimize some domain names by placing keywords on them (see Jacoby Depo. Tr. 136-145). 

And, it is also true that Jacoby testified as to how Firstlook would hypothetically optimize 

<qwunderground.com>. See Jacoby Depo. Tr. at 206-07. However, Jacoby did not testify that 

<qwunderground.com> was actually optimized or that ―Defendants added the  ̳weather‘ related 

key words after determining that people going to the page were most likely looking for weather.‖ 

In fact, the screenshot of <qwunderground.com> does not show optimization. See Connexus 

Statement of Fact No. 45, infra (optimized webpage would have three tabs at the top called ―Top 

Searches‖ which <qwunderground.com> does not have). Thus, this statement is disputed.

56. No evidentiary objection.

57. The Connexus Defendants object to the first sentence in this paragraph as lacking 

foundation (Fed. R. Evid. 602) as the Rhee Transcript does not support Plaintiff‘s statement. 

The Connexus Defendants object to the second sentence in this paragraph and Exhibit CC as 

lacking authentication (Fed. R. Evid. 901) and lacking foundation (Fed. R. Evid. 602). The 

Connexus Defendants object to the last sentence in this paragraph and Exhibit EE as lacking 

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authentication (Fed. R. Evid. 901) and lacking foundation (Fed. R. Evid. 602). Lastly, in 

response, the Connexus Defendants note that the screenshot for <ranunderground.com> (which, 

in any event, is not confusing similarly to Plaintiff‘s mark, WUNDERGROUND.com) does not 

show optimization because it does not contain the ―Top Searches‖ tabs at the top. See, Response 

54, supra, and Statement of Fact No. 45, infra.

58. The Connexus Defendants object to the first sentence in this paragraph as lacking 

foundation (Fed. R. Evid. 602) as the Jacoby Transcript does not support Plaintiff‘s statement. 

The Connexus Defendants further note that because <qwunderground.com> was not optimized 

(See Response No. 55, supra) the Connexus Defendants did not ―design ads to compete directly 

with that website...‖ As such, this statement is disputed.

59. The Connexus Defendants object to the first sentence in this paragraph as lacking 

foundation. Fed. R. Evid. 602. The CAT Training document was produced by Firstlook as a 

document it had in its possession, custody, and/or control, but the Jacoby Deposition Transcript 

does not establish who generated it. On that point, Jacoby merely testified he ―believed‖ it was

Mavi Llamas. Jacoby Depo. at 248:5-6.

60. The Connexus Defendants objects to this paragraph as lacking foundation. Fed. 

R. Civ. P. 602. The citation to the Stevenson Deposition Transcript does not support Plaintiff‘s 

statement. In addition, the CAT Training document does not instruct people to categorize 

websites after finding the ―real website‖ as Plaintiff claims. See Exhibit FF. Lastly, even if it 

did say that, there is no foundation for Plaintiff‘s claim that these ―real websites‖ ―will often be 

trademark protected‖ so the statement is inadmissible pursuant to Fed. R. Evid. 602. 

61. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

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Evid. 602) as the Jacoby Transcript does not support Plaintiff‘s statement. 

62. The Connexus Defendants object to this paragraph in its entirety as irrelevant 

since it refers to the sale of domain names other than the ones in this lawsuit. Fed. R. Evid. 401, 

402. Further, the Connexus Defendants object to the first sentence in this paragraph as 

argumentative and inadmissible as it contains no citation to admissible evidence. Fed. R. Evid. 

602. The Connexus Defendants object to the fourth sentence in this paragraph as argumentative 

and inadmissible as it contains no citation to admissible evidence. Fed. R. Evid. 602. Lastly, the 

Connexus Defendants object to Exhibit II as irrelevant (Fed. R. Evid. 401, 402) as it simply 

refers to the sale of a domain name containing two generic words ―Young‖ and ―Chris.‖

63. The Connexus Defendants object to this paragraph in its entirety as irrelevant 

since it refers to the sale of domain names other than the ones in this lawsuit. Fed. R. Evid. 401, 

402. 

64. The Connexus Defendants object to this paragraph as calling for speculation. 

Fed. R. Evid. 602. When asked whether Defendants‘ review would have revealed the 

WUNDERGROUND trademark, Counsel for Defendants interposed an objection that the 

question called for speculation. Jacoby Depo. Tr. at 148:4.

65. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) as the Jacoby Transcript does not support Plaintiff‘s statement that ―Defendants were 

under constant threat of trademark infringement and cybersquatting‖ or the statement that the 

spreadsheets were ―destroyed‖ (i.e., as opposed to, simply, not retained). In response, the 

Connexus Defendants note that there is no overarching duty to preserve every single document 

that is generated in the course of business as Plaintiff suggests. Many companies are under 

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―constant threat of litigation‖ and many companies get sued every single day, and, yet, no duty to 

retain every single business document is imposed on them. In any event, Defendants did

produce some spreadsheets from 2004-2005 that they were able to retrieve from an out-ofcommission laptop in the possession of Mavi Llamas. Delgado Decl. at ¶ 6.

66. The Connexus Defendants object to this paragraph as lacking foundation since no 

definition for ―Domain Tasting Period‖ is provided. Fed. R. Evid. 602.

67. The Connexus Defendants object to this paragraph as lacking foundation since no 

definition for ―Domain Tasting Period‖ is provided. Fed. R. Evid. 602.

68. No evidentiary objection. 

69. No evidentiary objection.

70. The Connexus Defendants object to this paragraph as pure argument that is 

irrelevant. Fed. R. Evid. 401, 402. Whether or not Jacoby (a New York resident) has heard of 

the Detroit Red Wings is neither relevant nor difficult to believe. 

71. The Connexus Defendants object to this paragraph and Exhibit R as lacking 

authentication (Fed. R. Evid. 901) and lacking foundation (Fed. R. Evid. 602).

72. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) because the Berryhill Deposition Transcript does not support Plaintiff‘s statement. 

Mr. Berryhill did not ―agree‖ that willful blindness can rise to the level of bad faith. He actually 

testified that ―there‘s always a question of, well, to what degree does some kind of willful 

blindness rise to the level of – of bad faith.‖ Berryhill Depo. 164:5-13. The answer to that 

question may very well be that there is no such degree.

73. The Connexus Defendants object to the sentence that commences ―DNS error 

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data is fishing at  ̳dolphin depth‘...‖ as purely argumentative and not an admissible statement of 

fact having proper foundation. Fed. R. Evid. 602.

74. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) because the Berryhill Deposition Transcript does not support Plaintiff‘s statement. 

75. No evidentiary objection.

76. No evidentiary objection. In response, the Connexus Defendants note that Mr. 

Berryhill testified regarding the concept of ―constructive notice‖ vis-à-vis a traditional trademark 

infringement claim but that one did not have ―constructive notice‖ for purposes of an ACPA 

claim. Berryhill Depo. at 359:2-7 (―What we‘re talking about under the ACPA is specific bad 

faith intent... That‘s not a trademark infringement action for which purpose, yeah, we do have a 

–you know, you do have constructive notice.‖).

77. The Connexus Defendants object to this paragraph as lacking foundation (Fed. R. 

Evid. 602) because the Berryhill Deposition Transcript does not support Plaintiff‘s statement. 

Moreover, Plaintiff‘s statement that these alleged examples are ―almost identical to the facts in 

this case and support a finding of bad faith cybersquatting‖ is purely argumentative and not a 

statement of fact with a citation to admissible evidence. Fed. R. Evid. 602. Lastly, Exhibit LL 

(third party website printouts) constitutes hearsay without an objection. Fed. R. Evid. 801, 802. 

78. The Connexus Defendants object to this paragraph and Exhibit MM as hearsay 

without an exception. Fed. R. Evid. 801, 802.

79. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402. It does not matter whether or not Berryhill knows about the actions and motives of 

other domain name registrants. 

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80. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402. It does not matter whether or not Berryhill knows about the actions and motives of 

other domain name registrants.

81. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402. It does not matter why other people register domain names as that does not have 

anything to do with the intent of the Connexus Defendants.

82. No evidentiary objection. In response, the Connexus Defendants note that 

Berryhill actually testified that ―Typographic similarity is more important, actually, because you 

know, you don‘t really navigate audibly.‖ Berryhill Depo. Tr. 336:4-6.

83. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402. This case does not involve domain names alleged to violate the MICROSOFT 

trademark which is a household name.

84. The Connexus Defendants object to this paragraph as irrelevant. Fed. R. Evid. 

401, 402.

85. The Connexus Defendants object to this paragraph as irrelevant (Fed. R. Evid. 

401, 402), lacking foundation (Fed. R. Evid. 602) and argumentative, not a statement of fact.

86. No evidentiary objection.

87. The Connexus Defendants object to this paragraph as lacking foundation since it 

contains no citation to admissible evidence. Fed. R. Evid. 602.

88. The Connexus Defendants object to this paragraph as lacking foundation since it 

contains no citation to admissible evidence. Fed. R. Evid. 602. While Exhibit NN contains the 

WHOIS entry printout as of September 3, 2007, there is no admissible evidence that: (i) anything 

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changed after November 17, 2009 or (ii) ―[a]fter Plaintiff filed suit against Defendants, 

Defendants attempted to conceal numerous additional typosquatted Domain Names...‖

89. No evidentiary objection.

PART TWO: THE CONNEXUS DEFENDANTS’ STATEMENT OF FACTS IN 

OPPOSITION TO PLAINTIFF’S MSA

For its opposition, the Connexus Defendants submit the following Statement of Facts:

1. The ACPA was enacted in 1999 to address issues that had arisen during the 

1990s. The practice of domain name tasting, which came later in 2004, did not inform the 

drafting of the statute. Deposition of John Berryhill, taken January 11, 2011 (―Berryhill Depo.‖)

at 134:2-135:13 (attached as Exhibit N to Delgado Decl.).

2. The factors listed in the ACPA were developed in the context of the 1990s when 

the concern was the intentional registration of domain names and subsequent ―ransoming‖ of the 

domain names to a brand holder, such as Microsoft. Berryhill Depo. at 137:15-138:23; 

Declaration of John Berryhill, dated August 3, 2011 (Berryhill Decl.), at ¶¶ 4-5.

3. Distinct from the practice of cybersquatting, other persons recognized that domain 

names could hold inherent value, apart from their association with trade or service marks. When 

domain name registration became generally available on a commercial basis, such persons 

sought to speculate in their value by registering and holding domain names for sale. See, e.g. 

Cello Holdings v. Lawrence-Dahl Cos, 89 F. Supp. 2d 464 (S.D.N.Y. 2000); 2002 U.S. Dist. 

LEXIS 1029 (S.D.N.Y. Jan. 24, 2002), vacated on other grounds, 347 F.3d 370 (2d Cir. 2003)

(―A reasonable factfinder could conclude that Storey was not trying to extort a particular (or any) 

trademark holder. This was not, for example, a situation where a cybersquatter registered 

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 ̳applecomputer.com‘ and then tried to extort Apple Computer into paying him money to release 

the domain name. Rather, the instant case is more akin to the situation where a person registers 

 ̳apple.com‘ and then offers it to a number of parties that might be interested in the domain 

name.‖). Berryhill Decl. at ¶ 6.

4. As domain speculators accumulated portfolios of domain names for potential sale, 

they sought ways to earn income from their domain names which remained unsold. 

Concurrently, as the commercial internet expanded, methods of searching the internet for 

relevant information became one of the primary activities conducted by internet users. Internet 

―search engines,‖ such as Yahoo! and Google, partially filled this need and also sought means to 

profit from the conduct of internet searches. Id. at ¶ 7.

5. Aside from using internet search engines, however, another manner in which 

internet users find information is by what is called ―Direct Navigation.‖ In Direct Navigation, 

internet users type search queries directly into the ―address bar‖ of web-browsing software (such 

as Internet Explorer or Mozilla Firefox). Typically internet users may add ―.com‖ to the end of a 

search term, but the frequency with which the ―address bar‖ is used as a search bar led to 

browser software developers to cause the software to automatically add ―.com‖ to the end of 

searches conducted via the address bar. Id. at ¶ 8.

6. Internet search engine companies such as Yahoo! and Google determined that 

search could be made profitable by selling ―search advertising.‖ Search advertising operates by 

inviting advertisers to submit bids for their advertisements to be displayed in response to 

searches conducted by internet search engine users. For example, the search term ―automobiles,‖ 

entered into a search engine such as Google or Yahoo! will cause the display of ―sponsored 

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links‖ or a similar indication, along with a listing of prominently displayed links to advertisers 

who have bid to pay a ―click-through‖ fee to the search engine operator for each user which 

clicks on a sponsored advertisement to reach the advertiser‘s site through the search engine. This 

type of revenue model is referred to as ―pay-per click‖ or PPC. Id. at ¶ 9.

7. To capture potential visitor traffic from direct navigation, internet search engine 

companies such as Yahoo! and Google also distribute PPC advertisements via syndication to 

domain name registrants. For example, the registrant of a domain name such as 

DatingForBusyProfessionals.com, whether the domain name was registered for resale or future 

development, contract directly or indirectly to allow the domain name to be used to display PPC 

ads. In such an arrangement, when an internet user visits the web page corresponding to the 

domain name, the web page is automatically populated by PPC advertisements provided by the 

search engine company. A share of the revenue from such PPC advertisements is paid by the 

search engine company to the domain name registrant, in exchange for providing the domain 

name as a platform for displaying such advertisements. Search engine companies typically refer 

to this method of distributing advertisements as the ―domain channel‖ in contrast to the ―search 

channel‖ wherein sponsored advertisements are displayed directly at the search engine site. Id. 

at ¶ 10.

8. In a typical PPC advertising arrangement, the domain name is utilized as a 

publishing platform by the search engine company which populates the web page with sponsored 

PPC links as if the domain name itself were entered into the search engine as a search term. 

While the domain name registrant does not typically control the selection and arrangement of the 

advertisements, the search engine company, in turn, also has limited control over what search 

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terms the advertisers select to have their advertisements displayed. Id. at ¶ 11.

9. The distribution of PPC advertising by search companies through the domain 

channel has advanced to the point where domain names are often registered purely for their 

traffic potential, instead of for resale. The ability to sell domain traffic resulting from direct 

navigation has led to a number of techniques for accumulating domain names which have the 

potential to generate traffic per se. Id. at ¶ 12.

10. In the year 2000, ICANN instituted a standard policy under which a domain 

name, once registered, could be deleted within five days of its initial registration without 

incurring a fee for registration of the domain name. This period was known as the ―five day 

grace period‖ or ―add grace period.‖ Id. at ¶ 13.

11. The search for direct navigation traffic for domain names, combined with the five 

day grace period led to a practice known as ―domain tasting.‖ In domain tasting, a domain name 

would be registered and then monitored during the five day grace period to determine whether its 

projected annual traffic value exceeded the registration fee. Id. at ¶ 14.

12. The practice of domain tasting was conducted by a number of domain name 

registration companies using a variety of sources for character strings to be used to generate 

candidate domain names. It is believed that such companies had access to search data from 

search engine companies themselves, as well as ―error data‖ from internet service providers and 

domain name registries, which provided character strings having potential value, as such 

character strings corresponded to entries by internet users into search engines or into the address 

bars of browsers for otherwise non-existent domain names. Id. at ¶ 15.

13. One hazard of large-scale bulk domain registration is that some of the domain 

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names may incidentally correspond to trade or service marks. While a character string such as 

―Tide‖ may refer to the lunar gravitational effect on large bodies of water, it may also correspond 

to a brand of laundry detergent. Since a domain name registrant does not typically control what 

advertisements are displayed on a webpage used to publish advertisements generated by a search 

company, there is no completely effective way for the domain name registrant to know whether a 

domain name containing the string ―tide‖ will cause the display of surfing information or laundry 

information. Furthermore, the advertising results generated by any particular keywords are 

determined by the collective action of those advertisers who bid on keyword placement with the 

search engine company, with whom the domain name registrant has no connection or contact. 

Id. at ¶ 16.

14. As a result, responsible bulk domain registrants address the problems of incidental 

trademark correspondence in several ways. First, while there is no completely reliable method of 

filtering large numbers of strings against any particular database of trademarks, bulk domain 

registrants have continued to develop and deploy filtering systems on their own and in 

cooperation with brand owners. Second, responsible bulk domain registrants typically maintain 

staff and counsel for reviewing communications which may be sent by brand owners relating to 

brand-relevant domain names which may have escaped capture by the filtering methods 

employed by the bulk domain registrant. Where a domain name contains an inappropriate 

character string, or may have been targeted inappropriately by the search engine company 

supplying the advertising feed, responsible bulk domain registrants typically work with the brand 

owner to transfer or delete such domain names at no charge, and typically at a loss, to the brand 

owner, and further to update the filtering method to include variations of the asserted mark. Id. 

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at ¶ 17.

15. Notably, the absence of bulk domain registrants would not eliminate the use of 

otherwise nonexistent domain names for PPC advertising purposes. For example, the reason why 

the second most popular internet browser, Mozilla Firefox, is distributed for ―free‖ is that in a 

default installation of that browser, traffic to ―non-existent‖ domain names is fed to Google 

Search, under an arrangement by which Google shares a portion of the resulting revenue to 

Mozilla. Based on press articles, in 2007, this arrangement yielded an income of US $70 million 

to the Mozilla Foundation. Id. at ¶ 18.

16. In determining whether the practice of domain tasting constitutes ―bad faith 

intent‖ under the ACPA, the Court can look beyond the statutory factors at such issues as: what 

was motivating the registrant, how they responded when approached by a trademark holder, what 

type of safeguards the registrant had implemented, and did they have a process in place to avoid 

registering domain names that corresponded to trademarks. Berryhill Depo. at 127:21-8, 139:24-

140:10, 142:23-144:20, 149:17-151:6.

17. The registration of domain names comprised of generic or ―dictionary‖ words or a 

combination of generic words may be a manifestation of naivety and not bad faith. Berryhill 

Depo. at 159:2-160:2.

18. Determining intent on the totality of the facts requires a determination of 

credibility and is, therefore, a jury question. Berryhill Depo. at 167:7-168:16.

19. ―Constructive notice‖ (as the result of a trademark registration with the U.S. 

Patent & Trademark Office) is a legal concept in traditional Lanham Act claims for trademark 

infringement but not claims pursuant to the ACPA. Berryhill Depo. at 191:8-14 and 358:14-

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359:7.

20. Prior to Fall 2004, the process for registering domain names was as follows: an 

operator (such as Mavi Llamas) would be provided a spreadsheet of candidate domain names for 

registration, the operator would review the spreadsheet to eliminate domain names that 

corresponded to trademarks based on their personal knowledge, and then the remaining domain 

names would be registered. Deposition of Mavi Llamas, taken September 27, 2010, at 17:8-15, 

14:1-10, 15:8-12 21:10-14, 61:2-62:2 (attached as Exhibit O to Delgado Decl.).

21. In Fall 2004, the predecessor of the Connexus Companies implemented a 

trademark matching system based on the domain names in the USPTO database. Declaration of 

Mavi Llamas, dated August 10, 2011 (―Llamas Decl.‖), ¶ 3, Exhibit D.

22. Subsequent to the implementation of that 2004 trademark matching system, the 

spreadsheets viewed by the operators would contain, inter alia, the candidate domain names and 

any potential matches to the USPTO database (both literal and ―fuzzy matches‖ that were similar 

but not identical). Operators could then rely on the USPTO data included on the spreadsheet 

when making their decision to exclude domain names for trademark reasons. Llamas Depo. at 

50:2-51:1 and Ex. 137, 51:21-52:7; Llamas Decl. at ¶ 2, Exhibit C; Deposition of Donnie 

Misino, taken November 30, 2010 (―Misino Depo.‖) at 387:17-25 (attached as Exhibit P to 

Delgado Decl.).

23. After Fall 2004, operators also screened candidate domain names against an 

internally created blacklist. Deposition of Seth Jacoby, taken September 15, 2010 (―Jacoby 

Depo.‖) at 53:9-54:7 and 80:3-20 (attached as Exhibit Q); Llamas Depo. at 170:2-13.

24. NCS began tasting domains during the Add Grace Period in late 2006. Jacoby 

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Depo. at 49:6-13.

25. While the Add Grace Policy was in place, the process for registering domain 

names was as follows: NCS would test all candidate domain names immediately, identify 

candidates worthy of registration beyond the grace period because they were potentially 

profitable, delete those candidate domain names that (i) were either unprofitable or (ii) 

corresponded to trademarks, and then register the remaining candidate domains that were 

believed to be clean (i.e., they did not correspond to trademarks). Jacoby Depo. at 45:17-46:10 

and 47:22-48:13.

26. There was always vetting for trademarks during the grace period during the time 

that NCS was tasting domain names via the Add Grace Period. Jacoby Depo. at 50:11-14.

27. Human review for trademarks has always been part of the domain registration 

process. Jacoby Depo. at 52:4-17.

28. Throughout the years, NCS has refined its computer system so that its trademark 

matching system was better and better. Jacoby Depo. at 121:4-15, Llamas Depo. at 66:20-67:4.

29. In late 2006, Donnie Misino was tasked with creating a new trademark tool that 

would have better fuzzy matching and better implementation of the internal blacklist. 

Declaration of Donnie Misino, dated August 4, 2011 (―Misino Decl.‖) at ¶¶ 2-3, Exs. E and F.

30. Donnie Misino proposed additional refinements to the matching system and 

domain name registration process in January 2007. Misino Decl. at ¶ 4, Ex. G.

31. In the interim, the company continued to use its existing trademark system as can 

be seen from e-mails during the time period referring to the trademark matching system. Misino 

Decl. at ¶ 5, Ex. H.

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32. Donnie Misino continued to work on a new fuzzy matching system through April 

2007. Misino Decl. at ¶ 6, Ex. I.

33. Some version of Donnie Misino‘s trademark fuzzy matching system likely came 

into use in late 2007. Jacoby Depo. at 87:14-19, Misino Depo. at 467:24-469:4.

34. In a further iteration, Donnie Misino added ―N-Gram‖ matching to his trademark 

fuzzy matching system. Misino Depo. at 401:24-402:21.

35. A further refinement was made to the registration process: the addition of an 

exclusion file which contained a list of domain names previously considered for registration but 

rejected for trademark reasons. Any candidate domain name which matched an entry in the 

exclusion file was automatically rejected and never even considered by an operator. Jacoby 

Depo. at 72:23-75:9, 79:19-25 and Misino Depo. at 481:16-24.

36. Throughout the years, NCS has undertaken periodic scrubs of its domain name 

portfolio. Deposition of Christopher Pirrone, taken May 3, 2011, at 183:22-184:24 (attached as 

Exhibit R to Delgado Decl.).

37. In 2008, NCS undertook a review of its entire domain name portfolio to identify 

and delete any domain names that potentially corresponded to a trademark that might not have 

been accurately avoided during the registration process. Jacoby Depo. at 178:8-13, 181:21-

182:24; Misino Depo. at 384:15-386:16, Pirrone Depo. at 92:4-16.

38. To accomplish its 2008 domain name portfolio review, NCS created special 

trademark tool for the task of comparing domain names to trademarks in the USPTO database. 

Jacoby Depo. at 182:25-183:14. The process also involved review by human operators. Jacoby 

Depo. at 191:18-192:18.

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39. Building the special trademark tool was a rigorous project which required 

employees like Donnie Misino to work late nights and through weekends. Misino Decl. at ¶ 7, 

Ex. J.

40. The 2008 domain name portfolio review took months. Pirrone Depo. at 184:21-

24.

41. As a result of the 2008 review, approximately 25,400 domain names (or twenty 

percent (20%) of the domain name portfolio) were deleted. Pirrone Depo. at 94:5-15. Delgado 

Decl. at ¶ 12.

42. NCS stopped tasting domain names via the Add Grace Period in June 2008. 

Llamas Depo. at 82:22-83:15.

43. After NCS stopped tasting domain names through the AGP, the domain name 

process was as follows:

a. The process of selecting names to be registered as domain names begins

with names that are typed into the URL window of a browser by a user,

but do not resolve to valid domain names. This is referred to as ―DNS

error data.‖ There are various sources for this data. Some of it comes from

toolbars owned by Firstlook that have been installed by users, and some of

it is purchased from third parties. This data is used to initially populate the 

spreadsheet of candidate domain names. Declaration of Richard Korf, 

dated August 4, 4011 (―Korf Decl.‖) at ¶ 7.

b. The first step in filtering candidate domain names is to remove domain 

names that have previously been considered for registration but rejected as

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being too similar to registered trademarks. The system maintains a list of 

all the previous names that have been considered in a file called

―search_algo_clean_domain_names.‖ As of September 13, 2010, this file 

contained about 75 million different names. A small fraction of these, 

currently about 372 thousand, have previously been flagged as being 

similar to trademarks and rejected (i.e., the exclusion file). These are the 

names that have a non-null ―trademark_date.‖ The first filtering step is to 

look up each candidate domain name in this table, and if the exact same 

name has previously been flagged as corresponding to trademarks, to

reject it from further consideration. Id. at ¶ 8.

c. The next step in the evaluation of candidate domain names is to add traffic

data to the names. The ―traffic‖ of a given name is an estimate of how

often that name is typed into the URL window of a browser by a user,

within a given time period. This data is acquired from Verisign 

corporation for the .com and .net domains. The more often that a name is 

typed into a browser, the more profitable a given name is likely to be if 

registered. Thus, each name in the spreadsheet of remaining candidate 

names is annotated with various estimates of the amount of traffic that 

name has received in the past. Id. at ¶ 9.

d. The next step is to annotate the names with data from what is referred to

as the ―blacklist.‖ This is a list of approximately ten thousand strings that

were generated by hand, to avoid the registration of trademarks. In this

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step, each candidate name which includes a blacklisted name as an exact 

substring is marked in the spreadsheet. For example, the string ―dow‖ is 

in the blacklist, presumably because it is part of trademarks owned by 

Dow Jones and Dow Chemical corporations. Any candidate name, such as 

―shadow.com‖ that includes the string ―dow‖ as a substring, will be 

marked in the spreadsheet at this stage, and the corresponding blacklisted 

string, ―dow‖ in this case, will be stored with the candidate string. In the 

past, these names were automatically excluded from the list of candidate 

names. As of at least December 2010, they were simply marked in the 

spreadsheet with the corresponding blacklist string. Id. at ¶ 10.

e. The next step is a manual review and filtering performed by Mr. Dennis

Rhee. The candidate names are automatically sorted by the amount of

traffic they generate, and Mr. Rhee only retains those names whose traffic

threshold is above a certain level. In addition, Mr. Rhee marks those

blacklist matches that appear to correspond to trademarks. Id. at ¶ 11.

f. The next step is to automatically compare each of the candidate names to 

the database of registered trademarks published by the U.S. Patent and 

Trademark office, which I refer to as the ―USPTO Database.‖ This 

database contains about 1.5 million trademarks. In this case the matching 

is more complex than simply performing an exact complete match or an 

exact substring match, since the goal is to avoid registering names that are 

confusingly similar to registered trademarks, in addition to exact matches. 

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This is done with two different algorithms. The first is called a ―fuzzy 

match‖, and the second is called an ―N-gram match‖. No actual filtering is 

done at this stage, but simply the results of the fuzzy and n-gram matches 

are added to the spreadsheet of candidate names, if they exceed a 

particular threshold. Id. at ¶ 12.

g. The fuzzy match is performed by a piece of proprietary software that was

purchased from a third party. Given two text strings, the fuzzy match is

applied to the pair, and the value returned is a number between zero and

one hundred, indicating the degree of similarity between the two strings.

For each of the remaining candidate names, and each entry in the USPTO

database, the fuzzy match is applied to that pair of strings. For each 

candidate name, those trademarks in the USPTO database that return a 

value equal to or above a certain threshold (e.g., 60% or 70%) are stored, 

along with the score itself. Id. at ¶ 13.

h. Defendants‘ employees observed by experimentation that the fuzzy match 

algorithm does not return high scores when the two strings in question 

differ significantly in length. For example, if a registered trademark 

appears exactly in a much longer candidate name, the fuzzy match 

algorithm may not return a high score, even though the candidate name 

may lead to confusion with the trademark. To deal with these cases, 

Firstlook added an ―N-gram match‖. The way this works is that each 

string is broken up into shorter character sequences that appear in it (e.g.,

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the character sequences would be called ―digrams‖ if the system were 

using two-letter sequences). Id. at ¶ 14.

i. For example, the string ―nike‖ consists of the three digrams ―ni‖, ―ik‖, and 

―ke‖. The n-gram score is then the percentage of digrams in the shorter 

string that appear as digrams in the longer string. Again, this match is 

performed for all pairs of remaining candidate names and trademarks in 

the USPTO database. For each remaining candidate name, all the 

trademarks that generated an n-gram score equal to or above a certain 

threshold are listed, along with their corresponding n-gram scores. Id. at ¶ 

15.

j. In the next step of the process, Dennis Rhee reviews the results of the

fuzzy and n-gram matches to the USPTO database. Those names that in 

his opinion are sufficiently close to a registered trademark are marked

with an ―X‖ in the spreadsheet of candidate names. These Xs are simply

added to the spreadsheet at this point, rather than removing the 

corresponding candidate names. In addition, Mr. Rhee also marks those 

names that appear to him to correspond to trademarks, even if they don‘t 

match names in the USPTO database. Id. at ¶ 16.

k. In the next step, Mr. David Hull reviews the candidate names in the

spreadsheet, and marks with an ―X‖ those names that should not be 

registered, in his opinion. This can be based on all the information 

available to him at this point, but is primarily based on blacklist matches, 

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and his subjective impression of the similarity of a candidate name to a 

registered trademark. His Xs are placed in a different column of the 

spreadsheet than those of Mr. Rhee. Id. at ¶ 17.

l. Finally, the spreadsheet of candidate names is reviewed by Ms. Lily 

Stevenson, and she adds her own Xs to those names she feels should not 

be registered. Again, this can be based on all the information available to 

her at this point, but is primarily based on blacklist matches, and her 

subjective impression of the similarity of a candidate name to a registered 

trademark. In addition, she has the authority, though rarely exercised, to 

override decisions of David Hull. Those candidate names that have not 

been marked with an X by any of these three individuals, or for which a 

veto of David Hull has been overridden by Lily Stevenson, are registered 

by Dennis Rhee on behalf of Navigation Catalyst Systems, if they have 

not already been registered by someone else. Id. at ¶ 18.

44. It would be impossible to build a domain name registration system that registered 

domain names with 100% accuracy (i.e., it never registered a domain name that potentially 

corresponded to a trademark). Deposition of Richard Korf, taken December 8, 2010, at 133:7-

134:13 and 283:22-284:24 (attached as Exhibit S to Delgado Decl.).

45. A domain name that had been keyword-optimized by Firstlook would show three 

tabs called ―Top Searches‖ at the top. Llamas Depo. at 143:5-17.

46. NCS has a policy to transfer any domain name upon request to a third party with 

legitimate rights. Pirrone Depo. at 74:20-75:3.

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47. NCS did not offer to sell the domain names at issue in this matter to Plaintiff. 

Deposition of Jeff Masters, taken August 3, 2010 (―Masters Depo.‖) at 35:23-36:1 (attached as 

Exhibit T to Delgado Decl.).

48. Plaintiff takes its name from the 1960s radical organization ―Weather 

Underground‖ which originated at the University of Michigan. Masters Depo. at 16:6-23.

49. There is an organization named ―Weather Underground Hong Kong‖ that uses 

Plaintiff‘s name as well as Plaintiff‘s software. Masters Depo. at 10:1-7 and 20:4-17.

50. There was a Wunder Brewery in San Francisco, California. Deposition of Chris 

Schwerzler, taken April 29, 2010 (―Schwerzler Depo.‖) at 117:14-21 (attached as Exhibit U to 

Delgado Decl.).

51. There is a Wunderground Magic Store in Michigan. Schwerzler Depo. at 118:9-

17.

RESPECTFULLY SUBMITTED this 15th day of August, 2011.

/s/William A. Delgado

William A. Delgado

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

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121061.1

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

THE WEATHER UNDERGROUND, INC.,

a Michigan corporation,

Plaintiff, 

Case No. 2:09-CV-10756

vs. Hon. Marianne O. Battani

NAVIGATION CATALYST SYSTEMS, INC., 

 a Delaware corporation; CONNEXUS CORP., 

 a Delaware corporation; FIRSTLOOK, INC.,

 a Delaware corporation; and EPIC MEDIA

GROUP, INC., a Delaware corporation,

Defendants.

______________________________________________________________________

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

brianhall@traverselegal.com

Lead Attorneys for Plaintiff

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Attorneys for Plaintiff 

William A. Delgado 

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

Nicholas J. Stasevich (P41896)

Benjamin K. Steffans (P69712)

BUTZEL LONG, P.C.

150 West Jefferson, Suite 100

Detroit, MI 48226

(313) 225-7000

stasevich@butzel.com

steffans@butzel.com

Local Counsel for Defendants

______________________________________________________________________

CONNEXUS, FIRSTLOOK, AND NCS’S MEMORANDUM OF POINTS AND 

AUTHORITIES IN OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY 

ADJUDICATION

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STATEMENT OF THE ISSUES PRESENTED

1. Whether Plaintiff has established each element under the Anti-Cybersquatting 

Consumer Protection Act, 15 U.S.C. § 1125(d) (―ACPA‖) as a matter of law.

2. Whether each of the 288 domain names that Plaintiff alleges are at issue is

identical or confusingly similar to a distinct mark owned by the Plaintiff.

3. What level of culpability is required to support a finding of ―bad faith intent to 

profit‖ under the ACPA (i.e., intentional targeting, ―willful blindness‖ or mere negligence).

4. Whether Plaintiff has established that the Connexus Defendants meet that 

requisite level of culpability as a matter of law.

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CONTROLLING AUTHORITY

The ACPA is set forth at 15 U.S.C. 1125(d)(1) and provides: 

(A) A person shall be liable in a civil action by the owner of a mark, including a 

personal name which is protected as a mark under this section, if, without regard 

to the goods or services of the parties, that person—

(i) has a bad faith intent to profit from that mark, including a personal name 

which is protected as a mark under this section; and 

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

(I) in the case of a mark that is distinctive at the time of registration of 

the domain name, is identical or confusingly similar to that mark; 

(II) in the case of a famous mark that is famous at the time of 

registration of the domain name, 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 title 18 or section 220506 of title 36. 

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MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

In its Motion for Summary Adjudication, Plaintiff argues that it has established liability 

under the Anti-Cybersquatting Consumer Protection Act (―ACPA‖) as a matter of law. It is 

difficult to determine which element of Plaintiff‘s Motion is most notable. Is it that Plaintiff‘s 

Motion rests almost entirely on inadmissible evidence? Or, is it that, even if the Court accepted 

all of Plaintiff‘s inadmissible exhibits, Plaintiff‘s Motion would still fail?

This Court should decline Plaintiff‘s invitation to commit a series of reversible errors 

and, instead, deny Plaintiff‘s Motion and, instead, grant the Connexus Defendants‘ Cross-Motion 

on the claim. Plaintiff‘s Motion is, as noted above, supported by inadmissible evidence. 

Moreover, even if the Court reached the merits of the Motion by accepting Plaintiff‘s evidence, 

Plaintiff could never establish ―bad faith intent to profit‖—the key element under the ACPA—as 

a matter of law. As the Connexus Defendants point out in their Cross-Motion, absent actual 

knowledge on their part of Plaintiff‘s marks, there can be no liability. Plaintiff submits no 

evidence to show actual knowledge.

Even if the Court accepted Plaintiff‘s position that it could substitute ―willful blindness‖ 

for ―actual knowledge,‖ the Motion would still fail. To show ―willful blindness,‖ Plaintiff would 

have to show that the Connexus Defendants knew of a potential wrong and deliberately failed to 

act. That is simply not the case. From nearly the very beginning and throughout the years, the 

Connexus Defendants have implemented a series of processes and systems (comprised of both 

humans and machines) to avoid the registration of domain names that corresponded to 

trademarks. These efforts cannot, as a matter of law, support a finding of ―deliberate failure to 

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act.‖

In reality, Plaintiff‘s pursuit of this matter, as reflected in its Motion, has always been 

misplaced. Plaintiff seeks to judge the Connexus Defendants based on how well (or how poorly) 

they were able to avoid trademarks. But, even if the Connexus Defendants did not do a good job 

of filtering out trademarks (they did, by the way), the ACPA does not impose liability for poor 

performance. It does not punish performance at all. It punishes intent. And, here, there is no 

evidence that the Connexus Defendants had a ―bad faith intent to profit‖ from the goodwill of the 

Plaintiff‘s marks. For that reason, Plaintiff‘s Motion must be denied, and the Connexus 

Defendants‘ Motion must be granted. 

II. STATEMENT OF FACTS

Background of Bulk Domain Name Registration and Monetization. The history of bulk 

domain name registration and monetization is set forth in the Connexus Defendants‘ Statement 

of Facts Nos. 1-15; Declaration of John Berryhill. In short, bulk registrants seek out and register 

domain names that might be profitable (either because they can be resold or monetized. The 

registrant can ―monetize‖ these domain names by placing Pay-Per-Click hyperlinks on the 

domain names. Id. One hazard of bulk domain name registration is that a domain name may 

correspondent to trade or service marks (e.g., ―Tide‖ can refer to the lunar gravitational effect on 

large bodies of water or a brand of laundry detergent). SOF No. 13. So, responsible bulk 

registrants establish procedures to address the unintentional registration of domain names in 

which a third party claims intellectual property rights. SOF No. 14; Berryhill Decl. at ¶ 17.

Background of Defendants’ Business. NCS is one of the many registrants that registers 

domain names in bulk. NCS is a subsidiary of Firstlook, which, in turn, is a subsidiary of 

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Connexus Corporation. After NCS registers a domain name, Firstlook monetizes the domain 

name by creating web pages with hyperlink advertisements upon which visitors to the domain 

name can click. See Weather Underground, Inc. v. Navigation Catalyst Systems, Inc., 688 F. 

Supp. 2d 693, 695 (E.D. Mich. 2009). 

The Domain Name Registration Process. Because Plaintiff‘s Motion focuses on whether 

the Connexus Defendants had a ―bad faith intent to profit,‖ it is critical to evaluate the process by 

which NCS registered domain names and what steps were undertaken to avoid the registration of 

domain names that corresponded to trademarks. That domain name registration process changed 

over time such that three different time periods must be analyzed: (i) 2004-late 2006, (ii) late 

2006-June 2008 (i.e., the Add Grace Period), and (iii) June 2008 to the present. The process 

during the first period (2004-late 2006) is described in detail in SOF Nos. 20-23. The process 

during the Add Grace Period (late 2006 through June 2008) is described in detail in SOF Nos. 

24-42. The process during the third period is described in detail in SOF Nos. 43(a)-(l). 

The important takeaway is this: at all times, the NCS took steps to avoid registering 

and/or retaining domain names that corresponded to trademarks. It started with (and always had) 

a ―human‖ vetting process (i.e. human operators attempted to exclude domain names that 

corresponded to trademarks from registration) and, in time, added technology (e.g., blacklists 

that helped identify domain names that NCS did not want to register and trademark filters that 

could compare candidate domain names to trademarks in the USPTO database). It spent years 

refining that process (e.g., adding operators to the review process, conducting internal scrubs of 

the portfolio, transferring domain names to trademark owners upon request) and further 

developing its technology (e.g., adding an exclusion file to automatically exclude previously 

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rejected names, adding a fuzzy match system to the trademark filter, adding N-Gram matching to 

the trademark filters). SOF Nos. 20-43, 46. It is important to note that the last domain name of 

which Plaintiff complains in its FAC was registered in March 2009, more than two years ago. 

FAC, Exs. T and U.

III. ARGUMENT

A. Plaintiff Did Not Submit Admissible Evidence in Support of Its Motion.

In connection with its Motion, Plaintiff filed various exhibits but, as noted in the 

Connexus Defendants‘ Evidentiary Objections, the vast majority of Plaintiff‘s evidence is 

inadmissible under the Federal Rules of Evidence. As a result, Plaintiff‘s Motion immediately 

fails. Summary judgment is not a mechanism by which a party can file an exhibit full of binders 

and simply say ―See, I win.‖ It requires the submission of admissible evidence (e.g., documents 

that have been authenticated, statements that are contained in a sworn affidavit of someone with 

personal knowledge, documents that do not contain hearsay). Fed. R. Civ. P. 56(c); Turner v. 

Scott, 119 F.3d 425, 430 (6th Cir. 1997) (noting that ―summary judgment rulings must be based 

on admissible evidence‖); Peake v. Martinrea Fabco Hot Stamping, Inc., 2011 WL 1157864 

(E.D. Mich. Feb. 28, 2011) (―[I]n resolving a Rule 56 motion, the Court should not consider 

unsworn or uncertified documents, unsworn statements, inadmissible expert testimony, or

hearsay evidence.‖) (citations omitted), report and recommendation adopted by 2011 WL 

1118572 (E.D. Mich. Mar. 28, 2011); Thomas v. City of Detroit, 2007 WL 674593 at *5 (E.D. 

Mich. Feb. 28, 2007) (Battani, J.) (―Moreover, in this Circuit, it is well settled that only 

admissible evidence may be considered by the trial court in ruling on a motion for summary 

judgment.‖) (internal quotations and citations omitted).

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The few pieces of evidence that Plaintiff submitted to which the Connexus Defendants 

have no evidentiary objection are insufficient to establish liability under the ACPA as a matter of 

law.1 As a result, Plaintiff‘s Motion must be denied.

B. Plaintiff Did Not Provide Any Analysis on the Issue of ―Confusing Similarity.‖

In its Memorandum supporting the Motion, Plaintiff concedes that to prevail on its ACPA 

claim, it must show that each and every domain name at issue is identical or ―confusingly 

similar‖ to a distinctive mark belonging to the Plaintiff. See Memorandum in Support of Motion 

for Partial Summary Judgment (―Memo.‖) at 3. Yet, Plaintiff provides no analysis whatsoever as 

to why any domain name is confusingly similar to its marks. Indeed, Plaintiff implicitly 

concedes that there are some domain names that ―can be debated‖ but then invites the Court into 

committing reversible error by nevertheless granting summary adjudication and simply factoring 

―in the similarity requirement on those few domains in determining statutory damages.‖ Memo. 

at fn. 2.

Plaintiff is plainly wrong. ―Confusing similarity‖ is a prima facie element of liability not 

merely an element to consider as part of a damages award. 15 U.S.C. 1125(d)(1). That Plaintiff 

does not want the Court to actually compare the marks to the domain names is not surprising 

since it would be difficult for Plaintiff to justify how certain names are, in fact, confusingly 

similar. For example, <undergroundware.com> is not similar to <wunderground.com>. The 

same is true for <ranunderground.com>. Persons looking for <wunderground.com> did not 

accidentally type ―r-a-n‖ instead of a ―w.‖ They clearly just combined two generic words: ―ran‖ 

and ―underground.‖ Lastly, consider <newundergorun.com>, which might be a typo of the 

 

1

Indeed, even if the Court were to examine all of the evidence submitted by Plaintiff, it would 

not be sufficient to establish liability as a matter of law. See Section III (B)-(D), infra.

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combination of two generic words ―new‖ and ―underground‖ but is not confusingly similar to 

<wunderground.com>.

Having failed to provide any meaningful analysis of this element under the ACPA, 

Plaintiff cannot meet its burden, and its motion must fail.2

C. Plaintiff‘s Motion Fails Because Plaintiff Cannot Show ―Bad Faith Intent to 

Profit.‖

1. ―Bad faith intent to profit‖ requires that the Connexus Defendants have 

known of and targeted the goodwill of Plaintiff‘s marks.

As the Court is aware, the Connexus Defendants filed their own Motion for Summary 

Adjudication on Plaintiff‘s ACPA claim since the Connexus‘ Defendants did not actually know

of or target the goodwill of Plaintiff‘s marks. For the sake of brevity, the full arguments in that 

motion are simply incorporated herein by reference. Suffice it to say, both the legislative history 

and the words in the statute suggest that targeting of a particular trademark is required to 

establish bad faith intent. Harrods Ltd. v. Sixty Internet Domain Names, 110 F. Supp. 2d 420, 

426 (E.D. Va. 2000) (the ACPA ―does not extend to innocent domain name registrations by 

those who are unaware of another’s use of the name, or even to someone who is aware of the 

trademark status of the name but registers a domain name containing the mark for any reason 

other than with bad faith intent to profit from the goodwill associated with that mark.‖) (quoting 

H.R. Conf. Rep. No. 106-464 (1999)) (emphasis added); see also 15 U.S.C. 

 

2

In the event that the Court relieves Plaintiff of its burden to prove a prima facie case and 

presses forward with its own analysis, it should bear in mind that, on the internet, one letter can 

make a significant difference and, as a result, variations by one or two letters do not necessarily 

represent ―typosquatting‖ as Plaintiff argues. For example, <nikeshoes.com> and 

<niceshoes.com> differ by only one letter, but, as the Court can ascertain for itself by visiting 

these websites, the domain names relate to two very different companies. 

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1125(d)(1)(B)(i)(VIII) (suggesting that the Court can consider 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). 

If the Court agrees with the Connexus Defendants‘, Plaintiff‘s Motion instantly fails 

since it does not establish that the Connexus Defendants targeted Plaintiff‘s marks at the time of 

registration. Instead, the Connexus Defendants‘ Motion must be granted.

2. The Court cannot import the legal concept of ―willful blindness‖ from the 

traditional trademark claim into the ACPA.

Realizing that it is impossible for it to show intent based on actual knowledge (i.e., that 

the Connexus Defendants purposefully targeted domain names that corresponded to Plaintiff‘s 

marks because they knew of Plaintiff‘s marks), Plaintiff essentially argues that the Connexus 

Defendants were ―willfully blind,‖ a legal concept imported from the traditional trademark 

infringement context. Memo. at 9-10; Hard Rock Cafe Licensing Corp. v. Concession Servs., 

Inc., 955 F.2d 1143, 1149 (7th Cir. 1992) (―[W]e have held that willful blindness is equivalent to 

actual knowledge for purposes of the Lanham Act...‖).3

However, while both traditional False Designation of Origin and ACPA claims are 

codified at 15 U.S.C. § 1125, courts have been careful to note that they are very different types 

of claims because the latter requires a showing of ―bad faith.‖ See, e.g., Lahoti v. VeriCheck, 

 

3

Plaintiff‘s reliance on ―willful blindness‖ which is the equivalent of actual knowledge belies 

any argument that constructive notice as the result of Plaintiff‘s trademark registrations is 

sufficient. Constructive notice is a concept in traditional trademark cases and is not relevant to 

ACPA cases. SOF No. 19. After all, if ―constructive notice‖ based on a trademark registration 

was sufficient, the ACPA would be transmogrified from a statute that is based on ―intent‖ into a 

statute that imposes strict liability.

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Inc. 586 F.3d 1190, 1202 (9th Cir. 2009) (―A finding of bad faith is an essential prerequisite to 

finding an ACPA violation, though it is not required for general trademark liability.‖). Importing 

―willful blindness‖ or ―reckless disregard‖ from the traditional trademark context (where bad 

faith intent is not at issue) into the ACPA context (which specifically requires a showing of bad 

faith intent) would not be appropriate given the statute‘s narrow scope. Cf. Solid Host, NL v. 

Namecheap, Inc., 652 F. Supp. 2d 1092, 1101 (C.D. Cal. 2009) (―In considering these [novel] 

issues, the court is mindful that the statute‘s scope is narrow.‖).

Unsurprisingly, none of the cases cited by Plaintiff regarding ―willful blindness‖ 

involved an ACPA claim.4 This Court should not rush to accept Plaintiff‘s invitation to expand 

the scope of a statute that is universally accepted as ―narrow.‖ It should, instead, pass on that 

invitation and focus on what Congress actually intended when it enacted the ACPA (i.e., the 

prevention of ransoming of domain names).

3. Even if the court did accept the premise that a showing of ―willful 

blindness‖ was sufficient under the ACPA, Plaintiff‘s motion would still 

fail.

Ironically, even if the Court accepted Plaintiff‘s premise that a finding of ―willful 

blindness‖ was sufficient to establish liability under the ACPA, Plaintiff‘s Motion would still 

fail. In one of the leading cases on contributory infringement and the concept of ―willful 

blindness,‖ the Hard Rock Court stated that ―[t]o be willfully blind, a person must suspect 

 

4

Louis Vuitton S.A. v. Lee involved traditional trademark claims. Berg v. Symons involved 

copyrights and trade dress. Microsoft Corp. v. Wholesale Club, Inc. involved copyright and 

traditional trademark claims. A Touch of Class Jewelry Co. v. J.C. Penny involved traditional 

trademark claims. Securacomm Consulting, Inc. v. Securacom involved traditional trademark 

claims. Basic Books, Inc. v. Kinko’s Graphics Corp. involved copyright claims.

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wrongdoing and deliberately fail to investigate.‖ Hard Rock, 955 F.2d at 1149 (emphasis 

added). The Hard Rock Court criticized the district court for failing to evaluate the defendant‘s 

state of mind and its choice to focus exclusively on the failure to take precautions against 

counterfeiting. Id. Ultimately, the Hard Rock Court observed that the district court found the 

defendant to be merely negligent not willfully blind. Id.

Plaintiff cannot show that the Connexus Defendants deliberately failed to investigate 

their domain name registration process. The admissible facts submitted into evidence by the 

Connexus Defendants establish that, in fact, they took action to exclude domain names that 

corresponded to trademarks. They had human operators screen for trademarks. They developed 

an internal blacklist containing thousands of entries to prevent registration of certain strings of 

characters. They spent years at great cost and manpower time refining their software to assist 

with the trademark clearing process. That included upgrading their fuzzy matching software, 

adding an N-Gram matching component, and adding an exclusion file. They scrubbed their 

portfolio periodically and, on one occasion in 2008, reviewed every single domain name. As a 

result of that process, they deleted over 25,000 domain names, thereby sacrificing $1,000,000 in 

profit margins, essentially ―putting their money where their mouth is.‖ They transferred domain 

names to trademark owners who made a legitimate claim. SOF Nos. 20-43, 46. These are not 

the actions of someone who is merely paying lip service. These are serious efforts undertaken by 

a bulk registrant who is seeking to exclude not include registrations of domain names that 

correspond to trademarks. Put simply, the fact that the Connexus Defendants took action 

precludes a finding of ―willful blindness,‖ and, as a result, the Connexus Defendants would still 

be entitled to summary adjudication in their favor even if the Court imposed this standard.

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Cognizant of the actions taken by the Connexus Defendants, Plaintiff simply denigrates 

them by saying that they are ―too little too late.‖ But, by arguing that these efforts were not 

sufficient (i.e., too little) and not timely (i.e., too late), Plaintiff is really arguing that the 

Connexus Defendants‘ were negligent. However, as the Hard Rock Court noted, negligence is 

not equivalent to ―willful blindness.‖5 Moreover, negligence merely speaks to how well the 

Connexus Defendants performed not what they intended to do in the first instance. As a result, a 

showing of negligence would not be sufficient to prevail on an ACPA claim which requires an 

affirmative showing of bad faith intent. Thus, once again, it is the Connexus Defendants who 

would be entitled to summary adjudication.

4. Even under a ―negligence‖ standard, Plaintiff cannot establish ―intent‖ in 

this case as a matter of law.

For the reasons set forth above, this Court should not hold that mere negligence is 

sufficient to impose ACPA liability. Negligence measures the efficacy of performance but says 

nothing about the intent behind the performance which is the sina quo non of the ACPA. 

Nevertheless, even if the Court did hold as such, the facts submitted by the Connexus Defendants

establish that a jury trial would be required on that issue.

Time and again, courts (including the Sixth Circuit) have held that summary judgment is 

typically inappropriate when ―intent‖ is at issue. Hoover v. Radabaugh, 307 F.3d 460, 467 (6th 

Cir. 2002) (―The third part of a First Amendment speech claim looks to the defendants‘

 

5 Obviously, the Connexus Defendants would argue that they were not even negligent. Their 

system was fairly sophisticated and, while it does not meet Plaintiff‘s standard of 100% 

perfection, it would be impossible to build a system that actually registers domain names but

nevertheless performs perfectly (i.e., did not register a single name that corresponded to a 

trademark). SOF No. 44.

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motivation in terminating [plaintiff]. When the defendants‘ intent is at issue,  ̳summary 

judgment is particularly inappropriate.‘‖) (citation omitted); Marohnic v. Walker, 800 F.2d 613, 

617 (6th Cir. 1986) (―recognizing that summary judgment is particularly inappropriate when 

intent is at issue, because evidence of intent must generally be inferred from the surrounding 

facts and circumstances‖); Sara Lee/De Int’l B.V. v. Pell, Inc., 2005 WL 1498873, at *1 (W.D. 

Mich. June 23, 2005) (―Summary judgment is particularly inappropriate as to questions of the 

intent of a party. In this case, the trademark claims involve the issue of whether Defendants 

acted knowingly and intentionally. Likewise, the conversion claims (both the third-party and 

counterclaims) involve the question of whether the Counter and Third-Party Defendants 

intentionally exercised wrongful dominion over the lawful property of another. These questions 

are not properly decided under Rule 56.‖) (citations omitted); see also SOF No. 18 (Berryhill 

Depo. at 167:7-168:16).

Put simply, the Connexus Defendants‘ Statement of Facts sets forth many facts which 

Plaintiff does not address in its Memorandum regarding the attempts that were made to exclude

domain names that corresponded to trademarks: the use of human reviewers, the exclusion file, 

the fuzzy match trademark filter, the N-gram match trademark filter, the transfer policy, the 

periodic portfolio scrubs (including the 2008 scrub which Plaintiff admits resulted in the loss of 

$1,000,000 in profit margins (Plaintiff‘s Motion at No. 49)). So, even if the Court improperly 

holds that Plaintiff can show ―bad faith intent to profit‖ by showing negligence, then the 

existence of these facts create a triable jury issue. A jury, viewing all of these facts and 

considering the credibility of the Connexus Defendants‘ witnesses, could reach the conclusion 

that the Connexus Defendants intended to register generic/descriptive domain names and did not

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intend to register the domain names at issue. In fact, Plaintiff‘s Motion concedes that credibility 

is at issue by arguing that Seth Jacoby said things at deposition that were not credible. Plaintiff‘s 

Motion at No. 70. Plaintiff is free to tell a jury that Jacoby is not credible but, pursuant to the 

Seventh Amendment, that determination must be made by a jury not this Court.

Given the existence of various disputed facts and the need for a jury to make a 

determination of credibility in examining those facts, summary adjudication would still be 

inappropriate under a ―negligence‖ level of culpability.

4. The statutory factors are not important in a bulk registration case.

Plaintiff‘s exclusive reliance on the eight statutory factors in ACPA to show ―bad faith 

intent to profit‖ is misplaced. The ACPA was enacted in 1999 before the practice of domain 

name tasting was in vogue. SOF No. 1. As a result, its language (including the nine statutory 

factors regarding bad faith codified at 15 U.S.C. § 1125(d)(1)(B)(i)) was crafted while Congress 

considered the ―traditional‖ cybersquatter situation where an individual, with knowledge of a 

specific trademark, sits at his computer and registers a domain name that is identical or 

confusingly similar to that trademark, so that he can, for example, ransom the domain name to 

the trademark holder or one of its competitors. SOF No. 2.

This is not a case involving an individual at a computer whose intent must be discerned. 

In such a case, it would be impossible to read a person‘s mind to see what they were thinking 

when they registered the domain name. Therefore, it would be appropriate to rely on 

circumstantial evidence of the sort listed in the nine statutory factors. Here, we have a bulk 

registration process that was codified in software and company operating procedures. If we want 

to see why a domain name was registered, we need to examine the process itself, not a set of 

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unrelated factors.

Indeed, even the language of the ACPA itself recognizes that the statutory factors are not 

appropriate for every case and, instead, merely suggests that ―[i]n determining whether a person 

has a bad faith intent described under subparagraph (A), a court may consider factors such as, 

but not limited to....‖ 15 U.S.C. § 1125(d)(1)(B)(i) (emphasis added). Evaluating the factors is 

not required. On the other hand, considering the totality of circumstances—including the 

Connexus Defendants‘ efforts to avoid trademarks—would be.6 Interstellar Starship Servs., Ltd. 

v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002) (―Congress did not mean these factors to be an 

exclusive list; instead, the most important grounds for finding bad faith are the unique 

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

Congress.‖) (internal citations and quotations omitted); Lucas Nursery & Landscaping, Inc. v. 

Grosse, 359 F.3d 806, 811 (6th Cir. 2004) (―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.‖). 

Nevertheless, even if the Court examined the statutory factors, it would not find that all 

of the factors weigh in Plaintiff‘s favor as Plaintiff suggests. For example, Factor 5 requires that 

the use of the domain name create a ―likelihood of confusion.‖ But, there is no likelihood of 

confusion here. Plaintiff and Defendants are not competitors offering similar services. 

 

6

The Court can look at such factors as: how the registrant reacted when approached by a 

trademark holder, what type of safeguards were implemented, and, generally, what was the 

process to avoid registration of domain names that corresponded to trademarks. SOF No. 16. 

The Court should also remember that the registration of domain names comprised of 

―dictionary‖ words or a combination of such words (as in this case) may be a manifestation of 

naivety and not bad faith. SOF No. 17.

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Plaintiff‘s website (Ex. 58 to Deposition of Jeff Ferguson, attached as Exhibit V to Delgado 

Decl.) contains weather information, photographs, and weather data. Defendants‘ website only 

contains hyperlinks (Plaintiff‘s Exs. BB and EE). A visitor to Defendants‘ website would not 

confuse that website for Plaintiff‘s. 

Ironically, Plaintiff‘s citations to HER, Inc. v. RE/MAX First Choice, LLC and Victoria’s 

Secret Stores v. Artco Equip. Co., Inc. only serve to drive the point home. In both cases, the 

parties were direct competitors of each other, and it was that fact which resulted in the 

―likelihood of confusion.‖ In addition, the defendant in Victoria’s Secret actually created a 

website peppered with references to Plaintiff Victoria‘s Secrets so as to make it appear as though 

a visitor to the website was actually purchasing something from Plaintiff. Victoria’s Secret v. 

Artco Equip. Co., Inc., 194 F. Supp. 2d 704, 713 (S.D. Ohio 2002).

That is a far cry from this case. The Connexus Defendants did not create a website that 

looks like Plaintiff‘s for the purpose of tricking visitors into thinking they were at Plaintiff‘s 

website or somehow doing business with Plaintiff. To the contrary, Plaintiff denigrates 

Defendants‘ websites by referring to them as ―low quality pay per click parking pages‖ (Memo. 

at 11) but that only serves to underscore the fact that a visitor to Defendants‘ websites would 

know that they were not visiting Plaintiff‘s website (which Plaintiff would undoubtedly call 

―high quality‖). With that knowledge, a visitor to Defendants‘ website could either leave the 

website or click on a hyperlink on Defendant‘s site, but the decision to click on a hyperlink 

would have been a decision born of the visitor‘s willful volition not confusion (i.e., ―I know this 

is not The Weather Underground but I‘m going to click on it anyway‖).

Similarly, Factor 6 (provision of false information) does not support Plaintiff. In fact, in 

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its Motion, Plaintiff does not even argue that NCS provided false information. Instead, it argues

a plethora of unrelated other things completely unrelated to the provision of WHOIS 

information.

First, Plaintiff argues that the Connexus Defendants failed to identify any further domains 

beyond the 41 identified in the Complaint in response to discovery. Memo. at 13. That has 

nothing to do with Factor 6, but, in any event, here is what actually happened: Plaintiff issued a 

First Set of Requests for Production which essentially asked NCS to identify ―the other domain 

names that infringe [Plaintiff‘s] marks.‖ See Delgado Decl. at Ex. W (statement by Plaintiff‘s at

a discovery hearing on May 19, 2010). Realizing that Plaintiff‘s request was simply the ACPAequivalent of the infamous Groucho Marx question ―Have you stopped beating your wife?‖,

NCS objected to the question because: (i) any answer would implicitly concede that NCS had, in 

fact, registered an ―infringing‖ domain name, which NCS was not going to concede, (ii) even if 

NCS was willing to make that concession, it could not know what should be deemed to be an 

―infringing‖ domain since the parties clearly disagree on that point, and (iii) to the extent outside 

counsel was involved in analyzing the request and the response thereto, any response would have 

waived the attorney work product doctrine because it would reveal counsel‘s mental impressions 

as to what counsel believed was an infringing domain. Delgado Decl. at ¶¶ 17-19 and Ex. W.

As a result, NCS stood on its objections and offered to conduct an unlimited number of 

character string searches (e.g., ―weather‖, ―wund,‖ etc.) against its domain name portfolio so that 

Plaintiff could see what the results were and select the ―domain names at issue‖ from those 

results. In fact, that offer was repeated in open court at the May 19, 2010 hearing before 

Magistrate Judge Morgan. Ultimately, the parties‘ disagreement on this issue became a non2:09-cv-10756-MOB-VMM Doc # 193 Filed 08/15/11 Pg 54 of 60 Pg ID 4978
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issue because the Connexus Defendants were able to provide a database of all past and present 

domain names which Plaintiff could examine and select the domain names it wanted to put at 

issue. Delgado Decl. at ¶¶ 20-21 and Ex. W. In short, this is a non-issue now.

Second, Plaintiff argues that the Connexus Defendants‘ destroyed e-mails and other 

documents despite the ―constant threat of litigation.‖ Memo. at 13. Not only does this have 

nothing to do with Factor No. 6, but, Plaintiff makes no showing as to any particular document 

or e-mail. Rather, Plaintiff is taking the overbroad (and, quite frankly, ridiculous) position that a 

company under the ―constant threat of litigation‖ has a duty to preserve every single document

in its possession, custody, and/or control. That is not the law, much to the relief of major 

corporations such as General Motors and Walmart who are also under the ―constant threat of 

litigation‖ and get sued in some court somewhere in the United States every single day.

Third, Plaintiff argues that NCS is a ―shell‖ company. Even if that were true, it has 

nothing to do with Factor 6.

Lastly, Plaintiff argues that NCS utilized a privacy protection service to shield its 

registrant information from the public. Memo. at 13-14. Nevertheless, using a privacy 

protection service is entirely appropriate and not the equivalent of providing false information. 

Career Agents Network, Inc. v. Careeragentsnetwork.biz, 2010 WL 743053 at *5 (E.D. Mich.

Feb. 26, 2010) (―The record indicates that Defendants provided accurate contact information, but 

that they utilized a privacy protection service so as to not make their contact information readily 

available to the general public. Use of the privacy protection service is not the same thing as 

providing false or misleading contact information.‖).

With respect to Factor No. 7, which examines the traditional ―ransoming‖ situation, it is 

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undisputed that the Connexus Defendants did not attempt to ransom the domain names at issue 

to Plaintiff. SOF No. 47. 

With respect to Factor No. 8, Plaintiff lists sixteen domain names that it claims 

correspond to the trademark of others. Conveniently, Plaintiff fails to acknowledge that, over 

time, NCS has considered millions of domain names for registration. SOF No. 43(b). Given the 

relative numbers, it cannot be said that NCS‘s process evidences an intent to register domain 

names that correspond to trademarks as a matter of law.

Lastly, with respect to Factor No. 9, the ―extent to which‖ Plaintiff‘s marks are or are not 

distinctive or famous, Plaintiff also conveniently fails to note the many other uses of its marks. 

For example, Plaintiff‘s name ―The Weather Underground‖ is derived from a 1960s terrorist 

group. SOF No. 48. There is a ―Weather Underground‖ in Hong Kong. SOF No. 49. At one 

point, there was a ―Wunder‖ Brewery in San Francisco. SOF No. 50. And, there is a 

―Wunderground‖ Magic Shop in Michigan. SOF No. 51. As a result, it is impossible to 

determine whether a visitor to one of the domain names at issue was actually trying to reach 

Plaintiff or was simply looking for information on the terrorist organization, the Hong Kong 

entity, a brewery or a magic shop.

5. Summary on bad faith intent.

To the extent that actual knowledge is required to establish ―bad faith intent to profit‖ 

under the ACPA, the Connexus Defendants, not Plaintiff, are entitled to summary adjudication 

on the issue of liability. The Court should decline to import ―willful blindness‖ into the ACPA 

because doing so would run counter to the narrow scope of the ACPA, but, even if it did, the 

Connexus Defendants, not Plaintiff, would still merit summary adjudication because they took 

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action to avoid trademark issues in the domain name registration process. That those actions 

might not have been 100% effective is immaterial since the ACPA imposes liability based on 

intent not performance.

D. Plaintiff Did Not Provide Any Serious Analysis as to Why Epic Media, 

Connexus, and Firstlook Should Be Held Liable

Plaintiff seeks to impose liability for the registration of the domain names at issue in this 

matter on Epic Media Group, Connexus and Firstlook, despite acknowledging that NCS is the 

registrant of the domain names. Memo at 16. Plaintiff‘s argument in this regard, contained in a 

single paragraph of what is otherwise a fifty-four page document, is lacking. Said paragraph 

makes no mention of Epic Media Group at all. Moreover, Firstlook (the parent company of 

NCS) and Connexus Corporation (the parent company of Firstlook) are separate and distinct 

Delaware corporations in good standing whose corporate form cannot be disregarded on a whim. 

See Epic Media Group‘s Motion for Summary Judgment at 4 (Docket No 178); Wallace ex rel. 

Cencom Cable Income Partners II, L.P. v. Wood, 752 A.2d 1175, 1183 (Del. Ch. 1999) 

(―‘Persuading a Delaware court to disregard the corporate entity is a difficult task.‘‖) (citations 

omitted). 

What little Plaintiff does say in that one paragraph is unpersuasive. Plaintiff‘s citations to 

Inwood and Gucci are inapposite as neither case involved a claim under the ACPA, and, 

therefore, neither case helps this Court discern whether to impose either direct or contributory 

cybersquatting on Connexus or Firstlook or provides any guidance in conducting an alter ego 

analysis. Solid Host involved an ACPA claim but, in a unique context, which caused the court to 

readily acknowledge, ―[s]everal of the statutory interpretation questions before the court stem 

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from the parties‘ efforts to apply the ACPA to a situation that does not involve traditional 

cybersquatting.‖ Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1102 (C.D. Cal. 

2009). Lastly, in Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 647 (E.D. 

Mich. 2001), the Court actually ruled that contributory cybersquatting could only exist in 

―exceptional circumstances‖ and dismissed the Plaintiff‘s claim for contributory liability for 

failure to allege such exceptional circumstances.

Lastly, even if Firstlook could be held liable for direct infringement because the Firstlook 

team performed work on behalf of NCS, there is no evidence that the Firstlook team performed 

work on behalf of Connexus. Even if Connexus paid all of its subsidiaries‘ employees through a 

single EIN, there is no evidence that these employees were performing work on behalf of

Connexus as opposed to the subsidiary for which they worked. Put differently, Firstlook 

employees (like Seth Jacoby, Mavi Llamas, Donnie Misino, and Dennis Rhee) worked on behalf 

of Firstlook not Connexus. Similarly, employees of other subsidiaries, such as Traffic 

Marketplace, Netblue Vietnam, and/or Matchpoint (other Connexus subsidiaries that are not a 

party to this action) worked on behalf of that particular subsidiary not Connexus. Thus, the 

theory of ―direct infringement‖ can only apply at Firstlook. 

In addition, Plaintiff‘s Motion contains no evidence or argument that these subsidiaries

ever commingled their employees, assets or liabilities such that the distinction as between 

Connexus, Firstlook, Traffic Marketplace, Netblue Vietnam, and Matchpoint can be ignored. 

Compare Declaration of David Graff, filed July 15, 2011 (Docket No. 179) at Ex. G (showing 

that accounting system has different ledgers for Connexus, Firstlook, Traffic Marketplace, 

Netblue Vietnam, and Matchpoint) and Ex. H (showing that Connexus‘s financial documents 

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distinguish as between Connexus and Firstlook, Traffic Marketplace, and Netblue Vietnam 

(NBVN))7.

For the foregoing reasons, the Court cannot find Epic Media, Connexus, and Firstlook 

liable under any theory as a matter of law. At best, there is a question for the jury as to whether 

Firstlook can be liable, but, in actuality, Epic Media and Connexus are entitled to summary 

judgment on all of Plaintiff‘s claims. Epic Media has already brought a motion requesting that 

judgment, and Connexus will seek that judgment at trial.

IV. CONCLUSION

Plaintiff‘s Motion is unsupported by admissible evidence and legally flawed. The Court 

should deny Plaintiff‘s Motion and, instead, grant the Connexus Defendants‘ Motion for 

Summary Adjudication. 

Dated: August 15, 2011 Respectfully Submitted,

/s/William A. Delgado

William A. Delgado 

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

 

7 Matchpoint is now defunct.

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CERTIFICATE OF SERVICE

I hereby certify that on August 15, 2011, 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)

Brian A. Hall (P70865)

TRAVERSE LEGAL, PLC

810 Cottageview Drive, Unit G-20

Traverse City, MI 49686

231-932-0411

enrico.schaefer@traverselegal.com

brianhall@traverselegal.com

Lead Attorneys for Plaintiff

Anthony P. Patti (P43729)

HOOPER HATHAWAY, PC

126 South Main Street

Ann Arbor, MI 48104

734-662-4426

apatti@hooperhathaway.com

Attorneys for Plaintiff 

Nicholas J. Stasevich (P41896)

Benjamin K. Steffans (P69712)

BUTZEL LONG, P.C.

150 West Jefferson, Suite 100

Detroit, MI 48226

(313) 225-7000

stasevich@butzel.com

steffans@butzel.com

Local Counsel for Defendants

William A. Delgado 

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

/s/William A. Delgado

William A. Delgado 

WILLENKEN WILSON LOH & LIEB LLP

707 Wilshire Boulevard, Suite 3850

Los Angeles, CA 90017

(213) 955-9240

williamdelgado@willenken.com

Lead Counsel for Defendants

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