NOT FOR PUBLICATION UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

SHINGLE SPRINGS BAND OF MIWOK INDIANS , P laintiff

- Appell ee ,

v. CESAR CABALLERO ,

Defendant

- Appellant

. No. 13

- 15 411 D.C. No. 2:08

- cv - 03133

- JAM

- AC

MEMORANDUM *

Appeal from the United States District Court for the Eastern District of California John A. Mendez , District Judge, Presiding Argued and Submitted September 1 , 2015 San Francisco, California Before: GRABER and WATFORD, Circuit Judges, and FRIEDMAN, ** District Judge.

* This disposition is not appropriate for publication and is not precedent except as provided by 9th Cir. R. 36

- 3.

** The Honorable Paul L. Friedman, United States District Judge for the District of Columbia, sitting by designation. 

# FILED

NOV 19 2015 MOLLY C. DWYER, CLER K U.S. COURT OF APPEAL S2

1. Plaintiff

- Appellee Shingle Springs Band of Miwok Indians (“t he Tribe ”) alleges that Cesar Caballero infringe d various tradema rks related to the Tribe and a casino it owns and operates, the Re d Hawk Casino, in violation of the Lanham Act, the California Business and Professions Code, and common law, and that Caballero cybersquatted on related domain names . Th e dis t rict court granted summary judgment to the Tribe on those claims and permanently enjoined Caballero from using the marks in any way. Caballero appeals the district court’s judgment. The trademarks allegedly infringed by Caballer o fall into two categories: (1) marks related to the Tribe and its Rancheri a (the “Tribal M arks”) ; and (2) the “Red Hawk Casino M ark

. ” The latter mark is registered with the United States
Patent an d Trademark Office; the Tribal M arks are not. 2. We have jurisdiction over Caballero’s appeal pursuant to 28 U.S.C. § 1291, and review the district court’s grant of summary judgment de novo. Hexcel Corp. v. Ineos Polymers, Inc. , 681 F.3d 1055, 1059 (9th Cir. 2012). To obtain summary judgment, the moving party

— i n this case the Tribe

— has the burden of establishing the absence o f a ny genuine dispute of material fact and its entitlement to judgment as a matter of law

. Celotex Corp. v. Catrett , 477 U.S. 317, 32 2

- 2 3 (1986). A n issue of material fact is genuine “if the evidence is such that a3

reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). We must view the evidence in the light most favorable to the non movant and draw all r easonable inferences in the

non movant’s favor. Clicks Billiards , Inc. v. Sixshooters , Inc. , 251 F.3d 1252, 1257 (9th Cir. 2001). We reverse an d remand for further proceedings

. 1
3. Fo r both the unregistered Tribal M arks and the registered Red Hawk Casino M ark, under the Lanham Act, the Tribe must show that Caballero used t he marks “in connection with . . . goods or services” to establish infringement. 15 U.S.C. § 1125 (a)(1) (unregistered marks); 15 U.S.C. § 1114(1) (a) (registered marks) (requiring “use in commerce . . . in connection with the sale, offering for sale, distribu tion, or advertising of any goods or services”). The Tribe primarily points to the following evidence to demonstrate that Caballero used the Tribal
M arks in connection with a good or service: (1) C aballero’s statements at a deposition that his rival tribe provides “association services,” “welfare services,” “employment services,” and “speci al event services ” ; and (2) Caballero’s website,

1 We decline to consider Caballero’s argument that the Tribal Marks are invalid because they identify an ethnic group, nor do we consider his related contention that the Tribe’s trademark claims hinge on a d etermination of its “legitimacy ” a s the federally recognized tri be. These arguments were not sufficiently developed before the district court nor squarely raised on appeal . In any event, we need not ad dress them because we conclude that the Tribe failed to meet its burden on summary judgment.4

www. shinglespringsreservation.com, which provided an email address under the heading “Enrollment Questions.” This evidence fails to carry the Tribe’s burden on summary judgment

. There is insufficient e vidence in the record to prove that Caballero offered “association services” within the meaning of the Lanham Act . Caballero’s own vague and conclusory st atem ents are insufficient to establish that Caballero or his t ribe provided or offered any services. The only remaining factual support for the Tribe’s allegations is a snapshot of Caballero’s website depicting a contact email address for those with “Enrollment Questions,” which, standing on its own, does not support the grant of summary judgment. Even i f the “Enrollment Questions” heading on his website could be construed as constitut ing an offer of memb ership

— what Caballero refers to as “association services”

— solicitation of members in and of itself is insufficient to constitute an offer of a servic e without evidence as to what those prospective members would be joining. As to the Red Hawk Casino
M ark, the Tribe has failed to present any evidence that Caballero used the mark in connection with a good or service. On the present record, no reasonable jury could conclude that Caballero offered or provided any service in connect ion with his use5

of either the Triba l Marks or the Red Hawk Casino M ark. 2
4. The Tribe also is not entitled to summary judgment on the cybersquatting claim s . To establish liability under the Anti

- Cybersquatting Consumer Protection Act , the Tribe must show that, by registering, trafficking in, or using a domain name identical or confusingly similar to a protected mark, 15 U.S.C. § 1125(d)(1)(A)(ii), Caballero acted with “ bad faith i ntent to profit from that mark, ” 15 U.S.C. § 1125(d)(1)(A)(i); see DSPT Int’l, Inc. v. Nahum , 624 F.3d 1213, 1218

- 19 (9th Cir. 2010). “The ‘intent to profit’ . . . means simply the intent to get money or other valuable consideration,” id . at 1221, and may include using the domain name “to get leverage in a business dispute , ” i d . at 1219. There is no

e vidence in the record

— not even in Caballero’s brief exchange with the Tribe’s counsel at his deposition

— t hat Caballero intended to profit by using the dom ain

2 Because the parties agree that the Tribe’s state law claims follow dire ctly from its federal claims , we also reverse the district court’s grant of summary judgment to the Tribe on its state law claims. See Seltzer v. Green Day, Inc. , 725 F.3d 1170, 1180 n.1 (9th Cir . 2013) (We have “consistently held that state common law claims of unfair competition and actions pursuant to California Business and Professions Code § 17200 are ‘substantially congruent’ to claims made under the Lanham Act.”) (quoting Cleary v. News Cor p. , 30 F.3d 1255, 1262

- 63 (9th Cir. 1994)) ; Jada Toys, Inc. v. Mattel, Inc. , 518 F.3d 628, 632 (9th Cir. 200 8 ) (California state law trademark infringement claims “are subject to the same test” as federal claims under the Lanham Act); Mallard Creek Indus., Inc. v. Morgan , 56 Cal. App. 4th 426, 435 (Cal. Ct. App. 1997).6

names involving the Tribal M arks or the domain names i nvolving the Red Hawk Casino M ark , either in the traditional sense or as exerting pressure on the Tribe to gain an advantage in a business dispute . The Tribe therefore has failed t o provide sufficient evidence on this statutory element of its claims for cybersquatting. 3 Whether the parties may be permitted to supplement the record and file additional motions for summary judgment, as to both the trademark and cybersquatting claims, are matters that we leave to the district court’s discretion on remand. REVERSED AND REMANDED.

3 Because we conclude that the Tribe has failed t o show evidence of bad faith intent to profit, we do not reach the question with respect to a separate requisite statutory element : whether the domain names at issue were “identical or confusingly similar to a protected mark owned by the plaintiff.” DSPT Int’l, Inc. , 624 F.3d at 1218

- 19

.Shingle Springs B a nd of M i wok India n s v. C a ba lle ro, No. 13-15411
GR AB ER , C irc u it Judge , c o n c urring in pa rt a n d disse nting in pa

rt:
I a gre e with the m a

jority tha t the distric t c ourt e rre d in gra nting sum m a ry judgm e nt to Pla i ntiff on the c la im s re la te d to the R e d Ha wk C a sino M a rk.
Ac c ordingly , I c onc ur in tha t pa rt of the judgm e nt. B ut I disa gre e with the

m a jority a s to the c l a im s re l a te d to the Triba l M a rks. I would a ffirm a s to those

c la im s. Ac c ordingly , I disse nt from tha t pa rt of the judgm e nt. Sum m a ry judgm e nt for the Tribe is a ppropria te on the tra de m a rk c la im with

re spe c t to the Triba l M a rks. De fe nda nt ha s re giste re d for a

fic titious busine ss

na m e in the Tribe ’ s na

m e , le a ding to a

proof of public a t ion tha

t he wa s doing busine ss unde r the Tribe ’ s na m e ; he re c e ive d a

busine ss lic e nse in the Tribe ’ s

na m e ; he ope n e d ba

nk a c c ounts in the

Tribe ’ s na

m e ; he re c e ive d

a n e m ploy e r ide n tific a tion num

be r from the IR S in the Tribe ’ s na m e ; he re giste re d dom a in

na m e s using va

ria tions on the

Tribe ’ s na

m e ; he c rim ina l ly

a t te m pte d to dive rt the Tribe ’ s m a i l to his own a ddre s s; he c a l le d a B e rke le y m use um a bout e fforts by

the Tribe to re pa tria te triba l a rtifa c ts; he re pre se nte d him se lf a s " the c hie f of the Shingle Springs B a nd of M i wok India n s" a nd told the

m use um ’ s re p a tria t ion

c oordina tor not to c ontinue he r c onta c ts with the Tribe ; a nd his we bsite invite s visitors to e m a il him with a ny " Enrollm e nt Que stions." In m y vie w, those

a c tions— the fa c t of whic h a

re not dispute d by

De fe nda nt— a re highly like ly to 

# FIL ED

N OV 19 2015

M OLLY C. DW Y ER, CLERK U

. S. CO URT O F APPEALSc a

use c onfusion be c a

use gove rnm e nta l e n t itie s a n d m e m be rs of the public would be c o nfuse d a

bout whe the r De fe nda

nt re pre se nts the fe d e ra lly re c ogniz e d tribe

. Se e C om m
. for Ida ho’ s High De se rt, Inc

. v. Yost (C IHD), 92 F.3d 814, 823 (9th
C ir. 1996) (" The a c t s tha

t the individua l a

ppe lla nts pe rform e d inc lude d

the form a tion of the a

ppe lla n t c orpora tion unde r the na m e ‘ C om m itte e for Ida h o’ s High De se rt, Inc .’ a nd Hoffm a n 's te stim ony

— unde r the title of pre side nt of C IHD, with the inte n t ‘ to a dd to his c re dibility a s a n e nvironm e n ta list’

— a t

a U.S. Air
Forc e he a ring in fa

vor of a n a ir forc e tra ining ra

nge in southe rn Ida

h o. . . . [T] he se

a c ts would be suffic ie nt to re nde r the individua l a ppe lla nts lia b l e unde r [the
La nha m Ac t] for using in c om

m e rc e , in c onne c tion with se rvic e s, a na m e whic h is like ly to c onfuse ." (e m

pha sis a dde d) (c i ta tions om itte d)).
For re la t e d re a sons, sum

m a ry judgm e nt for the Tribe a lso is a ppropria te on the c y be rsqua tting c la im

with re spe c t

to the Triba l M a rks. Se e 15 U.S.C

. § 1125(d)(1)(B )(i)(V) (pe rm itting a c ourt to c onside r, whe n de te rm ining ba d fa ith,

" the i nte nt to ta

rnish or dispa

ra ge the m a

rk, by c re a ting a like lihood of c onfusion a s to the sourc e , sponsorship, a ffilia tion, or e n dorse m e nt of the site " (e m p ha sis

a dde d)).
In sum m a ry , I would a ffirm

the distric t c ourt’ s gra

nt of sum m a ry judgm e nt on the c l a im s re l a te d to the Triba l M a rks a nd re ve rse the distric t

c o urt’ s gra nt of

2sum

m a ry judgm e nt on the c la im s re la te d to the R e d Ha wk C a sino M a rk. I the re fore c onc ur in pa

rt a nd disse nt in pa

rt.

3