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Lemond v. Stinchfield

United States District Court, D. Minnesota

August 14, 2017

GREGORY J. LEMOND, Plaintiff,
v.
FREDERICK HAROLD STINCHFIELD a/k/a Frederick Harold Stinchfield, II, and FREDERICK HAROLD STINCHFIELD a/k/a Frederick Harold Stinchfield, III, Defendants.

          Karl C. Procaccini and Lawrence M. Shapiro, GREENE ESPEL PLLP, 222 South Ninth Street, Suite 2200, Minneapolis, MN 55402, for plaintiff.

          Frederick Harold Stinchfield II and Frederick Harold Stinchfield III, 2255 Abingdon Way, Long Lake, MN 55356, pro se defendants.

          MEMORANDUM OPINION AND ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION

          JOHN R. TUNHEIM Chief Judge

         Plaintiff Gregory J. LeMond brings this action against Defendants Frederick Harold Stinchfield, II, (“Stinchfield II”) and Frederick Harold Stinchfield, III, (“Stinchfield III”) (collectively, “Defendants”), alleging claims under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”). LeMond contends that sixty-six domain names, which Defendants registered and control, are identical or confusingly similar to LeMond's name or trademarks.

         LeMond now moves for a preliminary injunction. Because the Court finds LeMond has established a likelihood of success on his ACPA claims, LeMond has shown a threat of irreparable harm, Defendants will suffer no harm in complying with the preliminary injunction, and the public interest favors providing preliminary relief, the Court will grant LeMond's motion.

         BACKGROUND

         LeMond is a former professional cyclist and three-time winner of the Tour de France; he was “an early adopter and proponent of carbon fiber technology in cycling, ” (Decl. of Gregory J. LeMond ¶ 2, June 15, 2017, Docket No. 8). LeMond has used the LEMOND brand and trademark since at least 2004.[1] (Id. ¶¶ 4, 6.) In early 2016, LeMond founded two new companies - LeMond Companies, LLC and LeMond Composites, LLC - as part of a “venture focused on developing low-cost carbon fiber technology and producing and selling low-cost carbon fiber.” (Id. ¶ 1.) The new companies market their carbon fiber products under the trademark GRAIL.[2] (Id. ¶¶ 5-6.) In late-August 2016, LeMond publicly announced some of his plans regarding his companies. (Id. ¶ 3.)

         At issue are the following sixty-six domain names (the “Domain Names”) containing LeMond's name or one of his marks:

1)

grailadvantage.com

34)

lemondaviation.net

2)

grailadvantage.info

35)

lemondcompanies.com

3)

grailadvantage.net

36)

lemondcompanies.us

4)

grailadvantage.org

37)

lemondcompaniesllc.com

5)

grailaerospace.com

38)

lemondcompaniesllc.info

6)

grailautomotive.co

39)

lemondcompaniesllc.net

7)

grailautomotive.com

40)

lemondcompaniesllc.org

8)

grailcarbon.us

41)

lemondcomposites.cc

9)

grailcarbonfibercomposites.com

42)

lemondcomposites.tech

10)

grailcomposites.com

43)

lemondcomposites.us

11)

grailmethod.com

44)

lemondexpose.com

12)

grailrevolution.co

45)

lemondgrail.com

13)

grailrevolution.com

46)

lemondhybrids.com

14)

grailrevolutionaryfiber.com

47)

lemondindustries.com

15)

grailwindenergy.com

48)

lemondindustries.info

16)

grailwindenergy.info

49)

lemondindustries.net

17)

grailwindenergy.net

50)

lemondindustries.org

18)

grailwindenergy.org

51)

lemondmanufacturing.com

19)

greglemond.news

52)

lemondmanufacturing.info

20)

greglemondexposed.com

53)

lemondmanufacturing.net

21)

greglemondgonewild.com

54)

lemondmanufacturing.org

22)

lemond.company

55)

lemondsolutions.com

23)

lemond.mobi

56)

lemondsolutions.info

24)

lemond.news

57)

lemondsolutions.net

25)

lemond.tv

58)

lemondsolutions.org

26)

lemond.ws

59)

lemondtechnologies.com

27)

lemondalloys.com

60)

lemondtechnologies.info

28)

lemondautomotive.com

61)

lemondtechnologies.net

29)

lemondautomotive.info

62)

lemondtechnologies.org

30)

lemondautomotive.net

63)

lemondwindenergy.com

31)

lemondautomotive.org

64)

lemondwindenergy.info

32)

lemondaviation.com

65)

lemondwindenergy.net

33)

lemondaviation.info

66)

lemondwindenergy.org

(Decl. of Joseph B. Shapiro (“Shapiro Decl.”) Ex. A, June 15, 2017, Docket No. 10.) Based on a review by a digital forensics consultant, all of these domain names are registered to “F H Stinchfield II, ” list Defendants' shared home address as the registrant's address, and list Stinchfield III's email address - hal.stinchfield@gmail.com - as the registrant's email address. (Id. ¶¶ 1-4 & Ex. A.) All of the Domain Names were registered in September or October 2016. (Id., Ex. A.) Several additional domain names registered to hal.stinchfield@gmail.com contain the name or registered mark of other well-known people, including Huma Abedin, Anthony Weiner, Rihanna, Leanne Rimes, and Wheelock Whitney. (Id. ¶ 4 & Ex. B.)

         Until recently, one of the Domain Names (lemondindustries.com) hosted a website titled, “LeMond Industries, ” which consisted of blog posts containing “derogatory allegations about LeMond and his businesses.” (Decl. of Kelly Harris (“Harris Decl.”) ¶¶ 8, 10, 14, June 15, 2017, Docket No. 9.) The “LeMond Industries” site also contained pictures of LeMond and third-party advertisements. (Id. ¶¶ 8-9.) The website included approximately twenty-five blog posts made since June 2, 2017. (Id. ¶ 10.) One post, from June 8, 2017, was titled “LeMond-Related Domains for Sale!” and offered some of the Domain Names for sale with prices available “on inquiry.” (Id. ¶ 11.) By the next day, this post was updated to add “Get these domains for cheap before they are sent to auction!” and to change the email address accepting price inquiries from “Sales@lemondindustries.com” to “BuyLeMondDomains@yahoo.com.” (Id. ¶¶ 11-12.) In a post referencing the sale of domains dated June 10, 2017, the author stated that he or she hoped that “someone from the LeMond Composites team would reach out” and that “[t]he amount of traffic driven by the URLS in the list runs in the 1000s per day with no original content.”[3] (Id. ¶ 13.)

         LeMond brought this ACPA action on June 15, 2017. (Compl., June 15, 2017, Docket No. 1.) LeMond seeks damages, forfeiture of the Domain Names, an injunction preventing Defendants from registering, using, or trafficking in the Domain Names or similar domain names, and attorney fees and costs. (Id. at 14.)

         LeMond moved for a temporary restraining order and a preliminary injunction the day he filed the complaint. The Court held a status conference on the motion on June 21, 2017. The Court then granted in part LeMond's request for a temporary restraining order, preventing Defendants from transferring or selling the Domain Names and prohibiting Defendants from registering any additional domain names that incorporate or were confusingly similar to LeMond's name or marks. (Order, June 21, 2017, Docket No. 21.)

         The Court held a hearing on LeMond's preliminary injunction motion on July 6, 2017, at which Defendants appeared pro se. Stinchfield II asserts that he had no involvement in the registration or use of the Domain Names. (Stinchfield II Answer, June 27, 2017, Docket No. 24.) Stinchfield III contends that other parties registered the Domain Names, [4] (Stinchfield III Answer at 1, July 6, 2017, Docket No. 31), but he also admitted at the hearing that he had access to and control over the Domain Names and that he had posted on the “LeMond Industries” site.

         ANALYSIS

         I. STANDARD OF REVIEW

         In deciding whether to grant a preliminary injunction, the Court considers four factors: “(1) the threat of irreparable harm to the movant; (2) the state of balance between this harm and the injury that granting the injunction will inflict . . .; (3) the probability that [the] movant will succeed on the merits; and (4) the public interest.” Grasso Enters., LLC v. Express Scripts, Inc., 809 F.3d 1033, 1036 n.2 (8th Cir. 2016) (quoting Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981) (en banc)).

         II. LIKELIHOOD OF SUCCESS ON THE MERITS

         LeMond contends that he is likely to succeed on the merits on his ACPA claims.[5]ACPA amended the Lanham Act, providing additional protection against “cybersquatting” - defined as “registering or using with a bad faith intent to profit a domain name that is confusingly similar to a registered or unregistered mark or dilutive of a famous mark.” Coca-Cola Co. v. Purdy, 382 F.3d 774, 778 (8th Cir. 2004) (citing 15 U.S.C. § 1125(d)). Congress enacted ACPA in part due to “concern about individuals registering domain names that are similar to famous marks for the purpose of profiting by selling them to the legitimate owners of the marks.” Id. “ACPA was intended to balance the interests of trademark owners against the interests of those who would make fair uses of a mark online, such as for comment, criticism, parody, and news reporting.” Id.

         To determine if there was an ACPA violation, the Court must consider whether (1) the marks were distinctive or famous at the time of the registration of the Domain Names, (2) the Domain Names are identical or confusingly similar to the marks, (3) Defendants registered, trafficked, or used the Domain Names, and (4) Defendants did so with bad-faith intent to profit from the marks. 15 U.S.C. § 1125(d)(1)(A).

         A. Distinctive or Famous Marks

         The first question is whether LeMond's marks were distinctive or famous at the time the Domain Names were registered. LeMond contends that at the time of the registration of the Domain Names both the LEMOND and GRAIL ...


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