By Robert AngleIn Coach, Inc., v. 1941 coachoutletstores.com, Civil
Action No. 1:11cv309 (JCC/JFA) [enhanced version available to lexis.com subscribers], Coach, Inc., the well-known leather
goods company, sought to enjoin 356 alleged cybersquatters - almost all
of which registered domain names in Hong Kong or China - from using
Coach's registered trademarks as part of the alleged cybersquatters'
domain names. The problem from Magistrate Judge Anderson's perspective,
however, was that many of these 356 alleged cybersquatters were
unrelated to each other, and therefore Coach could not meet the
"transaction or occurrence" test for joinder under Fed. R. Civ. P.
20. Thus, when Coach filed a motion for entry of default judgment,
Magistrate Judge Anderson issued Report and Recommendation on Nov. 25,
2011, that found joinder improper as to 345 alleged cybersquatters, and
recommended severing those defendants from the action.
As Magistrate Judge Anderson explained in a detailed, 28 page opinion:
Simply put, the evidence presented is insufficient to establish that Coach's claims against all
of the defendant domain names are related, that they arise from the
same transaction or occurrence, or that there is any joint action among all the defendant domain names that warrants relief under the ACPA in a single action.
at 15. Magistrate Judge Anderson went on to recommend finding that the
remaining 11 the defendant domain names violated the Anticybersquatting
Consumer Protection Act (ACPA). A copy of Magistrate Judge Anderson's
Report and Recommendation can be found here.
quickly appealed the Report and Recommendation, and Senior District
Judge James C. Cacheris just as quickly rejected Magistrate Judge
Anderson's recommendation on misjoinder. On January 5, 2012, in a short,
5 paragraph Judgment and Order, Judge Cacheris found that the additional 345 defendant domain names had been properly joined,
and thus modified Report and Recommendation to require that all 356
defendant domain names be transferred to Coach. While Judge Cacheris's
decision (found here)
certainly favors expediency in a world of increasing numerous foreign
cyberquatters, his opinion offers no explanation for why he disagreed
with Magistrate Judge Anderson, where he found commonality between the
356 defendant domain names, or whether he interpreted Rule 20 or the
ACPA differently than Magistrate Judge Anderson. Only time will tell
whether litigants can continue to include multiple, unrelated
cybersquatters in a single action or must bring separate actions against
each of them.
Copyright © 2012, Troutman Sanders LLP
Virginia intellectual property lawyers &
attorneys of Troutman Sanders Law Firm, offering services related to
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and unfair competition, serving Virginia, Maryland, Washington D.C. and
the Eastern United States.
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