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Hanley-Wood LLC v. Hanley Wood LLC

May 10, 2011


The opinion of the court was delivered by: James E. Boasberg United States District Judge


Before the Court is Plaintiff's Motion for Entry of Default Judgment. This case is an action for legal and equitable relief under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), and the common law tort of unfair competition.*fn1 Defendants Hanley Wood, LLC and Mutual Companies, LLC were served on July 13, 2010, and they have failed to answer or otherwise defend this action. The Clerk of Court entered a default on October 29, 2010, and Plaintiff has now moved for entry of default judgment pursuant to FED. R. CIV. P. 55(b)(2). On April 8, 2011, the Court gave Defendants one final opportunity to show cause why a default judgment should not be entered. They did not respond.

The determination of whether a default judgment is appropriate is committed to the discretion of the trial court. Jackson v. Beech, 636 F.2d 831, 836 (D.C. Cir. 1980). For a default judgment to enter, a defendant must be considered a "totally unresponsive" party and its default plainly willful, reflected by its failure to respond to the summons and complaint, the entry of default, or the motion for default judgment. Gutierrez v. Berg Contracting Inc., No. 99-3044, 2000 WL 331721, at *1 (D.D.C. March 20, 2000) (citing Jackson, 636 F.2d at 836). Given "the absence of any request to set aside the default or suggestion by the defendant that it has a meritorious defense," it is clear that the standard for default judgment has been satisfied here. Id.

The Court has reviewed Plaintiff's Complaint and finds that it sufficiently alleges facts to supportPlaintiff's claims of trademark infringement, cybersquatting, and unfair competition. The Court will therefore grant the relief requested.

I.Lanham Act

Plaintiff first claims that Defendants have infringed on its valid trademarks in violation of the Lanham Act. To prevail on this count, "the plaintiffmust show (1) that it owns a valid trademark, (2) that its trademark is distinctive or has acquireda secondary meaning, and (3) that there is a substantial likelihood of confusion between theplaintiff's mark and the alleged infringer's mark." Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1, 26 (D.D.C. 2006)(internal quotation marks omitted). Plaintiff has sufficiently pled that it owns valid trademarksthat have a secondary meaning and that there is a substantial likelihood of confusion, seeCompl. at ¶¶ 10-11, 29, 31-37, 41-43, and Defendants' default admits these facts.

Plaintiff requests injunctive relief under the Lanham Act to prevent further violations ofPlaintiff's trademark rights. See 15 U.S.C. § 1116 (authorizing same). "In determiningwhether to enter a permanent injunction, the Court considers a modified iteration of the factors itutilizes in assessing preliminary injunctions: (1) success on the merits, (2) whether the plaintiffswill suffer irreparable injury absent an injunction, (3) whether, balancing the hardships, there isharm to defendants or other interested parties, and (4) whether the public interest favors grantingthe injunction." American Civil Liberties Union v. Mineta, 319 F. Supp. 2d 69, 87 (D.D.C.2004).

As discussed above, Plaintiff has succeeded by default on the merits of theinstant action. Plaintiff has also shown, in its Motion for Default Judgment and the attachedaffidavit of Douglas C. Herbert, that Defendants have continued to infringe on its trademarks despite several informal demands to cease and desist, along with the filing of this lawsuit. SeeMem. to Motion at 7-8.Generally, trademark infringement, by its very nature, carries a presumption ofharm. SeeHealth Ins., Ass'n of America v. Novelli, 211 F. Supp. 2d 23, 28 (D.D.C. 2002)(citing Appleseed Foundation Inc. v. Appleseed Inst., Inc., 981 F.Supp. 672, 677 (D.D.C. 1997)).The Court further agrees that Defendants' continuing disregard for Plaintiff's rightsdemonstrates that Defendants will continue to infringe on Plaintiff's rights absent an injunction.This finding alone entitles Plaintiff to a permanent injunction. Walt Disney Co. v. Powell, 897F.2d 565, 567 (D.C. Cir. 1990) ("When a copyright plaintiff has established a threat ofcontinuing infringement, he is entitledto an injunction.") (citing Universal City Studios v. Sony Corp. of America, 659 F.2d 963, 976 (9th Cir. 1981)) (emphasis in original). The Court, moreover, finds that an injunctionwould not harm others, and that the public interest favors protecting against further violation offederal copyright and trademark laws. The Court, accordingly, concludes that Plaintiff is entitledto a permanent injunction as requested in its Motion.

The Lanham Act authorizes this Court to issue an injunction "upon such terms as the court deems reasonable." 15 U.S.C. § 1125(c).Here, Plaintiff requests this Court to permanently enjoin Defendants from:

(1) [U]sing in any manner the marks and/or names "Hanley Wood" or "World of Concrete" or any variation of those marks and names, including but not limited to continuing to register, use, market, sell, offer for sale, dispose of, transfer, display, advertise, reproduce, or make available any services and/or products bearing such marks and/or names or any variation thereof which is likely to cause confusion, mistake, or deception among members of the trade and public, and from participating or assisting in any such activity, including, but not limited to, domain names, directory names, metatags, hyperlinks, or any computer address to identify Defendants' web site or in connection with the retrieval of data or information, or other goods and services which are likely to conflict with Plaintiff's pre-existing rights in the marks and/or names "Hanley Wood" and "World of Concrete";

(2) [R]epresenting by any means whatsoever, directly or indirectly, that Defendants, and any products or services offered by Defendants, including information services provided via Defendants' web sites, the Internet or otherwise, are affiliated or associated in any way with, or sponsored by, Plaintiff Hanley-Wood, LLC, or its goods or services, and from otherwise taking any other action likely to cause confusion, mistake or deception on the part of consumers including, but not limited to, Internet users concerning the relationship or lack of relationship between Plaintiff and Defendants;

(3) [D]oing any other acts calculated or likely to cause confusion or mistake in the mind of the public or to lead consumers including, but not limited to, Internet users into believing that Defendants' goods or services come from, or are the goods or services of, Plaintiff Hanley-Wood, LLC, or are somehow sponsored or underwritten by, or affiliated with, Plaintiff Hanley-Wood, LLC, and from misappropriating the goodwill represented by the make and name, which rightfully belongs to Plaintiff Hanley-Wood, LLC;

(4) [F]orming, registering, or participating in the management of any business entity that contains in its name the words "Hanley" ...

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