Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA221298
`ESTTA Tracking number:
`06/30/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048700
`Defendant
`GoPets, Ltd.
`Jenifer de Wolf Paine
`Proskauer Rose LLP
`1585 Broadway
`New York, NY 10036
`UNITED STATES
`jpaine@proskauer.com
`Other Motions/Papers
`Jenifer deWolf Paine
`jpaine@proskauer.com, trademark@proskauer.com
`/Jenifer deWolf Paine/
`06/30/2008
`GOPETS TTAB Filing.pdf ( 54 pages )(4571879 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EDWARD I-IISE
`
`Petitioner
`
`V.
`
`GOPETS, LTD.
`
`Registrant
`
`Cancellation No. 92048700
`
`'
`
`Mark: GOPETS
`
`NOTIFICATION OF DISPOSITION OF CIVIL ACTION
`
`Registrant , GoPets Ltd. (”GoPets” or ”Registrant”) hereby notifies the Board that the
`
`Civil Action between the Parties has been resolved in Registrant's favor.
`
`On February 12, 2008, Registrant moved to dismiss the Petition to Cancel or, in the
`
`alternative, for suspension of this Proceeding pending the outcome of a then~pending federal
`
`district court civil action between the parties in Los Angeles, California. On March 10, 2008, the
`
`Board issued an Order suspending this Proceeding, and stated that within 20 days after the final
`
`determination of the civil action the parties should notify the Board.
`
`On May 27, 2008, the United States District Court, Central District of California (the
`
`”District Court”) issued an Order granting Plaintiff's (Registrant's) Motion for Partial Summary
`
`Judgment. A copy of the Order is attached as Exhibit A.
`
`One June 10, 2008, the District Court entered an Amended Order, which addressed all of
`
`Plaintiff's remaining claims. A copy of the Amended Order is attached as Exhibit B.
`
`On June 24, 2008, the United States District Court, Central District of California entered
`
`Judgment in favor of Plaintiff (Registrant). A copy of the Judgment is attached as Exhibit C.
`
`Registrant now respectfully requests that this Proceeding be dismissed with prejudice.
`
`

`
`Respectfully submitted,
`
` A/LA}—P. Q9{
`
`r d.eWo1f Paine
`Je
`PROSKAUER ROSE LLP
`
`1585 Broadway
`New York, NY 10036
`Te1.: 212.969.3016
`
`Fax: 212.969.2900
`
`E-Mail: jpaine@pros1<auer.c:om
`
`

`
`Certificate of Service
`
`I hereby certify that on June 30, 2008, I served a copy of the foregoing Notification of
`Disposition of Civil Action on counsel for Petitioner by first class mail as follows:
`
`Stephen H. Sturgeon, ]r., Esquire
`11116 Hurdle Hill Drive
`
`Potomac, MD 20854
`
`A {Q _£4/;—
`\
`deWo1f aine
`
`Ieni
`
`

`
`EXHIBIT A
`
`

`
`E23
`
`E i:; l
`
`l
`
`
`
`Case 2:O7~cv—01870—AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 1 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES — GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`
`
`Title
`
`GOPETS LTD. v. EDWARD HISE, et al.
`
`
`
`Present: The
`Honorable
`
`A. HOWARD MATZ, U.S. DISTRICT JUDGE
`
`
`Stephen Montes
`Not Reported
`
`Deputy Clerk
`Court Reporter / Recorder
`
`Tape No.
`
`Attorneys NOT Present for Plaintiffs:
`
`Attorneys NOT Present for Defendants:
`
`Proceedings:
`
`IN CHAMBERS (No Proceedings Held)
`
`I.
`
`INTRODUCTION
`
`On March 21, 2007, Plaintiff GoPets Ltd. filed suit against Edward Hise, Joseph
`Hise, and Digital Overture, Inc. (“Defendants”), the company that Edward and Joseph
`Hise serve as officers. The complaint alleged cybersquatting in violation of the Anti-
`Cybersquatting Consumer Protection Act (ACPA) with respect to “gopetscom,” service
`mark infringement and unfair competition under the Lanharn Act and state law, service
`mark dilution under the Lanham Act and state law, and false advertising under state law.
`On March 3, 2008, Plaintiff filed a First Amended Complaint to add cybersquatting
`claims with respect to eighteen additional domain names.’
`
`Plaintiff now seeks partial summary judgment on its claims for federal and state
`service mark infringement and unfair competition and its ACPA claims. Plaintiffs seek a
`broad permanent injunction and order requiring Defendants to transfer <gopets.corn> and
`eighteen other domain names to Plaintiff. Plaintiffs also seek statutory damages of
`$100,000 for each of those domain names, for a total of $1,900,000, as well as reasonable
`attorney’s fees and costs.
`
`‘gopetmobi, gopetsname, gopetsmobi, gopetssitecom, goingpetscom, gopet.biz,
`gopetorg, egopetscorn, gopetsbz, gopets.ws, gopet.tv, gopetws, gopet.bz,
`gopetde, gopeteu, gopetname, rnygopetscom and igopetscom.
`CV—90 (06/04)
`CIVIL MINUTES — GENERAL
`
`Page 1 of 22
`
`

`
`Case 2:07—cv-01870~AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 2 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`
`
`GOPETS LTD. V. EDWARD HISE, et al.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Case No.
`
`Title
`
`For the reasons set for below, the Court GRANTS Plaintiffs motion for partial
`summary judgment?
`
`II.
`
`EVIDENTIARY RULINGS
`
`In support of their opposition to Plaintiffs motion, Defendants filed a Statement of
`Genuine Disputed Material Facts (“SGI”) in which they set forth facts (without
`numbering them). Their SGI does not comply with the Court’s requirements because it
`does not indicate which of Plaintiffs asserted undisputed facts they dispute. (The
`declarations described below do contain some references to the SUF.) Moreover,
`Defendants did not number the supposed disputed facts. Out of necessity the Court has
`numbered each of Defendants’ facts according to their placement in the table.
`
`Defendants’ SGI relies solely on the Declaration of Edward Hise and the
`Declaration of Joseph Hise, both dated April 7, 2008. These two declarations are
`identical. Plaintiff objects to nearly every paragraph in those declarations and urges the
`Court to disregard these declarations entirely, principally because they are blatantly self-
`serving. See Villiarimo V. Aloha Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2002)
`(noting that courts may refuse to find a “genuine issue” where the only evidence
`presented is “uncorroborated and self—serving” testimony) (citation omitted). Although
`most of the Hises’ statements are indeed uncorroborated and self—serving, a few of them
`are not. The Court thus rules on Plaintiffs’ objections as follows (these rulings apply to
`both declarations):
`
`The Court sustains Plaintiffs objections to declaration paragraphs 2, 3, 4, 5, 8, 12
`and 13 because the statements in those paragraphs lack foundation in personal knowledge
`and constitute inadmissible opinion and legal argument. The Court sustains Plaintiffs
`objection to sentences 1, 2, 3, and 6 in paragraph 9 for the same reasons, but admits the
`remaining sentences.
`
`3 Dkt No.l28. The Court finds that a hearing is unnecessary. Local Rule 7-15;
`Fed. R. Civ. P. 78. If, however, any party demands a hearing, notwithstanding the
`detailed findings and rulings in this Order, he shall notify the Clerk by not later than May
`30, 2008 (with notice to the other side and a hearin will be held on June 9, 2008.
`CV~90 (06/04)
`CIVIL MINUTES - GENERAL
`
`Page 2 of 22
`
`

`
`Case 2:07-cv—O1870—AHM—VBK Document 197
`
`Filed 05/27/2008
`
`Page 3 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`
`
`GOPETS LTD. V. EDWARD I-IISE, er al.
`
`CV 07~l 870 AHM (VBKX)
`
`Date May 27, 2008
`
`Case No.
`
`Title
`
`The Court sustains Plaintiffs objection to paragraph 16 because the statement
`therein has no relevance to the claims and defenses at issue.
`
`The Court overrules Plaintiffs objection to paragraphs 6 and 7. Defendants do not
`offer the quotation of the WIPO decision to prove the truth of the matter asserted. The
`apparent purpose of paragraphs 6 and 7 is to provide a basis for Defendants’ claim that
`they had reasonable grounds that their use of the domain names was lawful. Paragraphs 6
`and 7 are relevant to Defendants’ intent.
`
`The Court overrules Plaintiffs objections to paragraphs 10 and 15. The Court
`notes that in those paragraphs Defendants contradict their response to Request for
`Admission No. 17, which Magistrate Judge Kenton had ruled that Defendants could not
`withdraw? Nonetheless, Plaintiffs objections go to the weight of Defendants’
`statements, not their admissibility.
`
`The Court ovcrrules Plaintiffs objection to paragraph 17. Although the statements
`are a poor attempt to insinuate that some unidentified third party, such as an “intern,”
`“may have” been responsible for inserting the term “gopets” into the home pages and
`metatags of Defendants’ website, this deficiency goes only to their weight.
`
`Although ‘M 18 and 19 are self—serving, they are admissible.
`
`III.
`
`FACTUAL AND PROCEDURAL BACKGROUND‘
`
`Many of the facts recited herein are already set forth in the minute order granting
`Plaintiffs motion for a preliminary injunction, but the Court will repeat them here to
`account for the summary judgment evidence.
`
`GoPets Ltd. is a Korean company that produces an online virtual community game
`consisting of interactive 3D pets that roam across the Internet, visiting the desktops of
`community members to socialize, play games and create friendships among GoPets
`
`3Docket No. 101.
`
`“All facts are undisputed unless otherwise noted.
`CV-90 (O6/O4)
`CIVIL MINUTES - GENERAL
`
`Page 3 of 22
`
`

`
`Case 2:O7~cv~01870-AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 4 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES — GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`GOPETS LTD. v. EDWARD HISE, et al.
`
`players (the “Game”). Declaration of Erik Bet; "e (“Beti ke Declf’) ‘,1 2. The GoPets
`website is accessed through “gopetslive.com” and “gopets.net.” Id. On or before July
`14, 2004, Plaintiff launched an interactive demo version of its website at
`wwwgopetslivecom. SUF 11 3. The demo version of GoPets' website attracted the
`attention of investors. SUF 11 7. In early August 2004, Plaintiff placed additional content
`on gopetslive.com and began issuing press releases. SUF 1] 4. Plaintiff has continuously
`used the mark GOPETS in connection with the demo and the online community of virtual
`pets located at www.gopetslive.com since July 2004. SUF $1 5. Plaintiffs site has
`attracted media attention in both industry-specific and general publications, beginning as
`early as 2004. SUF ‘ll 6. Plaintiff has attracted investors in the last two years, including
`Liberty Media Corporation, Nexon Corporation, and Tencent Holdings Limited. SUF ‘ll
`8. It has spent approximately $846,033 on advertising and marketing since 2005. SUF ‘ll
`64.
`
`In March 1999, Defendant Edward Hise ("E. Hise") registered the domain name
`<gopets.com> with Network Solutions, LLC. Pl.’s Statement of Undisputed Material
`Facts (“SUF”) 1] 1. Defendants claim in their declarations that Digital Overtures
`registered and paid for that domain name (SGI 1] 6).
`
`On July 2, 2004, Erik Bethke ("Bethke"), CEO of GoPets, wrote to E. Hise and
`asked whether Hise was interested in selling <gopets.com>. SUF 1] 2. On August 11,
`2004, Bethke mailed a letter to E. Hise at several addresses, again inquiring as to a
`possible purchase of <gopets.com>. SUF 11 9. In a reply email dated September 2, 2004,
`E. Hise stated that although he and his company had originally intended to develop a
`website for <gopets.com>, “[t]he website was placed on placed on hold and still is
`today,” and they “will not have time to pursue this endeavor because of the time required
`to keep [their] core business a success.” SUF ‘ll 10. Hise stated he was accepting serious
`bids for domain name and invited Bethke to submit a bid by September 15, 2004. Id.
`
`On September 26, 2004, E. Hise for the first time posted content to <gopets.com>:
`a photo and a description of a lost dog. SUF 1] 11. Defendants state: “Any content that
`may have been posted on <gopets.com> on September 26, 2004 was not the first content
`that had been posted to <gopets.com>.” SGI ‘ll 7. (They do not provide any details or
`evidence other than their declarations of that claimed earlier-posted content.) Defendants
`admit that no products or services were ever offered for sale, nor any advertising was
`
`CV-90 (06/04)
`
`k
`
`CIVIL MINUTES - GENERAL
`
`Page 4 of 22
`
`

`
`Case 2207-CV~O’l870-/\Hl\/|—VBK Document 197
`
`Filed 05/27/2008
`
`Page 5 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES — GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`GOPETS LTD. v. EDWARD HISE, et al.
`
`placed, on any websites bearing the domain names they owned. SGI ‘M 4-5. Defendants
`have not sold any goods or services, offered anything for purchase, or collected any
`mone
`usin < o ets.com>. SUF 46.
`
`3 O
`
`n September 30, 2004, Plaintiff applied to the USPTO for a federal service mark
`registration for GOPETS. SUF 1] 12. Defendants did not object to Plaintiffs application
`to register the GOPETS mark. SUF 1] 13.
`
`Plaintiff launched the GoPets online community, the Game, on or about August 4,
`2005, from gopetslivecom. SUF 11 14. The GoPets Game enjoyed success on a global
`scale, and today has nearly 1,000,000 users world-wide. SUF ii 15. Plaintiff registered a
`number of additional domain names: www.gopetslive.com, www.gopets.net,
`www.gopets.jp, www.gopets.ph, www.gopets.sg, www.gopets1ive.co.kr, www.gopets.us,
`and www.gopets.biz. SUF 1] 16.
`
`In May 2006, GoPets filed a complaint against E. Hise with the World Intellectual
`Property Organization ("WIPO") Arbitration and Mediation Center. SUF ‘ll 17.
`
`Sometime after June 15, 2006, while the WIPO proceeding was pending, E. Hise
`placed some material on <gopets.com> that purported to "provide valuable information to
`assist with loving and caring for animals and pets" and provided links to sites connected
`with pets and their welfare. SUF 1] 18.
`
`On July 26, 2006, the WIPO panel found that GoPets owned the GoPets service
`mark and that <gopets.com> is identical or confusingly similar to the service mark. SUF
`fl 19. The WIPO panel stated that it did not believe E. Hise "has ever had serious plans to
`develop the ’gopets.com' website" and that E. Hise "d[id] himself no favours when after
`seven years of inactivity he creates a simple one page 'website' at the Disputed Domain
`only after the Complaint has been brought." SUF 11 20. The WIPO panel did not find bad
`faith registration of the <gopets.com> domain name because it was registered in 1999,
`before Plaintiff existed. SUF 11 21.
`
`On October 30, 2006, Bethke offered $5,000 to E. Hise to purchase <gopets.com>.
`Declaration of Tanya L. Forsheit $1 8 & Ex. H at 180.
`
`
`
`CV-90 (06/04)
`
`CIVIL MINUTES -— GENERAL
`
`Page 5 of 22
`
`

`
`Case 2:07—cv~01870—AHM~VBK Document 197
`
`Filed 05/27/2008
`
`Page 6 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES ~ GENERAL
`
`
`
`GOPETS LTD. V. EDWARD HISE, er al.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Case No.
`
`Title
`
`On November 7, 2006, the USPTO approved Plaintiffs application to register the
`GOPETS service mark, Registration No. 3,167,446 for GOPETS, for "Entertainment
`services, namely, providing an on—line computer game consisting of virtual pets who
`interact with other virtual pets over the internet." SUF 1} 23. The Certificate of
`Registration for GoPets’ federal service mark indicates August 2004 as the date of first
`use in commerce. SUF 1l 24.
`
`After October 30, 2006 and before November 15, 2006, Defendants registered at
`least five domain names: gopetmobi, gopetsname, gopets.mobi, gopetssitecom,
`goingpetscom. SUF ll 25.
`
`On November 15, 2006, Bethke offered $40,000 to purchase <gopets.c0m>. SUF
`‘ll 26. On November 20, 2006, E. Hise responded to Bethke's November 15, 2006 email,
`stating that Defendants would discuss the offer once "everyone is back in town, and back
`at work." SUF ii 27. The parties continued to exchange emails through December 5,
`2006. SUF 1] 28.
`
`On November 15, 2006, Defendants registered the domain name thegopetscom.
`SUF ‘ll 45.5
`
`Between November 20, 2006 and December 12, 2006, Defendants registered 11
`additional domain names: gopet.biz, gopet.org, egopets.com, gopets.bz, gopets.ws,
`gopet.tv, gopet.ws, gopet.bz, gopetde, gopet.eu and gopet.name. SUF ‘ll 29.
`
`On or about December 12, 2006, Defendants sent an e—mail to Bethke attaching a
`letter dated December 11, 2006. The December 12, 2006 email stated as follows:
`
`We respectfully request that you forward this sensitive information to the
`appropriate Executive Officers at Liberty Media, Liberty Media Interactive,
`Tencent Holdings Ltd, and the Nexon Corporation as soon as it is received.
`
`5This domain name is not named in the FAC because Plaintiff did not learn of it
`until after it filed the FAC.
`CV-90 (06/04)
`CIVIL MINUTES - GENERAL
`Page 6 of 22
`
`

`
`Case 2:07~cv-01870—AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 7 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES — GENERAL
`
`
`
`GOPETS LTD. V. EDWARD HISE, et al.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Case No.
`
`Title
`
`Within 48 hours we will be sending written documentation of this
`correspondence to the general offices of Liberty Media, Liberty Media
`Interactive, Tencent Holdings Ltd, and the Nexon Corporation. We would
`sincerely appreciate if you could also provide the direct lines of
`communication to us."
`
`SUF fll 30. The attached letter stated that Digital Overture, Inc. owned <gopets.com> and
`offered to sell it to Plaintiff for $5,000,000. SUF 1] 31.
`
`The letter from Defendants further stated:
`Any time delays in realizing ownership of the domain would continue to
`confuse newly adopted gopetslivecom users.
`.
`.
`. The domain name will
`eliminate confusion .. .. The brief, yet highly descriptive name, would clear
`up any URL uncertainties for new users.
`.
`.
`. If gopets.com were developed
`further, gopetslive.com may face competitive Meta Tagging .
`.
`. Many
`search engine users would find searching less confusing, increasing their
`chances of landing on your gaming site.
`.
`.
`. Third parties would no longer
`accidentally link to gopets.com.
`
`SUF it 32.
`
`On December 14, 2006, E. Hise transferred <gopets.com> to Digital Overtures,
`Inc. Defendants claim that E. Hise did not transfer ownership because although there was
`a “transfer of names. . .listed on the publicly available WHOIS information,” “at all times
`subsequent to the initial registration of the domain name in March 1999, the domain
`name gopets.com was paid for, owned by and registered on behalf of the business Digital
`Overture.” SGI ii 12.
`
`On January 22, 2007, Plaintiff rejected this offer by letter from its counsel at
`Proskauer Rose LLP. SUF fil 35.
`
`In March 2007, Defendants incorporated Plaintiffs registered mark GOPETS into
`the home page and metatags of Defendants‘ website, without Plaintiffs consent. SUF 11
`38.
`(Defendants contend that there is a factual dispute whether they or someone else,
`
` ___:_¥
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 7 of 22
`
`

`
`Case 2:O7—cv-O1870~AHM—VBK Document 197
`
`Filed 05/27/2008
`
`Page 8 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`GOPETS LTD. V. EDWARD HISE, er al.
`
`such as an “intern,” “may have” incorporated the term “gopets” on the homepage and
`rnetatags. SGI 1] 14.)
`
`As of March 8, 2007, <gopets.com> contained no content other than a link to the
`WIPO Panel‘s decision. SUF1]37. On March 13, 2007, Defendants updated their
`website again to read: "Welcome to gopets.com the official online website. goAhead
`[sic] pet lovers tell your friends that gopets.com will be arriving soon!” SUF 1] 39. On
`March 13, 2007, Defendants updated their website again to read: "Welcome to
`<gopets.com> the official online website. goAhead [sic] pet lovers tell your friends that
`<gopets.com> will be arriving soon!" SUF 1] 40. The fonts used in the <gopets.com>
`and gopetslive.com websites are similar in appearance. SUF 1] 41.
`
`On March 21, 2007, Plaintiff filed this lawsuit. A week later, on March 28, 2007,
`Defendants registered the domain name mygopets.com. SUF 1] 43. On June 17, 2007,
`they registered igopets.com. SUF 1] 44.
`
`In July and August 2007, a number of GoPets users expressed confusion, on a
`public GoPets discussion forum, as to the source and origin of <gopets.com> and as to
`whether <gopets.com> is affiliated with Plaintiff GoPets Ltd. SUF 1] 47.6 For example,
`one consumer wrote in the GoPets "Owner's Lounge" forum in July 2007: "I saw this
`today. http://www.gopets.com. That site never use [sic] to have that logo there.. .
`.
`. is
`there another company surfacing with the same name and idea? (its obvious it’s a pet site
`whether it’s the same type of pet site is questionable but . .wouldnt [sic] GP have the
`rights to the name?) Or was this like.. a really old version of GoPets or something?" and
`". .
`. theres [sic] still the whole concern as to people getting confused by the other site
`which has the exact same name and not only that uses the more commonly keyed in web
`address .
`. .Snow: At least Irn [sic] not the only one completed irked by it LOL." SUF ]]
`48. Another consumer wrote in the "Owner’s Lounge" forum in July 2007: "I just hope
`the banner won't mislead GoPets users. If someone tells them about GoPets, chances are
`they'll type in gopets.corn and be disappointed by the site. I mean, the cartoony letters
`and little paw prints have the likeness of a virtual pet sites’ [sic]." SUF ]] 50. A third
`consumer wrote in the "Owner's Lounge" forum in August 2007: "[W]hen I was
`registering I typed taht [sic] by misttake [sic] and apparently nothing was there so you
`
`"Plaintiffs filed declarations from five consumers under seal to protect their identities.
`CV-90 (06/04)
`CIVIL MINUTES - GENERAL
`
`Page 8 of 22
`
`

`
`Case 2:07-Cv—0‘l870-AHM—VBK Document 197
`
`Filed 05/27/2008
`
`Page 9 of 22
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`CV O7-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`
`GOPETS LTD. V. EDWARD HISE, et al.
`
`think its new and not the REAL TI-IING?" SUF ‘J 51. Another consumer wrote in the
`"Owner's Lounge" forum in July 2007: "at least [sic] once a week I key in the wrong
`address and end up there." SUF 11 52.
`
`On December 17, 2007, the Court granted Plaintiffs motion for a preliminary
`injunction, which was subsequently entered on January 9, 2008. Until the preliminary
`injunction was granted, Defendants’ <gopets.com> website displayed the same content
`that was on there on March 13, 2007: a single webpage with a logo, paw prints, two lines
`of text, and a header stating, in part “The Official gopets.com website.” (Minute Order,
`Dec. 17, 2007 at 5).
`
`As required by the preliminary injunction, Defendants revealed that they owned
`eighteen additional domain names (described above), prompting Plaintiffs to file a First
`Amended Complaint.
`
`Finally, the Court takes judicial notice of another WIPO proceeding, this time
`instituted by Defendant E. Hise on behalf of Digital Overtures. G\Iotice to Court of
`WIPO Decision, filed April 30, 2008, Ex. A.) On January 23, 2008, E. Hise filed a
`complaint with WIPO claiming that Plaintiffs domain name, gopets.net, is confusingly
`similarly to Defendants’ <gopets.com> domain name and that Plaintiff has no legitimate
`interests in gopets.net. The WIPO panel issued a decision on April 22, 2008 that cited
`this Court’s preliminary injunction findings and other evidence before it. The panel
`unanimously denied the Complaint and a majority of the panel also found that the
`Complaint was brought in bad faith and constituted “reverse domain name hijacking.”
`
`IV. LEGAL STANDARD
`
`Federal Rule of Civil Procedure 56(c) provides for summary judgment when “the
`pleadings, depositions, answers to interrogatories, and admissions on file, together with
`the affidavits, if any, show that there is no genuine issue as to any material fact and that
`the moving party is entitled to judgment as a matter of law.” The moving party bears the
`initial burden of demonstrating the absence of a “genuine issue of material fact for trial.”
`Anderson v. Liberty Lobby, Inc, 477 U.S. 242, 256 (1986). A fact is material if it could
`affect the outcome of the suit under the governing substantive law. Id. at 248. The
`
`CV—9O (O6/O4)
`
`CIVIL MINUTES ~ GENERAL
`
`Page 9 of 22
`
`

`
`Case 2:O7—cv—O1870—AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 10 of 22
`
`O
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`
`
`GOPETS LTD. V. EDWARD HISE, et al.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Case No.
`
`Title
`
`burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is
`a genuine issue for trial. Celotex Corp. v. Catretz‘, 477 U.S. 317, 324 (1986).
`
`“When the party moving for summary judgment would hear the burden of proof at
`trial, it must come forward with evidence which would entitle it to a directed verdict if
`the evidence went uncontroverted at trial. In such a case, the moving party has the initial
`burden of establishing the absence of a genuine issue of fact on each issue material to its
`case.” C./LR. Transp. Brokerage Co., Inc. v. Darden Rests, Inc., 213 F.3d 474, 480 (9th
`Cir. 2000) (citations omitted). In contrast, when the non-moving party bears the burden
`of proving the claim or defense, the moving party can meet its burden by pointing out the
`absence of evidence from the non-moving party. The moving party need not disprove the
`other party's case. See Celotex, 477 U.S. at 325. Thus, “[s]ummary judgment for a
`defendant is appropriate when the plaintiff ‘fails to make a showing sufficient to establish
`the existence of an element essential to [his] case, and on which [he] will bear the burden
`of proof at trial.’” Cleveland v. Policy Mgmt Sys. Corp., 526 U.S. 795, 805-06 (1999)
`(citing Celotex, 477 U.S. at 322).
`
`When the moving party meets its burden, the “adverse party may not rest upon the
`mere allegations or denials of the adverse party's pleadings, but the adverse party's
`response, by affidavits or as otherwise provided in this rule, must set forth specific facts
`showing that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e). Summary
`judgment will be entered against the non-moving party if that party does not present such
`specific facts. Id. Only admissible evidence may be considered in deciding a motion for
`summary judgment. Id.; Beyene v. Coleman Sec. Serv., Inc., 854 F.2d 1179, 1181 (9th
`Cir. 1988).
`
`“[I]n ruling on a motion for summary judgment, the nonrnoving party’s evidence
`‘is to be believed, and all justifiable inferences are to be drawn in [that party’s] favor?”
`Hunt v. Cromartie, 526 U.S. 541, 552 (1999) (quoting Anderson, 477 U.S. at 255). But
`the non-moving party must come forward with more than “the mere existence of a
`scintilla of evidence.” Anderson, 477 U.S. at 252. Thus, “[w]here the record taken as a
`whole could not lead a rational trier of fact to find for the nonrnoving party, there is no
`genuine issue for trial.” Matsuslzita Elec. Indus. C0,, Ltd. v. Zenith Radio Corp, 475
`U.S. 574, 587 (1986) (citation omitted).
`
`
`
`CV-90 (O6/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 10 of 22
`
`

`
`Case 2:07~cv—O1870—AHM-VBK Document 197
`
`Fiied 05/27/2008
`
`Page 11 of 22
`
`0
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`GOPETS LTD. V. EDWARD HISE, et al.
`
`V.
`
`ANALYSIS OF DEFENDANTS’ LIABILITY
`
`Based on the above-described facts, Plaintiff argues that it is entitled to judgment
`as a matter of law that Defendants’ use of <gopets.com> infringed the GOPETS mark and
`that Defendants registered all nineteen domain names with bad faith intent to profit from
`the mark within the meaning of the Anti—Cybersquatting Consumer Protection Act.
`Defendants contend rather conclusorily that genuine issues of material fact remain with
`respect to whether they engaged in commercial use of the <gopets.com> domain name
`and whether they possessed the requisite bad faith intent.
`
`A.
`
`Infringement and Unfair Competition with Respect to Defendants’ Use
`of <gopets.com>
`
`To establish trademark infringement, Plaintiff must demonstrate that Defendants
`are using a mark confusingly similar to Plaintiffs Valid and protectable mark. Broolgfield
`Communications, Inc. v. West Coast Entm ’t Corp, 174 F.3d 1036, 1046 (9th Cir. 1999).
`The test for unfair competition in this context is the same as that for trademark
`infringement: likelihood of confusion. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d
`1175, 1178 (9th Cir. 1988) (quotations and citation omitted).
`
`In the context of the Internet, the three most important Sleekcrafi‘ factors are
`similarity of the marks, the relatedness of the goods and services, and the parties’
`simultaneous use of the Web as a marketing channel. Perfumebay. com Inc. v. EBAY,
`Inc, 506 F.3d 1165, 1173 (9th Cir. 2007) (quoting Interstellar Stars/tip Services, Ltd. v.
`Epix, Inc, 304 F.3d 926, 942 (9th Cir. 2002)). “When this controlling troika or internet
`trinity suggests confusion is likely, the other factors must weigh strongly against a
`likelihood of confusion to avoid the finding of infringement.” Ia’.
`
`7*‘\\\\<i\\V\Kr</.~r—:~»\os4-1¢»i>t€\\l"\‘fl\~§yA:w¥/ll’
`
`Defendants do not dispute that Plaintiffs GOPETS mark is Valid and protectable ,
`based on its senior user status and registration. Nor do they dispute Plaintiffs analysis of
`the Sleekcraft factors.
`
`The Court agrees with Plaintiffs analysis, which focused on Defendant’s use of
`the <gopets.com> domain name. The “controlling troika” in this case clearly weighs in
`favor of a finding of likelihood of confusion. First, <gopets.com> is unquestionably
`
`
`CV—90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page I l of 22
`
`

`
`Case 2:O7—cv-01870-AHM-VBK Document 197
`
`Filed 05/27/2008
`
`Page 12 of 22
`
`0
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Case No.
`
`CV 07-1870 AHM (VBKX)
`
`Date May 27, 2008
`
`Title
`
`GOPETS LTD. v. EDWARD HISE, et al.
`
`functionally identical in sight, sound, and meaning to GOPETS. Second, from the
`perspective of the Internet user, the content placed on <gopets.com> in March 2007 gives
`the appearance that the website may be launching something similar to Plaintiffs Game,
`as some of Plaintiffs customers speculated. See SUF W 39-41, 47-52; Garden ofLife,
`Inc. v. Letzer, 318 F. Supp. 2d 946, 964 (C.D. Cal. 2004) (the services may be considered
`related if “the conditions surrounding their marketing [are] such that they could be
`encountered by the same purchaser under circumstances that could give rise to the
`mistaken belief that the goods come from a common source”). Finally, it is obvious that
`Plaintiff and Defendants’ simultaneous use of the Internet is a major source of confusion.
`Defendant E. Hise even acknowledged that “the average person - if you say go to GoPcts
`.
`.
`. would probably assume to go to gopetscom. . .Everybody knows on the Internet
`when you say GoPets, you're going to gopets.com. Everybody knows tha .” SUF W 54-
`55.
`
`Plaintiff also presents undisputed evidence that the other Sleekcraft factors weigh
`in its favor. Notably, it presented evidence, five declarations of actual customers,
`attesting to actual confusion due to the presence of the <gopets.com> website. See SUF
`‘W 47-52. At both the preliminary injunction stage and now, Defendants never disputed
`the presence of actual confusion.
`
`Defendants’ sole argument concerning infringement is that the mere registration of
`a domain name does not constitute commercial use and is therefore not prohibited by the
`Lanham Act. Defendants’ declarations state that no products or services were ever
`offered for sale and no advertising took place on any of their domain names. SGI W 4-5.
`They cite Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949, 957 (C.D.
`Cal. 1997), which noted that “something more than the registration of the name is
`required before the use of a domain name is infringing.”
`
`With respect to <gopets.com>, Defendants unquestionably did more than mere
`registration: they used Plaintiffs mark as a domain name to identify their website. See
`id. (noting that such use has been held to be infringing). Not only did they use Plaintiffs
`mark in their website address, they posted content in March 2007 that used Plaintiffs
`mark to give the impression that they may be launching a virtual pet site. Their assertion
`that some mysterious “intern” may have inserted the term “gopets” into their website and
`metatags carries no weight, as it is based solely on Vague assertions and contradicts
`
`
`CV-90 (O6/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 12 of 22
`
`

`
`Case 2:07-cv-01870-AHM«VBK Document 197
`
`Filed 0