The opinion of the court was delivered by: Oliver W. Wanger United States District Judge
MOTION FOR JUDGMENT ON THE MEMORANDUM DECISION REGARDING PLEADINGS (Doc. 25); MOTION TO DISMISS COUNTERCLAIM (Doc. 30); AND MOTION FOR SANCTIONS (Doc. 29)
WebQuest.com, Inc., ("Plaintiff") proceeds with this action for declaratory relief against Hayward Industries, Inc. ("Defendant") arising out of a domain name dispute. On April 26, 2010, Defendant filed a counterclaim against Plaintiff. (Doc. 10).
Defendant filed a motion for judgment on the pleadings on June 29, 2010. (Doc. 20). Plaintiff filed opposition to Defendant's motion for judgment on August 30, 2010. (Doc. 25). On August 31, 2010, Plaintiff filed a motion for sanctions in connection with Defendants motion for judgment on the pleadings. (Doc. 29). Plaintiff also filed a motion to dismiss Defendant's counterclaim. (Doc. 30).
Defendant filed opposition to Plaintiff's motion to dismiss and motion for sanctions on October 12, 2010. (Doc. 35). Defendant filed a reply to Plaintiff's opposition to the motion for judgment on the pleadings on October 12, 2010. (Doc. 36).
On October 15, 2010, Plaintiff filed a reply to Defendant's opposition to the motion to dismiss and a reply to Defendant's opposition to the motion for sanctions. (Docs. 41, 42).
Plaintiff is a domain name investment company with a portfolio of thousands of domain names. On or about July 31, 2006, Plaintiff purchased the domain name "Hayward.com" from Hayward & Associates, Inc., a Georgia-based IT company. Plaintiff had previously registered the "wwwHayward.com" domain name on August 14, 2004. Plaintiff alleges that at the time that Plaintiff registered the Hayward domain names ("Domain Names"), it had never heard of Defendant, Hayward Industries. Plaintiff states it did not register the Domain Names with the intent to sell them to Hayward Industries, and Plaintiff never offered to sell the Domain Names to Hayward Industries. Plaintiff alleges it obtained the "Hayward.com" domain name because of Hayward's geographic significance as a city in the Bay Area of Northern California. After registering the Domain Names, Plaintiff used them in connection with pay-per-click advertising. A domain name monetization company, Domain Sponsor, supplied the content for the Hayward Sites.
Defendant is a manufacturer and seller of pool equipment and related supplies. Defendant has been the owner of the trademark HAYWARD since February 8, 1977. Hayward has registered numerous domain names incorporating the HAYWARD mark, such as "haywardnet.com" and "haywardpoolproducts.com." Hayward uses the domain name "haywardnet.com" for the uniform resource locator ("URL") of its primary company website devoted to advertising and promoting the swimming pool controls, filters, heaters, pumps, valves, automatic pool cleaners, and related products that the company manufactures and sells.
Immediately after Plaintiff acquired "Hayward.com" on July 31, 2006, Defendant sent Plaintiff a cease and desist letter, dated August 1, 2006, accusing Plaintiff of willful infringement and dilution of Hayward's trademarks, and demanding that Plaintiff transfer "Hayward.com" to Defendant. By letter dated August 4, 2006, Plaintiff denied the allegations. In that letter, Plaintiff informed Hayward Industries that it was the registrant of a portfolio of Northern California geo domain names, including "Hayward.com", "CastroValley.com", and "Pleasanton.com." From August 2006 to November 3, 2009, Plaintiff received no correspondence from Defendant.
Defendant filed a Complaint with the World Intellectual Property Organization ("WIPO") on or about November 3, 2009. Proceedings commenced on November 18, 2009, and a decision was issued on January 27, 2010 ordering Plaintiff to transfer the Domain Names to Defendant.
A. Plaintiff's Motion to Dismiss Defendant's Counter-Claims
Plaintiff seeks dismissal of Defendant's counter-claims on the grounds that Defendant violated Rule 8 of the Federal Rules of Civil Procedure by attaching over one-hundred pages of exhibits to its pleading. Alternatively, Plaintiff moves to strike the exhibits attached to Defendants' ...