United States District Court, S.D. California
WILLIAM Q. HAYES, District Judge.
The matter before the Court is the Motion for Entry of Default Judgment against Defendant Norbert Pikulski, filed by Plaintiff Shutterstock, Inc. ("Shutterstock"). (ECF No. 16).
On April 11, 2014, Plaintiff initiated this action by filing a Complaint in this Court against Defendant Norbert Pikulski. (ECF No. 1).
On April 16, 2014, Plaintiff filed an Ex Parte Application for a Temporary Restraining Order and Order to Show Cause Regarding a Preliminary Injunction ("Application for TRO"). (ECF No. 5). On May 22, 2014, the Court denied Plaintiff's Application for TRO, finding that Plaintiff had failed to meet its burden of demonstrating that irreparable injury was likely in the absence of preliminary injunctive relief. (ECF No. 13).
On June 4, 2014, Plaintiff filed a request for entry of default against Defendant. (ECF No. 14). On June 6, 2014, the Clerk of the Court entered default. (ECF No. 15). On July 7, 2014, Plaintiff filed a Motion for Entry of Default Judgment against Defendant. (ECF No. 16). On July 10, 2014, the Court ordered that Defendant had until July 28, 2014 to respond to the Motion for Default Judgment. (ECF. No. 18). To date, Defendant has not filed a response, or otherwise responded or appeared in this case.
II. Allegations of the Complaint
Shutterstock is a "publicly traded... innovative technology company... [that] connect[s] creative professionals with the best photos, vectors, illustrations and video from thousands of contributors around the world." (ECF No. 1 ¶ 9). Shutterstock owns the federally and internationally registered SHUTTERSTOCK Work Mark (U.S. Registration No. 3084900), "for use in the fields of electronic and print publishing, graphic design, advertising, product packaging and interactive multimedia." Id. ¶ 10. "Shutterstock also owns a number of related domain names, including, e.g., shutterstock.com, shutterstock.biz, shutterstock.fr, shutterstock.jp, shutterstock.hk, shutterstock.info." Id.
Since 2004, Plaintiff has been using the SHUTTERSTOCK Word Mark "continuously in interstate, intrastate, and foreign commerce, including commerce in the State of California...." Id. ¶ 12. "The Shutterstock Work Mark is world famous and known to artists, photographers, designers, producers, editors and other creators and consumers of photographic images, illustrations, vectors, and videos throughout the world." Id. ¶ 11. "Shutterstock has invested substantial sums of money and resources to develop the Shutterstock Word Mark" and "has spent millions of dollars advertising the brand." Id. ¶¶ 11, 13. "Shutterstock exercises quality control over the use of the Shutterstock Word Mark, and devotes significant resources to protecting the Shutterstock Word Mark." Id. ¶ 14.
In early March 2014, Shutterstock learned the domain name shutterstpck.com was recently registered by Defendant Norbert Pikulski. Id. ¶ 20. "Pikulski is a serial typosquatter." Id. ¶ 16. "A typosquatter registers an Internet domain name that is confusingly similar to a protected mark." Id. "A typosquatter domain may be confusingly similar to a protected mark either because it is an intentionally misspelled version of the protected mark that is similar in sight, sound or meaning ( e.g. shutterstpck.com') or because it incorporates the entire protected mark and adds additional characters to it ( e.g. shutterstocki.com')." Id.
Publicly available records list Defendant as the owner of 128 domain names, many of which "appear to typosquat on other well-known trademarks." Id. ¶ 17. On March 12, 2014, counsel for Shutterstock sent an email to Defendant demanding that Defendant transfer shutterstpck.com to Plaintiff. Id. at ¶ 20. No response was received from Defendant. Id. That same day, Defendant registered a second domain name: shutterst0ck.com. Id. Between March 15, 2014 and March 18, 2014, Defendant registered four additional domain names: shutterst9ck.com, ehutterstock.com, sh7tterstock.com, and shjtterstock.com. Id.
On March 21, 2014, Plaintiff filed a complaint before the National Arbitration Forum (the "NAF Action") relating to shutterstpck.com and shutterst0ck.com, pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers. Id. "Pikulski responded by posting on the same day on his Twitter account Fuck you Shutterstock! Bitches! Hoes skankz!'" Id. Defendant registered two additional domain names: whutterstock.com and zhutterstock.com, on March 23, 2014. Id.
As recent as April 9, 2014, "Pikulski is the listed owner of... shutterst0ck.com, shutterst9ck.com, shutterstpck.com, ehutterstock.com, zhutterstock.com, whutterstock.com and, sh7tterstock.com, (collectively, the Typosquatter Domains')." Id. ¶ 17. Defendant knew the Typosquatter Domains "were identical or confusingly similar to the distinctive and famous Shutterstock Word Mark." Id. ¶ 42. Defendant registered the Typosquatter Domains "with a bad faith intent to profit from the fame and goodwill associated with Shutterstock and Shutterstock's Word Mark." Id. ¶ 36. Six of the eight Typosquatter Domains "resolve" to googpussy.com. Id. at ¶ 18. The Typosquatter Domain shutterstpck.com resolves to ehhun.com. Id. Pikulski is the registered owner of googpussy.com and ehhun.com, "pornographic websites offering extremely graphic and lurid videos of individuals engaged in explicit sexual activities." Id. The Pornography Websites host advertisements for paid pornography websites and services, such as www.wankz.com, which offers "the best streaming porn" for a subscription fee of $29.95 per month. Id. ¶ 19. Defendant intended to "capitalize on Shutterstock's Word Mark to drive traffic to the Pornography Websites." Id. ¶ 41.
On April 9, 2014, Defendant sent an email to Plaintiff indicating that ehutterstock.com specializes in absolutely free images. Id. ¶ 22. As of April 9, 2014, the Typoquatter Domain ehutterstock.com displays a title for "Image Categories" against a nude picture and references the "Stock images and networking platform SYMBIOSTOCK." Id. "Prior to April 9, 2014, ehutterstock.com... resolved to the Pornography Websites." Id.
Defendant intends "to create an association with Shutterstock's Word Mark and to trade on the widespread recognition of Shutterstock's Word Mark by using marks that are substantially similar to Shutterstock's Word Mark." Id. ¶ 75.
"[T]he consuming public has been and is likely to be confused with respect to whether Shutterstock is affiliated, connected, or associated with" Defendant's websites and whether "Shutterstock is the source of Defendant[s] offers, goods, and services" or "sponsors and approves Defendant[s] commercial activities." Id. ¶¶ 25, 26. Defendant "misrepresent[s] and falsely describe[s] to the general public the origin and source of [defendant's] stock content licensing[, ] and... explicit pornographic services the Pornography Websites offer for sale...." Id. ¶ 63. Defendant's conduct "impairs the distincitiveness of Shutterstock's Word Mark and weakens the connection in the public's mind between Shutterstock's Word Mark and Shutterstock's services." Id. ¶ 73. Defendant's typosquatter "schemes cause consumers to associate Shutterstock with the negative qualities of Defendant[s] Websites...." Id.
Plaintiff's Complaint asserts the following claims for relief: (1) four violations of the Trademark Act of 1946 (the "Lanham Act"), 15 U.S.C. §§1051, et seq., specifically (a) federal trademark infringement in violation of 15 U.S.C. § 1114; (b) false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a); (c) trademark dilution in violation of 15 U.S.C. § 1125(c); and (d) cybersquatting in violation of the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d); (2) trademark dilution in violation of California Business & Professions Code § 14335; (3) unfair competition in violation of California Business & Professions Code § 17200; and (4) common law trade mark and trade name infringement. (ECF No. 1).
Plaintiff requests permanent injunctive relief, disgorgement of Defendant's profits realized by Defendant's unlawful acts, actual damages in an amount to be proven at trial, transfer of the Typosquatter Domains to Plaintiff, reasonable attorneys' fees and costs, pre and post-judgment ...