Xen Inc v. Citrix Systems Inc, No. 2:2011cv09568 - Document 98 (C.D. Cal. 2012)
Court Description: ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFFS MOTION FOR 1. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON XEN, INCS COMPLAINT, AND 2. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON CITRIX SYSTEMS INC.S COUNTERCLAIM by Judge Dean D. Pregerson (lc). Modified on 10/25/2012 (lc).
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Xen Inc v. Citrix Systems Inc Doc. 98 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 XEN, INC., a California corporation, 12 Plaintiff, 13 v. 14 15 CITRIX SYSTEMS, INC., a Delaware corporation, 16 Defendant. 17 18 19 ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 11-09568 DDP (MRWx) ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFF’S MOTION FOR 1. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON XEN, INC’S COMPLAINT, AND 2. SUMMARY JUDGMENT, OR ALTERNATIVELY, SUMMARY ADJUDICATION ON CITRIX SYSTEMS INC.’S COUNTERCLAIMS [Docket No. 30 ] Presently before the court is Xen, Inc.’s (“Plaintiff”) 20 Motion for Summary Judgment or, in the alternative, for Partial 21 Summary Adjudication. 22 Systems, Inc.’s (“Defendant”) counterclaims of trademark 23 infringement, unfair competition, and false designation of origin. 24 Plaintiff’s declaratory relief counts related thereto are also 25 DENIED. 26 on Defendant’s counterclaims for dilution and cybersquatting. 27 Plaintiff’s declaratory relief counts related thereto are also 28 GRANTED. The court DENIES summary judgment on Citrix The court GRANTS Plaintiff’s motion for summary judgment Dockets.Justia.com 1 I. Background 2 Plaintiff operates xen.com, a social networking website that 3 allows users to “select interests, pick their level of interest, 4 and browse through interests of other users” on matters such as 5 television shows and restaurants. 6 (“SGD”) ¶¶ 2, 12 (filed under seal). 7 2009. 8 products and services under the Xen mark. 9 disputed how many people use xen.com, and whether the website is Id. ¶ 9. (Statement of Genuine Disputes The website was launched in Plaintiff has invested at least $8,800,000 in its (Id. at ¶ 14.) It is 10 only available to individuals selected to test it. Id. at ¶¶ 14,16. 11 Plaintiff’s “Xen” mark is not registered. 12 Defendant is the owner of a number of marks that include the 13 word “XEN” (e.g. “XEN SOURCE,” “XENCENTER,” “XENDESKTOP,” “XEN 14 SUMMIT,” and “XENMOTION”), including two marks that contain “XEN” 15 as its sole word. 16 the only entity with a registered trademark that features this 17 word. 18 technology behind Citrix’s XEN products. (See Wasson Decl. ¶ 19 19(filed under seal)); (SGD ¶ 19(filed under seal).) 20 Virtualization software allegedly “allows one physical computer to 21 operate as multiple ‘virtual’ computers– and even lets them run 22 multiple virtual desktops on a single laptop.” 23 (filed under seal).) 24 resources. 25 products under the XEN name, some costing several thousand dollars. 26 (SGD ¶ 25 (filed under seal).) 27 xen.org, which allows users to download various free products. 28 (SGD ¶ 26 (filed under seal).) (Gates Decl. Ex. A.) (SGD ¶ 54 (filed under seal).) Defendant, however, is not Virtualization is the (See Wasson ¶ 6 It allegedly also powers cloud computing (SGD ¶ 21 (filed under seal).) Defendant sells Defendant is also the owner of Defendant uses both its XEN and 2 1 Citrix marks in marketing its XEN products. 2 seal).) 3 onto Defendant’s XENAPP and XENDESKTOP to access their employers’ 4 work spaces, and Defendant allegedly receives one billion dollars 5 in yearly revenue from sales of XEN branded products. 6 Decl. ¶¶ 14, 25 (filed under seal).) 7 II. Legal Standard 8 9 (SGD ¶ 28 (filed under Allegedly, every day 100 million people worldwide sign (Wasson Summary judgment shall be granted when a movant “shows that there is no genuine dispute as to any material fact and the movant 10 is entitled to judgment as a matter of law.” 11 56(a). 12 a party who fails to make a showing sufficient to establish the 13 existence of an element essential to that party’s case, and on 14 which that party will bear the burden of proof at trial.” 15 Pomona Valley Hosp. Med. Ctr., 630 F.3d 794, 798-99 (9th Cir. 16 2010)(internal quotation marks omitted). 17 FED. R. CIV. P. In other words, summary judgment should be entered “against Parth v. A moving party without the burden of persuasion at trial “must 18 either produce evidence negating an essential element of the 19 nonmoving party’s claim or defense or show that the nonmoving party 20 does not have enough evidence of an essential element to carry its 21 ultimate burden of persuasion at trial.” 22 Co., v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000); see also 23 Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (en banc) 24 (“When the nonmoving party has the burden of proof at trial, the 25 moving party need only point out ‘that there is an absence of 26 evidence to support the nonmoving party’s case.’”) (quoting Celotex 27 Corp. v. Catrett, 477 U.S. 317, 325 (1986), and citing Fairbank v. 28 Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir. 2000) (holding 3 Nissan Fire & Marine Ins. 1 that the Celotex “showing” can be made by “pointing out through 2 argument–the absence of evidence to support plaintiff’s claim”)). 3 If the party moving for summary judgment meets its initial burden of identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact, the nonmoving party may not rely on the mere allegations in the pleadings in order to preclude summary judgment[,but instead] must set forth, by affidavit or as otherwise provided in Rule 56, specific facts showing that there is a genuine issue for trial. T.W. Elec. Serv., v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 4 5 6 7 8 630 (9th Cir. 1987) (internal citations, quotation marks, and 9 emphasis omitted). 10 At the summary judgment stage, the court does not make 11 credibility determinations or weigh conflicting evidence, and it 12 views all evidence and draws all inferences in the light most 13 favorable to the non-moving party. See id. at 630-31 (citing 14 Matsushita Elec. Indus. Co., v. Zenith Radio Corp., 475 U.S. 574, 15 587 (1986)); see also Hrdlicka v. Reniff, 631 F.3d 1044 (9th Cir. 16 2011); Miranda v. City of Cornelius, 429 F.3d 858, 860 n.1 (9th 17 Cir. 2005). Speculative testimony in affidavits and motion papers 18 is insufficient to raise genuine issues of fact and defeat summary 19 judgment. Thornhill Publ’g Co., v. GTE Corp., 594 F.2d 730, 738 20 (9th Cir. 1979). As the Supreme Court has stated, “[t]he mere 21 existence of a scintilla of evidence . . . will be insufficient; 22 there must be evidence on which the jury could reasonably find for 23 the [non-moving party].” Anderson v. Liberty Lobby, Inc., 477 U.S. 24 242, 252 (1986). 25 It is not the court’s task “to scour the record in search of a 26 genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 27 1279 (9th Cir. 1996). Counsel has an obligation to lay out their 28 4 1 support clearly. Carmen v. San Francisco Unified Sch. Dist., 237 2 F.3d 1026, 1031 (9th Cir. 2001). 3 entire file for evidence establishing a genuine issue of fact, 4 where the evidence is not set forth in the opposing papers with 5 adequate references so that it could conveniently be found." 6 III. Analysis The court “need not examine the Id. 7 A. Likelihood of Confusion: Trademark Infringement, Unfair 8 Competition, False Designation of Origin 9 Plaintiff claims that no reasonable trier of fact could find 10 that there is a likelihood of confusion between the parties’ marks. 11 Likelihood of confusion is the center of the 12 infringement, unfair competition, and false designation of origin 13 claims in this case. 14 F.2d 788, 790 (9th Cir. 1981); see also Brookfield Commc’n, Inc. v. 15 W. Coast Entm't Corp., 174 F.3d 1036, 1046 (9th Cir. 1999). 16 factors for determining likelihood of confusion are: “1. strength 17 of the mark; 2. proximity of the goods; 3. similarity of the marks; 18 4. evidence of actual confusion; 5. marketing channels used; 6. 19 type of goods and the degree of care likely to be exercised by the 20 purchaser; 7. defendant's intent in selecting the mark; and 8. 21 likelihood of expansion of the product lines.” 22 Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). 23 unnecessary to meet every factor, because the likelihood of 24 confusion test is “fluid”. 25 Prods., 406 F.3d 625, 631 (9th Cir. 2005). 26 intensive, and it thus is rarely appropriate for deciding on 27 summary judgment. 28 Inc., 457 F.3d 1062, 1075 (9th Cir. 2006). trademark See Toho Co., v. Sears, Roebuck & Co., 645 The AMF Inc. v. It is Surfvivor Media, Inc. v. Survivor The test is fact Au-Tomotive Gold, Inc. v. Volkswagen of Am., 5 1 A reasonable fact finder could decide that Defendant has a 2 strong mark. “[T]he more unique or arbitrary a mark, the more 3 protection a court will afford it.” 4 Corp., 610 F.3d 1088, 1090 (9th Cir. 2010); J. B. Williams Co., v. 5 Le Conte Cosmetics, Inc., 523 F.2d 187, 192 (9th Cir. 1975) 6 (holding that “[a] strong mark is entitled to a greater degree of 7 protection”). 8 serious dispute with the principle that a federal trademark 9 registration of a particular mark supports the distinctiveness of Visa Int'l Serv. Ass'n v. JSL Registration indicates strength: “There can be no 10 that mark, because the PTO should not otherwise give it 11 protection.” 12 1108, 1115 (9th Cir. 2010) (internal quotations omitted); see also 13 E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457, 14 462 (N.D. Cal. 1991). 15 factors in analyzing strength, among them is whether a mark has 16 been used successfully in commerce for a significant period of 17 time. 18 Supp. 2d 1132, 1137 (C.D. Cal. 2010). 19 Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d Courts will also look to various other Interplay Entm't Corp. v. TopWare Interactive, Inc., 751 F. Defendant owns many XEN marks. (Gates Decl. Ex. A.) 20 Defendant has allegedly used the XEN mark in commerce since 2002. 21 (SGD ¶ 5 (filed under seal).) 22 allegedly sign onto Defendant’s XENAPP and XENDESKTOP to access 23 their employers’ work spaces, and Defendant allegedly receives one 24 billion dollars in yearly revenue from sales of XEN branded 25 products. 26 Defendant’s multiple XEN registrations and evidence of its 27 prevalent use in commerce show that a reasonable trier of fact 28 could find that Defendant’s mark is strong. Every day 100 million people (Wasson Decl. ¶¶ 14, 25 (filed under seal).) 6 This factor weighs 1 heavily in favor of denying summary judgment on the infringement 2 claim. 3 Cir. 2000) (holding that the stronger the mark “the greater 4 protection the mark is accorded by trademark laws”). 5 GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th A reasonable fact finder could decide that the parties’ marks 6 are similar. 7 sight, sound, and meaning.” 8 Regarding sight, courts will compare the spelling of words within 9 the marks. “Similarity of the marks is tested on three levels: Id. Sleekcraft, 599 F.2d at 351. They will also look to the marks overall design 10 and whether other marks accompany the mark in dispute. 11 Defendant’s XEN mark is spelled exactly the same as Plaintiff’s. 12 Regarding design, Defendant admits the marks are dissimilar. 13 (Memorandum in Opposition to Summary Judgment (“Op.”) at 19: 19-20 14 (filed under seal).) 15 Plaintiff sometimes uses XEN as a standalone mark, without any 16 accompanying design. 17 the accompanying logo is at least sometimes absent, the 18 significance of the difference in design is significantly 19 diminished. 20 accompanying marks, Defendant admits that it uses its Citrix mark 21 in conjunction with its XEN mark. 22 However, Plaintiff, the moving party, waited until its reply brief, 23 which was filed under seal, to argue that the Citrix mark is 24 prominently featured. 25 important to analyzing similarity, see Sleekcraft, 599 F.2d at 351, 26 but the Court should not consider new arguments made in reply 27 briefs, see Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007) Id. Here, However, Defendant has provided evidence that (See, e.g., Gates Decl. Exs. E, CC.) See Sleekcraft, 599 F.2d at 351. Since As for other (SGD ¶ 28 (filed under seal).) The prominence of the Citrix mark is very 28 7 1 (affirming district court’s decision to reject points raised for 2 the first time in reply). 3 “Sound is also important because reputation is often conveyed 4 word-of-mouth.” 5 the same word, “Xen,” as a mark. 6 the same. 7 does not (and probably cannot) dispute this argument, the two marks 8 are found to sound the same. 9 See Sleekcraft, 599 F.2d at 351. Both parties use Defendant claims both words sound (Op. at 19: 16-17 (filed under seal).) Since Plaintiff “Closeness in meaning can itself substantiate a claim of 10 similarity of trademarks.” 11 relevant meaning is the one the “ordinary consumer” would attach to 12 the word. 13 (“McCarthy”) § 23:26 (4th ed. 2012); see also Synergistic Int'l 14 Inc. v. Windshield Doctor, Inc., No. CV 03-579, 2003 WL 21468568, 15 at *5 (C.D. Cal. Apr. 28, 2003) (emphasizing the meaning the 16 “average consumer” would give to words). Meaning is generally only 17 relevant when different words are used. 18 Plaintiff only offers evidence that the parties attached different 19 meanings to “Xen,” but it offers no evidence that the consumers 20 would do the same. 21 no reason to think there is a difference in meaning between the two 22 marks in the mind of the general public. 23 Sleekcraft, 599 F.2d at 352. The 4 McCarthy on Trademarks and Unfair Competition See McCarthy at § 23:26. Since both parties use the same word, there is A reasonable trier of fact could also find that Plaintiff and 24 Defendant provide similar products. 25 Sleekcraft factor, the courts assess whether the goods 26 or complementary. 27 the danger of confusion is heightened.” 28 Madacy Entm't, 421 F.3d 1073, 1081-82 (9th Cir. 2005). “When dealing with the second are related Where the goods are related or complementary, 8 M2 Software, Inc. v. Factors 1 relevant to determining similarity of products include: whether the 2 products are complementary, whether they are similar in use and 3 function, and whether they are sold to the same class of 4 purchasers. 5 Sleekcraft, 599 F.2d at 351. A reasonable fact finder could decide that the products are 6 complementary and similar in use and function. Plaintiff’s website 7 allows users to “collect and share [their] interests everywhere.” 8 (Gates Decl. Ex. CC.) 9 allegedly allow users “to communicate, work, and even play through Similarly, Defendant’s XEN products 10 virtual meetings, training events, face-to-face video conferencing” 11 from any computer. 12 Plaintiff focuses on the entertainment nature of its social 13 networking product and the professional focus of Defendant’s 14 virtualization products, claiming “[c]orporate virtualization 15 companies are not known for products where individuals express 16 dislike for Jersey Shore with an angry face emoticon. . . .” 17 (Motion for Summary Judgment at 15: 1-3.) 18 (Wasson Decl. ¶¶ 6, 8 (filed under seal).) However, all inferences must be drawn in the light most 19 favorable to the non-moving party. 20 31. 21 especially within Plaintiff’s field of social networking. More 22 importantly, the fact intensive nature of comparing the parties’ 23 products–in comparing why people use them and what people can do 24 with them–underscores why the likelihood of confusion analysis is 25 generally inappropriate for summary judgment. 26 457 F.3d 1062, 1075 (9th Cir. 2006). 27 and communicative nature of Defendant’s product, the Court finds T.W. Elec. Serv., 809 F.2d 630- The line between work and entertainment is often blurred, 28 9 Au-Tomotive Gold, In light of the collaborative 1 that a reasonable trier of fact could find that the products are 2 similar. 3 The Court’s analysis supra has shown that a reasonable fact 4 finder is likely to decide that Defendant’s mark is very strong, 5 and that Plaintiff’s and Defendant’s marks are substantially 6 similar. 7 reasonable trier of fact could find that the Plaintiff’s and 8 Defendant’s products are similar. 9 consider, these are three of the most important ones. important. Additionally, the Court’s has demonstrated that a While there are other factors to 10 See Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1130 11 (9th Cir. 1998). 12 to show a likelihood of confusion. 13 631. If a few factors favor a non-moving party, it can survive 14 summary judgment on likelihood of confusion. 15 Group, 142 F.3d at 1129-30, 1132. Additionally, likelihood of 16 confusion is rarely appropriate for summary judgment. Au-Tomotive 17 Gold,, 457 F.3d at 1075. 18 judgment on the infringement, false designation of origin, and 19 unfair competition claims. Defendant need not meet every Sleekcraft factor Surfvivor Media, 406 F.3d at Dreamwerks Prod. The court accordingly DENIES summary 20 B. Dilution 21 Plaintiff argues that Defendant’s dilution counterclaim must 22 be summarily adjudicated. 23 federal anti-dilution law must show that its mark is famous and 24 distinctive, that defendant began using its mark in commerce after 25 plaintiff's mark became famous and distinctive, and that 26 defendant's mark is likely to dilute plaintiff's mark.” 27 Serv. Ass'n v. JSL Corp., 610 F.3d 1088, 1089-90 (9th Cir. 2010). “A plaintiff seeking relief under 28 10 Visa Int'l 1 Plaintiff claims Defendant’s mark is not famous. There are 2 several statutory factors that courts may consider in deciding 3 whether a mark is famous. 4 courts take an approach more akin to Justice Stewart's test for 5 obscenity: we know it when we see it. Unless a mark rises to the 6 level of KODAK’ or ‘COKE,’ it is not considered famous and thus not 7 afforded protection from dilution.” 8 v. Software & Info. Indus. Ass'n, 208 F. Supp. 2d 1058, 1077 (C.D. 9 Cal. 2000). 15 U.S.C. § 1125(c)(2).1 However, “most Self-Ins. Inst. of Am., Inc. Niche market fame is insufficient. Planet Coffee 10 Roasters, Inc. v. Dam, No. SACV 09–00571–MLG, 2009 WL 2486457, at 11 *3 12 recognized by the general consuming public of the United States as 13 a designation of source of the goods or services of the mark's 14 owner.” 15 extensive commercial use, substantial advertising, and significant 16 sales will not suffice to make a mark famous. 17 v. Sumpton, 189 F.3d 868, 876-77 (9th Cir. 1999) (holding marks not 18 famous despite decades of use, $3 billion in annual sales, and over 19 $5 million in advertising). (C.D. Cal. Aug. 12, 2009). A mark is famous if it is “widely 15 U.S.C. § 1125(c)(2)(A) (emphasis added). Even Avery Dennison Corp. 20 Defendant relies on its marketing budget, its sales, the 21 number of people who use its products, and its mark’s registration 22 and distinctiveness in its effort to defeat summary adjudication. 23 (Op. at 27:21-28:6 (filed under seal).) 24 insufficient. See Avery Dennison, 189 F.3d at 876-77. Such evidence is In the three 25 1 26 27 28 Those factors are: “(I) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 11 1 sentences that constitute its dilution argument, Defendant never 2 claims that its mark is famous. 3 comes to asserting fame is in its uncited proposition that its XEN 4 mark is “well recognized in the trade.” (Op. at 28:3 (filed under 5 seal).) 6 Roasters, 2009 WL 2486457, at *3. 7 suggests that it has successful products and a strong mark, it has 8 not shown that its mark is “widely recognized by the general 9 consuming public of the United States.” 10 Tellingly, the closest Defendant Niche fame, however, will not suffice. Planet Coffee While Defendant’s evidence See 15 U.S.C. § 1125(c)(2). This Court therefore GRANTS summary judgment on dilution. 11 C. Cybersquatting 12 Defendant claims that Plaintiff is liable for cybersquatting. 13 Cybersquatting requires proof that “1) the defendant [plaintiff in 14 this case] registered, trafficked in, or used a domain name; (2) 15 the domain name is identical or confusingly similar to a protected 16 mark owned by the plaintiff; and (3) the defendant [plaintiff] 17 acted “with bad faith intent to profit from that mark.” 18 Int'l, Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010). 19 Generally cybersquatting occurs when “a person other than the 20 trademark holder registers the domain name of a well known 21 trademark and then attempts to profit from this by either ransoming 22 the domain name back to the trademark holder or by using the domain 23 name to divert business from the trademark holder to the domain 24 name holder.” 25 Cir. 2005). DSPT Bosley Med. Inst., v. Kremer, 403 F.3d 672, 680 (9th 26 Plaintiff contends that summary judgment is appropriate 27 because Defendant has insufficient evidence of a bad faith intent 28 to profit from the mark. There are nine statutory factors courts 12 1 may consider in determining bad faith. 2 1125(d)(1)(B)(i)(I)-(IX).2 Prior knowledge of the claimant’s mark 3 is not a statutory factor. See 15 U.S.C. §§ 4 1125(d)(1)(B)(i)(I)-(IX). 5 is insufficient for proving bad faith generally in trademark law. 6 See Visible Sys. Corp. v. Unisys Corp., 551 F.3d 65, 76 (1st Cir. 7 2008) (holding that mere evidence of knowledge of a claimant’s mark 8 is insufficient to show bad faith in an infringement case). 9 legislative history clarifies that one may have actual knowledge of 15 U.S.C. §§ Mere knowledge of a claimant’s trademark And 10 a claimant’s mark without being a cybersquatter. 11 Rec. S9744, S9749 (daily ed. July 29, 1999) (Statements on 12 Introduced Bills and Joint Resolutions) (declaring that 13 cybersquatting “does not extend to... someone who is aware of the See 145 Cong. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 Those factors are: (I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct; (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section. 13 1 trademark status of the name but registers a domain name without a 2 bad faith intent to profit”). 3 Defendant argues that there is a triable issue of fact as to 4 whether Plaintiff knew of Citrix and its XEN marks, and therefore 5 the question of whether there was bad faith intent cannot be 6 summarily adjudicated. 7 argument. 8 aware of Defendant’s XEN mark. 9 registration and an article that Plaintiff’s principals read and There are two problems with Defendant’s First, it has only scant evidence that Plaintiff was Defendant points to its marks’ 10 commented on which mentions Defendant’s XEN product. 11 two-page article only passingly notes Defendant’s product once, and 12 never refers to it again. 13 under seal).) 14 judgment, the mere scintilla of evidence of Plaintiff’s knowledge 15 is insufficient to create a triable issue of fact. 16 U.S. at 252. 17 However, the (Gates Decl. Ex. U at 2563-64 (filed While courts do not weigh evidence on summary Anderson, 477 Second, and more importantly, knowledge of a mark is 18 insufficient to show bad faith. 19 1125(d)(1)(B)(i)(I)-(IX); see also Visible Sys. Corp., 551 F.3d at 20 76; See 145 Cong. Rec. S9744, S9749 (daily ed. July 29, 1999). 21 Since the only evidence Defendant has provided is insufficient, it 22 has not met its burden to “set forth, by affidavit or as otherwise 23 provided in Rule 56, specific facts showing that there is a genuine 24 issue for trial.” 25 citations, quotation marks, and emphasis omitted). 26 See 15 U.S.C. §§ T.W. Elec. Serv., 809 F.2d at 630 (internal The court further notes that many of the bad faith factors cut 27 in Plaintiff’s favor. 28 Plaintiff has tried to sell its xen.com domain name to a third For instance, no evidence exists that 14 1 party for financial gain (factor VI). 2 1125(d)(1)(B)(i). 3 “material and misleading false contact information when applying 4 for the registration of the domain name” (factor VII). 5 There is no evidence that Plaintiff has registered other domain 6 names that are similar to other mark (factor VIII). 7 are not the only factors that favor Plaintiff. 8 mentions them to illustrate the point that not only has Defendant 9 failed to produce evidence of a bad faith intent, the available 10 See 15 U.S.C. §§ There are no allegations that Plaintiff provided See id. See id. These The court only evidence generally points to the opposite conclusion. 11 D. Defendant’s 56(d) request 12 Defendant argues summary judgment is inappropriate, because it 13 still needs to conduct necessary discovery. 14 summary judgment motion, a nonmoving party may obtain relief 15 pursuant to Fed. R. Civ. P. 56(d) (“Rule 56(d)”) if it “shows by 16 affidavit or declaration that, for specified reasons, it cannot 17 present facts essential to justify its opposition.” 18 seeking relief under Rule 56(d) in the Ninth Circuit must show: 19 “(1) it has set forth in affidavit form the specific facts it hopes 20 to elicit from further discovery; (2) the facts sought exist; and 21 (3) the sought-after facts are essential to oppose summary 22 judgment.” 23 Corp., 525 F.3d 822, 827 (9th Cir. 2008). 24 explains that more discovery is needed to produce important 25 evidence for the likelihood of confusion element of its trademark 26 infringement counterclaim. 27 the court DENIES Plaintiff’s request for summary judgment on In response to a A party Family Home and Fin. Ctr., v. Fed. Home Loan Mortg. Defendant’s affidavit (Merton E. Thompson Decl. ¶ 10.) 28 15 Since 1 trademark infringement, it need not consider Defendant’s request 2 under Rule 56(d). 3 IV. Conclusion 4 Based on the preceding analysis, the Court DENIES Plaintiff’s 5 Motion for Summary Judgment on Defendant’s counterclaim for 6 trademark infringement, unfair competition, and false designation 7 of origin. 8 related to these counterclaims. 9 Plaintiff’s Motion for Summary Judgment on Defendant’s It also DENIES Plaintiff’s declaratory relief counts However, the court GRANTS 10 counterclaims of dilution and cybersquatting. 11 Plaintiff’s declaratory relief counts related thereto. It likewise GRANTS 12 13 IT IS SO ORDERED. 14 15 16 Dated: October 25, 2012 17 DEAN D. PREGERSON 18 United States District Judge 19 20 21 22 23 24 25 26 27 28 16
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