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STANDING STONE MEDIA v. INDIANCOUNTRYTODAY.COM

March 20, 2002

STANDING STONE MEDIA, INC. D/B/A INDIAN COUNTRY TODAY, PLAINTIFF,
V.
INDIANCOUNTRYTODAY.COM, INDIANCOUNTRYTODAY.NET, AND INDIANCOUNTRYTODAY.ORG, DEFENDANT.



The opinion of the court was delivered by: Mordue, District Judge.

MEMORANDUM-DECISION AND ORDER

I. INTRODUCTION

Standing Stone Media d/b/a Indian Country Today ("Standing Stone") filed this in rem action on June 6, 2000, pursuant to the "Anticybersquatting Consumer Protection Act" ("ACPA"), 15 U.S.C. § 1125(d)*fn1, after Miles Morrisseau, a former employee, registered the defendant internet domain names — indiancountrytoday.com, indiancountrytoday.net, and indiancountrytoday.org — in which Standing Stone asserts trademark ownership, in his own name. Presently before the Court is a motion by Standing Stone for an order waiving publication of this action under 15 U.S.C. § 1125(d)(2)(A)(ii)(II)(bb), and for summary judgment pursuant to Rule 56 of the Fed.R.Civ.P. Standing Stone asserts that it has established all of the required elements of a claim under the ACPA and, therefore, is entitled to an order of this Court directing transfer of the subject domain names from Mr. Morrisseau to it. Mr. Morrisseau has neither appeared in this action to date nor formally opposed plaintiffs motion.

II. FACTUAL AND PROCEDURAL BACKGROUND

According to plaintiff, Indian Country Today is a well-known and highly respected Native American newspaper which was founded in 1981. The newspaper was originally named the Lakota Times, and was first published under the name Indian Country Today on October 8, 1992. In December 1998, Standing Stone purchased Indian Country Today together with the trademark Indian Country Today and began publishing the newspaper from its headquarters in Canastota, New York. By the time Standing Stone purchased Indian Country Today, the newspaper had become a national paper with news bureaus throughout the country. The circulation of Indian Country Today has continued to expand steadily since that time. Today, Indian Country Today is distributed throughout the United States and in 15 foreign countries. Standing Stone employs editors and reporters throughout the entire United States and maintains a fully functional news bureau in Washington, D.C., to cover national legislative and judicial issues.

To expand the circulation of Indian Country Today, Standing Stone developed a website at considerable expense to house an on-line edition of Indian Country Today. This website is currently accessed through Standing Stone's registered domain name, indiancountry.com. In January 2000, Indian Country Today's management team decided to register additional domain names on behalf of Standing Stone using its trademark Indian Country Today. Specifically, Standing Stone decided to register indiancountrytoday.com, indiancountrytoday.net and indiancountrytoday.org to house its on-line edition of Indian Country Today.

At the time Standing Stone decided to register the additional domain names, Miles Morrisseau was the editor-in-chief of Indian Country Today, working out of the company's Canastota, New York, office. Morrisseau was "an active participant" in the decision to register the domain names. However, two weeks after this decision was made, Mr. Morrisseau was discharged at which time he had still taken no steps to register the subject domain names on behalf of Standing Stone. On February 16, 2000, one week after his employment was terminated, Mr. Morrisseau registered the domain names in his own name. On June 1 and June 2, 2000, plaintiffs counsel sent correspondence to Mr. Morrisseau via email and regular mail advising him of his claimed violation of the ACPA as well as Standing Stone's intent to proceed with litigation in connection with said violation. In response to these "cease and desist" communications, plaintiffs counsel received an e-mail, purportedly from Mr. Morrisseau, in which Mr. Morrisseau forwarded a copy of an e-mail he had sent to another attorney who had contacted him on behalf of Standing Stone. The e-mail which plaintiff's counsel received was dated June 19, 2000. It was sent to attorney Peter Carmen at CARMEP@MACKLAW.COM from maggie@xcelco.on.ca (Terese Bressette) with a subject line which read "Standing Stone Media, Inc. d/b/a Indian Country Today." Morrisseau's purported e-mail stated that the prior e-mail to "the first law firm threatening legal action sum[med] up [his] position on the matter." Further, the email stated:

As the second law firm to send me a threatening letter, I would expect that you could at least try to make a case for your client. As it is I know and you know they have no legal leg to stand on. If any other unwarranted threats of legal action are made that continue to be unsubstantiated, I will consider that harassment by both your firm and Standing Stone Media.

The e-mail was "signed" as follows:

Sincerely,

Miles Morrisseau

Indiancountrytoday.com

The forwarded e-mail sent to Standing Stone's previous attorney appeared as follows:

From: Terese Bressette maggie@xcelco.on.ca

To: facerstamoul@earthlink facerstamoul@earthlink

Date: March 24, 2000 10:09 AM

Subject: Domain name Ownership

Ms. Maria Stamoulas, Facer and Stamoulas, P.C. 1155 Connecticut Ave. N.W. Suite 300 ...

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