The opinion of the court was delivered by: RICHARD CASEY, District Judge
MEMORANDUM OPINION & ORDER
TCPIP Holding Co. ("Plaintiff"), operator of the children's
clothing franchise "The Children's Place," sued Haar
Communications Inc. and Richard S. Haar*fn1 (collectively,
"Defendants") for cybersquatting, trademark infringement, unfair
competition, and trademark dilution after Defendant registered
the domain name, "thechildrensplace.com" and sixty-six other
domain names containing variations on the words "children" and
"place." On May 27, 1999, the Court preliminarily enjoined
Defendants from using these sixty-seven domain names and
generally from using any "colorable imitation" of Plaintiff's
mark. On December 9, 1999, the Court modified its earlier order
to specifically enjoin Defendants from using fourteen additional
domain names. On February 28, 2001, the Second Circuit Court of
Appeals affirmed the preliminary injunction as it related to
several of the domain names that were "so clearly similar to `The
Children's Place' that the differences are hardly noticeable." See TCPIP Holding Co.
v. Haar Communications Inc., 244 F.3d 88, 102 n. 11 (2d Cir.
2001). The Court of Appeals remanded the case for further
proceedings and Plaintiff now moves for summary judgment. For the
reasons set forth below, the motion is GRANTED.
Pursuant to Local Civil Rule 56.1, Defendants were required to
include a separate short and concise statement of any material
facts as to which they contended there exists a genuine issue. In
the absence of such a statement, all material facts set forth in
Plaintiff's 56.1 statement may be deemed admitted. See S.D.N.Y.
Local Civil R. 56.1(b), (c); Giannullo v. City of New York,
322 F.3d 139, 140 (2d Cir. 2003); United States v. All Right, Title
& Interest in Real Property & Appurtenances, 77 F.3d 648, 657-58
(2d Cir. 1996).
Defendants did not submit a controverting Rule 56.1 statement
and thus failed to comply with Local Civil Rule 56.1.*fn2
Nevertheless, because Richard Haar appears pro se the Court has
overlooked the technical deficiency of the submission, see
Zeno v. Cropper, 650 F. Supp. 138, 139 (S.D.N.Y. 1986), and has
viewed the record in the following manner: if there existed some
dispute between Plaintiff's Rule 56.1 statement and Haar's
papers, the facts have been viewed in the light most favorable to
Defendants. On the other hand, any facts in Plaintiff's
Rule 56.1 statement which remain uncontroverted by Haar's papers have been accepted as
true. See Dusaneko v. Maloney, 726 F.2d 82, 84 (2d Cir.
1984); see also Mazza v. City of New York, No. 98 Civ. 2342,
1999 WL 1289623, at *1 (E.D.N.Y. July 13, 1999).
Plaintiff, through its approximately 450 stores, sells
children's clothing, toys and accessories under the mark, "The
Children's Place." From 1992 to 2001, Plaintiff spent $33 million
to advertise the mark. This advertising has helped to generate
more than $2 billion in annual total net sales for Plaintiff.
Since November 1999, Plaintiff has operated a website at the
domain name "childrensplace.com," where customers may buy
Plaintiff's products. From 1999 to 2001, sales through
Plaintiff's website totaled $4 million. Thousands of customers
have visited the website; for example, in March 2001 alone, the
website had over 1.7 million hits (or approximately 57,000 hits a
Haar Communications, Inc., a New York corporation, and Richard
Haar, its president and sole employee, offer consulting and
networking services in the telecommunications area. Haar Inc. was
incorporated on April 24, 1998 and is located in Richard Haar's
Manhattan apartment. Around the fall of 1998, Richard Haar
attempted to develop a portal on the internet to facilitate
web-surfing for materials concerning children. Richard Haar
created a website that would provide links to a broad array of
child-related products, services, and information. On November 9,
1998, Defendants registered the domain name
"thechildrensplace.com" and posted the following information on
THIS IS THE FUTURE HOME OF THE CHILDRENS PLACE THE PLACE FOR YOUR
CHILDREN For more information write firstname.lastname@example.org
In January 1999, Plaintiff discovered that Defendants had
registered the domain name, "the childrensplace.com." By letter
dated February 4, 1999, Plaintiff's counsel requested that
Defendants cease and desist from using Plaintiff's mark;
Defendants declined to do so. From the time that Defendants
registered their domain name until they received Plaintiff's
cease and desist demand, Defendants did not purchase any other
domain names or conduct any business on the website aside from
posting the above notice. After they received the cease and
desist letter, Defendants then proceeded to register sixty-five
domain names, each of which contained the words "children" and
"place" in that order. The names would omit or use different
articles or employ the singular, plural, or possessive
combinations of the two words.
Defendants thereafter attempted to negotiate with Plaintiff
concerning the domain names. At a meeting held on February 22,
1999, Richard Haar outlined his plans to create a children's
internet portal where children and adults could shop for goods
and services in a safe, pornography-free environment. Richard
Haar asked Plaintiff to enter a joint venture with him to develop
his business plan, but Plaintiff relented. Instead, Plaintiff
asked Defendants to name their price for the domain name,
"thechildrensplace.com." In response, Defendants offered to sell
the domain name as part of a package that contained thirty-eight
domain names for $570,000 cash. Five days after doing so,
Defendants revised their previous offer by adding six more names
to the package and increased their asking price to $697,000.
Plaintiff declined the offer and reiterated its price of $30,000
for the single domain name, "thechildrensplace.com." Defendants
then offered to sell Plaintiff a package of sixteen domain names,
which included "thechildrensplace.com" domain name, for a total price of $480,000. Defendants never offered to sell
only "thechildrensplace.com" domain name to Plaintiff.
Plaintiff then commenced this suit, alleging claims of
trademark dilution and infringement and unfair competition.
Thereafter, the Court preliminarily enjoined Defendants from
"using, as part of a domain name or otherwise," Plaintiff's mark
or any "colorable imitation thereof." The Second Circuit affirmed
the preliminary injunction to the extent that it related to
several of the domain names that were "so clearly similar to `The
Children's Place' that the differences are hardly noticeable."
See TCPIP, 244 F.3d at 102 n. 11. While the case was pending
before the Second Circuit, Plaintiff amended its complaint,
adding a claim for cybersquatting under the recently enacted
Anti-Cybersquatting Consumer Protection Act ("ACPA"). Because the
ACPA claim did not form the basis for entry of the preliminary
injunction, the Second Circuit did not have occasion to consider
Federal Rule of Civil Procedure 56(c) provides that summary
judgment is appropriate "if 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 a judgment
as a matter of law." Fed.R.Civ.P. 56(c). Summary judgment
should only be granted if "the nonmoving party `has failed to
make a sufficient showing on an essential element of [its] case
with respect to which [it] has the burden of proof.'" Berger v.
United States, 87 F.3d 60, 65 (2d Cir. 1996) (quoting Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986)). When viewing the
evidence, the Court must assess the record in the light most
favorable to the nonmovant, resolve all ambiguities and draw all
reasonable inferences in its favor. See Delaware & Hudson Ry.
Co. v. Consol. Rail Corp., 902 F.2d 174, 177 (2d Cir. 1990).
Issues of fact are genuine when "a reasonable jury could return
a verdict for the nonmoving party," and such contested facts are
material to the outcome of the particular litigation if the
substantive law at issue so renders them. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). "If, as to the issue on
which summary judgment is sought, there is any evidence in the
record from any source from which a reasonable inference could be
drawn in favor of the nonmoving party, summary judgment is
improper." Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d
Cir. 1994). Only when it is apparent that no rational trier of
fact "could find in favor of the nonmoving party because the
evidence to support its case is so slight" should a court ...