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Osvaldo Patrizzi v. Bourne In Time

October 11, 2012


The opinion of the court was delivered by: Paul A. Engelmayer, District Judge:


Defendants Bourne in Time, Inc. ("Bourne"), Antiquorum S.A., Antiquorum USA, Inc., (together, "Antiquorum"), Evan Zimmerman, and William Rohr (collectively, "defendants") move for judgment on the pleadings on plaintiff Osvaldo Patrizzi's Complaint, which alleges violations under the Racketeer Influenced and Corrupt Organizations Act of 1970 ("RICO"), 18 U.S.C. §§ 1961 et seq., the Lanham Act, 15 U.S.C. §§ 1051 et seq., and New York statutory and common law, in connection with defendants' use of allegedly infringing internet domain names. For the reasons that follow, defendants' motion is granted with respect to Patrizzi's RICO claim, but denied with respect to his Lanham Act and state law claims.

I. Background

A. Patrizzi's Claims*fn1

Patrizzi is a well-known timepiece expert and auctioneer who resides in Monaco. Patrizzi's Complaint claims that, as a result of his expertise and business ventures, he has generated worldwide fame and goodwill in the field of horology (the art of measuring time, including the making of timepieces).

In 1974, Patrizzi established his first auction house for timepieces. He also founded Antiquorum, another auction house and a defendant in this action, and, until 2007, served as its president. Patrizzi created the first website for online timepiece auctions, and developed a system that allows online bidding to occur simultaneously with in-person bidding at such auctions.

In 2008, Patrizzi founded Patrizzi & Co. Auctioneers, another timepiece auction house, which has registered the domain name "," and to which Patrizzi has granted revocable, non-exclusive permission to use his name. Patrizzi claims that he owns the common law trademarks "Osvaldo Patrizzi," "Patrizzi & Co. Auctioneers," and "," all of which have been used in connection with timepiece businesses in which Patrizzi had or has an interest.

In October 2010, Patrizzi discovered that, upon typing the domain names "," "," "," or "" into the navigation bar of a web browser, one would be redirected to a website, "," owned by defendant Bourne. That website contained multiple links directing users to another site, "," which belongs to Bourne's parent company, defendant Antiquorum. Patrizzi was alarmed, because he believed these domain names infringed his own common law trademarks, and because, he claims, he had not granted defendants permission to use these allegedly infringing domain names. Bourne, a New York corporation, is in the business of providing information to consumers regarding high-end timepieces. Antiquorum (which consists of Antiquorum S.A., a Swiss corporation, and Antiquorum USA, Inc., a New York corporation) buys and sells high-end timepieces, and organizes live and online auctions for its merchandise. Zimmerman and Rohr were, at all times relevant to this litigation, principals in Bourne and in Antiquorum.

Patrizzi alleges that defendants registered and knowingly maintained these infringing domain names with the bad faith intent to profit by confusing consumers into believing that defendants' business ventures were somehow associated with or endorsed by Patrizzi, and that such confusion has in fact ensued. He claims that defendants were able to capitalize on consumers' confusion because Patrizzi's name has, according to Patrizzi, acquired substantial goodwill and reputational cache in the field of horology. He claims that consumers who typed in any of the allegedly infringing domain names were brought to a site, owned by Bourne, that then directed users to the site for Antiquorum, a company which, like Patrizzi, is in the business of timepieces auctions. He alleges that consumers were thereby deceived into believing they were participating in auctions or otherwise interfacing with a timepiece auction house that had been approved by or was associated with Patrizzi. Patrizzi alleges that, to the extent that any such consumers later participated in an Antiquorum auction, Antiquorum was receiving commissions that otherwise would have gone to Patrizzi. Patrizzi asserts that the allegedly infringing domain names were registered in April 2008, and that use of the allegedly infringing domain names ceased on March 31, 2011.

B. Procedural History

On April 7, 2011, Patrizzi filed the Complaint in this action. He brings numerous claims. His federal claims are for civil RICO, in violation of 18 U.S.C. § 1962(c), based on the predicate acts of wire fraud, which are in turn based on the registration and maintenance of the allegedly infringing domain names; RICO conspiracy, in violation of 18 U.S.C. § 1962(d); false designation of origin, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); trademark dilution, in violation of § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); and federal trademark cyberpiracy, in violation of § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d). He also brings claims under New York state law for deceptive business practices, common law trademark infringement, trade name infringement, unfair competition, dilution, and violations of state civil rights law. He seeks a permanent injunction, damages, and attorneys' fees.*fn2

On May 7, 2012, defendants filed a motion for judgment on the pleadings. Dkt. 22. On May 21, 2012, Patrizzi filed an opposition to that motion. Dkt. 29. On June 15, 2012, defendants filed a reply. Dkt. 33.

II. Legal Standard on a Motion for Judgment on the Pleadings

The standard for addressing a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) is the same as that for a Rule 12(b)(6) motion to dismiss for failure to state a claim. Cleveland v. Caplaw Enters., 448 F.3d 518, 521 (2d Cir. 2006). To survive a motion to dismiss pursuant to Rule 12(b)(6), a plaintiff must plead sufficient factual allegations "to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). To state a claim for relief that is facially plausible, an allegation must be "more than an unadorned, the-defendant-unlawfully-harmed me accusation"; a claim will only have "facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Accordingly, where a plaintiff has not "nudged [his or her] claims across the line from conceivable to plausible, [the] complaint must be dismissed." Twombly, 550 U.S. at 570.

In making that determination, a court may look to the pleadings as well as to any documents relied upon in the pleadings. See Int'l Audiotext Network, Inc. v. Am. Tel. & Tel. Co., 62 F.3d 69, 72 (2d Cir. 1995). A court must accept as true all well-pleaded factual allegations in the complaint, and "draw[ ] all inferences in the plaintiff's favor." Allaire Corp. v. Okumus, 433 F.3d 248, 249--50 (2d Cir. 2006) (internal quotation marks and citation omitted). On the other hand, "the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Iqbal, 556 U.S. at 678; see ...

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