BUFFALO NIAGARA CHAUFFEURED SERVICES, INC. d/b/a BUFFALO LIMOUSINE Plaintiff,
JAMES LEEHAN d/b/a MAGIC MIST LIMOUSINE SERVICES, BUFFALO AIRPORT LIMOUSINE, NIAGARA FALLS SHUTTLE and NIAGARA WINE TOURS and ACES LIMOUSINE SERVICE, INC. Defendants.
DECISION AND ORDER
WILLIAM M. SKRETNY, Chief District Judge.
Presently before this Court is the motion of Plaintiff Buffalo Niagara Chauffeured Services, Inc., seeking to enforce the terms of a Stipulation of Dismissal against Defendant Aces Limousine Service, Inc.
Plaintiff commenced this action alleging unfair competition and false advertising under the Lanham Act and New York State law in July 2012. Initially commenced against only Defendant "Magic Mist Limousine Services, d/b/a Buffalo Airport Limousine Service ("Buffalo Airport Limousine"), d/b/a Niagara Falls Shuttle and d/b/a Niagara Wine Tours, " Plaintiff alleged that this singular Defendant "attempted to trade on the goodwill associated with Plaintiff's trademark, and has caused likely and actual consumer confusion, by repeatedly and prominently identifying itself as Buffalo Limousine' on the internet and in promotional literature." (Compl. ¶ 2, Docket No. 1.) In an Amended Complaint filed in November 2012, Plaintiff named "James Leehan, d/b/a/Magic Mist Limousine, Buffalo Airport Limousine Service..., Niagara Falls Shuttle and Niagara Wine Tours" and Ace Limousine Service, Inc. as Defendants. (Docket No. 18.) Plaintiff alleged that Defendant Aces was "now operating Buffalo Airport Limousine and continues to promote the business using the same infringing trademarks used by Leehan." (Am. Compl. ¶ 20.)
The parties settled the matter in January 2013, at which time Plaintiff entered into separate stipulations of dismissal with Leehan and Aces. (Docket Nos. 28-29.) Pursuant to his agreement with Plaintiff, Leehan agreed to cease all use of any designation that was confusingly similar to Plaintiff's "Buffalo Limousine" trademark and immediately remove the "buffaloairportlimo" website. (Docket No. 29 ¶¶ 1-2.) Leehan was expressly permitted, however, to direct visitors from that website to the "magicmistlimo" domain for thirty days. (Id. ¶ 2.)
The separate stipulation of dismissal between Plaintiff and Aces ("the Stipulation") provided the following:
1. Aces and any affiliated companies will immediately and permanently cease all business contact with defendant James Leehan, or any person or entity affiliated with Mr. Leehan, regarding the promotion or operation of a limousine service within the State of New York.
2. Aces will cease all use of any designation that is confusingly similar to plaintiff's BUFFALO LIMOUSINE trademark, including, without limitation, the designations Buffalo Limousine, ' Buffalo Limousine Services, ' Buffalo Airport Limousine, ' Buffalo Wedding Limousine' and Buffalo Corporate Limousine.'
[3.] This Court will maintain ongoing jurisdiction of any dispute regarding compliance with the terms of this Stipulation of Dismissal with Prejudice.
(Docket No. 28.)
Following this Court's so-ordering' the entry of both stipulations (Docket No. 30), Aces' counsel emailed Plaintiff's counsel, stating: "I have the signed stipulation by Le[e]han d/b/a Magic Mist and your client, Buffalo Limousine. My client would like to buy his name, Magic Mist' and his websi[t]e, but not his vehicles. This would violate our stipulation with your client. Would your client consent to us proceeding in light of the settlement?" (Reply Decl. of Charles Von Simson, Esq., Ex. A, Docket No. 35; see Sur-Reply Affirm. of Paul T. Nesper, Esq. ¶ 3.) Plaintiff declined on the ground that the Aces' own website still contained references that violated the stipulation. (Reply Von Simson Decl. Ex. A.)
Plaintiff subsequently became aware that Aces was answering the "Magic Mist" telephone lines and appeared to be operating the MagicMistLimo website. (Decl. of Charles Von Simson ¶ 9 Exs. D, G, Docket Nos. 32-2, 32-9; Decl. of Carla Boccio ¶ 3, Docket No. 32-10.) Upon inquiry, Aces' counsel asserted that "Magic Mist is out of business completely. My clients are using the assumed name for their business which does not violate the stipulation." (Von Simson Decl. Ex. D (March 5, 2013 Nesper email).) Plaintiff's counsel ultimately responded that adoption of the "d/b/a" ...