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3700 Associates, LLC v. Griffin



Plaintiff 3700 Associates (“3700”) owned The Cosmopolitan Resort and Casino in Las Vegas, NV and promoted the resort since 2005 using the federally registered mark COSMOPOLITAN and the domain name “cosmolv.com.” Defendant Griffin registered the domain name “cosmopolitanresort.com” in 2003, which generated pop-up advertisements and provided links to other websites. 3700 sued Griffin in Nevada for trademark infringement, unfair competition, and cybersquatting, which prompted Griffin to remove references to Las Vegas and Nevada from his website. The Nevada case was dismissed for lack of personal jurisdiction, and 3700 filed this action in Florida. Griffin then filed a motion to dismiss this action, which the court converted to a motion for summary judgment due to his inclusion of facts and documents not alleged in the complaint. The court denied Griffin’s summary judgment motion on 3700’s trademark infringement and unfair competition claims because issues of material fact remained regarding whether Griffin posted his website before or after plaintiff’s acquisition of trademark rights, whether hosting a non-competing website providing advertising links is a commercial use, and whether plaintiff’s descriptive marks had acquired secondary meaning, and, if so, when. On the cybersquatting claim, however, the court granted summary judgment in Griffin’s favor. The ACPA requires that a plaintiff’s mark be distinctive or famous at the time of the registration of the domain name. While 3700 argued that its COSMOPOLITAN mark was distinctive as a mark for resort services, the court found that if the descriptive term COSMOPOLITAN had become distinctive, it had become so only as early as February of 2003, approximately 16 months after Griffin registered his domain name. Accordingly, because 3700’s mark “did not exist at the time that [Griffin] registered the domain name in August 2003,” 3700’s ACPA claim failed.