Internet Trademark Case Summaries
New York-New York Hotel & Casino, LLC v. Katzin
2010 WL 4386497 (D. Nev. Oct. 27, 2010)
New York-New York Hotel & Casino, LLC v. Katzin, 2010 WL 4386497 (D. Nev. Oct. 27, 2010). Plaintiff New York-New York Hotel & Casino (“NY-NY”) owned the New York New York Hotel & Casino, a New York City-themed resort in Las Vegas (the “Casino”). MGM Grand, NY-NY’s predecessor-in-interest, announced its plans to develop the Casino in 1994. NY-NY filed trademark applications for the marks NEW YORK NEW YORK and NEW YORK NEW YORK HOTEL & CASINO (the “NY-NY Marks”) in September 1995, and the marks were registered in 1998. Defendant Ronnie Katzin (“Katzin”) registered the domain name newyorknewyork.com in December 1995. NY-NY sued Katzin and his corporation, NewYorkNewYork.com, Inc., for cybersquatting and trademark infringement. Katzin attempted to file an answer on behalf of both himself and his corporation, but the court granted NY-NY’s motion to strike the answer as to the defendant corporation. The court then granted default judgment against the defendant corporation, and NY-NY moved for summary judgment against Katzin. The court granted NY-NY’s motion for summary judgment against Katzin on both claims, but granted NY-NY only $1,000.00 in ACPA statutory damages and $1,000.00 in corrective advertising damages. Regarding NY-NY’s cybersquatting claim, the court found that NY-NY owned a distinctive mark, NY-NY filed its trademark applications for the NY-NY Marks three months before Katzin registered the domain name, and the newyorknewyork.com domain name was identical or confusingly similar to the NY Marks. However, the court disagreed that Katzin registered the domain name with a bad-faith intent to profit from the NY-NY Marks. Although it was undisputed that Katzin registered the domain name after MGM Grand announced its plan to develop the Casino in 1994, NY-NY did not put forth any evidence to show that Katzin was aware of MGM Grand’s intentions when he registered the domain. Moreover, Katzin’s lack of trademark rights in the domain name at registration could not, on its own, establish his bad-faith intent. NY-NY also did not submit any evidence showing that Katzin intended to divert consumers by use of the domain name, tried to sell the domain name to NY-NY or a third party, or registered multiple domain names confusingly similar to others’ well-known trademarks. Therefore, NY-NY could not show that Katzin registered the domain name with a bad-faith intent to profit from the NY-NY Marks. However, the court held that NY-NY did prove that Katzin later used the domain name with a bad-faith intent to profit from the NY-NY Marks. As of November 2009, the home page and several other pages of the website hosted at newyorknewyork.com displayed an image of the Casino, along with the words “NEW YORK NEW YORK LAS VEGAS HOTEL & CASINO” and several of the NY-NY Marks. Internet users who clicked on the NY-NY Marks were redirected to an Expedia website where they could book hotel reservations in Las Vegas for the Casino or for other hotels in Las Vegas. Katzin received commissions from Expedia for each hotel room booked through the website. The court found that Katzin’s use of the NY-NY Marks in this context was neither bona fide noncommercial use nor fair use of the marks because Katzin intended to divert consumers to a web page other than NY-NY’s to profit from NY-NY’s goodwill in its hotel name. Katzin argued that “New York New York” is the name of a city and the state in which the city is located such that he could not infringe NY-NY’s marks by using the domain for a website that advertised products or services in or related to the city or state of New York. However, because Katzin did not limit his use of the newyorknewyork.com website to products or services related to the city or state of New York, the court rejected this argument and granted NY-NY’s motion for summary judgment on its cybersquatting claim. The court then held that Katzin’s use of the NY-NY Marks on his website was likely to cause confusion, and granted NY-NY’s motion for summary judgment on its trademark infringement claim. The court next turned to NY-NY’s request for a permanent injunction against Katzin’s use of the domain name and an order transferring the domain to NY-NY. The court noted that in the default judgment proceeding against Katzin’s corporation, it granted NY-NY’s request for an order permanently transferring the domain name to NY-NY. Because NY-NY did not offer any evidence that the judgment against NewYorkNewYork.com, Inc. did not result in this relief, or that the domain name was presently registered to Katzin, the court refused to order the transfer of the domain name from Katzin to NY-NY. Finally, the court denied NY-NY’s request for $100,000 in ACPA damages, the maximum amount available. The court disagreed with NY-NY’s argument that Katzin’s conduct in using the newyorknewyork.com domain name merited the imposition of maximum statutory damages. Although Katzin used the domain name with the bad-faith intent to profit from NY-NY’s marks, such a finding could not justify the award of the maximum amount for a number of reasons, including that Katzin did not originally register the domain with a bad faith intent to profit from the NY-NY Marks, Katzin removed NY-NY’s marks from the website shortly after the lawsuit was filed, and he did not use the website to profit from the NY-NY Marks for nearly 14 years before the objectionable uses began in November 2009. Under these circumstances, the court awarded statutory damages of only $1,000.00 and “nominal damages for corrective advertising of $1,000.00.” The court also stated that it would enter "permanent injunctive relief against Katzin to prevent further infringement."