Internet Trademark Case Summaries

Doctor’s Assocs., Inc. v. Subway.SY LLC

2010 WL 3187899 (D. Minn. July 30, 2010)

Doctor’s Assocs., Inc. v. Subway.SY LLC, --- F. Supp. 2d ----, 2010 WL 3187899 (D. Minn. July 30, 2010). Plaintiff Doctor’s Associates, Inc. (“Subway”) owned the Subway restaurant chain and federal registrations for its SUBWAY and SUBWAY EAT FRESH marks. Defendant Hani Kotifani (“Kotifani”) registered the domain name subway.sy and incorporated defendant Subway.SY LLC (“Subway.SY”) in Minnesota in August 2008. The corporation was designed to lure investors into believing they were buying legitimate Subway franchises for locations in Syria. Kotifani set up a website and a Facebook page to advertise Subway.SY, both of which featured Subway’s registered trademarks, sandwich images copied directly from Subway’s website, and the slogan “Subway.SY: Eat Healthy.” Several Facebook users posted comments on the page indicating their happiness that Subway was coming to Syria. Subway sued Subway.SY for trademark infringement, dilution, and cybersquatting, and filed a motion for summary judgment. Although Kotifani claimed he would oppose Subway’s motion, he failed to properly file his opposition with the court and the court granted Subway’s motion for summary judgment. Subway then filed a motion for a permanent injunction, Lanham Act counterfeiting statutory damages, ACPA statutory damages, and attorney’s fees and costs. Kotifani opposed Subway’s motion.

The court held that Subway.SY’s SUBWAY.SY and SUBWAY.SY EAT HEALTHY marks infringed Subway’s registered marks. After the court’s order, Kotifani continued to maintain its website and stated in a court filing that he could use the Subway name in “a country where NO ONE knows SUBWAY.” Because Kotifani’s continued infringement would irreparably harm Subway and confuse the public, the court granted Subway’s motion for a permanent injunction against Kotifani and Subway.SY’s use of the SUBWAY marks. As to statutory damages for counterfeiting, Subway sought the maximum $2,000,000 for willful counterfeiting, but the court awarded only $325,000. The court explained that this amount was warranted by Kotifani’s continued infringing behavior being told that his actions violated the law. Subway sought the maximum $100,000 for statutory damages for cybersquatting, but the court awarded only $25,000 without much explanation. Finally, the court awarded the requested $20,066.25 in attorney’s fees and costs.