by Traverse Legal, reviewed by Enrico Schaefer - August 18, 2010 - d. Domain Name Cybersquatting Law, Lawsuits & Cases
The case is Doctor's Assocs. v. Subway.SY LLC, 2010 U.S. Dist. LEXIS 83223 (D. Minn. July 30, 2010). In this motion before the U.S. District Court for the District of Minnesota, Plaintiff Doctor’s Associates, Inc. (Subway) sought a permanent injunction, statutory damages and attorney’s fees against Defendant Hani Kotifani.
Background on the Parties involved;
Plaintiff Doctor's Associates, Inc., (Subway) is the federally registered trademark holder for a number of trademarks associated with the FIVE DOLLAR FOOTLONG phenomenon Subway sandwich restaurant chain. Subway restaurants comprise the largest single-brand restaurant-chain in the world, with Subway trademarks found in about 32,000 restaurants. Subway registered the federal trademark for ‘SUBWAY’ on October 20, 1981, long after Subway first used the ‘SUBWAY’ mark on August 21, 1967. Furthermore, Subway registered ‘Subway Eat Fresh’ in 2002 and other stylized version of Subway in 2003 and 2007.
Defendant Hani Kotifani formed Subway.SY LLC (Subway.SY) on August 29, 2008 and maintains that he does not do business within the United States. However, Subway.SY was headquartered in Eden Prairie, Minnesota. In what appears to be a bid at blatant infringement at the trademark registration level, Kotifani registered Subway.SY ‘Eat Healthy’ with the Minnesota Secretary of State in 2009 and then ‘for the assumed name Subway.SY’ in 2010.
Prior History;
Even at the formative stages of this cybersquatting and trademark infringement lawsuit, the actions of Defendant Kotifani has been a shining beacon for how not to conduct oneself in a court proceeding;
The original claims (that were ruled on by the Court) brought by Subway against Kotifani were, specifically; trademark infringement and unfair competition under sections 32 and 43(a) of the Lanham Act, trademark dilution under 15 U.S.C. § 1125(c), violation of the Anti-Cybersquatting Consumer Protection Act under 15 U.S.C. § 1125(d)(1), and cancellation of Minnesota Trademark Registration pursuant to Minn. Stat. § 333.25.
Interestingly, this is not the first time Subway has filed suit against Kotifani. On February 8, 2010 in the original suit against Kotifani, U.S. Magistrate Judge Arthur J. Boylan informed Kotifani that he could not proceed in his defense without counsel representing Subway.SY LLC. Then, in a move demonstrating a clear lack of better judgment; Kotifani dissolved Subway.SY and informed the court he was prepared to defend himself without counsel;
Instead of doing the smart thing (and undoubtedly what Magistrate Judge Boylan had intended), On March 11, 2010 Kotifani notified the Court that he had dissolved Subway.SY LLC and further that he was prepared to proceed without counsel as a pro se defendant. at FN 1.
Apparently, representing himself in a trademark infringement and cybersquatting lawsuit brought against him by the largest restaurant chain in the world was a poor move for Kotifani;
Why was Kotifani’s pro se defense a clear demonstration of poor judgment? Because on April 2, 2010 the D.C. for the District of Minnesota granted Subway’s motion for summary judgment on Kotifani’s liability for cybersquatting and trademark infringement. Delivering the Court’s ruling, District Jude James M. Rosenbaum highlighted some direct repercussions of Kotifani’s choice to proceed as a pro se defendant, he stated;
“Notwithstanding defendant's expressed desire to oppose plaintiff's motion, he failed to properly file his opposition with the Court. On April 2, 2010, the Court held a hearing and granted plaintiff's motion. The Court further granted plaintiff leave to seek additional relief.”
Now that we’re up to date on the procedural history, we can examine Subway’s instant motion for a permanent injunction, statutory damages of $2 million under the Lanham Act, $100,000 in damages for Kotifani’s Subway.SY website infringement and $20,066.25 in attorney’s fees against Kotifani.
In Kotifani’s defense to these allegations; he claims that Subway has not alleged any business loss, that his website “has been removed from publication” (Rosenbaum notes that while it looks like some content formerly creating a likelihood of confusion was deleted from www.subway-sy.com, the Subway.SY logo remains prominently displayed and that is how Subway.SY’s website is still in display), and finally that Subway’s attorney’s fees are unreasonable. Obviously, Kotafani's shortcomings don't stop at his attempt at a pro se defense against restaurant supergiant Subway, but he could also use an overview on how to trademark registration.
Conclusion, District Judge Rosenbaum delivered the U.S. District Court for the District of Minnesota’s ruling;
1.) Plaintiff's motion seeking a permanent injunction, statutory damages, and attorneys fees and costs is granted, in part.
2.) Plaintiff's request for a preliminary injunction is granted. The Court enjoins defendant from:
a. Using the name or marks SUBWAY, SUBWAY EAT HEALTHY, SUBWAY EAT FRESH, SUBWAY.SY, SUBWAY.SY EAT HEALTHY, or any other confusingly similar mark.
b. Registering the name or marks SUBWAY, SUBWAY.SY, or SUBWAY.SY EAT HEALTHY with any state or authority.
c. Registering any domain name incorporating the SUBWAY marks.
d. Committing any act calculated or likely to cause the public to believe defendant or his goods or services are connected, licensed, sponsored, affiliated or associated with plaintiff, or from otherwise unfairly competing with plaintiff, including, but not limited to, publicly identify defendant with the SUBWAY mark.
3.) The Court awards statutory damages in the amount of $25,000 pursuant to 15 U.S.C. § 1117(c).
4.) The Court awards statutory damages in the amount of $25,000 pursuant to 15 U.S.C. § 1117(d).
5.) The Court grants plaintiff's request for attorney's fees and costs in the amount of $20,066.25.
Stay tuned for an in-depth analysis of the permanent injunction, trademark infringement, cybersquatting under the ACPA and attorney’s fees in this case, Doctor's Assocs. v. Subway.SY LLC.
For more in-depth analysis of recent rulings;
Internet Defamation Analysis: In re: Anonymous Online Speakers v. United States District Court for the District of Nevada Reno
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
