Reliable Carriers Inc. v. Moving Sites LLC
Reliable Carriers Inc. v. Moving Sites LLC
Opinion of the Court
In this trademark case, Defendant has moved to dismiss Plaintiff's claims for trademark infringement and trademark dilution. For the reasons below, the Court shall deny the motion because Plaintiff has *476stated a claim in all three counts of the complaint.
BACKGROUND
Plaintiff Reliable Carriers provides automobile transportation services throughout the United States. Complaint, ¶ 6. Defendant MovingSites develops and manages websites "in niche industries or locations, that create a central hub for community generated content." Id. at ¶ 7. One such website is www.transportreviews.com ("TransportReviews"). Id. at ¶ 8.
Plaintiff has a registered trademark for the name "Reliable Carriers." Id. at ¶ 2, 13. Plaintiff has identified itself using the Mark since 1983 and uses the Mark in advertising campaigns and promotional efforts. Id. at ¶ 12-13. This Mark is widely recognized by consumers in the transportation industry and has acquired substantial value and fame in the United States. Id. at ¶ 14-15. It is also distinctive, allowing customers to recognize that services provided under the Mark were performed by Plaintiff. Id. at ¶ 15. Plaintiff has never authorized Defendant to use its Mark. Id. at ¶ 16.
A visitor to TransportReviews can find reviews and contact information for businesses with similar names to Plaintiff. Id. at ¶ 20. A search for "Reliable" on the site generates 19 listings. Id. Some of these listings include the names and business information of companies infringing on Plaintiff's Mark, such as RCT Reliable Car Transport LLC, Reliable Auto Shippers, Reliable Auto Transport Carriers, and Reliable Elite Auto Carriers. Id. at ¶ 17-18. A visitor to TransportReviews can also find customer reviews. Id. at ¶ 26. There is at least one instance in which it appears that a review for an infringing company, BK Reliable Transport, Inc., may have actually been intended for Plaintiff. Id.
When Plaintiff became aware of the listings of infringing businesses on Defendant's site, Plaintiff contacted Defendant and requested that the infringing uses cease, Id. at ¶ 28-29. Since then, Defendant has continued to actively advertise its business and display the infringing uses on its website. Id. at ¶ 30.
On March 28, 2017, Plaintiff filed suit against Defendant, alleging federal claims for trademark infringement,
STANDARD OF DECISION
Federal Rule of Civil Procedure 12(b)(6) provides for the dismissal of a case where the complaint fails to state a claim upon which relief can be granted. The Court must construe the complaint in the light most favorable to the plaintiff and accept its allegations as true. DirectTV, Inc. v. Treesh ,
ANALYSIS
I. Request to Consider Matters Beyond the Complaint
Before reaching the merits, the Court shall resolve a procedural matter-whether *477the Court should consider a declaration attached to Defendant's Motion to Dismiss when reaching its decision on the merits. Ordinarily, a "district court is not permitted to consider matters beyond the complaint." Mediacom Southeast LLC v. BellSouth Telecomm., Inc. ,
That is not the case here. The complaint does not refer to this declaration, which was made months after the complaint was filed. And the complaint's reference to the TransportReviews website does not permit the Court to consider the declaration. The declaration does not merely reproduce the website but instead contains factual allegations about how Defendant operates the website and about the nature of Defendant's relationships, or lack thereof, with the companies that are infringing on Plaintiff's trademark. These allegations, which Plaintiff disputes, are material to Plaintiff's claims and cannot be considered by the Court at this stage. Thus, the Court shall not consider the declaration or any other factual allegations that are extraneous to the complaint.
II. Plaintiff's Trademark Infringement Claims
Turning to the merits, Plaintiff first alleges trademark infringement under the Lanham Act,
The parties address two methods for showing liability in a trademark infringement case: direct infringement and contributory liability. The former is the hallmark of the usual trademark case, in which "the defendant is using a mark to identify its goods that is similar to the plaintiff's trademark." Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc. ,
Beginning with direct infringement, Defendant argues that Plaintiff has failed to sufficiently allege that Defendant uses the Mark. To state a claim, Plaintiff must allege that Defendant has used the same or similar mark as a trademark. Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods. ,
On this point, the Sixth Circuit has consistently asked whether the "defendants are using the challenged mark in a way that identifies the source of their goods."
In response, Plaintiff notes that Interactive Products states that "non-trademark" use is use "that does not identify the source of a product."
But this conclusion does not end the inquiry. The Court must also consider whether Plaintiff has stated a claim for contributory trademark infringement. To state a claim, Plaintiff must first establish underlying direct infringement. See Rosetta Stone Ltd. v. Google, Inc. ,
The complaint satisfactorily alleges underlying direct infringement by the companies with listings on TransportReviews. Plaintiff alleges sufficient facts to show that it owns the registered trademark *479"Reliable Carriers," that the names of several other businesses listed on TransportReviews infringe on that trademark, and that their use is likely to cause confusion.
Plaintiff has also sufficiently alleged that Defendant knew or had reason to know of this infringement and continued to facilitate it without taking appropriate remedial measures. The complaint alleges that Defendant published the names and business information of the infringing businesses on TransportReviews. Defendant's response-that it is not responsible for the business reviews on its website, which are entered by customers-is a factual allegation outside the scope of the complaint. In light of the publication, Plaintiff contacted Defendant to request that it stop displaying the infringing marks on TransportReviews and that the display was actionable trademark infringement. From this, the Court can reasonably infer that, at that time, Defendant knew or had reason to know that those listings were infringing activities. Despite this knowledge, and the ability to remove the listings, Defendant continued to permit the infringing listings to be displayed on its website, thereby facilitating the infringement. See Goodfellow ,
III. Plaintiff's Trademark Dilution Claim
Plaintiff also brings a federal trademark dilution claim.
For a direct trademark dilution claim, Plaintiff must show that Defendant used the junior marks-the infringing uses by other businesses-in a trademark way. See Kassa v. Detroit Metro Convention & Visitors Bureau ,
But has Plaintiff stated a claim under a contributory liability theory? Although the Sixth Circuit has not directly recognized this theory, the parties agree it exists. And several other district courts have recognized it, commenting that it "comports with the policy concerns underlying the Trademark Dilution Act." Coach, Inc. v. Farmers Market & Auction ,
CONCLUSION
For the reasons above, IT IS ORDERED that Defendant's Motion to Dismiss is DENIED.
IT IS SO ORDERED.
Contributory liability may also be imposed where a party "intentionally induces another to infringe a trademark." Inwood Labs., Inc. v. Ives Labs., Inc. ,
Reference
- Full Case Name
- RELIABLE CARRIERS INC. v. MOVING SITES LLC
- Cited By
- 1 case
- Status
- Published