REGGIE B. WALTON, District Judge.
The plaintiffs, Libya and the Embassy of Libya,
I. FINDINGS OF FACT
A. The parties to this action and the services provided by each
1. There are two plaintiffs in this case. The first is the sovereign state of Libya. The second, the Embassy of Libya, is a diplomatic agent and instrumentality of the first.
2. The Embassy plaintiff is accredited and officially known by the United States Department of State as the Libyan Embassy (formerly the Embassy of the Libyan Arab Jamahiriya). The Embassy was sometimes referred to as a "People's Bureau," but this was merely an alternative name and not an officially recognized designation.
3. The domain name
4. The Libyan government requires that all commercial and legal documents be "legalized," to verify their authenticity and validity to those receiving the documents.
5. There are several steps that comprise this document-legalization process. The proponent of the document must first complete the document. The document must then be notarized and authenticated by the United States Department of State. It is then certified by the National United States Arab Chamber of Commerce or a like body. Finally, the Libyan Embassy legalizes the document by placing a stamp on it.
6. The Embassy charges fees in connection with its legalization of documents.
7. The defendant is what is known as an "expeditor" of documents. The defendant, through his Arab-American Chamber of Commerce, facilitates the legalization of documents. He does not actually legalize the documents himself, as legalization is provided solely by the Embassy. Rather, the defendant's activity involves the certification step of the legalization process.
8. The Embassy does not provide certification services.
9. The defendant does not provide legalization services.
B. The domain names at issue
10. Defendant Miski, the record owner of the domain names at issue, purchased the websites in 2002 and 2003.
11. Defendant Miski registered the domain names at issue to increase the internet search rankings for his own Arab-American Chamber of Commerce website: www.arabchamber.com. All of the domain names at issue redirect users typing the disputed domain names to Defendant Miski's own Arab-American Chamber of Commerce website.
C. United States-Libya Relations
12. The United States established diplomatic relations with Libya in approximately 1952 or 1953.
14. From 1986 to 2004, bilateral relations between the United States and Libya were frozen when the United States imposed broad economic sanctions against Libya. Specifically, President Ronald Reagan, exercising his powers under the International Emergency Economic Powers Act and the National Emergencies Act, issued Executive Orders 12,543 and 12,544 on January 7, 1986, and January 8, 1986, respectively. These Executive Orders prohibited commercial trade and certain other transactions with Libya and persons associated with the Libyan government, and "blocked" Libyan government property located in the United States or possessed by United States persons.
15. The sanctions were unilaterally imposed by the United States.
16. During the sanctions period, there was no need for document legalization or
17. During the sanctions period, the Libyan government entrusted its building space in Washington, D.C., to the government of the United Arab Emirates.
II. CONCLUSIONS OF LAW
A trademark owner asserting a claim under the AntiCybersquatting Consumer Protection Act must establish that: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant's domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of the owner's mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. See DaimlerChrysler v. The Net, Inc., 388 F.3d 201, 204 (6th Cir.2004).
A. Does the Embassy have a Valid Trademark Entitled to Protection?
15 U.S.C. § 1127 defines a trademark "as including `any word, name, symbol,
"Marks are often classified in categories of generally increasing distinctiveness;... they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Id. (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976)). "The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection." Id. "Inherent distinctiveness is attributable to a mark when the mark `almost automatically tells a customer that it refers to a brand and ... immediately signal[s] a brand or product source.'" Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 240 (5th Cir.2010) (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000)) (emphasis in original). On the other hand, "[m]arks which are merely descriptive of a product are not inherently distinctive," Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753, and, rather than immediately conveying a brand or product source, "immediately convey knowledge of a quality, feature, function, or characteristic of the goods or services with which [they are] used," In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir.2007) (emphasis omitted). "When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected," unless they have acquired "distinctiveness which will allow them to be protected under the [Lanham] Act." Two Pesos, Inc., 505 U.S. at 769, 112 S.Ct. 2753. "This acquired distinctiveness is generally called secondary meaning." Id. (internal quotation marks omitted).
"A descriptive mark describes a product's features, qualities or ingredients,..., or describes the use to which a product is put." Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 143 (2d Cir. 1997) (internal quotation marks and citations omitted). In other words, "[t]o be descriptive, a term need only describe the essence of the business, rather than spell out comprehensively all its adjunct services." Security Ctr., Ltd. v. First Nat'l Security Ctrs., 750 F.2d 1295, 1299 (5th Cir. 1985). "A suggestive mark[, however,] employs terms which do not describe but merely suggest the features of the product, requiring the purchaser to use imagination, thought and perception to reach a conclusion as to the nature of the goods." Genesee Brewing Co., 124 F.3d at 143 (internal quotation marks and citation omitted). In considering whether a mark is descriptive or suggestive, then, the appropriate inquiry is "how much imagination is required on the consumer's part in trying
It is undisputed that the marks at issue here are not registered trademarks. See Pls.'s Br. at 20. Although they agree on the principles that must be applied in determining whether the Embassy has a valid trademark entitled to protection, see Def.'s Br. at 10, the parties dispute whether the purported Embassy Marks are descriptive or suggestive, see Pls.' Br. at 33-36; Def.'s Br. at 11-12. The plaintiffs maintain that they have "rights in the Embassy Marks based on their actual use in commerce in conjunction with specific services in the United States." Pls.' Br. at 25. Specifically, the Embassy claims that it "uses the specific Embassy Marks ... in conjunction with its document legalization services." Id. at 27. Accordingly, the plaintiffs contend that because
Id. at 33; see also Pls.' Opp'n at 19. Alternatively, the plaintiffs argue that even if the Embassy Marks are found to be merely descriptive, they "have acquired distinctiveness because of their continuous use in conjunction with document legalization services in the United States for decades." Pl.s' Br. at 34. Unsurprisingly, the defendant disagrees, asserting that "[b]oth the terms `Libya[n] Embassy' and `Embassy of [Libya]' are merely descriptive," Def.'s Br. at 11, and that the plaintiffs have failed to meet their burden of proving secondary meaning, id. at 13. The Court agrees with the defendant.
As this Circuit and other courts have observed, the categories into which trademarks are placed "`tend to blur at the edges and merge together,'" making them "`somewhat difficult to articulate and to apply.'" Blinded Veterans Ass'n, 872 F.2d at 1039 (quoting Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir.1983)). Despite this difficulty, after examining the case law and the parties' arguments, the Court concludes for several reasons that the terms "Libyan Embassy" and "Embassy of Libya" are best classified as descriptive, rather than suggestive, marks. First, purchasers and members of the general public need not resort to "imagination, thought and perception to reach a conclusion as to the nature of the goods" or services offered by the Embassy. Genesee Brewing Co., 124 F.3d at 143. Rather, "the mark, though hardly transparent, does give the unknowing consumer some idea of the function, quality, or components of the [organization's services]." Security Ctr., Ltd., 750 F.2d at 1299. Indeed, upon being exposed to the term "Libyan Embassy," the unknowing consumer readily understands that the entity is involved in the provision of consular services to the general public and serves as the diplomatic arm of the Libyan government in the United States.
Second, and similarly, although the plaintiffs argue that the service they provide, and which must be protected by the mark, is the legalization of documents, the Court finds this argument unpersuasive, as the Libyan Embassy serves the public through more avenues than simply the legalization of documents for use in Libya. See Pls.' Br. at 17 (quoting the testimony of a witness employed by the Libyan Embassy who explained "the specific services
Third, and finally, the term "Libyan Embassy" also conjures the idea of a physical space — the base of operations for Libyan diplomats in the United States. The plaintiffs have themselves emphasized this point during this litigation. See, e.g., Pls.' Br. at 12 (asserting that because the Libyan government maintained its "embassy building" in Washington, D.C., during the sanctions period, it has "always had an Embassy in the United States"); id. at 13 (explaining that the building was referred to as the Libyan Embassy and "continued to exist"); Pls.' Opp'n at 26 (defining the term "embassy" as "a building containing the offices of an ambassador and staff"). Indeed, "[i]t is difficult to imagine another term of reasonable conciseness and clarity by which the public refers" to the physical space occupied by Libyan diplomats in Washington, D.C. Blinded Veterans Ass'n, 872 F.2d at 1041. It is clear, therefore, that even the plaintiffs do not view the term "Libyan Embassy" as "immediately signal[ing] a brand or product source," Wal-Mart Stores, Inc., 529 U.S. at 210, 120 S.Ct. 1339, because it also connotes this physical space.
A brief review of two often-cited trademark cases confirms the Court's conclusion that the terms "Libyan Embassy" and "Embassy of Libya" are descriptive, rather than suggestive, marks. See Zatarain's, Inc., 698 F.2d at 790-91 (citing both Vision Center v. Opticks, Inc., 596 F.2d 111 (5th Cir.1979) and Douglas Labs. Corp. v. Copper Tan, Inc., 210 F.2d 453 (2d Cir.1954)). In Vision Center v. Opticks, Inc., the Fifth Circuit concluded that the disputed mark — "The Vision Center" — was descriptive, rather than suggestive as urged by the partnership using the mark. 596 F.2d at 116. The court observed that "[w]henever a word or phrase naturally directs attention to the qualities, charactertistics, effect, or purpose of the product or service, it is descriptive and cannot be claimed as an exclusive trade name." Id. The Fifth Circuit then concluded that "[i]t simply d[id] not require an effort of the imagination to decide that `vision center' is a place where one can get glasses," and found either of the names used by the parties "to be descriptive of the service provided by a business that deals in optical goods." Id. at 117. In Douglas Labs. Corp. v. Copper Tan, Inc., however, the Second Circuit determined that the word "Coppertone" was suggestive, rather than descriptive as concluded by the district court. 210 F.2d at 454; see also Zatarain's, Inc., 698 F.2d at 791 (observing that the "term Coppertone has been held suggestive in regard to sun tanning products"). After explaining that "[t]he test is the imaginativeness involved in the suggestion," the Second Circuit reasoned that "[t]he name [Coppertone] ... is more properly a `come-on' to allure the trade, than a mundane description of the preparation itself or its indirect consequences." Douglas Labs. Corp., 210 F.2d
Finally, the Court finds a recent case from the Federal Circuit instructive on the descriptive/suggestive divide in instances where the words in the disputed term may not be exactly synonymous with the service or product offered under the mark (e.g., vision and optical). In In re The Chamber of Commerce of the United States, the Federal Circuit affirmed a determination by the Trademark Trial and Appeal Board that the term "National Chamber" was merely descriptive. 675 F.3d 1297, 1298 (Fed.Cir.2012). The Chamber of Commerce sought protection for the term "National Chamber" in connection with its offering of the following services: (1) providing online directory information services featuring information regarding local and state chambers of commerce; (2) providing information and news in the field of business, namely information and news on current events and on economic, legislative, and regulatory developments that can impact businesses; (3) administration of a discount program enabling participants to obtain discounts on goods and services; (4) analysis of governmental policy relating to businesses; and (5) business data analysis. See id. at 1298-99. The Federal Circuit relied on the reasoning of the Trademark Trial and Appeal Board, explaining that the conclusion of the Board was based on the fact that
Id. at 1299 (internal quotation marks and alteration omitted). The Federal Circuit concluded that it "need only find that NATIONAL CHAMBER immediately conveys information about one feature or characteristic of at least one of the designated services within each of the" Chamber of Commerce's trademark applications.
Id. at 1301. Here, just as the term "National Chamber" immediately conveyed the business services offered by the Chamber of Commerce of the United States, "Libyan Embassy" and "Embassy of Libya" immediately convey the features and characteristics of the consular services offered by the Embassy. In other words, consular services are a purpose common to embassies; as "National Chamber" is to business services, "Libyan Embassy" is to consular services. Accordingly, the terms are properly classified as descriptive marks and entitled to protection only if they have acquired secondary meaning in the marketplace.
i. Have the Plaintiffs Demonstrated that the term "Libyan Embassy" has Acquired Secondary Meaning?
"The case law uniformly requires [the refusal] of trade name protection to a descriptive term unless it has acquired a secondary meaning." Vision Center, 596 F.2d at 117-18. The development of secondary meaning has occurred "when, `in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than
Here, the plaintiffs maintain that "the Embassy Marks have acquired distinctiveness because of their continuous use in conjunction with document legalization services in the United States for decades." Pls.' Br. at 34; see also Pls.' Opp'n at 21 ("The Libyan Government's Embassy Marks have acquired distinctiveness because of their continuous use in conjunction with document legalization services in the United States."). The defendant disagrees, arguing that the plaintiffs have presented insufficient evidence proving secondary meaning. See Def.'s Br. at 14-19. The Court agrees with the defendant that the plaintiffs have failed to meet the "rigorous evidentiary requirements," Ralston Purina Co., 341 F.Supp. at 134, attendant to proving secondary meaning and, furthermore, concludes that the undisputed duration and purpose of the sanctions period counsels against a finding of secondary meaning.
Despite the fact that a showing of secondary meaning is dependent on the attitudes and perceptions of the public, the plaintiffs have adduced no such evidence. Rather, at the bench trial, the plaintiffs relied on the testimony of an employee of the Libyan Embassy and her opinions as to the perception of the mark in the marketplace. See, e.g., Pls.' Br. at 35 (quoting Leila Zubi's testimony on how the public perceives the Embassy's name). While it is not at all implausible that the general public may understand the term "Libyan Embassy" to be the Libyan government's provider of consular services, the Court cannot make a finding of secondary meaning on the basis of how it imagines the public might construe the term or on how an Embassy employee may believe the public to view the term. Here, then, not only is there a total absence of survey evidence, the form of evidence that courts have held constitutes the "`most direct and persuasive way of establishing secondary meaning,'" Security Center, Ltd., 750 F.2d
Next, the Court concludes that the length and purpose of the severing of diplomatic ties and the imposition of sanctions compels a finding that the plaintiffs have failed to show secondary meaning. First, although the plaintiffs make much of the fact that the embassy building remained in existence during the sanctions period, see, e.g., Pls.' Br. at 12, this fact is irrelevant as they have attempted to tie the term "Libyan Embassy" to the document legalization services provided, not the mere presence of a building. In other words, the simple fact that a building existed does little to advance the plaintiffs' claim that "the Embassy Marks have acquired distinctiveness because of their continuous use in conjunction with document legalization services in the United States for decades," Pls.' Br. at 34 (emphases added), because it is undisputed that the services in question were not provided (and, indeed, could not be) during the sanctions period. The sanctions period thus interrupted the purported continuous use of the alleged marks. Second, it is indisputable that the United States severed its diplomatic ties with Libya and that the President issued Executive Orders 12,543 and 12,544 as official repudiation of the Libyan government. It is clear, then, that in addition to their failure to put forth any credible evidence regarding the public's impressions of the names Embassy of Libya and Libyan Embassy, the plaintiffs are also restrained by the restrictions imposed by the President on the "length and manner of use of the name[s]," Security Center, Ltd., 750 F.2d at 1301.
As merely descriptive marks, for which the plaintiffs have failed to demonstrate the existence of secondary meaning within the marketplace, the terms "Embassy of Libya" and "Libyan Embassy" are not entitled to protection because they would not qualify for registration under the Lanham Act.
B. The Defendant's Counterclaim
"Tort[i]ous interference with contract has four elements in the District of Columbia: `(1) existence of a contract; (2) knowledge of the contract; (3) intentional procurement of breach by the defendant; and (4) damages resulting from the breach.'" Dean v. Walker, 889 F.Supp.2d 190, 198-99, 2012 WL 2335944, *3 (D.D.C. June 19, 2012) (quoting Riggs v. Home Builders Inst., 203 F.Supp.2d 1, 22 (D.D.C. 2002)); accord Onyeoziri v. Spivok, 44 A.3d 279, 286 (D.C.2012). Somewhat similarly,
Nat'l R.R. Passenger Corp. v. Veolia, Transp. Servs., Inc., 791 F.Supp.2d 33, 55 (D.D.C.2011) (internal quotation marks and citation omitted).
Here, the defendant's counterclaim asserts one count of tortious interference with contract, and one count of tortious interference with prospective economic advantage. Both are easily disposed of due to the defendant's failure to put forth evidence regarding any of the requisite elements. The only testimony provided by the defendant was that he worked with one corporation in 2004 and submitted three documents to the Libyan Embassy on the corporation's behalf. See Feb. 17, 2011 Hearing Transcript at 314:16-315:12; id. at 317:9-24. Indeed, the defendant himself admitted that the Libyan Embassy had not contacted his clients, id. at 317:6-8, which conflicts with a finding of intentional interference. See Bennett Enters., Inc. v. Domino's Pizza, Inc., 45 F.3d 493, 499 ("As its name would suggest, intentional interference requires an element of intent. Further, `a general intent to interfere or knowledge that conduct will injure the [claimant's] business dealings is insufficient to impose liability.' [Claimant] cannot establish liability without a `strong showing of intent' to disrupt ongoing business relationships.") (quoting Genetic Sys. Corp. v. Abbott Labs., 691 F.Supp. 407, 423 (D.D.C.1988) (emphasis in original)). Accordingly, the defendant having failed to put forth evidence of a prima facie case of tortious interference with a contract or tortious interference with a prospective economic advantage, the Court finds in favor of the plaintiffs and rejects the defendant's counterclaim.
Because the plaintiffs have failed to show that they have valid marks entitled to protection, they cannot prevail on their claims under either the Lanham Act or the AntiCybersquatting Consumer Protection Act. And because the defendant has failed to meet his evidentiary burdens with regard to his counterclaim, he cannot prevail on either his claim of tortious interference with contract or his claim of tortious interference with prospective economic advantage. Accordingly, the Court finds in favor of the defendant on the plaintiffs' claims, and in favor of the plaintiffs on the defendant's counterclaim.
Exec. Order No. 12,543, 51 Fed. Reg. 875 (Jan. 7, 1986). Executive Order 12, 544 states:
Exec. Order No. 12544, 51 Fed. Reg. 1235 (Jan. 8, 1986) (emphasis added).