Shingle Springs Band of Miwok Indians v. Caballero
630 F. App'x 708 (2015)
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Rule of Law:
To establish trademark infringement under the Lanham Act, a plaintiff must demonstrate that the defendant used the mark 'in connection with goods or services.' To establish cybersquatting, a plaintiff must show the defendant acted with a 'bad faith intent to profit' from the mark.
Facts:
- The Shingle Springs Band of Miwok Indians ('the Tribe') is a federally recognized tribe that owns and operates the Red Hawk Casino.
- The Tribe holds a registered trademark for the 'Red Hawk Casino Mark' and uses unregistered 'Tribal Marks' related to the Tribe and its Rancheria.
- Cesar Caballero, associated with a rival tribal group, used the Tribe's marks and registered several domain names using variations on the Tribe's and casino's names, such as www.shinglespringsreservation.com.
- Caballero's website provided a contact email address under the heading 'Enrollment Questions.'
- In a deposition, Caballero made vague statements that his rival tribe provides 'association services,' 'welfare services,' and 'employment services.'
- Caballero also registered for a fictitious business name, received a business license, opened bank accounts, and received an employer identification number from the IRS, all in the Tribe's name.
- Caballero represented himself as 'the chief of the Shingle Springs Band of Miwok Indians' to a museum and told its staff not to continue contacts with the official Tribe.
Procedural Posture:
- The Shingle Springs Band of Miwok Indians ('the Tribe') sued Cesar Caballero in the United States District Court.
- The Tribe's complaint alleged trademark infringement under the Lanham Act and state law, as well as cybersquatting.
- The district court granted the Tribe's motion for summary judgment on all claims.
- The district court also issued a permanent injunction prohibiting Caballero from using the marks.
- Caballero (Appellant) appealed the district court's judgment to the United States Court of Appeals for the Ninth Circuit, with the Tribe as Appellee.
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Issue:
Does a party's use of protected trademarks on a website and registration of similar domain names constitute trademark infringement and cybersquatting under the Lanham Act when there is insufficient evidence that the party offered any goods or services or had a bad faith intent to profit?
Opinions:
Majority - Per Curiam (Memorandum)
No. The use of trademarks on a website and in domain names does not constitute trademark infringement or cybersquatting without sufficient evidence of commercial activity or bad faith intent to profit. For the trademark infringement claim, the Tribe failed to prove that Caballero used the marks 'in connection with ... goods or services.' Caballero's vague deposition statements about offering services are conclusory, and a website with an email for 'Enrollment Questions' is insufficient, on its own, to establish an offer of services under the Lanham Act. For the cybersquatting claim, there is no evidence in the record that Caballero had a 'bad faith intent to profit' from the domain names, which is a required element of the claim.
Concurring-in-part-and-dissenting-in-part - Graber, J.
No, as to the Red Hawk Casino Mark, but Yes, as to the Tribal Marks. While there was insufficient evidence regarding the casino mark, summary judgment for the Tribe was appropriate for the claims involving the Tribal Marks. Caballero's numerous actions—including opening bank accounts, getting a business license, and representing himself as the chief to third parties, all in the Tribe's name—are highly likely to cause confusion as to source and sponsorship. These acts are sufficient to constitute use 'in connection with services' under the Lanham Act and demonstrate a 'bad faith intent' for the cybersquatting claim by creating a likelihood of confusion.
Analysis:
This case highlights the strict evidentiary requirements for plaintiffs seeking summary judgment in trademark and cybersquatting cases. The majority opinion emphasizes that merely using a mark or registering a domain name is not actionable under the Lanham Act without concrete proof of the key statutory elements: commercial use for infringement and bad faith intent to profit for cybersquatting. The decision serves as a caution that even seemingly infringing conduct may not survive summary judgment if the plaintiff cannot produce specific evidence linking the use to commercial activity or a profit motive. The dissent, however, illustrates a different judicial perspective, suggesting that a broader pattern of deceptive conduct can be sufficient to infer these elements.
