Super-Krete International, Inc. v. Sadleir

District Court, C.D. California
712 F. Supp. 2d 1023, 2010 U.S. Dist. LEXIS 50090 (2010)

ELI5:

Rule of Law:

Under the Anticybersquatting Consumer Protection Act (ACPA), a preliminary injunction preventing the sale of a domain name is warranted where a plaintiff demonstrates a likelihood of success on the merits by showing the defendant registered a confusingly similar domain name with a bad faith intent to profit. Registering a competitor's trademark as a domain name to divert web traffic and later offering to sell the domain to the trademark owner for profit are strong indicators of such bad faith.

Facts:

Super-Krete International, Inc. sells concrete repair products and owns federal trademarks for 'Super-Crete,' 'Super-Krete,' and 'Super-Krete Products,' with the 'Super-Crete' mark's first use in commerce dating back to 1966.
Concrete Solutions, Inc. is a direct competitor in the concrete restoration market, with its operations located less than seventeen miles from Super-Krete's location.
On March 17, 1999, Rod Sadleir, the President of Concrete Solutions, registered the domain name .
Sadleir directed all web traffic from to the Concrete Solutions website, which offers products in direct competition with Super-Krete.
Concrete Solutions has never used the terms 'supercrete' or 'super-crete' on its own website or in connection with any of its products.
On September 23, 2007, Sadleir offered to sell the domain name to Super-Krete for $15,000.
After Super-Krete filed a lawsuit, counsel for Concrete Solutions informed Super-Krete that they were considering selling the domain name to a third party.

Procedural Posture:

In September 2008, Super-Krete International, Inc. filed an arbitration action with the World Intellectual Property Organization (WIPO) seeking transfer of the domain name.
The WIPO panel denied Super-Krete's claim for transfer.
On March 18, 2010, Super-Krete (Plaintiff) sued Concrete Solutions, Inc. and Rod Sadleir (Defendants) in U.S. District Court for cyberpiracy, trademark infringement, and dilution.
The District Court granted Super-Krete's ex parte application for a Temporary Restraining Order (TRO) on April 14, 2010, enjoining Defendants from transferring the domain.
Plaintiff Super-Krete then applied for a preliminary injunction to extend the TRO pending the final resolution of the case.

Premium Content

Subscribe to Lexplug to view the complete brief

You're viewing a preview with Rule of Law, Facts, and Procedural Posture

Issue:

Does a trademark holder demonstrate a likelihood of success on its cybersquatting claim under the Anticybersquatting Consumer Protection Act (ACPA), warranting a preliminary injunction, when a direct competitor registers a confusingly similar domain name, uses it to divert traffic to its own commercial site, and later offers to sell the domain to the trademark holder?

Opinions:

Majority - Fischer, J.

Yes. A preliminary injunction is warranted because Super-Krete established a likelihood of success on its cybersquatting claim under the ACPA. The court found that Super-Krete owned a valid and distinctive mark, and that the domain name was confusingly similar to the 'Super-Crete' mark, noting that the removal of a hyphen is 'a distinction without a difference.' The court then analyzed the ACPA's nine statutory factors for determining bad faith and found they weighed in favor of Super-Krete. Specifically, Concrete Solutions had no intellectual property rights in the name, used the domain to divert customers from a competitor for commercial gain, and offered to sell the domain for financial gain without ever having used it for a bona fide offering of goods. The court rejected the defendant's laches defense, finding no prejudice from the delay, and held that the ACPA's safe harbor provision was inapplicable due to evidence of at least partial bad faith from the outset. Finally, the court concluded that the remaining factors for an injunction—irreparable harm, the balance of equities, and the public interest in avoiding consumer confusion—all supported granting the preliminary relief.

Analysis:

This opinion serves as a clear application of the preliminary injunction standard in an Anticybersquatting Consumer Protection Act (ACPA) case. It reinforces that using a domain name to divert a competitor's web traffic and then offering to sell the domain back are classic indicators of bad faith intent to profit. The decision also demonstrates that defenses like laches are weakened when the defendant cannot show prejudice, such as having invested in building the brand identity of the infringing domain. This case strengthens the hand of trademark holders seeking immediate injunctive relief to prevent cybersquatters from transferring or selling disputed domain names during litigation.

🤖 Gunnerbot:

Query Super-Krete International, Inc. v. Sadleir (2010) directly. You can ask questions about any aspect of the case. If it's in the case, Gunnerbot will know.

Subscribe to Lexplug to chat with the Gunnerbot about this case.

Premium Feature