United States District Court, M.D. Florida, Ocala Division
MORALES HOWARD UNITED SLATES DISTRICT JUDGE.
CAUSE is before the Court on Defendants' Motion
to Dismiss Plaintiffs Complaint (Doc. 14; Motion),
filed on July 5, 2017. Plaintiff Holding Company of the
Villages, Inc. (Plaintiff or Holding Company) filed a
response on July 18, 2017. See Plaintiff Holding
Company of the Villages, Inc.'s Response in Opposition to
Defendants' Motion to Dismiss (Doc. 15;
Response). Accordingly, this matter is ripe for review.
Company has used the marks THE VILLAGES and (Image Omitted)
(collectively, the Marks), “since at least as early as
July 1992” “for residential real estate
construction and development, real estate brokerage of
residential housing, and resale of residential
housing.” See Complaint (Doc. 1)
¶28. Holding Company's predecessor
“coined” the term “The Villages” when
it developed The Villages community in central Florida.
Id. ¶¶ 7, 43. The term “is
suggestive of a community organized as a group of
self-sufficient, interconnected, small towns.”
Id. ¶45. Holding Company has registered, and
now owns the rights to, the Marks, as well as twenty related
marks. Id. ¶27, 38-39. Pursuant to 15 U.S.C.
§1065, “THE VILLAGES, ” has achieved
incontestable status. Id. ¶ 42.
Company “has spent significant sums to advertise and
promote its goods and services using the Marks” in
various forums, including television, newspapers, magazines,
outdoor advertising, and since 1996, a website located at
<thevillages.com> (the Villages Website). Id.
¶¶30-31, 33, 68. These advertisements have reached
“prospective customers outside of Florida, who wish to
relocate to Florida.” Id. ¶31. Holding
Company's efforts have enabled it to achieve
“significant commercial success.” Id.
¶36. The Marks are now “widely recognized by
consumers” as identifiers of Holding Company's
goods and services. Id.¶35. Accordingly,
Holding Company alleges that the Marks are “famous,
” id. ¶37, 48, “inherently
distinctive, ” id. ¶46, and to the extent
the Marks are descriptive, they “have acquired
distinctiveness and have achieved secondary meaning in
consumers' minds as to the source of goods and services
offered by Plaintiff, ” id. ¶47.
Holding Company's consent, Defendants have used the Marks
“in an effort to associate [their] business with The
Villages community and the Marks.” Id.
¶¶56, 75. Defendant John D. Sullivan (Sullivan)
owns and operates Defendants Little John's Movers &
Storage, Inc. (Little John's) and The Villages Moving
Storage and Logistics Corp (The Villages Moving)
(collectively, the Corporate Defendants). Id.
¶¶10, 16, 20. The Corporate Defendants “are,
in operation, the same business.” Id.
¶14. They compete with Holding Company's relocation
services by offering “residential moving services,
commercial moving services, furniture moving services,
‘senior moving' services, interstate moving
services, vehicle transportation services, packing services,
storage and self-storage services, and related goods such as
packing and packaging supplies.” Id.
¶¶51, 74. Defendants “intentionally target
persons moving to Plaintiff's community.”
Id. ¶64. The Corporate Defendants share a phone
number, id. ¶53, and “[u]pon information
and belief, ” promote their services on the website
located at <thevillagesmovingandstorage.com>,
id. ¶57. Defendant Sullivan owns the domain
name for <thevillagesmovingandstorage.com>.
Id. ¶70. “Upon information and belief,
Little John's does not maintain a separate website or
domain name.” Id. ¶71. The Corporate
Defendants have also used the website located at
<villagesmovingandstorage.com>. Id. ¶59.
“[u]pon information and belief, all Defendants were
acting in concert with or in a joint venture with the other,
were and are the agents of each other, and, in doing the
wrongful acts complained of herein, each was acting within
the course and scope of such agency.” Id.
¶22. All Defendants “committed the acts complained
of . . . in interstate commerce . . . for their individual
gain and profit.” Id. ¶¶23-24. By
“wrongfully trad[ing] upon and cash[ing] in on
Plaintiff's reputation and exclusive rights in [the]
Marks, ” Defendants have caused Holding Company to
suffer irreparable injury “in the form of lost
goodwill, diminished reputation, and increased costs.”
Id. ¶¶92, 95. Additionally,
Defendants' conduct has “diluted and/or
tarnished” the distinctive quality of the Marks.
on these allegations, on April 27, 2017, Holding Company
filed the Complaint in which it alleges the following four
causes of action under federal law: (1) trademark
infringement under the Lanham Act, 15 U.S.C. § 1114(1)
(Count I); (2) unfair competition, false designation of
origin, and false advertising under the Lanham Act, 15 U.S.C.
§ 1114(1) (Count II); (3) trademark dilution under the
Lanham Act, 15 U.S.C. § 1125(c) (Count III); and (4)
violation of the Anti-Cybersquatting Consumer Protection Act
(ACPA), 15 U.S.C. § 1125(d) (Count VI). Id.
¶¶102-136, 151-162. Plaintiff also alleges two
claims under Florida law: (1) common law trademark
infringement (Count IV), and (2) statutory injury to business
reputation and trademark dilution pursuant to Florida Statute
section 495.151 (Count V). Id. ¶¶137-150.
In response, Defendants filed the instant Motion.
Standard of Review
ruling on a motion to dismiss, brought pursuant to Rule
12(b)(6), the Court must accept the factual allegations set
forth in the complaint as true. See Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009); Swierkiewicz v.
Sorema N.A., 534 U.S. 506, 508 n.1 (2002); see also
Lotierzo v. Woman's World Med. Ctr., Inc., 278 F.3d
1180, 1182 (11th Cir. 2002). In addition, all reasonable
inferences should be drawn in favor of the plaintiff. See
Omar ex. rel. Cannon v. Lindsey, 334 F.3d 1246, 1247
(11th Cir. 2003) (per curiam). Nonetheless, the plaintiff
must still meet some minimal pleading requirements.
Jackson v. Bellsouth Telecomm., 372 F.3d 1250,
1262-63 (11th Cir. 2004) (citations omitted). Indeed, while
“[s]pecific facts are not necessary[, ]” the
complaint should “give the defendant fair notice of
what the . . . claim is and the grounds upon which it
rests.” Erickson v. Pardus, 551 U.S. 89, 93
(2007) (per curiam) (quoting Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555 (2007)). Further, the
plaintiff must allege “enough facts to state a claim to
relief that is plausible on its face.”
Twombly, 550 U.S. at 570. “A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 678 (citing Twombly, 550
U.S. at 556).
“plaintiff's obligation to provide the grounds of
his entitlement to relief requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do.” Twombly, 550
U.S. at 555 (internal quotations omitted); see also
Jackson, 372 F.3d at 1262 (explaining that
“[c]onclusory allegations, unwarranted deductions of
facts or legal conclusions masquerading as facts will not
prevent dismissal”) (internal citation and quotations
omitted). Indeed, “the tenet that a court must accept
as true all of the allegations contained in a complaint is
inapplicable to legal conclusions, ” which simply
“are not entitled to [an] assumption of truth.”
See Iqbal, 556 U.S. at 678, 680-81. Thus, in ruling
on a motion to dismiss, the Court must determine whether the
complaint contains “sufficient factual matter, accepted
as true, to ‘state a claim to relief that is plausible
on its face.'” Id. at 678 (quoting
Twombly, 550 U.S. at 570).
Motion, Defendants seek to dismiss Holding Company's
claims for dilution under federal and Florida law, Counts III
and V, respectively, and to dismiss Little John's as a
defendant. See generally Motion. First, the Court
will determine whether Holding Company has sufficiently
stated its claims for dilution. Then, the Court will consider
whether Holding Company has stated any claim for relief
plausible on its face against Little John's.