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Holding Co. of Villages, Inc. v. Little John's Movers & Storage, Inc.

United States District Court, M.D. Florida, Ocala Division

December 11, 2017

LITTLE JOHN'S MOVERS & STORAGE, INC., a Florida corporation, et al., Defendants.



         THIS 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.

         I. Background [1]

         Holding 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.[2]

         Holding 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 <> (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.

         Without 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 <>, id. ¶57. Defendant Sullivan owns the domain name for <>. 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 <>. Id. ¶59.

         Further, “[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. Id. ¶93.

         Based 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.

         II. Standard of Review

         In 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).

         A “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).

         III. Discussion

         In the 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.

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