United States District Court, S.D. Florida
ORDER GRANTING IN PART DEFENDANT'S MOTION TO
BLOOM UNITED STATES DISTRICT JUDGE
CAUSE is before the Court upon Defendant Moniker
Online Services, LLC's Motion to Dismiss Plaintiff
Mainstream Advertising, Inc.'s Second Amended Complaint
(the “Motion”). See ECF No. . The
Court has considered the Motion, Plaintiff's Response,
and Defendant's Reply. For the reasons that follow, the
Motion is granted in part and denied in part.
is a California company that provides a variety of online
advertising services. See ECF No. , at
¶¶ 1, 7. One of the ways Plaintiff monetizes its
online advertising services is through its select
registration and holding of domain names. See Id. at
¶ 8. Once Plaintiff acquires a desired domain name, it
creates a site containing advertising content that includes
links to good and services. See Id. These links
direct visitors to Plaintiff's clients. See Id.
Plaintiff is then compensated for the online referral.
around 2004 to 2005, Plaintiff engaged Defendant, a Florida
company, to acquire and host domain names for Plaintiff's
online advertising business. See Id. at ¶¶
2, 9. The parties entered into a “Registration
Agreement, ” which was updated by Defendant in November
2008 and August 2013. See Id. at ¶ 12.
Throughout their contractual relationship, Plaintiff
maintained “hundreds of thousands” of internet
domain names through Defendant's registration and hosting
services, including domain names that utilize Plaintiff's
federally-registered trademarks and service marks.
Id. Some of these trademarks include, but are not
limited to, “colo.com, ”
“cashnews.com, ” and “vortals.com.”
See Id. at ¶¶ 11-12.
early 2012, Defendant also entered the online traffic
advertising business, leading to “direct
competition” with Plaintiff in the “online
marketing space.” See Id. at ¶¶
13-14. Then, in March 2016, Defendant advised Plaintiff that
it would be taking 118 of Plaintiff's domain names,
including some over which Plaintiff holds trademarks, as a
result of a payment dispute between the parties. See
Id. at ¶ 16. According to Plaintiff, the value of
the 118 domain names that were seized far exceeded the amount
of money Defendant claimed was due as a result of the payment
dispute. See Id.
differences led to Plaintiff filing suit against Defendant in
this Court for Breach of the Registration Agreement, Breach
of the Implied Covenant of Good Faith and Fair Dealing,
Conversion, Unjust Enrichment, and Trademark Infringement.
See Id. at ¶ 17; see also Mainstream
Advertising, Inc. v. Moniker Online Services, LLC, No.
16-cv-61316-BB (“Mainstream I”), ECF No.
. On September 29, 2016, ten days after filing the
Amended Complaint, counsel for Plaintiff filed a Motion to
Withdraw. See ECF No. , at ¶ 18; see
also Mainstream I, ECF No. . The Court granted the
motion and extended the dates by which Plaintiff had to
retain new counsel on four separate occasions. See
Mainstream I, ECF Nos. , , ,  (October
20, 2016; October 28, 2016; November 14, 2016; and November
meanwhile, filed an Answer and Counterclaim to the Amended
Complaint on November 3, 2016, alleging Breach of Contract,
Account Stated, Open Account, and Quantum Meruit.
See ECF No. , at ¶ 18; see also
Mainstream I, ECF No. . On November 30, 2016, the
Court dismissed Plaintiff's Amended Complaint without
prejudice for failing to retain counsel despite the
Court's four orders to do so. See ECF No. ,
at ¶ 18; see also Mainstream I, ECF No. .
Because Plaintiff also failed to answer or otherwise respond
to Defendant's Counterclaim,  Defendant moved for the
Clerk's Entry of Default, which was entered on December
1, 2016. See Mainstream I, ECF Nos. , .
After Defendant filed a Motion for Entry of Final Judgment
after Default, the Court entered a Final Default Judgment
against Plaintiff on December 23, 2016 for a sum totaling
$294, 485.84. See ECF No. , at ¶¶
18-19; see also Mainstream I, ECF Nos. , .
On April 17, 2017, the Court adopted Judge Alicia O.
Valle's Report and Recommendation granting
Defendant's Motion for Attorneys' Fees and awarded
Defendant $77, 772.50 in attorneys' fees and $115.21 in
costs. See ECF No. , at ¶ 21; see also
Mainstream I, ECF No. .
to the Second Amended Complaint, Defendant appropriated
Plaintiff's trademarks by taking Plaintiff's domain
names for Defendant's use. See ECF No. , at
¶ 28. Specifically, Plaintiff alleges that Defendant:
(1) Transferred the registered domain names
“currentaffair.com” to itself. When clicking on
either domain name, users will suffer a virus attack,
“causing damage to [Plaintiff's] trademarked
(2) “Hijacked” the registered domain name
“mainstreamadvertising.com” from Plaintiff's
account and did not renew the domain name, allowing it to be
registered by DropCatch.com and placed for sale by
(3) Sold the registered domain name “vortals.com”
to Digital Domains MEPE (registered now through Epik, Inc.)
and listed “cashnews.com” for sale.
See Id. at ¶¶ 29-31. Following the entry
of the Final Default Judgment, Defendant began initiating
collection actions in various courts. For instance, after
obtaining the Final Default Judgment in this Court, Defendant
proceeded to initiate ex parte proceedings in the
Circuit Court for the City of Alexandria, Virginia. See
Id. at ¶ 37. Nevertheless, Plaintiff contends that
Defendant did so without complying with Federal Rule of Civil
Procedure 69, or Florida Statute Chapters 55 and 56 relating
to the execution of judgments. See Id. at ¶ 36.
Defendant then obtained the appointment of a Special Receiver
and orders from the Virginia state court in June 2017
ordering the sale at auction of a portfolio of domain names
to partially satisfy the Final Default Judgment entered in
this Court. See Id. at ¶ 37. However, in July
2017, the Virginia state court ordered Defendant to restore
the domain names and reverse all actions taken pursuant to
the June 2017 orders. See Id. at ¶ 39; see
also ECF No. [44-4], at 21-28. Plaintiff contends that
Defendant has refused to comply with the Virginia state
court's orders; as a result, Defendant continues to
“hold and receive income from at least 1840 domain
names” that were ordered to be returned. See
ECF No. , at ¶¶ 40-42.
also initiated proceedings in the United States District
Court for the Northern and Central Districts of California to
collect on the Final Default Judgment, despite failing to
comply with Fed.R.Civ.P. 69 or Fla. Stat. §§ 55,
56. See Id. at ¶¶ 45, 48. The Northern
District “denied [Defendant's] motions for seizure
[of Plaintiff's domain names] and directed [Defendant] to
limit its action to [sic] issuance of a writ of
execution.” See Id. at ¶ 47. The Central
District also denied Defendant's “requests for ex
parte seizure orders.” See Id. at ¶ 49.
on July 17, 2017, a new firm entered an appearance in
Mainstream I on behalf of Plaintiff and filed a
Second Amended Complaint. See Mainstream I, ECF Nos.
, . Defendant responded with a Motion to Strike,
which was granted by the Court on July 24, 2017, because the
Second Amended Complaint was filed without leave of Court and
despite the case having been closed on December 23, 2016.
See Mainstream I, ECF No. . On July 20, 2017,
however, Plaintiff filed a new complaint in a new action-the
one presently before the Court. See ECF No. .
Plaintiff's new Complaint brought the same five claims
against Defendant as the Complaint and Amended Complaint in
Mainstream I. Compare ECF No. , with
Mainstream I, ECF Nos. , . On August 11, 2017,
Plaintiff filed its Amended Complaint with the Court,
alleging one count for trademark infringement against
Defendant. See ECF No. . On August 25, 2017,
Defendant filed a motion to dismiss, arguing that the Amended
Complaint should be dismissed under res judicata,
collateral estoppel, and for failure to properly state a
claim for trademark infringement. See ECF No. .
The Court granted the motion in part, finding that Plaintiff
had not pled enough factual content to determine precisely
how Defendant, an internet domain registrar, had infringed
upon its trademarks. See ECF No. . Plaintiff was
provided leave to amend. See Id.
January 3, 2018, Plaintiff filed its Second Amended
Complaint, bringing forth claims for trademark infringement
under 15 U.S.C. § 1114 (Count I); Wrongful
Garnishment/Seizure (Count II); Abuse of Process (Count III);
Conversion (Count IV); and Accounting (Count V). See
ECF No. , at 15-27. On January 17, 2018, Defendant filed
the present Motion. See ECF No. . Plaintiff
filed its response on February 19, 2018, see ECF ...