Lucas Nursery and Landscaping, Inc. v. Michelle Grosse

*The Honorable Joseph M. Hood, United States District Judge for the
Eastern District of Kentucky, sitting by designation.
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RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2004 FED App. 0071P (6th Cir.)
File Name: 04a0071p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
LUCAS NURSERY AND
LANDSCAPING, INC.,
Plaintiff-Appellant,
v.
MICHELLE GROSSE,
Defendant-Appellee.
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No. 02-1668
Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 01-73291—Bernard A. Friedman, District Judge.
Argued: October 31, 2003
Decided and Filed: March 5, 2004
Before: BATCHELDER and COLE, Circuit Judges;
HOOD, District Judge.*
2 Lucas Nursery and
Landscaping v. Grosse
No. 02-1668
_________________
COUNSEL
ARGUED: Kevin L. Bennett, HEMMING, POLACZYK,
CRONIN, SMITH & WITTHOFF, Plymouth, Michigan, for
Appellant. Jeffrey D. Wilson, RAYMOND & PROKOP,
Southfield, Michigan, for Appellee. ON BRIEF: Kevin L.
Bennett, HEMMING, POLACZYK, CRONIN, SMITH &
WITTHOFF, Plymouth, Michigan, for Appellant. Jeffrey D.
Wilson, RAYMOND & PROKOP, Southfield, Michigan, for
Appellee.
_________________
OPINION
_________________
R. GUY COLE, JR., Circuit Judge. Plaintiff-Appellant
Lucas Nursery and Landscaping, Inc. (“Lucas Nursery”)
appeals the district court’s grant of summary judgment for
Defendant-Appellee Michelle Grosse in this action alleging
that Grosse violated the Anticybersquatting Consumer
Protection Act, 15 U.S.C. § 1125(d)(1)(A) (2000) (“the
ACPA”), by registering the domain name “lucasnursery.com”
and creating a web site on which she detailed her complaints
against Lucas for its allegedly bad service in landscaping her
front yard. The central issue on appeal is whether the district
court erred in granting summary judgment in favor of Grosse
based upon its conclusion that the she did not act in bad faith
within the meaning of the ACPA. For the reasons that follow,
we AFFIRM the judgment of the district court.
I. BACKGROUND
This case arises from a dispute related to landscaping work
that was performed by Lucas Nursery at the residence of
Michelle Grosse. In March 2000, Grosse hired Lucas

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Nursery to correct a dip in the soil (known as a swale) that ran
horizontally through the center of her front yard. Lucas
Nursery’s representative, Bob Lucas, Jr., stated that the swale
could be corrected by using five large loads of topsoil. Lucas
Nursery performed the work on May 16, 2000.
Grosse contends that the work was performed inadequately.
After allegedly contacting Lucas Nursery on numerous
occasions to express her displeasure with the work and to
seek some repair, Grosse filed a complaint with the Better
Business Bureau (“the BBB”). After the BBB ended its
investigation without making a recommendation, Grosse
remained dissatisfied by what she felt had been poor service
by Lucas Nursery, and decided to inform others about her
experience with the company.
On August 12, 2000, Grosse registered the domain name
“lucasnursery.com.” She then posted a web page for the sole
purpose of relaying her story to the public. The web page was
titled, “My Lucas Landscaping Experience.” The web page
included complaints regarding the poor preparation of the soil
prior to Lucas Nursery’s laying of the sod, the hasty nature of
Lucas Nursery’s work, the ineffectiveness of the BBB in
addressing her complaint, and the fact that she had to pay an
additional $5,400 to a second contractor to repair the work
originally performed by Lucas Nursery.
On September 27, 2000, Grosse received a letter from
Lucas Nursery’s attorney demanding that she cease operating
the web site. On October 2, 2000, Grosse removed the
web site’s content. However, after removing the web site’s
content, Grosse contacted the Michigan Bureau of
Commercial Services Licensing Division and the U.S. Patent
& Trademark Office to determine whether there was a
registered trademark for Lucas Nursery. After learning that
no trademark registration existed, Grosse concluded that
Lucas Nursery could not prevent her from retaining the
web site. On April 13, 2001, Grosse posted a new narrative
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on the web site, again describing her experience with Lucas
Nursery.
Lucas Nursery filed suit against Grosse on August 17,
2001. Thereafter, each party moved for summary judgment.
On April 23, 2002, the district court denied Lucas Nursery’s
motion for summary judgment and granted Grosse’s motion
for summary judgment.
II. ANALYSIS
A. Standard of Review
We review a district court’s decision to grant summary
judgment de novo. Stephenson v. AllState Ins. Co., 328 F.3d
822, 826 (6th Cir. 2003). Summary judgment is proper if “the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
that there is no genuine issue of material fact and that the
moving party is entitled to a judgment as a matter of law.”
Fed. R. Civ. P. 56(c). When reviewing a motion for summary
judgment, the evidence, all facts, and any inferences that may
be drawn from the facts must be viewed in the light most
favorable to the nonmoving party. Matshusita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
However, a “mere scintilla” of evidence is insufficient; the
evidence must be such that a reasonable jury could find in
favor of the plaintiff. Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 252 (1986).
B. The ACPA
“The ACPA was enacted in 1999 in response to concerns
over the proliferation of cybersquatting – the Internet version
of a land grab.” Virtual Works, Inc. v. Volkswagen of
America, Inc., 238 F.3d 264, 267 (4th Cir. 2001). It was
enacted because then-existing law did not expressly prohibit
the practice of cybersquatting, and cybersquatters had begun

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to insulate themselves from liability under the Federal
Trademark Dilution Act, 15 U.S.C. § 1125. Id.
In the Senate Report accompanying the ACPA,
cybersquatters are defined as those who: (1) “register well-
known brand names as Internet domain names in order to
extract payment from the rightful owners of the marks;”
(2) “register well-known marks as domain names and
warehouse those marks with the hope of selling them to the
highest bidder;” (3) “register well-known marks to prey on
consumer confusion by misusing the domain name to divert
customers from the mark owner’s site to the cybersquatter’s
own site;” (4) “target distinctive marks to defraud consumers,
including to engage in counterfeiting activities.” S. REP. NO.
106-140 at 5-6.
Pursuant to the ACPA, a cybersquatter is potentially liable
to the owner of a protected mark if that person:
(i) has a bad faith intent to profit from the mark . . . ; and
(ii) registers, traffics in, or uses a domain name that --
(I) in the case of a mark that is distinctive . . . , is
identical or confusingly similar to that mark;
(II) in the case of a famous mark . . . , is identical or
confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of
section 706 of Title18 or section 220506 of Title 36.
15 U.S.C. § 1125(d)(1)(A).
1. Non-Commercial Activity and the ACPA
Although there is some dispute between the parties as to
whether the ACPA covers non-commercial activity, we see no
reason to consider these arguments, as the statute directs a
reviewing court to consider only a defendant’s “bad faith
intent to profit” from the use of a mark held by another party.
We, therefore, turn to this consideration.
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2. Bad Faith Analysis
In order for liability to attach under the ACPA a court must
conclude that the defendant’s actions constitute “bad faith.”
ACPA § 3002 (codified at 15 U.S.C. § 1125(d)(1)(A)-(B)).
An analysis of whether a defendant’s actions constitute bad
faith within the meaning of the ACPA usually begins with
consideration of several factors, nine of which are listed in the
ACPA. See Sporty’s Farm v. Sportman’s Market, Inc., 202
F.3d 489, 498 (2d Cir. 2000). The first four factors are those
that militate against a finding of bad faith by providing some
reasonable basis for why a defendant might have registered
the domain name of another mark holder. These factors focus
on: whether the defendant has trademark or other rights in the
domain name; the extent to which the domain name consists
of the defendant’s legal name or other common name; any
prior use of the domain name for the offering of goods and
services; and the bona fide noncommercial use of the site.
Each of the first three factors cuts against Grosse. She does
not hold a trademark or other intellectual property rights to
the domain name or names included in the registered domain
name. The domain name neither consists of her legal name
or any name used to refer to her. Grosse has also not used the
domain name in connection with any offering of goods or
services. The fourth factor cuts in Grosse’s favor because the
site was used for noncommercial purposes.
Factors five through eight are indicative of the presence of
bad faith on the part of the defendant. These factors focus on:
whether the defendant seeks to divert consumers from the
mark holder’s online location either in a way that could harm
good will or tarnish or disparage the mark by creating a
confusion regarding the sponsorship of the site; whether there
has been an offer to transfer or sell the site for financial gain;
whether the defendant provided misleading contact
information when registering the domain name; and whether

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the defendant has acquired multiple domain names which
may be duplicative of the marks of others.
The paradigmatic harm that the ACPA was enacted to
eradicate – the practice of cybersquatters registering several
hundred domain names in an effort to sell them to the
legitimate owners of the mark – is simply not present in any
of Grosse’s actions. In its report on the ACPA, the Senate
Judiciary Committee distilled the crucial elements of bad faith
to mean an “intent to trade on the goodwill of another’s
mark.” S. REP. NO. 106-140, at 9. See also Ford Motor Co.
v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003)
(“Registering a famous trademark as a domain name and then
offering it for sale to the trademark owner is exactly the
wrong Congress intended to remedy when it passed the
ACPA.”). There is no evidence that this was Grosse’s
intention when she registered the Lucas Nursery domain
name and created her web site. It would therefore stretch the
ACPA beyond the letter of the law and Congress’s intention
to declare anything to the contrary.
None of these factors militates against Grosse. There is no
dispute that Lucas Nursery did not have an online location,
and hence Grosse’s creation of a web site to complain about
Lucas Nursery’s services could not have been intended “to
divert consumers from the mark owners’s online location.”
Nor is there any evidence that Grosse ever sought to mislead
consumers with regard to the site’s sponsorship. The web site
explicitly stated that the site was established by Grosse for
the purposes of relaying her experience with Lucas Nursery.
Moreover, Grosse never offered to sell the site to Lucas
Nursery. She also did not provide misleading contact
information when she registered the domain name. Finally,
she has not acquired any additional domain names, which
would be indicative of either an intent to sell such names to
those entities whose trademarks were identical or similar, or
exploit them for other uses.
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Lucas Nusery contends that the Fourth Circuit’s decision in
People for the Ethical Treatment of Animals (PETA) v.
Doughney, 263 F.3d 359 (4th Cir. 2001), is applicable to the
instant action. Although the defendant in Doughney did not
make commercial use of his web site, the court concluded that
he had, nonetheless, acted with a bad faith intent to profit.
Doughney had “made statements on his website and in the
press recommending that PETA attempt to ‘settle’ with him
and ‘make him an offer’” and that he had “registered other
domain names that [were] identical or similar to the marks or
names of other famous people and organizations.” Id. at 369.
Here, Grosse has engaged in no such offensive conduct.
Lucas Nursery seeks to buttress its argument with Toronto-
Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass.
2002). There, the district court granted Toronto-Dominion’s
motion for summary judgment against the defendant,
concluding that there was sufficient evidence to show that the
defendant had acted in bad faith under the ACPA. The
defendant, a disgruntled customer, registered sixteen domain
names composed of various misspellings of the name
tdwaterhouse.com. Id. at 111. On the web sites associated
with these names, the defendant attacked Toronto-Dominion
for “webfacism” and involvement with white collar crime,
among other things. Id. at 112. The court concluded that the
defendant had acted in bad faith, citing four factors: (1) his
intention to divert customers from the “tdwaterhouse”
web site by creating confusion as to its source or sponsorship;
(2) the fact that he had registered sixteen domain names; (3)
the fact that he offered no goods or services on the site; and
(4) the fact that he had no intellectual property rights in the
site. See id. at 114.
Although Grosse’s actions would arguably satisfy three of
the four aforementioned factors, she does not fall within the
factor that we consider central to a finding of bad faith. She
did not register multiple web sites; she only registered one.
Further, it is not clear to this Court that the presence of simply

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one factor that indicates a bad faith intent to profit, without
more, can satisfy an imposition of liability within the
meaning of the ACPA. The role of the reviewing court is not
simply to add factors and place them in particular categories,
without making some sense of what motivates the conduct at
issue. The factors are given to courts as a guide, not as a
substitute for careful thinking about whether the conduct at
issue is motivated by a bad faith intent to profit. Perhaps
most important to our conclusion are, Grosse’s actions, which
seem to have been undertaken in the spirit of informing
fellow consumers about the practices of a landscaping
company that she believed had performed inferior work on
her yard. One of the ACPA’s main objectives is the
protection of consumers from slick internet peddlers who
trade on the names and reputations of established brands. The
practice of informing fellow consumers of one’s experience
with a particular service provider is surely not inconsistent
with this ideal.
CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s
grant of summary judgment in favor of Grosse.

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