United States v. Melayne R. Danekas

1 The Honorable Richard H. Kyle, United States District Judge for the District
of Minnesota, adopting the report and recommendations of the Honorable Susan
Richard Nelson, United States Magistrate Judge for the District of Minnesota.
United States Court of Appeals
FOR THE EIGHTH CIRCUIT
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No. 01-2534
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Dr. Genick Bar-Meir, *
*
Appellant, *
* Appeal from the United States
v. * District Court for the
* District of Minnesota.
North American Die Casting *
Association, * [UNPUBLISHED]
*
Appellee. *
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Submitted: December 26, 2001
Filed: January 10, 2002
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Before BOWMAN, BRIGHT, and LOKEN, Circuit Judges.
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PER CURIAM.
Genick Bar-Meir filed this action against the North American Die Casting
Association (NADCA), requesting an order that the domain name "nadca.org" should
remain with him. NADCA filed counterclaims under the Lanham Act, 15 U.S.C. §
1051 et seq., seeking injunctive relief to prevent Bar-Meir from using the term
"NADCA" and to transfer the domain name to NADCA. The district court1 granted

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NADCA's motion for summary judgment on its counterclaims, permanently enjoined
Bar-Meir from using the term "NADCA," ordered Bar-Meir to transfer the domain
name "nadca.org" to NADCA, and dismissed Bar-Meir's complaint with prejudice.
The district court has not yet resolved NADCA's claim for damages. Bar-Meir
appeals.
We have jurisdiction to review the district court's interlocutory order granting
both the injunction, see 28 U.S.C. § 1292(a), and summary judgment, see Randolph
v. Rodgers, 170 F.3d 850, 856 (8 th Cir. 1999)(court may review issues inextricably
bound up with injunction). We conclude that the district court correctly granted
summary judgment on NADCA's counterclaims under sections 32(1)(a) and 43(a)(1)
of the Lanham Act, as the relevant factors support the court's finding that a likelihood
of confusion exists from Bar-Meir's use of the NADCA trademark. See 15 U.S.C.
§§ 1114(1)(a), 1125(a)(1); Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 830 (8 th
Cir. 1999)(discussing factors). We also conclude that summary judgment was proper
on NADCA's counterclaim for cybersquatting, as the statutory factors point to Bar-
Meir's bad-faith intent to profit from the mark. See 15 U.S.C. § 1125(d)(1)(A),
(d)(1)(B)(i). Thus, we hold that the district court did not abuse its discretion in
issuing a permanent injunction, see 15 U.S.C. § 1116(a); Randolph, 170 F.3d at 856
(standard of review), and we affirm. We dismiss the appeal as to the remaining
orders, as those issues are not properly before us.
A true copy.
Attest:
CLERK, U.S. COURT OF APPEALS, EIGHTH CIRCUIT.

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