LIBYA v. MISKI
LIBYA and EMBASSY OF LIBYA, Plaintiffs,
AHMAD MISKI, Defendant.
Civil Action No. 06-2046
United States District Court, District of
September 6, 2012.
WALTON, District Judge.
plaintiffs, Libya and the Embassy of Libya,1 initiated this action
against the defendant, Ahmad Miski, for allegedly infringing their
trademark rights under two provisions of the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(A), (B) (2006), and the AntiCybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d) (2006). The
defendant responded by asserting a counterclaim for monetary
damages arising from the plaintiffs' purportedly tortious
interference with his contracts and business advantage. The parties
tried their claims to the Court on February 16 and 17, 2011. At the
conclusion of the bench trial, the Court ordered that the parties
submit post-trial briefs, but, in March 2011, prior to the
submission of these filings, the plaintiffs moved to stay the case
in light of the then-growing political instability in Libya. The
Court granted the request for a stay in April 2011, after
concluding, for among other reasons, that an Executive Order
preventing the transfer of property or funds to or from the Libyan
Government rendered it unable to proceed on the parties' claims.
See Order at 2-3, Libya v. Miski, Civil Case No. 06-2046 (RBW)
(D.D.C. April 14, 2011) ("[R]egardless of whether this Court found
in favor of the plaintiff or the defendant, the Court could not
grant the requested relief due to the express prohibition on the
transfer of funds or property to or from the Libyan Government as
proscribed by Executive Order No. 13,566."). At a status hearing on
October 20, 2011, during which the parties made representations
regarding the improvement of the political situation in Libya, the
Court lifted the stay and reissued a briefing schedule for the
filing of post-trial briefs. After receiving and reviewing the
briefs, which included the parties' proposed findings of
fact,2 the Court heard the parties'
closing arguments on March 16, 2012. Based on the parties'
arguments presented during the February 2011 bench trial, the facts
about which the Court may take judicial notice, the closing
arguments presented to the Court on March 16, 2012, and the
parties' post-trial briefs, the Court makes the following findings
of fact that provide the basis for its conclusions of
I. FINDINGS OF
parties to this action and the services provided by
are two plaintiffs in this case. The first is the sovereign state
of Libya. The second, the Embassy of Libya, is a diplomatic agent
and instrumentality of the first.
Embassy plaintiff is accredited and officially known by the United
States Department of State as the Libyan Embassy (formerly the
Embassy of the Libyan Arab Jamahiriya). The Embassy was sometimes
referred to as a "People's Bureau," but this was merely an
alternative name and not an officially recognized
domain name3 used by the Embassy during
much of the pendency of this case was www.libyanbureau.com. Now,
however, the Embassy appears to employ the domain name
Libyan government requires that all commercial and legal documents
be "legalized," to verify their authenticity and validity to those
receiving the documents.
are several steps that comprise this document-legalization process.
The proponent of the document must first complete the document. The
document must then be notarized and authenticated by the United
States Department of State. It is then certified by the National
United States Arab Chamber of Commerce or a like body. Finally, the
Libyan Embassy legalizes the document by placing a stamp on
Embassy charges fees in connection with its legalization of
defendant is what is known as an "expeditor" of documents. The
defendant, through his Arab-American Chamber of Commerce,
facilitates the legalization of documents. He does not actually
legalize the documents himself, as legalization is provided solely
by the Embassy. Rather, the defendant's activity involves the
certification step of the legalization process.
Embassy does not provide certification services.
defendant does not provide legalization services.
domain names at issue
Defendant Miski, the record owner of the domain names at issue,
purchased the websites in 2002 and 2003.4
Defendant Miski registered the domain names at issue to increase
the internet search rankings for his own Arab-American Chamber of
Commerce website: www.arabchamber.com. All of the domain names at
issue redirect users typing the disputed domain names to Defendant
Miski's own Arab-American Chamber of Commerce
United States-Libya Relations
United States established diplomatic relations with Libya in
approximately 1952 or 1953.
1981, the United States government closed the Libyan government's
diplomatic offices in Washington, D.C., and expelled the Libyan
staff in response to a general pattern of conduct contrary to
internationally accepted standards of diplomatic
1986 to 2004, bilateral relations between the United States and
Libya were frozen when the United States imposed broad economic
sanctions against Libya. Specifically, President Ronald Reagan,
exercising his powers under the International Emergency Economic
Powers Act and the National Emergencies Act, issued Executive
Orders 12,543 and 12,544 on January 7, 1986, and January 8, 1986,
respectively. These Executive Orders prohibited commercial trade
and certain other transactions with Libya and persons associated
with the Libyan government, and "blocked" Libyan government
property located in the United States or possessed by United States
sanctions were unilaterally imposed by the United
the sanctions period, there was no need for document legalization
or certification of commercial documents, as most commercial
transactions between the United States and Libya were banned by the
sanctions. Private documents such as birth certificates or
educational transcripts were certified by the Libyan Mission to the
United Nations in New York and by the defendant.
the sanctions period, the Libyan government entrusted its building
space in Washington, D.C., to the government of the United Arab
II. CONCLUSIONS OF
A trademark owner
asserting a claim under the AntiCybersquatting Consumer Protection
Act must establish that: (1) it has a valid trademark entitled to
protection; (2) its mark is distinctive or famous; (3) the
defendant's domain name is identical or confusingly similar to, or
in the case of famous marks, dilutive of the owner's mark; and (4)
the defendant used, registered, or trafficked in the domain name
(5) with a bad faith intent to profit. See DaimlerChrysler v.
The Net, Inc.
388 F.3d 201
, 204 (6th Cir. 2004).
A. Does the
Embassy have a Valid Trademark Entitled to Protection?
15 U.S.C. §
1127 defines a trademark "as including `any word, name, symbol, or
device or combination thereof' used by any person `to identify and
distinguish his or her goods, including a unique product, from
those manufactured or sold by others and to indicate the source of
the goods, even if that source is unknown.'" Two Pesos, Inc. v.
Taco Cabana, Inc.
505 U.S. 763
, 768 (1992) (quoting 15 U.S.C. § 1127
(2006))). "Because a nonregistered mark has no presumption of
validity," the burden of proving the mark's classification lies on
the party asserting that the mark is entitled to protection.
A.J. Canfield Co. v. Honickman
808 F.2d 291
, 297 (3d Cir. 1986); accord Blinded Veterans
Ass'n v. Blinded Am. Veterans Found.
872 F.2d 1035
, 1041 (D.C. Cir. 1989). "[I]t is common ground"
that unregistered marks may be entitled to protection, and the
"general principles qualifying a mark for registration under §
2 of the Lanham Act are for the most part applicable in determining
whether an unregistered mark is entitled to protection." Two
, 505 U.S. at 768.
"Marks are often
classified in categories of generally increasing distinctiveness; .
. . they may be (1) generic; (2) descriptive; (3) suggestive; (4)
arbitrary; or (5) fanciful." Id.
& Fitch Co. v. Hunting World, Inc.
, 9 (2d Cir.1976)). "The latter three categories of
marks, because their intrinsic nature serves to identify a
particular source of a product, are deemed inherently distinctive
and are entitled to protection." Id.
distinctiveness is attributable to a mark when the mark `almost
automatically tells a customer that it refers to a brand and . . .
signal[s] a brand or product source.'"
Amazing Spaces, Inc. v. Metro Mini Storage
608 F.3d 225
, 240 (5th Cir. 2010) (quoting Wal-Mart Stores,
Inc. v. Samara Bros., Inc.
529 U.S. 205
, 210 (2000)) (emphasis in orginal)). On the other
hand, "[m]arks which are merely descriptive of a product are not
inherently distinctive," Two Pesos
, 505 U.S. at 769, and,
rather than immediately conveying a brand or product source,
"immediately convey knowledge of a quality, feature, function, or
characteristic of the goods or services with which [they are]
used," In re Bayer Aktiengesellschaft
488 F.3d 960
, 963 (Fed. Cir. 2007) (emphasis omitted). "When
used to describe a product, they do not inherently identify a
particular source, and hence cannot be protected," unless they have
acquired "distinctiveness which will allow them to be protected
under the [Lanham] Act." Two Pesos, Inc.
, 505 U.S. at 769.
"This acquired distinctiveness is generally called secondary
(internal quotation marks omitted).
"A descriptive mark
describes a product's features, qualities or ingredients, ..., or
describes the use to which a product is put." Genesee Brewing
Co. v. Stroh Brewing Co.
124 F.3d 137
, 143 (2d Cir. 1997) (internal quotation marks and
citations omitted). In other words, "[t]o be descriptive, a term
need only describe the essence of the business, rather than spell
out comprehensively all its adjunct services." Security Ctr.,
Ltd. v. First Nat'l Security Ctrs.
750 F.2d 1295
, 1299 (5th Cir. 1985). "A suggestive mark[,
however,] employs terms which do not describe but merely suggest
the features of the product, requiring the purchaser to use
imagination, thought and perception to reach a conclusion as to the
nature of the goods." Genesee Brewing Co.
, 124 F.3d at 143
(internal quotation marks and citation omitted). In considering
whether a mark is descriptive or suggestive, then, the appropriate
inquiry is "how much imagination is required on the consumer's part
in trying to cull some indication from the mark about the
qualities, characteristics, effect, purpose, or ingredients of the
product or service." Security Ctr., Ltd.
, 750 F.2d at
It is undisputed
that the marks at issue here are not registered trademarks.
See Pls.'s Br. at 20. Although they agree on the principles
that must be applied in determining whether the Embassy has a valid
trademark entitled to protection, see Def.'s Br. at 10, the
parties dispute whether the purported Embassy Marks are descriptive
or suggestive, see Pls.' Br. at 33-36; Def.'s Br. at 11-12.
The plaintiffs maintain that they have "rights in the Embassy Marks
based on their actual use in commerce in conjunction with specific
services in the United States." Pls.' Br. at 25. Specifically, the
Embassy claims that it "uses the specific Embassy Marks . . . in
conjunction with its document legalization services." Id. at
27. Accordingly, the plaintiffs contend that because
[t]he only entity
in the world that can `legalize' documents to be submitted from one
country to Libya is the Libyan Embassy ..., the Embassy Marks are
suggestive as they could only represent the source (the Libyan
Embassy) of the legalization services and do not describe a
characteristic or quality of the document legalization services
themselves other than the source of the services.
Id. at 33;
see also Pls.' Opp'n at 19. Alternatively, the plaintiffs
argue that even if the Embassy Marks are found to be merely
descriptive, they "have acquired distinctiveness because of their
continuous use in conjunction with document legalization services
in the United States for decades." Pl.s' Br. at 34. Unsurprisingly,
the defendant disagrees, asserting that "[b]oth the terms `Libya[n]
Embassy' and `Embassy of [Libya]' are merely descriptive," Def.'s
Br. at 11, and that the plaintiffs have failed to meet their burden
of proving secondary meaning, id. at 13. The Court agrees
with the defendant.
As this Circuit and
other courts have observed, the categories into which trademarks
are placed "`tend to blur at the edges and merge together,'" making
them "`somewhat difficult to articulate and to apply.'" Blinded
, 872 F.2d at 1039 (quoting Zatarain's, Inc.
v. Oak Grove Smokehouse, Inc.
698 F.2d 786
, 790 (5th Cir. 1983)). Despite this difficulty,
after examining the case law and the parties' arguments, the Court
concludes for several reasons that the terms "Libyan Embassy" and
"Embassy of Libya" are best classified as descriptive, rather than
suggestive, marks. First, purchasers and members of the general
public need not resort to "imagination, thought and perception to
reach a conclusion as to the nature of the goods" or services
offered by the Embassy. Genesee Brewing Co.
, 124 F.3d at
143. Rather, "the mark, though hardly transparent, does give the
unknowing consumer some idea of the function, quality, or
components of the [organization's services]." Security Ctr.,
, 750 F.2d at 1299. Indeed, upon being exposed to the term
"Libyan Embassy," the unknowing consumer readily understands that
the entity is involved in the provision of consular services to the
general public and serves as the diplomatic arm of the Libyan
government in the United States.
similarly, although the plaintiffs argue that the service they
provide, and which must be protected by the mark, is the
legalization of documents, the Court finds this argument
unpersuasive, as the Libyan Embassy serves the public through more
avenues than simply the legalization of documents for use in Libya.
See Pls.' Br. at 17 (quoting the testimony of a witness employed by
the Libyan Embassy who explained "the specific services that are
provided by the Embassy . . . are bilateral diplomatic relations
and consular services to the general public"). For example, when
one hears the term "Libyan Embassy," products and services such as
visas, passports, and other consular requirements readily spring to
mind. Accordingly, it seems a stretch to argue that the mark is
suggestive because it does not specifically describe the
legalization of documents. See Pls.' Opp'n at 19 (contending
that the "the Embassy Marks do not describe a particular
characteristic of the Libyan Government's document legalization
services, beyond the sole and single source thereof") (emphasis
added). In other words, the plaintiffs have seemingly attempted to
narrow the class of services and products provided by the Embassy
to achieve greater conceptual distance between the mark and what it
Third, and finally,
the term "Libyan Embassy" also conjures the idea of a physical
space-the base of operations for Libyan diplomats in the United
States. The plaintiffs have themselves emphasized this point during
this litigation. See, e.g., Pls.' Br. at 12 (asserting that
because the Libyan government maintained its "embassy building" in
Washington, D.C., during the sanctions period, it has "always had
an Embassy in the United States"); id. at 13 (explaining
that the building was referred to as the Libyan Embassy and
"continued to exist"); Pls.' Opp'n at 26 (defining the term
"embassy" as "a building containing the offices of an ambassador
and staff"). Indeed, "[i]t is difficult to imagine another term of
reasonable conciseness and clarity by which the public refers" to
the physical space occupied by Libyan diplomats in Washington, D.C.
Blinded Veterans Ass'n, 872 F.2d at 1041. It is clear,
therefore, that even the plaintiffs do not view the term "Libyan
Embassy" as "immediately signal[ing] a brand or product source,"
Wal-Mart Stores, Inc., 529 U.S. at 210, because it also
connotes this physical space.
A brief review of
two often-cited trademark cases confirms the Court's conclusion
that the terms "Libyan Embassy" and "Embassy of Libya" are
descriptive, rather than suggestive, marks. See Zatarain's,
, 698 F.2d at 790-91 (citing both Vision Center v.
596 F.2d 111
(5th Cir. 1979) and Douglas Labs. Corp. v.
Copper Tan, Inc.
210 F.2d 453
(2d Cir. 1954). In Vision Center v. Opticks,
, the Fifth Circuit concluded that the disputed mark- "The
Vision Center"-was descriptive, rather than suggestive as urged by
the partnership using the mark. 596 F.2d at 116. The court observed
that "[w]henever a word or phrase naturally directs attention to
the qualities, charactertistics, effect, or purpose of the product
or service, it is descriptive and cannot be claimed as an exclusive
trade name." Id.
The Fifth Circuit then concluded that "[i]t
simply d[id] not require an effort of the imagination to decide
that `vision center' is a place where one can get glasses," and
found either of the names used by the parties "to be descriptive of
the service provided by a business that deals in optical goods."
Id. at 117. In Douglas Labs. Corp. v. Copper Tan, Inc.
however, the Second Circuit determined that the word "Coppertone"
was suggestive, rather than descriptive as concluded by the
district court. 210 F.2d at 454; see also Zatarain's, Inc.
698 F.2d at 791 (observing that the "term Coppertone has been held
suggestive in regard to sun tanning products"). After explaining
that "[t]he test is the imaginativeness involved in the
suggestion," the Second Circuit reasoned that "[t]he name
[Coppertone] . . . is more properly a `come-on' to allure the
trade, than a mundane description of the preparation itself or its
indirect consequences." Douglas Labs. Corp.
, 210 F.2d at
455-56. Here, the term "Libyan Embassy" clearly conveys consular
services as the term "Vision Center" conveyed the delivery of
optical services and, moreover, does not require the
imaginativeness needed to associate sun tanning products with the
term "Coppertone." Accordingly, the terms "Libyan Embassy" and
"Embassy of Libya" are properly classified as descriptive marks, as
they "simply do not require an effort of the imagination to
decide that," Vision Center
, 596 F.2d at 117, the Libyan
Embassy is a place where one can acquire consular services provided
by the Libyan government.
Finally, the Court
finds a recent case from the Federal Circuit instructive on the
descriptive/suggestive divide in instances where the words in the
disputed term may not be exactly synonymous with the service or
product offered under the mark (e.g., vision and optical). In In
re The Chamber of Commerce of the United States
, the Federal
Circuit affirmed a determination by the Trademark Trial and Appeal
Board that the term "National Chamber" was merely descriptive.
675 F.3d 1297
, 1298 (Fed. Cir. 2012). The Chamber of Commerce
sought protection for the term "National Chamber" in connection
with its offering of the following services: (1) providing online
directory information services featuring information regarding
local and state chambers of commerce; (2) providing information and
news in the field of business, namely information and news on
current events and on economic, legislative, and regulatory
developments that can impact businesses; (3) administration of a
discount program enabling participants to obtain discounts on goods
and services; (4) analysis of governmental policy relating to
businesses; and (5) business data analysis. See id.
1298-99. The Federal Circuit relied on the reasoning of the
Trademark Trial and Appeal Board, explaining that the conclusion of
the Board was based on the fact that
services that are nationwide in scope, and CHAMBER is descriptive
of the services because it illustrates the purposes of the
services- promoting the interests of businessmen and businesswomen,
which is a purpose common to chambers of commerce.
Id. at 1299
(internal quotation marks and alteration omitted). The Federal
Circuit concluded that it "need only find that NATIONAL CHAMBER
immediately conveys information about one feature or characteristic
of at least one of the designated services within each of the"
Chamber of Commerce's trademark applications. Id. at 1301.
Here, just as the term "National Chamber" immediately conveyed the
business services offered by the Chamber of Commerce of the United
States, "Libyan Embassy" and "Embassy of Libya" immediately convey
the features and characteristics of the consular services offered
by the Embassy. In other words, consular services are a purpose
common to embassies; as "National Chamber" is to business services,
"Libyan Embassy" is to consular services. Accordingly, the terms
are properly classified as descriptive marks and entitled to
protection only if they have acquired secondary meaning in the
i. Have the
Plaintiffs Demonstrated that the term "Libyan Embassy" has Acquired
"The case law
uniformly requires [the refusal] of trade name protection to a
descriptive term unless it has acquired a secondary meaning."
, 596 F.2d at 117-18. The development of
secondary meaning has occurred "when, `in the minds of the public,
the primary significance of a [mark] is to identify the source of
the product rather than the product itself.'" Wal-Mart Stores,
, 529 U.S. at 211 (quoting Inwood Labs., Inc. v. Ives
456 U.S. 844
, 851 n.11 (1982)). "The [secondary meaning]
inquiry is one of the public's mental association between the mark
and the alleged mark holder." Bd. of Supervisors for La. State
Univ. Agric. & Mech. Coll. v. Smack Apparel Co.
550 F.3d 465
, 476 (5th Cir. 2008). While not limited to these
categories, courts consider five types of evidence "in ascertaining
whether secondary meaning has attached to a mark: (1) survey
evidence; (2) the length and manner of use of the name; (3) the
nature and extent of advertising and promotion of the name; (4) the
volume of sales; and (5) instances of actual confusion."
Security Center, Ltd.
, 750 F.2d at 1301 (citing Bank of
Texas v. Commerce Southwest, Inc.
741 F.2d 785
(5th Cir. 1984)). And because "`[t]he chief
inquiry is the attitude of the consumer,'" Security Center,
, 750 F.2d at 1301 (quoting Aloe Creme Labs., Inc. v.
423 F.2d 845
, 849 (5th Cir. 1970)), "`the authorities are in
agreement that survey evidence is the most direct and persuasive
way of establishing secondary meaning,'" Security Center,
, 750 F.2d at 1301 (quoting Zatarain's, Inc.
F.2d at 795)); accord Amazing Spaces, Inc.
, 608 F.3d at 248
(explaining that "[b]ecause the primary element of secondary
meaning is a mental association in buyers' minds between the
alleged mark and a single source of the product, the determination
whether a mark or dress has acquired secondary meaning is primarily
an empirical inquiry" (internal quotation marks, alteration, and
citation omitted)). Finally, "[p]roof of secondary meaning entails
rigorous evidentiary requirements." Ralston Purina Co. v. Thomas
J. Lipton, Inc.
341 F.Supp. 129
, 134 (S.D.N.Y. 1972).
plaintiffs maintain that "the Embassy Marks have acquired
distinctiveness because of their continuous use in conjunction with
document legalization services in the United States for decades."
Pls.' Br. at 34; see also Pls.' Opp'n at 21 ("The Libyan
Government's Embassy Marks have acquired distinctiveness because of
their continuous use in conjunction with document legalization
services in the United States."). The defendant disagrees, arguing
that the plaintiffs have presented insufficient evidence proving
secondary meaning. See Def.'s Br. at 14-19. The Court agrees
with the defendant that the plaintiffs have failed to meet the
"rigorous evidentiary requirements," Ralston Purina Co., 341
F. Supp. at 134, attendant to proving secondary meaning and,
furthermore, concludes that the undisputed duration and purpose of
the sanctions period counsels against a finding of secondary
Despite the fact
that a showing of secondary meaning is dependent on the attitudes
and perceptions of the public, the plaintiffs have adduced no such
evidence. Rather, at the bench trial, the plaintiffs relied on the
testimony of an employee of the Libyan Embassy and her opinions as
to the perception of the mark in the marketplace. See, e.g.
Pls.' Br. at 35 (quoting Leila Zubi's testimony on how the public
perceives the Embassy's name). While it is not at all implausible
that the general public may understand the term "Libyan Embassy" to
be the Libyan government's provider of consular services, the Court
cannot make a finding of secondary meaning on the basis of how it
imagines the public might construe the term or on how an Embassy
employee may believe the public to view the term. Here, then, not
only is there a total absence of survey evidence, the form of
evidence that courts have held constitutes the "`most direct and
persuasive way of establishing secondary meaning,'" Security
, 750 F.2d at 1301 (quoting Zatarain's,
, 698 F.2d at 795)), but the voice of the public is
altogether absent. This evidentiary failure cannot be overlooked by
Next, the Court
concludes that the length and purpose of the severing of diplomatic
ties and the imposition of sanctions compels a finding that the
plaintiffs have failed to show secondary meaning. First, although
the plaintiffs make much of the fact that the embassy building
remained in existence during the sanctions period, see,
, Pls.' Br. at 12, this fact is irrelevant as they have
attempted to tie the term "Libyan Embassy" to the document
legalization services provided, not the mere presence of a
building. In other words, the simple fact that a building existed
does little to advance the plaintiffs' claim that "the Embassy
Marks have acquired distinctiveness because of their continuous
in conjunction with document legalization services in the
United States for decades
," Pls.' Br. at 34 (emphases
added), because it is undisputed that the services in question were
not provided (and, indeed, could not be) during the sanctions
period. The sanctions period thus interrupted the purported
continuous use of the alleged marks. Second, it is indisputable
that the United States severed its diplomatic ties with Libya and
that the President issued Executive Orders 12,543 and 12,544 as
official repudiation of the Libyan government. It is clear, then,
that in addition to their failure to put forth any credible
evidence regarding the public's impressions of the names Embassy of
Libya and Libyan Embassy, the plaintiffs are also restrained by the
restrictions imposed by the President on the "length and manner of
use of the name[s]," Security Center, Ltd.
, 750 F.2d at
descriptive marks, for which the plaintiffs have failed to
demonstrate the existence of secondary meaning within the
marketplace, the terms "Embassy of Libya" and "Libyan Embassy" are
not entitled to protection because they would not qualify for
registration under the Lanham Act.8
interference with contract has four elements in the District of
Columbia: `(1) existence of a contract; (2) knowledge of the
contract; (3) intentional procurement of breach by the defendant;
and (4) damages resulting from the breach.'" Dean v. Walker
___ F. Supp. 2d ___, ___; ___, 2012 WL 2335944, *3 (D.D.C. June 19,
2012) (quoting Riggs v. Home Builders Inst.
203 F.Supp.2d 1
, 22 (D.D.C. 2002)); accord Onyeoziri v.
, 286 (D.C. 2012). Somewhat similarly,
elements to a successful claim of tortious interference with a
prospective economic advantage are (1) the existence of a valid
business relationship or expectancy, (2) knowledge of the
relationship or expectancy on the part of the interferer, (3)
intentional interference inducing or causing a breach or
termination of the relationship or expectancy, and (4) resultant
Passenger Corp. v. Veolia Transp. Servs., Inc.
791 F.Supp.2d 33
, 55 (D.D.C. 2011) (internal quotation marks
and citation omitted).
defendant's counterclaim asserts one count of tortious interference
with contract, and one count of tortious interference with
prospective economic advantage. Both are easily disposed of due to
the defendant's failure to put forth evidence regarding any of the
requisite elements. The only testimony provided by the defendant
was that he worked with one corporation in 2004 and submitted three
documents to the Libyan Embassy on the corporation's behalf.
Feb. 17, 2011 Hearing Transcript at 314:16-315:12;
at 317:9-24. Indeed, the defendant himself admitted that
the Libyan Embassy had not contacted his clients, id.
317:6-8, which conflicts with a finding of intentional
interference. See Bennett Enters., Inc. v. Domino's Pizza,
, 499 ("As its name would suggest, intentional
interference requires an element of intent. Further, `a general
intent to interfere or knowledge that conduct will injure the
[claimant's] business dealings is insufficient to impose
liability.' [Claimant] cannot establish liability without a `strong
showing of intent to disrupt ongoing business relationships.'
(quoting Genetic Sys. Corp. v. Abbott Labs.
691 F.Supp. 407
, 423 (D.D.C. 1988) (emphasis in original)).
Accordingly, the defendant having failed to put forth evidence of a
prima facie case of tortious interference with a contract or
tortious interference with a prospective economic advantage, the
Court finds in favor of the plaintiffs and rejects the defendant's
plaintiffs have failed to show that they have valid marks entitled
to protection, they cannot prevail on their claims under either the
Lanham Act or the AntiCybersquatting Conusumer Protection Act. And
because the defendant has failed to meet his evidentiary burdens
with regard to his counterclaim, he cannot prevail on either his
claim of tortious interference with contract or his claim of
tortious interference with prospective economic advantage.
Accordingly, the Court finds in favor of the defendant on the
plaintiffs' claims, and in favor of the plaintiffs on the
1. The plaintiffs instituted
this suit in November 2006, as The Great Socialist People's Libyan
Arab Jamahiriya and the Embassy of the Libyan Arab Jamahiriya.
After political unrest resulted in the overthrow of the government
of Muammar Gaddafi, however, the plaintiffs filed a motion pursuant
to Federal Rule of Civil Procedure 25(c) to amend their complaint
to reflect their new names. The defendant did not oppose the
motion, and, on March 14, 2012, the Court orally granted the motion
2. See generally
Plaintiff Libyan Government's Post-Trial Brief ("Pls.' Br.");
Post-Trial Memorandum of Defendant/Counter-Plaintiff Ahmad Miski
("Def.'s Br."); and Plaintiff Libyan Government's Opposition to
Defendant Miski's Post-Trial Memorandum ("Pls.' Opp'n").
3. A domain name is the
unique identifier of a certain website on the internet. See
Meriam-Webster Online Dictionary, available at
4. The domain names
registered by the defendant are: "embassyoflibya.org,"
"libyaembassy.com," "libyaembassy.org," and
Back to Reference
5. In full, Executive Order
12, 543 provided:
I, Ronald Reagan,
President of the United States of America, find that the policies
and actions of the Government of Libya constitute an unusual and
extraordinary threat to the national security and foreign policy of
the United States and hereby declare a national emergency to deal
with that threat.
I hereby order:
Section 1. The following
are prohibited, except to the extent provided in regulations which
may hereafter be issued pursuant to this Order:
(a) The import into the
United States of any goods or services of Libyan origin, other than
publications and materials imported for news publications or news
broadcast dissemination; (b) The export to Libya of any goods,
technology (including technical data or other information) or
services from the United States, except publications and donations
of articles intended to relieve human suffering, such as food,
clothing, medicine and medical supplies intended strictly for
(c) Any transaction by a
United States person relating to transportation to or from Libya;
the provision of transportation to or from the United States by any
Libyan person or any vessel or aircraft of Libyan registration; or
the sale in the United States by any person holding authority under
the Federal Aviation Act of any transportation by air which
includes any stop in Libya;
(d) The purchase by any
United States person of goods for export from Libya to any
(e) The performance by any
United States person of any contract in support of an industrial or
other commercial or governmental project in Libya;
(f) The grant or extension
of credits or loans by any United States person to the Government
of Libya, its instrumentalities and controlled entities;
(g) Any transaction by a
United States person relating to travel by any United States
citizen or permanent resident alien to Libya, or to activities by
any such person within Libya, after the date of this Order, other
than transactions necessary to effect such person's departure from
Libya, to perform acts permitted until February 1, 1986, by Section
3 of this Order, or travel for journalistic activity by persons
regularly employed in such capacity by a newsgathering
(h) Any transaction by any
United States person which evades or avoids, or has the purpose of
evading or avoiding, any of the prohibitions set forth in this
For purposes of this
Order, the term ``United States person'' means any United States
citizen, permanent resident alien, juridical person organized under
the laws of the United States or any person in the United
Sec. 2. In light of the
prohibition in Section 1(a) of this Order, section 251 of the Trade
Act of 1962, as amended
(19 U.S.C. 1881), and section 126 of the Trade Act of 1974, as
amended (19 U.S.C. 2136) will have no effect with respect to
Sec. 3. This Order is
effective immediately, except that the prohibitions set forth in
Section 1(a), (b), (c), (d) and (e) shall apply as of 12:01 a.m.
Eastern Standard Time, February 1, 1986.
Sec. 4. The Secretary of
the Treasury, in consultation with the Secretary of State, is
hereby authorized to take such actions, including the promulgation
of rules and regulations, as may be necessary to carry out the
purposes of this Order. Such actions may include prohibiting or
regulating payments or transfers of any property or any
transactions involving the transfer of anything of economic value
by any United States person to the Government of Libya, its
instrumentalities and controlled entities, or to any Libyan
national or entity owned or controlled, directly or indirectly, by
Libya or Libyan nationals. The Secretary may redelegate any of
these functions to other officers and agencies of the Federal
government. All agencies of the United States government are
directed to take all appropriate measures within their authority to
carry out the provisions of this Order, including the suspension or
termination of licenses or other authorizations in effect as of the
date of this Order.
This Order shall be
transmitted to the Congress and published in the Federal
The White House,
January 7, 1986.
Exec. Order No. 12,543, 51
Fed. Reg. 875 (Jan. 7, 1986). Executive Order 12, 544 states:
By the authority vested in
me as President by the Constitution and laws of the United States,
including the International Emergency Economic Powers Act (50
U.S.C. 1701 et seq.), the National Emergencies Act (50
U.S.C. 1601 et seq.) and section 301 of title 3 of the
United States Code, in order to take steps with respect to Libya
additional to those set forth in Executive Order No. 12543 of
January 7, 1986, to deal with the threat to the national security
and foreign policy of the United States referred to in that
I, RONALD REAGAN,
President of the United States, hereby order blocked all
property and interests in property of the Government of Libya, its
agencies, instrumentalities and controlled entities and the
Central Bank of Libya that are in the United States, that hereafter
come within the United States or that are or hereafter come within
the possession or control of U.S. persons, including overseas
branches of U.S. persons.
The Secretary of the
Treasury, in consultation with the Secretary of State, is
authorized to employ all powers granted to me by the International
Emergency Economics Power Act, 50 U.S.C. 1701 et seq., to
carry out the provisions of this Order.
This Order is effective
immediately and shall be transmitted to the Congress and published
in the Federal Register.
The White House,
January 8, 1986
Exec. Order No. 12544, 51
Fed. Reg. 1235 (Jan. 8, 1986) (emphasis added).
6. Nor did the plaintiffs
put forth evidence regarding the volume of sales or instances of
actual confusion, further buttressing the Court's conclusion that
their evidence failed to demonstrate the existence of secondary
meaning. The plaintiffs did provided letterhead, business cards,
and website printouts demonstrating their name and, in the case of
the website printout only, their offering of legalization services,
but this evidence is hardly strong with regard to the nature and
extent of advertising or their promotion of their name.
7. Although the Court does,
in part, base its determination that the marks lack secondary
meaning on the imposition of sanctions, the Court takes no position
on whether the sanctions could have resulted in a finding of
abandonment had the marks been otherwise entitled to protection. In
other words, the Court does not address whether the imposition of
economic or diplomatic sanctions by the United States could operate
to end common-law protection for a mark held by that
8. Having concluded that the
plaintiffs do not possess valid marks entitled to protection, the
Court need not analyze the remaining elements of the
AntiCybersquatting Consumer Protection Act.
9. The Court will
contemporaneously issue an Order consistent with this Memorandum