           RECOMMENDED FOR FULL-TEXT PUBLICATION
                Pursuant to Sixth Circuit Rule 206                        2    Lucas Nursery and                           No. 02-1668
        ELECTRONIC CITATION: 2004 FED App. 0071P (6th Cir.)                    Landscaping v. Grosse
                    File Name: 04a0071p.06
                                                                                              _________________
UNITED STATES COURT OF APPEALS                                                                     COUNSEL
                  FOR THE SIXTH CIRCUIT                                   ARGUED: Kevin L. Bennett, HEMMING, POLACZYK,
                    _________________                                     CRONIN, SMITH & WITTHOFF, Plymouth, Michigan, for
                                                                          Appellant. Jeffrey D. Wilson, RAYMOND & PROKOP,
 LUCAS NURSERY AND                X                                       Southfield, Michigan, for Appellee. ON BRIEF: Kevin L.
 LANDSCAPING , INC.,               -                                      Bennett, HEMMING, POLACZYK, CRONIN, SMITH &
         Plaintiff-Appellant,      -                                      WITTHOFF, Plymouth, Michigan, for Appellant. Jeffrey D.
                                   -  No. 02-1668                         Wilson, RAYMOND & PROKOP, Southfield, Michigan, for
                                   -                                      Appellee.
           v.                       >
                                   ,                                                          _________________
                                   -
 MICHELLE GROSSE ,                 -                                                              OPINION
          Defendant-Appellee. -                                                               _________________
                                   -
                                  N                                         R. GUY COLE, JR., Circuit Judge. Plaintiff-Appellant
      Appeal from the United States District Court                        Lucas Nursery and Landscaping, Inc. (“Lucas Nursery”)
     for the Eastern District of Michigan at Detroit.                     appeals the district court’s grant of summary judgment for
  No. 01-73291—Bernard A. Friedman, District Judge.                       Defendant-Appellee Michelle Grosse in this action alleging
                                                                          that Grosse violated the Anticybersquatting Consumer
                   Argued: October 31, 2003                               Protection Act, 15 U.S.C. § 1125(d)(1)(A) (2000) (“the
                                                                          ACPA”), by registering the domain name “lucasnursery.com”
              Decided and Filed: March 5, 2004                            and creating a web site on which she detailed her complaints
                                                                          against Lucas for its allegedly bad service in landscaping her
    Before: BATCHELDER and COLE, Circuit Judges;                          front yard. The central issue on appeal is whether the district
               HOOD, District Judge.*                                     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
     The Honorable Joseph M. Hood, United States District Judge for the   Michelle Grosse. In March 2000, Grosse hired Lucas
Eastern District of Kentucky, sitting by designation.

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No. 02-1668                         Lucas Nursery and         3    4    Lucas Nursery and                           No. 02-1668
                                 Landscaping v. Grosse                  Landscaping v. Grosse

Nursery to correct a dip in the soil (known as a swale) that ran   on the web site, again describing her experience with Lucas
horizontally through the center of her front yard. Lucas           Nursery.
Nursery’s representative, Bob Lucas, Jr., stated that the swale
could be corrected by using five large loads of topsoil. Lucas       Lucas Nursery filed suit against Grosse on August 17,
Nursery performed the work on May 16, 2000.                        2001. Thereafter, each party moved for summary judgment.
                                                                   On April 23, 2002, the district court denied Lucas Nursery’s
  Grosse contends that the work was performed inadequately.        motion for summary judgment and granted Grosse’s motion
After allegedly contacting Lucas Nursery on numerous               for summary judgment.
occasions to express her displeasure with the work and to
seek some repair, Grosse filed a complaint with the Better                               II. ANALYSIS
Business Bureau (“the BBB”). After the BBB ended its
investigation without making a recommendation, Grosse              A. Standard of Review
remained dissatisfied by what she felt had been poor service
by Lucas Nursery, and decided to inform others about her             We review a district court’s decision to grant summary
experience with the company.                                       judgment de novo. Stephenson v. AllState Ins. Co., 328 F.3d
                                                                   822, 826 (6th Cir. 2003). Summary judgment is proper if “the
   On August 12, 2000, Grosse registered the domain name           pleadings, depositions, answers to interrogatories, and
“lucasnursery.com.” She then posted a web page for the sole        admissions on file, together with the affidavits, if any, show
purpose of relaying her story to the public. The web page was      that there is no genuine issue of material fact and that the
titled, “My Lucas Landscaping Experience.” The web page            moving party is entitled to a judgment as a matter of law.”
included complaints regarding the poor preparation of the soil     Fed. R. Civ. P. 56(c). When reviewing a motion for summary
prior to Lucas Nursery’s laying of the sod, the hasty nature of    judgment, the evidence, all facts, and any inferences that may
Lucas Nursery’s work, the ineffectiveness of the BBB in            be drawn from the facts must be viewed in the light most
addressing her complaint, and the fact that she had to pay an      favorable to the nonmoving party. Matshusita Elec. Indus.
additional $5,400 to a second contractor to repair the work        Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
originally performed by Lucas Nursery.                             However, a “mere scintilla” of evidence is insufficient; the
                                                                   evidence must be such that a reasonable jury could find in
  On September 27, 2000, Grosse received a letter from             favor of the plaintiff. Anderson v. Liberty Lobby, Inc., 477
Lucas Nursery’s attorney demanding that she cease operating        U.S. 242, 252 (1986).
the web site. On October 2, 2000, Grosse removed the
web site’s content. However, after removing the web site’s         B. The ACPA
content, Grosse contacted the Michigan Bureau of
Commercial Services Licensing Division and the U.S. Patent           “The ACPA was enacted in 1999 in response to concerns
& Trademark Office to determine whether there was a                over the proliferation of cybersquatting – the Internet version
registered trademark for Lucas Nursery. After learning that        of a land grab.” Virtual Works, Inc. v. Volkswagen of
no trademark registration existed, Grosse concluded that           America, Inc., 238 F.3d 264, 267 (4th Cir. 2001). It was
Lucas Nursery could not prevent her from retaining the             enacted because then-existing law did not expressly prohibit
web site. On April 13, 2001, Grosse posted a new narrative         the practice of cybersquatting, and cybersquatters had begun
No. 02-1668                          Lucas Nursery and             5   6     Lucas Nursery and                             No. 02-1668
                                  Landscaping v. Grosse                      Landscaping v. Grosse

to insulate themselves from liability under the Federal                2. Bad Faith Analysis
Trademark Dilution Act, 15 U.S.C. § 1125. Id.
                                                                         In order for liability to attach under the ACPA a court must
  In the Senate Report accompanying the ACPA,                          conclude that the defendant’s actions constitute “bad faith.”
cybersquatters are defined as those who: (1) “register well-           ACPA § 3002 (codified at 15 U.S.C. § 1125(d)(1)(A)-(B)).
known brand names as Internet domain names in order to                 An analysis of whether a defendant’s actions constitute bad
extract payment from the rightful owners of the marks;”                faith within the meaning of the ACPA usually begins with
(2) “register well-known marks as domain names and                     consideration of several factors, nine of which are listed in the
warehouse those marks with the hope of selling them to the             ACPA. See Sporty’s Farm v. Sportman’s Market, Inc., 202
highest bidder;” (3) “register well-known marks to prey on             F.3d 489, 498 (2d Cir. 2000). The first four factors are those
consumer confusion by misusing the domain name to divert               that militate against a finding of bad faith by providing some
customers from the mark owner’s site to the cybersquatter’s            reasonable basis for why a defendant might have registered
own site;” (4) “target distinctive marks to defraud consumers,         the domain name of another mark holder. These factors focus
including to engage in counterfeiting activities.” S. REP. NO .        on: whether the defendant has trademark or other rights in the
106-140 at 5-6.                                                        domain name; the extent to which the domain name consists
                                                                       of the defendant’s legal name or other common name; any
  Pursuant to the ACPA, a cybersquatter is potentially liable          prior use of the domain name for the offering of goods and
to the owner of a protected mark if that person:                       services; and the bona fide noncommercial use of the site.
  (i) has a bad faith intent to profit from the mark . . . ; and          Each of the first three factors cuts against Grosse. She does
  (ii) registers, traffics in, or uses a domain name that --           not hold a trademark or other intellectual property rights to
  (I) in the case of a mark that is distinctive . . . , is             the domain name or names included in the registered domain
  identical or confusingly similar to that mark;                       name. The domain name neither consists of her legal name
  (II) in the case of a famous mark . . . , is identical or            or any name used to refer to her. Grosse has also not used the
  confusingly similar to or dilutive of that mark; or                  domain name in connection with any offering of goods or
  (III) is a trademark, word, or name protected by reason of           services. The fourth factor cuts in Grosse’s favor because the
  section 706 of Title18 or section 220506 of Title 36.                site was used for noncommercial purposes.
15 U.S.C. § 1125(d)(1)(A).                                               Factors five through eight are indicative of the presence of
                                                                       bad faith on the part of the defendant. These factors focus on:
1. Non-Commercial Activity and the ACPA                                whether the defendant seeks to divert consumers from the
                                                                       mark holder’s online location either in a way that could harm
  Although there is some dispute between the parties as to             good will or tarnish or disparage the mark by creating a
whether the ACPA covers non-commercial activity, we see no             confusion regarding the sponsorship of the site; whether there
reason to consider these arguments, as the statute directs a           has been an offer to transfer or sell the site for financial gain;
reviewing court to consider only a defendant’s “bad faith              whether the defendant provided misleading contact
intent to profit” from the use of a mark held by another party.        information when registering the domain name; and whether
We, therefore, turn to this consideration.
No. 02-1668                        Lucas Nursery and         7    8     Lucas Nursery and                            No. 02-1668
                                Landscaping v. Grosse                   Landscaping v. Grosse

the defendant has acquired multiple domain names which              Lucas Nusery contends that the Fourth Circuit’s decision in
may be duplicative of the marks of others.                        People for the Ethical Treatment of Animals (PETA) v.
                                                                  Doughney, 263 F.3d 359 (4th Cir. 2001), is applicable to the
  The paradigmatic harm that the ACPA was enacted to              instant action. Although the defendant in Doughney did not
eradicate – the practice of cybersquatters registering several    make commercial use of his web site, the court concluded that
hundred domain names in an effort to sell them to the             he had, nonetheless, acted with a bad faith intent to profit.
legitimate owners of the mark – is simply not present in any      Doughney had “made statements on his website and in the
of Grosse’s actions. In its report on the ACPA, the Senate        press recommending that PETA attempt to ‘settle’ with him
Judiciary Committee distilled the crucial elements of bad faith   and ‘make him an offer’” and that he had “registered other
to mean an “intent to trade on the goodwill of another’s          domain names that [were] identical or similar to the marks or
mark.” S. REP. NO . 106-140, at 9. See also Ford Motor Co.        names of other famous people and organizations.” Id. at 369.
v. Catalanotte, 342 F.3d 543, 549 (6th Cir. 2003)                 Here, Grosse has engaged in no such offensive conduct.
(“Registering a famous trademark as a domain name and then
offering it for sale to the trademark owner is exactly the           Lucas Nursery seeks to buttress its argument with Toronto-
wrong Congress intended to remedy when it passed the              Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass.
ACPA.”). There is no evidence that this was Grosse’s              2002). There, the district court granted Toronto-Dominion’s
intention when she registered the Lucas Nursery domain            motion for summary judgment against the defendant,
name and created her web site. It would therefore stretch the     concluding that there was sufficient evidence to show that the
ACPA beyond the letter of the law and Congress’s intention        defendant had acted in bad faith under the ACPA. The
to declare anything to the contrary.                              defendant, a disgruntled customer, registered sixteen domain
                                                                  names composed of various misspellings of the name
  None of these factors militates against Grosse. There is no     tdwaterhouse.com. Id. at 111. On the web sites associated
dispute that Lucas Nursery did not have an online location,       with these names, the defendant attacked Toronto-Dominion
and hence Grosse’s creation of a web site to complain about       for “webfacism” and involvement with white collar crime,
Lucas Nursery’s services could not have been intended “to         among other things. Id. at 112. The court concluded that the
divert consumers from the mark owners’s online location.”         defendant had acted in bad faith, citing four factors: (1) his
Nor is there any evidence that Grosse ever sought to mislead      intention to divert customers from the “tdwaterhouse”
consumers with regard to the site’s sponsorship. The web site     web site by creating confusion as to its source or sponsorship;
explicitly stated that the site was established by Grosse for     (2) the fact that he had registered sixteen domain names; (3)
the purposes of relaying her experience with Lucas Nursery.       the fact that he offered no goods or services on the site; and
Moreover, Grosse never offered to sell the site to Lucas          (4) the fact that he had no intellectual property rights in the
Nursery. She also did not provide misleading contact              site. See id. at 114.
information when she registered the domain name. Finally,
she has not acquired any additional domain names, which             Although Grosse’s actions would arguably satisfy three of
would be indicative of either an intent to sell such names to     the four aforementioned factors, she does not fall within the
those entities whose trademarks were identical or similar, or     factor that we consider central to a finding of bad faith. She
exploit them for other uses.                                      did not register multiple web sites; she only registered one.
                                                                  Further, it is not clear to this Court that the presence of simply
No. 02-1668                        Lucas Nursery and         9
                                Landscaping v. Grosse

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.
