                                                            [DO NOT PUBLISH]


               IN THE UNITED STATES COURT OF APPEALS

                        FOR THE ELEVENTH CIRCUIT
                         ________________________                   FILED
                                                          U.S. COURT OF APPEALS
                                                            ELEVENTH CIRCUIT
                                No. 08-11402                     Aug. 22, 2008
                            Non-Argument Calendar            THOMAS K. KAHN
                          ________________________                 CLERK

                      D. C. Docket No. 06-60823-CV-WPD

MAILPLANET.COM, INC.,
a Corporation of the District
of Columbia,

                                                             Plaintiff-Appellant,

                                     versus

LO MONACO HOGAR, S.L.,
a Limited Liability Company of Spain,

                                                            Defendant-Appellee.


                          ________________________

                   Appeal from the United States District Court
                       for the Southern District of Florida
                         _________________________

                                (August 22, 2008)

Before HULL, MARCUS and WILSON, Circuit Judges.

PER CURIAM:
       Plaintiff-appellant Mailplanet.com appeals the district court’s order

dismissing as moot its complaint against defendant-appellee Lo Monaco Hogar for

declaratory and injunctive relief regarding the registration of the Internet domain

name lomonaco.com. After review, we affirm the district court’s dismissal.

                                   I. BACKGROUND

       In 2003, Mailplanet.com had a business plan to purchase Internet domain

names that were common surnames and allow customers to use such domain

names for personal email addresses.1 For example, Mailplanet.com registered the

domain name garcia.com and offered customers an email address at that domain

name, such as michael@garcia.com. Using census statistics, Mailplanet.com

identified common surnames and targeted the domain names matching such

surnames for purchase. One such domain name was lomonaco.com.

       In December 2003, Mailplanet.com entered into a contract with Internet

registrar Monikor Online Services to register lomonaco.com. In the contract,

Mailplanet.com agreed to abide by the Uniform Domain Name Dispute Resolution

Policy (“UDRP”), a procedure for resolving challenges to the registration of a

       1
         A domain name is an alphanumeric designation that allows an Internet user to access a
particular website. See Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 19 & n.3 (1st
Cir. 2001). A domain name consists of the top level domain (such as .com, .net, or .org), which
is preceded by the second level domain (a combination of letters, numbers, or some symbols).
Id. at 19. For example, in the domain name uscourts.gov, “.gov” is the top level domain name
and “uscourts” is the second level domain name. Id.

                                               2
particular domain name that is identical or confusingly similar to a trademark held

by a complainant.

       In 2004, Mailplanet.com changed its business plan and stopped offering

new email accounts. For domain names, such as lomonaco.com, that had never

been utilized for email accounts, Mailplanet.com employed a “parking service” to

earn revenue from advertisers.2

       In August 2005, Lo Monaco Hogar, a mattress company in Spain, filed a

complaint under the UDRP as to Mailplanet.com’s registration of lomonaco.com.

The World Intellectual Property Organization (“WIPO”) reviewed the complaint.

In December 2005, a WIPO panel concluded lomonaco.com was confusingly

similar to Lo Monaco Hogar’s Spanish trademarks utilizing the words “Lo

Monaco” and ordered Monikor Online Services to transfer the registration of

lomonaco.com from Mailplanet.com to Lo Monaco Hogar.

       Before any transfer was made, Mailplanet.com filed a complaint in district

court against Lo Monaco Hogar seeking declaratory and injunctive relief under 15




       2
         A “parking service” displays a list of words relating to products or services offered by
advertisers on the domain name’s Internet website. When a visitor to the domain name’s website
clicks on one of these displayed words, the visitor is linked to the website of the advertiser. The
owner of the website is in turn paid a small fee for this referral.

                                                3
U.S.C. § 1114(2)(D)(v) and 28 U.S.C. § 2201.3 Section 1114 is a provision of the

Lanham Act, 15 U.S.C. § 1051 et seq., that was amended by the

Anticybersquatting Consumer Protection Act (“ACPA”). Section 1114(2)(D)(v)

provides that:

       A domain name registrant whose domain name has been suspended,
       disabled, or transferred under a policy described under clause (ii)(II)
       may, upon notice to the mark owner, file a civil action to establish that
       the registration or use of the domain name by such registrant is not
       unlawful under this chapter. The court may grant injunctive relief to the
       domain name registrant, including the reactivation of the domain name
       or transfer of the domain name to the domain name registrant.

15 U.S.C. § 1114(2)(D)(v). Lo Monaco Hogar does not dispute that the WIPO

panel decision constitutes a “policy” within the meaning of § 1114(2)(D)(v) and

that the decision ordered a transfer of lomonaco.com from Mailplanet.com to Lo

Monaco Hogar.

       Mailplanet.com’s complaint requested that the district court grant it this

relief: (1) “[a] DECLARATION that MAILPLANET’S registration of the domain

name is lawful, and does not violate any enforceable right of LO MONACO

HOGAR in the United States of America”; and (2) “[a]n injunction under 15

U.S.C. [§] 1114(2)(D)(V) including reactivation of the domain name and


       3
        Section 2201, known as the Declaratory Judgment Act, provides that “any court of the
United States . . . may declare the rights and other legal relations of any interested party seeking
such declaration.” 28 U.S.C. § 2201(a).

                                                  4
maintenance of registration to Plaintiff, to prevent transfer to the Defendant.”

Mailplanet.com also sought costs, fees, and other relief the court deemed proper.

       After Lo Monaco Hogar answered, Mailplanet.com moved for summary

judgment. Lo Monaco Hogar responded to the summary judgment motion and

moved to dismiss Mailplanet.com’s complaint as moot. Lo Monaco Hogar

explained it had decided to curtail its online business activities and to forego its

claim to lomonaco.com. Lo Monaco Hogar had informed Mailplanet.com and

Moniker Online Services of its decision. Because Lo Monaco Hogar had

conceded the only thing at issue (the ownership of lomonaco.com), Lo Monaco

Hogar argued there was no case or controversy for the district court to decide.

       Mailplanet.com responded that Lo Monaco Hogar’s concession of

Mailplanet.com’s ownership of lomonaco.com did not render the case moot

because there were other issues remaining, including, inter alia, the legality of

Mailplanet.com’s past and present use of lomonaco.com.4 Mailplanet.com argued

a declaration of its rights was necessary to preempt future litigation by (1) Lo

Monaco Hogar for trademark infringement or for bad faith acquisition and use of

lomonaco.com, and (2) other parties who may rely on the WIPO panel’s adverse



       4
         Although Mailplanet.com cited other allegedly live issues in the case in the district court,
it only references its use of lomonaco.com on appeal.

                                                 5
findings to Mailplanet.com’s detriment. Mailplanet.com suggested Lo Monaco

Hogar’s challenge to Mailplanet.com’s ownership of lomonaco.com was

reasonably likely to recur in the future because Lo Monaco Hogar never admitted

that it has no rights to the “Lo Monaco” mark in the United States.

      The district court granted Lo Monaco Hogar’s motion to dismiss because

Mailplanet.com failed to show there was still a substantial controversy to which

the court could grant meaningful relief after Lo Monaco Hogar consented to

Mailplanet.com’s ownership of lomonaco.com. The district court noted that

Moniker Online Services had not yet transferred lomonaco.com to Lo Monaco

Hogar and a declaration as to the lawfulness of Mailplanet.com’s use of

lomonaco.com would constitute an inappropriate advisory opinion. The district

court stated the voluntary cessation exception to the mootness doctrine did not

apply here because Lo Monaco Hogar had not been charged with any illegal or

offensive conduct. Further, even if Lo Monaco Hogar did bring suit against

Mailplanet.com in the future regarding lomonaco.com, it likely would be




                                         6
precluded.5 Because there was no live case or controversy, the district court

dismissed Mailplanet.com’s complaint as moot.

       The district court also denied Mailplanet.com’s motion for reconsideration.

Mailplanet.com filed a timely appeal.6

                                     II. DISCUSSION

       A case is moot when it no longer presents a “live” issue or the parties lack a

legally cognizable interest in the outcome, because, at that point, a court can no

longer give meaningful relief. Troiano v. Supervisor of Elections in Palm Beach

County, 382 F.3d 1276, 1282 (11th Cir. 2004). The mootness doctrine derives

directly from Article III’s limitation on federal court jurisdiction to the

consideration of “Cases” and “Controversies” because a moot action cannot be

characterized as an active case or controversy. Id. at 1281-82. If an event

occurring after the filing of a suit deprives the court of the ability to give the




       5
         The district court also determined Mailplanet.com was not eligible for damages or
attorney’s fees for two reasons. First, Mailplanet.com did not allege that lomonaco.com had been
suspended based on a “knowing and material misrepresentation” so as to recover damages and
fees under 15 U.S.C. § 1114(2)(D)(iv). Second, Mailplanet.com had not asserted a violation of
15 U.S.C. § 1125 so as to recover damages and fees under 15 U.S.C. § 1117. Mailplanet.com
does not challenge these determinations by the district court on appeal. In any event, we point
out that Mailplanet.com never prays for any damages in its complaint.
       6
       We review de novo the legal question of whether a case is moot. Sheely v. MRI
Radiology Network, P.A., 505 F.3d 1173, 1182 (11th Cir. 2007).

                                               7
parties meaningful relief, then the case is moot and must be dismissed. Id. at

1282.

        The district court properly dismissed Mailplanet.com’s complaint as moot.

This litigation arises from Lo Monaco Hogar’s challenge to Mailplanet.com’s

registration of lomonaco.com and its desire to have lomonaco.com transferred to

it. After Lo Monaco Hogar was successful in the WIPO proceedings,

Mailplanet.com filed a complaint in federal court seeking (1) a declaration that its

registration of lomonaco.com was lawful and did not violate Lo Monaco Hogar’s

rights in the United States, and (2) an injunction preventing transfer of

lomonaco.com to Lo Monaco Hogar. Lo Monaco Hogar’s decision to concede

Mailplanet.com’s ownership of lomonaco.com and to forgo its request for a

transfer of lomonaco.com from Mailplanet.com effectively provides

Mailplanet.com the relief it sought in its complaint and resolves the dispute

between the parties that gave rise to the litigation.

        Mailplanet.com relies on Sallen v. Corinthians Licenciamentos LTDA, 273

F.3d 14 (1st Cir. 2001), but our conclusion is consistent with that decision. The

First Circuit concluded that a live controversy existed because (1) both parties

were still claiming exclusive rights to the same domain name, (2) the domain name

had been transferred to the complainant, and (3) the complainant was using the

                                           8
domain name. Id. at 25. Here, in contrast, Lo Monaco Hogar has relinquished its

claim to the ownership of lomonaco.com. Furthermore, lomonaco.com has not

been transferred to Lo Monaco Hogar and is not being used by Lo Monaco Hogar.

       We also reject Mailplanet.com’s claim that there is still a live controversy

between the parties as to whether its “use” of lomonaco.com was lawful.

Mailplanet.com is correct that § 1114(2)(D)(v) allows it to file an action “to

establish that the registration or use of the domain name by such registrant is not

unlawful under this chapter.” 15 U.S.C. § 1114(2)(D)(v). However,

Mailplanet.com’s complaint sought only a declaration that its “registration” of

lomonaco.com was lawful. Although Mailplanet.com’s complaint stated in the

facts section that “MAILPLANET reasonably believes its registration and use of

the domain name lomonaco.com was and is lawful under the Lanham Act,” its

prayer for relief does not seek a declaration regarding its “use” of lomonaco.com.

Moreover, Lo Monaco Hogar does not claim any right to the domain name

lomonaco.com, and thus there are no adverse parties or disputed claims as to that

domain name. Consequently, there is no live controversy between the parties as to

Mailplanet.com’s use of lomonaco.com.7


       7
        We reject Mailplanet.com’s argument on appeal that it should have been allowed leave
to amend its complaint to include a prayer for relief regarding its use of lomonaco.com. See,
e.g., Wagner v. Daewoo Heavy Indus. Am. Corp., 314 F.3d 541, 542 (11th Cir. 2002) (en banc)

                                              9
       Finally, Mailplanet.com’s concerns–that Lo Monaco Hogar may change its

mind and bring another suit in the future regarding lomonaco.com–do not alter our

conclusion. It is true that in deciding mootness issues we often look to whether

there is a reasonable expectation that the voluntarily ceased activity will actually

recur after the case terminates. See Troiano, 382 F.3d at 1282-83. Here, the

relevant behavior by Lo Monaco Hogar was its challenge to Mailplanet.com’s

registration of lomonaco.com and request to have registration of lomonaco.com

transferred to it. Lo Monaco Hogar has ceased this behavior pursuant to a change

in its business plan, has raised no counterclaim against Mailplanet.com in this suit,

and has given no indication that it will bring suit against Mailplanet.com in the

future regarding lomonaco.com.8 To the extent the voluntary cessation doctrine is

applicable to this action seeking a declaratory judgment and injunctive relief, we

conclude Mailplanet.com failed to show there is a reasonable expectation that Lo

Monaco Hogar will resume its challenge to Mailplanet.com’s ownership of

lomonaco.com and seek to bring legal action against it in the future.



(“A district court is not required to grant a plaintiff leave to amend his complaint sua sponte
when the plaintiff, who is represented by counsel, never filed a motion to amend nor requested
leave to amend before the district court.”).
       8
         Further, if Lo Monaco Hogar decided to bring suit against Mailplanet.com regarding
lomonaco.com at a later date, it would be forced to deal with the preclusive effect of its actions in
this case.

                                                10
      Based on the above reasons, we affirm the district court’s order dismissing

Mailplanet.com’s complaint as moot.

      AFFIRMED.




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