In an
April 30, 2014 ruling, Judge John G. Koetl granted the defendants’ motion to dismiss the plaintiffs’ cybersquatting claim, but denied the motion to dismiss the other Lanham Act-related claims that the defendants’ “Manhattan Elite Prep” mark for test preparation services infringed the plaintiff’s “Manhattan Prep” and “Manhattan Prep” marks. In declining to dismiss the trademark infringement claims, Judge Koetl ruled that the plaintiffs had adequately alleged use of the marks at issue before the defendants’ use, and rejected the defendants’ contention that the plaintiffs’ filing of an intent-to-use application with the Trademark Office estopped the plaintiffs from showing that there had been actual use before the filing of the application. The Court, however, dismissed the cybersquatting claim, writing that:
the allegations in the Complaint regarding the defendants’ use of the domain name simply show another aspect of the alleged trademark infringement, rather than an attempt to profit specifically from “squatting” on the domain name with bad faith. These allegations do not suggest that defendants “perpetrated the core activities that threaten to result in the paradigmatic harm that the ACPA was enacted to eradicate,” that is, “the proliferation of cybersquatting – the Internet version of a land grab.”
