The opinion of the court was delivered by: RONALD GUZMAN, District Judge
MEMORANDUM OPINION AND ORDER
Ameripay LLC has sued Ameripay Payroll, Ltd., for
cybersquatting pursuant to the Anticy bersquatting Consumer
Protection Act, 15 U.S.C. § 1125(d), and trademark infringement
and unfair competition pursuant to the Lanham Trademark Act of
1946 ("Lanham Act"), 15 U.S.C. §§ 1114, 1125(a), as well as for
violating New Jersey laws, prohibiting unfair competition and
trademark infringement. Defendant has moved for summary judgment
based on laches. For the reasons set forth below, the Court
denies the motion.
Unless otherwise noted, the following facts are undisputed.
Defendant Ameripay Payroll, Ltd. is an Illinois corporation
located and doing business in Illinois. (Def.'s LR 56.1(a)(3) ¶
4.) It provides payroll and tax-payment processing and services
primarily to clients in Illinois and Wisconsin. (Id. ¶¶ 5, 35.)
Plaintiff Ameripay LLC is a New Jersey corporation located in New
Jersey that provides payroll-processing services primarily to
clients with headquarters in New York and New Jersey. (Id. ¶¶ 1, 2.)
In 1995, plaintiff adopted and first used the Ameripay mark in
New Jersey. (Id. ¶ 3.) In August 1997, defendant began
operating its business in Illinois using the name Ameripay
Payroll, Ltd. (Id. ¶¶ 6, 9.)
In July 1998, plaintiff first became aware of defendant when
one of plaintiff's employees advised Paul Bultmeyer, Executive
Director of Ameripay LLC, that he discovered defendant's name on
a chamber of commerce listing under payroll services while
searching the Internet. (Id. ¶ 12; Def.'s Ex. 2, Bultmeyer Dep.
of 9/1/04 at 70.) On August 7, 1998, Bultmeyer sent defendant a
cease-and-desist letter. (Def.'s LR 56.1(a)(3) ¶ 13.) The letter
stated: "It has come to my attention that your firm is using
`Ameripay' as a service mark for payroll processing services. . . .
Your firm's use of this service mark is an infringement of my
client's rights under this registration." (Id.; see Def.'s
Ex. 1, Schurin Decl. Ex. 7, Letter from Bultmeyer to Sarowitz of
Bultmeyer testified that when defendant did not respond to his
letter within a month or two, Bultmeyer called Steven Sarowitz,
President of Ameripay Payroll, Ltd. (Def.'s LR 56.1(a)(3) ¶ 15.)
He also testified that Sarowitz told him that defendant would
respond to his demand before the end of the year, after
consulting counsel. (Id. ¶ 16.) However, plaintiff now argues
that Bultmeyer so testified because at the time, he did not have
the benefit of a particular document, a facsimile cover sheet, to
refresh his recollection. The document, dated August 17, 1998,
contains Bultmeyer's handwritten statement that he spoke with
defendant's principal Steve Sarowitz, and that Steve said he was
willing to discontinue use of the mark but asked for some time to
use up his current letterhead. (Pl.'s LR 56.1(b)(3)(A) ¶ 15.) The
Court views these disputed facts in plaintiff's favor. Sarowitz then called plaintiff's principal, Arthur Piancentini.
(Def.'s LR 56.1(a)(3) ¶ 17.) Sarowitz did not state that
defendant would stop using the Ameripay mark, and Bultmeyer never
withdrew the allegations in his August 7, 1998 letter.
In March 1999, defendant purchased the domain name
ameripay.com from the previous registrant. (Id. ¶ 18.) The
web site became active shortly thereafter. (Id. ¶ 19.)
In October 1999, a law firm representing plaintiff sent
defendant a letter demanding that defendant stop using the
Ameripay mark. (Id. ¶ 20; see Def.'s Ex. 1, Schurin Decl. Ex.
9, Letter from Radin to Sarowitz of 10/21/1999.) In the letter,
plaintiff stated, "if we do not receive a response to this letter
indicating that you will comply with the above demands or if you
are not willing to voluntarily proceed as requested, our
clients will be forced to initiate suit against you for willful
trademark infringement and for monetary damages and attorney's
fees once our client has completed its plans to offer its
services in Illinois." (Def.'s LR 56.1(a)(3) ¶ 20.) Defendant
again called plaintiff's principal, Piancentini, and stated that
defendant would not cease using the Ameripay mark. (Pl.'s LR
56.1(b)(3)(A) ¶ 22.) Defendant never complied with the letter.
(Def.'s LR 56.1(a)(3) ¶ 22.)
When plaintiff's counsel sent the October 1999 letter,
plaintiff provided payroll services to a New Jersey client that
had an office in Illinois, which required mailing checks to
Illinois. (Id. ¶ 21; see Pl.'s LR 56.1(b)(3)(A) ¶ 21.)
Further, plaintiff admits that it was not in fact prepared to
bring suit against defendant because plaintiff and defendant were
not competing at the time. (Def.'s LR 56.1(a)(3) ¶ 23.) Instead,
plaintiff waited for defendant to be more directly competitive before bringing suit. (Id. ¶ 24.) Plaintiff did not
contact defendant again until four years later upon service of
plaintiff's Complaint in July 2003. (Id. ¶ 22.)
Summary judgment "shall be rendered forthwith if the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." FED. R. CIV. P.
56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
A "genuine issue of material fact exists only where `there is
sufficient evidence favoring the nonmoving party for a jury to
return a verdict for that party,'" Dribeck Imps., Inc. v. G.
Heileman Brewing Co., Inc., 883 F.2d 569, 573 (7th Cir. 1989)
(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986)). In considering such a motion, the court must view all
inferences in the light most favorable to the nonmoving party.
See Regner v. City of Chi., 789 F.2d 534, 536 (7th Cir. 1986).
Although the district court's role on summary judgment is not to
sift through the evidence and decide whom to believe, the court
will enter summary judgment against a party who does not come
forward with evidence that would reasonably permit a finder of
fact to find in his or her favor on a material questions.
Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir.
Defendant argues that plaintiff's claims are barred under the
doctrine of laches. Plaintiff argues that: (1) laches does not
bar its cybersquatting claim; (2) the doctrines of progressive
encroachment and unclean hands prevent defendant from asserting
laches as to the rest of plaintiff's claims; (3) even if the
Court were to find that its claims for damages are barred by
laches, the delay in bringing suit ...