III. DISCUSSION
A. Whether Count IV Plausibly Alleges Violation of the Anticybersquatting Consumer Protection Act (“ACPA”)
Count IV alleges that Defendants violated the ACPA by registering the “playadopt.me” and “playadoptme.com” domains and having a bad-faith intent to profit from Impulse's “Adopt Me” trademark. ECF No. 1 at 36, ¶ 203. Defendants counter that Impulse has not alleged the requisite bad-faith intent to profit from the domains. ECF No. 14 at 1.
The ACPA provides that a person shall be liable in a civil action if:
(1) [t]he person has a bad-faith intent to profit off the mark, including a personal name which is protected as a mark under this section; and
(2) registers, traffics in, or uses a domain name that:
i. in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark
ii. in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark . . .
15 U.S.C. § 125(d)(1)(A). Some relevant factors to consider in deciding whether there was bad faith include:
(II) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; *** (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c).
15 USC § 125(d)(1)(B)(i)(II); 15 USC § 125(d)(1)(B)(i)(IX).
Here, Impulse alleges that “[its] [mark] is inherently distinctive or has acquired distinctiveness through repeated use in commerce.” ECF No. 1 at 34, ¶ 192. It also alleges that its “Adopt Me” mark is “famous and widely recognized by the general consuming public of the United States.”
Id. ¶ 193. The fact that “millions of virtual pets have been adopted,” and that “there have been about 5,000 visitors a day” to the website tends to suggest that its “Adopt Me” brand is at a minimum distinctive.
Id. at 7, ¶¶ 27-28. Impulse “has been using the mark continuously since 2000” and expanded the “Adopt Me” brand into the toy market through an agreement with Toys “R” Us in the mid-2000s.
Id. at 5, ¶¶ 16, 21. Thus, Impulse has plausibly alleged that, at the time Defendants registered their trademark in 2020, its “Adopt Me” mark was distinctive or famous.
The fact that Defendants simply added a period and the term “play” to what is otherwise Impulse's mark (
Id. at 35, ¶¶ 198-199); that Defendants' domain is also for a virtual pet game (
Id. at 12, ¶ 57); and that Impulse received “misdirected communications from users” (
Id. at 22, ¶ 125) support the conclusion that it is plausible that Defendants registered or used a domain name that is “identical or confusingly similar to [Impulse's] mark” or “identical or confusingly similar or dilutive of [Impulse's] mark.” 15 U.S.C. § 125(d)(1)(A)(2)(i); 15 U.S.C. § 125(d)(1)(A)(2)(ii).
In support of Defendants' bad-faith intent to profit, Impulse alleges that Defendants were aware of the “AdoptMe.com” domain, as its mark had been around for seventeen years before registration of the trademark (ECF No. 1 at 36, ¶¶ 206, 209), but continued to register or license “playadopt.me” and “playadoptme.com” domains.
Id. at 37, ¶ 211. Defendants never requested or received authorization from Impulse to use its mark.
Id. at 12, ¶ 55. Like Impulse, Defendants also expanded their brand into the plush toy market.
Id. at 14, ¶ 67. Defendants' site had billions of visits each year (
Id. at 12, ¶ 58), and they created an iOS application for the game, presumably a profitable venture.
Id. at 14, ¶69. Impulse also alleges that its brand was damaged by the public confusion between the marks with Defendants' “implicating ‘Adopt Me' with bad behavior.”
Id. at 25, ¶ 131. It is plausible that Defendants intended to “divert consumers from Impulse's website to a site accessible under the domain name
(i.e., “playadopt.me” “playadoptme.com”) that could harm the goodwill represented by the mark.” 15 U.S.C. § 125(d)(1)(B)(i)(II).
Thus, the Court finds that Impulse has properly pled a claim for relief in Count IV under the ACPA. The Court DENIES Defendants' Motion to Dismiss Count IV.
B. Whether Count VI Plausibly Alleges a Common-Law Claim for Unfair Competition
Count VI alleges that Defendants engaged in unfair competition by using Impulse's “Adopt Me” mark in its own “Adopt Me!” mark “in a manner likely to cause confusion or mistake as to the affiliation of Defendants with [Impulse]” that has caused Impulse harm. Id. at 39, ¶¶ 228-229. Defendants counter that Impulse has failed to show that “the consuming public widely identifies [Impulse] as the source of any particular goods and services bearing the [“Adopt Me”] trademark” (ECF No. 14 at 2), and that Defendants have “diverted business from [Impulse].” ECF No. 14-1 at 19.
Under Rhode Island law, a distinctive trade name is one that “is distinctive of a person's business or other enterprise and that is used in a manner that identifies that business or enterprise and distinguishes it from the businesses or enterprises of others.” Restatement (Third) Unfair Competition § 12 (1995). A trade name may “acquire a distinctiveness as a ‘secondary meaning' if prospective purchasers have come to identify the business with the trade name.” Id. at § 13.
Unfair competition occurs when “the device or means employed would be likely to confuse and mislead the public generally to purchase the product or patronize the shop of one person when the actual intention was to purchase the product or patronize the shop of another.” Nat'l Lumber & Bldg. Materials Co. v. Langevin, 798 A.2d 429, 433 (R.I. 2002) (quoting Merlino v. Schmetz, 20 A.2d 266, 267 (R.I. 1941) (finding that the plaintiff's trade name acquired secondary meaning where it had been used continuously since 1957, appeared on public documents, and customers had confused the two entities)).
Here, it is plausible that Defendants' act of registering its domains and iOS application, which were nearly identical with Impulse's, were likely to “confuse and mislead the public generally” to buy plush toys from Defendants when their actual intention was to purchase the plush toy from Impulse's brand. Impulse alleges that its “Adopt Me” brand has been around since 1998 and got a distinctiveness through its secondary meaning evidenced by its continued use (ECF No. 1 at 4, ¶¶ 11-12); that it expanded into the toy market in the mid-2000s at a well-known toy store (Id. at 6, ¶ 22); that Defendants only recently expanded into the toy market for similar plush toys (Id. at 14, ¶ 67); and that there is evidence of user confusion (Id. at 22, ¶ 125) (i.e., YouTube videos about confusion as to domain. See id. at 23-24, ¶¶ 127-28).
Thus, Impulse has properly pled a common-law claim for unfair competition under Rhode Island law. The Court DENIES Defendants' Motion to Dismiss.
But this conclusion as to plausibility does not foreclose the possibility that Impulse's trade name is inherently distinctive.
C. Whether the Following Allegations Should be Stricken for “Immaterial, Impertinent, or Scandalous Matter” Under Fed.R.Civ.P. 12(f)
Defendants move to strike paragraphs ¶¶ 131, 137-141, 143, 146, 151-153, and a part of ¶ 201 from the Complaint. See ECF No. 14 at 1. They assert that “immaterial and scandalous” allegations were made “in an effort to unfairly impute allegations against Roblox to Defendants, inflame the reader, and disparage the reputation of Defendants and their [“Adopt Me!”] game.” ECF No. 14-1 at 9.
A. Paragraphs 131, 137, 138
Paragraph 131 alleges that the public confusion between “Adopt Me” and “Adopt Me!” has the effect of implicating “Adopt Me” with bad behavior such as: scamming, pedophilia, sex, gambling, and illegal child labor. ECF No. 1 at 25, ¶ 131. Defendants assert that these accusations “relate to alleged activities of third-party criminals and third-party businesses.” ECF No. 14-1 at 11. Paragraph 137 alleges that a Google search of the term “adopt me pedophile” returned results implicating Defendants' “Adopt Me!” game. ECF No. 1 at 26, ¶ 137. Defendants assert that the reference to use of “Roblox currency” (known as “Robux”) in one of them is unfounded because they do not sell it (ECF No. 14-1 at 9), and that the mention of Snapchat and Discord, which are third-party forums, do not provide a basis for holding Defendants liable. Id. Paragraph 138 alleges that a Google search of the term “adopt me rape” returned results implicating the Roblox platform with child predators. Id. at 26, ¶ 138. Defendants counter that the allegations in paragraph 138 fail to mention any connection to their “Adopt Me!” game. ECF No. 14-1 at 10. They assert that Impulse cited no articles or links to show this connection. Id. They also argue that the “independent hosting platform Roblox” is not “synonymous with or attributable to Defendants' actions.” Id.
Although the allegations implicate third-party forums, that does not negate their materiality. The Complaint nonetheless alleges a factual connection to the “Adopt Me!” platform, which is sufficient for the pleading stage. See ECF No. 1 at 26, ¶¶ 137-38. Because of the specific references to “Adopt Me!.” the allegations of paragraphs 131, 137, and 138 are material and pertinent to Impulse's showing of the consequences of consumer confusion and the damages it has suffered as a result. Therefore, the Court DENIES Defendants' Motion to Strike ¶¶ 131, 137, 138.
D. Paragraphs 139, 140
Paragraph 139 alleges that “there are dozens of articles and forum postings about objectionable activity on the Roblox platform generally.” Id. ¶ 139. Defendants counter that the articles cited by Impulse do not reference “Adopt Me!” anywhere and that they have not been named in any lawsuits related to these allegations. ECF No. 14-1 at 11. Paragraph 140 alleges that “Roblox has been the subject of multiple lawsuits” and cites various articles to support. ECF No. 1 at 27, ¶ 140. Defendants counter similarly that there is no connection or reference to “Defendants' business,” as they have not been named in any lawsuits. ECF No. 14-1 at 11.
Here, Defendants are correct that the allegation in ¶ 139 is void of any mention or connection to their “Adopt Me!” brand - the focus of this lawsuit. Because Roblox is not a party and “Adopt Me!” is not mentioned, the allegations of bad behavior are immaterial to this Complaint. Similarly, the allegations in ¶ 140 are immaterial as they do not mention Defendants or “Adopt Me!” at all. Therefore, the Court GRANTS Defendants' Motion to Strike ¶¶ 139-140.
E. Paragraph 141
Paragraph 141 alleges that most of the articles and postings involving bad behavior on the Roblox platform “cite ‘Adopt Me' as an example of a popular game on Roblox, even if not explicitly implicating Defendants' [“Adopt Me!”] game. ECF No. 1 at 27, ¶ 141. Defendants argue that the allegations were meant to “unfairly impute allegations against Roblox against Defendants and their [“Adopt Me!”] game.” ECF No. 14-1 at 9.
Because of Impulse's admission that Defendants were cited even if not explicitly involved, the allegations in ¶ 141 do not connect to “Adopt Me!” and are thus immaterial. The Court GRANTS Defendants' Motion to Strike ¶ 141.
F. Paragraph 143
Paragraph 143 alleges Impulse's concern over potential legal exposure due to consumer confusion. It mentions “two instances in which [Impulse] became involved in lawsuits when litigants mistakenly either named [Impulse] as a defendant or served [Impulse] with a subpoena.” ECF No. 1 at 28, ¶ 143. Defendants do not provide a basis to strike ¶ 143 in their Memorandum of Law Supporting their Motion to Strike. See ECF No. 14-1.
Unlike some of the other paragraphs, ¶ 143 does not mention any third-party forums. Instead, the allegations focus on the consumer confusion as evidenced by Impulse being improperly named as a party. This allegation is material to Impulse's general claim of consumer confusion. The Court DENIES Defendants' Motion to Strike ¶ 143.
G. Paragraph 146
Paragraph 146 alleges that because of Defendants' trademark violations, the negative associations with Impulse's brand have “grown from being related to run-of-the-mill scams to more severe issues such as pedophilia, rape, pornography, music copyright violations, underage gambling, and child labor.” ECF No. 1 at 28, ¶ 146. Defendants argue that the severe issues mentioned do not implicate “Adopt Me!” in any way and simply implicate Roblox.
While Impulse has successfully pled material facts showing how bad behavior such as pedophilia and rape has been associated with Defendants' “Adopt Me!” brand, it has failed to show how the other “severe issues” are associated. As a result, ¶ 146 is immaterial when taken in its entirety. Therefore, the Court GRANTS Defendants' Motion to Strike ¶ 146.
H. Paragraphs 151-153
Paragraph 151 alleges that because of the criminal acts that have become associated with Defendants and the Roblox platform, “potential criminal actions against Defendants are now possible, and as a result of the confusion . . . criminal actions against [Impulse] [are possible].” ECF No. 1 at 29, ¶ 151. Paragraph 152 alleges that because of the criminal acts associated with Defendants, “especially those involving children, also now create the risk that victims . . . could seek revenge and seek to injure or kill those they believe to be associated with the [“Adopt Me!'] game.” Id. ¶ 152. Paragraph 153 alleges that Defendants' trademark violations “carry the risk of personal harm to and wrongful imprisonment of [Impulse's] owner.” Id. at 2930, ¶ 153. Defendants counter that these allegations are “hyperbolic” (see ECF No. 14-1 at 12) and argues that the “extrapolation to hypothetical arrests, injuries, and even murder are unwarranted.” Id.
While Impulse may very well be fearful, that fear alone absent any allegations implicating criminal acts against Defendants is not sufficient for it to allege potential criminal acts against Impulse, by consumer confusion. Defendants are correct that these allegations are “hyperbolic,” as nowhere in the Complaint are there any allegations of criminal actions against Defendants themselves. To allege fear of hypothetical criminal acts such as murder is immaterial to the facts of the Complaint. Therefore, the Court GRANTS Defendants' Motion to Strike ¶ 151-153.
I. Portion of Paragraph 201
Paragraph 201 alleges that the confusion caused by Defendants' domains has “harmed the good will that [Impulse] has cultivated for its [“Adopt Me”] mark and [website], because [“Adopt Me!”] . . . is associated with bad behavior such as scamming, pedophilia, gambling, and the like.” ECF No. 1 at 35-36, ¶ 201. Defendants take issue with the second part of the allegation (i.e., bad behavior). See ECF No. 14-1 at 13. They argue that Impulse cites “morally reprehensible and scandalous conduct related to third-party lawsuits” and thus it should be stricken. Id.
Because Impulse has alleged instances of rape and pedophilia being associated specifically with Defendants' “Adopt Me!” earlier in the Complaint (see id. at 26, ¶¶ 137-138), the consequences of consumer confusion shown in this allegation are material. Therefore, the Court DENIES Defendants' Motion to Strike a portion of ¶ 201.
IV. CONCLUSION
For these reasons, the Court DENIES Defendants' Motion to Dismiss Counts IV and VI. The Court DENIES Defendants' Motion to Strike ¶¶ 131, 137, 138, 143, and a part of ¶ 201. The Court GRANTS Defendants' Motion to Strike ¶¶ 139, 140, 141, 146, and 151-153.
IT IS SO ORDERED.
