European Wax Center wins 11th Circ trademark battle against alleged cybersquatter

  • 8/7/2021
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(Reuters) - The company that operates European Wax Center hair-removal salons preserved its win at the 11th U.S. Circuit Court of Appeals on Friday against a Florida man"s challenge to a Miami federal court decision that his "europawaxcenter" and "euwaxcenter" websites amounted to cybersquatting. A divided 2-1 panel said that Bryan Boigris" websites are likely to cause consumer confusion with EWC P&T LLC"s "European Wax Center" because the names are "nearly identical," and affirmed that Boigris registered the domain names in bad faith to profit from EWC"s trademark. U.S. Circuit Judge Kevin Newsom said in a dissent that he would have reversed the lower court"s summary judgment ruling because a reasonable juror could find the marks weren"t confusingly similar. EWC and its attorneys Oliver Ruiz of Malloy & Malloy and Christopher Lynch of the Law Office of Christopher Lynch PA didn"t immediately respond to a request for comment, nor did Boigris" lawyers Patrick Dempsey and Leon Hirzel of Hirzel Dreyfuss & Dempsey. Boigris, who said in his complaint that he"s a sales professional and entrepreneur, attempted to register three federal trademarks in 2016 -- "reveal me," "renew me," and "smooth me" -- that EWC uses to sell cosmetics, claiming he intended to use them for his own cosmetics line despite having no experience in the industry. EWC applied to register its own federal trademarks in the phrases and opposed his applications later that year, and the Trademark Trial and Appeal Board upheld the opposition. Boigris filed a lawsuit in Miami federal court in 2019 challenging the TTAB"s decision. EWC countersued, alleging among other things that Boigris" "europawaxcenter" and "euwaxcenter" domain names -- which he registered in 2016 -- violated the Anti-Cybersquatting Consumer Protection Act by creating consumer confusion with EWC"s "European Wax Center" trademark with a bad-faith intent to profit. U.S. District Judge Robert Scola affirmed the TTAB"s decision and ruled for EWC on its cybersquatting claim at the summary judgment stage of the case, awarding it $50,000 in damages. Boigris appealed Scola"s decision that a reasonable jury could only find that the names were confusingly similar. But Circuit Judge Stanley Marcus, joined by Circuit Judge Jill Pryor, agreed with Scola that the names were confusingly similar as a matter of law. Marcus said the names are visually identical except for a few letters, sound "quite similar" when said out loud, and "impart essentially the same meaning: waxing services that are European or associated with Europe." Marcus rejected Boigris" argument that "Europa" could have other meanings, finding "the typical internet user would not likely read "europa" to refer to a relatively minor character from Greek mythology or to one of Jupiter’s 79 moons." In his dissent, Newsom argued that a reasonable juror could find the names insufficiently similar to cause confusion, and that their similarity "at the very least, isn"t extraordinary." "Boigris"s domain names differ from EWC"s mark in sight and sound, and each domain name possesses a broad range of possible meanings that may or may not match up with EWC"s mark," Newsom said. The case is Boigris v. EWC P&T LLC, 11th U.S. Circuit Court of Appeals, No. 20-11929. For Boigris: Patrick Dempsey and Leon Hirzel of Hirzel Dreyfuss & Dempsey For EWC: Oliver Ruiz of Malloy & Malloy and Christopher Lynch of the Law Office of Christopher Lynch PA

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