United States District Court, E.D. Virginia, Alexandria Division
ELLIS, III UNITED STATES DISTRICT JUDGE
issue on cross motions for summary judgment in this unusual
Anti-cybersquatting Consumer Protection Act
(ACPA) case is whether plaintiff, a Ukrainian
LLC, possesses common law trademark rights in the mark
“Klumba” in the United States. Plaintiff argues
that the res in this case, the domain name
klumba.com, infringes on plaintiff's common law trademark
rights and thus violates the ACPA. Two of the four members of
the plaintiff LLC, acting on behalf of the res,
argue that because plaintiff has not used its mark in
commerce in the United States, plaintiff has no common law
trademark rights in the United States, and hence plaintiff
cannot bring a claim under the ACPA.
matter has been fully briefed and argued, and is now ripe for
course, the entry of summary judgment is appropriate only
where there are no genuine disputes of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). And
that is precisely the situation presented here. Pursuant to
Local Rule 56(B) and the Rule 16(b) Scheduling Order issued
in this case, a motion for summary judgment must contain a
separately captioned section listing in numbered-paragraph
form all material facts as to which the movant contends no
genuine dispute exists. See Klumba.UA, LLC v.
Klumba.com, No. 1:15-cv-701 (E.D. Va. Sept. 20, 2017)
(Order). Both parties complied with Local Rule 56(B) and the
Scheduling Order and the following list of undisputed
material facts is based on the parties' statements of
undisputed material facts and their responses.
• Plaintiff, Klumba.ua, LLC, is a Ukrainian
company that operates a Ukrainian website for the sale and
exchange of children's clothing and goods. Plaintiff has
four members: (i) Dmitry Dubyna, (ii) Natalia Zueva, (iii)
Andrey Khorsev, and (iv) Aleksey Ivankin.
• The res at issue in this case,
klumba.com, is a U.S. registered domain name
currently registered to Klumba.com, LTD.
• In 2008, Dubyna and Zueva created a website using the
name klumba.kiev.ua to serve as a platform for
parents to sell and exchange children's clothing and
goods for children.
• In June 2010, Zueva registered the trademark
KLUMBA in the Ukraine and registered the domain
name klumba.ua (the Ukrainian domain name), which
was linked to the trademark.
• In July 2010, Dubyna and Zueva began placing
advertisements on the klumba.ua website using
Google's AdSense Program. Google sent the revenue generated
from the advertisements to a Ukrainian address via paper
• In September 2010, Zueva and Dubyna joined with
Khorsev and Ivankin to create Klumba.ua, LLC, the
plaintiff in this case. As part of the new LLC venture, Zueva
transferred ownership of the Ukrainian domain name,
klumba.ua website, and the Klumba Mark in the
Ukraine to plaintiff. The four members of plaintiff shared
the profits from the website, including the profits generated
via Google AdSense.
• In November 2012, Dubyna purchased the domain name
klumba.com from a third party vendor for $2500.
• After purchasing the klumba.com domain name,
Dubyna arranged to have traffic to the klumba.com
domain name redirected to the klumba.ua website.
Essentially, when users typed klumba.com into a browser, they
were sent to klumba.ua where they could view the
website's children's clothing and goods.
• In March 2013, Ivankin and Dubyna agreed to use a
California corporation owned by Ivankin and Khorsev, 908,
Inc., as a depository for proceeds from the Google AdSense
• Pursuant to the agreement between Ivankin and Dubyna,
Google's AdSense checks were deposited to 908, Inc.'s
U.S. bank account, and then 50% of the monthly proceeds were
to be paid to Dubyna in the Ukraine within five days of
• In spring 2013, a dispute arose among plaintiff's
members over ownership in the Ukraine of plaintiff's
• In September 2013, Ivankin and Khorsev changed the
passwords to all plaintiff's email and user accounts, and
redirected traffic from the klumba.ua domain to klubok.com, a
website under their sole control.
• Ivankin and Khorsev kept all revenue generated by the
klubok.com website, and stopped paying profits to Zueva and