On January 10, 2013, Atlanta Beltline, Inc. ("Atlanta Beltline"), a Georgia non-profit corporation, filed a complaint in the Northern District of Georgia against Andrew Realty Group, Inc., a Georgia corporation based in Sandy Springs, Georgia, and Alan Andrew (collectively, "Andrew Realty"), alleging that Andrew Realty is using domain names incorporating the marks "BELTLINE" and "ATLANTA BELTLINE" in connection with its real estate business in order to trade on the reputation and goodwill of Atlanta Beltline and create customer confusion and deception. The complaint includes counts for trademark infringement, trademark dilution, unfair competition, and cybersquatting under the Lanham Act, 15 U.S.C. § 1051; state law claims for trademark infringement, unfair competition, dilution, attorney fees, and violation of the Georgia Uniform Deceptive Trade Practices Act; and for declaratory relief under the Declaratory Judgment Act, 28 U.S.C. § 2201.
According to the complaint, the Atlanta BeltLine Project is a comprehensive revitalization effort being undertaken by the City of Atlanta that will "ultimately consist of a branded network of public parks, multi-use trails, affordable housing options, and transit for the citizens of Atlanta existing along 22 miles of historic railroad corridors circling Downtown Atlanta and connecting 45 Atlanta in-town neighborhoods." Atlanta Beltline contends that their BELTLINE and ATLANTA BELTLINE brands have become a valuable indicator of the source of various goods and services, including real estate development services, in connection with the project. The complaint indicates that Atlanta Beltline formed in June 2006 with the purpose of working closely with the City of Atlanta departments to oversee planning, funding, and management of the project. On October 18, 2005, another project-related entity, Atlanta Beltline Partnership ("ABP"), filed a trademark application with the USPTO for the term "BELTLINE" for real estate development services (International Class 37), which ultimately issued as registration number 3356126 on December 18, 2007. Atlanta Beltline later obtained federal registration for the mark "ATLANTA BELTLINE" (registration number 3922938) and Georgia state trademark registrations for "BELTLINE" and "ATLANTA BELTLINE." The complaint states that Atlanta Beltline or its predecessors have used the registered marks continuously since May 2004.
Atlanta Beltline claims that in January 2006 Andrew Realty registered the domain name <www.atlantabeltline.org> and 31 other domain names containing "ATLANTA BELTLINE" and "BELTLINE," none of which displayed any content until 2009. Atlanta Beltline accuses Andrew Realty of intentionally attempting to attract users looking for information on the Atlanta BeltLine Project though it has no connection to the project. According to the complaint, many of the properties highlighted on Andrew Realty's websites are in areas far outside of central Atlanta where the BeltLine is located. The complaint also notes that Andrew Realty registered the top-level domain ".org," which is commonly used by non-profit organizations (such as Atlanta Beltline), schools, and communities. The exhibits submitted with the complaint reveal a dispute that has been simmering for several years and has now boiled over into this lawsuit. Atlanta Beltline sent Andrew Realty a cease and desist letter in September 2010. In its response, Andrew Realty stated that it would not stop using the domain names unless Atlanta Beltline paid $130,000. Andrew Realty subsequently filed a Petition for Cancellation of the BELTLINE mark with the USPTO on December 17, 2012, presumably prompting Atlanta Beltline to file suit.
Atlanta Beltline asks the Court to grant a judgment in its favor on all twelve counts, to enjoin Andrew Realty from further use of the domain names incorporating BELTLINE and ATLANTA BELTLINE, to award Atlanta Beltline actual and punitive damages, and to award Atlanta Beltline its attorney fees and costs associated with the action.
The case is Atlanta Beltline, Inc. v. Andrew Realty Group, Inc. et al., 1:13-cv-00091-MHS, United States District Court of the Northern District of Georgia, Atlanta Division, and is assigned to U.S. District Judge Marvin Shoob.Copyright © 2013 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.