Greenberg Gross LLP v. GreenbergGrossLLP.com

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WO
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF ARIZONA
Greenberg Gross LLP,
Plaintiff,
v.
GreenbergGrossLLP.com,
Defendant.
No. CV-25-01176-PHX-MTL
ORDER
Before the Court is Plaintiff’s ex parte application for leave to conduct early
discovery and extend the time to effectuate service. (Doc. 20.)
I. 	BACKGROUND
Plaintiff 	brought 	this 	in 	rem 	proceeding 	seeking 	an 	order 	under 	the
Anti-Cybersquatting 	Consumer 	Protection 	Act 	(“ACPA”), 	15 	U.S.C. 	§ 	1125(d),
transferring the registration of the internet domain name <GreenbergGrossLLP.com> to
Plaintiff. (Doc. 6.) Plaintiff served the Summons (Doc. 11) and Amended Complaint
(Doc. 6) on the registrar of the domain name, Namecheap, Inc. (Doc. 13.) After no
response, the Clerk of Court entered default (Doc. 15), and Plaintiff moved for a default
judgment (Doc. 17). The Court denied Plaintiff’s Motion for Default Judgment because
Plaintiff had served the registrar rather than the registrant of the domain name. (Doc. 19.)
The ACPA requires that Plaintiff effectuate service on the domain name registrant.
15 U.S.C. § 1125(d)(2)(A)(ii)(II). The governing statute provides:
(2)(A) The owner of a mark may file an in rem civil action
against a domain name in the judicial district in which the
domain name registrar, domain name registry, or other domain
name authority that registered or assigned the domain name is
Case 2:25-cv-01176-MTL Document 24 Filed 11/13/25 Page 1 of 8

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located if--
(i) the domain name violates any right of the owner of a mark
registered in the Patent and Trademark Office, or protected
under subsection (a) or (c); and
(ii) the court finds that the owner--
(I) is not able to obtain in personam jurisdiction over a person
who would have been a defendant in a civil action under
paragraph (1); or
(II) through due diligence was not able to find a person who
would have been a defendant in a civil action under paragraph
(1) by--
(aa) sending a notice of the alleged violation and intent to
proceed under this paragraph to the registrant of the domain
name 	at 	the 	postal 	and 	e-mail 	address 	provided 	by 	the
registrant to the registrar; and
(bb) publishing notice of the action as the court may direct
promptly after filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute
service of process.
Id. (emphasis added).
At the outset of this case and at the time Plaintiff moved for default judgment, the
contact information of the registrant, Diverse ISP, was publicly listed by Whois, a company
that provides public information about domain registrations. (Docs. 1-2, 17-1 at 21-22.)
That contact information provided Diverse ISP’s email address, mailing address, and
phone. (Id.) On September 9, 2025, the publicly listed contact information for the registrant
was anonymized using a domain privacy service called Withheld for Privacy that partners
with the registrar, Namecheap. (Doc. 20 at 3.) Withheld for Privacy redacts the name of
registrants and replaces registrants’ mailing address and phone number with Withheld for
Privacy’s address and phone number, which are based in Iceland. (Doc. 20-12.) Withheld
for Privacy provides registrants with an anonymized, unique email address. (Id.)
On October 21, 2025, Plaintiff contacted Namecheap to inquire whether the
registrant’s 	identity 	remained 	the 	same, 	but 	Namecheap 	refused 	to 	disclose 	that
information absent a court order or subpoena. (Docs. 20-13, 20-14.) Plaintiff now requests
leave to conduct early discovery to obtain the unredacted contact information of the domain
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name registrant, namely by serving a subpoena on Namecheap requesting the registrant’s
contact information. (Docs. 20, 20-15.)
II. 	DISCUSSION
“A party may not seek discovery from any source before the parties have conferred
as required by Rule 26(f), except . . . when authorized . . . by court order.” Fed. R. Civ.
P. 26(d)(1). The general rule is that “discovery proceedings take place only after the
defendant has been served; however, in rare cases, courts have made exceptions, permitting
limited discovery to ensue after filing of the complaint to permit the plaintiff to learn the
identifying facts necessary to permit service on the defendant.” Columbia Ins. Co. v.
seescandy.com, 185 F.R.D. 573, 577 (N.D. Cal. 1999). But courts have broad discretion to
manage discovery. Laub v. U.S. Dep’t of Interior, 342 F.3d 1080, 1093 (9th Cir. 2003).
Where the defendants’ identities are unknown “the plaintiff should be given an opportunity
through discovery to identify the unknown defendants, unless it is clear that discovery
would not uncover the identities, or that the complaint would be dismissed on other
grounds.” Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980) (citations omitted).
Courts look to whether there is good cause to authorize early discovery. See
Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002). To
determine whether there is “good cause,” courts consider the following factors:
(1) the plaintiff can identify the missing party with sufficient specificity such
that the Court can determine that defendant is a real person or entity who
could be sued in federal court; (2) the plaintiff has identified all previous
steps taken to locate the elusive defendant; (3) the plaintiff’s suit against
defendant could withstand a motion to dismiss; and (4) the plaintiff has
demonstrated that there is a reasonable likelihood of being able to identify
the defendant through discovery such that service of process would be
possible.
OpenMind Solutions, Inc. v. Does 1-39, No. 11-3311, 2011 WL 4715200, at *2 (N.D. Cal.
Oct. 7, 2011) (citing Columbia Ins. Co., 185 F.R.D. at 578-80). Courts also look to whether
the conventional standard for good cause is satisfied. See UMG Recordings, Inc. v. Doe,
No. C 08-1193 SBA, 2008 WL 4104214, at *4 (N.D. Cal. Sept. 3, 2008) (citation omitted).
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A. 	Identification of the Unknown Party
“[T]he Court must examine whether Plaintiff has identified the Defendants with
sufficient specificity, demonstrating that each Defendant is a real person or entity who
would be subject to jurisdiction in this Court.” Pac. Century Int’l, Ltd. v. Does 1-48, No.
11-3823, 2011 WL 4725243, at *2 (N.D. Cal. Oct. 7, 2011) (citation omitted). This is an
in rem proceeding, so the person or entity Plaintiff is attempting to serve is not a party.
Still, Plaintiff has specifically identified a real person or identity, the registrant of the
domain name. (Doc. 20.) The registrant may be sued in federal court because Plaintiff’s
claim arises under federal law, namely the ACPA. (Doc. 6.) The first element is satisfied.
B. 	Efforts to Identify the Unknown Party
Plaintiff must identify all steps taken to locate the registrant. Columbia Ins. Co., 185
F.R.D. at 579. “This element is aimed at ensuring that plaintiffs make a good faith effort
to comply with the requirements of service of process and specifically identifying
defendants.” Id. Plaintiff has taken and set forth the steps it took to identify the registrant
of the domain name.
First, Plaintiff attempted to identify the appropriate contact information for Diverse
ISP, the originally listed registrant. On October 16, 2025, Plaintiff’s counsel sent a letter
(the “Notice Letter”) to Diverse ISP, notifying it of the alleged cybersquatting violation
and of this pending action. (Docs. 20-2, 20-3.) The Notice Letter was sent to the postal
address that Diverse ISP provided to Namecheap. (Id.) The Notice Letter reached Ghana,
but USPS tracking information for the Notice Letter states, “Item being held, addressee
being notified.” (Doc. 20-3.) A copy of that Notice Letter was sent to the email address
that Diverse ISP provided to Namecheap and published online. (Doc. 20-4.)
Plaintiff conducted web searches to find contact information associated with
Diverse ISP. (Doc. 20 at 5.) Plaintiff found directory listings for Diverse ISP, which
included the same phone number that was originally listed as associated with Diverse ISP,
but the email address was different. (Id. at 6.) Plaintiff emailed a copy of the Notice Letter
to 	the 	newly 	located 	email, 	but 	Microsoft 	Outlook 	reported 	that 	the 	email 	was
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“Undeliverable” because “the recipient’s domain does not exist.” (Doc. 20-4.) Plaintiff also
attempted to call Diverse ISP multiple times at the phone number provided in both the
directory and registrant information listed by Whois. (Doc. 20-1 ¶¶ 8-9.) The number was
invalid. 	(Id.) 	Plaintiff 	also 	attempted 	to 	access 	Diverse 	ISP’s 	website,
<www.diverseisp.com>. (Id. ¶ 10.)
Then, after the registrant’s information was anonymized via Withheld for Privacy,
Plaintiff’s counsel sent a copy of the Notice Letter to the anonymized email address listed
on Whois for the domain name. (Id. ¶ 11.) Microsoft Outlook reported that the email was
delivered. (Id.) Plaintiff’s counsel sent secured links of the PDF files for the Summons
(Doc. 11) and Amended Complaint (Doc. 6) to the anonymized email address. (Doc. 20-1
¶ 12.) The NetDocuments service through which the links were sent provided confirmation
of delivery. (Doc. 20-10.)
With the information available to it, Plaintiff has diligently pursued identification
of the registrant of the domain name. There are no other means to identify the registrant,
so Plaintiff has satisfied this element.
C. 	Withstanding a Motion to Dismiss
Plaintiff must demonstrate that the complaint would withstand a motion to dismiss.
Columbia Ins. Co., 185 F.R.D. at 579. The ACPA requires Plaintiff to establish that “(1)
the defendant registered, trafficked in, or used a domain name; (2) the domain name is
identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the
defendant acted with bad faith intent to profit from that mark.” DSPT Int’l, Inc. v. Nahum,
624 F.3d 1213, 1218-19 (9th Cir. 2010) (citing 15 U.S.C. § 1125(d)(1)(A)) (internal
quotation marks omitted).
1. 	Registration, Trafficking, or Use
The first element is satisfied. The unknown registrant that Plaintiff is trying to serve
registered the domain name at issue.
2. 	Identical or Confusingly Similar to Protected Mark
“In determining whether there is confusing similarity under the ACPA, courts
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compare the plaintiff’s mark with the name of the website.” Super-Krete Int’l, Inc. v.
Sadleir, 712 F.Supp.2d 1023, 1031 (C.D. Cal. 2010). Importantly, “[a] court should not
look beyond the domain name to consider the content of the website.” Id.
Plaintiff has operated a law firm named Greenberg Gross, LLP with numerous
offices since March 2013. (Doc. 6 ¶ 3.) The domain name, <GreenbergGrossLLP.com>,
registered in 2024 (Id. ¶ 8), is identical to the name Greenberg Gross, LLP. The second
element is met.
3. 	Bad Faith Intent to Profit
“Congress has enumerated nine nonexclusive factors for courts to consider in
determining whether bad faith exists.” Lahoti v. VeriCheck Inc., 586 F.3d 1190, 1202 (9th
Cir. 2009) (citing 15 U.S.C. § 1125(d)(1)(B)(i)). The Court “need not, however, march
through the nine factors seriatim because the ACPA itself notes that use of the listed criteria
is permissive. Instead, the most important grounds for finding bad faith are the unique
circumstances of the case.” Id. (citation modified); see also 15 U.S.C. § 1125(d)(1)(B)(i)
(stating that “a court may consider” the provided factors “but [are] not limited to” them).
Here, the pertinent factors supplied by the ACPA for determining whether the registrant
has a bad faith intent are as follows:
(IV) the person’s bona fide noncommercial or fair use of the mark in a site
accessible under the domain name;
(V) 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.
15 U.S.C. § 1125(d)(1)(B)(i).
Plaintiff alleges that the domain name website “was using an exact copy of certain
webpages from [Plaintiff’s] legitimate website, as they existed on Plaintiff’s website at that
time, except that they changed the contact information . . . to false contact information
which is no[t] owned or controlled by Plaintiff.” (Doc. 6 ¶ 6.) Plaintiff also alleges that the
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registration of the domain name “was made in a bad faith effort to confuse the public and
to attempt to profit from the sale of the infringing domain name to the Plaintiff, the only
entity that would have any legitimate use for that domain name.” (Id. ¶ 9.) And finally,
Plaintiff alleges that the “infringing domain name was registered in bad faith with the intent
to obtain a profit by confusion of the infringing domain name with the name of Plaintiff.”
(Id. ¶ 12.) All of these allegations directly speak to the ACPA’s factors for determining
whether bad faith exists, and Plaintiff has sufficiently pled that the registrant had no bona
fide use and instead intended to confuse the public. Plaintiff has made a sufficient showing
that the suit would survive a motion to dismiss.
4. 	Reasonable Likelihood of Identification Through Discovery
If the other factors are satisfied, early discovery is permitted “unless it is clear that
discovery would not uncover the identities.” Gillespie, 629 F.2d at 642-43. Plaintiff
requests leave to serve a subpoena on Namecheap to obtain the registrants contact
information. (Doc. 20.) The registrar, Namecheap, partners with Withheld for Privacy to
provide registrants anonymization of their contact information. (Doc. 20-12.) Namecheap
advertises that the “domain privacy service provider does not require [a registrant’s]
personal information to work. Any details [a registrant] share[s] with Namecheap will
remain 	with 	[Namecheap].” 	(Id.) 	A 	subpoena 	directed 	toward 	Namecheap 	for 	the
registrant’s contact information is likely to uncover the registrant’s identity because
Namecheap 	possesses 	the 	registrant’s 	information, 	as 	described 	in 	Namecheap’s
advertising.
5. 	Good Cause
In addition to the four factors above, courts look to whether the conventional
standard for good cause is satisfied. See Semitool, 208 F.R.D. at 276. “Good cause may be
found where the need for expedited discovery, in consideration of the administration of
justice, outweighs the prejudice to the responding party.” Id.
Namecheap advised Plaintiff that Plaintiff would need a court order or subpoena
compelling Namecheap’s disclosure of the registrant’s contact information, so a subpoena
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would not unfairly surprise Namecheap. 	(Docs. 20-13 ¶ 16, 20-14). The subpoena is
narrowly tailored and would impose a small burden on Namecheap, which would be
compelled to disclose only the contact information of the registrant. (Doc. 20-15.) That
information should be readily ascertainable. Good cause exists to allow Plaintiff to conduct
early discovery.
III. 	CONCLUSION
Having considered Plaintiff’s application, and good cause appearing,
IT IS ORDERED that Plaintiff’s application (Doc. 20) is GRANTED.
IT IS FURTHER ORDERED that Plaintiff is permitted to serve a subpoena upon
the registrar Namecheap, Inc. to obtain the unredacted contact information for the registrant
of the internet domain name <GreenbergGrossLLP.com>.
IT IS FINALLY ORDERED that Plaintiff must effectuate service of process upon
the registrant of the domain name <GreenbergGrossLLP.com> no later than February 10,
2026.
Dated this 12th day of November, 2025.
Case 2:25-cv-01176-MTL Document 24 Filed 11/13/25 Page 8 of 8