Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA929946
`10/22/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91243541
`
`Party
`
`Correspondence
`Address
`
`Defendant
`WEEDS, INC.
`
`GREGG ROBERT ZEGARELLI
`TECHNOLOGY & ENTREPRENEURIAL VENTURES LA
`PO BOX 113345
`PITTSBURGH, PA 15241
`mailroom.grz@zegarelli.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`Gregg Zegarelli
`
`mailroom.grz@zegarelli.com
`
`/Gregg Zegarelli/
`
`10/22/2018
`
`20181022 Opposition Motion to Suspend.pdf(501835 bytes )
`A. Complaint w EX Reduced.pdf(1163581 bytes )
`B. Answer, Counterclaim Reduced.pdf(279866 bytes )
`C. Answer to Counterclaim Reduced.pdf(784637 bytes )
`C.0 Answer to Counterclaim Reduced.pdf(23235 bytes )
`C.1 Answer to Counterclaim Reduced.pdf(5569079 bytes )
`C.2 Answer to Counterclaim Reduced.pdf(5423657 bytes )
`C.3 Answer to Counterclaim Reduced.pdf(4369327 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re:
`
` WEEDS, INC.
`
` Serial No.: 87/764,630
` Mark:
`”WEEDS”
`________________________________
`
`INNOVATION HQ, INC.
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
` Opposition: 91,243,541
`
`
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`MOTION TO SUSPEND PROCEEDINGS
`
`Notice of Pending Federal Lawsuit
`
`v.
`
`
`WEEDS, INC.
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`Applicant hereby requests that the Board grant a suspension of the
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`above-captioned proceeding pursuant to 37 C.F.R §2.117(a) as a result of a
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`prior pending action in the United States District Court for the Western Dis-
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`trict of Pennsylvania, captioned, WEEDS, INC. v. INNOVATION HQ, INC., Case
`
`No. 2:17-cv-01533-DSC-MPK (“federal lawsuit”) which will have a bearing on
`
`this proceeding. [Id.; TMBP 510.02(a)]
`
`A copy of the Complaint is attached hereto as Exhibit A, the Counter-
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`claim as Exhibit B, and the Answer to Counterclaim as Exhibit C.
`
`
`
`The federal lawsuit was filed on December 22, 2017 and the counterclaim
`
`on July 30, 2018, both prior to the filing of this proceeding.1
`
`
`
`Applicant’s earlier Complaint against Opposer in the federal lawsuit
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`has counts for Count I - Declaration of Ownership, Count II - Violation Of
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`Anti-Cybersquatting Consumer Protection Act ("ACPA") 15 U.S.C. § 1125(d),
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`Count III - Unfair Competition by Infringement of Common Law Rights, Count IV
`
`- Violation Of Lanham Act by Use of False Designation in Interstate Commerce,
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`Count V – Dilution in Violation of Pennsylvania Anti-Dilution Statute, Count
`
`1 Applicant further references Cancellation No. 92,069,490 regarding Registra-
`tion No. 3,308,883, between the same parties, and the motion to suspend filed
`therein on the same grounds.
`
`

`

`VI - Violation Of 73 P.S. 201-1, Count VII - Common Law Trademark Infringe-
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`ment, and Count III - Equitable Relief. Opposer’s counterclaim in the feder-
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`al lawsuit has counts for Count I – Cancellation, Count II - Reverse Domain
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`Hi-Jacking, Count III - Tortious Interference.
`
`
`
`The combination of claims and counterclaims in the federal lawsuit sub-
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`sume and exceed all issues that would be addressed in this duplicative can-
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`cellation action, noting Opposer relies upon averments of “genericness” with-
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`in its Count I for the same opposition of mark at issue herein. See Counter-
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`claim, Exhibit B, ¶93–94. Applicant’s Count I in the federal lawsuit seeks a
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`declaration of the parties’ relative rights to the mark at issue. See Com-
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`plaint, Exhibit A, ¶36.
`
`
`
`
`
`
`
`The discovery to be sought by the parties and the relief sought is ful-
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`ly subsumed by the federal lawsuit, in that discovery in the federal lawsuit
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`will include not only the issues regarding the propriety of Applicant’s ap-
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`plication, but also all issues regarding this matter, including infringement,
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`a panoply of other federal state law claims, revenue and legal damages.
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`
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`The precise questions before this Board in this proceeding is more lim-
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`ited than what will need to be resolved within a larger scope, and, for judi-
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`cial efficiency and fairness to the parties, should be resolved in one com-
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`plete proceeding. In order to resolve all issues arising from, related to
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`and in connection with the rights of Applicant vis a vis Opposer relating to
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`the general questions presented and related injury, Applicant/Plaintiff in
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`the federal lawsuit instituted the prior pending federal lawsuit against Op-
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`poser.
`
`The federal court will be addressing a superset of registrations, ap-
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`plications, facts, common law rights, evidence, res judicata in prior federal
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`judicial proceedings, review of the record that speaks for itself, claims,
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`parties and issues far greater than those issues now before the Board, in-
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`cluding but not limited to, priority of use, infringement, legal damages, un-
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`fair competition, violations of state and federal statutes, etc., the federal
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`court is the proper and more efficient forum in which to resolve the entire
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`dispute between these parties. Timing is best served now, prior to the costs
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`of document production and deposition discovery.
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`
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`Moreover, to supplement the legal and factual basis set forth above,
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`which Applicant believes is sufficient grounds for the relief sought by Ap-
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`plicant herein, Applicant has come to understand that the key witnesses for
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`Applicant are located in a foreign nation. Therefore, Applicant seeks the
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`2
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`

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`full scope of adducement of evidence permitted by the Federal Rules of Civil
`
`procedure and the United States Western District of Pennsylvania.
`
`
`
`If the motion to suspend the opposition is not granted by the Board,
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`then prejudice to Applicant will occur, including, but not limited to, a sig-
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`nificant duplication of proceedings, the procedural posture of the proceed-
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`ings growing more complex, and the cost to the parties and the United States
`
`Government would increase significantly.
`
`
`
`WHEREFORE, Applicant hereby requests that this proceeding be suspended
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`under 37 C.F.R. 2.117 pending the determination in the lawsuit WEEDS, INC. v.
`
`INNOVATION HQ, INC., Case No. 2:17-cv-01533-DSC-MPK in the United States Dis-
`
`trict Court for the Western District of Pennsylvania.
`
`
`October 22, 2018
`
`
`
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`
`
`Respectfully submitted,
`s/Gregg R. Zegarelli/
`Attorney for Applicant
`
`Gregg R. Zegarelli, Esq.
`PA I.D. #52717
`Z E G A R E L L I
`Technology & Entrepreneurial
` Law Ventures Group, P.C.
`2585 Washington Road, Suite 134
`Summerfield Commons Office Park
`Pittsburgh, PA 15241-2565
`
`3
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`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`The following person or persons have been served by United States
`first class mail, postage pre-paid, as well as by electronic mail, on this
`date:
`
`October 28, 2018
`
`
`
`
`Brian Samuel Malkin, Esq.
`FERENCE & ASSOCIATES LLC
`409 Broad Street
`Pittsburgh, PA 15143
`uspto@ferencelaw.com
`
`Respectfully submitted,
`s/Gregg R. Zegarelli/
`Attorney for Applicant
`
`Gregg R. Zegarelli, Esq.
`PA I.D. #52717
`
`
`
`
` Z
`
` E G A R E L L I
`Technology & Entrepreneurial
` Law Ventures Group, P.C.
`2585 Washington Road, Suite 134
`Summerfield Commons Office Park
`Pittsburgh, PA 15241-2565
`mailroom.grz@zegarelli.com
`
`
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`

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`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 1 of 18
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`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`
`
`
`--------------------------------
`
`WEEDS, INC.,
`
`
`
`
`
`
`INNOVATION HQ, INC.,
`
`
`
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`
`
`--------------------------------
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`CIVIL ACTION NUMBER:
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff, for its Complaint, hereby avers that the online Internet
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`infrastructure is based upon a public license and trust in registrars,
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`and their transparent, fair and neutral administration of domain names;
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`however, the Defendant in this action is using the system contrary to the
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`premise of public license, for self-profit and in such a manner as to in-
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`terfere with the intellectual property rights and operations of Plain-
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`tiff; to wit:
`
`
`
`THE PARTIES
`
`Plaintiff, WEEDS, INC., has been doing business using the
`
`
`
`1.
`
`“WEEDS” brand since 1966, owning a United States Trademark Registration
`
`for “WEEDS” U.S. Reg. No. 3,308,883, declared incontestable long ago on
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`November 2, 2012, and with a place of business at 1010 Franklin Drive,
`
`Suite 3, Smock, Fayette County, Pennsylvania, 15480, USA.
`
`2.
`
`Although discovery is continuing:
`
`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 2 of 18
`
`a.
`
`Regarding weeds.com (the “Domain Name”):
`
`i.
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`“GoDaddy.com, LLC” (“GoDaddy”) is the registrar for
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`“weeds.com”. See Exhibit 1. GoDaddy has an address of operations at
`
`14455 N Hayden Road, Scottsdale, AZ 85260.
`
`ii.
`
`As of July 6, 2017, GoDaddy’s official registrar
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`WHOIS database information for weeds.com indicated that Defendant “Do-
`
`mains By Proxy, LLC” was registrant owner organization of “weeds.com”.
`
`See Exhibit 1.
`
`iii.
`
`“Domains by Proxy, LLC” uses the “domainsBy-
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`Proxy.com” domain for the administration of ownership of “weeds.com”. See
`
`Exhibit 1.
`
`iv.
`
`“DomainsByProxy.com” is owned by “Go Daddy Operat-
`
`ing Company, LLC”. Go Daddy Operating Company, LLC has an address at
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`14455 N Hayden Road, Scottsdale, AZ 85260. See Exhibit 2.
`
`v.
`
`Go Daddy Operating Company, LLC has the same ad-
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`dress as Domains By Proxy, LLC.
`
`vi.
`
`After Plaintiff initiated a domain name dispute re-
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`garding “weeds.com” with the World Intellectual Property Association
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`(“WIPO”) shortly after July 6, 2017, the registration information was
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`unilaterally updated by GoDaddy, as licensed registrar, such that regis-
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`tration information for “weeds.com” was intentionally changed to indicate
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`that Innovation HQ, Inc. as the registrant owner organization of
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`“weeds.com”, rather than GoDaddy’s Domains By Proxy, LLC. See Exhibit 3.
`
`vii.
`
`Innovation HQ, Inc. (“Innovation”) is an “off-
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`shore” company located at PO Box 990 Lower Factory Road, St. Johns. Ex-
`
`hibit 3.
`
`
`
`
`
`2
`
`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 3 of 18
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`3.
`
`Registrars are responsible, under a license from ICANN,
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`to administer to conduct the administration of domain name registration
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`in a transparent, fair and neutral manner, and not in a commercially dis-
`
`ruptive manner. Moreover, ICANN requires that WHOIS data information be
`
`accurate.
`
`
`
`
`
`4.
`
`NATURE OF ACTION
`
`Plaintiff does business using the trademark “WEEDS” (the
`
`“Mark”), and, subject to the claims as set forth herein, this is an ac-
`
`tion generally for trademark infringement, dilution of trademark rights,
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`unfair competition, and domain name cybersquatting.
`
`5.
`
`Plaintiff has a United States Trademark Registration for
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`“WEEDS,” U.S. Reg. No. 3,308,883, declared “incontestable” on November 2,
`
`2012. See Exhibit 4.
`
`6.
`
`Defendant has no bona fide or legitimate interests in the Do-
`
`main Name and is using the Mark without authority or permission in viola-
`
`tion of Plaintiff’s legal rights at common law and/or as granted by stat-
`
`ute.
`
`
`
`JURISDICTION
`
`7.
`
`This Court has subject matter jurisdiction over this action
`
`pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1331, 1338(a) and (b), fed-
`
`eral questions involving infringement of a mark, joined with claims for
`
`unfair competition. Pendant jurisdiction over other claims arising from
`
`the same nucleus of operative facts lies in consideration of judicial
`
`economy, convenience, and fairness to litigants.
`
`
`
`
`
`3
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 4 of 18
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`8.
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`Defendant has purposefully availed itself of the jurisdiction
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`of this venue, within the United States and this Commonwealth, by the di-
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`rect and continued advertisement of “weeds.com” into these United States
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`and this Commonwealth of Pennsylvania, and the injury is occurring this
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`Commonwealth.
`
`
`
`9.
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`JURISDICTION AND VENUE
`
`The venue is proper in this District pursuant to 28 U.S.C. §§
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`1391(b) and (c).
`
`
`
`STATEMENT OF FACTS
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`10. Plaintiff hereby incorporates by this reference paragraphs 1
`
`through the prior paragraph of this pleading, inclusive, as fully set
`
`forth herein at length.
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`11. Plaintiff registered the Mark has been doing business using
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`the “WEEDS” brand since 1966.
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`12. Plaintiff owns a United States Trademark Registration for
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`“WEEDS” U.S. Reg. No. 3,308,883, declared incontestable on November 2,
`
`2012. See Exhibit 4.
`
`13. Plaintiff has the exclusive right, title and interest in and
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`to the Mark for which the registration carry a statutory presumption of
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`exclusive ownership.
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`14. Plaintiff’s Mark is distinctive and has satisfied the require-
`
`ments for statutory incontestability. See Exhibit 4.
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`15. Plaintiff has used and contributed significant time, money and
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`effort to establishing business and good will associated with the Mark,
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`and materials used and sold in conjunction with the Mark.
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`
`
`
`
`4
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 5 of 18
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`16. Registrar GoDaddy is a fiduciary, acting as registrar, and by
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`way of license as a registrar, is part of a “stakeholder” system of gov-
`
`ernance; indeed, ICANN’s public mission statement states the following:
`
`ICANN is a not-for-profit public-benefit corporation with par-
`ticipants from all over the world dedicated to keeping the In-
`ternet secure, stable and interoperable. It promotes competi-
`tion and develops policy on the Internet's unique identifiers.
`Through its coordination role of the Internet's naming system,
`it does have an important impact on the expansion and evolu-
`tion of the Internet.
`
`17. The Defendant does not have any legitimate business interest
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`in the Domain Name.
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`18. As a result of the exact proximity and similarity of the
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`names, and if not made more clear by the conscious concealment of Defend-
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`ant’s situs, it is believed and averred that:
`
`a.
`
`Defendant purposefully, intentionally and willfully used
`
`the Mark or a formative thereof knowing that Defendant’s term continues
`
`to create or is likely to create an association and confusion in the mar-
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`ketplace, and causes significant dilution to the value of the Mark.
`
`b.
`
`By said activity, Defendant has intentionally, recklessly
`
`and wantonly engaged in a course of conduct that has damaged Plaintiff.
`
`c.
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`Defendant’s infringement of the Mark is likely to cause
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`or is causing damage to Plaintiff.
`
`d.
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`Defendant has used the Mark or a formative thereof that
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`is, consists of, or comprises, a mark which so resembles the Mark and not
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`abandoned, as to be likely, when used on or in connection with the goods
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`or services identified with the Mark to cause confusion, mistake, de-
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`ceive, lessen the ability of Plaintiff to distinguish itself in the mar-
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`ketplace, cause confusion, mistake and/or an untrue sponsorship, affilia-
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`tion or association, and/or otherwise be in violation of law. Exhibit 6.
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`
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`
`
`5
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 6 of 18
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`19. Based upon information and belief, each board member or other
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`manager or trustee who is natural person, participated in, coordinated,
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`authorized and approved the scheme to infringe upon Plaintiff’s rights.
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`Each such person had actual and constructive knowledge of the rights of
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`Plaintiff, but proceeded for the wrongful purposes averred in this Com-
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`plaint. Furthermore, each such person has, notwithstanding filing this
`
`action, continued their participation in the ongoing acts of infringe-
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`ment, unfair competition, dilution of Plaintiff's Mark and reputation as
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`well as otherwise averred herein.
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`20. Defendant’s actions infringe upon Plaintiff’s common law
`
`rights as well as rights pursuant to the Lanham Act, including, but not
`
`limited to, Section 43(a) thereof.
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`21. Plaintiff believes that the Defendant’s ostensible omission of
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`commercial contact information clearly evidences that Defendant, and each
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`of the human actors causing Defendant’s illegal actions, do not desire to
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`place themselves in a position to be found in order to thwart and to con-
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`tradict proper legal process, whether resulting from trademark infringe-
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`ment, unfair competition, and investigation.
`
`22. By ostensible omission, there is no human being identified as
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`a Registrant Contact, and there is no human being identified as an Admin-
`
`istrative Contact for the Domain Name, and there is no human being iden-
`
`tified as a Technical Contact, in violation of the ICANN requirements.
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`Indeed, no human beings who will take responsibility for the continually
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`renewed registration in bad faith, using private registrations, corpora-
`
`tions, and jurisdictions off-shore from the United States, notwithstand-
`
`ing that the Defendant is systematically and purposefully availing itself
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`of business opportunities, advertising and sales in the United States.
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`
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`
`
`6
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 7 of 18
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`23. Defendant purposefully solicits business transactions in the
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`United States, and the advertisements for the extortive brokering sales
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`of the United States. See Exhibit 5.
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`24. It is asserted that the Registrar operates within a public li-
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`cense of operations, a socially transparent duty, and as a public fiduci-
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`ary for the fair administration of Domain Name for which they are social-
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`ly entrusted.
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`25. Defendant is acting in a concerted manner that clearly vio-
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`lates the Lanham Act, and more particularly the Anticybersquatting Con-
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`sumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d).
`
`26. The Defendant is offering the identical and confusingly simi-
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`lar Domain Name for sale, and without any legitimate or bona fide use
`
`with such similarity of bad faith usage under the Rules (and illegal us-
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`age under ACPA).
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`27. The Domain Name is identical or confusingly similar to a
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`trademark or service mark in which the Plaintiff has rights;
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`a. Plaintiff has been using "WEEDS" at common law for more
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`than 50 years ago, and owns United States Registration No. 3,308,883
`
`"WEEDS", declared "incontestable" and duly renewed and valid subsisting;
`
`b. The Domain Name at issue is weeds.com. The Domain Name is
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`identical to the name of the trademarks and service marks of the Plain-
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`tiff;
`
`c. The Defendant has no rights or legitimate interests in
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`respect of the Domain Name;
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`d. It is believed and therefore averred that the Defendant’s
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`action violates not only the Uniform Domain Name Dispute Resolution Poli-
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`cy, but also including, but not limited to, the United States Anticyber-
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`squatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). Indeed,
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`
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`
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`7
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 8 of 18
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`the Defendant is offering the Domain Name for sale, and without any bona
`
`fide use;
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`e. Among other things otherwise set forth in this Complaint,
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`the Domain Name clearly and convincingly have been acquired for no other
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`purpose but unlawful brokering, sale and/or auction, for exorbitant pric-
`
`es, in an extortive manner;
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`f. The indexing creates initial interest confusion and in-
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`terferes with legitimate business by the brand owner;
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`g. The uses and indexing are commonly used by United States
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`residents, but Defendant uses a proxy registrant outside of the United
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`States, with additional secrecy and anonymity. Indeed, the registrations
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`are all by "proxy" concealing the true identity of the substantive regis-
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`trant and beneficiary, and the secrecy is for no legitimate reason.
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`h. Plaintiff intends in this proceeding or otherwise to de-
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`termine the concealed beneficiary and principal actors injuring Plain-
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`tiff. Plaintiff reserves all rights to damages against the registrars
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`and the owners for conduct which is to aid and abet the process of said
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`brokers, sale and/or auction.
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`28. At no time whatsoever, including neither at the time of ini-
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`tial registration, nor at any time of additional registration by renewal,
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`has the Defendant: (i) used or demonstrably prepared to use, the Domain
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`Name or a name corresponding to the Domain Name in connection with a bona
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`fide offering of goods or services; (ii) ever have been commonly known by
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`the Domain Name, nor acquired trademark or service mark rights; and (iii)
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`made a legitimate commercial, noncommercial or fair use of the Domain
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`Name, but only intending for illegal commercial profit, gain and to mis-
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`leadingly divert consumers or to tarnish the trade mark or service mark
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`at issue as a mechanism to extort such profit and gain from the owner of
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`
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`
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`8
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`

`

`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 9 of 18
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`the validly subsisting United States Trademark Registration who clearly
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`and incontestably has a legitimate interest in the Domain Name.
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`29. The Domain Name was registered in bad faith, was intentionally
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`registered by renewal in bad faith, and is continuing to be used in bad
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`faith.
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`30. Plaintiff acquired common law trademark rights in the United
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`States in the year 1966 and has been using the "WEEDS" brand continuously
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`since 1966, for more than 50 years in intrastate and interstate commerce,
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`acquiring common law rights thereby, and has used the brand in multiple
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`different states within the United States.
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`31. The Defendant recently registered the respective Domain Name
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`after Plaintiff acquired common law trademark rights, federal trademark
`
`rights, and after the date of Plaintiff's United States trademark regis-
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`tration.
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`32. Defendant is tarnishing Plaintiff's brand and incontestable
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`United States Trademark Registration.
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`33. Defendant did not acquire, and did not register by renewal,
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`the Domain Name with any bona fide intention of commercial usage, has ex-
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`pressly offered the Domain Name for sale at exorbitant prices, and simply
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`registered the Domain Name for the purpose of extracting a profit payment
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`from Plaintiff in gross without any appurtenant commercial value, which
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`is not permissible under the law of trademarks.
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`(a) Defendant registered, has acquired, and has registered by
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`renewal, the Domain Name primarily for the purpose of selling, renting,
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`or otherwise transferring the Domain Name registration to the Plaintiff
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`who is the owner of the trade mark or service mark, or to a competitor of
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`the Plaintiff, for valuable consideration in excess of documented out-of-
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`pocket costs directly related to the Domain Name; (b) Defendant has reg-
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`istered the Domain Name, and has continued to register by renewal to Do-
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`main Name, in order to prevent the owner of the trade mark or service
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`mark from reflecting the mark in a corresponding Domain Name; (c) Re-
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`spondent has registered the Domain Name, and has continued to register by
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`renewal to Domain Name, primarily for the purpose of disrupting the busi-
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`ness of a competitor within the context of the Domain Name usage and ac-
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`quisition, by not holding the Domain Name silently for use or while de-
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`veloping a commercial enterprise with relevant trademark rights, but re-
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`directing visitors to other sites; and/or (d) by using the Domain Name,
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`Defendant has intentionally attempted to attract, for commercial gain,
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`Internet users to another web site or other online location, by creating
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`a likelihood of confusion with the Plaintiff's mark as to the source,
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`sponsorship, affiliation, or endorsement of the web site or location or
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`of a product or service on the web site or location.
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`(b) Defendant clearly registered, registered by renewal, and
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`have used the Domain Name in bad faith and with the intent of making com-
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`mercial gain by unlawful brokering, sale and/or auction, for exorbitant
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`prices, in an extortive manner, and clearly evidenced by "for sale" in
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`gross and not appurtenant to any substantive enterprise. See Exhibits 5.
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`34. As set forth above, Defendant uses layer upon layer of clan-
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`destine entities and foreign jurisdictions, as well as a “post office”
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`for address, in a commonly used scheme of “international layering.”
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`a.
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`GoDaddy, even though a licensed registrar, and for a
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`profit, will keep an owner of a domain name a secret from public trans-
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`parency, which it does not release except under compulsion of legal pro-
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`cess. The legal process required is for a party claiming injury pays
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`significant filing fees of approximately $1,500 per domain name to, for
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`example, to WIPO in an administrative action, or to institute legal judi-
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`cial action.
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`b.
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`The purposeful concealment of situs information by for-
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`eign Defendant is ostensibly to avoid and otherwise to thwart the ability
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`of the public to locate the Defendant or any of the human actors acting
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`in concert and causing injury, resulting from trademark infringement, un-
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`fair competition, or other investigation.
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`
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`COUNT I
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`DECLARATION OF OWNERSHIP
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`35. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`36. Plaintiff is entitled to declaration of exclusive ownership of
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`the Mark and all formatives thereof likely to cause confusion
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`
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`COUNT II
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`VIOLATION OF ANTICYBERSQUATTING CONSUMER PROTECTION ACT ("ACPA")
`15 U.S.C. § 1125(D)
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`
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`37. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`38. As set forth above, Defendant has violated the ACPA and is en-
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`titled to the compelled transfer of the Domain Name.
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`
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`COUNT III
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`UNFAIR COMPETITION BY INFRINGEMENT OF COMMON LAW RIGHTS
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`39. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`40. Defendant’s acts constitute unfair competition and an in-
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`fringement of Plaintiff's common law rights in the Mark. The acts by De-
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`fendant are unfair competition in violation of the common law of the Com-
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`monwealth of Pennsylvania.
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`41. Defendant’s acts as alleged herein were committed with the in-
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`tent to pass off and palm off Defendant’s goods as the goods of Plain-
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`tiff, and with the intent to deceive and to defraud the public.
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`
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`COUNT IV
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`VIOLATION OF LANHAM ACT BY USE OF FALSE DESIGNATION
`IN INTERSTATE COMMERCE
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`42. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`43. Defendant’s acts are in violation of 15 U.S.C.S.
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`§ 1125(a), Lanham Action 43(a), 43(d), Defendant has used in connection
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`with the aforesaid goods and/or services a false designation or origin,
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`by domain name and otherwise, false or misleading description and repre-
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`sentation of fact which is likely to cause confusion, and to cause mis-
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`take, and to deceive as to the affiliation, connection, or association of
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`Defendant with Plaintiff and as to the origin, sponsorship and approval
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`of Defendant’s goods, services and commercial activities by Plaintiff.
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`
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`COUNT V
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`DILUTION IN VIOLATION OF PENNSLVANIA ANTI-DILUTION STATUTE
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`
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`44. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`45. Defendant has made commercial use of the Mark, a designation
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`owned by Plaintiff, in connection with goods and/or services which De-
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`fendant has used and transported in United States interstate commerce.
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`Defendant’s acts are in violation of 54 PA.C.S. §1124 in that they have
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`caused dilution of the distinctive quality of the Mark, all to the irrep-
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`arable injury to and damage of Plaintiff within the market.
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`46. Defendant’s acts have lessened the capacity of the Mark to
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`identify and to distinguish the goods of Plaintiff. Defendant acts have
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`caused dilution, blurring and tarnishment of the unique association which
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`have heretofore existed between the Mark and goods made and/or services
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`rendered by Plaintiff.
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`47. The Mark is a distinctive and famous mark. The Mark has been
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`used in connection with the goods and services regarding which it appears
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`including on and through the Internet to consumers and those in the
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`trade, are in substantially exclusive use, and are registered, as alleged
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`heretofore.
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`48. Defendant committed the acts averred herein willfully and with
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`the intent to cause dilution of the Mark and Plaintiff's rights and repu-
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`tation.
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`COUNT VI
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`VIOLATION OF 73 P.S. 201-1
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`49. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`50. The acts by Defendant are unfair competition and are in viola-
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`tion of 73 P.S. 201-1, et seq.
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`51. Such unfair competition is causing Plaintiff damage thereby,
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`and Plaintiff is entitled to statutory treble damages thereby as a result
`
`of the intentional actions averred herein.
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`
`
`COUNT VII
`
`COMMON LAW TRADEMARK INFRINGEMENT
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`52. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`53. Defendant is acting in an intentional and wanton manner in or-
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`der to deceive the public by passing off and are thereby causing confu-
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`sion in the marketplace as to the origin of the services offered, and
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`Plaintiff is being harmed thereby.
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`54. Defendant is in violation of 54 Pa. Pa.C.S.A. 1101, et seq.
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`
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`COUNT VIII
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`EQUITABLE RELIEF
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`55. Plaintiff hereby incorporates by this reference paragraphs 1
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`through the prior paragraph of this pleading, inclusive, as fully set
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`forth herein at length.
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`56. The damages being incurred by Plaintiff, including the public
`
`confusion over the origin of goods and services are of a nature that mon-
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`ey alone cannot remedy and Plaintiff is being irreparably harmed thereby.
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`
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`ALLEGATION OF DAMAGES
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`57. The damages being incurred by Plaintiff, including the public
`
`confusion over the origin of goods and services are of a nature that mon-
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`ey alone cannot remedy and Plaintiff is being irreparably harmed thereby.
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`58. By reason of Defendant acts as alleged herein, Plaintiff has
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`and will suffer damage to its business, reputation and good will and the
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`loss of sales and profits Plaintiff would have made but for Defendant’s
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`acts.
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`59. Defendant threatens to continue to do the acts complained of
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`herein, and unless restrained and enjoined, will continue to do so, all
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`to Plaintiff’s irreparable damage. It would be difficult to ascertain
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`the amount of compensation which could afford Plaintiff adequate relief
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`for such continuing acts, and a multiplicity of judicial proceedings
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`would be required. Plaintiff’s remedy at law is not adequate to compen-
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`sate it for injuries threatened.
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`
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays:
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`1. Injunctive Relief. 1(a). Enjoin Defendant. That this
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`Court grant an injunction pursuant to the powers granted it under 15
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`U.S.C.A § 1116, enjoining and restraining Defendant, and Defendant’s
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`agents, servants and employees from directly or indirectly using the Mark
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`Case 2:17-cv-01533-MPK Document 1 Filed 11/22/17 Page 16 of 18
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`or any other mark, word or name similar to the Mark which is likely to
`
`cause confusion, mistake or to deceive.
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`
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`
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`That this Court, pursuant to the power granted it under 15
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`U.S.C.S. § 1118, transfer the Domain Name to Plaintiff, as well as order
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`that all webpages, indices, labels, signs, prints, packages, wrappers,
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`receptacles, and advertisements in the possession of Defendant bearing
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`the Mark and all plates and other means of making the same, shall be de-
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`livered up to the Court for destruction.
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`1(b). Enjoin Defendan