TT AB
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`U.S. EXPRESS MAIL NO. ER 980877655 US
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Web Tracking, L.L.C.,
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`Petitioner,
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`vs.
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`Huntana, L.L.C., and Webstatcom, L.L.C.,
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`Respondents.
`_:__M____)
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`\.y%‘~J\y\_/\./\-v’\—/\-—¥\-—o‘
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`Cancellation No. 92043502
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`Mark: WEBSTAT
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`Registration No.: 2,058,787
`Filed: October 19, 1995
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`Registered: May 6, 1997
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`MOTION TO SUSPEND PENDING INTER PARTES PROCEEDING
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`Respondent Webstat.com, L.L.C. (“Webstat”), moves to suspend the above—captioned
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`proceeding pending disposition of Civil Case No. 2:03-CV-977 PGC previously filed by Webstat
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`against Petitioner in the United States District Court for the District of Utah, Central Division.
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`The following points support the requested suspension:
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`1.
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`On November 6, 2003, WebStat filed a Complaint against Petitioner in the United
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`States District Court for the District of Utah, Central Division, which was assigned Civil No.
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`2:03—CV-977 PGC. A copy of the Complaint is attached as Exhibit A.1
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`‘The Complaint in the civil action was filed against Web Tracking Services, L.L.C, a South Carolina limited liability
`company. (Cornpl. 1] 2.) The Petition for Cancellation was filed by Web Tracking, L.L.C., identified by Petitioner
`as a South Carolina limited liability company. (Petition for Cancellation at 1.) It appears that Petitioner made a
`typographical error ir1 identifying itself in this proceeding, and that Web Tracking Services, L.L.C., is Petitioner’s
`correct name. In fact, in its averments in the Petition for Cancellation, Petitioner expressly states that it is the
`defendant in the federal civil lawsuit. (Id. 1] 25.)
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`Hlllflllllllllllllllllllllfllllllllllllllllllllll
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`2.
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`In the Complaint, Webstat alleges that it is the owner and senior user (through its
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`predecessor in interest) of the mark WEBSTAT and the federal registration thereof, which
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`registration is the subject of the instant Petition for Cancellation.
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`(Compl.1]1[ 6-7, 11; see also
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`Petition for Cancellation at 1-2.) Webstat alleges that Petitioner’s use of the mark WEB-STAT,
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`in the domain name web-stat.com, on the website found at that domain name, and in the
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`metatags and HTML code for the website, is likely to cause confusion, mistake, or deception of
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`the purchasing public as to the source or origin of Petitioner’s goods and services. (Compl. 111]
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`11-19.)
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`3.
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`The Complaint sets forth two causes of action against Petitioner that relate to the
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`WEBSTAT mark: (1) infringement of a federally registered trademark in violation of Section
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`32(1) of the Lanham Act; and (2) unfair competition in violation of Section 43(a) of the Lanham
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`Act. (Id.1['|] 21-32.)
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`4.
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`On April 16, 2004, Petitioner responded to the Complaint by filing a Motion to
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`Dismiss for Lack of Subject Matter Jurisdiction, Personal Jurisdiction and Venue and, in the
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`Event of Jurisdiction and Venue, Motion to Dismiss Under Rule 12(b)(6). A copy of the Motion
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`is attached as Exhibit B.
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`5.
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`As part of its motion to dismiss for failure to state a claim under Rule 12(b)(6),
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`Petitioner argued that Webstat’s federal registration of the mark WEBSTAT was obtained by
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`fraud at its inception, or became fraudulent through bad faith preservation of the registration and
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`assignment of the registration to Webstat; that prosecution history estoppel limits the scope of
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`Webstat’s rights in connection with the registration of the WEBSTAT mark; and that the
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`WEBSTAT mark is generic. (Motion to Dismiss at 2-3.) In the memorandum in support of its
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`2
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`nI
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`motion to dismiss, Petitioner further argued that Petitioner and its predecessor had senior rights
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`in the mark WEB-STAT, that any rights in the WEBSTAT mark or registration thereof had been
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`abandoned by Webstat’s predecessor in light of its administrative dissolution, and that Webstat’s
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`predecessor was prohibited from transferring its rights in the mark in light of its administrative
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`dissolution. (Memorandum in Support of Motion to Dismiss, relevant portions of which are
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`attached as Exhibit C.)
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`6.
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`On July 6, 2004, Petitioner filed the instant Petition for Cancellation. Petitioner
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`supported its Petition with the same arguments that support its motion to dismiss. Specifically,
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`Petitioner averred that:
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`the mark WEBSTAT was obtained by fraud at its inception, or became
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`fraudulent through bad faith preservation of the registration and assignment of the registration to
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`Webstat, (Petition for Cancellation 1] 23), prosecution history estoppel limits the scope of
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`Webstat’s rights in connection with the registration of the WEBSTAT mark, (id. 11 14), the
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`WEBSTAT mark is generic, (id. 1] 24), Petitioner and its predecessor had senior rights in the
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`mark WEB-STAT, (id. ‘[[ 26-27), any rights in the WEBSTAT mark or registration thereof had
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`been abandoned by Webstat’s predecessor in light of its administrative dissolution, (id. 1]1] 16-
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`22), that Webstat’s predecessor was prohibited from transferring its rights in the mark in light of
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`its administrative dissolution, (id.).
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`7.
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`Moreover, Petitioner specifically noted that its rights asserted in its Petition for
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`Cancellation are at issue in the federal civil action. (Id. 11 25 (averring Petitioner’s claimed right
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`to use the WEB-STAT mark, and noting “[y]et [Webstat] has sued Petitioner in Utah Federal
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`District Court to enjoin further use of ‘WEB-STAT’ and ‘web-stat.com’ based on the allegation
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`that such use constitutes an infringement of Registration No. 2,05 8,787.’’).)
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`3
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`

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`G
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`8.
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`On July 16, 2004, the Court in the federal civil action denied Petitioner’s motion
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`to dismiss concerning subject matter jurisdiction, personal jurisdiction, and venue. The Court
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`converted Petitioner’s motion to dismiss for failure to state a claim under Rule 12(b)(6) into a
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`motion for summary judgment. The Court further allowed limited discovery and ordered the
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`parties to submit their discovery findings no later than September 15, 2004. A copy of the
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`Court’s order is attached as Exhibit D.
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`9.
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`Pursuant to federal regulations, “[w]henever it shall come to the attention of the
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`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
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`action or another Board proceeding which may have bearing on the case, proceedings before the
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`Board may be suspended until termination of the civil action or the other Board proceeding.” 37'
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`C.F.R. § 2.1 17. As noted in the Trademark Trial and Appeal Board Manual of Procedure,
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`“[o]rdinarily, the Board will suspend proceedings in the case before it if the final determination
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`of the other proceeding will have a bearing on the issues before the Board.” TBMP § 510.02(a)
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`(citing Other Tel. Co. v. Conn. Nat '1 Tel. Co., 181 U.S.P.Q. 125 (T.T.A.B. 1974); Tokaido v.
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`Honda Assocs. Inc, 179 U.S.P.Q. 861 (T.T.A.B. 1973)).
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`10.
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`Disposition of the civil action will determine whether Webstat has the rights it
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`claims in the WEBSTAT mark and the federal registration of that mark that is at issue in this
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`cancellation proceeding. The issues and arguments raised by Petitioner in its Petition for
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`Cancellation will necessarily be determined in the federal civil action. They may be determined
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`shortly as the Court decides the motion to dismiss for failure to state a claim that has now been
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`converted to a motion for summary judgment. If the converted motion is denied, they will be
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`asserted by Petitioner as defenses to Webstat’s claims and determined at trial.
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`4
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`11.
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`Accordingly, Webstat respectfully submits that all further proceedings in the
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`above—captioned cancellation proceeding be suspended pending disposition of Civil Case No.
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`2:03-CV-977 PGC in the United States District Court for the District of Utah, Central Division.
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`Please recognize Arthur B. Berger and David E. Finkelson of the firm of Ray, Quinney &
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`Nebeker, 36 South State Street, Suite 1400, P.O. Box 45385, Salt Lake City, Utah 84145-0385,
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`telephone number (801) 532-1500, as attorneys for Webstat in the above-captioned proceeding.
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`Please address all correspondence to them.
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`Please note that a Certificate of Express Mail is attached to this document. In accordance
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`with the Rules of Practice in Trademark Cases at 37 C.F.R. section 1.10, this document should
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`be assigned a filing date of August 13, 2004.
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`DATED this 13"‘ day of August, 2004.
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`Respectfully submitted,
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`WEBSTAT.COM, L.L.C.
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`By:
`Arthur B. Berger
`David E. Finkelson
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`RAY, QUINNEY & NEBEKER
`36 South State Street, Suite 1400
`Post Office Box 45385
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`Salt Lake City, Utah 84145-0385
`Telephone: (801) 532-1500
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`Attorneysfor Respondent Webstat.com, L.L. C.
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`

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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 13"‘ day of August, 2004, a true and correct copy of the
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`foregoing MOTION TO SUSPEND PENDING INTER PARTES PROCEEDING was mailed,
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`by f1rst~class mail, postage prepaid, to:
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`Lynn G. Foster
`Lynn G. Foster L.C.
`602 East 300 South
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`Salt Lake City, Utah 84102
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`-I
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`

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`3
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`CERTIFICATE OF EXPRESS MAIL
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`Express Mail mailing label number: ER 980877655 US
`Date of Deposit: August 13, 2003
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`I hereby certify that this paper or fee is being deposited with the United States Postal
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`Service as “Express Mail Post Office to Addressee” service under 37 C.F.R. §1.l0 on the date
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`indicated above, and is addressed to Box TTAB, Commissioner for Trademarks, 2900 Crystal
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`Drive, Arlington, Virginia 22202-3514.
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`/(rfiur
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`?€_I—jJ
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`(Typed or printed name of person
`mailing paper or fee)
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` (Signature of person maili g
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`paper or fee)
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`

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`

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`
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`Arthur B. Eerger (6490)
`David E. Finkelson (9758)
`RAY, QUINNEY & NEBEKER
`36 South State Street, Suite 1400
`P.O. Box 45385
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`Salt Lake City, Utah 84145-0385
`Telephone: (801)532-1500
`
`.
`METED snares answer
`HLEE(iiLilgT, Distaht OF UTAH
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`NOV __ 5 2003
`HER CLERK
`rEv51YAF%KU3 3- 3"“ ~
`*
`-——-‘a'e'p—trrTcTeT<"'“"
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`Attorneys for Pla1'nt§fl'Webstaz‘_com
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`IN THE UNITED DISTRICT COURT FOR THE DISTRICT OF UTAH
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`CENTRAL DIVISION
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`
`
`
`Judge Paul G. Cassell
`DECK TYPE: Civil
`WEB TRACKING SERVICES, L.L.C., a
`DATE STAMP: 11/06/2003 8 15:25:47
`South Carolina limited liability corporation,
`CASE NUMBER:
`2:03CV00977
`PGC
`
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`Defendant.
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`Plaintiff Webstat.com LLC, complains of Defendant Web Tracking Services, LLC,
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`(“Web Tracking” or “Defendant”), and alleges as follows:
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`PARTIES, JURISDICTION, AND VENUE
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`1.
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`Webstatcom, LLC, is a Utah limited liability corporation with its principal place
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`of business at 241 North Main Street, Springville, Utah 84663.
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`2.
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`Upon information and belief, Web Tracking Services, LLC, is a South Carolina
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`limited liability corporation with its principal place of business at 1670 Springdale Plaza, Unit 9,
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`WEBSTAT.COM, L.L.C., aUtah limited
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`liability corporation,
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`Plaintiff,
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`V.
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`COMPLAINT
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`Suite 270, Camden, South Carolina, 29020. Web Tracking is also doing business on the Internet
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`at hgpr//www.web-stat.com (the “Website”).
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`3.
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`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
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`1121 and 28 U.S.C. §§ 1331 and 1338.
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`4.
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`On infonnation and belief, this Court has personal jurisdiction over Defendant by
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`virtue of its transacting and doing business in this state, conducting infringing activity in this
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`state, and causing other tortious injury in this state pursuant to Utah Code Ann. § 78-27-24.
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`5.
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`On information and belief, venue is proper in this district and division pursuant to
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`28 U.S.C. § 1391(b), (c).
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`GENERAL ALLEGATIONS
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`6.
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`Webstatcorn, on its own or through predecessors in interest, has used the mark
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`WEBSTAT in connection with website traffic monitoring software and services since at least
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`May 16, 1995.
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`7.
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`Webstat.com is also the sole and exclusive owner of a federal trademark
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`registration for the trademark WEBSTAT in connection with “computer software for analyzing
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`and monitoring electronic traffic at specific sites on computer systems,” which registration issued
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`on May 6, 1997, as registration number 2,058,787, with an effective date of October 19, 1995.
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`This registration is in fiill force and effect, and was issued prior to Defendant’s acts complained
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`of herein.
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`8.
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`Pursuant to 15 U.S.C. § 1065, the federal registration of the mark WEBSTAT is
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`incontestable.
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`9.
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`Accordingly, the registration is conclusive evidence of the validity of the
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`registered mark WEBSTAT and of Webstat.com’s exclusive right to use the registered mark in
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`commerce in connection with website traffic monitoring software. 15 U.S.C. § 111S(b).
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`10. Webstatcom has been extensively engaged in the business of using the mark
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`WEBSTAT throughout the United States, which mark is inherently distinctive and/or has
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`acquired distinctiveness prior to the acts of Defendant complained of herein, and has become,
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`through widespread and favorable public acceptance and recognition, an asset of substantial
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`value to Webstatcom and a symbol of Webstat.corn and its goodwill.
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`11.
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`Notwithstanding Webstat.com’s prior rights in the mark WEBSTAT, Defendant
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`has made and is making unauthorized use of the mark WEBSTAT on and in connection with the
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`Website.
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`12.
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`Defendant’s unauthorized use of the mark WEBSTAT includes, without
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`limitation, use of the virtually identical mark WEB-STAT in the domain name web-stat.com and
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`throughout the Website. Defendant has also used the marks WEBSTAT, WEB-STAT, and WEB
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`STAT in its metatags and HTML code for the Website.
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`13.
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`Defendant uses the marks WEBSTAT, WEB—STAT, and WEB STAT in
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`connection with its own website traffic monitoring software and services, in direct competition
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`with We-bstat.com.
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`

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`Q
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`14.
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`Defendant uses the marks WEBSTAT, WEB-STAT, and WEB STAT in the same
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`media as that used by Webstatcom, which includes, without limitation, the Internet.
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`15.
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`Defendant’s mark WEB—STAT is virtually identical in sound and emphasis to
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`Webstat.com’s mark WEBSTAT.
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`16.
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`Defendant’s mark WEB-STAT has the same meaning and commercial impression
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`as Webstat.com’s mark WEBSTAT.
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`17.
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`Defendant’s unauthorized use is likely to confuse the consuming public into
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`believing that Defendant and/or its goods and services are affiliated with, or sponsored or
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`approved by, Webstatcom.
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`18.
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`Defendant’s use of the marks WEBSTAT, WEB-STAT, and WEB STAT has
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`resulted in actual consumer confusion.
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`19.
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`Defendant’s unauthorized use is also likely to cause initial interest confusion on
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`the part of Internet consumers.
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`20.
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`As a result, Webstat.com is being deprived of the benefit of its valuable mark
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`WEBSTAT.
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`CLAIMS FOR RELIEF
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`First Claim for Relief
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`(Infiingernent of Federally Registered Trademark)
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`21. Webstatcorn realleges and incorporates by this reference the preceding
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`paragraphs of the Complaint as if fully set forth herein.
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`

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`22. Webstat.corn is the owner of the incontestable, federally registered trademark
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`WEBSTAT, which is inherently distinctive and/or has acquired distinctiveness, and which is
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`- used in interstate commerce.
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`23. Without Webstat.corn’s authorization or permission, Defendant has willfully and
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`intentionally offered, promoted, and provided goods and services making unauthorized use of the
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`mark WEBSTAT in a manner likely to cause confusion, mistake, or deception of the purchasing
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`public as to the source or origin of such goods and services, and likely to cause the purchasing
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`public to believe wrongly that such goods and services are sponsored by, affiliated with, or
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`otherwise associated with Webstat.com.
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`24.
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`Defe11dant’s unauthorized use of Webstat.com’s federally registered mark
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`WEBSTAT constitutes trademark infringement in violation of 15 U.S.C. § 1114(1).
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`25. Webstat.com is therefore entitled to permanent injunctive relief barring Defendant
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`fiom engaging in further acts violative of 15 U.S.C. § 1114(1).
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`26.
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`Defendant’s acts of trademark infringement have also caused Webstat.com actual
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`damages in an amount to be proven at trial.
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`Second Claim for Relief
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`(Federal Unfair Competition)
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`27. Webstat.com realleges and incorporates by this reference the preceding
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`paragraphs of the Complaint as if fully set forth herein.
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`28. Webstatcom is the owner and senior user of the trademark WEBSTAT, which
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`mark is inherently distinctive and/or has acquired distinctiveness, and was used in interstate
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`commerce before the acts of Defendant complained of herein.
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`29.
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`Defendant’s unauthorized use of Webstat.com’s mark WEBSTAT thus is likely to
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`deceive or confuse consumers into believing that Defendant has an affiliation or connection with
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`Webstatcom, or that it is sponsored or approved by Webstat.com_
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`30.
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`Through its actions complained of herein, Defendant has made and is making
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`false, deceptive, and misleading statements constituting false designation of origin made in and
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`in connection with interstate commerce. Defendant’s actions thus violate 15 U.S.C. § l125(a).
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`31. Webstat.com is therefore entitled to permanent injunctive relief barring Defendant
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`from engaging in further acts violative of 15 U.S.C. § 112S{a).
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`32.
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`Defendant’s actions have also caused Webstat.com actual damages in an amount
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`to be proven at trial.
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`PRAYER FOR RELIEF
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`WHEREFORE, Webstatcom respectfully prays for the following relief against
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`Defendant:
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`1.
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`That Defendant, its officers, directors, members, agents, servants, employees,
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`representatives, attorneys, related companies, successors, assigns, and all others in active concert
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`or participation with Defendant, be permanently enjoined from:
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`

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`
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`a.
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`Directly or indirectly using in commerce the mark WEBSTAT, in any
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`manner, including any words, designations, trademarks, service marks, or terminology
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`that are similar thereto, such as WEB—STAT and WEB STAT, in any style or media
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`whatsoever, including, but not limited to, on web pages, in Internet domain names, in
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`HTML code or rnetatags, or as a sponsored link;
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`b.
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`Unfairly competing with Webstatcom in any manner whatsoever; and
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`c.
`Causing a likelihood of confusion in the marketplace with respect to the
`source, origin, sponsorship, affiliation, or approval ofDefendant or its services.
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`2.
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`For an order that Defendant be directed to file with this Court and serve on
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`Webstatcorn within thirty days after the service of any injunction order, a report in writing,
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`under oath, setting forth in detail the manner and form in which that Defendant has complied
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`with the injunction.
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`3.
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`That Webstatcom be awarded judgment for its damages, in an amount to be
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`determined at trial.
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`4.
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`5.
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`That Webstat.corn be awarded pre- and postjudgrnent interest.
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`That Webstat.corn be awarded its costs of suit, including its reasonable
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`attorneys’ fees.
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`6.
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`That Webstat.com be awarded such other and further relief as the Court deems
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`

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`
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`just and proper.
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`DATED this
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`Z5-
`day of November, 2003.
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`RAY, QUINNEY & NEBEKER
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`Arthur B. Berger
`David E. Finkelson
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`Attorneysfor Plaintfi Webstat.com LLC
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`Plaintiff’ 3 address:
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`Webstat.com LLC
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`241 North Main Street
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`Springville, Utah 84663
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`131903
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`

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`

`
` .
`
`RAY QUINNEY
`
`'
`
`Lynn G. Foster (1105)
`LYNN G. FOSTER L.C.
`602 East 300 South
`Salt Lake City, UT 84102
`Telephone: (801) 364-5633
`Facsimile: (801)355-8938
`
`APR l 9 2004
`& NEBEKER
`
`CONTROL
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`Attorney for Defendant
`
`
`UNITED STATES DISTRICT COURT, CENTRAL DIVISION
`DISTRICT OF UTAH, STATE OF UTAH
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`WEBSTATCOM, L.L.C., a Utah limited
`liability corporation,
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`Plaintiff,
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`vs.
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`WEB TRACKJNG SERVICES, L.L.C., a
`South Carolina limited liability corporation,
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`MOTION TO DISMISS FOR LACK OF
`SUBJECT MATTER JURISDICTION,
`PERSONAL JURISDICTION AND
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`VENUE AND, IN THE EVENT OF
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`JURISDICTION AND VENUE, MOTION
`T0 DISMISS UNDER RULE 12(b)(6)
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`Defendant.
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`Case No. 2:03 CV00977
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`—- —+~—’—m‘—————_-—’—’;:-4;
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`T ’ “T *1’ "T "rm “ ___ _ —_ _
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`The Defendant, Web Tracking, L.L.C., appear specially, hereby moves the above-identified
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`Court through the undersigned legal counsel to dismiss the complaint for the reasons set forth below:
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`1.
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`The complaint should be dismissed, with prejudice, because this Court lacks subject
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`matter jurisdiction given the fact that domain name registration of “web—stat.com” and webstatcom
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`resolution the present alternative dispute pursuant to the mandatory dispute resolution policy of
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`Network Solutions and/or ICANN. Non-party Green Acres Services is an indispensable party, the
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`owner of “web-stat.com” and the real party in interest. See Galy Decl. Exhibit “G.”
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`

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`2.
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`The complaint should be dismissed because there is no personal jurisdiction in Utah
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`over the defendant.
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`3.
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`The complaint should be dismissed because there is no venue in Utah over the
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`defendant.
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`4.
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`In the event the Court finds subject matter jurisdiction, personal jurisdiction and
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`venue, the complaint should be dismissed, with prejudice, under Rule 12(b)(6), Fed. Rules
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`of Civ. Proc. because:
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`a.
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`No relief is available from the above—identified Court for the cause of action
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`asserted in the complaint because the jurisdiction is vested in an alternative dispute forum
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`pursuant to registration of the domain names.
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`b.
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`The plaintiff is before this Court seeking equity and has unclean hands in that
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`the plaintiff knew or should have known that the registration of WEBSTAT (Reg- No.
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`22_Q.5._8i.78,7jE"Ehibii_“E”) by Husisnaa U.-_*_‘_.3=.‘.i_E‘_’¥".1?F‘Li1ii*.1i,1_T1ii.E=.‘,1 liability E°.1T..1P.aTiY= was citing.
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`fraudulent in its inception or became fraudulent in Huntana’s and/or plaintiffs bad faith
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`preservation ofthe registration and its assignment thereofto the plaintiff, among other things.
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`c.
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`Prosecution history estoppel preclude the plaintiff fiom now contending that
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`the scope of the WEBSTAT Trademark Reg. No. 2,058,787,
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`limited to software in
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`international class 9, even if valid, applies to the distinct and independent field of intemet
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`statistical information services, found in international class 35.
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`\2004\Web Traclcing\8707 Motion to Dismiss Under Rl2(b)(6).wpd
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`2
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`d.
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`The notation WEB STAT, as used in the internet statistical information field,
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`always was or has become descriptive, highly descriptive, andfor generic and cannot per se,
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`be proprietary because it can not and does not identify a single source for web statistics,
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`WEBSTAT being a commonly used contraction of “web statistics.”
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`e.
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`The applicable statute of limitations has expired and the plaintiff has
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`acquiesced without objection to use of “web-statcom” by Green Acres Services and Web
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`Tracking Services, L.L.C. for about six years.
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`The motion is based upon the complaint,
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`the declaration of Olivier Galy and the
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`memorandum in support of the motion filed concurrently herewith.
`flv
`DATED this / ff ’E1Ey of April, 2004.
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`—~a m—-—--—————"—s’ -A—~fl~""
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`"-———’ ‘—~~fi~.
`J
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`._ —~fi~ -——-——
`.
`‘V
`Attopréy for Defendant
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`LYNN G. FOSTER, L.C.
`-
`'7
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`If ,./’ a?’
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`\2004\Web Tmcking\8707 Motion to Dismiss Under R12(b)(6).wpd
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`3
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`RAY QUINNEY
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`APR 3 El 288‘!
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`8:. NEBEKER
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`Lynn G. Foster (1105)
`LYNN G. FOSTER L.C.
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`602 East 300 South
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`Salt Lake City, UT 84102
`Telephone: (801) 364-5633
`Facsimile: (801) 355-8938
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`Attorney for Defendant
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`UNITED STATES DISTRICT COURT, CENTRAL DIVISION
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`DISTRICT OF UTAH, STATE OF UTAH
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`WEBSTATCOM, L.L.C., a Utah limited
`liability corporation,
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`Plaintiff,
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`vs.
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`MEMORANDUM W SUPPORT OF
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`MOTION TO DISMISS FOR LACK OF
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`SUBJECT MATTER JURISDICTION,
`PERSONAL JURISDICTION AND
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`VENUE AND, IN THE EVENT OF
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`WEB TRACKING SERVICES, L.L.C., a
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`JURISDICTION AND VENUE, MOTION
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`South Carolina limited liability corporation,
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`TO DISMISS UNDER RULE 12(b)(6)
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`Defendant.
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`Case No. 2:03 CVOO977
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`Judge Paul G. Cassell
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`TABLE OF CONTENTS
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`I. BACKGROUND .
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`11. UNDISPUTED FACTS .
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`HI. ARGUMENT .
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`A. This Dispute is Subject to a Mandatory Administrative Proceeding.
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`12
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`B. This Action Cannot Proceed in the Absence of Green Acres.
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`1. Green Acres Can Not be Joined, Because it is Not Feasible.
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`2. Without Green Acres, this Action Should Not in Equity and Good
`Good Conscience Proceed.
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`C. This Court Lacks Personal Jurisdiction Over Web Tracking .
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`1. General Jurisdiction Over Web Tracking in Utah Does Not Exist .
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`2. Specific Personal Jurisdiction Over Web Tracking in Utah
`Does Not Exist
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`a. Web Tracking does not transact business in Utah .
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`24
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`b. Web Tracking has not engaged in intentional tortious
`conduct directed toward Utah .
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`D. Venue is Not Proper in this Court
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`26
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`E. Even if Jurisdiction and Venue are Proper, Plaintiff‘ s Complaint
`Should be Dismissed with Prejudice for Failure to State a Claim
`Upon Which Relief May be Granted .
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`1. Relief is Not Available Because the Plaintiff has Engaged
`in lnequitable Conduct
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`a. Web Tracking and Green Acre’s domain name registration
`of “web-stat.com” is first in time .
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`b. Web Tracking and Green Acre’s rights in the WEB-STAT
`mark are superior
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`27
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`28
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`0. Web Tracl-cing’s common law rights are superior
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`d. Huntana, LLC, a dissolved limited liability company, could not assign
`trademark rights to plaintiff .
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`e. Huntana never used the mark in commerce .
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`30
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`f. Plaintiffs section 8 declaration is false .
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`2. Prosecution History Estoppel Leaves the Plaintiff Second in Time and
`Without a Cause of Action .
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`34
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`3. The Term “WEBSTAT” Likely Does Not and Cannot Identify a Single
`Source of Internet Information Services Because it is Descriptive
`andfor Generic .
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`36
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`4. No Relief is Available Because the Statute of Limitations Has Expired
`and Concurrently Plaintiff Has Silently Acquiesced for Six Years in Web
`Tracking’s Use of “web-statcom” .
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`36
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`IV. ATTORNEYS FEE .
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`37
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`V. CONCLUSION .
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`VI. ORAL HEARJNG .
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`37
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`28 U.S.C. § 1391, venue is not proper in this Court. Nor is venue proper under Subsection (c)
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`because Web Tracking is not subject to personal jurisdiction in Utah. Web Tracking and all of its
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`agents reside and are found in South Carolina, not Utah. See Statement of Facts 1[ 25. Further,
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`Web Tracl<ing’s activities are confined almost completely to South Carolina. See id. Accordingly,
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`While venue would be proper in South Carolina under 28 U.S.C. §1391, it is not proper in Utah.
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`Plaintiffs Complaint should be dismissed for improper venue.
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`E. Even If Jurisdiction and Venue Are Proper, Plaintiffs Complaint Should Be
`Dismissed with Prejudice for Failure to State a Claim Upon Which Relief May Be
`Granted.
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`1.
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`ReliefIs Not Available Because the Plaintijj’Has Engaged in Inequitable Conduct.
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`Plaintiff's Complaint should be dismissed with prejudice because Plaintiff is before this
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`Court seeking equity, yet has unclean hands. The doctrine of unclean hands “closes the doors of a
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`court of equity to one tainted with inequitableness or bad faith relative to the matter in which he
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`seeks relief.” See Precision Instr. Mfg. Co. v. Automotive Mainr. Mach. C0,, 324 U.S. 806 (1945).
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`Here, Plaintiff comes before the Court with unclean hands based upon a pattern of inequitable
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`conduct.
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`a.
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`Web Tracking and Green Acre’s domain name registration of “web-
`statcom” is first in time.
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`Plaintiff would have the Court believe that Web Tracking’s use of “web—stat.com” is
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`unauthorized and infringing, yet Green Acres and Web Tracking have prior rights to both “web-
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`statcom” and WEB-STAT. “Web—stat.com” was registered as a domain name by Green Acres on
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`February 9, 1998. Web Tracking uses the domain name with the consent of Green Acres. Six
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`months later, “webstat.corn” was registered as a domain name. Someone other than Plaintiff must
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`2004\Web Tracking\3707 Memorandum in Support of Motion to Dismssfloa
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`have registered “webstatcorn” because, although the “webstatcom” domain name registration was
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`filed on August 11, 1998, Plaintiff was not formed and thus did not exist as a legal entity until
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`September 22, 1999. Because Green Acres’ domain name had already been registered for six
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`months at the time Plaintiffs “predecessor” filed for registration of “webstatcom,” Plaintiff or its
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`“predecessor” knew or should have known about Green Acres’ use of “web—stat.com,” as well as
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`any resulting conflict between the parties’ respective domain names.
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`b. Web Tracking and Green Acres’s rights in the WEB-STAT mark are superior.
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`In addition to being first in time with respect to the “web-statcom” domain name, Green
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`Acres and Web Tracking also have priority rights with respect to use of “WEB-STAT” in
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`connection with providing access over the Internet to statistical information. Both Green Acres
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`and Web Tracking have used WEB-STAT as a common law trademark in connection with their
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`services since as early as February 1998, and continuing to the present time. On the other hand,
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`Plaintiff filed an application to register WEBSTATCOM with the U.S. Patent and Trademark
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`Office on September 17, 1999. Notably, Plaintiffs WEBSTATCOM application was filed five
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`days before Plaintiffs date of incorporation. A trademark applicant may be any person or entity
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`capable of suing and being sued in a court of law. See Trademark Manual of Examining Procedure
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`(“TMEP”) § 1201.02(a). At the time of filing its WEBSTATCOM application, however, Plaintiff
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`was not an entity “capable of suing or being sued in a court of law.” As Plaintiff was not a valid
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`legal entity as of the filing date, the WEBSTATCOM application and resulting registration are
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`void.
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`20D4\Web Tracking\8'1'07 Memorandum in Support of Motion to Dismigfirpd
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`Plaintiffs WEBSTATCOM application was based on an actual use in commerce. An
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`application based on use in commerce under 15 U.S.C. §1051(a) must be filed by the party who
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`owns the mark on the application filing date. lfthe applicant does not own the mark on the
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`application filing date, the application is Void. See 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen
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`Food Co. Ltd, 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988). Here, at the time of filing its use-
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`based application, Plaintiff could not have owned the mark because the plaintiff did not exist.
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`In addition to filing its application for registration prior to its date of incorporation, Plaintiff
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`also made a false statement with respect to its date of first use of the mark because Plaintiff had not
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`yet come into legal existence. It claimed, under oath, a first use date of January 16, 1999.
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`However, this alleged first use date precedes Plaintiff’ s date of incorporation by eight months. A
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`misstatement of the date of first use in a use-based application is not fraudulent as long as there
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`has been some valid use of the mark prior to filing date. See Western Worldwide Enterprises
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`Group, Inc. v. Qingdao Brewer