JP Enterprises, Inc. v. Yahoo!, Inc.
THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO
Case No:
06-cv-O 1 046- REB- P AC
JP ENTERPRISES, INC, Plaintiff,
v.
YAHOO! ]NC., HDVE, LLC,
SPARK NETWORKS, PLC AND INSIGHT DJRECT USA, INC.
Defendants.
PLAINTIFF’S AMENDED COMPLAINT
Plaintiff JP Enterprises, Inc (“Plaintiff’) Complains of Defendants Yahoo!, Inc. (“Yahoo!”), HDVE, LLC (“HDVE’), Spark Networks, PLC (“Spark Networks”), and Insight Direct USA, Inc. (“Insight Direct”) (“Defendants”), and for such complaint would show the Court as follows:
NATURE AND SUBSTANCE OF ACTION
1. Plaintiff files this action against Defendants for trademark dilution, trademark infringement, and false designation under the Lanham Act, 15 U.S.C. §§1051, et seq., as well as for common law unfair competition.
2. This lawsuit arises as a result of Defendants’ knowing and willful utilization of paid “Adwords” on Google® to misdirect consumers who are attempting to reach Plaintiffs dating website, located at www.1ovecity.com. Plaintiffs website is recognized internationally as being one of the most popular and consillller-mendly h1temet dating web sites available. The website began operating on April 1, 1996 and has steadily grown in name recognition since that time. Plaintiff applied for federal trademark registration for the domain name “lovecity.com” on January 21~ 1998, and obtained registration on June 22, 1999. That registration has since beel1 renewed.
JURISDICTION AND VENUE
3. This Court has subj ect matter jurisdiction over the federal trademark and trademark dilution claims, as well at the Lanham Act claims, under 28 V.S.C. § 1331 and 1338(a).
4. The Court also has complete diversity of jurisdiction under 28 v.S.C. §1332 because complete diversity exists in the matter at hand and the amount in controversy exceeds $75,000.00, exclusive of interest and costs.
5. This action arises out of wrongful acts committed by Defendants in tIns judicial district which subject Defendants to personal jurisdiction in this district. Because a substantial part of the events giving rise to these claims occurred in tins judicial district, venue is proper under 28 U.S.C. § 1391 (b )(2). Moreover, Defendants knowingly and intentionally directed, targeted, and inflicted injurious consequences upon Plaintiff in the State of Colorado.
THE PARTIES
6. Plaintiff is a Colorado corporation with its principal place of business in Meade, Colorado
7. Defendant Yahoo!® is a Delaware corporation with its principal place of business in Smmyvale California.
8. Defendant HDVE is a registered Texas limited liability company with its principal place of business in Irving Texas.
9. Defendant Spark Networks is a registered California PLC with its principal place of business in Los Angeles, California.
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10. Defendant Insight Direct is a registered Arizona corporation with its principal place of business in Tempe Arizona.
FACTS
11. Plaintiff has a United States Trademark registration for the trademark lovecity.com®. Plaintiff operates a dating website at www.1ovecity.com ® where singles can meet, converse, arrange dates, or just chat. Plaintiff has been operating this website continuously since April 1, 1996. Lovecity.com® is consistently rated among the top dating web sites worldwide.
12. Plaintiff continuously used the trademark lovecity.com® in connection with the promotion, advertising and sale ofthe multiple services provided on lovecity.com® well before the acts of Defendants complained of herein.
13. Plaintiff spent hundreds of thousands of dollars and expended years of effort in advertising, promoting and developing the trademark lovecity.com®, throughout the United States and internationally, during the years from 1996 through 2006. As a result of such advertising and expenditures, Plaintiff has created a famous mark that is recognized throughout tillS industry. Plaintiff has established considerable goodwill in the trademark lovecity.com®. The trademark lovecity.com® is a valuable asset of Plaintiffs and is of substantial worth to Plaintiff.
14. Plaintiff operates the official website www.1ovecity.comin connection with tI1e promotion, advertising, and sale of its services, and operated the website before the acts of Defendants complained of herein.
15. The Internet is a world wide network of computers that enables individuals and organizations to access and share information by means of “web pages” and “web sites”, so called because the pages are reached by “links” from one to another, creating the “worldwide web” or “web”,
16. A web page is a computer date file that is published or “served” to the Internet by one computer and presents itself as graphical “page” viewable by other computers on the Internet. It can include names, pictures, text, sound, and links to other web pages. A collection of related web pages published by the same owner is typically refereed to a website, which is identified on the hlternet by a unique address, similar to a street address, that is commonly referred to as a “domain name.”
17. The Internet is divided into several “top level” domains, such as “.com”, “.net”, and “.org”. Domain names with “.com”, “.net”, and “.org” designations can be registered with Network Solutions, Inc. (NSr”), CORE, or one of multiple other domain name registrars for a de minimis fee. The registrars register domain names on a first-come first-serve basis. The registrars do not make a threshold detennination regarding a registrant’s right to use a domain name, other than to insure that no two domains names are identical.
18. As an express condition of registering a domain name, an applicant must represent and warrant that: (1) the applicant statements are true; (2) the applicant has the right to use the requested domain; (3) the use or registration of the domain does not interfere with the rights of any third party in any jurisdiction with respect to trademark, service mark, trade name, company name, or any other intellectual property rights; and (4) the applicant is not seeking to use the domain name for any unlawful purpose, including mIfair competition.
19. Domain names may be trademarked in order to protect consumers from confusion and protect a business entity from infringement. In the case at hand, Plaintiff trademarked the domain name “lovecity.com” on June 22, 1999.
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20. In the case at hand, these named Defendants are, or have recently been, intentionally inserting metatags containing the words “lovecity”, “www.1ovecity” or “lovecity.comH as “keywords” in paid advertising known as “Adwords” on the Google® search engine. Under the “Adword” advertising method, when conswners conduct searches that activate the keywords placed in the metatags, the paid advertiser’s website appears at the top ofllie Google page. Here, when a conswner conducts a search on Google® for the trademarked term “lovecity”, \VWW.1ovecity.com or “lovecity.com’” the web sites ofthese infringing parties appear in paid advertising at the top or the side of the first Google page that the consumer views. This reflects a paid and purposeful insertion by Defendants of Plaintiff’s trademark as a responsive metatag “keywordH into the Google search engine.
21. Google® explicitly issues a written disclaimer at the top of its “Adwords” keyword-search page, stating: “[KJeep in mind that you alone are responsible for the keywords you select and for making sure that your use ofthe keywords does not violate any applicable laws, including any applicable trademark laws.”
22. Defendants’ willful insertion of Plaintiff’s trademark into paid advertisements constitutes an effort to artificially inflate their profits by knowingly misleading consumers as to the source ofthe response to their search. It has caused, and continues to cause, actual confusion, is tarnishing the goodwill and reputation of Plaintiff, and is causing lost sales to Plaintiff. In addition, this improper use of Plaintiff’s trademark constitutes unfair competition under established Colorado law.
CAUSES OF ACTION
First Claim for Relief – Trademark Dilution
23. The allegations set forth above are incorporated herein by reference.
24. The trademark lovecity.com® is a federally registered trademark. The trademark is distinctive and has acquired distinctiveness.
25. Plaintiff has extensively and exclusively used the trademark lovecity.com® in commerce throughout the United States and internationally in cOllilection with the operation of its well-JrnoWll dating web site and other products and services. Plaintiffs web site receives over 2000 “hits” per day.
26. Defendants’ unauthorized usage ofthe trademarks “lovecity.com”, “lovecity,” or otherwise within Google® “Adwords” with the intent of misleading and misdirecting consumers dilutes the distinctiveness, tarnishes, and diminishes the quality of the recognized trademark lovecity.com® in violation of 15 U.S.C. §1125(c)(1).
27. Plaintiff is being irreparably harmed by Defendants’ utllawful actions, and Plaintiff is entitled to an injunction prohibiting Defendants from using the trademark lovecity.com ®, including but not limited to usage of the mark within the Google® search engine as a “keyword” for Google® “Adwords.” Plaintiff has no adequate remedy at law that will compensate for the continued daily irreparable harm it will suffer if Defendants’ acts are allowed to continue.
28. As a direct result and proximate result of Defendants , conduct, Plaintiff has suffered monetary damages in an amount to be probed at trial. ill addition, Plaintiff is entitled to recover its costs and attorney’s fees.
Second Claim for Relief – Trademark Inmngement
The allegations set forth above are incorporated herein by reference.
30. The trademark lovecity.com® is inherently distinctively and has, over time, also acquired secondary meaning. The public associates the trademark lovecity.com® with Plaintiff s products and services. This is a result of the trademark lovecity.com’s® inherent distinctiveness and distinctiveness acquired through extensive advertising, sales, and use in commerce throughout the United States.
31. Defendants, without authorization or consent, have used and! or are using in COlllinerce a reproduction, counterfeit, copy or colorable imitation ofthe trademark lovecity.com®. Defendants’ actions are causing confusion or mistake, and are likely to deceive in violation of 15 U.S.C. §1l41(1).
32. By committing the acts alleged herein, Defendants have intentionally, knowingly, and willfully infiinged on Plaintiff’s trademark.
33. Because of Defendants’ infringement, Plaintiff has been irreparably hanned in its business. Moreover, Plaintiffwill continue to suffer irreparable harm unless Defendants are restrained and enjoined fiom infringing on Plaintiffs mark. Plaintiff is entitled to an injunction prohibiting Defendants from using the domain name www.1ovecity.com®. including but not limited to usage of the mark within the Google® search engine as a “keyword” for Google® “Adwords.” Plaintiff has no adequate remedy at law that will compensate for the continued and irreparable harm it will suffer if Defendants’ acts are allowed to continue.
34. As a direct and proximate result of Defendants’ conduct, Plaintiff has suffered damages in an amount to be proved at trial. In addition, Plaintiff is entitled to treble damages, punitive damages, and recovery of its costs and attorney’s fees. Defendants’ actions are willful, wanton, and this is therefore a case within the meaning of 15 U.s. C. § 117 (a).
Third Claim for Relief – False Designation of Origin
35. The allegations set forth above are incorporated herelll by reference.
36. Defendants unauthorized and deceptive use ofthe domain name lovecity.com constitutes a designation of origin that is likely to cause confusion, mistake, or deception as to the connection oflovecity.com with Defendants in violation of 15 U.S.c. §1125(a).
37. Because of Defendants’ conduct, Plaintiff has been irreparably harmed in its business. Moreover, Plaintiff will continue to suffer irreparable harm unless Defendants are restrained and enjoined :ITom continuing to make false designations of origin, false descriptions, or misrepresentations regarding the domain name www.1ovecity.com. and Plaintiff is entitled to an injunction prohibiting Defendants :ITom using that domain name in any forum or means, including but not limited to usage of the mark within the Google® search engine as a “keyword” for Google® “Adwords.” Plaintiff has no adequate remedy at law that will compensate it for the continued and irreparable harm it will suffer if Defendants’ acts are allowed to continue.
38. As a direct and proximate result of Defendants’ ongoing conduct, Plaintiff has ‘ suffered damages in an amount to be proven at trial. In addition, Plaintiff is entitled to treble damages, punitive damages, and recovery on its costs and attorney’s fees. Defendants’ actions are willful and wanton and tIns is a case within the meaning of 15 D.S.C. §l117(a).
The allegations set forth above are incorporated herein by reference.
40. The actions of Defendants constitute unfair competition under both federal and state law. Defendants’ actions cause a likelihood of confusion among the relevant buyer class.
41. Defendants have Imowmgly and deliberately attempted to utilize the goodwill of Plaintiff wInch Plaintiff has established in Plaintiffs trademark and business.
42. Defendants’ unfair competition has caused lost sales and other damages to Plaintiffin an amolli1t to be proved at trial. In addition, Plaintiff is entitled to recover punitive damages ftom Defendants.
WHEREFORE, Plaintiff JP Enterprises, Inc. prays for judgment against Defendants, as follows:
(1) that Defendants and all of Defendants’ agents, servants, employees, and attorneys and all other persons in active concert or participation with them who receive actualllotice ofllie injunctions issued in this matter be temporarily, preliminarily, and permanently enjoined from, without permission ftom Plaintiff:
( a) using Plaintiff s marles or colorable imitations thereof, or any marks confusingly similar thereto, in any manner, including but not limited to the registered domain name mark www.lovecity.com:
(b) registering, maintaining registrations for, using as an Internet website keyword or metatag, offering for sale, claiming ownership of, or in any other way using the trademarked domain name www.lovecity.com; or
(c) otherwise deceptively or unfairly competing with Plaintiff.
(2) that Defendants be ordered to disclose to the Court and to Plaintiff all other domain name registrations owned or registered by Defendants through any domain name regisiTar in order to permit the Court and Plaintiff to consider any other registration that should be subject to other relief in this matter;
(3) that Defendants be ordered to transfer to the Court for registration any other domain name titled lovecity.com, or similar, that is confusingly similar to Plaintiffs iTademark;
(4) that Plaintiffbe awarded damages in an amount to be determined at trial based on
Defendants’ dilution of Plaintiffs marks, Defendant’s infiingement of Plaintiffs marks and Defendant’s false designations of origin, descriptions ,and representations;
(5) that Plaintiffbe awarded damages and restitution in an amount to be determined at trial under 15 D.S.C. § 1117(a) for the total profits received by Defendant, and from any damages sustained by Plaintiff, as a result of Defendant’s actions;
(6) that Plaintiffbe awarded enhanced damages, up to three times the amount found as actual danlages for Defendant’s trademark infiingement and false descriptions of origin, descriptions, and representations;
(7) that Plaintiffbe awarded punitive damages for Defendant’s oppressive, fraudulent and malicious acts of unfair competition;
(8) that Defendant be ordered to make a written report within a reasonable period, to be filed with the Court, detailing the manner of Defendant’s compliance with the requested injunctive and mandatory relief above; and
(9) that Plaintiff be awarded its reasonable attorney’s fees and costs of suit pursuant to statute arising from Defendants’ willful acts; and
(10) that Plaintiff be awarded such other and further relief as the Court may deem just and proper.
Respectfully submitted,
“s/Thomas P. Howard”
GARLIN DRISCOLL HOWARD, LLC Thomas P. Howard, #031684
245 Century Circle, Suite 101 Louisville, Colorado 80027
Tel: (303) 926-4222
Fax: (303) 926-4224
ATTORNEYS FOR PLAINTIFF
Plaintiff Address:
JP Enterprises, Inc.
105 Mountain View Drive Meade, CO 80542