Date post: | 07-Apr-2015 |
Category: |
Documents |
Upload: | jason-cody |
View: | 127 times |
Download: | 3 times |
/ UNITED STATES DISTR
EASTERN DISTRICT OF
ALEXANDRIA DIV
INTERSECTIONS INC.,
a Delaware Corporation,3901 Stoneeroft Blvd., Chantilly, VA 20151
Plaintiff,
v.
ID WATCHDOG, INC.A Cayman Islands Corporation,535 16"' St., Suite 700, Denver, CO 80202
and
IDENTITY REHAB CORPORATION
A Colorado Corporation535 16"' St., Suite 700, Denver, CO 80202
Defendants.
CT COURT
VIRGINIA
SION
FILED
•: 22 p 12=09
r il..,,, •••
Civil Action No.
U\OCN \05(b
Jury Trial Demanded
COMPLAINT
Plaintiff, Intersections Inc. ("Intersections" or"Plaintiff), brings this Complaint
against Defendants, ID Watchdog, Inc. and Identity Rehab Corporation (collectively, "ID
Watchdog" or "Defendants") alleging as follows:
JURISDICTION AND VENUE
1. This is an action for trademark infringement and other related causes
arising from Defendants' use of a substantially identical trademark in connection with
identical goods and services. This practice infringes upon Plaintiffs Federal and
common law trademark rights, constitutes false advertising and unfair competition.
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 1 of 12
2. Plaintiff seeks relief under the Federal Trademark Act, 15 U.S.C. § 1051,
et seq. ("Lanham Act"), particularly 15 U.S.C. §§ 1117 and 1125, for trademark
infringement, false designation oforigin, false description or representation, and related
unfair competition. Plaintiff also asserts claims under the common law and state law.
3. This Court has subject matter jurisdiction over this action pursuant to 28
U.S.C. §§ 1331, 1332(a), 1338(a), and 1338(b). This Court also hasjurisdiction over any
state law claims pursuant to 28 U.S.C. § 1367(a).
4. On information and belief, Defendants are subject to the personal
jurisdiction ofthis Court because, among other things, Defendants have purposefully
availed themselves of the benefits of doing business in the Commonwealth of Virginiaby
advertising to and providing goods and services to the residents of the Commonwealth of
Virginia and by selling products and services to businesses and individuals located in the
Commonwealth of Virginia and by causing tortious injury to Plaintiff, who resides in this
District, through those actions.
5. Venue is proper under 28 U.S.C. §§ 1391(b) and 1391(c) in that, upon
information and belief, a substantial part of the events giving rise to the claims occurred
in this District and Defendants are residents of this District because theyare companies
subject to personal jurisdiction in this District.
THE PARTIES
6. Plaintiff, Intersections Inc., is a Delaware corporation with its principal
place of business at 3901 Stonecroft Blvd., Chantilly, VA 20151.
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 2 of 12
7. Upon information and belief, Defendant ID Watchdog, Inc. is a Cayman
Island corporation with its principal place ofbusiness at 535 16th St., Suite 700, Denver,
CO 80202.
8. Upon information and belief, Defendant ID Rehab Corporation is a
Colorado corporation and a wholly owned subsidiary of ID Watchdog, Inc., both with
their principal places of business at 535 16th St., Suite 700, Denver, CO 80202.
FACTUAL BACKGROUND
9. Intersections, based in Chantilly, Virginia, is a leading provider of identity
theft protection services and credit bureau information services and has been actively
engaged in this business since 1999. Intersections has served more than 30 million
customers.
10. Intersections provides its services both to consumers and to businesses,
including assistingconsumers with credit management, credit monitoring, identity theft
protection, identity theft insurance, credit education, fraud resolution assistance, credit
card registration services,and credit card cancellation and monitoring services. Manyof
Intersections' business clients in turn make Intersections' services available to their
employees and/or customers. Intersections also provides its services to business clients
to assist in their responses to data security breaches that may expose sensitivepersonal
information.
11. Intersections offers an identity theft protection service called ID
CHECKUP.
12. Intersections has been using the trademark ID CHECKUP in connection
with identity theft protection services since 2008, and owns federal Trademark
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 3 of 12
Application Serial No. 85/129,642 for ID CHECKUP and Design.
13. Over the years since its founding, Intersections has invested heavily in
advertising and promoting its brands and related services, including spending more than
$40 million in advertising, including $22.6 million in 2009 alone. Intersections
advertises its services via the Internet, including through its own website, through banner
ads, through adwords purchased from search engines such as Yahoo, Google, and MSN,
through affiliate marketing, through third parties who in turn market to their consumers
through online means and traditional marketing means such as direct mail, and also
through telemarketing and radio. Additionally, Intersections' services are advertised
through a variety of media available through Complainant's business clients, including in
store collateral advertising displays, newsletters, direct mail, brochures, and handouts.
14. During the past several years, Intersections has built up substantial
consumer goodwill for its many services and programs directed to credit management
and identity theft protection services.
15. As a result of Intersections' extensive advertising and promotion of its
brands and services, the public has come to associate the mark ID CHECKUP with
Intersections prior to Defendants' wrongful actions complained of herein.
16. Intersections has been vigilant in protecting its marks and has filed at least
three civil Complaints in Federal Court and has filed numerous opposition proceedings in
the United States Patent & Trademark Office to protect its valuable brands from
encroachment by confusingly similar marks adopted by third parties.
17. Defendants provide similar identity theft protection services as Plaintiff
and, like Plaintiff, market those services through various media, including the website
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 4 of 12
www.idwatchdog.com ("the ID Watchdog website").
18. Upon information and belief. Defendants launched an identity theft
protection service called ID Check in February, 2010.
19. Defendants' ID Check name and logo are substantially identical to
Plaintiffs ID Checkup mark. The services upon which ID Check and ID Checkup are
used are identical: analyzing identity risk.
idCHECKf \DchecWpDefendants' Logo Plaintiffs Logo
20. Intersections has been using the trademark ID CHECKUP in connection
with identity theft protection services since 2008 and has been using the logo depicted
above since January 2010. Defendants' subsequent use of a substantially identical name
and logo in connection with identical services is likely to cause consumer confusion,
infringes upon Plaintiffs trademarks, and constitutes unfair competition.
21. Intersections contacted Defendants with its concerns but Defendants have
refused to cease use of the infringing trademark or otherwise cease their unfair
competition. As a result. Plaintiff has been forced to initiate this lawsuit in order to seek
relief.
COUNT I
LANHAM ACT
TRADEMARK INFRINGEMENT/FALSE DESIGNATION OF ORIGIN
17 U.S.C. S 1125(a)
33. Intersections incorporates by reference and realleges each and every
allegation of the Paragraphs above.
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 5 of 12
34. Defendants' conduct constitutes direct, vicarious and contributory
trademark infringement of Intersections' trademark in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a).
35. Defendants are using the name ID Check in interstate commerce by
advertising, offering for sale and selling services bearing the name ID Check.
36. Defendants' use of the ID Check name, which is substantially identical to
Plaintiff's ID Checkup trademark, in connection with the identical services, is likely to
cause confusion or to cause mistake or to deceive as to the origin, sponsorship or
affiliation of the services advertised and sold by Defendants.
37. Intersections has no control over the quality of services offered by
Defendants and because of the confusion as to the source, Intersections' valuable
goodwill with respect to its ID Checkup mark is at the mercy of Defendants.
38. Defendants are directly, vicariously and contributorily liable for
infringement of Intersections' trademark in violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a).
39. Defendants' conduct has caused, and unless restrained by the Court, will
continue to cause irreparable injury to Intersections.
40. Defendants' conduct has damaged Intersections in an amount to be
determined at trial.
41. Upon information and belief, Defendants' aforesaid infringing conduct has
been willful, wanton, and malicious and done with an intent to deceive. Intersections is
therefore entitled to an award of its reasonable attorneys' fees and costs, and treble its
actual damages.
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 6 of 12
42. Intersections has no adequate remedy at law and is further entitled to a
preliminary and permanent injunction against Defendants.
COUNT II
LANHAM ACT - UNFAIR COMPETITION
17 U.S.C. S 1125fa)
43. Intersections incorporates by referenceand realleges each and every
allegation of the Paragraphs above.
44. Defendants' conductconstitutes direct, vicarious and contributory unfair
competition and the use of false descriptions and representations in violation of section
43(a)(1)(A) and (B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B).
45. Defendants - and /or their officers, agents, representatives, and employees
- have made false and misleading representations about their connection to Intersections'
goods and services. Specifically, Defendants have used the ID Check name and logo in
connection with identity risk analysis services such that they are likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association ofDefendants' services with Intersections' ID Checkup mark and logo and
the services associated therewith.
46. Defendants have caused their services to enter into interstate commerce.
47. Defendants' activities have deceived, or are likely to deceive, a substantial
portionof the purchasing public, and such deception is material in that it is likely to
influence the buying decisions of the purchasing public.
48. By reason of Defendants' conduct as alleged above, Intersections has
suffered, and will continue to suffer, substantial damage to its business reputation and
goodwill, as well as diversion of trade and loss of profits in an amount not yet
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 7 of 12
ascertained.
49. Defendants are directly, vicariously and contributorily liable for unfair
competition and the use of false descriptions and representations in violation of section
43(a)(1)(A) and (B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B).
50. Defendants' conduct has caused, and unless restrained by the Court, will
continue to cause irreparable injury to Intersections.
51. Defendants' conduct has damaged Intersections in an amount to be
determined at trial.
52. Upon information and belief, Defendants' aforesaid infringing conduct has
been willful, wanton, and malicious and done with an intent to deceive. Intersections is
therefore entitled to an award of its reasonable attorneys' fees and costs, and treble its
actual damages.
53. Intersections has no adequate remedy at law and is further entitled to a
preliminary and permanent injunction against Defendants.
COUNT HI
VIRGINIA COMMON LAW TRADEMARK INFRINGEMENT
54. Intersections incorporates by reference and realleges each and every
allegation of the Paragraphs above.
55. Defendants' use of the ID Check name creates the impression to a
consumer that Intersections and Defendants are somehow affiliated and is likely to
confuseconsumers into purchasing Defendants' services when they were instead seeking
Intersections' services.
56. Defendants' use of the ID Check name, that is substantially identical to the
ID Checkup mark, is likely to cause confusion or to cause mistake or to deceive as to the
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 8 of 12
origin, sponsorship or affiliation of the services advertised and sold by Defendants.
57. Defendants' conduct constitutes direct, vicarious and contributory
trademark infringement under the common law.
58. Defendants' conduct has damaged Intersections in an amount to be
determined at trial.
59. Defendants' conduct has caused, and unless restrained by the Court, will
continue to cause irreparable injury to Intersections. Intersections has no adequate
remedyat law and is entitled to a preliminaryand permanent injunctionagainst
Defendants.
PRAYER FOR RELIEF
WHEREFORE, the Plaintiff, Intersections Inc. prays:
A. That this Court will adjudge that Intersections' service mark ID
CHECKUP has been infringed as a direct and proximate result of the acts of Defendants
as set forth in this Complaint, in violation of Intersections' rights under the Lanham Act,
15 U.S.C. § 1125(a) and under the Common Law;
B. That this Court will adjudge that Defendants have competed unfairly, and
made false descriptions and representations of the origin of its services as set forth in this
Complaint, in violation of Intersections' rights under the Lanham Act, 15 U.S.C. § 1125,
et seq. and in violation of the Virginia Common Law;
C. That Defendants and all officers, directors, agents, servants, employees,
affiliates, attorneys, successors, and assigns of Defendants, and all persons in active
concert or participation therewith, be preliminarily and permanently enjoined:
i. from committing any further acts of trademark infringement or
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 9 of 12
unfair competition;
ii. from using the term ID Check, ID Checkup or any mark
incorporating the term ID Check or ID Checkup in any way that is
likely to cause consumer confusion or unfair competition with
Intersections' ID CHECKUP trademark;
iii. from using any term which is likely to be confused with
Intersections' ID CHECKUP trademark;
iv. from committing any other acts calculated to cause purchasers to
believe that Defendants' services are Intersections', and from
competing unfairly with Intersections in any way;
D. That Defendants have the burden to ensure that its officers, directors,
agents, servants, employees, affiliates, attorneys, successors, and assigns comply with
this Order;
E. That Intersections recover Defendants' profits and/or damages
Intersections suffered;
F. That, due to Defendants' willful actions and intentional disregard for
Intersections' rights, and to deter future infringement, the Court increase the damages and
profits awarded under the Lanham Act;
G. That Intersections recover pre-judgment and post-judgment interest on
each and every award;
H. That Intersections have and recover its attorneys' fees, taxable costs and
disbursements incurred in this action;
10
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 10 of 12
I. That Intersections have such other and further relief as the Court may
deem just and proper.
11
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 11 of 12
JURY DEMAND
Intersections respectfully demands a trial by jury of all matters to which it is
entitled to a trial by jury pursuant to Fed. R. Civ. P. 38.
Dated: September 22, 2010
OF COUNSEL:
#402636
INTERSECTIONS INC.
By:Roger CalaizzifVa! Bar #32651Elissa Brockbank Reese, Va. Bar #78969(Admitted in VA, not admitted in DC)Venable LLP
575 7th Street, NWWashington, DC 20004-1601Telephone (202) 344-4000Fax (202)344-8300Email: [email protected]
Jacqueline Levasseur PattDistrict of Columbia Bar #469766
Meaghan P.H. KentDistrict of Columbia Bar #977821
Venable LLP
575 7lh Street, NWWashington, DC 20004-1601Telephone (202) 344-4000Fax (202)344-8300*Admitted to the Bar in the District of
Columbia
i&
Attorneys for the Plaintiff
12
Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 12 of 12