Beruflich Dokumente
Kultur Dokumente
)
)
Plaintiff,
)
)
vs.
) Case No.
)
NAMECHEAP, INC., WEB HOSTING INC., d/b/a ) JURY TRIAL DEMANDED
WEB-HOSTING.COM, and JOHN DOE,
)
)
Defendants.
COMPLAINT
COMES NOW Plaintiff Gateway Media, LLC (Plaintiff or Gateway Media), and for
its Complaint against Defendants NameCheap, Inc. (NameCheap), Web Hosting Inc. d/b/a
Web-Hosting.com (Web Hosting) and John Doe (Doe), respectfully states as follows:
Nature of Action
1.
and false designation of origin and under the Federal Trademark Act, 15 U.S.C. 1051, et seq.
(the Lanham Act), and for trademark infringement and unfair competition under the laws of
the State of Missouri. Plaintiff seeks, among other things, preliminary and permanent injunctive
relief, damages, and other relief.
The Parties
2.
Gateway Media, LLC is a limited liability company organized and existing under
the laws of the State of Missouri, having a principal place of business at 190 Carondelet Plaza,
Suite 1200, Saint Louis, Missouri 63105, United States.
3.
corporation with a principal place of business at 11400 West Olympic Boulevard, Suite 200, Los
Angeles, California 90302 and is the registrar for the domain name at issue in this action.
4.
Upon information and belief, Defendant Web Hosting Inc. d/b/a Web-
individuals of unknown residence and citizenship, and having an anonymous email address of
3cc306d50e9247138f363327001200e0.protect@whoisguard.com,
which
is
provided
by
designation of origin arising under the Trademark Act of 1946, 15 U.S.C. 1051, et. seq., as
amended (the Lanham Act), and for statutory and common law trademark infringement and
unfair competition under the laws of the state of Missouri.
7.
This Court has original jurisdiction over the subject matter of this action pursuant
to 28 U.S.C. 1331 and 1338 and 15 U.S.C. 1121. This Court has supplemental jurisdiction
over the pleaded state law claims under 28 U.S.C. 1367(a). The court also has jurisdiction
under 28 U.S.C. 1332 as the amount in controversy exceeds $75,000, exclusive of interest and
costs, and the dispute is between citizens of different states.
8.
substantial part of property that is the subject of this action is situated in this judicial district, and
it is where Plaintiffs principal place of business and headquarters is located.
9.
On information and belief, this Court has personal jurisdiction over Defendant
On information and belief, this Court has personal jurisdiction over Defendant
On information and belief, this Court has personal jurisdiction over Defendant
13.
inception of the company, the CinemaBlend website has grown to become one of the leading
entertainment news aggregators, both domestically and internationally.
14.
Gateway Media uses the CINEMABLEND trademark to promote its services and
Gateway Media is the owner of all right and interest to the CINEMABLEND trademark.
15.
resources, money, time and effort promoting, marketing, advertising and building consumer
recognition and goodwill in its extremely valuable services under and in connection with its
well-known CINEMABLEND mark.
16.
Since at least as early as 2003, Gateway Media and its predecessors have
continuously owned the domain name registration for and has continuously used, operated, and
maintained a website located at www.cinemablend.com, which is used and accessed by millions
of people. See Exhibit A.
17.
Gateway Media also utilizes the slogan Entertainment You Care About (the
On December 11, 2015, Defendant John Doe and/or someone in privity with Doe
selected, adopted and registered the domain name www.slashfilm.xyz. See Exhibit B.
19.
20.
On information and belief, at approximately the same time as John Doe registered
the domain name www.slashfilm.xyz, John Doe and/or someone in privity with Doe also
subscribed to the WhoisGuard, Inc. service owned and provided by NameCheap. See id.
21.
WhoisGuard allows the domain name owner to avoid disclosing their name and
contact information to the public. Instead the registrant is listed as WhoisGuard. See id, showing
WhoisGuard as the registrant of www.slashfilm.xyz.
22.
On information and belief, prior to January 19, 2016, John Doe and/or someone in
privity with Doe developed website content to be placed on the www.slashfilm.xyz website. On
information and belief, the business purpose of www.slashfilm.xyz is to profit from illegal
internet streaming of counterfeit movies and TV shows. See Exhibit C.
23.
Gateway Media has not licensed, authorized, or otherwise consented to the use of
Defendant Doe and/or someone in privity with Doe improperly and illegally used
and are improperly using Gateway Medias intellectual property to intentionally mislead,
confuse, and deceive persons as to the source of the counterfeit videos available for download on
www.slashfilm.xyz.
26.
On information and belief, Web Hosting is the internet service provider for
www.slashfilm.xyz.
27.
Consumers, potential customers, and the relevant public are likely to be confused,
deceived, and misdirected by Does actions and, further, are likely to be confused, misled and
deceived into believing that www.slashfilm.xyz and Defendant Doe is the same as, affiliated
with, associated with, licensed by, and/or otherwise connected to or with Gateway Media.
28.
On January 19, 2016, Gateway Media, by and through its counsel, sent
correspondence demanding that the identified infringements be stopped to John Doe at the
ICANN
registered
address
of:
On January 19, 2016, Gateway Media, by and through its counsel, submitted a
complaint via Defendant NameCheaps online support system explaining the nature of the
trademark infringement and requesting that the domain be suspended or cancelled. Gateway
Media attached sufficient evidence of the infringement occurring on www.slashfilm.xyz to its
submission to NameCheap. See Exhibit F.
30.
letter to NameCheap and submitted the same to the electronic ticket system. See Exhibit G.
32.
has the electronic ticket even been assigned for internal review at NameCheap. See Exhibit H.
33.
On January 19, 2016, Gateway Media, by and through its counsel, sent
correspondence and submitted a complaint via Defendant Web Hostings online support system
explaining the nature of the trademark infringement, the violation of Web Hostings Terms of
Use and requesting that the hosted website be taken down. Gateway Media attached sufficient
evidence of the infringement occurring on www.slashfilm.xyz to its submission to Web Hosting.
See Exhibit I.
34.
letter to Web Hosting and submitted the same to the electronic ticket system. See Exhibit J.
36.
has the electronic ticket even been assigned for internal review at Web Hosting. See Exhibit K.
37.
To date, Gateway Media has not received any response from any of the
COUNT I
Unfair Competition and False Designation of Origin
Under Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)) by John Doe
38.
Gateway Media realleges and incorporates each and every allegation set forth in
paragraphs 1 through 37 of the Complaint as if fully set forth and restated herein.
39.
Mark and Slogan and confusingly similar variations thereof, on or in connection with Does
purported business and services is likely to cause confusion, or to cause mistake, or to deceive,
consumers and the relevant public into falsely believing that Doe is affiliated, connected, or
associated with Gateway Media, and/or the CINEMABLEND Mark.
40.
Mark and Slogan and confusingly similar variations thereof, on or in connection with Does
actions, purported business, and services is likely to cause confusion, or to cause mistake, or to
deceive, consumers and the relevant public into believing that Gateway Media is: (i) the source
or origin of Does business, goods and/or services; (ii) sponsoring Does goods, business, and/or
services; (iii) approving Does business, goods and/or services; and/or (iv) otherwise affiliated
with Does business, goods and/or services.
41.
Mark and Slogan and confusingly similar variations thereof, on or in connection with their
advertising, marketing, and promotion of their goods and services, constitutes a false designation
of origin that wrongly suggests to the relevant purchasing public and consumers that such goods
and services emanate from, or are licensed, endorsed, approved, or sponsored by, or are in some
other way associated or connected with Gateway Media and/or the CINEMABLEND Mark and
Slogan.
42.
Doe has thus committed and is continuing to commit acts of unfair competition
and false designation of origin in interstate commerce in violation of, inter alia, Section 43(a) of
the Lanham Act, 15 U.S.C. 1125(a).
43.
Does acts of unfair competition and false designation of origin have caused and
will continue to cause damage and irreparable harm to Gateway Media, and are likely to continue
unabated, thereby causing further damage and irreparable harm to Gateway Media and to the
valuable goodwill symbolized by and associated with its distinctive and well-known
CINEMABLEND Mark and Slogan, unless enjoined and restrained by the Court.
44.
Gateway Media has no adequate remedy at law. If Does activities are not
enjoined, Gateway Media will continue to suffer irreparable harm and injury to its
CINEMABLEND Mark and Slogan, its goodwill, and its reputation.
45.
Does unfair competition and false designation of origin is and was knowing and
46.
willful.
be ascertained at trial.
COUNT II
Contributory Unfair Competition and False Designation of Origin Under Section 43(a)
of the Lanham Act (15 U.S.C. 1125) by NameCheap
47.
Gateway Media realleges and incorporates each and every allegation set forth in
paragraphs 1 through 46 of the Complaint as if fully set forth and restated herein.
48.
Gateway Media is the owner of all right, title, and interest in and to its
CINEMABLEND Mark and Slogan, and all goodwill associated with and appurtenant thereto.
49.
Gateway Medias intellectual property, NameCheap has actual and constructive knowledge of
Does infringement occurring on the www.slashfilm.xyz domain registered and maintained by
NameCheap.
50.
Defendant Doe and/or someone working in privity with Doe with knowledge that Defendant
Does conduct constitutes trademark infringement.
51.
anonymous individual and/or persons working in privity with that individual to profit from
trademark infringement, acting in concert with them, profiting with them jointly in the process,
concealing their identity when challenged, and intentionally or recklessly continuing to supply
registration services to them with knowledge that they are engaged in trademark and service
mark counterfeiting or with willful blindness to that fact.
52.
and will continue to cause damage and irreparable harm to Gateway Media, as well as the
relevant public, and are likely to continue unabated, thereby causing further damage and
irreparable harm to Gateway Media and the relevant public, and to the valuable goodwill
symbolized by and associated with Gateway Medias distinctive and well-known
CINEMABLEND Mark and Slogan, unless enjoined and restrained by the Court.
54.
activities are not enjoined, Gateway Media will continue to suffer irreparable harm and injury to
its CINEMABLEND Mark and Slogan, its goodwill, and its reputation.
55.
Gateway Media realleges and incorporates each and every allegation set forth in
paragraphs 1 through 56 of the Complaint as if fully set forth and restated herein.
58.
Gateway Media is the owner of all right, title, and interest in and to its
CINEMABLEND Mark and Slogan, and all goodwill associated with and appurtenant thereto.
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59.
Gateway Medias intellectual property, Web Hosting has actual and constructive knowledge of
Does infringement occurring on the www.slashfilm.xyz website hosted by Web Hosting.
60.
Defendant Doe and/or someone working in privity with Doe with knowledge that Defendant
Does use of the service constitutes trademark infringement.
61.
working in privity with that individual to profit from trademark infringement, acting in concert
with them, profiting with them jointly in the process, concealing their identity, and intentionally
or recklessly continuing to supply internet service provider services to them with knowledge that
they are engaged in trademark and service mark counterfeiting or with willful blindness to that
fact.
62.
Defendant Web Hosting exercises control over the means of infringement by way
caused and will continue to cause damage and irreparable harm to Gateway Media, as well as the
relevant public, and are likely to continue unabated, thereby causing further damage and
irreparable harm to Gateway Media and the relevant public, and to the valuable goodwill
symbolized by and associated with Gateway Medias distinctive and well-known
CINEMABLEND Mark and Slogan, unless enjoined and restrained by the Court.
64.
activities are not enjoined, Gateway Media will continue to suffer irreparable harm and injury to
its CINEMABLEND Mark and Slogan, its goodwill, and its reputation.
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65.
Gateway Media realleges and incorporates each and every allegation set forth in
paragraphs 1 through 66 of the Complaint as if fully set forth and restated herein.
68.
The CINEMABLEND Mark and Slogan are distinctive within the meaning of
Chapter 417 of the Missouri Revised Statutes and have been distinctive since prior to
Defendants conduct as described herein. CINEMABLEND Mark and Slogan are valid at
common law.
69.
The CINEMABLEND Mark has been used in interstate and intrastate commerce,
The Slogan has been used in interstate and intrastate commerce, including in
under Chapter 417 of the Missouri Revised Statutes and under common law.
72.
and will continue to cause damage and irreparable harm to Gateway Media, and are likely to
continue unabated, thereby causing further damage and irreparable harm to Gateway Media and
to the valuable goodwill symbolized by and associated with its distinctive and well-known and
CINEMABLEND Mark and Slogan, unless enjoined and restrained by the Court.
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73.
Gateway Media has no adequate remedy at law. If Defendants activities are not
enjoined, Gateway Media will continue to suffer irreparable harm and injury to its
CINEMABLEND Mark and Slogan, its goodwill, and its reputation.
74.
and willful.
75.
That the Court enter a preliminary injunction during the pendency of this action,
and a permanent injunction thereafter, restraining Defendant Doe and his respective employees,
partners, officers, directors, agents, representatives, attorneys, successors, and assigns, and all
persons in active concert or participation with any of them, from using the CINEMABLEND
Mark and Slogan and/or any confusingly similar variations thereof, in any manner or form, or
any other reproduction, counterfeit, copy or colorable imitation of such mark, either alone or in
combination with any other designation, on or in connection with any activities, advertising,
marketing, promotion, business, provision of services, offer for sale, or sale of Defendant Does
services or goods, including filing applications with the U.S. Patent and Trademark Office or
other governmental entities to register such marks and/or registering domain names
incorporating such marks, from otherwise infringing the CINEMABLEND Mark and Slogan,
and from otherwise competing unfairly with Gateway Media.
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B.
That the Court enter a preliminary injunction during the pendency of this action,
and a permanent injunction thereafter, requiring that Defendant NameCheap and its respective
employees, partners, officers, directors, agents, representatives, attorneys, successors, and
assigns, and all persons in active concert or participation with any of them, deactivate the domain
name www.slashfilm.xyz or take other steps to ensure that the domain name is not and cannot be
used by Defendant Doe.
C.
That the Court enter a preliminary injunction during the pendency of this action,
and a permanent injunction thereafter, requiring that Defendant Web Hosting and its respective
employees, partners, officers, directors, agents, representatives, attorneys, successors, and
assigns, and all persons in active concert or participation with any of them, halt internet service
provider services for the website at www.slashfilm.xyz.
D.
That the Court enter a judgment finding that Defendant NameCheap, Inc., Web
Hosting Inc., and Defendant Doe have infringed and willfully infringed Plaintiffs
CINEMABLEND Mark and Slogan;
E.
That the Court enter a judgment finding that Defendant NameCheap, Inc., Web
Hosting Inc., and Defendant Doe have committed unfair competition and false designation of
origin by willfully using Plaintiffs CINEMABLEND Mark and Slogan.
F.
That the Court order Defendant NameCheap, Inc., Web Hosting Inc., and
Defendant Doe to pay to Plaintiff such damages as Plaintiff have actually sustained:
(i)
(ii)
(iii)
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G.
That the Court order Defendant NameCheap, Inc., Web Hosting Inc., and
Defendant Doe to cease further infringing the CINEMABLEND Mark and Slogan and damaging
Plaintiffs goodwill;
H.
That the Court order Defendant NameCheap, Inc., Web Hosting Inc., and
Defendant Doe to account for and pay to Plaintiff all profits realized by Defendants from their
infringement of or upon Plaintiffs CINEMABLEND Mark and Slogan, their false designations
of origin, their acts of unfair competition;
I.
That the Court find that the circumstances and actions of Defendants conduct
was willful and sufficient to merit an award of exemplary damages to Plaintiff in the amount of
three times the amount found as actual damages;
J.
That the Court order Defendants to pay Plaintiff its costs and expenses incurred in
That the Court order Defendants to pay Plaintiffs attorneys fees; and that the
Court award such other and further relief as the Court deems just and proper under the
circumstances.
Respectfully submitted,
POLSINELLI PC
By: /s/ Keith J. Grady ___________________________
KEITH J. GRADY (MO #46757)
ROBYN H. AST-GMOSER (MO #59236)
100 S. Fourth Street, Suite 1000
St. Louis, MO 63102
Telephone: (314) 889-8000
Facsimile: (314) 231-1776
kgrady@polsinelli.com
rastgmoser@polsinelli.com
ATTORNEYS FOR PLAINTIFF GATEWAY
MEDIA, LLC
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