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1 Case 1:09-cv Document 1 Filed 08/21/2009 Page 1 of 17 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION PLENTYOFFISH MEDIA, INC., v. Plaintiff, PLENTYMORE, LLP, a United Kingdom partnership, PLENTYMOREFISH PARTNERS, a United Kingdom partnership, AT NEW MEDIA, LTD, a United Kingdom corporation, follows: Defendants. Civil Action No.: VERIFIED COMPLAINT FOR INJUNCTIVE AND OTHER RELIEF Plaintiff, Plentyoffish Media, Inc. ( Plentyoffish, through counsel, complains as NATURE AND BASIS OF ACTION 1. This action is an action for trademark infringement, dilution, cybersquatting, and unfair business practices in violation of: the Lanham Act, 15 U.S.C. 15 U.S.C. 1114(a; 1125(a, 1125(c and 1125(d; the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 510/2; common law trademark infringement; and common law principles of unfair competition. 2. This action arises under the Lanham Trademark Act 15 U.S.C et Courthouse News Service seq. (the Lanham Act. Accordingly, this Court has federal question jurisdiction over the subject matter of this action pursuant to 15 U.S.C. 1221, 28 U.S.C. 1331; 28 U.S.C. 1338(a and (b, 28 U.S.C. 1338(a and (b, and 28 U.S.C. 1367(a. 3. Venue is proper in this district pursuant to 28 U.S.C. 1391(a and (d because Defendants are subject to personal jurisdiction within the judicial district or

2 Case 1:09-cv Document 1 Filed 08/21/2009 Page 2 of 17 Defendants are located in the United Kingdom and may be sued in any district in the United States. PARTIES 4. Plaintiff Plentyoffish Media, Inc. is a Canadian Corporation with a principal place of business at Suite 2625, 555 Hastings St. W., Vancouver BC V6B 1M1, Canada. 5. Plaintiff is the owner of United States Federal Trademark Registration Nos. 3,251,639 ( PLENTYOFFISH, 3,251,640 ( POF, and 3,302,508 ( PLENTY OF FISH, all of which are inherently distinctive. Plentyoffish uses these marks in commerce in conjunction with the famous online dating web site Plentyoffish.com to service a worldwide customer base. 6. Defendant AT New Media, LTD, is a United Kingdom corporation, Plentymorefish Partners, is a United Kingdom partnership and Plentymore LLP is a United Kingdom partnership. Each of these entities lists 108 The Custard Factory, Gibb Street, Birmingham, B9 4AA, Great Britain as their contact address. The corporate and/or successor/predecessor relationship between these entities is not known. Plaintiff will seek to amend its Complaint as the relationship between these entities is clarified through discovery. 7. Defendants are the current or former registrants of record of the Internet domain names plentymorefish.com, plentymoredating.com, plentymoresinglefish.com, and plentymorenaughtyfish.com and each was the registrant within the WHOIS database for one or more of the Internet domain names during the period of the time during which the events complained of in this action occurred. 2

3 Case 1:09-cv Document 1 Filed 08/21/2009 Page 3 of 17 DOMAIN NAME REGISTRAR Defendants Internet domain names are registered with 1&1 Internet Limited, whose UK headquarters is located at Aquasulis House, Bath Road, Slough, England, SL1 3SA. 1&1 Internet Limited is a signatory to the Uniform Domain Name Dispute Resolution Policy ( ICANN and is obligated to comply with an order from a court of competent jurisdiction to cancel or transfer a domain name. ICANN Dispute Resolution Policy 3(b. FACTS GIVING RISE TO THIS ACTION 8. This is an action by an online dating services company, Plentyoffish Media, Inc. ( Plentyoffish to prevent the continued infringement of its registered federal trademarks by a competing and infringing online dating service operated across four Internet domain names, plentymorefish.com, plentymoredating.com, plentymoresinglefish.com, and plentymorenaughtyfish.com. 9. Plaintiff Plentyoffish owns the trademark PLENTYOFFISH, registered in the United States on June 12, 2007 as Reg. No. 3,251,639. The PLENTYOFFISH trademark registration is for goods or services of: Providing on-line forums for the transmission of messages among computer users concerning making acquaintances, friendship, dating, long-term relationships and marriage; and computer services, namely, providing information regarding, and in the nature of, on-line dating and introduction services. 10. Plaintiff is also the registered owner of U.S. Trademark Reg. No. 3,251,640 ( POF, and Reg. No. 3,302,508 ( PLENTY OF FISH which have similar descriptions of goods and services. 3

4 Case 1:09-cv Document 1 Filed 08/21/2009 Page 4 of Plaintiff s trademark, PLENTYOFFISH is very well known and internationally famous in connection with its website and free-of-charge Internet dating services, which was first used in interstate commerce in Plaintiff s Web site is the most visited online dating site in the United States. According to Internet traffic research firm Hitwise, Plaintiff s Web site, plentyoffish.com, is responsible for 22.7% of all online dating traffic. Each month, between 36 and 40 million visitors access the plentyoffish.com Web site. 13. Plentyoffish s well-known brand and high Internet traffic translate into yearly advertising revenue of approximately $10 million a year. 14. Plentyoffish s success has garnered considerable media attention, including articles in the New York Times, The Seattle Times, The Guardian, the Chicago Tribune, Newsweek, The Wall Street Journal, The Financial Post, The National Post, the San Francisco Chronicle, Time, the Vancouver Sun and many others. Television stories have included The Today Show, CNN and others. 15. Defendant s Internet domain name, plentymorefish.com appears to have been acquired on June 10, 2002, plentymoredating.com on April 23, 2007, and plentymoresinglefish.com on July 16, 2007, and plentymorenaughtyfish.com on March 26, 2007, according to the Internet whois database. 16. Defendant s Internet domain names are confusingly similar to Plaintiff s trademarks and create a likelihood of confusion. 17. Defendant s website has itself acknowledges the likelihood of confusion. The Plentymorefish website has included the following text which references Plentyoffish and the likelihood of confusion: Plentymorefish has been operating as an online dating site since 10 th June 2002 please do not confuse us with Plentyoffish Dating. Plentymorefish Dating is in no way affiliated to, or a part of, Plentyoffish Dating...There 4

5 Case 1:09-cv Document 1 Filed 08/21/2009 Page 5 of 17 is no such thing as a free meal, especially if it involves fish! See Exhibit 5, Plentymorefish.com Front Page (the claimed 10 th June 2002 date of operation appears to be inaccurate. 18. Defendants applications for United States trademarks have also been objected to by examiners at the United States Patent and Trademark office on the basis that there exists a likelihood of confusion with Plaintiff s marks. 19. Defendants Plentymorefish Partners applied for a United States trademark for the mark PLENTYMOREFISH and have been denied registration based upon the likelihood of confusion with Plaintiff s marks which have priority. This application was abandoned based on a lack of reply to the examiner s Office Action. 20. Five individuals associated with either AT New Media, LTD, Plentymorefish Partners or Plentymore, LLP have recently applied for a second United States trademark for the mark PLENTYMOREFISH in the form of a graphical design plus words mark and have again received a non-final office action based upon the likelihood of confusion with Plaintiff s marks which have priority. 21. There is also ample evidence of actual confusion between the Plaintiff s website and the websites operated at the Defendants Internet domain names. For example, the following was received by Plaintiff: hello.i have been a member for sometime on here now before i got deleted.i dont know why i have been deleted.i am genuine.the pictures are of me.my profile was written honest and truthfully.but for some reason i cant join back on..i have joined up on your sister site plentymorefish.which i used my own bank details to join...please could you solve my problem.thank you. This user has obviously been confused into thinking that the Defendant plentymorefish.com website is affiliated with or sponsored by Plaintiff s plentyoffish.com website. 5

6 Case 1:09-cv Document 1 Filed 08/21/2009 Page 6 of In a second documented case of actual confusion, a user contacted Plentyoffish to complain of a debit to his credit card made by Plentymorefish after he had registered with Plentyoffish and (in error with Plentymorefish. The user contacted his bank s fraud department to ascertain who was making the charge to his account and was told that the name of the billing vendor was Affiliate Dating. By making the effort to contact both Plentyoffish and Plentymorefish, the user was able to determine that the source of the billing was Plentymorefish. The matter was resolved and the money refunded to the user by Plentymorefish, but this incident is indicative of the actual confusion that is occurring between these two confusingly similar Internet domain names. See Exhibit 6, User Complaint to Plentyoffish About Debit Made By Plentymorefish. 23. Defendants marks and Internet domain names also create initial interest confusion in violation of the Lanham Act. The search engine tracking firm, Compete, tracks which search terms entered into a search engine like Google or Yahoo result in an Internet user visiting a particular website by following a link in the search results. Compete accomplishes this by using a population of Internet users who have agreed to have their Internet usage tracked. 24. Data from Compete shows that during the period 11/30/2007 to 02/28/2008, many of the most popular search terms that resulted in a visit to the plentymorefish.com Web site were references to Plaintiff s registered PLENTYOFFISH Trademark. In fact, the number one and two search terms that drove traffic to plentymorefish.com were Plantiff s trademark PLENTY OF FISH and Plaintiff s domain name This confusion among Internet search engine users further demonstrates the extent to which the Defendants Internet domain names are confusingly similar to 6

7 Case 1:09-cv Document 1 Filed 08/21/2009 Page 7 of 17 Plaintiff s registered Trademarks. See Exhibit 7, Search Engine Keyword Searches Resulting in User Traffic to Plentymorefish. 26. The motive for Defendants to create a likelihood of confusion and to trade on the goodwill and reputation of Plaintiff s marks can be evidenced by the popularity of Plaintiff s marks as words or phrases entered into search engines such as Google or Yahoo when looking for online dating sites. According to statistics published by Hitwise, a firm that tracks Internet traffic and popular search engine terms, the most popular search engine terms that drive traffic to online dating Web sites are as follows: 1. match.com 2. plentyoffish 3. singlesnet.com 4. plenty of fish 5. singlesnet 6. plentyoffish.com 7. adam4adam 8. eharmony 9. yahoo personals 10. datehookup Source: Hitwise, September 2008 Three of the top ten search terms for the Online Dating market are Plaintiff s trademarks and Plaintiff s Internet Domain Name. 27. Defendants marks and Internet domain names are dilutive of Plaintiff s famous and distinctive trademarks. Because both Plaintiff and Defendants are engaged in the provision of online dating services and the marks of Plaintiff and Defendants are so similar, Defendants use of these marks is likely to impair the distinctiveness of Plaintiff s trademarks. 28. In addition, Defendants domain name plentymorenaughtyfish.com, and the website hosted at that domain name, dilutes and tarnishes Plaintiff s famous Trademarks. The website hosted at plentymorenaughtyfish.com is an adult dating site 7

8 Case 1:09-cv Document 1 Filed 08/21/2009 Page 8 of 17 containing images of nudity and references of an adult nature. This results in the unfortunate circumstance that users who confuse Plentyoffish and Plentymorefish will be further misled into thinking that Plentyoffish is offering an adult-oriented online dating service, thereby damaging their perception of Plentyoffish and diluting and tarnishing Plaintiff s famous Trademarks. See Exhibit 8, Plentymorenaughtyfish Front Page. 29. Plaintiff has suffered and will continue to suffer substantial injury and irreparable harm, including but not limited to lost advertising sales and damage to the reputation of its brand by the continued operation of the websites located at the plentymorefish.com, plentymoredating.com, plentymorenaughtyfish.com, and plentymoresinglefish.com Internet domain names. Consumers will also be confused by the continued use of these domain names by the Defendants. 30. Defendants know or should know of the valuable reputation and goodwill associated with Plentyoffish s trademarks. 31. Defendants have knowledge through communication with Plentyoffish of Plentyoffish s trademarks as such, Defendants infringement, dilution of, and cybersquatting with relation to these marks is willful. 32. Defendants infringement, dilution of, and cybersquatting with respect to Plentyoffish s trademarks has caused and will continue to cause irreperable harm to Plentyoffish. Accordingly, Plentyoffish seeks the cancellation and transfer of the infringing domain names as well as other remedies as specified in the specific counts below. 8

9 Case 1:09-cv Document 1 Filed 08/21/2009 Page 9 of 17 COUNT I Trademark Infringement of a Federally Registered Trademark Under the Lanham Act, 15 U.S.C. 1114(a 33. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 34. On information and belief, Defendants have used in commerce a mark confusing similar to Plaintiffs federally registered trademarks. 35. Because the services of Plaintiff and Defendants are so related and the marks of Plaintiff and Defendants so similar, Defendants use of these marks is likely to cause confusion, or to cause mistake, or to deceive in violation of 15 U.S.C. 1114(a. 36. Defendants infringement has been willfull, with full knowledge by Defendants of Plaintiff s trademarks and with full knowledge of Plaintiff s objections to the use of Defendants confusingly similar marks. 37. Defendants have also known or should have known of the likelhood of confusion between Plaintiff s and Defendants marks and of documented instances of actual confusion between the services of Plaintiff and Defendants. 38. Defendants infringement of Plentyoffish s trademarks has caused and will continue to cause irreperable harm to Plentyoffish. 39. Plentyoffish has no adequate remedy at law. COUNT II Trademark Infringement and Unfair Competition Under the Lanham Act, 15 U.S.C. 1125(a 40. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 41. On information and belief, Defendants have used in commerce a mark confusing similar to Plaintiffs federally registered trademarks. 9

10 Case 1:09-cv Document 1 Filed 08/21/2009 Page 10 of Because the services of Plaintiff and Defendants are so related and the marks of Plaintiff and Defendants so similar, Defendants use of these marks is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants Web sites to Plaintiff or as to the origin, sponsorship, or approval of Defendants Web sites by Plaintiff in violation of 15 U.S.C. 1125(a. 43. Defendants infringement has been willfull, with full knowledge by Defendants of Plaintiff s trademarks and with full knowledge of Plaintiff s objections to the use of Defendants confusingly similar marks. 44. Defendants have also known or should have known of the likelhood of confusion between Plaintiff s and Defendants marks and of documented instances of actual confusion between the services of Plaintiff and Defendants. 45. Defendants infringement of Plentyoffish s trademarks has caused and will continue to cause irreparable harm to Plentyoffish. 46. Plentyoffish has no adequate remedy at law. COUNT III Dilution by Blurring Under the Lanham Act 15 U.S.C. 1125(c 47. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 48. On information and belief, Defendants have used in commerce a mark confusing similar to Plaintiffs famous and distinctive trademarks. 49. Because the services of Plaintiff and Defendants are so related and the marks of Plaintiff and Defendants so similar, Defendants use of these marks is likely to impair the distinctiveness of Plaintiff s trademarks in violation of 15 U.S.C. 1125(c.. 10

11 Case 1:09-cv Document 1 Filed 08/21/2009 Page 11 of Defendants dilution by blurring of Plentyoffish s trademarks has caused and will continue to cause irreparable harm to Plentyoffish. 51. Plentyoffish has no adequate remedy at law. COUNT IV Dilution by Tarnishment Under the Lanham Act 15 U.S.C. 1125(c 52. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 53. On information and belief, Defendants have used in commerce a mark confusing similar to Plaintiffs famous and distinctive trademarks in order to identify and promote an adult dating site containing images of nudity and references of an adult nature. 54. Because the services of Plaintiff and Defendants are so related and the marks of Plaintiff and Defendants so similar, Defendants use of these marks to advertise an adult-oriented Web site is likely to harm the reputation of Plaintiff s trademarks in violation of 15 U.S.C. 1125(c Defendants dilution by tarnishment of Plentyoffish s trademarks has caused and will continue to cause irreparable harm to Plentyoffish. 56. Plentyoffish has no adequate remedy at law. COUNT V Violation of the Anti-Cybersquatting Consumer Protection Act 15 U.S.C. 1125(d 57. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 11

12 Case 1:09-cv Document 1 Filed 08/21/2009 Page 12 of On information and belief, each of the Defendants Internet domain names was registered or used with the bad faith intent to profit from Plaintiff s famous and inherently distinctive Trademarks by misleading and deceiving the public into believing that the websites operated at the Defendants Internet domain names are associated or affiliated with, or sponsored or endorsed by, the Plaintiff. 59. At the time of registration each of Defendants domain names were confusingly similar to Plaintiff s distinctive trademarks in violation of 15 U.S.C. 1125(d. 60. At the time of registration, Defendants Internet domain names plentymoredating.com, plentymoresinglefish.com and plentymorenaughtyfish.com were both confusingly similar to and dilutive of Plaintiff s famous trademarks in violation of 15 U.S.C. 1125(d. 61. By reason of the foregoing, Plaintiff hereby asserts a claim against Defendants for cancellation or transfer of the Defendants Internet domain names pursuant to 15 U.S.C. 1125(d. COUNT VI Unfair Business Practices Under the Illinois Consumer Fraud and Deceptive Trade Practices Act, 815 ILCS 505/2 62. Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 63. Defendants knowing and intentional use of confusingly similar domain names and Web site contents constitute an unfair method of competition, a deceptive trade practice, and a misrepresentation of the source, origin, affiliation, or sponsorship of 12

13 Case 1:09-cv Document 1 Filed 08/21/2009 Page 13 of 17 these Defendants services under the Illinois Consumer Fraud and Deceptive Trade Practices Act, 815 ILCS 505/ Defendants acts are fraudulent and are calculated to cause deception and confusion, and Plentyoffish has been and will continue to be damaged by Defendants acts. 65. Defendants acts have caused and will continue to cause irreparable injury to the public and Plentyoffish s goodwill and business reputation. COUNT VII Unfair Business Practices Under the Illinois Deceptive Trade Practices Act, 815 ILCS 510/ Plaintiff incorporates the allegations in the preceding paragraphs of this Complaint as if fully set forth herein. 67. Defendants activities set forth above have caused and will continue to cause a likelihood of confusion or misunderstanding as to the sponsorship, approval, affiliation, or connection of Defendants with Plentyoffish. In addition, Defendants activities have given rise and will continue to give rise to the incorrect belief that Defendants have some connection with Plentyoffish, irreparably damaging Plentyoffish s goodwill and reputation, in violation of the Illinois Deceptive Trade Practices Act, 815 ILCS 510/2. PRAYER FOR RELIEF WHEREFORE, Plaintiff prays that this Court make and enter a judgment in its favor, as follows: 1. As to Counts I, II, III, and IV: (a that Defendants be temporarily, preliminarily and permanently 13

14 Case 1:09-cv Document 1 Filed 08/21/2009 Page 14 of 17 enjoined from using any of Plentyoffish s trademarks in any manner likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plentyoffish. (b that the Court award profits, damages, costs, and attorneys fees to Plentyoffish for Defendants willful infringement of Plentyoffish s trademarks, pursuant to Sections 34, 35, and 36 of the Lanham Act, 15 U.S.C. 1051, et. seq. 2. As to Counts V: (a that Defendants be temporarily, preliminarily and permanently enjoined from using the Internet domain names plentymorefish.com, plentymoredating.com, plentymorenaughtyfish.com, and plentymoresinglefish.com; (b that the Court order the transfer of the plentymorefish.com, plentymoredating.com, plentymorenaughtyfish.com, and plentymoresinglefish.com from Defendants to Plentyoffish, pursuant to 15 U.S.C. 1125(d(1(C; and (c that the Court award profits, damages, costs, and attorneys fees to Plentyoffish for Defendants willful infringement of Plentyoffish s trademarks, pursuant to Sections 34, 35, and 36 of the Lanham Act, 15 U.S.C. 1051, et seq. 3. As to Counts VI: (a that Defendants be temporarily, preliminarily and permanently 14

15 Case 1:09-cv Document 1 Filed 08/21/2009 Page 15 of 17 enjoined from the use or employment of the deception, fraud, false pretense, misrepresentation, and concealment of the fact that they are using the Internet domain names without Plentyoffish s consent; and (b that the Court award Plentyoffish its actual economic damages and other relief as the Court deems proper, pursuant to 815 ILCS 505/10a. 4. As to Counts VII: (a that Defendants be temporarily, preliminarily and permanently enjoined from using the plentymorefish.com, plentymoredating.com, plentymorenaughtyfish.com, and plentymoresinglefish.com in any manner likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plentyoffish, pursuant to 815 ILCS 510/3; and (b that the Court award costs and attorneys fees to Plentyoffish pursuant to 815 ILCS 510/3, due to the intentional, bad faith and willful nature of Defendants act and that the Court award Plentyoffish such other and further relief as it deems just and proper. JURY DEMAND Plentyoffish demands a jury on all issues so triable. 15

16 Case 1:09-cv Document 1 Filed 08/21/2009 Page 16 of 17 Respectfully Submitted, PLENTYOFFISH MEDIA, INC., By Counsel: /s/christopher S. Hall Christopher S. Hall (IL. # Attorney for Plentyoffish Media, Inc. CHRISTOPHER HALL & ASSOCIATES 1848 N. Mohawk Street, Suite 2 Chicago, IL ( ( (fax chrishall@halliplaw.com 16

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