Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 1 of 9 PageID #:1
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`---------------------------------------------------------------X
`MEDIACOM COMMUNICATIONS
`:
`CORPORATION,
`
`:
`:
`:
`:
`
`- against -
`
`
`
`Plaintiff,
`
`Civil Action No.
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`:
`:
`EVERYWHERE WIRELESS, LLC,
`:
`Defendant.
`---------------------------------------------------------------X
`
`Plaintiff, Mediacom Communications Corporation (“Mediacom”), through its counsel,
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`Dentons US LLP, for its Complaint against Defendant, Everywhere Wireless, LLC (“EW”),
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`alleges as follows:
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`NATURE OF THE ACTION
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`1. This is a civil action for counterfeiting, service mark infringement, false advertising,
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`false designation of origin, false representation of fact, unfair competition, passing off and
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`related claims under federal and Illinois State law resulting from Defendant’s use of the
`
`designations
`
` and
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` in connection
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`with the provision of Internet access services to residences and businesses.
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`2. Mediacom’s claims arise under the United States Trademark Act (Lanham Act of
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`1946), 15 U.S.C. § 1051 et seq., and Illinois statutory and common law. As a result of
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`Defendant’s acts complained of herein, Mediacom seeks preliminary and permanent injunctive
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`relief and the recovery of actual damages, Defendant’s profits, treble damages, statutory
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`damages, costs, attorneys’ fees and other relief as more fully set forth herein.
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`---------------------------------------------------------------X
`MEDIACOM COMMUNICATIONS
`:
`CORPORATION,
`
`:
`:
`:
`:
`
`- against -
`
`
`
`Plaintiff,
`
`Civil Action No.
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`:
`:
`EVERYWHERE WIRELESS, LLC,
`:
`Defendant.
`---------------------------------------------------------------X
`
`Plaintiff, Mediacom Communications Corporation (“Mediacom”), through its counsel,
`
`Dentons US LLP, for its Complaint against Defendant, Everywhere Wireless, LLC (“EW”),
`
`alleges as follows:
`
`NATURE OF THE ACTION
`
`1. This is a civil action for counterfeiting, service mark infringement, false advertising,
`
`false designation of origin, false representation of fact, unfair competition, passing off and
`
`related claims under federal and Illinois State law resulting from Defendant’s use of the
`
`designations
`
` and
`
` in connection
`
`with the provision of Internet access services to residences and businesses.
`
`2. Mediacom’s claims arise under the United States Trademark Act (Lanham Act of
`
`1946), 15 U.S.C. § 1051 et seq., and Illinois statutory and common law. As a result of
`
`Defendant’s acts complained of herein, Mediacom seeks preliminary and permanent injunctive
`
`relief and the recovery of actual damages, Defendant’s profits, treble damages, statutory
`
`damages, costs, attorneys’ fees and other relief as more fully set forth herein.
`
`
`
`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 2 of 9 PageID #:2
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`PARTIES, JURISDICTION AND VENUE
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`3. Mediacom is a Delaware corporation having its principal place of business at One
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`Mediacom Way, Mediacom Park, New York 10918.
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`4. Upon information and belief, EW is an Illinois limited liability company with offices
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`at 420 N May St., Chicago, IL 60642.
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`5. Upon information and belief, EW is and/or has been transacting business within this
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`Judicial District directly and/or through one or more agents and affiliates.
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`6. This Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C.
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`§§ 1331, 1338, and 1367(a), and the principals of supplemental jurisdiction.
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`7. Upon information and belief, this Court has personal jurisdiction over Defendant
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`pursuant to Illinois 735 ILCS § 5/2-209.
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`8. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b) and (c).
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`MEDIACOM’S BUSINESS AND OWNERSHIP OF THE GIGABIT+ MARK
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`9. Mediacom is one of the nation’s largest cable television companies, serving more
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`than 1,500 communities across 22 states. Through its interactive broadband network, Mediacom
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`provides customers with a wide variety of advanced products and services, including, residential
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`and commercial Internet, streaming, video-on-demand, high-definition television, phone and
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`related services.
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`10. Since long prior to the acts complained of herein, Mediacom has prominently used
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`the stylized mark
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` (the mark “GIGABIT+”) in the United States in
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`connection with its promotion and offering of Internet access services. True and correct
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`printouts from Mediacom’s website showing use of the mark GIGABIT+ to advertise Internet
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`access services are attached hereto as Exhibit A.
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`2
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 3 of 9 PageID #:3
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`11. In recognition of its rights in the mark GIGABIT +, the U.S. Patent & Trademark
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`Office issued Mediacom the following service mark registration:
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`Reg. No.
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`4737828
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`
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`Mark
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`Goods/Services
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`Telecommunication services, namely, internet
`access services.
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`12. The above-referenced service mark registration is owned by Mediacom, is valid,
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`subsisting and in full force and effect, and is registered on the Principal Register. A copy of this
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`registration is attached hereto as Exhibit B. Further, the registration has become incontestable
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`pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065.
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`13. Substantial amounts of time, effort, and money have been expended over the years to
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`ensure that the public associates the mark GIGABIT+ exclusively with Mediacom when used in
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`connection with Internet access services.
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`14. The stylized mark GIGABIT+ is distinctive and serves to uniquely identify services
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`provided by Mediacom.
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`15. As a result of the time, effort and money invested in its business, and its continuous
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`and substantial use of the mark GIGABIT+, the mark GIGABIT+ has become an asset of
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`incalculable value to Mediacom.
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`DEFENDANT’S INFRINGING ACTIVITIES
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`16. Upon information and belief, since after Mediacom’s adoption of and application to
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`register the mark GIGABIT+, EW has been providing Internet access services across the
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`Chicago Metropolitan area under the designations
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` and
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`3
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`
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 4 of 9 PageID #:4
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`. True and correct printouts from EW’s website dated August 31,
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`2020 and November 16, 2020 are attached hereto as Exhibits C and D, respectively.
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`17. Mediacom informed EW of its rights in and to the mark GIGABIT+ by letter dated
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`August 31, 2020. A copy of Mediacom’s August 31, 2020 correspondence is attached hereto as
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`Exhibit E.
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`18. In response to Mediacom’s correspondence, EW modified its designation from
`
` to
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`. By letter dated October 6, 2020 and email
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`dated October 29, 2020, Mediacom informed EW that the modified designation adopted by EW
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`also infringed upon Mediacom’s federally registered mark
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` and that,
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`unless EW promptly discontinued all use of the designation, Mediacom would be forced to take
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`legal action in order to protect its registered mark and avoid confusion in the marketplace. A
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`copy of Mediacom’s October 6, 2020 and October 29, 2020 correspondence is attached hereto as
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`Exhibit F. EW failed to respond to Mediacom’s October 29 correspondence and otherwise
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`continues to use the complained of designation.
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`19. Mediacom never authorized the Defendant to engage in any of the acts complained
`
`of herein.
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`20. Upon information and belief, Defendant’s foregoing acts have been willful, wanton,
`
`and in bad faith, and with the intent to misrepresent the source of Defendant’s services and to
`
`trade off of the reputation and goodwill of Mediacom.
`
`21. Upon information and belief, Defendant had actual knowledge of Mediacom’s prior
`
`rights in the mark GIGABIT+, including ownership of the above-referenced service mark
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`4
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`
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 5 of 9 PageID #:5
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`registration, prior to Defendant’s adoption of the aforementioned GIGABIT+ and GIGABIT
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`PLUS designations.
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`22. At a minimum, Defendant had constructive notice of Mediacom’s rights in and to the
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`mark GIGABIT+ pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072, prior to adoption
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`of the complained of designations.
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`23. Defendant’s aforementioned acts are likely to deceive, mislead and confuse the
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`relevant public as to the source or sponsorship of Defendant’s services.
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`24. As a proximate result of Defendant’s acts, as alleged herein, Mediacom has suffered
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`and will continue to suffer great damage to its business, goodwill, reputation and profits, while
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`Defendant profits at Mediacom’s expense.
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`25. Mediacom has no adequate remedy at law for Defendant’s acts, as alleged herein.
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`Unless Defendant is temporarily, preliminarily and permanently enjoined by this Court,
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`Mediacom will continue to suffer irreparable harm.
`
`COUNT I
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`(Counterfeiting - 15 U.S.C. § 1114(1))
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`26. Mediacom realleges and incorporates herein by reference the allegations set forth in
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`paragraphs 1 through 25 hereof as if fully set forth herein.
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`27. EW uses a counterfeit or spurious designation that is substantially indistinguishable from
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`Mediacom’s federally registered mark GIGABIT+ in connection with the sale, offering for sale,
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`distribution and/or advertising of internet access services, which use is likely to cause confusion, or
`
`to cause mistake, or to deceive.
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`28. EW’s actions constitute counterfeiting in violation of 15 U.S.C. § 1114(1).
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`29. Upon information and belief, EW’s aforementioned acts have been willful, wanton, and
`
`in bad faith, and with the intent to misrepresent the source of EW’s services and to trade off of the
`
`5
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`
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 6 of 9 PageID #:6
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`reputation and goodwill of Mediacom. This is an exceptional case within the meaning of 15 U.S.C. §
`
`1117(a).
`
`COUNT II
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`(Infringement of Registered Mark - 15 U.S.C. § 1114(1))
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`30. Mediacom repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 29 hereof as if fully set forth herein.
`
`31. Defendant’s conduct constitutes willful infringement of Mediacom’s mark GIGABIT+ in
`
`violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
`
`COUNT III
`
`(Service Mark Infringement, False Advertising, False Designation of Origin, False
`Representation of Fact, Unfair Competition and Passing Off - 15 U.S.C. § 1125(a))
`
`32. Mediacom repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 31 hereof as if fully set forth herein.
`
`33. Defendant’s conduct constitutes willful infringement, false advertising, unfair
`
`competition, false designation of origin, false representation and passing off in violation of
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`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`COUNT IV
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`(Service Mark Infringement and Unfair Competition – Illinois Common Law)
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`34. Mediacom repeats and realleges each and every allegation set forth in paragraphs 1
`
`through 33 hereof as if fully set forth herein.
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`35. Defendant’s conduct constitutes willful infringement and unfair competition in violation
`
`of Illinois common law.
`
`6
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`
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 7 of 9 PageID #:7
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`COUNT V
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`(Deceptive Trade Practices – Illinois Statutory Law - 815 ILCS §§ 510/1 et seq.)
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`36. Mediacom repeats and realleges each and every allegation set forth in paragraphs 1
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`through 35 hereof as if fully set forth herein.
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`37. Defendant’s conduct constitutes deceptive trade practices in violation of the Illinois
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`Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.
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`COUNT VI
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`(Unfair Competition and Deceptive Trade Practices – 815 ILCS §§ 505/1 et seq.)
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`38. Mediacom repeats and realleges each and every allegation set forth in paragraphs 1
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`through 37 hereof as if fully set forth herein.
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`39. Defendant’s conduct constitutes unfair competition and deceptive trade practices in
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`violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1 et
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`seq.
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`PRAYER FOR RELIEF
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`WHEREFORE, Mediacom prays that this Court:
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`1.
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`Preliminarily and permanently enjoin and restrain Defendant, its agents, servants,
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`employees, attorneys, successors or assigns, and all persons or entities acting in concert or in
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`participation with it or any of them from (i) offering, rendering, and/or promoting in the United
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`States any Internet or other telecommunications services in connection with the designations
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` and
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` or any counterfeit, copy or other designation
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`that is confusing similar thereto; (ii) using or making any other false designation of origin or
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`false description or representation or doing any other thing calculated or likely to cause
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`confusion or mistake in the mind of the public or to deceive the public into believing that
`
`7
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 8 of 9 PageID #:8
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`Defendant’s business and services are in any way associated or affiliated with or related to
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`Mediacom; and (iii) using any name, mark or designation or doing any other thing likely to cause
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`injury to Mediacom’s business reputation;
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`2.
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`Award Mediacom statutory damages of $2,000,000 per counterfeit mark per type
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`of goods or services sold, offered for sale, or distributed, pursuant to 15 U.S.C. § 1117(c);
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`3.
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`Award Mediacom three times Defendant’s profits or three times Mediacom’s
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`damages sustained as a result of Defendant’s infringement of Mediacom’s mark and acts of
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`passing off, false designation of origin and false or misleading representation of fact, whichever
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`is greater, pursuant to 15 U.S.C. §§ 1117(a) and (b);
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`4.
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`Award Mediacom its reasonable attorneys’ fees, taxable costs and disbursements,
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`pursuant to 15 U.S.C. § 1117(a);
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`5.
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`Order Defendant, pursuant to 15 U.S.C. § 1118, to deliver up for destruction all
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`products, labels, signs, prints, packages, wrappers, receptacles, articles, advertisements and
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`promotional materials in its possession bearing the designations
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` and
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`, any variant thereof and/or any name or mark confusingly similar
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`thereto, and all plates, molds, matrices, and other means of making the same;
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`6. Direct Defendant to file with the Court and serve on counsel for Mediacom, within
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`thirty days after entry of any injunction issued by the Court in this action, a sworn written
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`statement as provided in 15 U.S.C. § 1116; and
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`7. Award Mediacom such other and further relief as the Court deems just and proper.
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`8
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`Case: 1:20-cv-06842 Document #: 1 Filed: 11/18/20 Page 9 of 9 PageID #:9
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`JURY TRIAL DEMAND
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`Plaintiff hereby demands a trial by jury pursuant to Fed. R. Civ. P. 38 on all issues so
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`triable.
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` DENTONS US LLP
`
`Dated: November 18, 2020
`
`By: /s/ Jacqueline A. Giannini
`
`Jacqueline A. Giannini
`233 S. Wacker Drive, Suite 5900
`Chicago, IL 60606
`Phone: (312) 876-2395
`jacqui.giannini@dentons.com
`
`Robert M. Wasnofski, Jr.
`(pro hac vice application to be filed)
`Kurt E. Sohn
`(pro hac vice application to be filed)
`1221 Avenue of the Americas
`New York, NY 10020
`Phone: (212) 768-6748
`robert.wasnofski@dentons.com
`kurt.sohn@dentons.com
`
`9
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`
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