Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA856655
`11/06/2017
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`ESTTA Tracking number:
`
`Filing date:
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`Proceeding
`
`Party
`
`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91229513
`
`Plaintiff
`Right Connection, Inc.
`
`GREGORY P GOONAN
`THE AFFINITY LAW GROUP
`5755 OBERLIN DRIVE, SUITE 200
`SAN DIEGO, CA 92121
`UNITED STATES
`Email: ggoonan@affinity-law.com
`Plaintiff's Notice of Reliance
`
`Gregory P. Goonan
`
`ggoonan@affinity-law.com
`
`/gregory p. goonan/
`
`11/06/2017
`
`2017_11_06 Plt Notice Reliance.pdf(56624 bytes )
`Exhibits_Combined.pdf(4242509 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMEARK TRIAL AND APPEAL BOARD
`
`
`
`RIGHT CONNECTION, INC.,
`
`
`Opposer,
`
`v.
`
`
`ROBERT L. MCGINLEY,
`
` Applicant.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`OPPOSITION NO. 91229513
`
`
`
`Mark: PLAYCOUPLES
`
`
`
`
`
`Application Serial No.: 86877408
`Filed: January 15, 2016
`Published: June 14, 2016
`
`Plaintiff’s Testimony Period Ends: November
`4,2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`OPPOSER’S NOTICE OF RELIANCE - DOCUMENTARY EVIDENCE
`
`
`
`PLEASE TAKE NOTICE that opposer Right Connection, Inc. (“Right Connection”)
`
`offers into evidence, and will rely upon, the documentary evidence submitted as exhibits with
`
`this Notice of Reliance. Set forth below is a description of each exhibit upon which Right
`
`Connection will rely and a statement setting forth the issue(s) to which each exhibit is relevant.
`
`
`
`
`
`Exhibit No.
`
`
`1.
`
`
`
`2.
`
`
`Description
`
`Relevance
`
`
`2008 Complaint
`
`
`2008 settlement agreement
`
`1
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`
`
`
`
`

`

`
`3.
`
`
`
`4.
`
`
`
`5.
`
`
`
`6.
`
`
`
`7.
`
`
`
`8.
`
`
`
`9.
`
`
`
`10.
`
`
`
`11.
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`
`
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority; fraud on PTO
`
`
`priority; fraud on PTO
`
`
`
`priority; fraud on PTO
`
`
`priority; fraud on PTO
`
`
`
`LSO, Ltd. Certificate of
`Winding Up & Dissolution
`
`
`
`Trademark assignment
`
`
`
`2013 Complaint
`
`
`
`2013 settlement agreement
`
`
`
`2015 Complaint
`
`
`
`2016 settlement agreement
`
`
`
`Domain registration for
`www.PlaycouplesTravel.com
`
`
`Print-out of pages from
`original version of
`www.PlaycouplesTravel.com
`website
`
`
`Print-out of pages from
`current version of
`www.PlaycouplesTravel.com
`website
`
`
`
`2
`
`

`

`
`12.
`
`
`
`13.
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`
`
`14.
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`
`
`15.
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`
`16.
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`
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`17.
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`
`
`18.
`
`
`
`Sales invoices
`
`
`priority; fraud on PTO
`
`
`Articles of Incorporation of
`LSO, Ltd.
`
`
`
`Certificate of Dissolution
`
`
`
`LinkedIn post
`
`
`Nevada Secretary of State
`print-out
`
`
`TESS print-out re history and
`status of Trademark
`Application Serial No.
`75371926
`
`
`TESS print-out re history and
`status of Trademark
`Application Serial No
`75371925
`
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; history of
`dealings between parties;
`2016 settlement agreement;
`priority
`
`
`background; priority
`
`
`background; priority
`
`
`
`background; priority
`
`
`background; priority
`
`
` DATED: November 6, 2017
`
` THE AFFINITY LAW GROUP
`
`
`
`
`
`
`
` By: /s/ Gregory P. Goonan
`
`Gregory P. Goonan
`
`5755 Oberlin Drive, Suite 200
`San Diego, CA 92121
`Telephone: (858) 412-4296
`Facsimile: (619) 243-0088
`Email: ggoonan@affinity-law.com
`
`Attorneys for Opposer
`Right Connection, Inc.
`
`
`3
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and complete copy of this document has been served on
`
`Applicant by a sending a copy of the document to Allan B. Gelbard, counsel for Applicant, via
`electronic mail to the following email address on the date stated: XXXesq@aol.com
`
`
`
`
`Dated: November 6, 2017
`
`
`
`
`
`
`
`By: /s/ Gregory P. Goonan
`
`
`
`
`
`
`
`4
`
`

`

`
`
`
`
`
`
`EXHIBIT 1
`
`EXHIBIT 1
`
`

`

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`1 MURRAY & SABBAN, LLP
`Lomas Santa Fe Professional Bu1lding
`I40 Marine View Avenue, Suite 116
`Solana Beach, CA 92075
`. 3 . Telephone (858) 259-8052
`Telecopier'(858) 259-8055
`pmurray@murrayandsabban.com
`Paul s. Murray, SB# 158280
`Ariel J. Sabban, SB# 189414
`
`2
`
`4
`
`' 5
`
`‘
`
`,
`
`‘
`
`.
`
`‘
`
`'
`
`6 Attorneys for Plaintiff LSO, LTD.
`
`UNITED STATES DISTRICT COURT
`
`7 8
`
`SOUTHERN DISTRICT; OF CALIFORNIA
`9
`10 L80, LTD.‘ a California Corporation,
`Civil Action No.:
`Judge.
`D an
`6" “W8 CV 03 291,113 LSP
`
`' t'ff,
`a‘“
`
`Pl
`
`JURY TRIAL DEMANDED
`
`
`
`COMPLAINT FOR INFRINGEMENT OF
`REGISTERED TRADEMARK
`.
`INFRINGEMENT OF TRADEMARK,
`'
`DONALD D. HUGHES, RIGHT
`CONNECTION, INC a Nevada corporation, DILUTION OF TRADEMARK,
`'
`and DOES 1 through 20 inclusive,
`CYBERPIRACY, INTERCEPTION AND
`DISCLOSURE OF ELECTRONIC
`
`Defendants.
`
`COMMUNICATIONS,
`MISAPPROPRIATION OF TRADE
`
`SECRETS, UNFAIR BUSINESS -
`COMPETITION, FALSE ADVERTISING,
`CONVERSION, INTERFERENCE WITH
`PROSPECTIVE ECONOMIC
`ADVANTAGE
`
`23
`
`Here now comes PLAINTIFF LSO, LTD. (hereinafter “LSO” or “Lifestyles
`
`24 Organization”) and alleges as follows:
`
`25
`
`26
`
`JURISDICTION AND VENUE
`
`27"
`
`1.
`
`At all times relevant hereto, Plaintiff LSO (“LSO” or “Lifestyles OrganizatiOn”) is
`
`. 28
`
`and was a corporation duly organized and existing under the laws of the State of
`1 of 22
`COMPLAINT FOR DAMAGES
`
`
`
`

`

`\OOOQQUI-bWNH
`
`NNNNNNNNNh—Ih—Ip—Io—cp—Ip—np—Ip—Ih—Ip—I
`
`California since 1995 which has an office and its principal place of business in the
`
`City of Anaheim, County of Orange, State of California.
`
`At all times herein mentioned Defendant Right Connection, Inc. (hereinafier “RCI”)
`was a Domestic Corporation registered in the State of Nevada (Corporation Number
`
`C10955-2001) and doing business in the States of Nevada and California.
`
`At
`all‘
`times herein mentioned Defendant Donald D. Hughes
`(hereinafter
`“HUGHES”) has been the Director of RCI. LSO is informed and believes that
`
`HUGHES resides in the County of San Diego, the State of California and performs
`
`his duties on behalf of RCI in California.
`
`LSO and RCI (by and through HUGHES) entered into an agreement in Southern
`California which is enforceable under the laws of the state of California.
`
`LSO is informed and believes that RC1 and HUGHES'have in their possession in San
`
`Diego County (at the residence of HUGHES on Aero Drive) two computer servers
`
`paid for and belonging to LSO.
`
`LSO learned recently that RC1 'is not authorized by the California Department to
`
`Corporations to do business in California.
`
`The true names and capacities of Defendants sued herein as DOES 1 through 20,
`
`inclusive, and each of them, are unknown to LSO, which thereforersues said
`
`Defendants by such fictitious names. LSO will seek to amend this complaint to set
`
`forth the true names and capacities of said fictitiously named Defendants when the
`
`names and capacities of said fictitiously named Defendants have been fully
`
`ascertained through Discovery or otherwise with the Assistance of the Court.
`
`At all times herein mentioned each of the Defendants, including each Defendant
`
`designated herein as a DOE, was and is legally responsible in some manner for the
`events and happenings referred to herein, and is legally responsible for the injuries
`
`and damages alleged herein. Each Defendant, including each fictitiously named
`
`defendant,
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`is, and at all
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`times alleged herein was,
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`the principal, agent, master,
`
`representative, contractor, accessory, accomplice,
`servant, employer, employee,
`
`’ U 2 of 22
`
`COMPLAINT FOR DAMAGES
`
`
`
`

`

`aider, abettor, confederate and/or co-conspirator of each of the other Defendants, was
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`acting within the course and scope of such agency, employment and/or relationship,
`
`and was acting with the consent, knowledge, authorization, and/or ratification of each
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`and all other co-Defendants.
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`\OOOQO’x
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`1o
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`11
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`28
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`GENERAL ALLEGATIONS
`
`LSO incorporates and realleges by this reference each and every allegation set forth
`
`hereinabove in paragraphs 1 through 8, inclusive.
`
`10.
`
`LSO is a icompany'specializing in the marketing and sales of conventions, travel,
`
`11.
`
`12.
`
`13.
`
`publications, social
`interfacing, education and communication for and between
`couples with interests in alternative lifestyles concerning human relationships.
`Since 1974, LSO has grown from a very small organization consisting of a handful of
`
`members attending small regional events to a nationwide organization hosting large
`annual conventions of 5000 or more attendees and promoting and marketing
`
`destination vacations in Mexico, Jarnaica, Europe and the Far East.
`
`LSO has also made extensive use of the World Wide Web to both promote its
`products and services and provide forums for the lifestyles community to interact
`
`privately. LSO has registered over 390 domain names (URL’s)'since 1985.
`As part of LSO’s business, it has registered numerous Trademarksand Service Marks
`
`including but not limited to, the stylized “Lifestyles” used in various applications
`
`(USPTO Registration numbers 2010283, 2010284 first used' in commerce in or
`
`around August of 1975 and Registration numbers 2008779 first used in commerce in
`
`December of 1980), the non-stylized word Lifestyles, Lifestyles Resorts (USPTO
`
`Registration Serial No. 78793880,
`
`first used in commerce on April 9, 2002),
`
`Lifestyles Tours and Travel
`
`(USPTO Registration No. 2008780,
`
`first used in
`
`commerce in or around August of 1985), Wide World (USPTO Registration No.
`
`1020745,
`
`registered 1975, assigned to LSO), and A Lifestyles Experience
`
`(Registration No. 78295582, fist used in commerce on February 2, 2003).
`
`3 of 22
`
`COMPLAINT FOR DAMAGES
`
`
`
`

`

`14.
`
`LSO maintains nu'merous un-registered common law Trademarks
`
`including
`
`Clublifestyles (first used in commerce December 28, 2001) and Desire-Resorts (first
`
`used in commerce on or about September 4, 2003).
`
`15.
`
`By utilizing its trademarks wisely LSO has become the standard for niche products
`
`and travel for what has become known as the Lifestyles community.
`LSO has assembled a confidential mailing list of over 50,000 people who have
`
`l6.
`
`identified-themselves as clients or potential clients for LSO due to their common
`interests in the products and services provided by LSO. The confidential LSO client
`
`list enables LSO to effectively market its travel, convention and social interaction
`
`websites to a very specific identified market. The LSO mailing list is the one of its
`
`largest assets and is carefully protected and held in confidence.
`
`17.
`
`LSO has enjoyed an enhanced reputation with its'clients by taking extraordinary
`
`steps to protect their privacy by not disseminating their private information or even
`
`the fact that the clients have an interest in the products and services provided by
`LSO.
`4
`'
`
`18.
`
`In late 2001, LSO sought outside assistance with the development and hosting of
`some of its websites, including Clublifestylescom. Clublifestyles.com is a social
`interaction site where members of the Lifestyles community can meet-on line and
`
`communicate in private and where LSO advertises and promotes Lifestyles Tours
`
`and Travel destination vacations.
`
`19.
`
`After initial piloting with another outside web hoSting company, LSO entered into an
`
`\DOONONMAUJN
`
`1o
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`11
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`13
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`15
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`24
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`25‘
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`26
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`' 20.
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`27
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`1 28
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`agreement (attached hereto as Exhibit “1”) with RCI.
`
`It was expressly agreed that
`
`the agreementvwould continue for a period of five years from December 16, 2002 and
`
`that LSO owned all
`rights
`to the Clublifestyles.com. domain name,
`Clublifestylecom domain name and LSO’s membership, clients or customer list.
`
`the
`\
`
`During the course of the relationship, LSO provided all the information required and
`two of LSO’s computers for use on the websites. RCI‘redesigned and hosted the
`
`Clublifestyles.com website.
`
`'1
`
`4 of 22
`COMPLAINT FOR DAMAGES
`
`
`
`

`

`\OOONQUIADJNH'
`
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`NNNNNNvNNNv-Iv-Iv-Iv-I.........v-Iv-Iv-I
`
`21.
`
`LSO provided HUGHES and RCI its mailing/client list for site distribution and hot
`links for marketing. LSO promoted the Clublifestyles site on its other relevant sites
`
`and performed all duties required under the contract.
`
`22.
`
`Without LSO’s knowledge, Defendants HUGHES and RCI, registered two domain
`
`names in RCI’s name: Clublifestyle.com on December 29, 2002 and Desire-
`
`Resort.com on September 11, 2003.
`
`23.
`
`Without the contractually required notice, RCI breached its contract with LSO by
`
`shutting down the Clublifestyles.com site on or about March 31, 2007.
`
`LSO
`
`reestablished the site with another host as soon as practicable.
`
`24.
`
`Immediately after shutting down the Clublifestylescom site, RCI put the LS0 sites
`
`.
`
`~ back on the web under the Clublifestyle.com and Desire-Resort.com domain names
`
`with all inquiries addressed to LSO re-directed to RC1 and its companion companies.
`
`(A true and correct copy of the Clublifestyle.com home page is attached hereto as
`
`Exhibit “2”).
`
`25.
`
`The Clublifestyle.com page clearly displays the Clublifestylfi banner and a link i
`
`'
`
`.
`
`featuring the stylized Lifestyles Trademark. This link directs clients to an RCI travel
`
`affiliate and not to LSO. (A true and correct copy of the link is attached hereto as
`
`Exhibit “3”)
`
`26.
`
`LSO has also discovered that RCI has maintained for its own use the confidential
`
`. client mailing list of LSO.
`
`27.
`
`LSO has discovered that, without LSO’s knowledge or permission, RCI imbedded
`
`code in the software utilized to send emails to and from the Clublifestyles website to
`capture any new additions to the confidential LSO mailing list as they were received.
`(Exhibit “4”) The information captured is confidential
`information specifically
`
`directed to LSO with the expectation that the information concerning identity and
`
`personal activity be kept confidential.
`
`28.
`
`Subsequent to the breach of the contract by RCI, RCI used the information and client
`
`mailing list of LSO to divert social interaction website clients and destination travel
`
`5 of 22
`COMPLAINT FOR DAMAGES
`
`
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`

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`O
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`"
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`0
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`business to itself and its other affiliates.
`
`29.
`
`RCI has interfered with' the contractual relationShips that LSO had established with
`
`its clients by creating confusingly similar Websites, promotions, trade names and
`Trademarks.
`(See, Exhibit “2”, home page of RCI’s' clublifestyle.com which
`
`contains testimonials of clients, all in support of LSO’s Clublifestylg.) As a result of
`
`RCI’s actions, LSO has suffered and continues to suffer significant loss of profit
`
`from web trade and travel commissions.
`
`30.
`
`LSO has received complaints from its clients concerning the apparent
`
`loss of
`
`confidentiality of their identity, personal preferences and choices in association by
`
`the unauthorized dissemination of their e-mail addresses evidenced by receipt of e-
`mails from RCI to designated e-mail addresses provided only to LSO. As a result of
`RCI’s violation of the confidentialrelationship between LSO and its clients through
`the unauthorized use of LSO’s clients’ information by RCI, LSO’s reputation is
`
`being damaged.
`
`31.
`
`On or about 'July of 2004, LSO commissioned the creation of programming to
`enhance sales of destination travel through the creation of an assoCiate travel sales
`
`program known as “TripCash” and paid RCI $45,000.
`(See, Exhibit “5”, selective
`pages of Issue 10 of Lifestyles’ magazine, pg.6) RCI was in possession of the
`programming in the LSO servers and thereafter placed the programming on their own
`
`server under the name of “Exotic Travel Mart”. (See, Exhibit “6”) RC1 has
`
`undertaken a program to usurp the LS0 Tripcash program.
`
`32.
`
`LSO is currently engaged in negotiations with Aura Cozumel hotel in Mexico to be
`
`the primary agent for anew adult-only resort in Cozumel. RCI, by and through
`
`HUGHES, has contacted Aura claiming to have the entire LSO client list and thus
`able to provide better representation and greater bookings. HUGHES has'made false
`representations inflating RCI’s booking volume based upon. LSO’s booking volume
`
`for a similar themed resort, Desire Resort & Spa. (See Exhibit “7”) RC1 has engaged
`
`in a course of conduct to interfere with LSO’s attempt to recover some of the lost
`
`_ 6 of 22
`COMPLAINT FOR DAMAGES
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`\OW\lO\
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`1 26
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`27
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`28
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`

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`l ‘
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`revenues resulting from the unlawful diversion of LSO’s clients and destination
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`2
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`33.
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`travel bookings.
`
`L80 is presently in Chapter 11 Bankruptcy and undergoing reorganization which is
`reliant on LSO conducting business with its established clientele. If RC1 is allowed
`
`to continue to mislead, confuse and divert LSO’s clients and vendors for its own
`
`profit, LSO will suffer such a significant loss in revenues that will irreparably harm
`
`L80 and will probably require LSO to convert its bankruptcy to Chapter 7. The
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`damageto LSO’s business makes monetary damages insufficient without injunctive
`
`relief.
`
`34.
`
`L80 has demanded that RCI return LSO’s two computers and the TripCash program,
`
`-
`
`cease and desist from the use of any LSO client lists, client information, Trademarks
`
`or service marks and deliver all confusingly similar domain names to LSO. (See,
`
`Exhibit “8”, letter from LSO to HUGHES dated'April 20, 2007) RCI has refused and
`
`I
`
`is still in possession of LSO’s property.
`
`I
`
`-I.
`
`FIRST CAUSE OF ACTION
`
`FOR INFRINGEMENT OF REGISTERED TRADEMARK
`(11U.S.C.§1114)
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`inclusive)
`
`.
`
`' 20
`
`35.
`
`L80 incorporates and realleges by this reference each and every allegation set forth
`
`lhereinabove in paragraphs 1 through 34, inclusive.
`
`36.
`
`Defendants HUGHES, RC1, and DOES 1 through 20, without the consent of'LSO
`
`Iusedand continue to use in commerce reproductions, copies, or colorable imitations
`
`of LSO’s marks LIFESTYLES in connection with the sale, offering for sale,
`' distribution, or advertising of goods or services in connection with the marks such
`that the uses are likely to cause confusion, or to cause mistake, or to deceive.
`
`21
`
`22
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`23
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`24
`25
`26
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`, 27
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`28
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`
`
`7 of 22
`COMPLAINT FOR DAMAGES
`
`

`

`1
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`2
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`5
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`l4
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`37.
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`LSO’s registered the following Trademarks: the stylized “Lifestyles” was first used 4
`
`in commerce in 1975) in various applications and the non-stylized word Lifestyles,
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`Lifestyles Resorts, Lifestyles Tours and Travel, Club'Wide World.
`
`38.
`I
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`~
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`39.
`
`Defendants HUGHES, RC1, and DOES 1 through 20, without the consent of L80,
`reproduced, copied, or colorably imitated registered marks of LSO and applied such
`reproductions, copies, or colorable imitations to labels,
`signs, prints, and/or
`advertisements intended to be used in commerce upon or in connection with the sale,
`offering for sale, distribution, or advertising of goods or services on or in connection
`with which such use is likely to cause confusion, or to cause mistake, or to deceive.
`Defendants HUGHES, RC1, and DOES 1
`through 20, committed and continue to
`commit actions in violation of 11 U.S.C. (United States Code) section 1114 with
`knowledge that such imitation is intended'to be used to cause confusion, or to cause
`
`mistake, or to deceive LSO’s clients and other members of the public.
`
`40.'
`
`As a result of Defendants’ actions, LSO has been damaged such that LSO seeks
`
`monetary damages and injunCtive relief.
`
`-
`
`II.
`
`SECOND CAUSE OF ACTION
`
`I
`
`FOR INFRINGEMENT OF TRADEMARK
`(15 U.S.C. § 1125(a))
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES l-20
`4
`inclusive)
`
`41.
`
`42.
`
`43.
`
`_
`- LSO incorporates and realleges by this reference each and every allegation set forth
`hereinabove in paragraphs 1 through 40, inclusive.
`
`Defendants HUGHES, RC1, and DOES 1 through 20 have and continue to use in
`.
`'
`commerce words, terms, or names and/or falsely designate the origin of, false or
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`misleading representations of fact which are likely to confuse, cause mistake, and
`'
`deceive the public and LSO’s clients as to the affiliation, connection, or association
`
`of Defendants with LSO.
`
`'
`Defendants HUGHES, RC1, and DOES 1 through 20 have used words, terms,
`,
`'
`'
`and/names in commerce such as to cause mistake, confusion or deceive the public or
`‘
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`‘
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`8 of 22
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`,
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`LSO’s clients as to the origin, sponsorship or approval of Defendants’ goods,
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`services, or commercial activities.
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`44.
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`The conduct of Defendants HUGHES, RC1, and DOES 1 through 20 in violation of
`
`15 U.S.C. §1125(a) have caused and is likely to cause damage to LSO.
`
`I 45.
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`Thelun-registered common law Trademarks of LSO used in violation of 15 U.S.C.S
`§1125(a) are Clublifestyles (first used in commerce December 28, 2001), and Desire-
`
`.
`
`Resorts (firstused in commerce September 4, 2003); These trademarks are not
`functional as will be proven at trial.
`.
`i
`As a result of Defendants’ conduct, LSO has been damaged and seeks monetary
`
`46.
`
`damages, injunctive relief pursuant to Federal Rules of Civil Procedure section 64.
`III.
`(
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`-
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`THIRD CAUSE OF ACTION
`
`.
`
`DILUTION OF TRADEMARK (15 U.S.C.S §1125 (c))
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`inclusive)
`’
`'
`
`47.
`
`LSO incorporates and realleges by, this reference each and every allegation set forth
`
`48.
`
`49.
`
`50.
`
`51.
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`hereinabove in paragraphs 1 through 46, inclusive.
`LSO’s trademarks, especially the Lifestyles trademark is widely recognizable by the
`
`general consuming public as a designation that the source of the goods or services
`sold in association with those trademarks is LSO or Lifestyles Organization.
`LSO’s trademarks are and have been utilized and publicized in advertisements,
`
`convention materials, and on the World Wide Web in selling goods or services fOr
`thirty-five (35) years throughout the United States and internationally.
`LSO’s confidential client mailing list contains more than fifty-thousand persons.
`
`LSO’s trademarks have either been registered with the United States Patent and
`
`Trademark-Office or are protectible as common law trademarks.
`
`52.
`
`LSO seeks injunctive relief for the dilution of its trademarks in violation of 15 U.S.C.
`
`§ 1125(c) for blurring, dilution, and/or tarnishment of LSO’s trademarks as a result
`
`of conduct by Defendants RCI, HUGHES, and DOES 1 through 20.
`
`9 of 22
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`53.
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`LSO’s LIFESTYLE trademarks have been diluted by Defendants’ use of those exact
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`or nearly exact trademarks on RCI’s C1ublifestyle.com site.
`LSO’s Clublifestylg trademark has been diluted by blurring caused by RCI’s
`
`54.
`
`registration of the Clublife'stylgURL and the creation of the Clublifestyle.com site
`
`which contains: (1) the photo link of the LS0 Las Vegas Convention of July 2002
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`with the registered stylized “LIFESTYLES” trademark, (2) by the use of the
`CLUBLIFESTYL_E_S banner from LSO’s Clublifestyles.com site. and; (3) LSO’s
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`famous Lifestyles trade name has been diluted by the inclusion of testimonials on
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`RCI’s C1ublifesty1e.com home page because the testimonials all refer to
`
`55.
`
`Cl'ublifestyles and Lifestyles. (underline added)
`From RC1 and HUGHES’ action, it is apparent that Defendants intended to create a
`business or association with LSO’s famous marks.
`
`56.
`
`The contract between RC1 and LSO specifically stated that LSO owned the
`
`C1ub1ifesty1e.com and C1ub1ifestyles.com domain names but RCI has registered the
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`C1ub1ifesty1e.com domain name in its own name.
`
`57.
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`The unregistered trademarks diluted by defendants are not functional are and are
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`famous pursuant to 15 U.S.C. §1525'(c).
`
`58.
`
`LSO seeks actual damages, a preliminary injunction, temporary restraining order, and
`
`any equitable or other relief statutorily permissible.
`
`5
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`IV.
`
`FOURTH CAUSE OF ACTION
`
`'
`
`CYBERPIRACY
`(15U.S.C.S 1125 (d)) ‘
`
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`
`inclusive) -
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`H 2
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`3
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`59.
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`LSO. incorporates and realleges by this reference each and every allegation set forth
`
`26
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`27
`i 23
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`hereinabove in paragraphs 1 through 58, inclusive.
`
`60.
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`1
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`Defendants RCI, HUGHES, and DOES 1 through 10 inclusive, had and have bad
`faith intent to profit from LSO’s trademarks by registering, trafficking in, and/or
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`10 of 22
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`using domain names that are identical or confusingly similar to LSO’s marks
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`LIFESTYLES, Clublifestylfi, Clublifestyle, and Desire-Resorts domain names.
`
`61.
`
`Defendant RCI’s registration of the Clublifestyle.com and Desire-Resort.com domain
`names are identical or confusingly similar to LSO’s Clublifestyles.com and Desire-
`
`Resorts.com.
`
`62.
`
`The Terms of Service on RCI’s Party Couples.com website contains references to
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`ownership of the site belonging Lifestyles Organization (another name for LSO) and
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`Clublifestyle.com, both of which are LSO marks.
`
`(See, Exhibit “9”, paragraphs 6.1
`
`and 6.2)
`Defendants have utilized LSO’s registered Trademarks, such as “LIFESTYLES”,
`
`63.
`
`which LSO is commonly identified by and which belongs to LSO in RCI’s websites
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`(which consist of domain names that are confusingly similar to LSO’s domain
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`names).
`
`64.
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`Defendants RCI, HUGHES, and DOES 1 through 20 intend to divert consumers from
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`LSO’ s marks LIFESTYLES, Clublifestyle_s, Clublifestyle and Desire-Resorts from
`
`-
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`'LSO’s websites for commercial gain by creating a likelihood and even a probability
`
`of confusion as to the source, sponsorship, affiliation, or endorsement of Defendants’
`
`websites.
`
`.
`
`LSO seeks forfeiture or cancellation of the domain names registered, engaged in
`trafficking, or used by RCI, HUGHES, and DOES 1 through 20 which are similar or
`
`confiJsingly similar to LSO’s marks.
`
`LSO seeks a Court Order suspending or modifying the domain names
`Clublifestyle.com, Desire-Resort.com, and ExoticTravelMartcom during the
`pendency of this action.
`.
`
`67.
`
`LSO seeks damages actual and equitable, attorneys’ fees, punitive damages, a
`
`preliminary and permanent injunction and any other relief statutorily or otherwise
`
`available for Defendants’ 'conduCt.
`
`A
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`\ooeqchu:
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`19.
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`65.
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`20
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`‘22
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`66.
`
`11 of22
`COMPLAINT FOR DAMAGES
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`V.
`
`FIFTH CAUSE OF ACTION
`
`I INTERCEPTION AND DISCLOSURE OF ELECTRONIC COMMUNICATIONS
`(18 U.S.C. §2511(d), 18 U.S.C. §2520)
`‘
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`inclusive)
`.
`
`v.
`
`68.
`
`LSO incorporates and realleges by this reference each and every allegation set forth
`
`hereinabove in paragraphs 1 through 67, inclusive.
`
`69.
`
`Defendants RCI, HUGHES, and DOES 1
`
`,
`through 20 inclusive intentionally
`
`intercepted, endeavors to intercept, or procured other persons to intercept or endeavor
`‘
`to intercept, wire, oral, or electronic communications exchanged between LSO and
`'
`'
`its clients through Clublifestyles.com by imbedding a cookie which intercepted or
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`blindly copied electronic/email communications to Defendants without LSO’s
`
`knowledge or permission.
`
`‘
`,
`l
`Defendants RCI, HUGHES and DOES 1 through 20 inclusive intentionally used, or
`‘
`'
`a
`.
`endeavors to use, the contents of wire, oral, or electronic communications, knowing
`‘
`or having reason to know that the information regarding LSO’s clients and the
`
`services those clients sought from LSO was obtained through the interception of a
`\
`.
`wire, oral, or electronic communication in violation of this subsection.
`-
`,
`LSO seeks a preliminary injunction prohibiting RCI, HUGHES and DOES 1 through
`-
`r
`.
`20 from continuing their conduct in violation of 18 U.S.C. §2520.
`.
`LSO seeks other equitable or declaratory relief as may be appropriate as against
`
`Defendants RCI, HUGHES and DOES 1 through 20.
`
`LSO seeks damages under subsection (c) and punitive damages as' permissible
`i
`,
`pursuant to 18 U.S.C. §2520 subsection '(c).
`
`70.
`
`71.
`
`72.
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`73.
`
`//
`
`//
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`//
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`'12 0f 22
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`COMPLAINT FOR DAMAGES
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`

`

`1
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`V
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`_
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`.
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`VI.
`
`SIXTH CAUSE OF ACTION
`
`'
`
`MISAPPROPRIATION OF TRADE SECRETS
`(California Civil Code § 3426.1et seq.)
`'
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`
`inclusive)
`. LSO incorporates and realleges by this reference each and every allegation set forth
`
`hereinabove in paragraphs 1 through 73, inclusive.
`Defendants RCI, HUGHES, and DOES 1 through 20 inclusive, have acquired
`through improper means the trade secret membership database (hereinafier “customer
`
`.
`
`I
`
`1
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`74.
`
`75.
`
`I
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`list”) of LSO, which consists of a compilation of confidential client contact
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`information which derives independent economic value, actual or potential, from not
`being generally known to the public or to other persons who can obtain economic
`value from its disclosure or use. LSO has taken reasonable measures to maintain the
`
`secrecy of its clients’ identities for many years and this secrecy has added to LSO’s
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`good will with its clients.
`
`76.
`
`Defendants RCI, HUGHES, and DOES 1 through 20 inclusive, knew or had reason
`
`, to know that the email and other contact information contained on the customer list
`
`of LSD was acquired by improper means as Defendant(s) imbedded a hidden cookie
`
`to track the emails exchanged by LSO and its clients on Clublifestyles.com.
`
`77.
`
`Defendants RCI, HUGHES, and DOES 1 through 20 inclusive, knew or had reason
`
`to know that LSO’s customer list was its trade secret and was to bekept confidential
`
`at the time of acquisition as Defendants RC1 and HUGHES entered into a written
`agreement with LSO in which Defendants acknowledged that LSO retained
`
`ownership of its customers.
`
`'
`
`78.
`
`Defendants RCI, HUGHES, and DOES 1 through 20 inclusive, used and/or disclosed
`the trade secret of LSO by contacting or advertising to LSO’s clients and others via
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`email or on the World Wide Web in order to (1) acquire the business of LSO’s
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`13 of 22
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`._n
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`2
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`clients and (2) to advance or obtain business relationships with hotels, resorts, or
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`others.
`
`. 3
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`79.
`
`As a result of Defendants’ misappropriation of LSO’s trade secret customer list, LSO
`
`has lost business and will seek actual or unjust enrichment damages, punitive
`
`damages pursuant to California Civil Code § 3294 and royalties in an Mount to be
`
`determined at trial.
`
`'
`
`80.
`
`LSO seeks a preliminary and permanent injunction to bar Defendants RCI,
`
`HUGHES, and DOES 1 through 20 from continuing the misappropriation of LSO’S‘
`trade secret customer list.
`i
`
`VII.
`_
`SEVENTH CAUSE OF ACTION
`
`UNFAIR BUSINESS COMPETITION
`(Ca Business and Professions Code § 17200 et seq.)
`
`(Against Defendants RIGHT CONNECTION, INC., DON HUGHES, and DOES 1-20
`
`inclusive)
`
`i 81.
`
`LSO incorporates and realleges by this reference each and every allegation set forth.
`
`hereinabove in paragraphs 1 through 80, inclusive.
`
`82.
`
`Defendants RCI, HUGHES, and DOES 1
`through 20 inclusive unfairly competed
`with LSO by engaging in unlawful,;unfair and/or fraudulent acts and by utilizing
`
`- unfair, deceptive, untrue or misleading advertising.
`
`83
`
`Defendants RCI, HUGHES, and DOES 1
`
`through 20 inclusive engaged in unfair
`
`business competition by misappropriating LSO’s trade secret customer list and
`
`infringing and diluting LSO’s trademarks.
`
`84
`
`Defendants RCI, HUGHES, and DOES 1 through 20 inclusive have and continue to
`
`engage in unfair competition against LSO in violation of California Civil Code
`
`§17200 et seq. by engaging in fraudulent activity on the World Wide Web as a result
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`'of which the public is likely to be deceived into believing that RCI’s businesses or
`websites are affiliated with or belong to LSO-Lifestyles Organization. LSO’s
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`4
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`6
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`7
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`8
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`12
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`13
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