Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA213458
`ESTTA Tracking number:
`05/23/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048710
`Defendant
`Buy.Com, Inc.
`Plaintiff
`WebMagic Ventures, LLC
`
`Proceeding.
`Applicant
`
`Other Party
`
`Motion for Suspension in View of Civil Proceeding With Consent
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
`Buy.Com, Inc. hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Buy.Com, Inc. has secured the express consent of all other parties to this proceeding for the suspension and
`resetting of dates requested herein.
`Buy.Com, Inc. has provided an e-mail address herewith for itself and for the opposing party so that any order
`on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/KCB 2928/
`Katina C. Banks
`banks.katina@dorsey.com
`docket-oppedahl@oppedahl.com
`05/23/2008
`
`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92048716 (Parent)
`Registration Nos.: 2376895, 2670844
`Cancellation No. 92048710
`
`Registration No.: 2877749
`
`Marks: BUY.COM, BUY MAGAZINE, BUY
`
`WebMagic Ventures, LLC
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`V.
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`BUY.COM Inc.
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`CONSENTED MOTION FOR SUSPENSION OF PROCEEDINGS PENDING THE
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`OUTCOME OF A FEDERAL DISTRICT COURT ACTION BETWEEN THE PARTIES
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`Pursuant to Trademark Rule 2.117 (37 C.F.R. 2.117(a)), Buy.Com, Inc., Registrant
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`herein, requests that the above-identified cancellation proceedings be suspended pending the
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`disposition of Buy.Com, Inc. V. WebMagic Ventures, LLC, United States District Court for the
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`Central District of California, Case No. SACV08-00510-JVS (MLGX) (the “California Action”).
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`See 37 C.F.R. 2.1 17(a). A copy of the Complaint is attached hereto as Exhibit A in accordance
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`with Trademark Trial and Appeal Board Manual of Procedure § 5l0.02(a). Counsel for
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`Petitioner WebMagic Ventures has indicated that Petitioner consents to this motion for
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`suspension of the cancellation proceedings pending the outcome of the California Action.
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`1.
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`WebMagic Ventures LLC is the Petitioner in the above-referenced cancellation
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`proceeding and has sought to cancel the marks of Buy.Com, Inc., the Registrant of U.S.
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`trademarks BUY.COM, B BUY.COM and BUY MAGAZINE depicted in Registration Nos.
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`2,670,844; 2,376,895 and 2,877,749 (collectively, the “BUY.COM Marks”). Petitioner alleged
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`that it has been using the marks “BUYS” and “BUYS.COM” in commerce and that it intends to
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`

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`file applications for trademarks for “BUYS” and “BUYS.COM” pending cancellation of
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`Registrant’s BUY.COM Marks.
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`2.
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`Registrant Buy.Com, Inc. filed its Complaint and Jury Demand against Petitioner
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`WebMagic Ventures LLC (Exhibit A) on May 7, 2008 in the California Action. The Complaint
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`alleges claims under the Lanham Act and California state law for trademark infringement,
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`cybersquatting and unfair competition based on Petitioner’s use of the “BUYS” and
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`“BUYS.COM” marks, which are confusingly similar and therefore infringe Registrant’s
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`BUY.COM Marks. Registrant completed service of the Complaint in the California Action on
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`May 22, 2008. Petitioner has not yet answered the allegations.
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`3.
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`When a party to a case that is pending before the Trademark Trial and Appeal
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`Board (“TTAB”) is involved in a civil action which may have a bearing on the TTAB case,
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`proceedings before the TTAB may be suspended until final determination of the civil action. See
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`37 C.F.R. 2.117; Opticians Ass ’n ofAmerica v. Independent Opticians ofAmerica, Inc., 734
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`F.Supp. 1171 (D.N.J 1990), rev’d on other grounds, 920 F.2d 187 (3d Cir. 1990). Here, the
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`California Action will indeed have a direct bearing on whether Registrant’s BUY.COM Marks
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`are subject to cancellation and whether Petitioner can register its “BUYS” and “BUYS.COM”
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`marks.
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`4.
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`Specifically, the parties in the instant action are identical to the parties in the
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`California Action. The disposition of the California Action will have a direct bearing on the
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`issues currently before the Board in that the California Action will necessarily decide likelihood
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`of confusion and priority among the marks. Moreover, as set forth in Seventh Cause of Action
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`of the Complaint attached hereto as Exhibit A, the question of cancellation is directly before the
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`

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`District Court. Accordingly, to avoid parallel proceedings with overlapping issues, Registrant
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`Buy.Com, Inc. respectfully requests that the Board suspend the above-captioned cancellation
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`proceedings pending the resolution or disposition of the California Action.
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`WHEREFORE, Registrant Buy.Com, Inc. requests that this CONSENTED MOTION
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`FOR SUSPENSION OF PROCEEDINGS PENDING THE OUTCOME OF A FEDERAL
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`DISTRICT COURT ACTION BETWEEN THE PARTIES be granted, so that the California
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`Action can be resolved, at which time the Board may resume or dismiss the above-captioned
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`cancellation proceeding.
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`Dated: May 23, 2008
`
`DORSEY & WHITNEY LLP
`
`5%‘ 03%
`
`Lisa A. Osman, Esq.
`Gregory S. Tamkin, Esq.
`Katina C. Banks, Esq.
`Elizabeth Morton, Esq.
`370 Seventeenth Street, Suite 4700
`
`Denver, CO 80202-5647
`(303) 629-3400 — telephone
`(303) 629-3450 — facsimile
`
`ATTORNEYS FOR BUY.COM, INC.
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing document is being deposited with the United States
`Postal Service with sufficient postage as first class mail, on the date set forth below in an
`envelope addressed to:
`
`Carl Oppedahl
`Oppedahl Patent Law Firm LLC
`P.O. Box 4850
`
`Frisco, CO 80443-4850
`
`Dated: May 23, 2008
`
`W/1444,], fig g1~—J
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`4836—4424—9858\l 5/23/2008 2:30 PM
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`

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`GREGORY S. TAMKIN (Bar No. 175009)
`DORSEY & WHITNEY LLP
`37017‘ Street, Suite 4700
`Denver, Colorado 80202-5647
`Telephone: (303) 629-3400
`
`CHRISTY BERTRAM (Bar No. 222296)
`DORSEY & WHITNEY LLP
`38 Technology Drive, Suite 100
`Irvine, California 92618-5310
`Telephone: (949) 932-3600
`
`Attorneys for Plaintiff,
`BUY.COM, INC.
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`BUY.COM, INC., a Delaware corporation,
`
`Case No_ SACV08-00510 JVS (MLGx)
`
`v.
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`Plaintiff,
`
`WEBMAGIC VENTURES, LLC, a
`Califomia Limited Liability Company; and
`DOES 1-100,
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`Defendants.
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`\2&-’&\_/\&\&\./\J\J\_/\_/\_/\2§/%d\)%§/g/\2%\)§/\J\&
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`COMPLAINT FOR:
`
`(1) Trademark Infringement Under
`the Lanham Act, 15 U.S.C.
`§ 1114;
`(2) False Designation of Origin and
`Unfair Competition Under the
`Lanham Act, 15 U.S.C. §
`1l25(a);
`(3) Cybersquatting Under the
`Lanham Act, 15 U.S.C.
`§ 1126(d);
`(4) Common Law Trademark
`Infringement;
`(5) Unfair Competition under
`California Bus. & Prof. Code
`
`§ 17200 et seq.;
`(6) Common Law Unfair
`Competition; and
`(7) Declaratory Judgment Under 28
`U.S.C. § 2201.
`
`JURY DEMAND
`
`EXHIBIT A
`
`COMPLAINT
`
`

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`For its complaint, Plaintiff Buy.Com, Inc. alleges as follows:
`
`NATURE OF THE CASE
`
`1.
`
`Plaintiff is a global leader in e-commerce that has sold high-quality electronic
`
`and technology products through its website, <buy.com> since at least 1997. Plaintiff has
`
`over 2 million products offered for sale on its website, and sells to over 10 million
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`customers all over the world. Plaintiffs name and website have become synonymous with
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`quality electronics at competitive prices, and Plaintiff has spent tens of millions of dollars
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`over a number of years marketing its products and services to become a leader in its
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`industry. In contrast to actually selling products, Defendant, in relevant part, registers
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`domain names for the purpose of generating revenue through “click—through” advertising.
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`Defendant is the registrant of and operates the website domain, < buys.com>. Defendant
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`generates revenue by generating click-stream advertising for companies that are direct
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`competitors with Plaintiff in the electronic and high-technology industry, such as eBay and
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`Amazon. Through the buys.com website, Defendant is causing confusion between itself
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`and Plaintiffs website, <buy.com>, so that it can trade on Plaintiffs goodwill that it has
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`spent years and millions of dollars developing. There is no doubt that consumers are
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`reaching the buys.com website when they are intending to conduct e-commerce activity on
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`the buy.com website. Upon information and belief, Plaintiff lost a significant amount of
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`visibility and ultimately sales by consumers "who mistakenly associate Plaintiff with
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`Defendant’s buys.com website. As a result, Defendant is liable to Plaintiff for the claims for
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`relief set forth in detail below.
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`2.
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`This is an action for trademark infringement, cybersquatting, unfair
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`competition under the Lanham Act, and for declaratory judgment pursuant to 28 U.S.C. §
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`2201, and pendent common law claims for unfair competition, deceptive trade practices and
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`unjust enrichment.
`
`PARTIES
`
`3.
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`Plaintiff Buy.com, Inc. is a Delaware corporation with its principal place of
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`business in Aliso Viejo, California.
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`COMPLAINT
`
`2
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`

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`4.
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`.
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`Upon information and belief, Defendant WebMagic Ventures, LLC is a
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`California limited liability company with its principal place of business located in Pasadena,
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`California.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over this case pursuant to 28 U.S.C.
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`§§ 1331 and 133 8(a) and (b). Thus Court has supplemental jurisdiction over Plaintiffs
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`common law claims pursuant to 28 U.S.C. § l367(a).
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`6.
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`This Court has personal jurisdiction over Defendant because Defendant’s
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`principal place of business is located within this District in Pasadena, California.
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`7.
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`Venue is proper in the United States District Court for the Central District of
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`California under 28 U.S.C. §§ l39l(b) and l39l(c).
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`ALLEGATIONS COMMON TO ALL CLAIMS
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`8.
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`Plaintiff is a leading e-commerce company that provides high-quality
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`technology and entertainment retail goods through its website <buy.com.>
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`9.
`Plaintiff began doing business in 1997 as BUYCOMP LLC, and consolidated
`businesses to become Buy.Com, Inc. in 1998. Since at least 1998, Plaintiff operated the
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`website buy.com to market and sell products. Within a few years of its website’s going
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`“live,” Plaintiff became the fastest growing start-up company ever, competing with industry
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`rivals such as eBay and Amazon. In 2003, Nielsen ranked <buy.com> number 3 among
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`fastest growing retail websites. Recently, <buy.com> was named one of the Top 50
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`websites of 2007 by Internet Retailer, and in 2006, <buy.com> was named one of the best
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`places to buy consumer electronics in the “21stArmual Shopper's Choice Awards Best
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`Places to Buy.”
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`10.
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`Buy.Com, Inc. owns at least three relevant trademarks related to its business,
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`which marks are registered on the Principal Register of the United States Patent and
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`Trademark Office, including:
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`A.
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`BUY.COM for electronic retail goods and services (Reg.
`
`No. 2,670,844).
`
`
`COMPLAINT
`
`

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`B.
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`B BUY.COM for electronic retail goods and services
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`(Reg. No. 2,376,895).
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`C.
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`BUY MAGAZINE for promoting the goods and services of others and
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`providing an online magazine on various subjects, including electronics
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`(Reg. No. 2,877,749)
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`1 1.
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`BUY.COM, B BUY.COM and BUY MAGAZINE (collectively, the
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`BUY.COM Marks) are federal trademark registrations and have not been abandoned,
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`canceled or revoked.
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`12.
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`Since their first use, Plaintiff has continuously used the BUY.COM marks in
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`advertising and marketing materials to promote its goods and services. Indeed, Plaintiff has
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`spent tens of millions of dollars in advertising since 1997 to promote its goods and services
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`under the BUY.COM Marks in various forms of national media, including the Internet,
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`television and high-profile sports sponsorships.
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`13.
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`As a result of‘Plaintiffs aggressive marketing over the years, the general
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`public, and Internet consumers in particular, have come to know and recognize the
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`BUY.COM Marks, its website and the associated products and goods such that the public
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`immediately knows and recognizes that that BUY.COM Marks originate and belong to
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`Buy.Com, Inc. Throughout the past 10 years, Plaintiff has used the BUY.COM Marks to
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`build and establish considerable goodwill in the online retail industry. In fact, through the
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`use of these marks, Plaintiff is universally recognized as a leader in e-commerce and as a
`provider of superior goods and services, and is visited by over 5 million US shoppers each
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`14.
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`Based on its use of the BUY.COM Marks and its registrations with the Patent
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`and Trademark Office, Plaintiff has the exclusive right to use the BUY.COM Marks in
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`connection with the sales of electronic merchandise.
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`15.
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`Defendant is the registrant of the Internet domain name <buys.com>.
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`Defendant uses the <buys.com> website to profit from the BUY.COM Marks. Specifically,
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`Defendant’s <buys.com> website contains numerous advertisements for and/or hyperlinks
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`COMPLAINT
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`4
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`to a variety of products and services that compete directly with Plaintiff, such as eBay and
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`Dell. Upon information and belief, Defendant receives a payment when Internet users click
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`on one or more links or advertisements on the <buys.com> website. Defendant receives
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`these payments from one or more advertisers, affiliate programs, and/or search engines. A
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`true and correct copy of the website home page is attached hereto as Exhibit 1 and is
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`incorporated herein by this reference.
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`16.
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`Upon information and belief, when a consumer looking for <buy.com> lands
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`on Defendant’s <buys.com> website, that consumer may click on one of the advertisements
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`or hyperlinks on the site either because the consumer finds it easier to click on the
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`advertisement or hyperlink than to continue searching for the <buy.com> site, or because
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`the consumer mistakenly believes Plaintiff has authorized or endorsed the advertisements
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`and hyperlinks. In either case, the consumer has been diverted from the <buy.com>
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`website, and to the extenta purchase was made elsewhere, Plaintiff has lost revenue from a
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`sale and lost the goodwill and market share associated with making that sale.
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`17.
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`By virtue of using and registering a domain name that is confusingly similar
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`to Plair1tiff’s BUY.COM Marks, Defendant is improperly trading on the goodwill that
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`Plaintiff has developed through years and millions of dollars of advertising. Such use of a
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`domain name that is so confusingly similar to Plaintiff’s BUY.COM Marks misleads
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`consumers into believing that Defendant’s website is connected or affiliated with Plaintiff.
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`Moreover, by providing links to other e-commerce sites that are direct competitors of
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`Plaintiffs, Defendant is intentionally diverting customers from Plaintiff, resulting in lost
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`Internet traffic and lost sales to Plaintiff.
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`18.
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`From time to time, Defendant’s <buys.com> website also includes a link to
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`“Buy.com.” However, when the customer clicks on the “Buy.com” link, the customer is not
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`directed to Plaintiffs website <buy.com>, but is rather redirected to a link page displaying
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`numerous other websites offering goods and services in direct competition with Plaintiff.
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`19.
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`As of May 6, 2008, Defendant’s website <buys.com> indeed included a link
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`to “Buy.com.” See Exhibit 1.
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`COMPLAINT
`
`

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`20.
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`By using the <buys.com> domain name that is confusingly similarly to
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`Plaintiffs trademarks Defendant was and is creating, or attempting to create, an association
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`between the <buys.com> domain name and Plaintiff, and has fiustrated or diverted Internet
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`traffic intended for Plaintiff.
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`21.
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`By virtue of registering and using the <buys.com> website, and diverting
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`Internet traffic intended for Plaintiff, Defendant has caused harm to Plaintiff.
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`22.
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`Upon information and belief, Defendant’s actions have resulted in significant
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`lost sales by consumers who falsely believe that <buys.com> is affiliated or connected to
`are Plaintiff and the BUY.COM Marks.
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`FIRST CAUSE OF ACTION
`
`(Trademark Infringement Under the Lanham Act, 15 U.S.C. § 1114)
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`23.
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`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
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`forth herein.
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`24.
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`Defendant has used and is using in commerce the <buys.com> domain name
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`and the name “Buys,” which are confusingly similar to Plaintiffs BUY.COM Marks.
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`25.
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`Defendant’s use in commerce of the <buys.com> Internet domain name, the
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`name Buys as an Internet retail space and Defendant’s use of those two items in its website,
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`as well as the inclusion of BUY.COM in its website, constitutes a reproduction, copying,
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`counterfeiting, and colorable imitation of the Plaintiffs trademarks in a manner that is
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`likely to cause confiision or mistake or that is likely to deceive customers.
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`26.
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`By using the foregoing names and phrases that are confusingly similar to the
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`BUY.COM Marks with the knowledge that Plaintiff owns and has used, and continues to
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`use, its trademarks across the United States, Defendant has intended to cause confusion,
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`cause mistake and deceive customers.
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`27.
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`Defendant is using names and phrases that are confusingly similar to the
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`BUY.COM Marks in connection with the sale, offering for sale, or advertising of services in
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`a manner that is likely to cause confusion or mistake, or to deceive consumers as to an
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`COMPLAINT
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`affiliation, connection or association with Plaintiff, or as to the origin, sponsorship, or
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`approval of Defendant’s services or commercial activities by Plaintiff.
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`28.
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`Defendant is also using names and phrases that are the same and/or
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`confusingly similar to the BUY.COM Marks in the buys.com domain name to cause
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`interest, confusion and to divert Internet users away from Plaintiffs website, <buy.com>.
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`29.
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`Defendant’s use of the names and phrases that are confusingly similar to the
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`BUY.COM Marks has created a likelihood of confusion among consumers who may falsely
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`believe that Defendant’s business or the directory website linked to the <buys.com> domain
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`name is associated with Plaintiffs website or that Plaintiff sponsors or approves of
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`Defendant’s services or commercial activities.
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`30.
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`Defendant’s acts were committed in willful disregard of Plaintiffs rights and
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`with the recognition that such conduct would confuse the public and would harm the
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`goodwill that Plaintiff has established in its BUY.COM Marks.
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`31.
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`As a direct and proximate result of Defendant’s infiingement, Plaintiff has
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`suffered and will continue to suffer, monetary loss and irreparable injury to its business,
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`reputation and goodwill. Plaintiff is entitled to injunctive relief to prevent Defendant’s
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`continued infringement of and misuse of Plaintiffs BUY.COM Marks. Unless Defendant is
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`enjoined from continuing its infringing conduct, Plaintiff will suffer harm for which there is
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`no adequate remedy at law. Plaintiff is also entitled to damages, including its lost profits
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`and Defendant’s profits from the improper acts alleged herein, in amounts to be proven at
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`COMPLAINT
`
`

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`SECOND CAUSE OF ACTION
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`(False Designation of Origin and Unfair Competition Under the Lanham Act,
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`15 U.S.C. § 1125(a))
`
`32.
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`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
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`forth herein.
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`33.
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`' Defendant’s use in commerce of the <buys.com> Internet domain name, the
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`name Buys as an Internet retail space and Defendant’s use of those two items in its website,
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`constitutes a false designation or origin and/or a false or misleading description or
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`representation of fact, which is likely to cause confiision, cause mistake, or deceive as to
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`affiliation, connection, or association with Plaintiff, or as to the origin, sponsorship, or
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`approval or Defendant’s services or commercial activities by Plaintiff.
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`34.
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`Defendant’s use in commerce of the <buys.com> Internet domain name, the
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`name Buys as an Internet retail space and Defendant’s use of those two items in its website,
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`as well as the inclusion of BUY.COM in its website, with knowledge that Plaintiff owns
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`and has used, and continues to use, its trademarks, constitutes intentional and knowing
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`unfair competition, false designation of origin, passing-off and false descriptions or
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`representations in violation of 15 U.S.C. about § l125(a).
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`35.
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`As a direct and proximate resu-lt of Defendant’s infringement, Plaintiff has
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`suffered and will continue to suffer, monetary loss and irreparable injury because it no
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`longer has complete control of its reputation and the goodwill it has developed in the
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`BUY.COM Marks.
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`THIRD CAUSE OF ACTION
`
`(Cybersquatting Under the Lanham Act, 15 U.S.C. § 1126(d))
`
`36.
`
`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
`
`25
`
`forth herein.
`
`26
`
`27
`
`28
`
`37.
`
`Defendant has registered, trafficked in, and/or used a domain name that is
`
`confusingly similar to and/or dilutive of the BUY.COM Marks, which was distinctive at the
`
`time Defendant registered, trafficked in, and/or used the buys.com domain name.
`
`COMPLAINT
`
`8
`
`

`
`38.
`
`Upon information and belief, Defendant has a bad faith intent to profit and
`
`divert business from Plaintiff through its unauthorized use and registration of the
`
`<buys.com> domain name and use of the BUYS.COM Marks.
`
`39.
`
`Defendant’s aforementioned acts constitute a violation of 15 U.S.C. §
`
`1 l26(d)(l).
`
`40.
`
`As a direct and proximate result of such conduct, Plaintiff has suffered, and
`
`will continue to suffer, monetary loss and irreparable injury to its business, reputation and
`
`goodwill. Plaintiff is entitled to injunctive relief to prevent Defendant’s continued
`
`infringement of and misuse of Plaintiff s BUY.COM Marks. Unless Defendant is enjoined
`
`from continuing its infiinging conduct, Plaintiff will suffer harm for which there is no
`
`adequate remedy at law. Plaintiff is also entitled to damages, including its lost profits and
`
`Defendant’s profits from the improper acts alleged herein, in amounts to be proven at trial.
`
`FOURTH CAUSE OF ACTION
`
`(Common Law Trademark Infringement)
`
`41.
`
`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
`
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`42.
`
`By virtue of having used and continuing to use the BUY.COM Marks,
`
`Plaintiff has acquired common law trademark rights in the BUY.COM Marks.
`
`43.
`
`Defendant’s use of names, phrases and a website that is confiisingly similar to
`
`the BUY.COM Marks infringes Plaintiffs common law trademark rights in the BUY.COM
`
`Marks and is likely to cause confusion, mistake or deception among consumers, who will
`
`believe that Defendant’s activities and/or Internet domain name originate from, or are
`
`affiliated with, or are endorsed by Plaintiff when, in fact, they are not.
`
`44.
`
`As a direct and proximate result of Defendant’s infringement of the Plaintiffs
`
`common law trademark rights under California, Plaintiff has suffered, and will continue to
`
`suffer, monetary damages and irreparable injury to its business, reputation and goodwill.
`
`Plaintiff is entitled to injunctive relief to prevent Defendant’s continued infringement of and
`
`misuse of Plaintiffs BUY.COM Marks. Unless Defendant is enjoined from continuing its
`
`COMPLAINT
`
`9
`
`

`
`infiinging conduct, Plaintiff will suffer harm for which there is no adequate remedy at law.
`
`Plaintiff is also entitled to damages, including its lost profits and Defendant’s profits from
`
`the improper acts alleged herein, in amounts to be proven at trial.
`
`FIFTH CAUSE OF ACTION
`
`(Unfair Competition under California Bus. & Prof. Code § 17200 et seq.)
`
`45.
`
`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
`
`forth herein.
`
`46.
`
`Defendant’s use in commerce of names, phrases and a website that is the same
`
`and/or confusingly similar to the BUY.COM Marks in connection with Defendant’s
`
`<buys.com> domain name constitutes unfair, deceptive untrue and/or misleading
`
`advertising which is likely to cause confusion, cause mistake, or deceive as to affiliation,
`
`connection, or association with Plaintiff, or as to the origin, sponsorship, or approval or
`
`Defendant’s services or commercial activities by Plaintiff.
`
`47.
`
`Defendant’s use in commerce of a name, phrase and website that is
`
`confusingly similar to Plaintiffs marks with knowledge that Plaintiff owns and has used,
`
`and continues to use, its trademarks, constitutes intentional conduct by Defendant to engage
`
`in unfair, deceptive, untrue and/or misleading advertising in violation of California Bus. &
`
`Prof. Code, §§ 17200 and 17500.
`
`48.
`
`As a direct and proximate result of Defendant’s violation of Califomia’s
`
`unfair competition laws, Plaintiff has suffered, and will continue to suffer, monetary
`
`damages and irreparable injury to its business, reputation and goodwill.
`
`SIXTH CAUSE OF ACTION
`
`(Common Law Unfair Competition)
`
`49.
`
`Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
`
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`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`forth herein.
`
`26
`
`27
`
`28
`
`50.
`
`Defendant’s conduct constitutes unfair competition under the common law of
`
`the State of California because the continued use by the Defendants of names, phrases and a
`
`website that is the same and/or confusingly similar to the BUY.COM Marks in connection
`
`COMPLAINT
`
`1 0
`
`

`
`with Defendant’s <buys.com> domain name is likely to cause confusion as to the origin,
`
`sponsorship, or approval of Defendant’s services or commercial activities.
`
`51.
`
`As a direct and proximate result of Defendant’s conduct, Plaintiff has
`
`suffered, and will continue to suffer, monetary damages and irreparable injury to its
`
`business, reputation and goodwill.
`
`SEVENTH CAUSE OF ACTION
`
`(Declaratory Judgment under 28 U.S.C. § 2201)
`
`52.
`
`Plaintiff incorporates the allegations in the preceding paragraphs as if fiilly set
`
`forth herein.
`
`53.
`
`Defendant has challenged the validity of the BUY.COM Marks, including
`
`filing a series of Petitions for Cancellation against Plaintiff in the United States Patent and
`
`Trademark Office to cancel Plaintiff’s BUY.COM Marks on the basis that Defendant’s use
`
`pre-dates the use of Plaintiffs BUY.COM Marks.
`
`54.
`
`The cancellation proceeding has just commenced and has not been resolved;
`
`therefore, an actual controversy exists between the parties as to the validity of Plaintiff’ s
`
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`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`BUY.COM Marks.
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`55.
`
`Pursuant to 28 U.S.C. § 2201, Plaintiff is entitled to a declaration that its
`
`BUY.COM Marks are valid and that such marks should not be cancelled.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Buy.Com, Inc. respectfully requests that this Court:
`
`1.
`
`Enter an order preliminarily and permanently enjoining WebMagic Ventures,
`
`LLC from using the BUY.COM Marks and/or any other name or mark confusingly similar
`
`23
`
`of the BUY.COM Marks.
`
`2.
`
`Order Defendant to take down its website <buys.com> and discontinue all
`
`acts which constitute unfair competition, passing off, use of false designations of origin, or
`
`false or misleading representations of fact;
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COMPLAINT
`
`1 1
`
`

`
`1
`
`3.
`
`Order Defendant to transfer to Buy.Com, Inc. the domain registration for
`
`2 <buys.com> and any other domain name which they own containing any designation
`
`confusingly similar to the BUY.COM Marks;
`
`4.
`
`Order Defendant to expressly abandon with prejudice any and all applications
`
`3 4
`
`5 to register any trademark or service mark consisting of, or containing, the BUY.COM
`
`Marks, or BUYS.COM or BUYS;
`
`5.
`
`Order Defendant, pursuant to 15 U.S.C. § l1l6(a), to file with this Court and
`
`6 7
`
`8 serve upon Buy.Com, Inc. within thirty (30) days after entry of the injunction, a report in
`
`writing under oath setting forth in detail the manner and form in which they have complied
`
`with the foregoing injunction;
`
`6.
`
`Enter an order awarding Buy.Com, Inc. damages sustained as a result of
`
`Defendant’s wrongfiil acts complained of herein;
`
`7 .
`
`Enter an order awarding Buy.Com, Inc. any profits sustained by Defendant as
`
`a result of Defendant’s wrongful acts complained of herein;
`
`8.
`
`Enter an order awarding Buy.Com, Inc. interest and reasonable attorneys’
`
`fees, costs and expenses under 15 U.S.C. § 1ll7(a) and other applicable law; and
`
`9.
`
`Enter an order granting all such equitable relief permitted under California
`
`Bus. & Prof. Code § 17200 et seq.,'
`
`10.
`
`Enter an order granting Buy.Com, Inc. such other and further relief as the
`
`Court deems just and proper.
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`COMPLAINT
`
`1 2
`
`

`
`JURY DEMAND
`
`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Buy.Com, Inc.
`
`demands a trial by jury on all claims so triable.
`
`DATED: May 6, 2008
`
`DORSEY & WHITNEY LLP
`
`
`
`Counsel for Plaintiff,
`BUY.COM, INC.
`
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