Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA365397
`ESTTA Tracking number:
`08/27/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052834
`Defendant
`Insubuy, Inc.
`INSUBUY, INC.
`4700 DEXTER DRIVE, SUITE 100
`PLANO, TX 75093
`UNITED STATES
`nkhatri@buyamericaninsurance.com, narendra@insubuy.com
`Motion to Suspend for Civil Action
`Fritz L. Schweitzer
`fschweitzer3@ssjr.com, agreenspon@ssjr.com, lit@ssjr.com
`/Fritz L. Schweitzer III/
`08/27/2010
`Binder1.pdf ( 64 pages )(3534353 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF TRADEMARK REGISTRATION No. 3,339,155‘
`TRADEMARK:
`INSUBUY
`
`REGISTERED: November 11, 2007
`
`Community Insurance Agency, Inc.
`
`Petitioner,
`
`v
`
`lnsubuy, Inc.
`
`Registrant.
`
`Cancellation No.
`92052834
`
`MOTION TO SUSPEND PROCEEDINGS PENDING
`
`FINAL RESOLUTION OF PENDING FEDERAL COURT LITIGATION
`
`Registrant,
`
`lnsubuy,
`
`lnc.,
`
`("Registrant")
`
`respectfully submits this motion to
`
`suspend these proceedings pending resolution of Civil Action 1:10-cv-03925 now
`
`pending in the United States District Court for the Northern District of Illinois (the “Civil
`
`Action”).
`
`The motion should be granted because the Civil Action is potentially
`
`dispositive of the registrability issues before the Board.
`
`FACTS
`
`This cancellation action commenced on July 29, 1010, when Petitioner,
`
`Community Insurance Agency,
`
`Inc.
`
`(“Petitioner”) filed its Petition for Cancellation of
`
`Registration No. 3,339,155. At the time Petitioner filed the cancellation petition,
`
`it
`
`already had been served with the complaint in the Civil Action charging Petitioner of
`
`

`

`infringement of Registrant’s trademarks,
`
`including the INSUBUY mark which is the
`
`subject of Registration No. 3,339,155. See Exhibit A, a copy of the filed complaint
`
`without exhibits. On August 19, 2010, Petitioner filed its Answer in the Civil Action,
`
`asserting as a defense that Registrant’s trademarks,
`
`including Registration No.
`
`3,339,155, are generic, descriptive and/or not distinctive. See Exhibit B, a copy of the
`filed answer without exhibits, at 18.
`Petitioner also filed a counterclaim against
`Registrant alleging that Registrant fraudulently obtained Registration No. 3,339,155.
`Id.
`
`at 35. Both of these grounds encompass the grounds found in the Petition to Cancel.
`
`Finally, Petitioner
`
`requested that
`
`the district court declare that Registration No.
`
`3,339,155 shall be cancelled and removed from the Principal Register.
`
`Id at 39.
`
`At this time, excepting the underlying Petition to Cancel, no papers have been
`
`filed at the Trademark Trial and Appeal Board.
`
`This Board may suspend proceedings when it becomes aware of other relevant
`
`ARGUMENT
`
`pending litigation. Trademark Rule 2.117 provides:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal
`Board that a party or parties to a pending case are engaged in a civil
`action .
`.
`. which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action. .
`.
`1
`
`The Counterclaim and Defenses as filed by Petitioner seeks to resolve issues of
`
`the validity of US Reg. No. 3,339,155 inasmuch as Petitioner claims that US Reg. No.
`
`3,339,155 was either fraudulently obtained and/or is
`
`invalid as descriptive of the
`
`services listed therein. Should Petitioner be successful in the Counterclaim filed in the
`
`Civil Action, the District Court has been asked to cancel the US Reg. No. 3,339,155.
`
`

`

`Thus, the Civil Action not only bears on the present proceeding, but has the potential to
`
`dispose altogether of any need to continue this cancellation proceeding. Suspending
`
`this proceeding will conserve the resources of this Board and the parties by avoiding
`
`potentially unnecessary administrative litigation while a controlling civil action is
`
`pending.
`
`For the foregoing reasons, Registrant respectfully requests that this Board enter
`
`CONCLUSION
`
`an Order suspending this proceeding until the parties notify the Board of the final
`
`resolution of the pending Civil Action.
`
`Dated: August 26, 2010
`
`Respectfully submitted,
`
`
`By: /s/Fritz L. Schweitzer Ill
`Fritz L. Schweitzer, Ill
`Amanda Greenspon
`ST. ONGE STEWARD JOHNSTON & REENS LLC
`
`986 Bedford Street
`
`Stamford, Connecticut 06905-5619
`Telephone: (203) 324-6155
`Facsimile: (203) 327-1096
`Email: fschweitzer3@ssjr.com,
`agreenspon@ssjr.com, lit@ssjr.com
`
`Attorneys for Registrant
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that I have caused a copy of the foregoing MOTION TO
`
`SUSPEND PROCEEDINGS PENDING FINAL RESOLUTION OF PENDING FEDERAL
`
`COURT LITIGATION to be served by first—cIass, postage prepaid, this 26th dayof
`
`August 2010, on:
`
`Nicholas S. Lee
`
`Bishop & Diehl, Ltd.
`1320 Tower Road
`
`Schaumburg, IL 69173
`(847) 9 5-9333/r’
`iv
`
`
`
`
`
`-
`
`Certificate of Mailing:
`I hereby certify that this document is today being submitted via/21/ectronic filing to: TTAB, Commissioner
`for Trademarks, P.O. Box 1451, Alexandria, VA 22;3;,1‘3>-1451’/«5”‘;i.«"’
`if
`,
`.«:»
`‘X; K‘
`V
`. /
`
`K
`
`\\“-——-.
`
`Dated: Augus-Q-_f~'_~“_, 2010
`
`/(L /1%/,f/;,,¢.
`
`ebbi Simms
`
`

`

`
`
`EXHIBIT AEXHIBIT A
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 1 of 17
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`INSUBUY, INC.
`
`Plaintiff
`
`vs.
`
`COMMUNITY INSURANCE AGENCY
`
`INC.; RAMESH J. PATEL;
`GUBMAN N. MOORE, INC.; AND
`ROBERT M. CHORZEPA.
`
`Defendants.
`
`\./\/&/\./\/\/\./\y\./\/\./xys/\y
`
`Civil Action No.
`
`JURY DEMAND
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, FALSE
`DESIGNATION OF ORIGIN AND DOMAIN NAME C YBERS UA TTING
`
`INSUBUY,
`
`INC.
`
`(“Insubuy”), a Texas corporation, brings this action against
`
`COMMUNITY INSURANCE AGENCY, INC. (“CIA”) an Illinois corporation, RAMESH J.
`
`PATEL (“Patel”) President of CIA and a resident of Illinois, GUBMAN N. MOORE, INC.
`
`(“Gubman”) an Illinois corporation, and ROBERT M. CHORZEPA (“Chorzepa”)
`
`President of Gubman and a resident of Illinois, and complains and alleges as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This is a civil action arising under the trademark laws of the United States,
`
`Title 15, United States Code, Sections 1051 et. seq. as amended (hereinafter “the
`
`Lanham Act”), 1114 and 1125(a)(d). This Court has subject matterjurisdiction pursuant
`
`to 15 U.S.C. Sections 1121, and 28 U.S.C. Sections 1331, 1338, and 1367(a) because
`
`this Complaint raises federal questions under the Lanham Act
`
`including claims of
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 2 of ‘I7
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`statutory trademark infringement, unfair competition, false designation of origin and
`
`domain name cybersquatting.
`
`2.
`This Court has personal jurisdiction over the Defendant CIA because, inter
`alia, Defendant CIA: (1) is a corporation organized under the laws of the State of Illinois,
`
`(2) is doing business within the State of Illinois,
`
`(3)
`
`in person or through an agent
`
`transacts business within the State of Illinois giving rise to the claims herein, and (4) has
`
`systematic and continuous contacts with the State of Illinois.
`
`3.
`
`This Court has personal jurisdiction over the Defendant Gubman because,
`
`inter alia, Defendant Gubman: (1) is a corporation organized under the laws of the State
`
`of Illinois, (2) is doing business within the State of Illinois, (3) in person or through an
`
`agent transacts business within the State of Illinois giving rise to the claims herein, and
`
`(4) has systematic and continuous contacts with Illinois.
`
`4.
`
`Personal
`
`jurisdiction over Defendant Patel
`
`is proper because, upon
`
`information and belief, Defendant Patel: (1) is a natural person domiciled or resident
`
`within the State of Illinois when the cause of action arose, or when the action was
`
`commenced or when process was served,
`
`(2) is doing business within the State of
`
`Illinois, and (3) in person or through an agent transacts business within the State of
`
`Illinois giving rise to the claims herein.
`
`5.
`
`Personal jurisdiction over Defendant Chorzepa is proper because, upon
`
`information and belief, Defendant Chorzepa:
`
`(1)
`
`is a natural person domiciled or
`
`resident in the State of Illinois when the cause of action arose, or when the action was
`
`commenced or when process was served,
`
`(2) is doing business within the State of
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 3 of 17
`
`Illinois, and (3) in person or through an agent transacts business within the State of
`
`lllinois giving rise to the claims herein.
`
`6.
`
`Venue is proper under 28 U.S.C. § 1391 for all Defendants because, inter
`
`alia: (1) each Defendant resides in this judicial district, and (2) a substantial part of the
`
`acts or omissions of each Defendant giving rise to the claims occurred in this judicial
`
`district.
`
`THE PARTIES
`
`7.
`
`Plaintiff,
`
`lnsubuy, a Texas corporation,
`
`is in the business of providing
`
`travel and medical insurance brokerage and agency services for visitors to the United
`
`States and other countries,
`
`through Internet websites and personal
`
`telephone
`
`consultations, and has an office and place of business at 4700 Dexter Dr., Suite 100
`
`Plano, Texas, 75093.
`
`8.
`
`Defendant, CIA, on information and belief is an Illinois corporation, in the
`
`directly competing business of providing travel and medical insurance brokerage and
`
`agency services to visitors to the United States and other countries, through Internet
`
`websites, and has an office and place of business at 425 Huehl Rd., Suite # 22-A
`
`Northbrook, Illinois 60062-2323.
`
`9.
`
`On information and belief, Defendant Patel is a domicile and resident of
`
`lllinois with a residence at 3140 Landwehr Road, Northbrook,
`
`IL 60062,
`
`is in the
`
`business of providing travel and medical insurance brokerage and agency services to
`
`visitors to the United States and other countries through lnternet websites, and is also
`
`the President of CIA.
`
`10.
`
`Defendant, Gubman, on information and belief is an Illinois corporation, in
`
`the businesses of insurance marketing, domain name registration, website design and
`
`

`

`Case 1:10—cv—03925 Document 1
`
`Filed 06/24/10 Page 4 of 17
`
`website hosting, and has an office and place of business at 1909 Glenview Ave, Park
`
`Ridge, lllinois 60068.
`
`11.
`
`On information and belief, Defendant Chorzepa is a domicile and resident
`
`of lllinois with a residence at 4765 Linder #2D, Chicago,
`
`lllinois 60630,
`
`is
`
`in the
`
`businesses of insurance marketing, domain name registration, website design and
`
`website hosting, and is also the President of Gubman.
`
`BACKGROUND
`
`12.
`
`This action is necessary to protect
`
`the Plaintiff,
`
`lnsubuy,
`
`|nc.,
`
`from
`
`intentional and ongoing harm caused by Defendants. Defendants have intentionally
`
`and willfully caused harm to lnsubuy, and are continuing to cause harm to lnsubuy, by
`
`registering a vast number of lnternet domain names incorporating the service marks of
`
`lnsubuy, and by operating commercial websites at those domains in an effort to divert
`
`customers and business away from lnsubuy.
`
`13.
`
`Plaintiff lnsubuy is a well—respected and award-winning on-line insurance
`
`broker and agent
`
`located in Plano, Texas.
`
`lnsubuy provides insurance brokerage
`
`services to individuals and groups visiting the United states or traveling abroad who
`
`require what
`
`is commonly called visitor’s
`
`insurance or
`
`travel
`
`insurance, namely
`
`temporary health or medical insurance, in the U.S. or their destination country,lor who
`
`require trip insurance to protect against losses related to changed or cancelled travel
`
`plans.
`
`14.
`
`lnsubuy has been in business since at least 2002 and has been providing
`
`insurance brokerage and insurance agency services in interstate commerce in the
`
`United States under its marks lNSUBUY and lNSU BUY & Design for more than eight
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 5 of 17
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`(8) years. Through extensive use and promotion of the INSUBUY and INSU BUY &
`
`Design marks throughout the United States, Insubuy has acquired substantial consumer
`
`and industry recognition, goodwill and common—law trademark rights in the States of
`
`Texas and lllinois, and throughout the United States. (Hereinafter, the lNSUBUY and
`
`INSU BUY & Design marks, along with all related common—law trademark rights, are
`
`collectively referred to as the “lNSUBUY Marks”)
`
`15.
`
`Insubuy was awarded and is the owner of the duly issued U.S. Federal
`
`Trademark Registration No. 3,339,155 for its service mark lNSUBUY®, and the duly
`
`issued and incontestable U.S. Federal Trademark Registration No. 2,932,871 for its
`
`service mark INSU BUY & Design.
`
`(Hereinafter, collectively referred to as the Insubuy
`
`Federal Trademark Registrations). Attached, at Exhibit A, are true copies of the
`
`lnsubuy Federal Trademark Registrations from the U.S. patent and Trademark
`
`Database.
`
`16.
`
`The INSUBUY Marks were adopted by Insubuy as early as April of 2002
`
`and are highly distinctive of the services provided by Insubuy.
`
`17.
`
`lnsubuy provides its services primarily over the Internet,
`
`through its
`
`websites
`
`(The
`
`“lnsubuy Websites”),
`
`at
`
`the
`
`domains www.insubuy.com and
`
`www.insubuy.org. The Insubuy Websites prominently display the INSUBUY Marks.
`
`Attached as Exhibit B are true copies of the Insubuy Websites.
`
`18.
`
`Plaintiff has registered the following additional domain names and uses
`
`them to direct consumers to the INSUBUY Websites, where consumers can purchase
`
`services under the INSUBUY Marks:
`
`insubuy.net,
`
`insu—buy.us,
`
`insu-buy.net,
`
`insu-
`
`buy.org,
`
`insu—buy.biz,
`
`insu—buy.info, Insubuy. us, insubuy.biz, insubuy.info,
`
`insu—by.com,
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 6 of 17
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`insu-bye.com,
`
`insuby.com and insubye.com. Hereinafter,
`
`these additional domain
`
`names, collectively with the domains insubuy.com and insubuy.org, are referred to as
`
`the INSUBUY Domain Names.
`
`19.
`
`lnsubuy has extensively employed and caused to be advertised and
`
`publicized the INSUBUY Marks to identify its services and goods domestically and
`
`internationally.
`
`DEFENDANTS ’A 0 TI VITIES
`
`20.
`
`Defendant CIA is in the business of providing travel and medical insurance
`
`brokerage and agency services to visitors to the United States and other countries,
`
`through Internet websites.
`
`21.
`
`Defendant CIA is a direct competitor of lnsubuy.
`
`22.
`
`On information and belief, Defendants CIA, Patel, Gubman and Chorzepa,
`
`and each of them, (collectively, Defendants) acting in concert, have registered, or cause
`
`the registration of, at least forty-four (44) domain names that use or incorporate the
`
`INSUBUY Marks and/or are identical to and/or are confusingly similar to the INSUBUY
`
`Marks (hereinafter collectively referred to as the Infringing Domain Names). Attached
`
`as Exhibit C a list of the infringing Domain Names.
`
`23.
`
`On information and belief, at least four (4) of the Infringing Domain Names
`
`(evisitorinsubuy.com, ivisitorinsubuycom, visitorinsubuynez‘ and buy-insu.net) direct
`
`consumers to websites operated by Defendants where Defendants offer competing
`
`goods and services under the INSUBUY Marks as well as other marks (hereinafter
`
`collectively referred to as the Infringing Websites). Attached as Exhibit D are printouts
`
`of Defendants’ Infringing Websites.
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 7 of 17
`
`24.
`
`The Infringing Domain Names were registered by Defendants more than
`
`four (4) years after lnsubuy was awarded the first lnsubuy U.S. Federal Trademark
`
`Registration, and more than seven (7) years after lnsubuy adopted the INSUBUY
`
`Marks.
`
`25.
`
`On information and belief, Defendants had actual knowledge of the
`
`existence of
`
`the
`
`INSUBUY Marks
`
`and the
`
`lnsubuy U.S. Federal Trademark
`
`Registrations before Defendants registered each of the Infringing Domains.
`
`26.
`
`On information and belief, the Infringing Websites were first activated by
`
`Defendants more than five (5) years after lnsubuy was awarded the first lnsubuy U.S.
`
`Federal Trademark Registration, more than seven (7) years after lnsubuy adopted the
`
`INSUBUY Marks.
`
`27.
`
`On information and belief, Defendants had actual knowledge of the
`
`existence of the lnsubuy Marks and the lnsubuy U.S. Federal Trademark Registrations
`
`before Defendants first activated each of the Infringing Websites.
`
`28.
`
`At no time has lnsubuy authorized Defendants to use the lnsubuy Marks
`
`or to register domain names incorporating the lnsubuy Marks.
`
`29.
`
`In June 2010, lnsubuy attempted to resolve this dispute with Defendants
`
`CIA and Patel
`
`through a neutral
`
`third—party. However, Defendants CIA and Patel
`
`refused to discuss the matter with lnsubuy.
`
`30.
`
`On information and belief,
`
`in addition to the at
`
`least
`
`forty-four
`
`(44)
`
`Infringing Domains incorporating the INSUBUY Marks, Defendants have also registered
`
`domain names incorporating the service marks of at least thirteen (13) other providers
`
`

`

`Case 1:10-cv—03925 Document 1
`
`Filed 06/24/10 Page 8 of 17
`
`of travel and medical
`
`insurance services for visitors, which establishes a pattern of
`
`conduct by Defendants.
`
`31.
`
`On information and belief, Defendants are engaging in the aforementioned
`
`conduct in an effort to retaliate against lnsubuy and the other thirteen (13) providers
`
`based on a misguided perception that lnsubuy, and the other thirteen (13) providers, are
`
`infringing perceived rights ofClA and Patel.
`
`32.
`
`On information and belief, Defendants CIA and Patel mistakenly believe
`
`that they are entitled to exclusive use of the term “visitors insurance,” and generic
`
`variations thereof, for providing visitors travel and medical
`
`insurance brokerage and
`
`agency services to visitors to the U.S. and other countries.
`
`33.
`
`In fact,
`
`the term “visitors insurance” and variations thereof, such as
`
`“visitors medical insurance”, “visitors health insurance” and “visitors travel insurance”
`
`are widely used as generic terms for the type of insurance products involved herein, and
`
`no one person or company is entitled to exclusive use of such terms in this field.
`
`34.
`
`On information and belief, prior to the adoption of the INSUBUY Marks by
`
`lnsubuy and prior to the issuance of the lnsubuy U.S. Federal Trademark Registrations,
`
`and at all times thereafter, none of the Defendants had or have any trademark or other
`
`intellectual property rights in any of the Infringing Domain Names.
`
`35.
`
`On information and belief, none of the Infringing Domain Names consists
`
`of the legal name of any of the Defendants or a name that is othen/vise commonly used
`
`to identify any of the Defendants.
`
`36.
`
`On information and belief, prior the adoption of the INSUBUY Marks by
`
`lnsubuy and prior to issuance of the lnsubuy U.S. Federal Trademark Registrations,
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 9 of 17
`
`none of the Defendants made use of any of the Infringing Domain Names in connection
`
`with a bona fide offering of any goods or services.
`
`in fact, the Infringing Domain'Names
`
`were first registered by Defendants after lnsubuy was awarded the insubuy U.S.
`
`Federal Trademark Registrations.
`
`37.
`
`On information and belief, Defendants intended and continue to intend to
`
`divert consumers from Insubuy’s online locations to the Infringing Websites and/or to
`
`other websites operated by or affiliated with Defendants that will harm the goodwill
`
`represented by the insubuy Marks, for commercial gain and with the intent to tarnish or
`
`disparage the lnsubuy Marks, by creating a likelihood of confusion as to the source,
`
`sponsorship, affiliation, or endorsement of the Infringing Websites.
`
`38.
`
`On information and belief, Defendants have knowingly provided or
`
`knowingly caused to be provided materially false and misleading contact information to
`
`a domain name registrar, domain name registry, or other domain name registration
`
`authority when registering,
`
`renewing, maintaining,
`
`transferring or modifying the
`
`registration of the Infringing Domain Names, and Defendants have intentionally failed to
`
`maintain accurate contact
`
`information for
`
`the
`
`infringing Domain Names,
`
`and
`
`Defendants’ prior conduct indicates a pattern of such conduct.
`
`39.
`
`On information and belief, Defendants have registered and acquired
`
`multiple domain names which Defendants know are identical or confusingly similar to
`
`the insubuy Marks that were distinctive at the time of registration or renewal of the
`
`infringing Domain Names, without regard to the goods or services of Defendants or
`
`lnsubuy.
`
`

`

`Case 1:10-cv-03925 Document 1
`
`Filed 06/24/10 Page 10 of 17
`
`40.
`
`On information and belief, at no time have Defendants had a belief or
`
`reasonable grounds to believe that the use of the Infringing Domain Names was a fair
`
`use or othenrvise lawful.
`
`41.
`
`On information and belief, Defendant Patel is personally liable for his own
`
`conduct complained of herein and is liable, jointly and severally with Defendant CIA, for
`
`the conduct of Defendant CIA because, inter alia, (1) Patel completely dominates and
`
`controls the policy and business practices of CIA, (2) Patel has used and is using such
`
`control to commit fraud or wrong, breach of a legal duty, or a dishonest or unjust act,
`
`and (3) the aforesaid control and breach ofduty has proximately caused the injuries and
`
`losses complained of herein.
`
`42.
`
`On information and belief, Defendant Chorzepa is personally liable for his
`
`own conduct complained of herein and is liable, jointly and severally with Defendant
`
`Gubman,
`
`for the conduct of Defendant Gubman because,
`
`inter alia,
`
`(1) Chorzepa
`
`completely dominates and controls the policy and business practices of Gubman, (2)
`
`Chorzepa has used and is using such control to commit fraud or wrong, breach of a
`
`legal duty, or a dishonest or unjust act, and (3) the aforesaid control and breach of duty
`
`has proximately caused the injuries and losses complained of herein.
`
`43.
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`Defendants CIA, Patel, Gubman and Chorzepa are jointly and severally
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`liable for the conduct of each and every Defendant complained of herein because, inter
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`alia, CIA, Patel, Gubman and Chorzepa acted in concert in committing the conduct
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`complained of herein.
`
`44.
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`Defendants’ activities are likely to cause confusion, mistake or deception
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`among the public and are likely to lead and have led the public to erroneously conclude
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`that the goods and services offered by Defendants originate with, and/or are sponsored
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`by, and/or are authorized by insubuy,
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`to the damage and harm of insubuy and the
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`public.
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`45.
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`On information and belief the acts of Defendants complained of herein
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`were committed maliciously, deliberately and willfully.
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`46.
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`Defendants’ activities are likely to and have caused irreparable injury to
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`lnsubuy’s reputation and goodwill.
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`Claim One —Infringement Under Section 32 Of The Lanham Act
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`47.
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`Plaintiff
`
`re—alleges
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`the allegations contained in
`
`all of
`
`the foregoing
`
`paragraphs as if fully set forth herein.
`
`48.
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`Section 32(1)(a) of the Lanham Act, 15 U.S.C. § 1141 (1)(a), prohibits the
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`use in commerce, without the consent of the registrant, of
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`any reproduction, counterfeit, copy, or colorable imitation of a registered mark in
`connection with the sale, offering for sale, distribution, or advertising of any
`goods or services on or in connection with which such use is likely to cause
`confusion, or to cause mistake, or to deceive...
`
`49.
`
`By the acts described above, Defendants’ registration and use of each of
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`the Infringing Domain Names and infringing Websites in Exhibits C & D is an individual
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`“reproduction, counterfeit, copy, and colorable imitation” of the registered INSUBUY
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`Marks and are used in the sale, offering for sale, distribution and advertising of goods
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`and services which are identical or highly related to those offered by insubuy resulting in
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`infringement of the federally registered INSUBUY Marks in violation of Section 32(1)(a)
`
`of the Lanham Act.
`
`50.
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`By the acts described above, Defendants’ registration and use of each of
`
`the Infringing Domain Names has caused, and is likely to cause, confusion as to the
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`source, sponsorship, or origin of the goods and/or services offered under the Infringing
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`Domain Names. Among other things, the Infringing Domain Names confuse Internet
`
`users searching for insurance services, and mislead users who are searching for the
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`Insubuy Websites, but are lured to Defendants’ Infringing Websites. The infringing
`
`Domain Names hinder lnsubuy’s own ability to offer its services in commerce over the
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`Internet. Defendants’ Infringing Domain Names thus infringe the federally registered
`
`and applied for Insubuy Marks in violation of Section 32(1)(a) of the Lanham Act.
`
`51.
`
`By the acts described above, Defendants’ use of the INSUBUY Marks on
`
`the Infringing Websites has caused, and is likely to cause, confusion as to the source,
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`sponsorship, or origin of the goods and/or services offered at the Infringing Websites.
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`Among other things,
`
`the Infringing Websites confuse Internet users searching for
`
`insurance services, and mislead users who are searching for Insubuy Websites, but are
`
`lured to Defendants’ sites because Defendants use the INSUBUY Marks on the
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`Infringing Websites offering goods and services identical or highly related to lnsubuy’s
`
`goods and services. The Infringing Websites hinder lnsubuy’s own ability to offer its
`
`services In commerce over the Internet. Defendants’ Infringing Websites, that include
`
`use of Insubuy Marks, thus infringe the federally registered and applied for Insubuy
`
`Marks in violation of Section 32(1)(a) of the Lanham Act.
`
`Claim Two — False Designation of Origin and Unfair Comgetition Under Section
`43(aI of the Lanham Act
`
`52.
`
`Plaintiff re-alleges the allegations contained in of all of the foregoing
`
`paragraphs as if fully set forth herein.
`
`53.
`
`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides that
`
`...uses in
`Any person who, on or in connection with any goods or services,
`commerce any word, term, name, symbol, or device, or any combination thereof,
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`or any false designation of origin, false or misleading description of fact, or false
`or misleading representation of fact, which-
`
`is likely to cause confusion, or to cause mistake, or to deceive as to the
`(A)
`affiliation, connection, or association of such person with another person, or as to
`the origin, sponsorship, or approval of his or her goods, services, or commercial
`activities by another person, or
`in commercial advertising or promotion,
`misrepresents the (B) nature, characteristics, qualities, or geographic origin of his
`or her or another person's goods, services, or commercial activities, shall be
`liable in a civil action by any person who believes that he or she is or is not likely
`to be damaged by such act.
`
`54.
`
`Defendants’ use of the Infringing Domain Names and Infringing Websites
`
`listed on Exhibit C and D, respectively, constitute statutory unfair competition under
`
`Section 43(a) of the Lanham Act. By making unauthorized use, in interstate commerce,
`
`of the INSUBUY Marks or any variation or colorable imitation thereof in connection with
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`goods and services that are identical or highly related to those offered by lnsubuy but
`
`are,
`
`in fact, not offered by lnsubuy or otherwise affiliated with, endorsed by, or
`
`sponsored by lnsubuy, Defendants — via the Infringing Websites and Infringing Domain
`
`Names - have used a false designation of origin that is likely to cause confusion,
`
`mistake, or deception as to the affiliation or connection with lnsubuy,
`
`in violation of
`
`Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`Claim Three- Anti-Czbersguatting Under Section 43(dl Of The Lanham Act
`
`55.
`
`Plaintiff
`
`re-alleges the allegations contained in
`
`all of
`
`the foregoing
`
`paragraphs, as fully set forth herein.
`
`56.
`
`Section 43(d)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(d), provides that
`
`including a
`A person shall be liable in a civil action by the owner of a mark,
`personal name, which is protected as a mark under this section, if, without regard
`to the goods or services of the parties, that person-
`
`(i) has a bad faith intent to profit from that mark, including a personal name which
`is protected as a mark under this section; and
`i
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`(ii) registers, traffics in, or uses a domain name that (l) in the case of a mark that
`is distinctive at the time of registration of the domain name,
`is identical or
`confusingly similar to that mark
`
`57.
`
`lnsubuy is the owner of the INSUBUY Marks and the INSUBUY U.S.
`
`Federal Trademark Registrations, which are protected under the Lanham Act.
`
`58.
`
`On information and belief, Defendants are the domain name registrants
`
`or the registrant’s authorized licensees for each of the lnfringing Domains.
`
`59.
`
`The Defendants have registered, trafficked in and used the lnfringing
`
`Domain Names.
`
`60.
`
`The lnfringing Domain Names were registered by Defendants more than
`
`four (4) years after lnsubuy was awarded the first lnsubuy U.S. Federal Trademark
`
`Registration, and more than seven (7) years after lnsubuy adopted the INSUBUY
`
`Marks.
`
`61.
`
`The INSUBUY Marks are highly distinctive and were highly distinctive at
`
`the time that each of the lnfringing Domains was registered.
`
`62.
`
`Each of the lnfringing Domain Names is identical
`
`to or confusingly
`
`similar to the lNSUBUY Marks.
`
`63.
`
`The registration by Defendants of the lnfringing Domain Names, all of
`
`which are either identical or confusingly similar with the duly registered INSUBUY
`
`Marks, is a violation of Section 43(d)(1)(A) of the Lanham Act.
`
`64.
`
`Upon information and belief,
`
`in registering, trafficking in and using the
`
`lnfringing Domain Names, Defendants have acted with bad faith intent to profit from
`
`confusion pertaining to the highly distinctive INSUBUY Marks, the associated lnsubuy
`
`Websites and the good will associated therewith.
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`65.
`
`The registration and/or use of each one of the Infringing Domain Names
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`constitutes a separate act of cyberpiracy in violation of Section 43(d) of the Lanham Act,
`
`15 U.S.C.§1125(d).
`
`Claim Four— State Common Law Unfair Competition
`
`66.
`
`Plaintiff
`
`re—a|leges
`
`the allegations contained in all of
`
`the foregoing
`
`paragraphs, as fully set forth herein.
`
`67. Defendants have engaged in unfair competition under Texas common law,
`
`and/or
`
`lllinois common law by, among other things, passing off the services of
`
`Defendants as those of Plaintiff.
`
`68. As a direct and proximate result of Defendants’ acts of unfair competition,
`
`Defendants have been unjustly enriched and Plaintiff has sustained damage in an
`
`amount to proved at trial, and Plaintiff will continue to suffer irreparable injury until
`
`Defendants are enjoined from engaging in further acts of unfair competition.
`
`69. Defendants committed each of the acts of unfair competition knowingly,
`
`deliberately, willfully and with malice, entitling Plaintiff to punitive damages to be proved
`
`at trial.
`
`PRA YERS FOR RELIEF
`
`WHEREFORE,
`
`lnsubuy prays that judgment be entered against the Defendant
`
`as follows:
`
`A.
`
`The Defendants,
`
`their officers, agents, servants, affiliates, employees,
`
`partners, members, shareholders, attorneys and representatives, and all those
`
`acting in concert with Defendants and each of them, be permanently enjoined
`
`from:
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`(i)
`
`using the INSUBUY Marks, or any mark confusingly similar thereto,
`
`anywhere on, in or in relation to any website;
`
`(ii) registering any domain name containing the INSUBUY Marks, or any domain
`name confusingly similar to the INSUBUY Marks; and
`A
`
`(iii) using the INSUBUY Marks, or mark confusingly similar thereto, in commerce
`
`in association with insurance services,
`
`including insurance brokerage and
`
`insurance agency services, or any goods or services related to insurance
`
`services;
`
`The Defendants, and each of them, permanently transfer the Infringing
`
`Domain Names, and any other domain names in their possession or control
`
`which are identical to or confusingly similar to the INSUBUY Marks to lnsubuy;
`
`The Defendants, and each of them, be required to account and pay to
`
`Plaintiff,
`
`lnsubuy, all profits derived as a result of the activities complained of
`
`herein;
`
`The Defendant, and each of them, be required to pay an amount greater
`
`than all profits derived as a result of the activities complained of herein, due to
`
`willful infringement;
`
`The Defendants, and each of them