THETANCO, INC. et al

Filing 1

COMPLAINT. Filing fee received: $ 350.00, receipt number 0970-3111900, filed by THETANCO, INC., Todd J. Beckman. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Civil Cover Sheet, # 6 Summons Summons to Dirty World Entertainment, LLC, # 7 Summons Summons to Hooman Karamian)(Akbar, Joshua)

1
2
3
4
5
6
7
8
9

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

SONNENSCHEIN NATH & ROSENTHAL LLP
Joshua S. Akbar (AZ State Bar No. 025339)
[e-mail]
2398 E. Camelback Road
Suite 1100
Phoenix, AZ 85016-9016
Tel.: [phone]
Fax: [phone]
Michael M. Godsy
(pro hac vice application to be filed)
[e-mail]
One Metropolitan Square
211 North Broadway, Suite 3000
St. Louis, MO 63102-2741
Telephone: [phone]
Facsimile: [phone]

11
12

Attorneys for Plaintiffs

13

UNITED STATES DISTRICT COURT

14

FOR THE DISTRICT OF ARIZONA

15
16
17

THETANCO, INC. and
TODD J. BECKMAN,

Case No.

Plaintiffs,

18
19
20
21
22

COMPLAINT

vs.
DIRTY WORLD ENTERTAINMENT, LLC,
and HOOMAN KARAMIAN a/k/a
CORBIN GRIMES a/k/a NIK RICHIE,

Hon.

Defendants.

23
24
25

COME NOW Plaintiffs THETANCO, Inc. (“TANCO”), and Todd J. Beckman

26

(“Beckman”), and for their Complaint against Defendants Dirty World Entertainment,

27

LLC (“DWE”) and Hooman Karamian, a/k/a Corbin Grimes, a/k/a Nik Richie (“Richie”),

28

state as follows:
-1-

1
2

The Parties
1.

TANCO is a franchisor and operator of tanning salons, incorporated under the

3

laws of the State of Missouri with its principal place of business in St. Louis County,

4

Missouri.

5

2.

6
7
8
9

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

Beckman is the founder and sole owner of TANCO. He is a resident of St.

Louis County, Missouri.
3.

DWE is a limited liability company organized under the laws of the State of

Arizona, with its principal place of business in Scottsdale, Arizona.
4.

Richie is the multi-pseudonymous author of comments and features appearing

on a website operated by DWE entitled thedirty.com.

11
12
13
14

Jurisdiction and Venue
5.

This Court has jurisdiction over the service mark claims in this matter under 15

U.S.C. § 1121(a), 28 U.S.C. §§ 1331 and 1338(a).
6.

This Court has supplemental jurisdiction over Plaintiffs’ other claims pursuant

15

to 28 U.S.C. § 1367 in that they form part of the same case or controversy under Article

16

III of the United States Constitution.

17
18
19

7.

of the State of Arizona.
8.

20
21

This Court has personal jurisdiction over Defendants in that they are residents

This Court is a proper venue for this action under 28 U.S.C. § 1391(b).
Background: TANCO And Its Business

9.

TANCO is a nationally-operating franchisor of tanning salons, operating under

22

the storefront name of “The Tan Company.” TANCO’s franchisees are located in 13

23

states. TANCO was founded by Beckman in 1994.

24

10.

TANCO is a recognized leader in the tanning industry and in the franchising

25

industry because of its continued success and growth in providing a relaxing, safe tanning

26

experience through an ever-expanding network of franchisees.

27
28

11.

TANCO derives substantial revenue from licensing fees paid by its

franchisees. These licensing fees are based, in part, on the goodwill and positive
-2-

1

reputation associated with TANCO, “The Tan Company” and Beckman, in the public

2

eye, within the industry and among franchisees and prospective franchisees. TANCO

3

and Beckman have made significant financial and human resource investments in

4

marketing “The Tan Company” to maintain, enhance and expand upon that goodwill and

5

positive reputation.

6

12.

TANCO holds valid service marks for “The Tan Company” and “Where

7

America Tans,” as used in connection with tanning salons. TANCO has used the mark

8

“The Tan Company” since November 1, 2000, and the mark “Where America Tans”

9

since at least as early as February 1, 2007. TANCO is authorized to take all necessary

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

and timely action, including legal action, to protect and preserve the property of TANCO,

11

including the use of its service marks, to protect against improper, illegal or unlawful use

12

or abuse thereof.

13

13.

A true and accurate copy of USPTO Trademark Registration Number 3272018,

14

demonstrating TANCO’s valid service mark for “The Tan Company” is attached hereto

15

as Exhibit A.

16
17

Content Appearing At thedirty.com
14.

Defendants’ website, thedirty.com, professes to be “all about gossip and

18

satire.” The website actively solicits its viewers to “submit dirt!” which it then publishes,

19

without verification. Such “dirt” is categorized by (among other things) city of

20

origination. The “dirt” thus published includes photographs—which may or may not be

21

altered—and text as edited by Defendants. The content posted to thedirty.com may

22

generally be characterized as ranging from the merely puerile to the egregiously

23

salacious. The website’s animating purpose is to provide a forum for the anonymous,

24

public posting of humiliating, embarrassing or malicious photographs, text or comments.

25

15.

Defendants unapologetically proclaim that thedirty.com’s content consists of

26

“rumors, speculation, assumptions, opinions, and factual information.” They readily

27

acknowledge that “Postings may contain erroneous or inaccurate information.”

28

16.

Within the “FAQ” section of the website, Defendant DWE purports to provide
-3-

1

a procedure for having offensive material taken down. Specifically, they state as follows:

2

5.) OMG! There’s a really embarrassing pic of me that I want removed! How
can I get it taken down?

3

9

Assuming you are the person shown in a photo (and are not the photographer),
you are welcome to submit a courtesy removal request via email to:
[e-mail]. Removal is done at the discretion of Dirty World
LLC and may take up to 72 hours or more to process. Each request must
include:
1. Your Name: ____________________________________
2. Your Email: ____________________________________
3. Link (URL) to post:_______________________________
NOTE: Because we do not know who you are, we cannot consider requests such
as “please remove the pic of me on page 3.” We need to know the exact URL of
the page you want removed. You can get the URL by clicking on the title of the
post and then looking at the address (URL) on the top of that page.

10

Defendants’ Defamatory and Unauthorized Postings

4
5
6
7

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

8

11

17.

On August 12, 2009, Defendants accepted and posted a submission of “dirt”

12

from a St. Louis submitter. Defendants entitled the posting “Where America Tans.” The

13

posting (appearing at http://thedirty.com/2009/08/12/where-america-tans/) does not

14

identify the original submitter.

15

18.

The posting consists in its entirety of defamatory content concerning Beckman.

16

It includes a contextually inaccurate photograph of Beckman, and text that accuses

17

Beckman of :

18

•

illegal drug use;

19

•

pedophilia;

20

•

illegal or unethical business practices;

21

•

insurance fraud;

22

•

arson;

23

•

philandering; and

24

•

being infected with AIDS.

25

Specifically, the post states verbatim as follows:

26
27
28

THE DIRTY ARMY: Nik, This is the President/Owner of one of the
largest tanning chains in the country, The Tan Company. He uses his
money to buy c*caine and big boats to drive underage girls around. I guess
The Tan Company wasn’t screwing people out of enough money to
support his dr*g and pedofile habit, so he caused an explosion and burnt

-4-

his house down for insurance money. The entire corporate staff got
pregant within the last couple of years most likely by him (luckily none of
the kids turned out retarded considering how many lines they snorted on
lunch breaks), including his wife but he was too busy having sex with the
VP down at the Osage Beach store opening while his wife frantically
called his cell because she was in labor. Where was your wife when you
were kissing this young girl, Todd? Tan away St. Louis, just try not to get
aids. And another hint for the successful businessman, maybe you should
tell your fat Rask employees not to post inappropriate pictures of you on
their myspace just so they feel “cool” that they are part of your minimum
wage corporate cult. TAN WITH THE BEST!

1
2
3
4
5
6
7
8
9

19.

Defendant Richie adopted, endorsed and repeated some of this defamatory

content by adding this editorial comment: “Typical trout, I give him 3 months before

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

he files for Chapter 11.- nik.” (“Trout,” according to the site’s “WTF Dictionary,”

11

refers to “an older man who dates younger women in trying to be younger or ‘swim

12

upstream.’”)

13

20.

None of the defamatory statements or accusations are true.

14

21.

By using the name “The Tan Company” and the phrase “Where America Tans”

15

in the posting, Defendants displayed and continues to display TANCO’s service marks

16

without permission in a confusing and misleading manner.

17
18
19
20
21
22

Attempts To Remove The Posting
22.

On August 12, 2009, Plaintiff Beckman was alerted to the existence of the

“Where America Tans” posting identified above. The posting bears the same date.
23.

A true and accurate copy of the unauthorized Internet posting from August

12, 2009, is attached hereto as Exhibit B.
24.

On August 13, 2009, Plaintiffs attempted through their legal counsel,

23

Sonnenschein, Nath & Rosenthal, LLP, to have the offending posting and related

24

content removed from the website. In accordance with the instructions quoted above,

25

Plaintiffs emailed a demand that the content be taken down, and that Defendants

26

immediately discontinue all use of the service marks. In addition, copies of the

27

demand letter were sent via Federal Express to a number of addresses listed for

28

Defendant Karamian as well as to the registered agent of Dirty World Entertainment,
-5-

1

LLC, John Webber. A true and accurate copy of the demand letter is attached hereto

2

as Exhibit C.

3

25.

All except one of the letters sent via FedEx were returned. FedEx reported

4

multiple attempts to deliver the letters but an inability to do so because the addressees

5

had changed addresses without leaving forwarding information.

6

26.

On August 13, 2009, however, Plaintiffs’ counsel received an email

7

acknowledging receipt of the demand letter and claiming that the offending content

8

was “in the process of removal.” A true and accurate copy of the email received from

9

Defendants is attached hereto as Exhibit D.

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10
11
12

27.

Furthermore, on August 19, 2009, Beckman sent a second email request

conforming to the removal procedures posted on the site and quoted above.
28.

As of the date of this filing, however, the offending posting has not been

13

removed from thedirty.com. In addition, comments to the posting have continued to

14

be accepted for posting by Defendants, compounding the defamatory effect of the

15

posting and editorial addition, further damaging the reputation of Plaintiffs, and

16

multiplying the unauthorized usage of TANCO’s service marks.

17

COUNT I

18

FEDERAL TRADEMARK INFRINGEMENT (TANCO v. DWE)

19

29.

20

28 above.

21

30.

22
23

Plaintiffs reallege and incorporate by reference herein Paragraphs 1 through

Defendant DWE has engaged in service mark infringement under § 32 of

the Federal Trademark Act, 15 U.S.C. § 1114.
31.

TANCO’s federal registration on the Principal Register of the “The Tan

24

Company” is conclusive evidence of TANCO’s exclusive right to use that mark under

25

15 U.S.C. § 1115. Moreover, TANCO’s registration is incontestable, thereby

26

providing conclusive evidence of the validity of TANCO’s marks, TANCO’s

27

ownership of the marks, and TANCO’s exclusive right to use the marks pursuant to

28

15 U.S.C. § 1065.
-6-

1

32.

In addition, TANCO’s common law mark, “Where America Tans,” has

2

acquired such secondary meaning in relation to TANCO that TANCO has obtained

3

the exclusive right to use the mark under § 43 of the Lanham Act, 15 U.S.C. § 1125.

4
5
6

33.

DWE has never held a license or otherwise been authorized to used

TANCO’s service marks.
34.

DWE’s unauthorized use of TANCO’s service marks in association with

7

the website thedirty.com constitutes false and misleading descriptions and

8

representations relative to TANCO’s service marks and further constitutes initial

9

interest confusion.

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

35.

DWE’s use of the service marks is likely to cause TANCO’s customers,

11

vendors, franchisees and prospective franchisees, as well as members of the public in

12

general, to believe falsely that the offending posting, including the photograph, text,

13

editorial comment and viewer comments, are related to or reflective of TANCO and

14

its operation and management. Defendants’ use of the TANCO service marks

15

therefore infringes upon TANCO’s exclusive rights under § 32 of the Federal

16

Trademark Act, 15 U.S.C. §§ 1114.

17

36.

Unless enjoined by this Court, DWE will continue to infringe upon

18

TANCO’s service marks, thereby deceiving and misleading the public, diluting the

19

service marks and causing immediate and irreparable injury to TANCO’s reputation

20

and goodwill.

21

37.

As a proximate result of DWE’s infringing actions, TANCO has suffered

22

and will continue to suffer substantial damage to its business, goodwill, reputation,

23

profits, franchisee recruitment efforts, franchisee retention, and the strength and

24

respect earned by its long-term use of its marks.

25

COUNT II

26

FEDERAL TRADEMARK DILUTION (TANCO v. DWE)

27
28

38.

TANCO realleges and incorporates by reference herein Paragraphs 1

through 37 above.
-7-

1

39.

By virtue of its substantial investment of time and resources in the

2

continued development and promotion in interstate commerce of the TANCO service

3

marks, TANCO is entitled to protection against dilution and disparagement under §

4

43 of the Lanham Act, 15 U.S.C. § 1125.

5

40.

DWE has used and is continuing to use TANCO’s service marks in a

6

manner that is likely to injure TANCO’s business reputation and to dilute and

7

disparage the distinctive quality of the service marks within the meaning of § 43(c) of

8

the Lanham Act, 15 U.S.C. § 1125. This conduct is causing, and (unless enjoined)

9

will continue to cause, immediate and irreparable harm and damage to TANCO.

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

41.

As a proximate result of DWE’s service mark dilution, TANCO has

11

suffered and will continue to suffer substantial damage to its business, goodwill,

12

reputation, profits, franchisee recruitment efforts, franchisee retention, and the

13

strength and respect earned by its long-term use of its marks.

14

COUNT III

15

COMMON LAW INFRINGEMENT AND/OR DILUTION (TANCO v. DWE)

16
17
18

42.

TANCO realleges and incorporates by reference herein Paragraphs 1

through 41 above.
43.

TANCO has used its registered service mark, “The Tan Company,” and its

19

common law mark, “Where America Tans,” since 1994. TANCO has acquired

20

considerable goodwill, distinctiveness and wide-scale recognition with regard to its

21

use of “The Tan Company” and “Where America Tans.” TANCO has invested

22

heavily in advertising, promotion and use of these marks in commerce throughout the

23

United States since 1994. As DWE’s own posting shows, the public has come to

24

associate “The Tan Company” and “Where America Tans” with TANCO.

25

44.

Without TANCO’s permission, DWE is using TANCO’s marks to promote

26

and distribute salacious internet postings in a manner that implies that such activities

27

are associated with TANCO’s business operation and its founder and president,

28

Beckman. Such use is and has been damaging to TANCO and its marks.
-8-

1

45.

DWE’s use of the marks to promote and distribute salacious content on the

2

internet has created a likelihood of confusion, mistake or deception, and therefore

3

infringes on TANCO’s marks in violation of the common law of Arizona and of

4

Missouri.

5

46.

6
7

DWE’s actions damage the value of TANCO’s marks, the goodwill and the

business associated with TANCO’s marks.
47.

DWE’s actions also threaten further irreparable damage against the marks

for which no remedy exists at law unless temporarily, preliminarily and permanently

9

enjoined.

10
SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

8

48.

As a proximate result of DWE’s common law infringement and/or dilution,

11

TANCO has suffered and will continue to suffer substantial damage to its business,

12

goodwill, reputation, profits, franchisee recruitment efforts, franchisee retention, and

13

the strength and respect earned by its long-term use of its marks.

14
15
16
17
18

COUNT IV
PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF (TANCO vs. DWE)
49.

TANCO realleges and incorporates by reference herein Paragraphs 1

through 48 above.
50.

TANCO has sustained or will sustain irreparable harm as a result of

19

Defendants’ conduct described above. There is no adequate remedy at law for

20

Defendants’ unauthorized use of TANCO’s service mark. Once the content located at

21

http://thedirty.com//2009/08/12//where-america-tans/ is viewed, circulated,

22

commented on and archived in various places on the World Wide Web — as has

23

occurred and continues to occur — it will irreparably harm, injury and damage

24

TANCO. Further, damages are an inadequate remedy because it would be difficult, if

25

not impossible, to quantify the extent to which such unauthorized use has or will

26

destroy future business interests of TANCO’s.

27
28

51.

As shown from the facts contained herein, TANCO will suffer immediate

and irreparable injury unless Defendants are temporarily, preliminarily and
-9-

1

permanently enjoined from any further use of TANCO’s service mark.

2

COUNT V

3

DEFAMATION (Beckman vs. Richie)

4
5
6

52.

Plaintiff Beckman realleges and incorporates by reference herein

Paragraphs 1 through 51 above.
53.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as

7

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

8

upon, publishes false and defamatory statements concerning Beckman that impeach

9

his honesty, integrity and reputation, by alleging that he has used and continues to use

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

illegal drugs and that he has committed acts of pedophilia, illegal/unethical business

11

conduct, arson and insurance fraud.

12

54.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as

13

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

14

upon, publishes false and defamatory statements concerning Beckman alleging that he

15

is a philanderer and is infected with HIV/AIDS.

16

55.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as

17

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

18

upon, was published via the internet to all users of the World Wide Web.

19

56.

Defendant Richie knew, or recklessly disregarded whether the false and

20

defamatory statements quoted above were true, and acted negligently in failing to

21

determine the truth of the matter.

22
23

57.

As a result of Defendant Richie’s adoption, elaboration upon, and re-

publication of those false and defamatory statements, Beckman has been damaged.

24

COUNT VI

25

DEFAMATION PER SE (Beckman vs. Richie)

26
27
28

58.

Beckman realleges and incorporates by reference herein Paragraphs 1

through 57 above.
59.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as
- 10 -

1

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

2

upon, publishes false and defamatory statements concerning Beckman and allege that

3

he has committed crimes of moral turpitude, specifically (as previously stated), illegal

4

drug use, pedophilia, illegal/unethical business conduct, arson and insurance fraud.

5

60.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as

6

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

7

upon, publishes false and defamatory statements concerning Beckman that ascribe to

8

Beckermen conduct, characteristics or a condition that would disparage him,

9

specifically (as previously stated) philandering and infection with HIV/AIDS.

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10

61.

The posting at http://thedirty.com/2009/08/12/where-america-tans/, as

11

quoted verbatim above, which Defendant Richie adopted, republished and elaborated

12

upon, was published via the internet to all users of the World Wide Web.

13

62.

Richie knew, or recklessly disregarded whether the false and defamatory

14

statements quoted above were true, and acted negligently in failing to determine the

15

truth of the matter.

16

63.

As a result of Richie’s publication of those false and defamatory

17

statements, Beckman has been damaged, which damages are presumed under the law

18

of the State of Arizona.

19
20

WHEREFORE, Plaintiffs respectfully pray that the Court grant the
following relief:

21

A.

Judgment in Plaintiffs’ favor on all counts of this Complaint.

22

B.

Requiring Defendants to remove and/or block all access to the website

23
24

content located at http://thedirty.com/2009/08/12/where-america-tans/.
C.

Temporarily, preliminarily and permanently enjoining Defendants and its

25

officers, agents, servants, employees, representatives, attorneys, successors, licensees

26

and assigns, and all others in active concert or participation with them, pursuant to 15

27

U.S.C. § 1116 and the equity jurisdiction of this Court, from using the marks “The

28

Tan Company” or “Where America Tans” or any other service mark in combination
- 11 -

1

with other words or symbols, or any other marks or symbols which are confusingly or

2

deceptively similar to, or colorably imitative of Plaintiff’s service mark, on or in

3

connection with Defendants’ web site at thedirty.com.

4

D.

Requiring Defendants to pay damages to Plaintiffs in the amount of

5

Plaintiffs’ actual, presumed and consequential damages and any profits of Defendant

6

resulting from Defendants’ service mark infringement pursuant to 15 U.S.C. §

7

1117(a), 15 U.S.C. § 1120, and the common law of the State of Arizona.

8
9

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10
11

E.

Finding this an exceptional case and requiring Defendants to pay TANCO

additional damages equal to three times the actual damages awarded TANCO
pursuant to 15 U.S.C. § 1117(a).
F.

Requiring Defendant DWE to divulge the identity or identities of any

12

person submitting the photograph, posting text or comments at

13

http://thedirty.com/2009/08/12/where-america-tans/.

14
15
16

G..

Awarding Plaintiff Beckman exemplary damages in an amount adequate to

punish Defendant Richie and deter him from further similar conduct.
H.

Requiring Defendants to pay all of Plaintiffs’ reasonable attorneys’ fees,

17

costs and expenses, including those available under 15 U.S.C. § 1117(a), and any

18

other applicable law;

19
20
21
22

I.

Such other and further relief as the Court may deem just and equitable.
DEMAND FOR JURY TRIAL
Pursuant to Fed. R. Civ. P. 38(b), Plaintiffs hereby demand a trial by jury to

the fullest extent permitted by law.

23
24
25
26
27
28
- 12 -

1
2

Dated: August 21, 2009
Phoenix, Arizona
Respectfully submitted,
SONNENSCHEIN NATH & ROSENTHAL LLP

3
4

By: /s/ Joshua S. Akbar
Joshua S. Akbar (AZ State Bar No. 025339)
[e-mail]
2398 East Camelback Road, Suite 1100
Phoenix, Arizona 85016-9016

5
6
7
8

Michael M. Godsy
(pro hac vice application to be filed)
[e-mail]
One Metropolitan Square
211 North Broadway, Suite 3000
St. Louis, MO 63102-2741
Telephone: [phone]
Facsimile: [phone]

9

SONNENSCHEIN NATH & ROSENTHAL LLP
2398 E. CAMELBACK ROAD, SUITE 1100
PHOENIX, AZ 85016
[phone]

10
11
12
13

Counsel for Plaintiffs

14
15

23294267

16
17
18
19
20
21
22
23
24
25
26
27
28
- 13 -