It's a 10, Inc. v. Its-a-ten.com et al

Filing 1

COMPLAINT against Its-a-ten.com, Adam Simms, David Simms. Filing fee $ 350.00 receipt number 113C-3941687, filed by It's a 10, Inc.. (Attachments: # 1 Exhibit Exhibit A to Complaint, # 2 Exhibit Exhibit B to Complaint, # 3 Exhibit Exhibit C to Complaint, # 4 Exhibit Exhibit D to Complaint, # 5 Exhibit Exhibit E to Complaint, # 6 Civil Cover Sheet Civil Cover Sheet, # 7 Summon(s) Summons for Defendant Its-a-ten.com, # 8 Summon(s) Summons for David Simms, # 9 Summon(s) Summons for Adam Simms)(Sacks, Michael)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case Number:

IT’S A 10, INC., a Florida Corporation,
Plaintiffs,
v.
ITS-A-TEN.COM, an unknown business
entity, DAVID SIMMS, an individual and
ADAM SIMMS, an individual,
Defendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)

Plaintiff Demands Trial by Jury

COMPLAINT
Plaintiff It’s a 10, Inc., by and through their undersigned attorneys, alleges and avers as
follows:
NATURE OF THIS ACTION

This is an action on behalf of Plaintiff It’s a 10, Inc., the owner of the federal
trademark registration for the mark IT’S A 10 (Reg. No. 3,420,182) (“Mark”), for trademark
infringement, trademark dilution, unfair competition, cyberpiracy, false advertising and false
designation of origin in violation of 15 U.S.C. § 1125(a) et seq. and unfair competition under
statutory and common law of Florida against Defendants Its-a-Ten.com, Adam Simms and
David Simms (collectively “Defendants”).
Despite knowledge of Plaintiff’s extensive use and federal rights in the mark IT’S A
10, Defendants intentionally obtained, used and continue to use the identical or confusingly
similar Internet domain names, its-a-10.com and its-a-ten.com (referred to collectively herein

as “Infringing Domain Names”) for the illegal promotion and advertising of their own
business and to divert consumers to their websites and profit from the goodwill and
reputation associated with Plaintiff’s IT’S A 10 mark.
Plaintiff seeks: (a) injunctive relief prohibiting Defendants from any further
infringement of Plaintiff’s IT’S A 10 mark; (b) an order requiring the transfer of the
Infringing Domain Names to Plaintiff and any other domain names owned or controlled by
Defendants confusingly similar to Plaintiff’s Mark and (c) money damages, attorneys’ fees
and costs for Defendant’s past and continuing infringement of the Mark.

The Parties
1.

Plaintiff It’s a 10, Inc. is, and at all times material hereto has been, a corporation

organized under the laws of the state of Florida with its place of business in Deerfield Beach,
Florida.
2.

On information and belief, Defendant Its-a-Ten.com, an unknown business

entity, engaged in commercial Internet activity located at the Infringing Domain Names, and is
an Internet business jointly operated by Adam Simms and David Simms, who are individuals
that reside in the state of Ohio.
3.

On information and belief, Defendant David Simms is an individual residing in

the state of Ohio, and has obtained, uses, owns or co-owns and controls the Infringing Domain
Names and conducts commercial transactions through the Infringing Domain Names.
4.

On information and belief, Defendant Adam Simms is an individual residing in

the state of Ohio, and has obtained, uses, owns or co-owns and controls the Infringing Domain
Names and conducts commercial transactions through the Infringing Domain Names.
2

Jurisdiction and Venue
5.

The Court has jurisdiction under 15 U.S.C.A. § 1121 and 28 U.S.C.A. §§ 1331

and 1338(a) in that this case arises under the Trademark Act of the United States, 15 U.S.C.A. §§
1051 et seq.
6.

The Court has jurisdiction of the unfair competition claims under the provisions

of 28 U.S.C.A. § 1338(b).
7.

This Court has jurisdiction pursuant to the supplemental jurisdiction provisions of

28 U.S.C. § 1367.
8.

This Court has personal jurisdiction over Defendants since Defendants have

engaged in business activities in, and directed to, this district, and have intentionally committed a
tortious act within this district or have committed a tortious act outside of the State of Florida
causing injury to Plaintiff in this judicial district and Defendants have intentionally directed their
infringing activities to the state of Florida and this judicial district and, upon information and
belief, sell products within the State of Florida and this judicial district and the exercise of
personal jurisdiction would be otherwise constitutionally permissible over Defendants.
9.

Venue is proper in this district pursuant to 28 U.S.C. §1391(b) because a

substantial part of the events giving rise to Plaintiff’s claim occurred in this district, including,
inter alia, Defendants committed trademark infringement in this district, Defendants’
commercial website is accessible and intentionally directed to Florida consumers in this district,
Plaintiff has its principal place of business in this district, Plaintiff sell its It’s a 10 products in
this district, and Plaintiff has been injured in this district by Defendants’ infringing activities.

3

PLAINTIFF’S BUSINESS AND TRADEMARK RIGHTS
10.

Plaintiff It’s a 10, Inc. is a leader in the sale and innovation of hair care products

and is the owner of the famous “It’s a 10” hair care line, which was launched in 2006, and in less
than a half decade, has become a multi-million dollar corporation. Plaintiff has invested
considerable efforts, resources and financial expenditures promoting, marketing and selling these
products under the distinctive mark IT’S A 10. Plaintiff has spent approximately $10 million to
date on the advertising and promotion of the It’s a 10 hair products and has invested an
immeasurable amount of time and effort in the development of their unique product line.
11.

Plaintiff is the owner of the U.S. trademark registration for the mark IT’S A 10

for “a full line of hair care products; namely, shampoos, conditioners, styling gels, hair lotions
and hair sprays.” This trademark registration is valid and subsisting, and constitutes constructive
use of Plaintiff’s IT’S A 10 mark throughout the United States, as well as constructive notice of
Plaintiff’s rights in the IT’S A 10 mark. A copy of the trademark registration is attached herein
as Exhibit A;.
12.

Plaintiff sells its It’s a 10 products to some of the largest distributors in the world,

including distributors in this judicial district. The sale of the It’s a 10 products from inception in
2006 to date exceed $100 million at the retail level. The It’s a 10 products are sold in numerous
outlets, including major retail chains and countless professional hair salons worldwide.
13.

As a result of Plaintiff’s considerable efforts, Plaintiff has achieved huge

commercial success both in the United States and abroad in connection with the It’s a 10 hair
care product line and the IT’S A 10 mark is famous and widely recognized to consumers in the
beauty and hair care market.
14.

Numerous well-known publications such as People, US Magazine, Martha

Stewart Wedding Magazine, In Style and Seventeen have recognized Plaintiff’s It’s a 10 hair care
4

products. Moreover, Plaintiff’s It’s a 10 hair care products have earned recognition among
professional salons and consumers as a high-quality product, receiving glowing reviews from
consumers and celebrities alike.
15.

Plaintiff is also the owner of the domain name itsa10haircare.com. Plaintiff’s

website generates business and goodwill for Plaintiff and allows Plaintiff to communicate with
potential business contacts, while maintaining relationships with a vast range of consumers.
16.

Plaintiff’s It’s a 10 mark is used in interstate commerce by Plaintiffs in

connection with the sale, offering for sale, distribution and promotion of Plaintiff’s goods.
Plaintiff’s mark is distinctive and was distinctive at the time of all acts alleged herein.
17.

There is a substantial demand for the goods associated with the IT’S A 10 mark

and the goodwill associated with the It’s a 10 mark is Plaintiff’s most valuable asset.
DEFENDANTS’ INFRINGING ACTS
17.

Since long before the acts of Defendants as described herein, Plaintiff It’s a 10,

Inc. continuously marketed, promoted and sold its hair care products under the mark IT’S A 10
throughout the U.S. and abroad.
18.

Plaintiff has never authorized, licensed or otherwise permitted Defendants to use

its IT’S A 10 mark or any other confusingly similar variation thereof.
19.

Despite both actual and constructive knowledge of Plaintiff’s prior rights in the

mark IT’S A 10, Defendants intentionally obtained, used and are using the infringing domain
names its-a-ten.com and its-a-10.com for the purposes of operating an Internet business that sells
Plaintiff’s It’s a 10 products (“Infringing Websites”).
20.

Plaintiff is informed, believes and thereon alleges that Defendants intentionally

registered, used and continue to use, the Infringing Domain Names in bad faith to confuse
5

consumers into believing that the Infringing Websites are affiliated with, sponsored or approved
by Plaintiff It’s a 10, Inc. in order to drive traffic and sales to their Infringing Websites. By
Defendant Adam Simms’s own admission as contained in his email of April 5, 2010 (attached
and discussed below) the Infringing Websites have “tens of thousands of registered buying
customers” that have purchased the It’s a 10 hair care products sold on Defendants’ Infringing
Websites
21.

The Infringing Domain Names have caused a likelihood of confusion and actual

confusion (as further discussed below) and will continue to cause such confusion if Defendants’
infringing activities do not cease. Defendants have further exploited this confusion by
prominently displaying the name “It’s-a-Ten” as Defendants’ company name at the top of
Defendants’ homepage located at www.its-a-ten.com, and referring to the products as “It’s a Ten
hair products.”
22.

On information and belief, Defendants have extensively promoted its Infringing

Websites on various social media and networking websites, including Facebook, Twitter, and
YouTube. For example, Defendants created a Facebook page that prominently displays the
Defendants’ infringing company name “Its-a-Ten” along with links to the Infringing Websites
and images of Plaintiff’s It’s a 10 products. A copy of Defendants’ Facebook page is attached
herein as Exhibit B.
23.

On information and belief, Defendants misappropriated images of Plaintiff’s

products subject to copyright protection from Plaintiff’s website for use on Defendants’
Infringing Websites, Facebook page and other promotional Internet outlets.
24.

Willful infringement is evident by the email of Defendant Adam Simms dated

April 5, 2010 to Plaintiff, whereby Defendant Adam Simms threatens to redirect “tens of
thousands of registered buying customers that have purchased Its-a-ten products” to other hair
6

care products if Defendants’ supply of Plaintiff’s It’s a 10 products from a distributor (Plaintiff
requested that the distributor cease sales to the owner of the Infringing Websites) was not
restored. A copy of the said April 5 email is attached as Exhibit C.
25.

Defendants’ use of the company name “Its-a-Ten” along with the Infringing

Domain Names and images of Plaintiff’s products has caused actual consumer confusion as
readily evidenced by Defendants’ Facebook page, where consumers are allowed to post
comments and such comments include: “Thank you for creating this stuff!” and “I had to contact
you with a thank you. Your product is amazing!” (See Exhibit B).
26.

Actual confusion is further evidenced by Defendant David Simms’ email of

August 4, 2010, whereby Defendant David Simms notes that Defendants’ Infringing Websites
are “still receiving emails” that were meant to be directed to Plaintiff (a copy of said August 4
email is attached hereto as Exhibit D). Such emails were misdirected to Defendants due to
confusion based on Defendants’ use of the identical or confusingly similar domain names. As
confirmed in Defendant David Simms August 4 email, such misdirected emails are not only from
customers, but from potential business clients of Plaintiff’s.
27.

On or about August 10, 2010, Plaintiff sent a cease and desist letter to Defendants

informing them, inter alia, that Defendants were infringing and continued to infringe upon
Plaintiff’s valuable trademark rights.
28.

On August 24, 2010, Defendant Adam Simms responded by email to the August

10, 2010 cease and desist letter informing Plaintiff that Defendants did not intend to cease use of
the Infringing Domain Names. In the August 24 email, Defendants confirmed that they were
aware of Plaintiff’s federal trademark registration and that Defendants planned to continue such
infringing activities, or, in the alternative, Plaintiff could purchase Defendants’ business

7

operating under the business name and domain name its-a-ten.com and its-a-10.com from
Defendants. A copy of the August 24, 2010 email is attached hereto as Exhibit E.
29.

Defendant Adam Simms further admits in his email of August 24, 2010 that

Defendants purchased the Infringing Domain Names for “retail sales” of Plaintiff’s It’s a 10
products and that they have spent “thousands of dollars” on advertising the Infringing Websites.
30.

Upon even a cursory review of the facts in this case and the attached Exhibits, it is

clear that Defendants use of the Infringing Domain Names was intentional and willful as (a) the
goods sold on Defendants’ website are Plaintiff’s goods that prominently display the IT’S A 10
mark; (b) the emails from Defendants to Plaintiff attached as Exhibits D and E, respectively,
admit the purpose for registering and using the Infringing Domain Names was for the retail sale
of Plaintiff’s products, and (c) Defendants blatant disregard of Plaintiff’s request that they cease
use of the Infringing Domain Names and (d) Defendants’ attempt in Exhibit E to sell their
business, including the Infringing Domain Names, to Plaintiff.
31.

The activities of Defendants complained of herein were and are done willfully in

order to trade upon the goodwill and reputation of Plaintiff with reckless disregard of Plaintiff’s
trademark rights and with actual and constructive knowledge that such conduct was and is in
direct contravention of Plaintiff’s rights and was and is likely to confuse, mislead and deceive
consumers as to the source, affiliation and sponsorship of Defendants’ goods and services,
resulting in direct injury to Plaintiff’s business, reputation and goodwill.
COUNT I
FEDERAL TRADEMARK INFRINGEMENT
(15 U.S.C. 1114)
32.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.

8

33.

Plaintiff is the owner of a valid and subsisting federal trademark registration for

the mark IT’S A 10 and has continuously used the mark in connection with hair care products
since at least as early as July of 2006. A copy of the Registration Certificate is attached hereto as
Exhibit A.
34.

Despite Plaintiff’s prior rights in the IT’S A 10 mark, Defendants, without

Plaintiff’s authorization, used in commerce the virtually identical or confusingly similar domain
names, Its-a-10.com and Its-a-ten.com in connection with identical goods/services in order to
profit off the goodwill and reputation Plaintiff has established in association with its IT’S A 10
mark and such use was intended to cause, has caused and is likely to continue to cause
confusion, mistake and deception among consumers as to whether Defendants’ Infringing
Domain Names are affiliated with, sponsored or approved by Plaintiff It’s a 10, Inc.
35.

The foregoing acts of infringement have been and continue to be deliberate,

willful and wanton, constituting an exceptional case within the meaning of 15 U.S.C. § 1117.
36.

As a direct and proximate result of Defendants’ infringement, Plaintiff has

suffered, and will continue to suffer, monetary loss and irreparable injury to its business.

COUNT II
FEDERAL TRADEMARK DILUTION
(15 U.S.C. § 1125(c))
37.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.
38.

Defendants registration and use of a virtually identical and confusingly similar

mark to Plaintiff’s distinctive IT’S A 10 mark commenced after Plaintiff’s Mark became famous
within the meaning of 15 U.S.C. § 1125(c) and further causes dilution of the distinctive quality
of the IT’S A 10 mark, thereby constituting dilution of the Mark.
9

39.

Upon information and belief, Defendants had knowledge of Plaintiff’s use and

federal registration of the mark IT’S A 10, and dilution of Plaintiff’s It’s a 10 mark was willful.
40.

Plaintiff has been and continues to be damaged by Defendants’ infringing

activities.
COUNT III
FALSE DESIGNATION OF ORIGIN, FALSE ADVERTISING
AND UNFAIR COMPETITION
(15 U.S.C. §1125(a))

41.

Plaintiffs repeat and re-allege all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.
42.

Defendants use in commerce of the Infringing Domain Names in order to profit

off the goodwill and reputation associated with Plaintiff’s IT’S A 10 mark was intended to cause,
has caused and is likely to continue to cause confusion, mistake and deception among consumers
as to whether Defendants’ Infringing Domain Names are affiliated with, sponsored or approved
by Plaintiff It’s a 10, Inc
43.

The foregoing acts of Defendants constitute a false designation of origin, unfair

business practices and false and misleading descriptions and representations of fact, all in
violation of Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a).

COUNT IV
COMMON LAW TRADEMARK INFRINGEMENT
44.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.
45.

The acts of Defendants complained of herein constitute trademark infringement in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
10

46.

As a direct and proximate result of Defendants’ infringement, Plaintiff has

suffered, and will continue to suffer, monetary loss and irreparable injury to its business.

COUNT V
FLORIDA DECEPTIVE AND UNFAIR TRADE PRACTICES ACT
(F.S.A. § 501)

47.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.
48.

Defendants have engaged in unfair and deceptive acts or practices by Defendants’

use of the Infringing Domain Names in bad faith to drive traffic to Defendants’ Infringing
Websites and by creating a likelihood of public confusion as to the source of the goods and
services in violation of Florida law.
49.

Plaintiff has suffered damages relating to Defendants’ violation of the Deceptive

and Unfair Trade Practices Act F.S.A. § 501 by Defendant. The quantum of these damages will
be proven at trial.
COUNT VI
COMMON LAW UNFAIR COMPETITION UNDER STATE LAW
50.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of the Complaint as though the same were fully written herein.
51.

As a result of Defendants’ unlawful acts as described herein, Defendants have

misappropriated valuable property rights of Plaintiff It’s a 10, is trading on Plaintiff’s goodwill
and reputation associated with Plaintiff’s IT’S A 10 mark, and has and continues to create a
likelihood of confusion in violation of Florida state law.

COUNT VII
CYBERPIRACY
(15 U.S.C. § 1125(d))
11

42.

Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs of this complaint as though the same were fully written herein.
43.

By the actions alleged above, Defendants intentionally registered, used and will

continue to use the virtually identical and confusingly similar domain names, its-a-ten.com and
its-a-10.com in a bad faith effort to profit off of Plaintiff’s reputation and goodwill associated
with Plaintiff’s IT’S A 10 mark.
44.

Plaintiff’s Mark was distinctive and famous prior to Defendants’ registration and

use of the Infringing Domain Names.
45.

As a direct and proximate result of Defendants’ unlawful conduct, Plaintiff has

suffered irreparable harm to its valuable IT’S A 10 mark. Unless Defendants are restrained from
further infringement of the IT’S A 10 mark, Plaintiff will continue to be irreparably harmed.

COUNT VIII
UNJUST ENRICHMENT
52.

Pleading in the alternative, Defendants intentionally used and continue to use a

mark identical (or nearly identical) and confusingly similar to Plaintiff’s IT’S A 10 Mark to
divert consumers to the Infringing Websites in order to induce the sale of Plaintiff’s It’s a 10
products from Defendants’ Infringing Websites. As a result of Defendants’ infringing activities,
Defendants have been unjustly enriched at Plaintiff’s detriment and expense. The unauthorized
use of Plaintiff’s IT’S A 10 mark and the unauthorized use of depictions of Plaintiff’s It’s a 10
products conferred a monetary benefit upon Defendants and Defendants received and had
knowledge of such monetary benefit; Defendants voluntarily realized and retained such benefit
and the circumstances are as such that it would be inequitable to allow Defendants to retain such

12

monetary benefits and principles of equity and good conscience require that Defendants make
restitution to Plaintiff for damages related thereto.

DEMAND FOR JURY TRIAL
Plaintiff demands trial by jury on all issues triable to a jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully requests that the Court entered judgment against
Defendants as follows:
1.

That the Court issue temporary and permanent injunctive relief against

Defendants and that Defendants, their agents, servants, employees, attorneys, representatives,
successors and assigns and all persons, firms, or corporations in active concert or participation
with Defendants be enjoined and restrained preliminarily and permanently from:
(a) directly or indirectly infringing Plaintiff’s IT’S A 10 mark and/or holding
themselves out as Its-a-ten or Its-a-10 or any confusingly similar variation
thereof;
(b)

registering, using or trafficking any domain names that are confusingly
similar to Plaintiff’s Mark, including but not limited to domain names
containing Plaintiff’s Mark or any confusingly similar variation thereof;
and

(c)

using any trademark, domain name, trade name or any other designation of
source that is confusingly similar to Plaintiff’s IT’S A 10 mark for the

13

promotion, marketing or advertising of any product or service (“Infringing
Promotional Content”).
2.

That the Court order Defendants to remove any and all Infringing Promotional

Content that currently exists in the marketplace, including without limitation any and all
references to the Infringing Domain Names found on the internet websites YouTube, Twitter and
Facebook;.
3.

That the Court order the transfer of the Infringing Domain Names to Plaintiff It’s

a 10, Inc. or the forfeiture or cancellation of the Infringing Domain Names;
4.

That the Court award Plaintiff It’s a 10, Inc. all damages caused by Defendants as

a result of Defendants’ unlawful acts;
5.

That the Court award Plaintiff treble damages and punitive damages as provided

6.

That the Court award Plaintiff all gains, profits, and advantages derived from

by law;

Defendants’ unlawful acts;
7.

That Plaintiff recovers from Defendants its costs of this action, attorneys’ fees,

and prejudgment and post-judgment interest; and
8.

That the Court grant Plaintiff all other relief as the Court may deem just and proper.

Dated: July 25, 2011
Respectfully submitted,

Michael J. Sacks
_______________________________
Michael Sacks FBN: 65625
Brush & Sacks
7210 Wisteria Avenue
Parkland, FL 33076
[phone]
email: [e-mail]
14

OF COUNSEL:
Edward P. Kelly
Merry L. Biggerstaff
Tiajoloff & Kelly LLP
The Chrysler Building 37th floor
405 Lexington Avenue
New York New York 10174
212 490 3285
212 490 3295 (fax)

15