Polaris Industries Inc. et al v. Whois Privacy Protection Service, Inc.

Filing 1

Polaris Industries Inc. et al v. Whois Privacy Protection Service, Inc.

Doc. 1

IN THE UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

POLARIS INDUSTRIES INC.,

) ) Court File No. )

Plaintiff,
v.

)
) )

) COMPLAINT
) (Jury Trial Demanded)
) ) ) )

WHOIS PRIVACY PROTECTION
SERVICE, INC.,

Defendant.

Plaintiff Polaris Industries Inc. ("Polaris") for its Complaint against Defendant Whois
Privacy Protection Service, Inc. ("Defendant") alleges as follows:

PRELIMINARY STATEMENT
1. In May of 1985, Polaris introduced to the public POLARIS brand all-terrain

motor vehicles ("A TV"), which Polaris markets to consumers via numerous trade channels,

including dealers and the Internet. Polaris' POLARIS brand ATVs have been immensely
successful and have received an enormous amount of publicity and media attention throughout the
United States and the W orId.
2. Defendant, with constructive and actual knowledge of

Polaris' POLARIS brand,

registered the domain name polarisatv.com and began advertising, promoting, and offering links

from a website located at http://www.polarisatv.com. The links and products offered through
Defendant's links are identical to Polaris' goods sold under its POLARIS mark.
3. Polars and Defendant both use the Internet as a distribution channel and as a way

to access customers-the same customers that try to reach Polaris are likely to be tricked by
Defendant and its use of

the website located at http://www.polarisatv.com.

Dockets.Justia.com

4. Polaris seeks injunctive and monetary relief

with respect to Defendant's activities

that are likely to mislead and confuse consumers about the source, sponsorship, and affiliation of
POLARIS products and services, and that trade upon the goodwil of

Polaris' POLARIS mark.

THE PARTIES
5. Polars is a corporation in good standing organized under the laws of

the State of

Delaware, having its principal place of

business at 2100 Highway 55, Medina, Minnesota 55340.

6. Upon infonnation and belief, defendant Whois Privacy Protection Services, Inc is
a U.S. corporation with a principal place of

business at PMB 368, 14150 NE 20th St. - F1,

Bellevue, Washington 98007.

JURISDICTION AND VENUE
7. This is an action for trademark infrngement, unfair competition, dilution and

cyber-squatting under the Lanam Act, 15 U.S.C. §§ 1051 et seq., deceptive trade practices
arising under the Minnesota Deceptive Trade Practices Act, Minn. Stat. § 325D.43 et seq., unlawful trade practices under the Minnesota Unlawful Trade Practices Act, Minn. Stat.

§ 325D.09 et seq., and common law trademark infringement and unfair competition. This Court
has jurisdiction of

this action under 28 U.S.c. §§ 1331, 1332 and 1338, as well as 15 U.S.c.

§ 1121, as well as supplemental

jurisdiction under 28 U.S.c. § 1367. The amount in controversy,

exclusive of costs and interest, exceeds Seventy-Five Thousand Dollars ($75,000.00).
8. Venue is proper in this district under 28 U.S.C. § 1391. A substantial part of

the

events giving rise to the claim occurred in this district and a substantial part of property that is the
subject of

the action is situated in this jurisdiction.

THE BUSINESS OF PLAINTIFF
9. Polaris is a well-known manufacturer of

recreational sport vehicles, including

snowmobiles, ATVs, and motorcycles. Its products are distributed through more than 400
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independent dealers throughout the United States, and are also distributed internationally through
more than 750 dealers around the worId.
10. Polaris began manufacturing and selling ATVs in 1985 under the brand

POLARIS, and has continuously sold POLARIS brand A TVs, A TV accessories, and a wide

variety of other goods under the POLARIS mark since that time.
11. Consumers are invited to visit Polaris' online website located at
polarisindustries.com and view features, consider specifications, and see photos of

the POLARIS

A TV s. The website also provides links to online brochures and on online catalogs for purchasing

POLARIS ATV accessories.
12. Polaris has invested a significant amount of money to promote its A TV s under its

POLARIS mark. Polaris has also sold milions of

dollars worth of

POLARIS brand ATVs over

the past twenty-two years. As a result of

these extensive uses and promotion, ATV consumers

across the United States are aware of the POLARIS mark.
13. Polaris' POLARIS mark is distinctive for Polaris' ATVs and ATV accessories,

and was distinctive prior to the time Defendant began using the mark POLARIS in connection with the domain name polarisatv.com and the links associated with the website located at

http://www.polarsatv.com.
14. Polaris' POLARIS mark is recognized and relied upon as identifying Polaris as

the sole source of A TVs and A TV accessories, and as distinguishing Polaris' A TVs and

accessories from the products of others. As a result, Polaris' POLARIS mark has acquired

substantial goodwil and is an extremely valuable commercial asset. In addition, Polaris'
POLARIS mark is a famous mark and became famous prior to Defendant's adoption or use of

the

polarisatv.com mark and domain name.

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15. On December 23, 1985, Polaris applied for registration of the mark POLAR1S,

Application Ser. No. 73-574,748, in International Class 12 with the United States Patent and

Trademark Offce ("USPTO"). Polaris' application covered "motor vehicles, namely all-terrain
motor vehicles, and structural parts therefor." The USPTO granted Polaris a registration for its

POLARIS mark on July 29, 1986, issuing Reg. No.1 ,403,054. Registration No.1 ,403,054 is valid, subsisting, and enforceable. Moreover, Registration No.1 ,403,054 is incontestable and is
therefore conclusive evidence of the validity of the registered mark, of the registration of

the

mark, of

Polaris' ownership ofthe mark and of

Polars' exclusive right to use the mark in
the Lanam Act, 15 U.S.C.§§ 1065 and 1 i 15(b).

commerce pursuant to Section 15 and 33(b) of

16. Polaris also owns many other trademark registrations for the mark POLARIS for

A TV s, A TV accessories, motorcycles, snowmobiles, and other closely-related products and
services. A list of some of

Polaris' registrations is attached hereto as Exhibit 1.

UNLAWFUL CONDUCT BY DEFENDANT
17. Defendant had constructive notice of

Polaris' trademark rights in its POLARIS

trademark as of

December 23, 1985, based on Polaris' application to register POLARIS as a

federally registered trademark.
18. Defendant had no use of the POLARIS mark at the time Polars applied to register

its POLARIS mark with the USPTO.
19. Upon information and belief, on October 4, i 999, Defendant registered the

domain name polarisatv.com. At the time Defendant applied for that domain name, Polaris had already registered the mark POLARIS with the USPTO. Defendant was on notice that Polaris
had rights in the POLARIS mark, yet went ahead with the registration anyway.
20. Upon infonnation and belief, Defendant did not begin using the polarisatv.com

domain name to promote any goods or services for several years after initially registereing the
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domain name. Subsequently, Defendant began using the domain

name to promote A TV products

and accessories in direct competition to Polaris.
21. Defendant's website located at http://www.polarisatv.comis targeted to

consumers of

Polaris' POLARIS brand ATVs.
22. Upon learning of Defendant and their use of

the POLARIS trademark as a trade

name and trademark, Polaris sent actual notice to Defendant at least as earIy as August 20,2007,
stating that Polaris had superior rights in the POLARIS mark and that Defendant's use of

the

POLARIS mark was likely to cause confusion.
23. In response to Polaris' communication with Defendant, on August 22,2007,

Defendant offered to sell the domain name to Polars for $2,461.00. A copy of

the email is

attached hereto as Exhibit 2.
24. Despite its knowledge regarding Polaris' prior and superior rights in the

POLARIS mark and without the authorization of

Polaris, Defendant continues to promote ATVs

on the website located at http://www.polarsatv.com.
25. Defendant is aware of

the vast and valuable goodwil and reputation represented

and symbolized by Polaris' POLARIS mark. Defendant is also aware that Polaris' consumers and
potential consumers rely upon Polaris' POLARIS mark to distinguish Polaris' products from the
products of others.
26. Defendant's continued use of POLARIS mark as part of

their website is likely to

diminish the goodwill associated with Polaris' POLARIS mark.
27. Defendant's use of

the domain name polarisatv.com on the Internet corresponds
trade in selling and promoting its ATVs. Defendant and Polars

with one of

Polaris' channels of

offer their products and services to consumers across the United States through the Internet.

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28. Upon information and belief, Defendant derives and wil continue to deiive
substantial revenue from the use of

the domain name polarisatv.com and the website located at
the POLARIS mark.

http://www.polarisatv.com based on the use of

29. Defendant's activities are likely to cause confusion or mistake or to deceive
consumers into believing that its unauthorized use of

the POLARIS mark in connection with

A TV s is sponsored, licensed or authorized by, or affiliated, connected or otherwise associated

with Polaris.
30. Defendant's continued use of the POLARIS mark is with full knowledge of

the

prior ownership by Polaris of

its POLARIS mark and Polars' rights to use and control the use of

such mark.
31. Defendant has acted and continues to act without regard to Polaris' property rights
and goodwilL.

32. Defendant's unauthorized use of

the POLARIS mark in association with ATVs

has significantly injured Polars' interests and wil continue to do so unless immediately enjoined.
Specifically, Defendant (a) has traded upon and threatens to further trade upon the significant and

valuable goodwil in Polaris' POLARIS mark; (b) is likely to cause public confusion as to the
source, sponsorship or affiliation of Defendant's products; ( c) has damaged and threatens to

further damage Polaris' significant and valuable goodwill in its POLARIS mark; (d) has injured

and threatens to further injure Polaris' right to use its POLARIS mark as the exclusive indicia of
origin of Polaris' A TV s in Minnesota and throughout the United States; and (e) has lessened the
capacity of

Polaris' POLARIS mark to indicate that its products are sponsored by Polaris.
33. Upon information and belief, Defendant wil continue unlawfully to use

POLARIS mark to promote and provide their services, unless enjoined by the Court.
34. Polars has no adequate remedy at law.

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FIRST CLAIM FOR RELIEF INFRINGEMENT OF REGISTERED TRADEMARK AND SERVICE MARK UNDER THE LANHAM ACT -15 U.S.C. ~ 1114(1)
35. Polars repeats the allegations of paragraphs 1-34 of

this Complaint.

36. Defendant's use of

the POLARIS mark is likely to cause confusion, mistake, or

deception as to the source of origin of the products and services listed on the website

http://www.polarisatv.comin that customers and potential customers are likely to believe that the
products and services are provided by, sponsored by, approved by, licensed by, affiliated or
associated with, or in some other way legitimately connected to Polaris or its POLARIS brand
ATVs.
37. As a direct and proximate result of

the likely confusion, mistake, or deception,
the conduct of

Polaris has suffered and wil continue to suffer irreparable harm if

Defendant's is

not enjoined.

38. The likely confusion, mistake, or deception caused by Defendant is in violation of
Section 32(1) of

the Lanham Act, 15 U.S.C. § 1114(1).
Defendant's
Defendant's

39. Pursuant to 15 U.S.C. § 1117, Polaris is entitled to recover all of

profits, Polaris' damages, as well as the costs of

this action. The intentional nature of

unlawful acts renders this an "exceptional case," entitlng Polaris to enhanced damages and an
award of attorneys' fees under 15 U.S.C. § 1117(a).

SECOND CLAIM FOR RELIEF FEDERAL UNFAIR COMPETITION -15 U.S.c. ~ 1125(a)
40. Paragraphs 1 through 39 are incorporated and made a part of

this Claim.

41. Polaris' POLARIS mark is distinctive.

42. Defendant offers, promotes, and advertises services and links to products under
the POLARIS mark in interstate commerce.

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43. Defendant's use of

the POLARIS mark is likely to cause confusion, mistake, or

deception as to the source of origin ofthe products and services listed on the website
http://www.polarisatv.comin that customers and potential customers are likely to believe that the
products provided under POLARIS designation are provided by, sponsored by, approved by,

licensed by, affliated or associated with, or in some other way legitimately connected to Polaris.
44. As a direct and proximate result of

the likely confusion, mistake, or deception,

Polaris has suffered and will continue to suffer irreparable harm if the conduct of Defendant is not
enjoined.
45. The likely confusion, mistake, or deception caused by Defendant is in violation of
15 U.S.C. § 1125(a).

46. Pursuant to 15 U.S.C. § 1117, Polaris is entitled to recover all of

Defendant's
Defendant's

profits, Polaris' damages, as well as the costs of

this action. The intentional nature of

unlawful acts renders this an "exceptional case," entitling Polaris to enhanced damages and an
award of

attorneys' fees under 15 U.S.C. § 1117(a).

THIRD CLAIM FOR RELIEF VIOLATION OF ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT15 U .S.C. ~ 1125( d)

47. Paragraphs 1 through 46 are incorporated and made a part ofthis Claim.

48. Defendant, in bad faith, registered, trafficked, used and continues to traffic and
use the domain

name polarisatv.com, which is confusingly similar to Polaris' POLARIS mark.

49. Defendant's registration, trafficking, and use of the domain name as described

above constitutes cyberpiracy and trademark infrngement of

Polaris' distinctive POLARIS

trademark in violation of Section 43( d) of the Lanham Act, 15 U.S.C. § 1125( d).

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50. As a result of

Defendant's above-described conduct, Polaris has suffered and

continues to suffer damages including, without limitation, the loss of revenue Polars would have
made but for Defendant's acts, in an amount to be proven at triaL.
51. Defendant's acts of cyberpiracy have also caused and are causing irreparable

injury to Polaris and to the business reputation and goodwil represented by Polaris and its
POLARIS mark.
52. Unless enjoined by this court, Defendant's above-described conduct wil cause

further irreparable injury, for which Polaris has no adequate remedy at law for the reasons: (1)
that Defendant's use and control of

the domain name polarisatv.com prevents Polaris from

possessing the domain name that is rightfully Polaris'; (2) current prospective customers who type

the domain name when seeking to find Polaris are directed elsewhere which wil cause such
prospective customers to become frstrated and discontinue seeking Polaris; (3) customers

attempting to reach Polaris who are directed to the website now located at polarisatv.com may
believe that Polaris has changed locations, designs of its website or broken away from Polaris'
main company.
53. Pursuant to 15 U.S.C. § 1117, Polaris is entitled to recover the costs of

this action

and statutory damages in the amount of not less than $1,000 and not more than $100,000 per
domain name or all of

Defendant's profits and all damages sustained by Polaris. The intentional

nature of

Defendant's unlawful acts renders this an "exceptional case," entitling Polaris enhanced

damages and an award of attorneys' fees under 15 U.S.c. § 1117(a).

FOURTH CLAIM FOR RELIEF DILUTION UNDER THE LANHAM ACT -15 U.S.c. ~ 1125(c)

54. Paragraphs 1 through 52 are incorporated and made a part of this Claim.

55. Polaris' POLARIS trademark is a famous and distinctive mark.
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56. Defendant's use in commerce of

the brand names POLARIS and POLARIS ATV

and the domain name polarisatv.com is without permission, consent, or authorization of Polaris
and lessens or is likely to lessen the capacity of

Polaris' unique, distinctive, and famous

POLARIS trademark to identify POLARIS brand ATVs and other products.
57. Upon information and belief, Defendant's adoption and use of

the brand names

POLARIS and POLARIS A TV and the domain name polarisatv.com was undertaken in bad faith

and in disregard of the resultant damage and injury to Polaris and its trademark.
58. Defendant's actions constitute dilution of the distinctive quality of

the famous

POLARIS trademark in violation of

Section 43(c) of

the Lanham Act, 15 U.S.C. § 1125(c).

59. Defendant's actions have been intentional, wilful and committed in bad faith.
60. Defendant's actions have caused and are likely to cause great and irreparable

harm and damage to Polaris and, unless permanently restrained and enjoined by this Court, such

irreparable hann will continue.
61. Based on Defendant's wilful violation and pursuant to 15 U.S.C. § 1117, Polaris

is entitled to recover all of

Defendant's profits, Polars' damages, as well as the costs of

this

action. The intentional nature of

Defendant's unlawful acts renders this an "exceptional case,"

entitling Polaris to enhanced damages and an award of attorneys' fees under 15 U.S.C. § 1117(a).

FIFTH CLAIM FOR RELIEF DECEPTIVE TRADE PRACTICES - MINN. STAT. 325D.44
62. Paragraphs 1 through 61 are incorporated and made a part of this Claim.

63. Defendant has engaged in deceptive trade practices in violation of

Minn. Stat.

§ 325D.44, including Minn. Stat. § 325D.44, subdivisions (1) through (5), because their use ofthe
POLARIS designation is likely to cause confusion, mistake, or deception as to the source of
origin of

the products and services listed on the website http://www.polarisatv.comin that

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customers and potential customers are likely to believe that the A TV s provided under the

POLARIS designations are provided by, sponsored by, approved by, licensed by, affiliated or
associated with, or in some other way legitimately connected to Polaris or its products under its
POLARIS mark.
64. As a direct and proximate result of

the likely confusion, mistake, or deception,

Polaris has suffered and wil continue to suffer irreparable harm if the conduct of Defendant is not
enjoined.
65. Pursuant to Minn. Stat. § 325D.45, Polars is entitled to recover its costs and

attorneys' fees.

SIXTH CLAIM FOR RELIEF UNLAWFUL TRADE PRACTICES ACT - MINN. STAT. ~ 325D.15
66. Paragraphs 1 through 65 are incorporated and made a part of

this Claim.

67. Defendant has engaged in unlawful trade practices in violation of

Minn. Stat.

§ 325D.09 et seq. because their use of

POLARIS designation is likely to cause confusion,

mistake, or deception as to the source of origin of the products and services listed on the website

http://www.polarisatv.comin that customers and potential customers are likely to believe that the
ATVs listed under the POLARIS designations are provided by, sponsored by, approved by, licensed by, affiliated or associated with, or in some other way legitimately connected to Polaris
or its products under its POLARIS mark.
68. As a direct and proximate result of

the likely confusion, mistake, or deception,
the conduct of

Polaris has suffered and wil continue to suffer irreparable harm if

Defendant is not

enjoined.
69. Pursuant to Minn. Stat. § 325D.15 and § 8.31, subd. 3a, Polaris is entitled to

recover its costs, disbursements, and reasonable attorneys' fees.

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SEVENTH CLAIM FOR RELIEF COMMON LAW TRADEMARK INFRINGEMENT
70. Paragraphs 1 through 69 are incorporated and made a part of this Claim.

71. Polaris' POLARIS mark is distinctive.

72. Defendant's use of

POLARIS designation is likely to cause confusion, mistake, or

deception as to the source of origin of the products and services listed on the website

http://www.polarisatv.comin that customers and potential customers are likely to believe that the
A TV parts and accessories provided under the POLARIS designations are provided by, sponsored

by, approved by, licensed by, affiliated or associated with, or in some other way legitimately
connected to Polaris or its products under its POLARIS mark..
73. Defendant's acts constitute trademark infrngement under the common law.

74. Defendant's acts were taken in wilful, deliberate, and/or intentional disregard of
Polaris'

rights.
75. Polaris has suffered irreparable har, for which it has no adequate remedy at law,

and will continue to suffer irreparable injury unless and until Defendant's infrnging acts are
enjoined by this Court.

EIGHTH CLAIM FOR RELIEF COMMON LAW UNFAIR COMPETITION
76. Paragraphs 1 through 75 are incorporated and made a part of

this Claim.

77. Defendant's conduct constitutes unfair competition in violation of

the rights of

Polaris.
78. As a direct and proximate result of the unfair competition of

Defendant, Polaris

has suffered and wil continue to suffer irreparable harm if the conduct of Defendant is not

enjoined.

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79. Defendant's acts were taken in wilful, deliberate and/or intentional disregard of

Polaris' rights.

80. Polaris respectfully requests a jury trial for this matter.

PRAYER FOR RELIEF
WHEREFORE, Polaris respectfully requests judgment against Defendant as follows:

A. Permanently enjoining and restraining Defendant and its respective
partners, agents, servants, employees and attorneys, and those persons in active concert or
participation with Defendant from:
1. Using on or in connection with the production, manufacture,

advertisement, promotion, display (including on the Internet) or otherwise,

displaying for sale, offering for sale, sale, or distribution of any product or service
or for any purposes whatsoever, the POLARIS mark.
2. Representing by any means whatsoever, directly or indirectly, or doing

any other acts or things calculated or likely to cause confusion, mistake or to

deceive purchasers into believing that the products and services listed on the
website http://www.polarisatv.com originate with or are the products of

Polaris or

that there is any affiliation or connection between Polaris and its products and

Defendant and the products and services listed on the website
http://www.polarisatv.com. and from otherwise competing unfairIy with Polaris;
B. Directing that Defendant, at its own expense, recall all the marketing,

promotional and advertising materials and edit any websites that bear or incorporate any
mark or design with POLARIS not in conformance with Section A(1) of

Polaris' Prayer

For Relief, or any mark confusingly similar to Polaris' POLARIS mark, which has
distributed, sold or shipped by it;
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C. For an Order requiring Defendant to transfer ownership ofthe domain

name polarisatv.com to Polaris;

D. Directing that Defendant deliver to Polaris' attorneys or representatives
for destruction all labels, signs, prints, packages, molds, plates, dies, wrappers,

receptacles, and advertisements in its possession or under its control, bearing the nonconforming POLARIS mark or any simulation, reproduction, copy or colorable imitation
of

Polaris' POLARIS mark, and all films, discs, plates, molds, matrices, and any other

means of making the same.
E. Directing such other relief as the Court may deem appropriate to prevent

the trade and public from forming any erroneous impression that any product promoted

or provided by Defendant is authorized by Polaris or related in any way to Polars'
products.
F. Directing Defendant to file with this Court and to serve upon Polaris

within thirty (30) days after service upon Defendant of an injunction in this action, a

written report by Defendant, under oath, setting forth in detail the manner in which
Defendant has complied with the injunction.

G. Awarding Polaris as damages Defendant's profits from proceeds from the
website http://www.polarisatv.com and from any other good or service sold in connection
with the POLARIS designation.

H. For all damages available under federal or state common law or statute,
including but not limited to actual, exemplary and statutory damages. Plaintiff
specifically reserves its right to seek statutory damages under 15 U.S.C. § 1117(d).
1. A warding Polars its damages by reason of Defendant's actions of

common law trademark infrngement in an amount to be established at triaL.
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J. Awarding Polars reasonable attorneys' fees and the costs of

this action.

K. A warding Polaris such further relief as this Court deems just and proper.

MERCHANT & GOULD
By:
Dated: September 18, 2007

Scott W. John n #0247558
Wili

a . chultz, MN # 0323482

3200 IDS Center 80 South Eighth Street Minneapolis, MN 55402-2215
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintif

Polaris Industries, Inc.

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