Entrepreneur Media, Inc. v. SEATTLEENTREPRENEUR.COM et al

Filing 1

COMPLAINT against AUSTINENTPRENEUR.COM, SEATTLEENTREPRENEUR.COM ( Filing fee $ 350 receipt number 14683020893.), filed by Entrepreneur Media, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H Part i, # 9 Exhibit H Part ii, # 10 Exhibit I, # 11 Exhibit J, # 12 Civil Cover Sheet, # 13 Receipt)(nhall)

FILED
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

ENTREPRENEUR MEDIA, INC.,
2445 McCabe Way. Suite 400
Irvine. California 92614
Plaintiff.
v.

SEATTLEENTREPRENEUR.COM &

AUSTINENTPRENEUR.COM, each an
Internet Domain Name.

Registrant:
Oleg Nevzorov
Molotova-23

Moscow 7789966
Russian Federation
Defendants.

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2011 APR 15 P 2=3b
CLERK US DISTRICT COURT

Civil Action NoA^fW^

VERIFIED COMPLAINT ! <)R INJUNC IWE RELIEF

Plaintiff Entrepreneur Media, Inc. ("Plaintiff or "EMI") for its Complaint alleges the
following in support of its in rem claim against the Internet Domain Names
sealileentrepreneur.com and austinentrepreneur.com (the "Defendant Domain Names7*):
NATURE OF THE ACTION

1.

Plaintiff files this in rem action asserting a claim for cyberpiracy under the

Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. §§ 1125(d), et seq.
2.

The Defendant Domain Names are confusingly similar to Plaintiffs world-famous

ENTREPRENEUR® trademark and are being used by the registrant with a bad faith intent to

profit from Plaintiffs substantial investment in the ENTREPRENEUR® mark.

3.

In bringing this lawsuit, Plaintiffseeks a permanent injunction providing for the

transfer of the Defendant Domain Names to Plaintiff EMI.
JURISDICTION AND VENUE

4.

This Court has subject matter jurisdiction over this claim pursuant to 28 U.S.C.

§§1331 and 1338(a).

5.

This Court has in rem jurisdiction over the Defendant Domain Names pursuant to

15 U.S.C. § 1125(d)(2)(A)(ii)(I) because the Plaintiffcannot obtain inpersonam jurisdiction

overthe registrant of the Defendant Domain Names because the registrant is located outside of
the United States and is not subject to personal jurisdiction in the United States. In rem

jurisdiction is proper in this district pursuant to 15 U.S.C. § 1125(d)(2)(C)(i) because thedomain
name registry, VeriSign, Inc., 21355 Ridgetop Circle, Dulles, Virginia 20166 ("VeriSign", the

operator of the authoritative domain name registry forall .com domains) is located in this
district. Further, under 15 U.S.C. §1125(d)(2)(C)(ii), upon commencement of this case,
documents sufficient to establish control and authority regarding the disposition of the

registration of the Defendant Domain Names will be expeditiously deposited with the Court.
6.

Venue is proper in this district under 28 U.S.C. § 1391(b)(2)and 15 U.S.C.

§§ 1125(d)(2)(A) and (C) because the registry that registered or assigned the Defendant Domain
Names is located in this district. Copies of the WHOIS records for each of the Defendant

Domain Names as of April 15,2011, are attached hereto as Exhibit A.
THE PARTIES

7.

EMI is a California corporation with its principal place of business at 2445

McCabe Way, Suite. 400, Irvine, California 92614.

8.

The Defendant Domain Names are listed in each respective WHOIS record as

registered to "Oleg Nevzorov" with the address of Molotova-23, Moscow 7789966, Russian
Federation with an email address [e-mail].

FACTUAL BACKGROUND

EMI's Trademark Rights
9.

EMI is a well-known publisher of magazines and business guides, including

ENTREPRENEUR MAGAZINE® and other publications incorporating the
ENTREPRENEUR® trademark in their titles. ENTREPRENEUR MAGAZINE® is published

monthly with a current paid circulation, including both subscriptions and newsstand sales, of
more than 500,000 in the United States. ENTREPRENEUR MAGAZINE® is also sold and

currently distributed in over 100 foreign countries.
10.

Beginning in 1978, EMI has continuously used its trademark ENTREPRENEUR®

to identify its magazines, business guides, video and audio tapes, computer software programs,
web pages, on-line services, other services in connection with conducting trade shows and
educational seminars, advertising, membership and other business services. EMI has

prominently displayed the mark ENTREPRENEUR® on letterheads, promotional literature,
media advertising and in periodicals circulated throughout the United States.
11.

In addition to the goods and services described above, EMI also maintains a

number of websites, including www.entrepreneur.com ("Entrepreneur.com"), through which it

disseminates editorial content and other information, as well as offers products and services
related or of interest to small and midsize businesses, business owners, and prospective business
owners.

12.

EMI owns all rights and interest to the ENTREPRENEUR® trademark for various

goods and services in a number of International Classes includingClasses 9, 16, 35, 38, and 41.

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EMI owns, interalia, the following United States Trademark Registration Nos. for the
ENTREPRENEUR® trademark: 1,453,968; 3,520,633; 2,502,032; and 2,263,883. These

registrations are valid and subsisting and in full force and effect. True and correct copies of the
registration certificates for the cited registrations are attached hereto as Exhibit B.
13.

Additionally, EMI owns, inter alia, all rights and interest to the following United

States Trademark Registration Nos. for marks incorporating the term ENTREPRENEUR for use
in connection with online and/or Internet services: 3,470,064; 3,924,374; 3,519,022; 3,470,063;

3,266,532; 3,374,476; and 3,652,950. These registrations are valid and subsisting and in full

force and effect. True and correct copies of the registration certificates for the cited registrations
are attached hereto as Exhibit C.

14.

EMI has continuously and extensively used, advertised, marketed and promoted

the ENTREPRENEUR® mark in the United States and many foreign countries in connection

with its goods and services, including its magazineand other publications. EMI has spent
millions of dollars and has expended significant effort in promoting its goods and services under
the ENTREPRENEUR® mark through various means, including its Internet site,

Entrepreneur.com. As a result of EMI's substantial investment in developing and promoting the
ENTREPRENEUR® trademark, it has come to identify and distinguish EMI's goods and

services and represents enormous goodwill of great value belonging exclusively to EMI.
The Defendant Domain Names

15.

The Defendant Domain Names are located at the following internet addresses:

http://seattleentrepreneur.com/ and http://austinentrepreneur.com/.
16.

EMI learned of the registration and use of the Defendant Domain Names, along

with a number of other similar domain names that infringed EMI's trademark rights in early
2010. The Defendant Domain Names were then registered by Mr. Dale Tincher,

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Consultwebs.comat the address 9913 Grayln Road, Raleigh, North Carolina. Copies of the
WHOIS records for the Defendant Domain Names from May 2010 are attached hereto as
Exhibit D.

17.

In May 2010, shortly after EMI became aware of the registration of the Defendant

Domain Names and others by Mr. Tincher, EMI sent a letter by counsel to Mr. Tincher advising
him of EMI's trademark rights and that his registration of the Defendant Domain Names and

other similar domain names was an infringement of EMI's trademark rights. EMI's counsel also
demanded that Mr. Tincher transfer the domain names at issue to EMI and cease his infringing
use of the ENTREPRENEUR® mark. A copy of the May 10, 2010 letter to Mr. Tincher is
attached hereto as Exhibit E.

18.

EMI received no response from Mr. Tincher to its May 10,2010 letter.

Subsequent to receipt of EMI's letter, the Defendant Domain Names were transferred by Mr.
Tincher to Vadim Piletsky at the address Zabolontnogo-114, Kiev, Ukraine 01365. Copies of the
WHOIS records for the Defendant Domain Names from December 2010 and reflecting such
transfer are attached hereto as Exhibit F.

19.

After learning of Mr. Tincher's transfer of the Defendant Domain Names to Mr.

Piletsky, EMI, through counsel, wrote to Mr. Piletsky notifying him of EMI's trademark rights in
the ENTREPRENEUR® mark, of his infringement of EMI's rights in the ENTREPRENEUR®

mark through his use and registration of the Defendant Domain Names and demanding that Mr.
Piletsky transfer the Defendant Domain Names to EMI. A copy of the February 17,2011 letter
to Mr. Piletsky from EMI's counsel is attached hereto as Exhibit G.

20.

Mr. Piletsky responded via email to EMI's counsel on February 20,2011 refusing

to transfer the domains to EMI, but offering to sell the domains to EMI for a "reasonable" price.

A copy of Mr. Piletsky's February 20,2011 response to EMI's counsel's letter is attached hereto
as Exhibit H.

21.

On February 19, 2011, prior to responding to EMI's counsel on February 20,2011

and offering to sell the Defendant Domain Names to EMI, Mr. Piletsky transferred the Defendant
Domain Names to Oleg Nevzorov. A copy of the current WHOIS records for the Defendant
Domain Names reflecting such transfer is attached at Exhibit A.
22.

The Defendant Domain Name seattleentrepreneur.com completely encompasses

EMI's ENTREPRENEUR® trademark in its entirety preceded only by the descriptive

geographic word"Seattle" and is confusingly similar to the ENTREPRENEUR® trademark and
to the Entrepreneur.com domain nameowned by EMI. Use of the ENTREPRENEUR®
trademark in the Defendant Domain Name seattleentrepreneur.com is likely to cause confusion
or mistake as to whether EMI is the source or sponsor of, is affiliated with, or endorses the
Defendant Domain Name.

23.

The Defendant Domain Name seattleentrepreneur.com is used to display a website

that features content such as links to "Start Biz," "Local Biz," "Run Biz," "Marketplace," "Biz

Resources," and pay per click advertisements to sites suchas "Bloomburg.com Radio 24/7,"

"Yellow Page Search," and "Business Search," among many others. The site also includes a
section titled "Seattle, WA, Entrepreneurial and Business News" and a section titled

"Entrepreneur Essentials" with links to "AudioUniverse* CBS MarketWatch* StrategyWeek*
MyPrimeTime." A trueand correct copy of the home page of the Defendant Domain Name
seattleenu-epreneur.com is attached hereto as Exhibit I.
24.

The Defendant Domain Name austinentrepreneur.com completely encompasses

EMI's ENTREPRENEUR® trademark in its entirety preceded only by the descriptive

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geographic word "Austin" and is confusingly similar to the ENTREPRENEUR® trademark and

to the Entrepreneur.com domain name owned by EMI. Use of the ENTREPRENEUR®

trademark in the Defendant Domain Name austinentrepreneur.com is likely to cause confusion or
mistake as to whether EMI is the source or sponsor of, is affiliated with, or endorses the
Defendant Domain Name.

25.

The Defendant Domain Name austinentrepreneur.com is also used to display a

website that features content such as links to "Start Biz," "Local Biz," "Run Biz,"

"Marketplace," "Biz Resources," and pay per click advertisements to sites such as
"Bloomburg.com Radio 24/7," "Yellow Page Search," and "Business Search," among many
others. The site also includes a section titled "Austin, TX, Entrepreneurial and Business News"
and a section titled "Entrepreneur Essentials" with links to "AudioUniverse* CBS MarketWatch*
StrategyWeek* MyPrimeTime." A true and correct copy of the home page of the Defendant
Domain Name austinentrepreneur.com is attached hereto as Exhibit J.

26.

A copyright notice is listed at the bottom of the pages on the Defendant Domain

Names that reads "2000 - 2011 Consultwebs.com - All rights reserved."
27.

The unauthorized use of the ENTREPRENEUR® mark in the Defendant Domain

Names and throughout the seattleentrepreneur.com and austinentrepreneur.com websites, in
connection with content related to starting a business, local businesses, and running a business, is

likely to cause confusion as to the source or sponsorship of the Defendant Domain Names and
the content offered on the related websites.

28.

The Defendant Domain Names were registered and used in bad faith in violation of

the ACPA. The Defendant Domain Names divert consumers from EMI's online sites, such as

Entrepreneur.com and others by creating a likelihood of confusion as to whether EMI is the

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source or sponsor of, is affiliated with, or endorses the Defendant Domain Names, their websites
and content thereon. Such intent to create a likelihood of confusion is evidence of bad faith

pursuant to 15 U.S.C. § 1125(d)(l)(B)(i)(V).

29.

Registrationof both the seattleentrepreneur.comand the austinentrepreneur.com

domains by the same individual, Oleg Nevzorov, after multiple notices of EMI's trademark
rights in the ENTREPRENEUR® mark, is further evidence of bad faith pursuant to 15 U.S.C.

§1125(d)(l)(B)(i)(VIII), because Oleg Nevzorov, and others prior to him, knowingly registered
multiple domain names which are identical or confusingly similar to EMI's distinctive
ENTREPRENEUR® mark.

30.

EMI has not authorized the use of the ENTREPRENEUR® trademark in

connection with either of the Defendant Domain Names.

CLAIM FOR RELIEF

(Cyberpiracy)

31.

EMI incorporates and realleges by reference Paragraphs 1 through 30, as though

set forth in full herein.

32.

The actions described above evidence bad faith intent to profit from the

registration or use of the ENTREPRENEUR® trademark and confusingly similar variations
thereof in the Defendant Domain Names.

33.

Plaintiff is entitled to an order and injunction immediately transferring the

Defendant Domain Names to Entrepreneur Media, Inc.
WHEREFORE, Plaintiff prays for judgment as follows:

A.

That VeriSign be ordered to transfer the registration of the Defendant Domain

Names to Entrepreneur Media, Inc.;

B.

Awarding Entrepreneur Media. Inc. its reasonable costs and attorneys fees; and

C.

For such other relief that the Court may considerjust and appropriate.

Dated: April 15.2011

Respectfully submitted.

tet^uvfcr
Edwin L. Fountain (Va. Bar No. 31918)

Tara Lynn R. Zurawski (Va. Bar No. 73602)
JONES DAY

51 Louisiana Avenue, N.W.

Washington. DC 20001
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
OfCounsel:
Mark A. Finkelstein
JONES DAY

3161 Michelson Drive, Suite 800
Irvine, CA 92612

Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

Ashley H. Zito
JONES DAY

1420 Peachtree Street, N.E.
Suite 800

Atlanta, GA 30309

Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Counsel for Plaintiff Entrepreneur Media. Inc.

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VERIFICATION

Ronald L. Young, under penaltyof perjuryof the laws of the United States, declares:
That he is an officerof Entrepreneur Media, Inc. and directs Entrepreneur Media, Inc.'s
trademark enforcement program; that he has read, is familiar with, and has personal knowledge
of the contents of the foregoing Verified Complaint and that the allegations thereof are true and
correct. To the extent that matters are not within his personal knowledge, the facts stated therein
havebeen assembled by authorized personnel, including counsel, and he is informed that the
facts stated therein are true and correct.

Executed thisof^ay ofApril, 2011 in Irvine, California.

Ronald L. Young, Esq.

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