Happy Halloween, Inc. et al v. Screams, LLC

Filing 1

COMPLAINT against defendant(s) Screams, LLC (Receipt # 0981-2553345), filed by Happy Halloween, Inc., TODD JAMES. (Attachments: # 1 Civil Cover Sheet, # 2 Summons)(Newman, Derek)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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Happy Halloween, Inc., a Texas Corporation,
and Todd James, an individual, d/b/a Happy
Halloween, Inc.

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Plaintiffs,

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vs.

No.
COMPLAINT FOR
DECLARATORY AND
INJUNCTIVE RELIEF WITH
JURY DEMAND

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Screams, LLC, a Texas Limited Liability
Company,

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Defendant.

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I.

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NATURE OF THE CASE

This Action is brought under the Declaratory Judgment Act, 28 U.S.C. §§ 2201

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and 2202, and seeks injunctive relief under 15 U.S.C. § 1114(2)(D)(iv)-(v). Happy

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Halloween, Inc., and Todd James (together, “Plaintiffs”) ask this Court 1) to declare that

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its registration and use of the domain name <screams.com> (the “Domain Name”) is not

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unlawful under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §

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1125(d), and 2) to prevent the transfer of the Domain Name <screams.com> from

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Plaintiffs to Defendant.

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COMPLAINT- 1

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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II.
1.

PARTIES

Plaintiff Happy Halloween, Inc. (“Happy Halloween”) is a company

organized and existing under the laws of the State of Texas having a principal place of
business in Fort Worth, Texas, and is the registrant of the Domain Name <screams.com>.
2.

Plaintiff Todd James is an individual domiciled in the State of Texas and

doing business as Happy Halloween, Inc.
3.

Defendant Screams, LLC (“Defendant”) is, upon information and belief, a

limited liability company organized and existing under the laws of the State of Texas,
having a principal place of business in Waxahachie, Texas.

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III.
4.

JURISDICTION AND VENUE

Jurisdiction in this Court is proper under 28 U.S.C. § 1331 because this

Action raises federal questions under 15 U.S.C. § 1114, the Anticybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d), and the Declaratory Judgment Act, 28
U.S.C. §§ 2201 and 2202.
5.

Jurisdiction is further proper because Defendant has directed activity into

this judicial district with the intent to deprive Plaintiffs of rights under a contract having
situs in this judicial district.
6.

This Court has personal jurisdiction over Defendant because Defendant

agreed to submit to the jurisdiction of this Court when it initiated an administrative
proceeding with the National Arbitration Forum concerning the Domain Name.
Specifically, Defendant submitted to the jurisdiction where the registrar of the Domain
Name is located, and the registrar of the Domain Name is located in this judicial district.
7.

Venue is proper under 28 U.S.C. § 1391(b)(2). A substantial part of the

events giving rise to this Action occurred in this District and a substantial part of the
property that is the subject of this Action is situated in this District. Venue is also proper
under 15 U.S.C. § 1125(d)(2)(C)(i) because the registrar of the Domain Name which is
the subject of this Action, Dotster, Inc., is a company organized and existing under the
laws of the State of Washington, having a principal place of business in Vancouver,

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COMPLAINT- 2

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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Washington.

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IV.
8.

FACTS

Happy Halloween operates “Cutting Edge Haunted House,” a nationally

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well known haunted house located in Fort Worth, Texas. “Cutting Edge Haunted House”

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has been voted one of the best haunts in the country by Hauntworld.com and named one

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of America’s top thirteen haunted houses by Hauntedhouseratings.com. The Travel

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Channel featured the haunted house in its program “America’s Scariest Haunted

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Attractions” and the Guinness Book of World Records has named it the longest walk-

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through haunted house.

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9.

Happy Halloween is the registrant of the Domain Name <screams.com>.

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On January 22, 1997, Happy Halloween registered the domain with the domain registrar,

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Dotster, Inc. (“Dotster”).

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10.

At all times since registration of the Domain Name <screams.com>, Happy

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Halloween has used the Domain Name in association with its legitimate business of

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operating haunted houses.

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11.

Happy Halloween chose the Domain Name <screams.com> because

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“screams” is a generic term characteristic of the Halloween season and for several years

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used the domain to redirect to its main website located at

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www.cuttingedgehauntedhouse.com. Now the Domain Name does not redirect; rather, it

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resolves directly to a website advertising the Cutting Edge Haunted House.

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12.

Upon information and belief, Defendant also operates haunted houses.

Defendant operates the Screams Halloween Theme Park located in Waxahachie, Texas.
13.

Defendant has registered the mark “SCREAMS” and claims a trademark in

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the term “screams” in connection with “amusement park services, namely, a Halloween

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theme park including haunted houses, haunted hayrides, drama exhibitions and

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amusements” (U.S. Trademark Registration 2,052,919).

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14.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is

a private-sector, not for profit corporation created to assume responsibility for, among
COMPLAINT- 3

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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other things, IP address space allocation and domain name system management. ICANN

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promulgated the Uniform Domain Name Dispute Resolution Policy (“UDRP”), a uniform

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process for the administrative resolution of disputes regarding registration of domain

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names.

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Dotster’s registration agreement requires domain registrants to agree to

resolve domain disputes brought by third parties in accordance with the UDRP.
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The UDRP requires that a registrant submit to a mandatory administrative

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proceeding in the event a third party asserts that (i) the domain at issue is identical or

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confusingly similar to a trademark in which the complaining third party has rights; (ii) the

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registrant has no rights or legitimate interests in the domain; and (iii) the domain has been

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registered and is being used in bad faith.

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17.

On July 27, 2011, Defendant submitted a Complaint to the National

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Arbitration Forum (“NAF”) pursuant to the UDRP, Claim No. FA1107001400621.

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Defendant challenged the registration of the Domain Name <screams.com> and sought

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the transfer of the Domain Name from the Plaintiffs to Defendant.

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Prior to July, 2011, no other domain name dispute claim had been filed by

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Defendant, or anyone else, against Happy Halloween. Defendant’s was the first filed

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complaint concerning the Domain Name in the more than fourteen years that Happy

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Halloween held and used the Domain Name.

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19.

On August 31, 2011, a single-member NAF Panel issued its decision in the

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Domain Name dispute (the “UDRP Decision”). The Panel found that Defendant had

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established the three elements required under the ICANN policy, noted in Paragraph 16

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above, and ordered the transfer of Domain Name <screams.com> from Plaintiffs to

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Defendant.

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The Domain Name <screams.com> is subject to imminent transfer as a

result of the UDRP Decision.
21.

This Court is in no way bound by the NAF’s August 31, 2011 ruling nor is

the UDRP Decision due any deference. This Court should perform a de novo review of
COMPLAINT- 4

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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the allegations presented herein.
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use of the Domain Name is not in violation of the ACPA.
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Happy Halloween has neither registered nor used the Domain Name in bad

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The UDRP Decision was improper and Happy Halloween’s ownership and

Happy Halloween has at all times used the Domain Name in connection

faith.

with its own legitimate haunted house business services.
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Happy Halloween does not seek to divert Defendant’s customers nor does

Happy Halloween use the Domain Name with any intent to tarnish or disparage the
Defendant’s mark or the Defendant.
26.

Happy Halloween has never offered to sell or otherwise assign the Domain

Name to Defendant or to any other party for financial gain.
27.

Happy Halloween registered the Domain Name before Defendant had

registered the trademark “SCREAMS” in any jurisdiction.
28.

Defendant has overreached its trademark rights and wrongfully asserted a

claim to the Domain Name.
29.

Happy Halloween’s registration and use of Domain Name is not unlawful

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under the ACPA, and Happy Halloween therefore has every right to possess and maintain

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this asset which is very valuable to its business.

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30.

Happy Halloween is entitled to injunctive relief preventing the transfer of

the Domain Name from Happy Halloween to Defendant.
31.

Contemporaneous with the filing of this Complaint with the Court, Happy

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Halloween has provided notice of the same upon Defendant, its attorney, the National

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Arbitration Forum and the sponsoring registrar for the Domain Name, Dotster.

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V.
FIRST CAUSE OF ACTION
DECLARATORY JUDGMENT
ANTICYBERSQUATTING CONSUMER PROTECTION ACT

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32.

Plaintiffs hereby incorporate the allegations in paragraphs 1-31 above as if

stated fully herein.
COMPLAINT- 5

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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33.

A dispute exists between Happy Halloween and Defendant concerning

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Happy Halloween’s right to use the Domain Name. That Domain Name is now subject to

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imminent transfer. Therefore, an actual and justiciable controversy exists between Happy

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Halloween and Defendant.

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34.

At the time Happy Halloween registered the Domain Name, Defendant’s

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alleged SCREAMS trademark was neither “distinctive” nor “famous” as provided under

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15 U.S.C. § 1125(d)(1)(A)(iii).

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35.

Happy Halloween has neither registered nor used the Domain Name in bad

faith. In registering and using the Domain Name, Happy Halloween has at all times

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lacked any “bad faith intent” as provided in 15 U.S.C. § 1125(d)(1)(a)(i) to profit from

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Defendant’s alleged trademark.

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36.

Plaintiffs had reasonable grounds to believe that Happy Halloween’s

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registration and use of the Domain Name was a fair use or otherwise lawful, as provided

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in 15 U.S.C. § 1125(d)(1)(B)(ii).

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37.

Happy Halloween’s registration and use of the Domain Name is not

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unlawful under the ACPA and does not violate Defendant’s rights, and the UDRP

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Decision is contrary to law.

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38.

Happy Halloween will be irreparably harmed if the Domain Name is

transferred to Defendant.

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VI. SECOND CAUSE OF ACTION
DECLARATORY JUDGMENT
LANHAM ACT

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39.

Plaintiffs hereby incorporate the allegations in paragraphs 1-38 above as if

stated fully herein.
40.

A dispute exists between Happy Halloween and Defendant concerning

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Happy Halloween’s right to use the Domain Name. That Domain Name is now subject to

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imminent transfer. Therefore, an actual and justiciable controversy exists between Happy

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Halloween and Defendant.

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41.

Happy Halloween’s registration and use of the Domain Name are not likely

COMPLAINT- 6

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

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association of Plaintiffs with Defendant, or as to the origin, sponsorship, or approval of

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Plaintiff’s goods, services, or commercial activities by Defendant.

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42.

Happy Halloween’s registration and use of the Domain Name do not

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misrepresent the nature, characteristics, qualities, or geographic origin of Plaintiffs’ or

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Defendant’s goods, services, or commercial activities.

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43.

Happy Halloween’s registration and use of the Domain Name do not

violate Defendant’s rights under the Lanham Act.
44.

Happy Halloween will be irreparably harmed if the Domain Name is

transferred to Defendant.

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VII. THIRD CAUSE OF ACTION
DECLARATORY JUDGMENT
UNENFORCEABILITY DUE TO LACHES

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45.

Plaintiffs hereby incorporate the allegations in paragraphs 1-44 above as if

stated fully herein.
46.

A dispute exists between Happy Halloween and Defendant concerning

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Happy Halloween’s right to use the Domain Name. That Domain Name is now subject to

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imminent transfer. Therefore, an actual and justiciable controversy exists between Happy

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Halloween and Defendant.

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47.

Happy Halloween has held and used the Domain Name <screams.com> at

all times since January 22, 1997, almost fifteen years.
48.

Upon information and belief, Defendant knew the Domain Name

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<screams.com> was registered by Plaintiffs as early as 1999. It was not until another

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twelve years passed that Defendant commenced an action to transfer the Domain Name.

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49.

It was not until July 2011, almost a decade and a half since the Domain

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Name <screams.com> was registered by Plaintiffs, that Defendant initiated proceedings

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to acquire the Domain Name.

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50.

This delay on the part of Defendant is unreasonable and inexcusable.

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51.

Defendant comes far too late and, under the doctrine of laches, has slept on

COMPLAINT- 7

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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its rights.

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52.

Happy Halloween has operated the Domain Name <screams.com> in

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conjunction with its legitimate business activities for fourteen years without complaint by

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Defendant. Happy Halloween will be irreparably harmed if the Domain Name, an asset

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quite valuable to its haunted house business, is transferred to Defendant.

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VIII. FOURTH CAUSE OF ACTION
CANCELLATION OF TRADEMARK REGISTRATION NO. 2,052,919
53.

Plaintiffs hereby incorporate the allegations in paragraphs 1-52 above as if

stated fully herein.
54.

Defendant’s alleged mark, SCREAMS, used in connection with

“amusement park services, namely, a Halloween theme park including haunted houses,
haunted hayrides, drama exhibitions and amusements”, is understood by the relevant
purchasing public to be a generic term characteristic of the Halloween season and the
services Defendant provides in connection with its alleged mark.
55.

The U.S. trademark registration obtained by Defendant is invalid,

unenforceable, and should be cancelled because the primary significance of the mark to
the consuming public is generic with respect to the services.
IX.

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PRAYER FOR RELIEF

WHEREFORE, Plaintiffs respectfully request judgment against Defendant as
follows:
A.

Declaration by the Court that Happy Halloween’s use and ownership of the

Domain Name <screams.com> is not in violation of the Anticybersquatting Consumer
Protection Act, 15 U.S.C. § 1125(d);
B.

Declaration by the Court that, pursuant 15 U.S.C. § 1114(2)(D)(iv)-(v),

Plaintiffs are entitled to registration, ownership and use of the Domain Name
<screams.com> and need not transfer the Domain Name to Defendant;
C.

Declaration by the Court that Defendant comes too late to contest

Plaintiffs’ ownership and use of the Domain Name <screams.com> under the doctrine of
COMPLAINT- 8

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]

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laches;

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D.

Cancellation of U.S. Trademark Registration No. 2,052,919;

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E.

Injunctive relief against enforcement of the UDRP Decision of August 31,

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2011, and entry of an Order requiring Dotster to permanently refrain from transferring the

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Domain Name <screams.com> to Defendant, except as may be directed by Plaintiffs;

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F.

Award of attorney’s fees and costs incurred in pursuing this action; and

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G.

Providing all other relief the Court deems just and proper.

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X.

REQUEST FOR A JURY TRIAL

Plaintiffs request a jury trial on all issues triable by a jury.

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Dated this 12th day of September, 2011.

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NEWMAN DU WORS LLP

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By:

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Derek A. Newman, WSBA No. 26967
Randall Moeller, WSBA No. 21094
1201 Third Avenue, Suite 1600
Seattle, Washington 98101

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DOZIER INTERNET LAW, P.C.

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/s/ John W. Dozier, Jr.
John W. Dozier, Jr., Esq., pro hac vice
forthcoming
11520 Nuckols Rd., Suite 101
Glen Allen, Virginia 23509
Tel: [phone]
Fax: [phone]
Email: [e-mail]

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Attorneys for Plaintiff Happy Halloween, Inc., a
Texas Corporation, and Todd James, an
individual, d/b/a Happy Halloween, Inc.

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COMPLAINT- 9

NEWMAN DU WORS LLP

1201 Third Avenue, Suite 1600
Seattle, Washington 98101
[phone]