Free COMPLAINT - District Court of Delaware - Delaware

Case 1:99-mc-09999

Document 146

Filed 09/04/2008

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE 326 ASSOCIATES, L.P., a Delaware limited partnership, Plaintiff, v. RETURNSIDE, LLC, a Delaware limited liability company, Defendant. ) ) ) ) ) ) ) ) ) ) )

C.A. No.

COMPLAINT PARTIES 1. Plaintiff 326 Associates, L.P. ("326 Associates") is a limited partnership company

duly organized and existing under the laws of the State of Delaware. 2. Defendant ReturnSide, LLC ("ReturnSide") is a limited liability company duly

organized and existing under the laws of the State of Delaware. SUBJECT MATTER JURISDICTION AND VENUE 3. This action is brought pursuant to the Anticybersquatting Consumer Protection

Act ("ACPA"), 15 U.S.C. §1125(d). As such, subject matter jurisdiction is conferred upon this Court pursuant to 28 U.S.C. §1331. 4. ReturnSide is a Delaware limited liability company subject to service of process

in Delaware pursuant to 6 Del. C. §18-105. As such, venue is proper in this Court pursuant to 29 U.S.C. §1391. FACTUAL BACKGROUND 5. Since 1983, 326 Associates has consistently owned and operated the New Castle

Farmers Market located in New Castle, DE. Over the years, the New Castle Farmers Market has

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become an institution in Delaware, and the name has generated goodwill throughout the state and beyond. 5. On June 7, 1993, 326 Associates registered the Service Mark "New Castle

Farmers Market" with the Delaware Secretary of State. In 2007, 326 Associates renewed that mark. 6. On or about May 17, 2003, ReturnSide registered the domain name On information and belief, ReturnSide has in the past

www.newcastlefarmersmarket.com.

placed advertising on a site under that domain. 7. In 2007, 326 Associates planned to set up an Internet website, to promote the New

Castle Farmers Market and to offer vendors who lease space at the New Castle Farmers Market an opportunity to advertise their wares. 8. Upon learning that ReturnSide had registered the domain name

www.newcastlefarmersmarket.com, representatives from 326 Associates contacted Glenn Petrucci, the owner of ReturnSide, to discuss his registration of the domain name. Mr. Petrucci informed 326 Associates that his intention was to market use of a website under that domain name to vendors who sell their wares at the New Castle Farmers Market. FIRST CAUSE OF ACTION (Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)) 9. 326 Associates re-alleges and incorporates herein the allegations contained in

numbered paragraphs 1-8 above. 10. 326 Associates is the developer and owner of the distinctive service mark "New

Castle Farmers Market."

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11.

At

the

time

that

ReturnSide

registered

the

domain

name

www.newcastlefarmersmarket.com, the phrase "New Castle Farmers Market" had become famous. 12. The domain name www.newcastlefarmersmarket.com is identical to the service

mark "New Castle Farmers Market." 13. By establishing the domain name, ReturnSide operated in commerce, as it

precluded 326 Associates from offering services under that domain name. 14. ReturnSide registered the domain name www.newcastlefarmersmarket.com in bad

faith, as it intended to market space on the website to vendors associated with the New Castle Farmers Market, thereby trading on the good will built up in the mark by 326 Associates. 15. ReturnSide and its owner Glenn Petrucci have registered or acquired multiple

domain names which are identical or confusingly similar to the distinctive names of other existing businesses. 16. ReturnSide's conduct was and remains wilful.

WHEREFORE, for the foregoing reasons, plaintiff 326 Associates, L.P. requests that judgment be entered in its favor, and against defendant ReturnSide, LLC, and that the Court enter an Order: 1. Requiring ReturnSide, LLC to transfer title to domain name

www.newcastlefarmersmarket.com to 326 Associates, L.P.; 2. Awarding statutory damages, pursuant to 15 U.S.C. §1117(d), of no less than

$1,000 and no more than $100,000, as the Court deems just; 3. Awarding plaintiff its costs, including reasonable attorney's fees pursuant to 15

U.S.C. §1117(a); and

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4.

Granting such other and further relies as the Court deems just.

Dated: September 4, 2008 /s/ David L. Finger___________________ David L. Finger (DE Bar ID #2556) Finger & Slanina, LLC One Commerce Center 1201 Orange Street, Suite 725 Wilmington, DE 19801-1155 (302) 884-6766 Attorney for plaintiff 326 Associates, L.P.