Documente Academic
Documente Profesional
Documente Cultură
FILED
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
corporation
20!lf NOV 20 A IN 31
ALEhNlT^'v.^G^'
Plaintiff,
v.
In Rem Defendant.
Plaintiff Lumos Labs, Inc. ("Lumos"), for its complaint seeking in rem relief against the
domain name LUMIN0SITY.COM (the "Domain"), alleges the following:
Nature of the Case
1.
Lumos brings this in rem action under the Anticybersquatting Consumer Protection
Act ("ACPA"), 15 U.S.C. 1125(d)(2) againstthe Domain, which has beenand is being used in bad
faith in violation of Lumos' rights in its federally registered LUMOSITY mark.
2.
branded brain training that allows users to exercise core cognitive abilities through neuroscience-
based games. In addition, LUM0SITY.COM offers scientific content and commentary from its
in house staffof neuroscientists and product teams. More than 60 million people have signed up
for LUMOSITY and more are being added each month.
3.
only two letters, recently began (a) prominently using LUMINOSITY on the site itself rather than
merely as a domain; (b) advertising and promoting competing third-party brain games and brain
training products; (c) profiting from click-through advertising revenue through banner ads
featuring such brain games; and (d) featuring articles and other content specifically about brain
training, brain games, and brain health and research. Such use has caused considerable confusion
with the genuine LUMOSITY website, services, and products.
4.
The current use and registration of the Domain, and the activities conducted through
the corresponding website at the Domain, constitute trademark infringement, 15 U.S.C. 1114 et
seq.; unfair competition, 15 U.S.C. 1125; and cybersquatting, 15 U.S.C. 1125(d)(1).
5.
The website found at the Domain features promotion, advertising, and articles about
brain training, brain games, and brain health and research, which are directly competitive with
what Lumos offers under its LUMOSITY mark.
6.
The Domain and its corresponding website are being used in a manner that already
has caused and is likely to continue to cause significant confusion and that demonstrates a bad
faith intent to profit from the similarity between LUMINOSITY and Lumos' LUMOSITY mark.
On information and belief, this use ofthe Domain has resulted in hundreds of thousands to millions
7.
over the Ukrainian citizen who is the current registrant of the Domain and operator of the website
at the Domain, and therefore Lumos files this in rem action directly against the Domain, pursuant
to 15 U.S.C. 1125(d)(2)(A)(ii)(I).
8.
9.
Plaintiff Lumos is a corporation duly organized and existing under the laws of the
State of Delaware with its principle place of business located at 140 New Montgomery Street,
Floor 19, San Francisco, California 94105.
10.
The Defendant and in rem property in this case is the Domain, namely
LUMINOSITY.COM, which is an Internet domain name that is listed in the registry operated by
VeriSign, Inc. ("Verisign"). Verisign is based in Reston, Virginia, within this judicial district.
11.
According to the current WHOIS record for the Domain, the named registrant of
the domain name is "Alexander Latenko," who has a listed address of "197,4/56 Chemobilskaya
St.,
Kyiv, Ukraine,
03179";
the
listed e-mail
address
for
Alexander
Latenko
is
"latenko@gmail.com"; and the registrar of the Domain is GoDaddy.com. A true and correct copy
of the current Whois record for the Domain is attached hereto as Exhibit 1.
Jurisdiction and Venue
12.
The Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.
This Court has in rem jurisdiction over the Domain, pursuant to 15 U.S.C.
outside of the United States and not subject to the personal jurisdiction of this Court.
14.
Jurisdiction and venue are also proper in this judicial district, pursuant to 15 U.S.C.
1125(d)(2)(A), (C) and 28 U.S.C. 1391(b) because VeriSign, the domain name registry for the
Domain, is located in this judicial district.
Background on Lumositv
15.
16.
Lumos is a market leader in the brain training industry and offers its well-known
LUMOSITY brain training, brain games, and other services through its website, available at
LUM0SITY.COM, as well as through the popular LUMOSITY mobile app.
17.
18.
Lumos owns and controls the domain name LUMOSITY.COM and uses that
domain name in the offering and sale of Lumos' services under the LUMOSITY brand.
19.
LUMOSITY brain training and brain games are based on neuroscience, with
20.
Lumos also publishes articles about its LUMOSITY products, services, research,
and related news and topics on its website, at blog.lumositv.com and at www.lumositv.com/hcp.
21.
March 2007.
22.
23.
More than 60 million members have signed up for LUMOSITY services in more
Lumos owns the federally registered mark LUMOSITY (Reg. No. 3,553,973),
which covers "entertainment and educational services, namely providing online games and
Lumos applied to register LUMOSITY on May 16, 2008, and the U.S. Patent and
Trademark Office issued Lumos a registration for LUMOSITY on December 30,2008. Attached
26.
27.
28.
around March 16, 2008, when he acquired the Domain from its previous registrant, Dale
DeSharone.
29.
On information and belief, Latenko became the registrant of the Domain after
30.
used in connection with click-through advertising, including a Google AdSense splash page that
their websites Google Ads for third-party advertisers. Google's AdSense program often places
ads related to the content on the site via
Domain name registrants and website operators sometimes attempt to profit in bad
faith by using domains that are very similar to or misspellings of popular brands to generate
revenue from click-through advertising (Google AdSense and others) that includes ads for such
brand names, their competitors, and other products that consumers, looking for the genuine brand,
would value. This is precisely how LUMINOSITY.COM has been and is being used.
35.
Lumos has never authorized Latenko or any registrant of the Domain to use
LUMOSITY in connection with Lumos' Google ads or any other sponsored ads displayed at
LUMINOSITY.COM or otherwise.
36.
began featuring Lumos' LUMOSITY ads and was receiving click-through revenue from those
ads.
37.
advertisements, including those displaying Lumos' LUMOSITY ads without authorization, was
a means ofintentionally profiting from Internet users' mistaken association ofLUMINOSITY with
the genuine LUMOSITY brand.
38.
whether he would sell the troubling Domain to Lumos. In a response email, Latenko wrote that
he would be willing only to "rent" the Domain to Lumos.
39.
LUMINOSITY.COM was receiving thousands of unique visitors per day, and 15 to 20 cents for
each visitor that clicked on advertisements placed on the site. He accordingly estimated his
monthly revenues to be between $9,500 and $12,500 through Google's AdSense program. At the
same time, Latenko also offered to rent the Domain to Lumos for $10,000 per month.
40.
LUMINOSITY.COM, Latenko was generating click-through revenues from Lumos' ads and
confusion caused by
41.
In May 2012, Latenko wrote to Lumos that he was looking for other ways to
42.
On information and belief, Latenko was seeking more ways to take advantage of
and earn more revenue from the confusion caused by the similarity between LUMINOSITY.COM
and LUMOSITY.COM.
43.
advertising links specifically for competitive third-party websites offering brain training and/or
brain games.
44.
Just as Lumos has never authorized Latenko or any registrant of the Domain to
display Lumos' own LUMOSITY ads, Lumos also has never authorized anyone to use
LUMIN0SITY.COM to display or profit from competitive brain training or brain game ads.
45.
Domain, the unauthorized advertising of brain training and brain games on LUMIN0SITY.COM
was and is meant to profit from Internet users' association of LUMINOSITY with the genuine
LUMOSITY brand.
46.
Lumos has never authorized Latenko or any registrant of the Domain to display a
parking page on LUMIN0SITY.COM with sponsored ads for services that are competitive with
those of Lumos.
49.
site on the basis that LUMIN0SITY.COM was likely to cause confusion with LUM0SITY.COM.
50.
LUMIN0SITY.COM, but this only stopped ad monetization on the site briefly, if at all.
51.
was willing to transfer the Domain to Lumos. At the same time, Lumos specifically warned
Latenko that LUMINOSITY customers "confuse the name of [Lumos'] product with
'Luminosity', and incorrectly navigate to 'Luminosity.com' due to that confusion."
52.
to display more sponsored ads for third-party brain training products and brain games. It also went
one step further and began featuring "brain health" articles and related content.
54.
mirror even more closely the LUMOSITY brand by displaying for the first time the term
LUMINOSITY in large letters, as well as even more prominent banner ads for third-party brain
games at the top and right side of the website, and a series of brain health and related articles in a
blog-style format.
55.
February 2014, showing the prominent use of LUMINOSITY as well as banner ads featuring
terminology such as "Free Memory Brain Games" and "Fun Games to Chisel Your Brain":
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56.
In or around June 2014, the website at LUMINOSITY.COM went one more step
closer to the LUMOSITY brand by prominently featuring articles specifically related to brain
games and brain training, with titles such as "Playing Brain Games to Increase Mental Flexibility"
and "Four Hobbies to Train Your Brain." Such articles feature terminology like "train your brain,"
"neuroplasticity," "cognitive skills," "brain games," and "mental flexibility" that have appeared
in numerous places on Lumos' genuine LUM0SITY.COM website, in LUMOSITY products,
and/or in LUMOSITY advertising.
57.
On information and belief, the publication of articles and ads about brain training,
brain games, brain health, and related topics on LUMIN0SITY.COM is meant to profit from
Internet users' association of LUMINOSITY with the genuine LUMOSITY brand.
58.
prominent banner ads with headers such as "Looking for Brain Games?" and "Brain Memory
Game," as shown below. These prominent banner ads still appear on the LUMIN0SITY.COM
website as of the filing of this Complaint:
Looking for
Brain Games?
59.
Since June 2014, the very first article featured on LUMINOSITY.COM is titled,
"Your Mind Matters! Playing Brain Games To Increase Mental Flexibility And Strengthen
Cognitive Skills." That article continues to be listed first on the home page of
LUMIN0SITY.COM, even though other articles on the website were published more recently and
otherwise are listed in chronological order, as shown below:
PX
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Looking for
Brain Games?
.^1*"^;
LUMOSITY competitor, "developed a brain training program, which consists of clear and
engaging exercises enabling you to get yourself functioning at the top of your capabilities." At
the top and right side of the website featuring the article, there are large banner ads for brain
training products, apparently associated with YOGLA, as shown below:
Djpvyi
is?H5a*:
Eipinjycw
QBGIlQIiliiDQB
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Wttittanmipi
*s8fc$S!$$ a
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wax,is
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Games To Increase
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10
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PtopK
61.
Clicking one of the above shown ads directs visitors to yogla.com, where visitors
are prompted to "Create [their] personalized training program here." The genuine LUMOSITY
website similarly prompts visitors to "Get [their] personalized training program now."
62.
"Luminosity" in prominent letters; (2) sponsored banner ads promoting brain games and brain
training products offered by competitors of Lumos; (3) articles specifically about brain training,
brain health and brain games; and (4) the featured headline article entitled "Your Mind Matters!
Playing Brain Games To Increase Mental Flexibility And Strengthen Cognitive Skills."
63.
On information and belief, the registrant of the Domain and operator of the
corresponding website LUMINOSITY.COM has earned and continues to earn thousands ofdollars
each month from click-through advertising revenue from banner ads promoting brain games, and
such revenues are a direct result of the confusion caused by the similarity between LUMINOSITY
64.
sponsored ads for third-party brain games at LUMINOSITY.COM has been and is meant to draw
closer to Lumos' LUM0SITY.COM domain name and website, and to further profit from the
confusion caused by Internet users' association of LUMINOSITY with the genuine LUMOSITY
brand for the reasons described above, among others.
65.
generate more revenue and are therefore even more valuable to the registrant of the Domain
because a substantial number of visitors to LUMINOSITY.COM believe that it actually is (or is
confusion are likely to stay on the site longer and navigate the site more if they believe that have
11
reached the genuine LUMOSITY site or that LUMINOSITY is somehow associated with
LUMOSITY. As a result, such visitors are shown more ad impressions during their visit,
ultimately are more likely to pay for brain training or related products, given the familiarity of the
LUMOSITY brand.
LUMOSITY-affiliated product when, for example, they see a banner ad for "Brain Games" on
LUMINOSITY.COM.
68.
companies) are likely willing to pay more for each ad impression, click, or conversion because
LUMINOSITY.COM provides them access to highly relevant potential customers.
69.
website to more closely mirror the services offered by Lumos under the LUMOSITY brand has
left Lumos with no choice but to seek relief from this Court to stop such infringement.
Actual Confusion
70.
LUMINOSITY in connection with the Domain, numerous Internet users have been confused.
71.
Numerous Internet users and other consumers have experienced actual instances of
"Forward confusion" has occurred when individuals have believed mistakenly that
12
73.
"Reverse confusion" has occurred when those who have signed up to become
LUMOSITY members actually believe that LUMOSITY.COM is somehow associated with the
(demonstrating
74.
On information and belief, numerous consumers have confused the domain name
76.
On information and belief, such confusion has occurred in large part because of the
bad faith use ofLUMINOSITY.COM to include advertising, promotion, and content about brain
training and brain competitive to those of Lumos, and because the term LUMINOSITY is so close
to the well-known LUMOSITY mark.
77.
78.
Web analytics statistics obtained by Lumos reveal that during the brief period from
May 2014 through August 2014, there were more than 300,000 Internet users that searched for
"Luminosity" on Google and then clicked on a link to LUMOSITY.COM, indicating that this was
the website that consumers were actually looking for.
79.
13
80.
In the past year, more than a million people clicked on one of Lumos'
LUMOSITY ads after searching for "Luminosity" on Google, which indicates that such
consumers in fact were intending to search for LUMOSITY.
81.
The term LUMINOSITY is the second most searched term (second only to
LUMOSITY) that Internet users type into search engines to find Lumos' website.
82.
Thus, numerous consumers perceive the name and mark LUMOSITY as being
LUMINOSITY, and numerous consumers associate the term LUMINOSITY with LUMOSITY.
84.
The unauthorized use of the Domain and the term LUMINOSITY has been and is
in bad faith, and has caused and is likely to continue to cause substantial confusion among
consumers unless enjoined by this Court through an order transferring the Domain to Lumos.
Requirements for In Rem Jurisdiction and Transfer of a Domain under the ACPA
85.
complainant is authorized under the ACPA where (i) "the domain name violates any right of the
owner of the owner of a mark registered in the Patent and Trademark Office" (emphasis added);
and (ii) the complainant "is not able to obtain inpersonam jurisdiction over a person who would
have been a defendant in a [cybersquatting] action." 15 U.S.C. 1125(d)(2)(A)(i), (H)(1).
86.
The current use of the Domain and the operation of its corresponding website
fulfills the requirement ofa violation of Lumos' rights under 15 U.S.C. 1125(d)(2)(A)(i) because
such use constitutes (i) trademark infringement, 15 U.S.C. 1114 et seq.; (ii) unfair competition,
15 U.S.C. 1125; and (iii) cybersquatting, 15 U.S.C. 1125(d)(1). Each of these substantive
causes of action is set forth below.
14
87.
Both this Court and the U.S. Circuit Court of Appeals for the Fourth Circuit have
held that violations of the Lanham Act other than cybersquatting are sufficient to meet the rights-
violation requirement under the in rem provisions of the ACPA. See Jack in the Box, Inc. v.
jackinthebox.org, 143 F. Supp. 2d 590 (E.D. Va. 2001) (holding that the required showing ofa rights
violation may include claims such as trademark infringement, 15 U.S.C. 1114; unfair competition,
15 U.S.C. 1125(a); and dilution, 15 U.S.C. 1125(c)); Harrods Ltd. v. Sixty Internet Domain
Names, 302 F.3d 214,232 (4th Cir. 2002) ("[Tjhe in rem provision not only covers bad faith claims
under 1125(d)(1) [i.e. cybersquatting], but also covers infringement claims under 1114 [i.e.
infringement of a registered mark] and 1125(a) [i.e. unfaircompetition] and dilution claims under
1125(c).").
88.
Lumos also fulfills the second requirement for in remjurisdiction because Lumos
"is not able to obtain inpersonam jurisdiction over a person who would have been a defendant in
This Court has found that in personam jurisdiction is not available and that in rem
jurisdiction is appropriate under 15 U.S.C. 1125(d)(2)(A)(ii)(I), where the domain name registrant
resides in a foreign country. See, e.g., Hartog & Co. v. swix.com, 136F. Supp. 2d 531,536 (E.D. Va.
1The alternative method of obtaining in rem jurisdiction under the ACPA, namely sending
notice to the domain name registrant and publishing notice of the action under 15 U.S.C.
1125(d)(2)(A)(ii)(II), is not applicable because Lumos has identified and has corresponded with
Latenko but is simply unable to obtain personal jurisdiction over him. See McCarthy on
Trademarks and Unfair Competition 25:79 (4th ed.) ([The first method of achieving in rem
jurisdiction, 1125(d)(2)(A)(ii)(I),] relates to the situation where the trademark owner knows the
identity of the domain name holder but cannot obtain in personam jurisdiction over that person
because he or she is outside the jurisdiction, such as the cybersquatter located in another nation. [The
second method of achieving in rem jurisdiction, 1125(d)(2)(A)(ii)(II),] relates to the situation
where the trademark owner has used due diligence but still is unable to locate the domain name
holder or unable to achieve service of process."). Although the statute does not require notice to the
domain name registrant under the first method of obtaining in rem jurisdiction under the ACPA,
Lumos intends to provide notice ofthis action and a copy of this complaint to Latenko.
15
2001) (inremjurisdiction appropriate because plaintiff was unable to gain personaljurisdiction where
registrant was a Swiss Internet service provider); Volkswagen, AG v. Volkswagentalkcom, 584 F.
Supp. 2d 879,883 (E.D. Va. 2008) (in rem jurisdiction appropriate because plaintiffs unable to obtain
inpersonamjurisdiction where registrant was located in Russia).
90.
Lumos has conducted due diligence with respect to the whereabouts and activities
91.
In light of Lumos' due diligence on Latenko, on information and belief, Latenko (a)
permanently resides in and is a citizen of Ukraine; (b) worked in Ukraine for an information
technology company known as Miratech at least through March 2013; (c) has made posts on social
media in the Ukrainian language regarding events and people in Ukraine in the last few months prior
to the filing of this Complaint; (d) currently operates and controls LUMINOSITY.COM (and some
other unrelated websites, including a personal blog) from Ukraine.
92.
Latenko (a) has not purposefully availed himself of the benefits and protections of the laws of the
Commonwealth of Virginia; (b) has not committed an act in Virginia that is substantially related
to this action; (c) does not have systematic and continuous contacts with Virginia; and (d) does not
have any other minimum contacts with this Virginia or the United States as a whole sufficient to
establish personal jurisdiction over him.
93.
will provide "written notification of a filed, stamped copy of a complaint filed by the owner of a
mark in a United States district court" to the registry (Verisign) and the registrar (GoDaddy) of the
Domain and will request that these businesses lock the Domain, as required by the statute.
16
///
COUNT I
95.
Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1
96.
97.
98.
Lumos registered the mark LUMOSITY for brain training, brain games, and
related services well before LUMINOSITY.COM began advertising and promoting brain games
and related services.
99.
Actual and potential consumers of LUMOSITY services have been confused and
with a website featuring information and advertisements about brain training and brain games.
100.
The prior and current use of LUMINOSITY both as a domain name and as a mark
likely to cause confusion, or to cause mistake, or to deceive consumers and the general public.
101.
and operator ofLUMINOSITY.COM has been and is willful, deliberate, and in bad faith.
102.
Lumos has suffered and will continue to suffer irreparable harm and is entitled to injunctive relief
in the form of an order requiring the transfer of the Domain to Lumos.
///
///
17
COUNT II
103.
Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1
104.
Lumos owns and has acquired common law rights in the mark LUMOSITY.
105.
Lumos began using and acquired rights in the mark LUMOSITY for brain games
and related services well before LUMINOSITY.COM began advertising and offering of brain
games and related services and before Latenko even acquired the Domain.
106.
Actual and potential consumers of Lumos' services have mistakenly believed and
are likely to believe incorrectly that LUMINOSITY.COM is somehow sponsored by, affiliated
with, or related to Lumos because of the use of a very similar mark to advertise similar services.
107.
The prior and current use of LUMINOSITY both as a domain name and as a mark
constitutes unfair competition and false designation of origin because such use is likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
LUMINOSITY.COM with Lumos, and as to the origin, sponsorship, or approval by Lumos of the
services advertised and offered at LUMINOSITY.COM.
108.
The acts constituting unfair competition and false designation of origin by the
registrant and operator ofLUMOSITY.COM have been willful, deliberate, and in bad faith.
109.
As a result of such unfair competition and false designation of origin, Lumos has
suffered and will continue to suffer irreparable harm and is entitled to injunctive relief in the form
of an order requiring the transfer of the Domain to Lumos.
///
///
///
18
COUNT HI
110.
Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1
The current registrant of the Domain has a bad faith intent to profit from Lumos'
The LUMOSITY mark was distinctive and being used by Lumos at the time the
current registrant of the Domain registered it in his name for the first time in or around early 2008.
The LUMOSITY mark also was distinctive, registered, and being used by Lumos each time the
current registrant of the Domain renewed (i.e. re-registered) the Domain in 2009,2011, and 2013 .
113.
The re-registration (or renewal) ofa domain name constitutes a "registration" under
15 U.S.C. 1125(d)(1)(A). SeeXereas v. Heiss, 933 F. Supp. 2d 1,17 (D.D.C. 2013) ("The terms
'register' and 'registration" in 1125(d)(1)(A) should be read to refer to the initial registration and
The current registrant of the Domain has registered, trafficked in, and/or used the
Domain, namely LUMOSITY.COM, which is identical or confusingly similar to, and/or dilutive
of, Lumos' LUMOSITY mark.
115.
The current registrant of the Domain does not have any trademark or other
The current registrant of the Domain is not using the Domain in connection with
the bona fide offering of any goods or services that do not infringe Lumos' rights.
117.
The current registrant of the Domain is not making a bona fide noncommercial or
19
118.
On information and belief, the current registrant of the Domain intends to divert
The current registrant of the Domain attempted to "rent" the Domain to Lumos for
an exorbitant price ($10,000 per month), which, on information and belief, is well above any out-ofpocket costs incurred by such registrant in registering and maintaining the Domain.
120.
The above described acts demonstrate a bad faith intent to profit from the Domain.
121.
As a result of the above described acts of cybersquatting, Lumos has suffered and
will continue to suffer irreparable harm and is entitled to injunctive relief in the form of an order
///
///
For the above reasons, Plaintiff Lumos respectfully requests that this Court enter judgment
in its favor and issue an order:
(a) Requiring the domain name registry of the Domain, namely VeriSign, and the current
domain name registrar of the Domain, namely GoDaddy.com, to transfer the
(c) Granting such other and further reliefthat the Court may deem appropriate.
Bv: cz&AJI/) L _
J. Paul Williamson, Esq. (Va. Bar. No. 15698)
Tara Void, Esq. (Va. Bar. No. 42642)
Vold & Williamson PLLC
Email: pwilliamson@.vwiplaw.com
Counselfor Plaintiff, Lumos Labs, Inc.
21