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Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 1 of 21 PageID# 1

FILED
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

LUMOS LABS, INC., aDelaware

corporation

20!lf NOV 20 A IN 31

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ALEhNlT^'v.^G^'

Plaintiff,

CIVIL ACTION NO. /'^/^'

v.

LUMINOSlTY.COM, a domain name

In Rem Defendant.

PLAINTIFF LUMOS LABS. INC.'S COMPLAINT FOR IN REM RELIEF

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.

LUM0SITY.COM is Lumos' widely popular website featuring LUMOSITY

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.

The website available at the Domain, which differs from LUM0SITY.COM by

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

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 2 of 21 PageID# 2

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

of dollars in advertising revenue to the Domain registrant.

7.

On information and belief, Lumos is not able to obtain in personam jurisdiction

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.

Pursuant to 15 U.S.C. 1125(d)(2)(D)(i), Lumos requests that the Court issue an

order requiring the transfer of the Domain to Lumos.


The Parties

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.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 3 of 21 PageID# 3

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.

1121 and 1125, and 28 U.S.C. 1331 and 1138.


13.

This Court has in rem jurisdiction over the Domain, pursuant to 15 U.S.C.

1125(d)(2)(A)(ii)(I), because Lumos cannot obtain in personam jurisdiction over Alexander


Latenko, the current Ukrainian registrant of the Domain who, on information and belief, is located

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.

Lumos is an online brain training and neuroscience research company.

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.

LUMOSITY is an inherently distinctive, made-up, fanciful term.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 4 of 21 PageID# 4

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

continuing independent third-party studies being conducted by researchers at academic institutions


around the world.

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.

Lumos has continuously used LUMOSITY as a mark since at least as early as

March 2007.

22.

The LUMOSITY brand has achieved widespread recognition in the marketplace.

23.

More than 60 million members have signed up for LUMOSITY services in more

than 180 countries throughout the world.


24.

Lumos owns the federally registered mark LUMOSITY (Reg. No. 3,553,973),

which covers "entertainment and educational services, namely providing online games and

questionnaires designed to improve learning, memory, attention, perception, cognitive abilities,


processing speed, vocabulary and wellness."
25.

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

as Exhibit 2 is a copy of the certificate of registration for LUMOSITY.


Background on the Domain and Its Use

26.

The current registrant of the Domain is Alexander Latenko ("Latenko").

27.

On information and belief, Latenko is a citizen and/or resident of Ukraine, with a

listed address of 197,4/56 Chemobilskaya St., Kyiv, Ukraine 03179.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 5 of 21 PageID# 5

28.

On information and belief, Latenko became the registrant of the Domain on or

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

Lumos began offering services under the LUMOSITY mark.

30.

On information and belief, Latenko has renewed/re-registered the Domain multiple

times, including in May 2009, May 2011, and May 2013.


31.

Prior to 2012, the website at LUMINOSITY.COM was not being used in

connection with brain games.


32.

Around January 2012, the website available at LUMINOSITY.COM began to be

used in connection with click-through advertising, including a Google AdSense splash page that

displayed various ads.


33.

Google's AdSense program allows website operators to earn revenue by placing on

their websites Google Ads for third-party advertisers. Google's AdSense program often places
ads related to the content on the site via

"keyword contextual targeting," or optimization

algorithms designed to maximize ad click-through rates.


34.

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.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 6 of 21 PageID# 6

36.

Despite having no authorization to do so, in or around 2012, LUMINOSITY.COM

began featuring Lumos' LUMOSITY ads and was receiving click-through revenue from those
ads.

37.

On information and belief, the use of LUMIN0SITY.COM for sponsored

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.

In January 2012, a representative of Lumos contacted Latenko via email to ask

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.

In February 2012, Latenko claimed in a follow up email to Lumos that

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.

Although Lumos had never authorized its Google ads to appear on

LUMINOSITY.COM, Latenko was generating click-through revenues from Lumos' ads and

thereby directly profiting from the

confusion caused by

the similarity between

LUMINOSITY.COM and the genuine LUMOSITY.COM website.

41.

In May 2012, Latenko wrote to Lumos that he was looking for other ways to

"monetize traffic" to LUMIN0S1TY.COM.

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.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 7 of 21 PageID# 7

43.

In or around May 2013, LUMINOSITY.COM began to feature sponsored

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.

On information and belief, in addition to the unauthorized use of a very similar

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.

In May 2013, Lumos contacted Google and objected to the unauthorized

appearance of Lumos' LUMOSITY ads on LUMIN0SITY.COM. As a result, Google promptly


blocked further LUMOSITY ads from appearing on LUMIN0SITY.COM.
47.

In or around 2013, a business known as DNTX.com was providing ad monetization

services for LUMIN0SITY.COM by displaying a parking page with sponsored ads on

LUMIN0SITY.COM, including ads for services competitive with those of Lumos.


48.

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.

In May 2013, Lumos contacted DNTX.com to object to the ad monetization on the

site on the basis that LUMIN0SITY.COM was likely to cause confusion with LUM0SITY.COM.

50.

In response, DNTX.com took down the parking page appearing at

LUMIN0SITY.COM, but this only stopped ad monetization on the site briefly, if at all.

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 8 of 21 PageID# 8

51.

In September 2013, Lumos again contacted Latenko to inquire whether or not he

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.

In response to Lumos' September 2013 communication, Latenko wrote back to

Lumos and once again refused to sell the Domain.


53.

Beginning in or around December 2013, the website at LUMINOSITY.COM began

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.

In or around January, the website at LUMINOSITY.COM was further modified to

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.

The following image is a screenshot of how LUM1N0SITY.COM appeared in

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":

7 Natural Memory Tips


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Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 9 of 21 PageID# 9

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.

Also in or around June 2014, LUMIN0SITY.COM began featuring even more

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?

Brain Memory Game


Fun Games to Chisel Your Brain Download Tons of Them for Free!
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Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 10 of 21 PageID# 10

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:
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60.

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The "Your Mind Matters!" article explains that "YOGLA," an apparent

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:
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Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 11 of 21 PageID# 11

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.

As of the filing of this Complaint, LUMINOSITY.COM continues to feature (1)

"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

and the genuine LUMOSITY website.

64.

On information and belief, the effort to display brain-related content as well as

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.

On information and belief, advertising placements on LUMINOSITY.COM

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

somehow affiliated with) the genuine LUMOSITY website.


66.

On information and belief, visitors to LUMINOSITY.COM who experience such

confusion are likely to stay on the site longer and navigate the site more if they believe that have
11

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 12 of 21 PageID# 12

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,

resulting in greater revenue to the registrant of the Domain.


67.

Also, on information and belief, visitors that click on ads on LUMINOSITY.COM

ultimately are more likely to pay for brain training or related products, given the familiarity of the
LUMOSITY brand.

In some cases, visitors may even believe they are purchasing a

LUMOSITY-affiliated product when, for example, they see a banner ad for "Brain Games" on
LUMINOSITY.COM.

68.

On information and belief, relevant advertisers (such as competing brain game

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.

The progressive encroachment and infringing use of the LUMINOSITY.COM

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.

As a result of the overlapping use of and references to LUMOSITY and

LUMINOSITY in connection with the Domain, numerous Internet users have been confused.

71.

Numerous Internet users and other consumers have experienced actual instances of

confusionboth "forward confusion" and "reverse confusion"between LUMINOSITY.COM

and the genuine LUMOSITY brand website.


72.

"Forward confusion" has occurred when individuals have believed mistakenly that

LUMINOSITY.COM is somehow endorsed, sponsored, or approved by Lumos or otherwise


related to the genuine LUMOSITY brand.

12

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 13 of 21 PageID# 13

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

knockoff LUMINOSITY.COM website. See, e.g., http://www.dailvkos.com/storv/2012/09/03/


1127387/-Shenanigans-Luminositv-com-a-Ukrainian-data-mining-trickster

(demonstrating

clear instance of reverse confusion).

74.

Consumers often use the term LUMINOSITY in place of LUMOSITY when

referring to services provided by Lumos.


75.

On information and belief, numerous consumers have confused the domain name

LUM0SITY.COM with the Domain LUMINOSITY.COM.

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.

Consumers actually have been confused by visiting or finding information about

LUMINOSITY.COM, despite intending to visit or find information about the genuine


LUMOSITY website.

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.

On information and belief, a significant number of these consumers were confused

by the similarities between LUMINOSITY and the genuine LUMOSITY brand.

13

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 14 of 21 PageID# 14

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.

In one survey, when asked to "name a brain training product," consumers

responded with either "Lumosity" or "Luminosity" at a ratio of 55 to 45 percent.


83.

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.

In rem jurisdiction over a domain name and transfer of a domain name to a

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

Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 15 of 21 PageID# 15

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

a [cybersquatting] action." 15 U.S.C. 1125(d)(2)(A)(ii)(I).'


89.

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.
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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

of Latenko, including on the Internet and in social media.

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.

Also in light of Lumos' due diligence on Latenko, on information and belief,

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.

Accordingly, Lumos is unable to obtain personal jurisdiction over Latenko, and

therefore in rem jurisdiction over the Domain is appropriate.


94.

Upon the filing of this Complaint, pursuant to 15 U.S.C. 1125(d)(2)(D)(i), Lumos

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.
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///
COUNT I

Trademark Infringement. 15 U.S.C. 1114 et seq.

95.

Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1

through 94 above, and incorporates them by reference.

96.

Lumos owns and has federally registered the mark LUMOSITY.

97.

LUMINOSITY is being used in commerce both as a domain name and as a mark

in connection with the website available at LUMINOSITY.COM.

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

are likely to be confused by the unauthorized commercial use of LUMINOSITY in connection

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

in connection with LUMINOSITY.COM constitutes trademark infringement because such use is

likely to cause confusion, or to cause mistake, or to deceive consumers and the general public.
101.

The infringement ofLumos' federally registered LUMOSITY mark by the registrant

and operator ofLUMINOSITY.COM has been and is willful, deliberate, and in bad faith.
102.

As a result ofthe infringement of Lumos' federally registered LUMOSITY mark,

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.
///

///
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COUNT II

Unfair Competition and False Designation of Origin, 15 U.S.C. 1125(a)

103.

Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1

through 102 above, and incorporates them by reference.

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.
///
///

///
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COUNT HI

Cybersquatting, 15 U.S.C. S 1125(d)(1)

110.

Lumos hereby readopts and re-alleges the allegations set forth in Paragraphs 1

through 109 above, and incorporates them by reference.


111.

The current registrant of the Domain has a bad faith intent to profit from Lumos'

federally registered LUMOSITY mark.


112.

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

later re-registrations of the domain name.").


114.

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

intellectual property rights in the Domain.


116.

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

fair use of LUMINOSITY on LUMINOSITY.COM or otherwise.

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118.

On information and belief, the current registrant of the Domain intends to divert

consumers to LUMINOSITY.COM instead of LUMOSITY.COM, for purposes of commercial


gain, by creating a likelihood ofconfusion as to the source, sponsorship, affiliation, or endorsement
ofLUMINOSITY.COM compared with LUM0SITY.COM.
119.

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

requiring the transfer of the Domain to Lumos.


///
///

///
///

PRAYER FOR RELIEF

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

registration of the Domain to Lumos;


(b) Awarding Lumos its costs, as well as its attorneys' fees, as this is an exceptional case
under 15 U.S.C. 1117; and
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Case 1:14-cv-01584-AJT-IDD Document 1 Filed 11/20/14 Page 21 of 21 PageID# 21

(c) Granting such other and further reliefthat the Court may deem appropriate.

Respectfully submitted this 20th day ofNovember, 2014-^

Bv: cz&AJI/) L _
J. Paul Williamson, Esq. (Va. Bar. No. 15698)
Tara Void, Esq. (Va. Bar. No. 42642)
Vold & Williamson PLLC

8251 Greensboro Dr., Suite 340


McLean, Virginia 22102
Phone: 571.395.4633

Email: pwilliamson@.vwiplaw.com
Counselfor Plaintiff, Lumos Labs, Inc.

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