Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 1 of 15

Robert T. Cruzen, OSB 080167

Email: rob.cruzen@klarquist.com
James E. Geringer, OSB 951783
Email: james.geringer@klarquist.com
Kristen L. Reichenbach, OSB 115858
Email: kristen.reichenbach@klarquist.com
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Telephone: 503-595-5300
Facsimile: 503-595-5301
Attorneys for Plaintiff
Williston Financial Group LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
WILLISTON FINANCIAL GROUP LLC,
a Delaware Company,

Case No. 3:15-cv-00047

Plaintiff,
COMPLAINT FOR TRADEMARK
INFRINGEMENT

v.
OLD REPUBLIC NATIONAL TITLE
INSURANCE COMPANY, a Minnesota
Corporation,
Defendant.

DEMAND FOR JURY TRIAL

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 2 of 15

Plaintiff Williston Financial Group LLC (Plaintiff or WFG) for its Complaint for
Trademark Infringement against Defendant Old Republic National Title Insurance Company
(Defendant or Old Republic) states and alleges as follows:
INTRODUCTION
1.

This is a classic case of trademark predation in the world of electronic advertising.

Defendant Old Republic has deliberately used Plaintiffs famous WFG trademark and name to
sell directly competing services, by running an advertisement that uses WFGs name and
federally registered trademark in a manner that is certain to cause confusion and mistake among
consumers in Oregon and elsewhere.
PARTIES
2.

Plaintiff WFG is a Delaware limited liability company with its principal place of

business at 12909 SW 68th Parkway, Suite 350, Portland, OR 97223. WFG conducts business in
this District.
3.

Upon information and belief, Defendant Old Republic is a Minnesota corporation

organized and existing under the laws of the State of Minnesota with its principal place of
business at 400 Second Ave. S, Minneapolis, MN 55401.
4.

Upon information and belief, Defendant owns, maintains, and operates the

website http://www.oldrepublictitle.com, through which Defendant markets and promotes its title
insurance services for sale in this District.
5.

Upon information and belief, Defendant directs its advertising toward this

District, where it transacts business through or as Old Republic Title Company of Oregon.
Upon information and belief, Defendant owns and controls Old Republic Title Company of

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 1

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 3 of 15

Oregon, a corporation organized and existing under the laws of the State of Oregon with its
principal place of business at 1 Southwest Columbia Street, Suite 560, Portland, OR 97258.
JURISDICTION
6.

This action arises under the Trademark Laws of the United States, 15 U.S.C.

1051 et seq. This Court has subject matter jurisdiction over WFGs claims pursuant to 15 U.S.C.
1121(a) and 28 U.S.C. 1331 and 1338.
7.

This Court has personal jurisdiction over Defendant because the claims against

Defendant arise from activity Defendant has directed toward residents of this District. Upon
information and belief, Defendant has engaged in substantial and not isolated activities within
the State of Oregon by selling and/or offering title insurance and related services in Oregon
through Old Republic Title Company of Oregon and/or Defendants website, including through
use of the infringing advertisement detailed herein.
BACKGROUND FACTS
8.

WFG is the sole owner of the following U.S. trademark registrations (among

others):
Trademark

Registration Number

Issue Date

WFG

4,372,515

July 23, 2013

WFG TITLE INSURANCE COMPANY

A WILLISTON FINANCIAL GROUP
COMPANY & design

4,376,456

July 30, 2013

WFG NATIONAL TITLE COMPANY

A WILLISTON FINANCIAL GROUP
COMPANY & design

4,376,455

July 30, 2013

WFG NATIONAL TITLE INSURANCE

COMPANY A WILLISTON
FINANCIAL GROUP COMPANY &
design

4,379,546

August 6, 2013

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 2

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 4 of 15

Trademark

Registration Number

Issue Date

WFG & design

4,379,540

August 6, 2013

WFG & design

4,362,002

July 2, 2013

WFG TITLE ADVISOR PRESENTED

BY WFG NATIONAL TITLE & design

4,395,372

September 3, 2013

WFG TITLE COMPANY OF

CALIFORNIA A WILLISTON
FINANCIAL GROUP COMPANY &
design

4,500,945

March 25, 2014

These marks are sometimes collectively referred to herein as the Federally Registered WFG
marks or as the WFG marks.
9.

WFG has used the mark WFG (Registration No. 4,372,515) in commerce in

connection with title insurance services (among other services) since at least January 1, 2010.
WFG continues to use the mark WFG in commerce in connection with title insurance services
among other services.
10.

WFG has used the marks of Registration No. 4,379,546 and No. 4,376,455 (for

WFG NATIONAL TITLE INSURANCE COMPANY A WILLISTON FINANCIAL GROUP

COMPANY and WFG NATIONAL TITLE COMPANY A WILLISTON FINANCIAL
GROUP COMPANY, respectively) in commerce in connection with title insurance services
(among other services) since June 18, 1974. WFG continues to use these marks in commerce in
connection with title insurance services among other services.
11.

WFG has used the mark of Registration No. 4,376,456 (WFG TITLE

INSURANCE COMPANY A WILLISTON FINANCIAL GROUP COMPANY) in commerce

in connection with title insurance services (among other services) since at least January 1, 2010.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 3

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 5 of 15

WFG continues to use this mark in commerce in connection with title insurance services among
other services.
12.

WFG has used, and continues to use, in commerce in connection with the sale of

its title insurance and other services, the following trade names (among others): WFG, WFG
Title, WFG Title Insurance. These trade names are sometimes collectively referred to herein
as WFGs trade names.
13.

WFG has used, and continues to use, the WFG marks and WFGs trade names on

its website, http://national.wfgnationaltitle.com, in connection with its sale and promotion of title
insurance services among other services.
14.

WFG has expended considerable time, effort, and money to promote the WFG

marks and WFGs trade names in connection with title insurance services among other services.
As a result of these efforts, and the substantial and continuous use of these marks and trade
names by WFG, consumers of such services in this District and elsewhere associate the WFG
marks and WFGs trade names with WFG.
15.

WFG has acquired valuable goodwill in connection with its services. This

goodwill is associated with the WFG marks and with WFGs trade names.
16.

Upon information and belief, using Googles AdWords program, Defendant has

caused the following advertisement to appear (the red oval has been added to aid the reader).
This advertisement is referred to herein as Defendants WFG Ad. (See also Ex. A.)

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 4

Case 3:15-cv-00047-BR

17.

Document 1

Filed 01/09/15

Page 6 of 15

As shown above, Defendants WFG Ad appears at the top of Google search

results when a consumer searching for WFGs title services enters the phrase wfg title into the
Google search box.
18.

Defendants WFG Ad prominently displays, at the top of the ad, a hyperlinked

phrase: WFG Title Insurance OldRepublicTitle.com. Below the hyperlinked phrase WFG
Title Insurance OldRepublicTitle.com, the ad lists the website www.oldrepublictitle.com/
and the statements Find the Right Title Insurance for you. Talk to a Representative! The
bottom line of Defendants WFG Ad includes the following four hyperlinks: The Company,
Careers, History and Strengths.
19.

Clicking on the hyperlinked phrase WFG Title Insurance

OldRepublicTitle.com directs the Internet browser to the domain www.oldrepublictitle.com.

Specifically, the Internet browser is directed to a web page with an address that begins:
www.oldrepublictitle.com/landingpages/custom-quote-google . . . . This page is referred to
herein as the Old Republic landing page.
COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 5

Case 3:15-cv-00047-BR

20.

Document 1

Filed 01/09/15

Page 7 of 15

The screenshot below shows a portion of an Old Republic landing page that is

displayed when the hyperlinked phrase WFG Title Insurance OldRepublicTitle.com in

Defendants WFG Ad is clicked. (See also Ex. B (Exhibit B includes a copy of the full page).)

21.

The Old Republic landing page includes an advertisement for title insurance and a

form for requesting a custom quote. The form can be filled out and submitted online to an
Old Republic Title rep. The landing page prominently displays Defendants name, Old
Republic National Title Insurance Company, in the upper left corner.
22.

Clicking on the hyperlink The Company in Defendants WFG Ad directs the

browser to the following web page: http://www.oldrepublictitle.com/newnational/Index.asp?

gclid=COCzqMWNgMMCFVJhfgodEQUAgw.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 6

Case 3:15-cv-00047-BR

23.

Document 1

Filed 01/09/15

Page 8 of 15

Clicking on the hyperlink Careers in Defendants WFG Ad directs the browser

to the following web page: http://www.oldrepublictitle.com/careers/?gclid=CP__3OaNgMMCF

UNrfgodPTQA1w.
24.

Clicking on the hyperlink History in Defendants WFG Ad directs the browser

to the following web page: http://www.oldrepublictitle.com/newnational/about/index.asp?gclid=

CPCF1veNgMMCFY-VfgodclQAmA.
25.

Clicking on the hyperlink Strengths in Defendants WFG Ad directs the

browser to the following web page: http://www.oldrepublictitle.com/newnational/about/

strengths.asp?gclid=COL29IaOgMMCFRFhfgodTFMAmA.
26.

Upon information and belief, Defendant owns, maintains and operates the website

http://www.oldrepublictitle.com in connection with the sale of title insurance services.

27.

The phrase WFG Title Insurance used in Defendants WFG Ad includes

WFGs mark WFG. The phrase WFG Title Insurance used in Defendants WFG Ad also
includes WFGs trade names WFG, WFG Title and WFG Title Insurance.
28.

The phrase WFG Title Insurance used in Defendants WFG Ad is confusingly

similar to the WFG marks and/or to WFGs trade names.

29.

Defendants WFG Ad uses the phrase WFG Title Insurance

OldRepublicTitle.com. This use juxtaposes WFGs trade name with Defendants website
www.oldrepublictitle.com. The positioning of WFGs trade name separated from Defendants
website by a hyphen creates the impression in the consumer viewing Defendants WFG Ad that
WFG and Defendant are affiliated, connected or otherwise associated, and/or that WFG sponsors
or approves of Defendants services.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 7

Case 3:15-cv-00047-BR

30.

Document 1

Filed 01/09/15

Page 9 of 15

Defendants WFG Ad uses the phrase WFG Title Insurance

OldRepublicTitle.com as a hyperlink that directs the consumer to a website promoting and

marketing Defendants services. The linking of WFGs trade name to Defendants website
creates the impression in the consumer viewing Defendants WFG Ad that WFG and Defendant
are affiliated, connected or otherwise associated, and/or that WFG sponsors or approves of
Defendants services.
31.

Defendants WFG Ad uses the phrase The Company as a hyperlink that directs

the consumer to a website promoting and marketing Defendants services. The use of The
Company, in singular form, under the title WFG Title Insurance OldRepublicTitle.com,
mistakenly suggests that WFG and Defendant are associated.
32.

The inclusion of the phrase The Company in Defendants WFG Ad causes a

consumer viewing Defendants WFG Ad to be confused, mistaken or deceived as to whether

The Company refers to WFG and/or Defendant, and/or whether WFG and Defendant are
otherwise affiliated, connected or otherwise associated, and/or whether WFG sponsors or
approves of Defendants services.
33.

Defendants WFG Ad is used in connection with the same kind of services as

WFG: namely, title insurance services. Defendants use of WFGs trade name and the WFG
mark in the ad is likely to cause confusion and mistake because the associated services are of the
same kind.
34.

Defendants WFG Ad targets consumers searching for wfg title. Defendants

WFG Ad targets the same class of consumers as WFG when using the WFG marks and WFGs
trade names. Defendants use of the ad is to market to the consumers interested in buying title
insurance services from WFG.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 8

Case 3:15-cv-00047-BR

35.

Document 1

Filed 01/09/15

Page 10 of 15

Defendants use of WFGs trade names and the WFG mark in the ad is likely to

cause confusion, mistake, and/or deceptionincluding but not limited to initial confusion,
mistake and deceptionof consumers, potential consumers, and others as to the affiliation,
connection or association of WFG with Defendant, and infringes WFGs trade name and/or
WFGs mark.
36.

Consumers, potential consumers, and others are likely, at least initially, to believe

that Defendants website and associated services are sponsored by, or affiliated with, or
approved by, WFG.
37.

Upon information and belief, Defendants WFG Ad is, and has been, displayed to

consumers at least throughout the United States in response to a search for wfg title using the
Google search engine since at least as early as December 4, 2014.
38.

Defendant has had constructive notice of the registration of the WFG marks since

the date of issuance of each such registration.

39.

Upon information and belief, Defendant had actual knowledge of WFGs trade

names, including at least WFG, WFG Title and WFG Title Insurance, at the time
Defendant adopted and began using the ad.
40.

Upon information and belief, Defendant does not have a federal trademark

registration for WFG, WFG Title, or WFG Title Insurance alone or in combination with
any other word or phrase.
41.

Defendants use of WFGs trade names and WFGs mark WFG or any

confusingly similar name or mark is unauthorized by WFG.

42.

Upon information and belief, Defendant has profited from its wrongful acts.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 9

Case 3:15-cv-00047-BR

43.

Document 1

Filed 01/09/15

Page 11 of 15

Upon information and belief, Defendant adopted and used WFGs mark and name

in commerce with the willful intent to trade off of WFGs goodwill and reputation by associating
Defendants website www.oldrepublictitle.com and Defendants title insurance services with
WFGs title insurance services to create a likelihood of consumer confusion in the marketplace.
44.

Upon information and belief, Defendant intentionally wrote the WFG Ad in a

manner that would cause consumer confusion, mistake or deception as to the affiliation,
connection or association of WFG with Defendant, and/or as to the sponsorship or approval of
Defendants services by WFG. The WFG Ad author meant to use WFGs name and mark to
cause mistake and confusion so that Defendant would win customers from its competitor WFG.
COUNT I
Violation of 15 U.S.C. 1114
45.

WFG incorporates by reference each of the foregoing allegations.

46.

Defendants acts violate 15 U.S.C. 1114(1).

47.

The WFG marks listed above are distinctive and owned exclusively by WFG.

48.

Defendant has used and continues to use the mark WFG in the accused

advertisement in connection with the sale, offering for sale, and advertising of Defendants title
insurance services, which are identical or nearly identical to the services listed in WFGs Federal
Registration of the WFG mark.
49.

Defendants unauthorized use of the WFG mark in the accused advertisement is

likely to cause confusion, mistake or deception as to the source, sponsorship, affiliation, or

approval of the services of Defendant because others are likely to believe Defendants services in
some way are connected with, sponsored by, licensed by, affiliated with, or otherwise associated
with WFG.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 10

Case 3:15-cv-00047-BR

50.

Document 1

Filed 01/09/15

Page 12 of 15

Defendants activities constitute an infringement of WFGs federally registered

WFG mark in violation of 15 U.S.C. 1114(1).

51.

The phrase WFG Title Insurance used in the accused advertisement is

confusingly similar to the WFG marks.

52.

Defendant has used and continues to use the phrase WFG Title Insurance in the

accused advertisement in connection with the sale, offering for sale, and advertising of
Defendants title insurance services, which are identical or nearly identical to the services listed
in WFGs Federal Registrations of the WFG marks.
53.

Defendants unauthorized use of the phrase WFG Title Insurance in the accused

advertisement is likely to cause confusion, mistake or deception as to the source, sponsorship,

affiliation, or approval of the services of Defendant because others are likely to believe
Defendants services in some way are connected with, sponsored by, licensed by, affiliated with,
or otherwise associated with WFG.
54.

Defendants activities constitute an infringement of one or more of the Federally

Registered WFG marks in violation of 15 U.S.C. 1114(1).

55.

Upon information and belief, Defendant knowingly and intentionally engaged in

the infringement of one or more of the Federally Registered WFG marks.

56.

Upon information and belief, Defendants activities are likely to damage WFGs

reputation and goodwill among consumers and to divert sales and opportunities away from WFG
and to Defendant.
57.

Upon information and belief, Defendants acts of infringement have caused and,

unless enjoined, will continue to cause WFG to sustain monetary damages, loss, and injury in an
amount to be determined in this action.

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 11

Case 3:15-cv-00047-BR

58.

Document 1

Filed 01/09/15

Page 13 of 15

WFG is without an adequate remedy at law. Defendants use of the WFG marks

and/or any confusingly similar variation of the WFG marks has caused and/or is likely to cause
irreparable injury to WFG, and unless Defendant is enjoined by this Court, WFG will continue to
suffer irreparable injury.
COUNT II
Violation of 15 U.S.C. 1125(a)
59.

WFG incorporates by reference each of the foregoing allegations.

60.

Defendants acts violate 15 U.S.C. 1125(a).

61.

The WFG marks listed above, and the trade names WFG, WFG Title, and

WFG Title Insurance, are distinctive and owned exclusively by WFG.

62.

Defendant has used the trade name WFG and/or WFG Title and/or WFG

Title Insurance in connection with the sale of title insurance services, which are identical or
nearly identical to the services with which WFG has used the name.
63.

Defendant is not authorized to use WFGs trade name, marks or any confusingly

similar name or mark that implies that Defendant is in any way associated or affiliated with
WFG.
64.

Defendants use of WFG and/or WFG Title and/or WFG Title Insurance in

the accused advertisement is likely to confuse consumers into believing that the services offered
by Defendant originated from, are authorized by, or are somehow affiliated with WFG.
65.

Defendants use of the name WFG and/or WFG Title and/or WFG Title

Insurance in the accused advertisement is likely to cause confusion, mistake or deception as to

the source, sponsorship, affiliation or approval of the services of Defendant because others are

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 12

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 14 of 15

likely to believe Defendants services in some way are connected with, sponsored by, licensed
by, affiliated with, or otherwise associated with WFG.
66.

Upon information and belief, Defendants use of the name WFG and/or WFG

Title and/or WFG Title Insurance was made with actual knowledge of WFGs rights in these
trade names.
67.

Upon information and belief, Defendant knowingly and intentionally engaged in

the infringement of WFGs trade name.

68.

Upon information and belief, Defendants activities are likely to damage WFGs

reputation and goodwill among consumers and to divert sales and opportunities away from WFG
and to Defendant.
69.

Upon information and belief, Defendants acts of infringement have caused and,

unless enjoined, will continue to cause WFG to sustain monetary damages, loss, and injury in an
amount to be determined in this action.
70.

WFG is without an adequate remedy at law. Defendants use of WFGs trade

name WFG and/or WFG Title and/or WFG Title Insurance has caused and/or is likely to
cause irreparable injury to WFG, and unless Defendant is enjoined by this Court, WFG will
continue to suffer irreparable injury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Williston Financial Group LLC prays for the following relief:
A.

A judgment for WFG against Defendant on all claims of this Complaint;

B.

A grant of preliminary and permanent injunction against Defendant and all

persons in active concert or participation with it, enjoining it from using WFGs trade name,

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 13

Case 3:15-cv-00047-BR

Document 1

Filed 01/09/15

Page 15 of 15

mark or any confusingly similar variation of WFGs trade name or mark, in connection with title
insurance services;
C.

A judgment awarding WFG compensatory damages as a result of Defendants

actions, together with interest and costs;

D.

A judgment requiring Defendant to account for and pay to WFG all profits

wrongfully derived by Defendant through its unlawful acts set forth herein, together with interest
and costs;
E.

An award to WFG of its costs (including expert fees), disbursements, and

reasonable attorneys fees incurred in this action, together with interest, including prejudgment
interest, pursuant to 15 U.S.C. 1117 and the equity powers of this Court; and
F.

Such other and further relief as may be deemed just and appropriate.
DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff requests a trial by jury on all issues properly
triable by a jury.
Respectfully submitted,
Dated: January 9, 2015

By:

s/ Kristen L. Reichenbach
Robert T. Cruzen, OSB 080167
Email: rob.cruzen@klarquist.com
James E. Geringer, OSB 951783
Email: james.geringer@klarquist.com
Kristen L. Reichenbach, OSB 115858
Email: kristen.reichenbach@klarquist.com
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Telephone: 503-595-5300
Facsimile: 503-595-5301
Attorneys for Plaintiff
Williston Financial Group LLC

COMPLAINT FOR
TRADEMARK INFRINGEMENT

Page 14