Cybersquatting

July 12, 2024

Eli Lilly Cracks Down on Deceptive Practices: Lawsuits Filed Against Medical Spas and Wellness Centers Over Fake Tirzepatide Products

Eli Lilly and Company, a leader in pharmaceutical innovation for nearly 150 years, has filed legal complaints against more than six medical spas and wellness centers for selling products that claim to contain Tirzepatide, the active ingredient in its popular diabetes and weight loss medications, MOUNJARO® and ZEPBOUND®. The complaints allege multiple infringements under federal and state laws, aimed at safeguarding patients from deceptive practices surrounding the FDA-approved medications.

According to the suits, MOUNJARO® and ZEPBOUND ® were developed through rigorous clinical trials and FDA approval processes. However, Lilly claims that the drugs offered by the Defendants in the cases are compounded products—neither tested nor approved by the FDA.

The lawsuit contends that the Defendants have deliberately misled consumers by creating the false impression that their products are equivalent to Lilly’s MOUNJARO® and ZEPBOUND®. This deception is allegedly propagated through deceptive advertising, including the use of Lilly’s trademarks without authorization, and misleading claims about the safety and approval status of their compounded drugs.

July 21, 2021

Vroom, Inc. Sues Indianapolis Car Company for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Vroom, Inc. (“Vroom”), the Plaintiff, apparently began selling used vehicles online in 2013. As e-commerce has taken off, Vroom sought and registered numerous trademarks including those at issue in this case as shown below (the “Vroom Marks”).

Mark	Registration No./Serial No.
VROOM	4,917,005
	5,076,055
VROOM	5,592,887
	5,436,572
VROOM GET IN	5,964,489
VROOM	6,075,286
	6,070,931
VROOM	87/287,698

According to the Complaint, Vroom became aware of Defendants’, Midwest Motors LLC, d/b/a Vrooomsace Car Selection and Khaled Alragwi, use of VROOMSACE, VROOMSACE CAR SELECTION, VROOMCARS.COM, vroomcars.com, and vroomindy.com in connection with the buying and selling of used cars (collectively the “Allegedly Infringing Properties”) in December 2020. Counsel for Vroom apparently sent multiple letters and emails to Defendants and even attempted to contact Defendants by phone to inform them of their allegedly infringing actions. As of the filing of the Complaint, Vroom claims Defendants did not respond to any of the cease and desist communications and continued using the Allegedly Infringing Properties.

Vroom claims Defendants’ use of the Allegedly Infringing Properties is likely to cause confusion or deceive customers as to the connection of the Defendants and Vroom. Therefore, Vroom is claiming Defendants’ activities and use of the Allegedly Infringing Properties constitute trademark infringement in violation of 15 U.S.C. § 1114. Also, under the Lanham Act, Vroom is seeking damages for false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a). Vroom is further claiming Defendants’ actions constitute common law unfair competition and trademark infringement. Finally, Vroom claims Defendants are in violation of the Anti-cybersquatting Consumer Protection Act under 15 U.S.C. § 1125(d) for using and registering the domain names “vroomindy.com” and “vroomcars.com.”

July 11, 2018

Indiana Trademark Litigation: Indiana Based Moving Company Sues Florida Company for Trademark Infringement and Cybersquatting

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Attorneys for Plaintiff, North American Van Lines, Inc. (“NAVL”) of Fort Wayne, Indiana filed suit in the Northern District of Indiana alleging that Defendant, North America Moving & Storage, Inc. of Miami Beach, Florida infringed its rights in United States Trademark Registration No. 917,431 for the mark “NORTHAMERICAN”. Plaintiff is seeking damages, exemplary damages, punitive damages, attorney’s fees, pre-judgment and post-judgment interest.

Counts one and two of the Plaintiff’s Complaint allege Federal Trademark Infringement and Federal Unfair Competition, both under the Lanham Act. Plaintiffs allege that the Defendant’s use of “NORTH AMERICA” and “NORTH AMERICA MOVING SYSTEMS” (“Infringing Marks”) has caused and will continue to cause confusion, deception, and mistake by giving the impression that the Defendant’s services originate from the Plaintiff or are associated with the Plaintiff. Further, Plaintiffs claim there has been actual consumer confusion as to the source of transportation services sold and advertised by the Defendant. NAVL also asserts that Defendant has taken part in multiple deceptive acts including making false representations, false descriptions, and false designations of origin of its services, providing for unfair competition.

Count three claims that Defendant registered and is using the northamericamoving.com domain name in bad faith under the Anticybersquatting Consumer Protection Act. NAVL alleges that Defendant is using the name without their permission and that Defendant’s intent in registering and using the domain name was and is to divert consumers from NAVL’s own websites. Count four of the Complaint alleges Indiana Trademark Infringement for Defendant’s use of a reproduction, colorable imitation, or copy of NAVL’s marks in connection with the sale, or offer of, distribution, and advertising of goods and services. Finally, Count five alleges Common Law Unfair Competition for consumer confusion and deception by Defendant’s use of the Infringing Marks.

October 26, 2016

Indiana Trademark Litigation: AAA Sues AAA Automotive Parts

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark attorneys for Plaintiff The American Automobile Association, Inc. (“AAA”) filed a trademark lawsuit in the Southern District of Indiana. Two Bloomington Defendants are named, AAA Automotive Parts and the company’s owner. Defendants also do business as AAA Automotive & Truck Parts, and d/b/a AAA Automotive Parts.

AAA, a not-for-profit corporation, offers “travel and automobile products and services (including automobile repair services at its AAA Car Care Centers and through AAA Approved automobile repair businesses), financial advice, insurance and warranty coverage, and discounts.”

Defendants own and run a website, TRIPLEAPARTS.COM, on which they advertise automobile-related goods and services. Defendants also have brick-and-mortar shops in Indianapolis and Griffith, Indiana as well as locations in Missouri and Florida.

In this Indiana trademark lawsuit, lawyers for AAA listed the following causes of action:

• Count I: Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Federal False Designation of Origin and Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Federal Trademark Dilution in Violation of Section 43(c) of the Lanham Act
• Count IV: Cybersquatting Under Section 43(d) of the Lanham Act
• Count V: Trademark Dilution Under Ind. Code § 24-2-1-13.5
• Count VI: Trademark Infringement Under Ind. Code § 24-2-1-13

• Count VII: Unfair Competition and Trademark Infringement Under Common Law

AAA, which claims ownership to over 100 trademarks, contends that the following trademarks are at issue in this lawsuit:

Reg. No. 829,265	AAA Mark, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 2,158,654	AAA & Design Mark, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 3,316,227	AAA & Design Mark, used in connection with “[i]ndicating membership in a(n) automobile membership club”
Reg. No. 1,168,790	TRIPLE A Mark, used in connection with a variety of automobile association services
Reg. No. 3,046,904	AAA Mark, used in connection with repair services
Reg. No. 3,046,905	AAA & Design Mark, used in connection with repair services
Reg. No. 3,102,319	AAA & Design Mark, used in connection with vehicle parts
Reg. No. 5,036,379	AAA Mark & Design, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 1,449,079	AAA APPROVED AUTO REPAIR & Design Mark, used in connection with automobile repair services
Reg. No. 3,604,164	AAA TOTAL REPAIR CARE Mark, used in connection with auto diagnosis and repair services

AAA seeks damages and asks that those damages be trebled pursuant to 15 U.S.C. § 1117 and Indiana law. It also seeks equitable relief, costs and attorneys’ fees.

July 18, 2016

Indiana Trademark Litigation: Eye 4 Group Sues Over Use of Eyefourgroup.com

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark attorneys for Eye 4 Group, LLC Corporation (“E4G”) of Fishers, Indiana filed an intellectual property lawsuit in the Southern District of Indiana. Defendants are Indianapolis Signworks, Inc. (“ISW”) of Indianapolis, Indiana and Andrew Chapman of Carmel, Indiana, the owner of ISW.

Plaintiff E4G is in the business of graphic design, sign manufacturing, metal fabrication, promotional material and apparel. It owns a registration for the trademark EYE 4 GROUP, Reg. No. 4,694,655, which has been issued by the U.S. Patent and Trademark Office. It has also an application for the registration of a second trademark for EYE 4, pending under Serial No. 87/018,205.

E4G states that Defendant ISW is a direct competitor in the business of making signs as well as associated tools and products. E4G, which owns and operates the website eye4group.com, contends that ISW has used the internet domain name “eyefourgroup.com” and, in doing so, has infringed E4G’s intellectual property. E4G asserts that Defendants’ actions constitute a knowing infringement of its trademark rights and that those actions were intentional, willful and in bad faith.

In this Indiana lawsuit, Plaintiff alleges direct and contributory trademark infringement, false designation of origin, and unfair competition arising under the Lanham Act; dilution under the Federal Trademark Dilution Act; violations of the Anticybersquatting Consumer Protection Act and related wrongdoing under Indiana state law.

Plaintiff seeks injunctive relief and monetary relief, including punitive damages, attorney fees and costs of the litigation.

March 18, 2016

Indiana Trademark Litigation: Indiana-Based “Oak Motors” Sues California-Based “Oak Motors” for Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Oak Motors, Inc. of Anderson, Indiana (“Oak Indiana”) filed a trademark infringement complaint in the Southern District of Indiana alleging that Oak Motors, Inc. of San Mateo, California (“Oak California”) is infringing U.S. Trademark Registration No. 4,487,991, which was issued by the U.S. Patent and Trademark Office.

Plaintiff Oak Indiana, a used-car dealership, has three locations in Indianapolis as well as a location in Anderson, Indiana and another in Muncie, Indiana. It focuses on offering cars to “customers with credit challenges.” It has commenced trademark litigation against a California-based used-car dealership that offers primarily luxury-brand vehicles.

Plaintiff contends that, by using “Oak Motors” to promote its business, Oak California intended to cause, and has caused, initial interest confusion and actual confusion among consumers and potential consumers. Oak Indiana asserts that Oak California’s actions are an intentional attempt to trade off the goodwill of Oak Indiana.

In addition to Oak California’s use of “Oak Motors” as a business name, Oak Indiana also complains of Defendant’s use of three websites, http://oakmotorsusa.com/, http://oakmotorsinc.com/ and http://www.oakmotorsca.com/default.aspx, claiming that the use of those websites is calculated to create consumer confusion regarding whether the two companies are related.

In this federal lawsuit, filed by Indiana trademark lawyers for Oak Indiana, the following claims are asserted:

• Count I: False Designation of Origin and False Description – 15 U.S.C. §1125(a)
• Count II: Common Law Trademark Infringement
• Count III: Unfair Competition
• Count IV: Cybersquatting – 15 U.S.C. §1125(d)

• Count V: Declaratory Judgment

Oak Indiana seeks equitable relief, including the transfer of domain names referencing the “Oak Motors” trademark; Oak California’s profits from the sale of all infringing goods; damages, including actual damages, punitive damages, statutory damages and treble damages; costs of litigation and attorneys’ fees.

October 2, 2015

Indiana Trademark Litigation: Indigo Vapor Enterprises Sues Indigo Vapor Company

By Overhauser Law Offices, LLC

South Bend, Indiana – Indigo Vapor Enterprises LLC of South Bend, Indiana commenced intellectual property litigation against Indigo Vapor Company, LLC, Robert Lee Martin and Charles Nandier of Tucson, Arizona.

Indigo Vapor Enterprises is in the business of selling “vaping” and e-cigarette materials across the United States and throughout the world. It alleges that Defendant sells similar goods in the same marketplace.

Plaintiff contends that Defendants infringed its trademarks, consisting of a stylized INDIGO VAPOR trademark, Registration No. 4,790,247, and a second trademark for INDIGO VAPOR, Registration No. 4,790,244 by using the Indigo Vapor Enterprises name and those trademarks to promote Defendants’ competing products. These accused uses include the operation of a website at www.indigovaporcompany.com. Both trademarks have been filed with the U.S. Patent and Trademark Office.

Plaintiff alleges trademark infringement, dilution and false designation of origin under the Lanham Act. It also asserts cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”) and trademark infringement and unfair competition under the common law of Indiana and other states.

In this lawsuit, filed by Indiana trademark attorneys for Indigo Vapor Enterprises, the following causes of action are listed:

• Count I – Federal Trademark Infringement – Lanham Act (15 U.S.C. § 1114)
• Count II – Federal Unfair Competition – Lanham Act (15 U.S.C. § 1125(a))
• Count III – False Designation of Origin – Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV – Federal Trademark Dilution – Lanham Act (15 U.S.C. § 1125(c))
• Count V – Federal Cybersquatting – ACPA and Lanham Act (15 U.S.C. § 1125(d))
• Count VI – Common Law Trademark Infringement

• Count VII – Common Law Unfair Competition

Plaintiff seeks equitable relief as well as damages, costs and attorneys’ fees.

November 26, 2014

Indiana Trademark Litigation: Hoosier Momma Sues Founding Member Erin Edds

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Hoosier Momma, LLC (“Hoosier Momma”) of Brownsburg, Indiana sued Erin Edds (“Edds”) of Marion County, Indiana in the Southern District of Indiana. In this Indiana litigation, Hoosier Momma accuses Edds of violations of the federal Lanham Act, the Computer Fraud and Abuse Act and Indiana’s Uniform Trade Secret Act, as well as computer tampering, misappropriation and attempted misappropriation of trade secrets, breach of contract, breach of fiduciary duties, tortious interference with business relationships, and conversion. Among its allegations, Hoosier Momma contends that Edds tarnished its “Hoosier Momma” trademark as well as its “Betty Design” trademark, U.S. Trademark Registration Nos. 4584165 and 4584167, which have been registered with the U.S. Trademark Office.

In 2010, Kimberly Cranfill (“Cranfill”), Catherine Hill and Edds formed Hoosier Momma. They are the sole members of Hoosier Momma, which is in the business of developing and selling vegan, gluten-free products that are sold in more than 600 restaurants, stores and hotels in at least six states.

Hoosier Momma alleges multiple wrongs by Edds, including making damaging false statements, engaging in conduct that conduct negatively affects Hoosier Momma’s reputation and sales of its products, tarnishing its trademarks, and changing passwords to Hoosier Momma’s social media accounts without authorization, refusing to relinquish control of the accounts and continuing to post to those accounts.

Edds is also accused of accessing Cranfill’s e-mail account to obtain confidential information as well as sharing confidential information with Wilks & Wilson, a competitor of Hoosier Momma. Hoosier Momma also contends that Edds contacted Tone Products, Inc. (“Tone,”) a direct competitor of Hoosier Momma’s packer, and asked that Tone reverse engineer a Hoosier Momma product to allow Tone to determine the confidential recipe of such product, a trade secret of Hoosier Momma, and provide it to Edds for her personal use and/or a use that jeopardized the disclosure of Hoosier Momma’s trade secrets. Hoosier Momma also claims that Edds improperly contacted several of Hoosier Momma’s distributors, clients, manufacturers and other business partners.

Further, Edds allegedly attempted to sell her interest in Hoosier Momma without the consent purportedly required under the Hoosier Momma operating agreement. Finally, Hoosier Momma contends that Edds sold and traded Hoosier Momma product and improperly retained the proceeds.

In its Indiana trademark complaint, filed by trademark lawyers for Hoosier Momma, the following is claimed:

Count I: Violation of the Lanham Act, 15 U.S.C. § 1051, et seq.
Count II: Violation of the Computer Fraud and Abuse Act, 18 U.S.C. § 1030, et seq.
Count III: Computer Tampering
Count IV: Misappropriation and Attempted Misappropriation of Trade Secrets and Violation of Indiana Uniform Trade Secret Act
Count V: Breach of Contract
Count VI: Breach of Fiduciary Duties
Count VII: Tortious Interference with Business Relationships
Count VIII: Conversion
Count XI [sic]: Unjust Enrichment

Hoosier Momma asks for injunctive relief; compensatory and exemplary damages; costs; expenses; and attorneys’ fees.

October 20, 2014

Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana intellectual property attorney for Burns Rent-Alls, Inc. of Mishawaka, Indiana filed a cyberpiracy lawsuit in the Northern District of Indiana alleging that Michael Sharpe and Aays Rent-All Co., Inc., also of Mishawaka, Indiana, had wrongfully registered and used domain names that would result in confusion with the “BURNS RENT-ALLS” common-law trademark.

Burns Rent-Alls is a fifth-generation family-owned firm that has been in business for over 100 years. It offers goods and services throughout northern Indiana and southwest Michigan under the BURNS RENT-ALLS brand including equipment rentals, convention services, event rentals, portable toilet rentals, costume rentals, and tent and canopy rentals.

Aays Rent-All is, according to Plaintiff, in a similar business and provides rentals throughout northern Indiana and southwest Michigan, including equipment rentals, convention services, event rentals, and tent and canopy rentals.

Burns Rent-Alls claims that, by virtue of its “longstanding and continuous use” of the BURNS RENT-ALLS mark, it owns common law trademark rights to that mark for use in connection with Burns Rent-Alls’ goods and services.

Aays Rent-All and Sharpe are accused of registering and using domain names that are confusingly similar to Burns Rent-Alls’ Mark, with a bad-faith intent to profit from their use and registration of those domain names. At issue are: (i) burnspartyrentall.com; (ii) burnspartyrental.com; and (iii) burnsrentall.com. Plaintiff contends that Defendants are using these names to redirect Internet traffic intended for the Burns Rent-Alls’ website to Aays Rent-All’s website. This use, Plaintiff asserts, is likely to cause confusion or mistake, or to deceive consumers into believing that there is an association between Aays Rent-All and Burns Rent-Alls.

Plaintiff also states that it agreed to pay, and did pay, $100 to purchase the burnsrentall.com domain name but that Defendants did not transfer the domain name as allegedly agreed.

In its complaint, Indiana intellectual property counsel for Burns Rent-Alls alleges the following:

Count I: Unfair Competition
Count II: Cyberpiracy
Count III: Breach of Contract

Burns Rent-Alls requests injunctive relief, including the transfer of the domain names at issue; damages, including treble damages; and costs and attorneys’ fees.

Practice Tip:

Plaintiff indicates that it attempted to obtain an agreement from Defendants regarding at least one of the domain names at issue prior to filing this lawsuit. Plaintiff contends that, despite this effort, Defendants continued to use the allegedly infringing website names. This lawsuit for unfair competition, cyberpiracy and breach of contract followed.

Another approach available to a plaintiff in such a situation is to seek a transfer of the domain names under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). This policy was established to resolve “The Trademark Dilemma” inherent in the largely unpoliced sales of domain names — the registration of a trademark without the consent of the trademark owner.

As part of the process of registering a domain name, registrants must, among other things, 1) “represent and warrant” that registering the name “will not infringe upon or otherwise violate the rights of any third party” and 2) agree to have the matter heard as an UDRP proceeding if any third party asserts that the domain name violates its trademark rights.

The UDRP is an administrative procedure. A UDRP limits itself to matters concerning abusive registrations and will not intervene in genuine disputes over trademark rights. To prevail in a UDRP proceeding, for each domain name, the complainant must establish three elements:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The registrant registered the domain name and is using it in “bad faith.”

February 27, 2014

James Dean, Inc.’s Indiana Trademark Infringement Litigation Against Twitter Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Illinois and Missouri trademark attorneys for James Dean, Inc. of Indiana sued in Indiana state court alleging that Twitter, Inc. of California infringed the trademark James Dean, which has been issued by the U.S. Trademark Office by allowing the registration of the Twitter handle @JamesDean. The case was removed from the Superior Court of the County of Hamilton, Indiana to the Southern District of Indiana.

Plaintiff James Dean, Inc. filed a trademark complaint against Twitter, as well as the fictitious persons, John Doe Defendants 1-5 Company, in an Indiana state court. In the complaint, Plaintiff alleged that it is the exclusive owner of the name, likeness, voice, right of publicity and endorsement, worldwide trademarks, copyrights, and other intellectual property including but not limited to visual and aural depictions, artifacts, memorabilia, and life-story rights, and/or trade dress of the late movie star James Dean.

James Dean, Inc. further alleges that Twitter has allowed the registration and operation of a Twitter account, using the handle @JamesDean, located at https://twitter.com/JamesDean, which is purportedly in violation of Plaintiff’s rights.

In the complaint, filed by an Indiana trademark lawyer, James Dean, Inc. asserted nine causes of action against Twitter:

• Count I – Trademark Infringement Under Section 32(1) or 3(A) of the Lanham Act;
• Count II – False Endorsement Under Lanham Act § 43(A);
• Count III – Indiana State Statutory Right of Publicity;
• Count IV – Common Law Right of Publicity;
• Count V – Common Law Unfair Competition;
• Count VI – Unjust Enrichment;
• Count VII – Conversion;
• Count VIII – Deception; and
• Count IX – Indiana Crime Victims’ Act.

For relief, James Dean, Inc. sought damages, including treble damages, costs, and attorney’s fees as set out in the Indiana Right of Publicity Statute, Lanham Act and other statutes. In addition, Plaintiff seeks injunctive relief.

Twitter removed the action pursuant to 28 U.S.C. § 1331 (federal-question jurisdiction) and 28 U.S.C. § 1332 (diversity-of-citizenship jurisdiction). To support the former basis for federal jurisdiction, Twitter noted federal questions inherent in the filing of a claim under the Lanham Act. Twitter also claimed supplemental jurisdiction for the remaining claims under Indiana law.

To support the latter basis for jurisdiction in an Indiana federal court, Twitter asserted that the two prongs for diversity-of-citizenship jurisdiction were met. First, James Dean, Inc. is a citizen of Indiana, as it has alleged that it is incorporated under the laws of the State of Indiana with its principal place of business in Indiana, while Twitter claims to be a citizen of two states: Delaware and California. Second, while Twitter “strongly contests liability and does not believe Plaintiff is entitled to any relief whatsoever,” it indicated that, were liability to be found, the amount in controversy could exceed $75,000, given that James Dean, Inc. is suing for “all damages” allowed by the applicable statutes, which can include actual damages, treble damages, punitive damages, statutory damages and attorneys’ fees.

Practice Tip:

James Dean was born on February 8, 1931, in Marion, Indiana. He grew up in Fairmount, Indiana, about 60 miles northeast of Indianapolis. Dean starred in East of Eden, Rebel Without a Cause and Giant, receiving two Academy Award nominations for Best Actor.

In 1955, Dean died in an automobile accident. As a result of the nearly 60 years that have passed since his death, it is unlikely that those who follow @JamesDean believe that the tweets have been written by James Dean himself. Nonetheless, celebrity licensing agency CMG Worldwide, based out of Carmel, Indiana, is attempting to recover the James Dean Twitter account.

CMG, which also represents such celebrity images as Marilyn Monroe, Jackie Robinson and Babe Ruth, has attempted “on numerous occasions” to make Twitter take action to block and identify owners of various unauthorized accounts. Those accounts could give the impression, it says, that the users have permission from the estates of the celebrities or CMG and “result in immeasurable and irreparable damage.”

Finally, most of the James Dean trademarks that were registered by the U.S. Trademark Office have been either abandoned or cancelled. It will be interesting to see to what degree this fact influences the court, should liability be established and a calculation of damages be appropriate.