Complaint for False Designation of Origin

United States District Court
Western District of Washington At Seattle

Plaintiff IDPoint, Ltd. hereby alleges the following causes of action against Defendants:

I. Parties

1. The Plaintiff, IDPoint, Ltd. is a corporation organized and existing under the laws of the State of Washington, having its principal place of business in the City of Yelm, County of Pierce, State of Washington. IDPoint, Ltd. is actively engaged in the business of developing, marketing, and servicing custom and commercial software and hardware for use in business and commerce, particularly for those businesses and agencies that have a need for and/or require extensive identifying information collection, recall of such information, use of such information, tracking of such information, disbursement of such information, validation of such information, including validating information across multiple databases and outside databases, cross-referencing such information, and recall of such information.

2. Upon information and belief, Defendant Reed Elsevier Inc. is a corporation, d/b/a LexisNexis, or is another other business entity of unknown structure and organization, having its principal place of business in New York. Defendant Reed Elsevier Inc. is qualified to do business and is doing business in the State of Washington as LexisNexis.

3. The Defendant American Bankers Association is a corporation, or is another business entity of unknown structure and organization, having its principal place of business in Washington, D.C. Defendant is qualified to do business and is doing business in the State of Washington.

II. Jurisdiction and Venue

4. This action arises under the trademark laws of the United States of America, 15 U.S.C. 1051 et seq. Original jurisdiction over False Designation of Origin and/or Trademark Infringement and Federal Unfair Competition claims is conferred upon this Court by 28 U.S.C. 1331 and 1338.

5. Defendants Reed Elsevier Inc. d/b/a LexisNexis and American Bankers Association do business in this judicial district. Venue, therefore, is proper in this judicial district under 28 U.S.C. 1391(b)-(c).

III. Facts

6. IDPoint, Ltd. is a Washington Corporation doing business in multiple States of the United States. IDPoint, Ltd. has been in business since September 2000 and has extensive experience in the development, marketing, and servicing of custom and commercial software and hardware products, especially to businesses and governmental agencies, both state and federal, that have a need for and/or require extensive identifying information collection, recall of such information, use of such information, tracking of such information, appropriate disbursement of such information, validation of information, including validating information across multiple databases and outside databases, cross-referencing of such information, and retention of such information. The information that is collected, managed and verified by the custom and commercial software and hardware developed and marketed by IDPoint, Ltd., includes but is not limited to names, addresses, dates of birth, social security information and numbers, criminal records and histories, credit reports and information, telephone numbers, account numbers, biometric data including fingerprints, signatures, real property, sub-parts of real property, photographic, video, and/or digital images, etc.

7. IDPoint, Ltd. coined the trademark IDPoint and first began using the trademark IDPoint in commerce as early as September 2000.

8. IDPoint, Ltd. has promoted, marketed and sold products in various States of the United States under the trademark IDPoint, continuously since as early as September 2000. Further, IDPoint, Ltd, under the trademark IDPoint has been actively promoting applications for its products to businesses and governmental agencies, such as but not limited to, the gaming industry, gaming regulatory agencies, pharmacies, power generating plants, agencies with obvious homeland security applications, such as the Federal Aviation Administration, the TSA, the Department of Homeland Security, and other businesses and agencies.

9. Defendants American Bankers Association and/or Reed Elsevier, Inc., d/b/a Lexis/Nexis developed, upon information and belief, software substantially similar in function to the custom and commercial software already being marketed by IDPoint, Ltd. Further, Defendants American Bankers Association and Reed Elsevier, Inc., d/b/a Lexis/Nexis announced with a press release on or about December 5, 2002 that their product was being marketed under the name of IDPoint.

10. Defendants American Bankers Association and/or Reed Elsevier, Inc., d/b/a LexisNexis continue to market software substantially similar in function to the custom and commercial software of IDPoint, Ltd., all under the trademark IDPoint which is owned, used, marketed, and promoted by IDPoint, Ltd.

11. Defendants American Bankers Association and/or Reed Elsevier, Inc., d/b/a LexisNexis continue to market their software to businesses and agencies substantially similar to those marketed, supplied, and serviced by IDPoint, Ltd., all under trademark of IDPoint which is owned, used, marketed, and promoted by IDPoint, Ltd.

12. Defendants American Bankers Association and/or Reed Elsevier, Inc., d/b/a LexisNexis have infringed on the trademark IDPoint which is owned, used, marketed, and promoted by IDPoint, Ltd.

13. The impact of Defendants American Bankers Association and Reed Elsevier Inc., d/b/a LexisNexis trademark infringement is particularly acute in that Defendants are in the same industry as and in direct competition for the same or overlapping customer base as IDPoint, Ltd., and this has additionally caused confusion in the marketplace.

14. Defendants use of the trademark IDPoint is unauthorized and unlicensed by IDPoint, Ltd.

15. Defendants use of the trademark IDPoint allows the Defendants to trade on the substantial brand recognition enjoyed by IDPoint, Ltd., and to misdirect consumers from IDPoint, Ltd.s products and services to those of Defendants. By so doing, Defendants have gained an improper and unfair competitive advantage over IDPoint, Ltd. in the sale of, and marketing of, competing products and services.

16. Upon information and belief, Defendants have at all relevant times been aware or should have been aware of IDPoint, Ltd.s IDPoint trademark.

17. The acts of Defendants have caused and will continue to cause serious and irreparable harm to IDPoint, Ltd. and to the goodwill associated with IDPoint, Ltd.s trademark. Moreover, Defendants have and will continue to unjustly benefit - at IDPoint, Ltd.s expense - from gains, profits and advances derived from the promotion and sale of products and services in association with the IDPoint trademark, which is owned and used by IDPoint, Ltd.

IV. CAUSE OF ACTION
FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION

18. Plaintiff IDPoint, Ltd. realleges paragraphs 1-17 of this complaint.

19. Defendants have engaged in false designation of origin by using a mark identical to IDPoint, Ltd.s trademark IDPoint even though IDPoint, Ltd. owns the exclusive rights to use the mark in association with the products, services, and markets as described above. Defendants use of IDPoints trademark IDPoint is without license, permission or authorization and is likely to and has caused confusion or mistake as to the origin, sponsorship, or approval of Defendants goods, services, or commercial activities. Thus, Defendants actions constitute a violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

20. Defendants have derived and will continue to derive and receive from the above alleged acts of infringement, profits and revenues in an amount that is not presently known to Plaintiff. Further, such acts of infringement were made with knowledge of their capacity to deceive and were thus committed intentionally and willfully. By reason of the above acts of infringement, Plaintiff has been and will continue to be damaged in an amount to be determined at trial.

21. The activities of Defendants as alleged in this Complaint have caused and will continue to cause irreparable harm to Plaintiff.

Pray for Relief

WHEREFORE, IDPoint, Ltd. prays for the following alternative and cumulative relief:

1. An order enjoining Defendants, including all officers, agents, affiliates, employees and representative of the Defendants, and all persons in active concert or participation with any of them, from engaging in or performing any of the following:

1. Using or displaying the mark IDPoint, or any other marks confusingly similar thereto, as a service mark, trademark, trade name or part thereof alone or in combination with other words, symbols, styles, titles, or marks in connection with the advertising, marketing, sale or provision of any products or services.
2. Performing any act or using or displaying any words, names, or marks that are likely to cause confusion, to cause mistake or to deceive, or otherwise mislead the trade or public into believing that IDPoint, Ltd. and Defendants are one and the same; that IDPoint, Ltd. and Defendants are in some way connected; that IDPoint, Ltd. is the sponsor of Defendants or their products; that Defendants are in some way affiliated with, associated with, or under the supervision or control of IDPoint, Ltd., or that the products of Defendants originate from or are approved by IDPoint, Ltd. or are likely in any way to lead the public to associate Defendants with IDPoint, Ltd..
3. Filing, maintaining, or prosecuting any application to register the mark IDPoint, or any other mark confusingly similar thereto, or any derivative, colorable imitation, or confusingly similar marks as corporate names, trade names, trademarks, or service marks with any governmental agency; and,
4. Filing for, maintaining, or otherwise using any Internet Resource Locator (URL) domain name incorporating in whole or in part the mark IDPoint or any derivative, colorable imitation, or confusingly similar mark thereto.

2. An order that Defendants deliver up for destruction all products, printed material, stationery, business forms, signs, advertisements, brochures, promotional material, manuals, pamphlets, labels, packages, containers, and all other materials bearing the mark IDPoint, or any derivative, colorable imitation, or confusingly similar mark, together with all means for making or reproducing the same.

3. An order that Defendants immediately abandon or withdraw any application to register the mark IDPoint, or any derivative, colorable imitation, or confusingly similar mark as corporate names, trade names, trademarks, or service marks with any governmental agency.

4. An order requiring Defendants to send a written notice to all recipients of its mailings bearing the mark IDPoint, or any derivative, colorable imitation, or confusingly similar mark, and to all persons who have viewed Defendants Internet site, setting forth IDPoint, Ltd.s exclusive ownership of and rights to its trademark and trade name and disavowing any relationship between IDPoint and Defendants.

5. An order requiring Defendants to file with this Court and serve on IDPoint, Ltd., within 30 days of service of this order, a report in writing under oath setting forth in detail the manner and form in which Defendants have complied with the terms of the ordered relief.

6. Damages in an amount sufficient to compensate IDPoint, Ltd. for all injury sustained as a result of Defendants wrongful activities, and to account for and pay over to IDPoint, Ltd. all gains, profits, and advances derived from the use, promotion or sale by Defendants of any products or provision of any services in wrongful association with the IDPoint trademark.

7. Treble the amount of damages recovered by IDPoint, Ltd. and all of its litigation expenses, including reasonable attorneys fees and costs.

8. Such other and further relief as the Court may deem just.

VIII. JURY DEMAND

IDPoint, Ltd. requests a jury trial on all issues triable by jury.

RESPECTFULLY SUBMITTED this the 28^th day of February, 2003.
By: ROBERT A. ZIELKE, WSBA #21220
Attorney for Plaintiff