Overstock.com filed suit in the Federal Court for Utah for trademark infringement against NoMoreRack.com apparently over NoMoreRack.com’s use of the word Overstock in its ads and for buying keyword advertising under the term Overstock.
Here are the relevant parts of the Complaint:
“Overstock.com, Inc. files this Complaint for trademark infringement and unfair competition, and seeks a preliminary injunction, a permanent injunction, and damages against Defendant Nomorerack.com and alleges as follows:
“Upon information and belief, Nomorerack owns and maintains NoMoreRack.com, an online website that has been operating in the United States since 2011 and sells a wide variety of discounted consumer goods to individual consumers exclusively through its website.
Nomorerack competes directly with Overstock as an Internet-based discount retailer.
Nomorerack has a “D-” rating with the Better Business Bureau of New York, where Nomorerack has its headquarters, and has been the subject of at least 1,301 complaints closed by the Better Business Bureau of New York in the past twelve months, including advertising/sales issues; billing/collection issues; delivery issues; guarantee/warranty issues; and problems with products/service.
Notwithstanding Overstock’s well-established rights in and the strength of the OVERSTOCK Marks and Trade Dress, Nomorerack and/or its agents have been using the OVERSTOCK Marks and Trade Dress, or marks confusingly similar thereto, in conjunction with the advertising and promotion of Nomorerack’s competing website.
Upon information and belief, Nomorerack’s Internet advertising strategies and techniques are, in part, targeted specifically at Overstock.com’s customers.
Upon information and belief, Nomorerack is purchasing the terms “OVERSTOCK” and “OVERSTOCK.COM” as advertising keywords as part of its Internet- based advertising efforts.
In addition, upon information and belief, Nomorerack is purchasing data regarding the Internet activity of individual consumers to identify targets for its advertisements, including individual consumers that have visited Overstock.com’s websites. Upon information and belief, Nomorerack is using this data to send targeted, customized, and misleading advertisements for its own products directly to customers of Overstock.com.
At least as early as February 2012, Nomorerack began promoting its discounted consumer goods through Internet-based advertisements that featured the term “OVERSTOCK” prominently at the top of the advertisements, using a font nearly identical to that used by Overstock, with phrases such as “OVERSTOCK CLEARANCE” and “Overstock iPads.”
On or before November 2013, Nomorerack continued its use of the term “Overstock” prominently in its Internet advertisements, and added a rectangular red banner as part of its usage. For example, an advertisement on November 2, 2013, Nomorerack included a heading at the top of the ad stating “OVERSTOCK CLEARANCE” that was surrounded by a red banner, and employed a font very similar to that used by Overstock.
In these advertisements and others displayed on the Internet, Nomorerack intentionally and regularly capitalizes “Overstock” as though it was a proper noun to foster additional confusion with the Overstock.com brand. Nomorerack also employed keyword advertising and other methods to direct the misleading advertisements described above to individuals searching for Overstock on the Internet and/or who had recently visited Overstock’s websites.
On February 24, 2012 and November 5, 2013, Overstock sent letters addressed to Nomorerack informing it of the OVERSTOCK Marks and Trade Dress, explaining its belief that Nomorerack’s actions were likely to cause confusion in the marketplace, and asking Nomorerack to cease its use of the term “OVERSTOCK” in its advertisements. True and correct copies of the letters are attached hereto as Exhibit B.
Nomorerack never responded to either of the letters sent by Overstock.
Defendant’s unlawful use of the OVERSTOCK Marks and Trade Dress is likely to cause and has caused actual confusion in the marketplace among consumers.
Defendant’s unauthorized use of the OVERSTOCK Marks and Trade Dress is likely to cause confusion (and has actually caused confusion), deceive, and mislead the consuming public as to the source, origin, or sponsorship of the goods and services offered by Nomorerack. Defendant’s actions are likely to cause confusion (and have actually caused confusion), deceive, or mislead the consuming public into believing that the services offered by Nomorerack originate from Plaintiff or that there is some connection between Plaintiff and Nomorerack, thereby causing Plaintiff irreparable harm.
Plaintiff’s and Nomorerack’s services are highly similar and move through comparable or identical channels of trade to similar or identical classes of consumers. Indeed, Defendant, upon information and belief, is taking unfair advantage of the market and customers cultivated and properly serviced by Overstock.
Defendant has willingly and knowingly violated and infringed the rights of Plaintiff in its OVERSTOCK Marks and Trade Dress, with the intention of causing confusion, deceiving, or misleading customers, and Defendant has wrongfully traded on the goodwill and reputation of Plaintiff.
Defendant’s conduct and practices have caused, and will continue to cause, irreparable harm for which there is no adequate remedy at law, and for which Plaintiff is entitled to injunctive relief and damages.
Defendant’s acts as alleged above are without license or consent of Plaintiff.
Defendant has utilized the OVERSTOCK Marks and Trade Dress with full prior knowledge of Plaintiff’s rights in and to the OVERSTOCK Marks and Trade Dress, and Defendant’s use of the OVERSTOCK Marks and Trade Dress was and is for the willful and calculated purpose of trading on Overstock’s goodwill and business reputation as embodied in and symbolized by Plaintiff’s OVERSTOCK Marks and Trade Dress.
Defendant has marketed Nomorerack’s products and services in such a manner so as to inevitably suggest an association, affiliation, sponsorship with, or approval by, Plaintiff.
Defendant’s acts have caused, or are likely to cause, confusion, to deceive, and to mislead the consuming public as to the origin or sponsorship of the goods provided, all to the profit of Defendant and to Plaintiff’s detriment.
Defendant’s conduct constitutes infringement of Plaintiff’s common-law rights in and to Plaintiff’s OVERSTOCK Marks and Trade Dress, and further constitutes common law unfair competition with Plaintiff.
As a direct and proximate result of Nomorerack and/or its agents’ conduct, Overstock has suffered irreparable harm and is entitled to injunctive relief. In addition, Overstock is entitled to money damages, the amount of which will be established at trial.
PRAYER FOR RELIEF
WHEREFORE, Overstock prays for judgment as follows:
That Defendant and its officers, agents, servants, employees, attorneys, and all persons in active concert or participating with any of them be preliminarily and thereafter permanently enjoined from using, in connection with their business affairs, the OVERSTOCK Marks or anything which so resembles the OVERSTOCK Marks so as to be likely to cause confusion, deception, or mistake, including, but not limited to, using the term “Overstock” in conjunction with any of its operations, including on any of its mass e-mails, advertising, or promotional materials, as previously described herein;
That Defendant be ordered to deliver up for destruction any and all materials in its possession, control or custody, including but not limited to, signs, packaging, forms, advertisements, business cards, letterheads, circulars, boxes, and/or other representations and means for producing the same, whether in hard copy or electronic media, that make reference to or use any designation or mark that is confusingly similar to the OVERSTOCK Marks;
That Defendant be required to account for and pay to Plaintiff three times all gains, profits, and advantages derived by Defendant from the trademark infringement and unfair competition described herein;
An award of damages pursuant to 15 U.S.C. § 1117(a), including Defendant’s profits, damages sustained by Overstock, and costs of the action
An award pursuant to 15 U.S.C. § 1117(b) of three times Defendant’s profits as enhanced damages;
For a finding this is an exceptional case pursuant to the Lanham Act and an award of reasonable attorney fees;
Reasonable attorney fees, investigatory fees and expenses, together with prejudgment interest.”‘
The case is
Case No. 2:13-cv-01095-PMW