RiskIQ.com. sued Risk.IO, for trademark infringement and unfair competition based upon Risk IO’s having improperly and willfully used the names, yesterday in the United States District Court in the Northern District Of California San Francisco Division for trademark infringement asking for disgorgement of profits, for civil penalties, and for preliminary and permanent injunctions enjoining Risk IO, its officers, agents, servants, employees, and all other persons in active concert with it, from unfair and unlawful business practices of directly or indirectly infringing RiskIQ’s Trademark.
.IO has become a very popular domain extension in the last couple of years especially in the Tech sector.
It will be interesting to see how this case get resolved
Here are the highlights from the lawsuit:
RISK IO and RISKI/O (the “Infringing Marks”), which are nearly identical to RiskIQ’s valid, federally registered trademark and trade name RISKIQ, U.S.Trademark Registration No. 4,011,136 (the “RISKIQ Mark” or the “Trademark”), without permission, causing customer confusion, dilution and tarnishment, and unfairly competing with RiskIQ by the improper use of the confusingly similar Infringing Marks.
Plaintiff RiskIQ is a Delaware corporation with its principal place of business in San Francisco, California. RiskIQ was incorporated under the laws of Delaware on April 23, 2003 and was founded in anticipation of potential security threats unique to conducting business and storing and transmitting data and information over the internet and online networks.
Defendant Risk IO is or purports to be a Delaware corporation having, based on published information, its principal place of business in Chicago, Illinois, and offices in San Francisco, California. Risk IO sells software and services which monitor live threat processing of internet breaches under the Infringing Marks.
RiskIQ is in the business of designing, manufacturing, marketing, selling, and providing services for use in connection with software and services for online security monitoring and management services.
On April 22, 2010, Plaintiff RiskIQ filed for a trademark registration in the name of “RISKIQ” based on actual use of the mark and trade name. The Trademark was registered on August 16, 2011 and bears registration number 4,011,136. Exhibit 1 is a true and correct copy of the “RISKIQ” federal trademark registration.
Plaintiff RiskIQ owns the federally registered Trademark on the standard character mark RISKIQ in International Class 09 for “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information for security assessment and risk management, for monitoring online fraud and abuse in the field of security monitoring.”
Plaintiff RiskIQ has continuously used the Trademark in interstate commerce since, at least, June 27, 2007 in connection with the sale of goods and services, as well as its corporate operations.
The Trademark has been prominently used on RiskIQ’s website, RiskIQ.com.
RiskIQ’s use of the Trademark in the sale of its goods and services and as its corporate designation began before that of Risk IO’s adoption of the Infringing Marks.
Defendant Risk IO’s use of the Infringing Marks is in connection with the sales and offering for sale of computer security software and services, and sales of similar products, such as providing software for security, including in prominent displays on its website https://www.Risk.io.
Based on published information, Defendant Risk IO adopted and began using the Infringing Marks around March 2011, for its SaaS-based products and services, aimed at scanning for and aggregating vulnerabilities and threats to a user’s data and internet, thereby identifying and prioritizing the user’s security risks. Defendant Risk IO uses the nearly identical, confusingly similar Infringing Marks in sales and offering for sale goods and services in the same market as, or a near-field market to that in which RiskIQ uses its senior, federally registered Trademark.
Defendant Risk IO’s use of its mark is both likely to cause customer confusion, and has caused actual customer confusion among RiskIQ’s existing and potential customers. For example, the CEO of RiskIQ had a discussion with a potential client who, unknowingly, planned to meet with Risk IO’s executive, whom the potential client had assumed was an extension of RiskIQ. This and other evidence demonstrates such actual confusion of customers concerning the Infringing Marks.
In December 2014, RiskIQ, informed of Risk IO’s use of the Infringing Marks, demanded that Risk IO cease and desist use of the Infringing Marks. Since the date of the letter, Risk IO has continued use of these nearly identical, junior Infringing Marks to RiskIQ’s.
RiskIQ is also entitled to enhanced damages under the Lanham Act due to Risk IO’s deliberate, willful and intentional use of Infringing Marks in an amount to be proven at trial.
Moreover, Risk IO and those acting in concert with it, have caused, are causing, and unless enjoined and restrained by this Court, will continue to cause RiskIQ great and irreparable injury to, among other things, the value of the Trademark, the goodwill and business reputation of RiskIQ, and its business relations with customers and prospective customers, all of which cannot be adequately measured or compensated in money damages.
RiskIQ has no adequate remedy at law and is entitled to preliminary and permanent injunctive relief enjoining and restraining Risk IO, its officers, agents, servants, employees, partners, licensees, affiliates, and attorneys, and those persons in active concert or participation with them, including but not limited to Risk IO’s distributors, resellers, and customers, from further use of the Infringing Marks.
Because of RiskIQ’s federally registered mark, its widespread promotion of its Trademark, Tradename and its Corporate name, and its correspondence informing Risk IO of its claims to the term, Risk IO had prior knowledge of RiskIQ’s exclusive claim to trademark rights in the Trademark, Tradename and Corporate name.
Defendant Risk IO deliberately and willfully began its use of the confusingly similar Infringing Marks on its directly competitive products and services as a calculated and intentional strategy to exploit the advantage of RiskIQ’s established trademark and trade name by creating confusion among customers.
Plaintiff RiskIQ has been damaged by this willful trademark infringement, and is entitled to its lost profits, or an accounting and award of Risk IO’s unjust enrichment at RiskIQ’s expense.
Plaintiff RiskIQ is also entitled to an award of punitive damages in an amount to punish and deter future such willful violation of federal trademark rights.
Because this is an exceptional case of infringement by a defendant who acted maliciously, fraudulently, deliberately, and willfully, knowing it was infringing RiskIQ’s rights, RiskIQ is also entitled to recovery of its attorneys’ fees and costs of suit.
RiskIQ prays for judgment against Risk IO, and those persons in control of or acting inconcert with Risk IO, as follows:
On the First Claim for Trademark Infringement, for statutory damages, for RiskIQ’s actual damages according to proof, for an accounting by Risk IO of all gains, profits, and advantages derived from their acts of infringement and for its other violations of law; for disgorgement of any additional gains, profits, and advantages obtained by Risk IO attributable to its infringements of RiskIQ’s Trademark, according to proof; for costs of suit, and for the greater of treble profits or damages, as allowed by law;
On the Second Claim for Willful Trademark Infringement, for actual damages according to proof, for an accounting by Risk IO of all gains, profits, and advantages derived from their acts of infringement and for its other violations of law; for disgorgement of any additional gains, profits, and advantages obtained by Risk IO attributable to its infringements of RiskIQ’s Trademark, according to proof; for costs of suit, and for the greater of treble profits or damages, as allowed by law;
On the Third Claim for Unfair Competition, for restitution, for disgorgement of profits, for civil penalties, and for preliminary and permanent injunctions enjoining Risk IO, its officers, agents, servants, employees, and all other persons in active concert with it, from unfair and unlawful business practices of directly or indirectly infringing RiskIQ’s Trademark or continuing to assist in such activity;
On all Claims for Relief, For RiskIQ’s actual damages according to proof, and for disgorgement of any additional gains, profits, and advantages obtained by Risk IO attributable to its infringements of RiskIQ’s Trademark, in accordance with proof;
E. For an accounting by Risk IO of all gains, profits, and advantages derived from their acts of infringement and for its other violations of law;
On all Claims for Relief, for pre-judgment and post-judgment interest;
On all Claims for Relief, for its costs of suit and for its reasonable attorneys’ fees as allowed by law; and
For such other, further, and different relief as the Court deems just and proper.
Enrico Traverse says
One of the first cases which will test whether the gTLD counts as part of the infringement claim. This will be a big issue moving forward in a world of thousands of gTLD words added to generic domain names creating two word combinations that are either suggestive or arbitrary when linked together. I expect defendants will use the US Patent and Trademark Office (USPTO) has released Examination Guide 1-14 updating its policy and procedure for handling applications for marks comprising a generic top-level domain name (gTLD) and setting out circumstances for registrability of a mark consisting of a gTLD for domain-name registry operator and registrar services.
The policy is not directly on point since it deals with applications where the TLD is part of the application, rather than an argument that the TLD creates a likelihood of confusion with a, for example, 2 or 3 word mark where the last word is the TLD.
“However, the USPTO acknowledges that under the Internet Corporation for Assigned Names and Numbers (ICANN)’s new gTLD program, some of the new gTLDs under consideration may have significance as source identifiers. Therefore, the USPTO is amending its gTLD policy to allow for registration of a mark consisting of a gTLD for domain-name registry operator and registrar services under some circumstances. Under the USPTO’s updated policy, an examiner must still refuse registration of these marks on the grounds that the gTLD would not be perceived as a mark. However, the applicant may in some circumstances avoid or overcome the refusal by:
– Providing evidence that the applied-for mark will be perceived as a source identifier.
– Showing that it has entered into a currently valid agreement with ICANN designating the applicant as the entity responsible for operation of the registry for the gTLD identified by the mark.
– Showing that the identified services will be primarily for others’ benefit.”
Year, very dangerous precedent it will be not. Else anyone can register ***IQ . com and claim *** . io.