Virtualpoint v. Poarch Band of Creek Indians - Amended Complaint PDF

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 1 of 22 Page ID #:607
1 Brian P. Kinder (212332)

2 THE KINDER LAW GROUP, APC
19200 Von Karman Avenue, Fourth Floor

3 Irvine, California 92612
Telephone:
(949) 216-3070
4 Facsimile:
(949) 216-3074
Email: bkinder@tklglaw.com
5
6
Attorney for Plaintiff
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA
10
11
12 VIRTUALPOINT, INC., dba Captive Media, ) Case No.:

a California corporation,
13
Plaintiff,
14
15
vs.
16 POARCH BAND OF CREEK INDIANS, dba

PCI GAMING AUTHORITY, a federally17 recognized Indian tribe; NATIONAL
ARBITRATION FORUM, INC., a Minnesota
18 corporation; and DOES 1 10,
19
Defendants.
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SECOND AMENDED COMPLAINT
Case No. SACV-15-02025
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SACV-15-02025-CJC (KESx)
Judge:
CORMAC J. CARNEY
Courtroom: 9B
FOR:
1. Declaratory Judgment re Domain Name;

2. Anti-cybersquatting Consumer Protection
Act (15 U.S.C. 1125(d));
3. Cancellation of Trademark Registrations
(15 U.S.C. 1064, 1119); and
4. Declaratory Judgment re UDRP Decision;
and
5. Common Law Fraud.
DEMAND FOR JURY TRIAL
Plaintiff VirtualPoint, Inc., dba Captive Media (Plaintiff), by its attorney, for its
2 Complaint against Defendant Poarch Band of Creek Indians, dba PCI Gaming Authority, a
3 federally-recognized Indian tribe (Defendant PCI), Defendant National Arbitration Forum, Inc.,
4 a Minnesota corporation (Defendant NAF), and DOES 1 through 10, inclusive, hereby alleges
5 as follows:
6
7
NATURE OF CASE
1.
As explained in detail below, Defendant PCI acquired various trademark
8 registrations comprised of or incorporating the term WIND CREEK by committing fraud on the
9 U.S. Patent and Trademark Office (USPTO). Despite the fact that Wind Creek has a clear
10 geographic significance in Alabama (Wind Creek State Park is the largest state park in the State of
11 Alabama), PCI knowingly and falsely submitted a declaration to the USPTO stating under penalty
12 of perjury that the term Wind Creek has no geographic significance. When the USPTO
13 accepted Defendant PCIs representations as true and granted registration, Defendant PCI then
14 used the fraudulently obtained registrations to seek the transfer of Plaintiffs domain name for
15 www.windcreek.com (the Domain Name). Defendant PCI did so by retaining the law firm of
16 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Finnegan) to institute a Uniform
17 Domain Resolution Proceeding (UDRP) with Defendant National Arbitration Forum, Inc.
18 (NAF) against Plaintiff. Plaintiff was ordered to transfer the Domain Name to Defendant PCI.
19 Finnegan manipulated the evidence in support of the UDRP complaint by manually typing in the
20 words Wind Creek Casino into a search field and thereafter using that manually entered wording
21 to assert that Plaintiff was targeting Defendant PCI. As a result, Plaintiff now seeks to cancel
22 Defendant PCIs fraudulently-obtained trademark registrations as well as a declaratory judgement
23 and order from this Court concerning Plaintiffs rightful ownership of the Domain Name. In
24 addition, Plaintiff asserts various claims against Defendant PCI that seek damages for Defendant
25 PCIs improper conduct.
26
2.
In granting Defendant PCIs UDRP transfer request, Defendant NAF issued a
27 decision that included findings of fact and allegations of law that were false and which jeopardize
28 Plaintiffs rights. Specifically, Defendant NAF made a finding of fact that Plaintiff VirtualPoint
A Professional Corporation

1 was a generic domain name reseller and had used a privacy service in registering the
2 underlying domain name. In addition, Defendant NAF attributed legal arguments to Plaintiff
3 VirtualPoint that were never raised or argued by Plaintiff VirtualPoint. These facts were not
4 asserted by either PCI or Plaintiff and were merely the result of bias. Plaintiff VirtualPoint
5 contacted Defendant NAF and requested correction of the decision, yet Defendant NAF refused
6 thereby demonstrating willfulness and bias on the part of Defendant NAF. As a result, Plaintiff
7 also seeks a declaratory judgment and order from this Court requiring Defendant NAF to modify
8 and/or redact the wording of the decision underlying the UDRP complaint. In addition, Plaintiff
9 asserts various claims against Defendant PCI that seek damages for Defendant PCIs improper
10 conduct.
11
12
13
JURISDICTION AND VENUE

3.
Subject matter jurisdiction exists in this case pursuant to 28 U.S.C. 1331, giving
14 this Court original jurisdiction in a civil action raising a federal question under 28 U.S.C.
15 1338(a), the Lanham Act, 15 U.S.C. 1051, et seq., and the Anti-Cybersquatting Consumer
16 Protection Act, 15 U.S.C. 1125(d). Subject matter jurisdiction also exists in this case pursuant to
17 28 U.S.C. 2201(a) and 2202, in that Plaintiff requests a Declaratory Judgment from this Court.
18 Subject matter jurisdiction also exists in this case based on diversity of citizenship pursuant to 28
19 U.S. Code 1332 (a), in that this is an action between citizens of different states and the amount
20 in controversy exceeds $ 75,000, exclusive of interests and costs. This Court has supplemental
21 jurisdiction over Plaintiffs related causes of action under 28 U.S.C. 1367.
22
4.
Venue is proper in this judicial district because a substantial part of the events or
23 omissions giving rise to Plaintiff's claims occurred in this district. Accordingly, venue is proper in
24 this district pursuant to 28 U.S.C. 1391(a)(2) (b) and (c) and 1400(a) and (b).
25
5.
Venue is proper in this judicial district because this action arises out of activities
26 within the Central District of California. The Court has personal jurisdiction over Defendant PCI
27 because its activities occurred within and were targeted at this District and because Defendant PCI
28 specifically consented to jurisdiction and venue in this District. Plaintiff is informed and believes

1 that Defendant NAF regularly conducts and solicits business, engages in other forms of conduct,
2 and derives substantial revenue from doing business in this judicial district. Moreover, a
3 substantial part of the events or omissions giving rise to Plaintiff's claims occurred in this district.
4 Accordingly, venue is proper in this district pursuant to 28 U.S.C. 1391 and 28 U.S.C. 1400.
5
6
7
PARTIES AND PERSONAL JURISDICTION

6.
Plaintiff is a California corporation with its principal place of business in Irvine,
8 California.
9
7.
Upon information and belief, Defendant PCI is a federally-recognized Indian tribe,
10 with a principal place of business at 5811 Jack Springs Road, Atmore, Alabama, 36502. This
11 Court has personal jurisdiction over Defendant PCI because Defendant PCI has purposefully
12 availed itself to this forum through demanding that Plaintiff cease use of the Domain Name and
13 transfer of the same to Defendant. Additionally, by filing a complaint against Plaintiff with
14 Defendant NAF, Defendant PCI specifically consented to personal jurisdiction with this Court
15 pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") relating
16 to administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution
17 Policy adopted by ICANN, as well as the supplemental rules of the provider administering the
18 proceedings.
19
8.
Upon information and belief, Defendant NAF is a Minnesota corporation with a
20 principal place of business at 6465 Wayzata Blvd. Suite 500, Minneapolis, Minnesota 55426. This
21 Court has personal jurisdiction over Defendant NAF because it conducts substantial business
22 within this district related to the unlawful activities at issue in this Complaint. The harm suffered
23 by Plaintiff flows directly from the business conducted by Defendant NAF within this district.
24
9.
This Court has personal jurisdiction over Defendant NAF because Defendant NAF
25 has sufficient contacts with the State of California and this judicial District subjecting it to the
26 general and specific personal jurisdiction of this Court pursuant to Cal. Code Civ. Pro 410.10. )
27 because Defendant NAF purposefully availed itself to this forum by issuing a erroneously worded
28 decision and refusing to modify the same after Plaintiffs request, that misrepresents the true

1 allegations of Plaintiff within through demanding that Plaintiff cease use of the Domain Name and
2 transfer of the same to Defendant.
3
10.
The true names and capacities of Defendant DOES 1 through 10, inclusive,
4 whether individual, corporate, associate, or otherwise, are unknown to Plaintiff who therefore sue
5 such Defendants by such fictitious names. Plaintiff will seek leave of this Court to amend this
6 Complaint to show said Defendants true names and capacities when same have been ascertained.
7
11.
Plaintiff is informed and believes and upon such information and belief alleges that
8 each of the Defendants named herein as DOES 1 through 10, inclusive, were, and are in some
9 manner responsible for the actions, acts, and omissions herein alleged, and for the damage caused
10 by the Defendants and are, therefore, jointly and severally liable for the damages caused to
11 Plaintiff.
12
12.
Plaintiff is informed and believes, and upon such information and belief, alleges
13 that at all times mentioned herein, Defendant, was the agent, employee, and officer of each of the
14 remaining Defendants and in doing the things herein alleged, were acting within the scope, course,
15 and purpose of said agency or employment, and with permission and consent of each of the
16 remaining Defendants.
17
13.
Plaintiff is informed and believes and upon such information and belief alleges that
18 each of the Defendants, including DOES 1 through 10, inclusive, were, and at all times herein
19 mentioned, acting in concert and in conspiracy with each and every one of the named Defendants.
20
FACTUAL BACKGROUND
21
14.
Plaintiff is a premier website developer that has been in business for nearly two
22 decades. Plaintiffs business focuses on designing and developing quality websites. These types
23 of websites are referred to as premier sites and include such titles as www.DrivingTest.com,
24 www.Certification.org, and others.
25
15.
Plaintiff is the owner of the Domain Name (i.e., windcreek.com). As set forth in
26 the WHOIS records (i.e., the database that maintains information about the registration of domain
27 names), the domain name creation date for the Domain Name is January 14, 2003.
28 / / /

16.
Plaintiff registered the Domain Name due to its obvious appeal as a geographic
2 indicator as well as its ability to function in relation to wind energy. Among the domain names
3 that Plaintiff owns are the following: www.windcatcher.com, www.windcircle.com,
4 www.windriders.com,
www.windview.com,
www.windword.com,
and
of
course
5 www.windcreek.com.
6
17.
At the time that Plaintiff registered the Domain Name, Plaintiff had no knowledge
7 of the existence of Defendant PCI or Defendant PCIs use of any mark comprised of or
8 incorporating the term Wind Creek. Plaintiff did not register the Domain Name with the intent to
9 sell the Domain Name to Defendant PCI - or anyone else for that matter. Plaintiff never initiated
10 contact with Defendant PCI to sell the Domain Name, nor has Plaintiff attempted to disrupt
11 Defendant PCIs business by confusing consumers trying to find the Defendants business, by
12 confusing consumers trying to find the defendants website, or otherwise.
13
18.
After registering the Domain Name, Plaintiff did not use the Domain Name in
14 connection with any goods or services. The content at the website appearing at the Domain Name
15 has never focused upon Defendant PCI, Defendant PCIs business, or Defendant PCIs
16 competitors.
17
THE CHALLENGED TRADEMARK REGISTRATIONS
18
19.
Based upon Plaintiffs review of the U.S. Patent and Trademark Office records
19 pertaining to trademark applications filed by Defendant PCI, Plaintiff is informed and believes,
20 and on that basis alleges, that Defendant PCIs earliest date of use of any mark comprised of or
21 incorporating the term Wind Creek occurred in 2009. Thus, Defendant PCIs first use of any mark
22 comprised of or incorporating the term Wind Creek does not pre-date the creation date of the
23 Domain Name.
24
20.
Defendant PCI owns the following three (3) trademark registrations issued by the
25 U.S. Patent and Trademark Office (hereinafter, collectively the Challenged Registrations):
26 / / /
27 / / /
28 / / /

1
2
3
MARK
WIND CREEK
CASINO &
HOTEL
FILING DATE / NO.

REG. DATE / NO.
GOODS/SERVICES
Cabarets; Casinos; Entertainment services in the nature
Feb. 6, 2009
of comedy shows; Entertainment services in the nature of
77/665,214
June 23, 2009
3,643,523
4
5
6
7
8
ESCAPE AT
WIND CREEK
Jan. 18, 2012

85/518,845
June 19, 2012
4,161,444
9
10
11
12
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14
15
16
17
18
19
WIND CREEK
Sept. 11, 2013

86/061,732
20
Feb. 18, 2014
4,485,354
21
live musical performances; Wagering services (Class 41);

Bar and restaurant services; Cafe and restaurant services;
Catering for the provision of food and beverages;
Catering of food and drinks; Cocktail lounge buffets;
Cocktail lounges; Hotel and restaurant services; Hotel,
bar and restaurant services; Providing social meeting,
banquet and social function facilities; Restaurant, bar and
catering services (Class 43).
Conducting and providing facilities for special events
featuring casino and gaming contests and tournaments;
Educational services, namely, conducting classes in the
fields of culinary arts and distribution of training
materials in connection therewith; Entertainment
services, namely, casino gaming; Gaming services in the
nature of casino gaming; Physical fitness studio services
provided exclusively at Wind Creek Casino and Hotel,
namely, providing exercise classes, body sculpting
classes, and group fitness classes; Providing fitness and
exercise facilities exclusively at Wind Creek Casino and
Hotel; Providing physical fitness and exercise services
exclusively at Wind Creek Casino and Hotel, namely,
indoor cycling and yoga instruction (Class 41);
Hotel services; Restaurant and hotel services (Class 43);
Day spa services, namely, nail care, manicures, pedicures
and nail enhancements; Health spa services for health
and wellness of the body and spirit offered at a health
club facility; Health spa services for health and wellness
of the body and spirit, namely, providing massage, facial
and body treatment services, cosmetic body care services,
(Class 45).
Casinos; Entertainment services, namely, casino gaming;
Gambling services; Gaming services in the nature of
casino gaming (Class 41);
Hotel accommodation services; Hotel services; Hotel, bar
and restaurant services; Hotel, restaurant and catering
services (Class 43).
22
23
21.
During the prosecution of a trademark application, the U.S. Patent and Trademark
24 Office requires an applicant to disclose any geographic significance of the underlying mark. See
25 Trademark Manual of Examination Procedure (TMEP) 1210 et seq.; see also 37 C.F.R.
26 2.61(b). The reason for the requirement stems from the underlying policy of prohibiting a person
27 from claiming exclusive rights to a merely geographic term unless and until that person has made
28

1 such extensive use that it acquires secondary meaning. See 15 U.S.C. 1052(e)-(f); see also
2 TMEP 1212. As a result, until a person has made such extensive use, anyone who adopts a
3 merely geographic term for their mark assumes the risk that others will be entitled to also make
4 fair use of such terms.
5
22.
Prior to obtaining the Challenged Registrations, Defendant PCI made no fewer than
6 ten (10) failed attempts to register marks comprised of and/or incorporating the term WIND
7 CREEK. During Defendant PCIs prosecution of those ten (10) failed applications, the Examining
8 Attorney at the U.S. Patent and Trademark Office questioned Defendant PCI as to whether the
9 term WIND CREEK had any geographic significance. In response to USPTOs inquiries,
10 Defendant PCI denied that the term WIND CREEK had an geographic meaning. As a result, the
11 Examining Attorney entered Examiners Amendments into the records stating, The term WIND
12 CREEK had no meaning other than a trademark significance. Defendant PCI subsequently
13 abandoned all of these ten (10) prior applications and each is presently identified by the U.S.
14 Patent and Trademark Office as being Dead. Accordingly, the only live registrations owned by
15 Defendant PCI are those identified as the Challenged Registrations.
16
23.
It was on February 6, 2009, when Defendant PCI first applied to register the
17 earliest of the Challenged Registrations. In the trademark application, Defendant PCI stated,
18 WIND CREEK appearing in the mark has no significance in the relevant trade or industry or as
19 applied to the goods/services listed in the application, no geographical significance, nor any
20 meaning in a foreign language. In addition to the foregoing, Defendant PCI stated,
21
22
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25
26
27
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The undersigned, being hereby warned that willful false statements and the like
so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section
1001, and that such willful false statements, and the like, may jeopardize the
validity of the application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the applicant; he/she
believes the applicant to be the owner of the trademark/service mark sought to be
registered, or, if the application is being filed under 15 U.S.C. Section 1051(b),
he/she believes applicant to be entitled to use such mark in commerce; to the best
of his/her knowledge and belief no other person, firm, corporation, or association
has the right to use the mark in commerce, either in the identical form thereof or
in such near resemblance thereto as to be likely, when used on or in connection
with the goods/services of such other person, to cause confusion, or to cause
mistake, or to deceive; and that all statements made of his/her own knowledge are
true; and that all statements made on information and belief are believed to be
true.
24.
Defendant PCI is located in the State of Alabama. Wind Creek is the name of the
2 largest State Park in Alabama. According to governmental agency Alabama State Parks, Wind
3 Creek State Park is not only the largest State Park in Alabama, but it is the largest state-owned
4 campground in the entire United States. As shown in the Google map screen capture below,
5 Wind Creek State Park in Alabama is located in and around a large body of water identified as
6 Wind Creek.
7
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21
25.
As shown in the Google map screen capture below, Defendant PCIs casino is
22 located just south of Wind Creek State Park. On that basis, Plaintiff alleges that Defendant PCI
23 concealed the geographic significance of Wind Creek from the U.S. Patent and Trademark Office.
24 As a result, the Challenged Registrations are subject to cancellation on grounds that Defendant
25 PCI committed fraud on the U.S. Patent and Trademark Office in obtaining the Challenged
26 Registrations.
On information and belief, Defendant PCI knowingly and intentionally
27 misrepresented the true facts to the USPTO because Defendant PCI believed that if the USPTO
28

1 knew the true facts then the USPTO would have refused registration to Defendant PCIs
2 application on grounds that WIND CREEK is merely geographically descriptive.
3
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26.
After Defendant PCI obtained the registration stemming from the February 6, 2009
application, Defendant PCI then cited to that registration as an earlier registration in order to
obtain each of the other two of the Challenged Registrations.
As a result, each of the resulting
registrations is likewise obtained through Defendant PCIs intentional misrepresentation

concerning the geographic nature (or rather PCIs denial thereof) of the term WIND CREEK.
27.
In addition to the largest State Park near Defendant PCI, there are also numerous
streets and other geographic destinations throughout the United States that are associated with the
geographic term Wind Creek. Among the more prominent geographic locations are those located
in Sacramento, California; Fort Worth, Texas; and Kingwood, Texas, among others. Within these
individual regions, there are unquestionably camping facilities, lodging facilities, motels and

1 hotels. Therefore, any reference to such facilities in wind creek could not refer uniquely to
2 Defendant PCI.
3
28.
In addition, and as expected with a merely geographic term, there are many
4 businesses throughout the United States that incorporate the term Wind Creek in the name,
5 including, apartments that include Wind Creek in the name, golf courses that include Wind Creek
6 in the name, flying disc parks that include Wind Creek in the name, and so on. Thus, Plaintiff
7 alleges that the term unquestionably has a merely geographic significance and does not connote
8 any one particular source.
9
29.
Additionally, there are numerous uses of the phrase wind creek in other domain
10 names and by entities spread throughout the United States and abroad. Among the active websites
11 not affiliated with the Defendant PCI are the following:
12
REFERENCE
13 www.WindCreekInc.com
www.WindCreekFarm.com
14 www.WindCreekHelicopterCharter.com
www.WindCreekStatePark.com
15 www.WindCreekApartments.com
16 www.WindCreekKennels.com
http://www.82fss.com/windcreekgolfcourse.html
17 http://www.catomaoutdoor.com/Catalog/ProductInfo
18
19
20
21
22
23
http://www.apartmentguide.com/apartments/California/Sac
ramento/Windcreek-Apartments/88215/
www.WindCreekSubdivision.com
www.WindCreekSubdivision.net
www.WindCreek.net
www.WindCreek.org
www.WindCreekFire.com
www.WindCreekStudio.com
www.WindCreekStudios.com
www.WindCreekRanch.com
www.Wind-Creek.com
http://www.alapark.com/wind-creek-state-parkcampground
USE
Construction company
Horse breeders
Helicopter services
Recreational vehicle (RV) park
Apartment complex
Dog kennel
Golf course
Tents
Apartments
Homeowners association
Parked page
Parked page
Parked page
Parked page
Parked page
Parked page
Parked page
Wind Creek State Park
24
25
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www.WindCreekFoodTruck.com
30.
Parked page
As a result of the above, Plaintiff alleges that Defendant PCI cannot claim
exclusive rights to use of the term WIND CREEK as a domain name, trademark or otherwise.
///
28

10
DEFENDANT PCIS ACTIONABLE ACTIVITIES AND
CREATION OF A JUSTICIABLE CONTROVERSY
31.
Defendant PCI offers hotel, restaurant, spa and gaming services in casinos under
4 the marks in the Challenged Registrations.

5
32.
Plaintiff has not used the Domain Name for goods and services related to hotel,
6 restaurant, spa or gaming services. Plaintiff has not used the Domain Name to offer any goods or
7 services that are related to or compete with those of Defendant, nor for any other illegitimate
8 purpose.
9
33.
Regardless, after Defendant PCI obtained the Challenged Registrations through
10 fraud, an employee of Defendant PCI (Caitlin Dingle) contacted Plaintiff via email dated June 11,
11 2013 and inquired about purchasing the Domain Name from Plaintiff. Plaintiff responded
12 indicating that the Domain Name was not for sale since it was to be utilized for a specific purpose.
13 Following that email exchange, there were no further communications between the parties.
14
34.
Over two years later, on September 30, 2015, Plaintiff received an email from
15 Defendant NAF attaching an administrative complaint that had been filed by Defendant PCI
16 against Plaintiff. The complaint alleged that the Domain Name is confusingly similar to
17 Defendants trademark, that Plaintiff had no legitimate interests or rights to the Domain Name and
18 that Plaintiff had registered and used the Domain Name in bad faith. The complaint sought transfer
19 of the Domain Name from Plaintiff to Defendant.
20
35.
Plaintiff alleges that Defendant PCI and/or Defendant PCIs legal counsel
21 intentionally manipulated the evidence submitted in support of the UDRP Complaint.

22 Specifically, Plaintiff did not have an active website corresponding to the Domain Name; instead,
23 Plaintiff merely had the Domain Name parked with a parking service that functioned in a
24 geographical manner. The content appearing on the site corresponding to the Domain Name was
25 determined solely by the parking service through the application of a proprietary algorithm.
26
36.
With regard to Plaintiffs parked site, Plaintiff alleges that the categories displayed
27 were consistent with those one would expect to be associated with a geographic term such as Wind
28 Creek. By way of example, the algorithm behind the parking service triggered categories relating

11
1 to tourism and tourist types of activities i.e., hotels, car rentals, flights, and the like. The parked
2 service did not display any category relating to casinos or gambling anywhere on the site.
3
37.
Regardless, Defendant PCI and/or Defendant PCIs legal counsel submitted as
4 Exhibit 7 to the UDRP complaint a document that purported to show that the parking service for
5 Plaintiffs site solicited original references to Wind Creek Casino thereon. The evidence,
6 however, was entirely false and was the result of deceptive conduct. Plaintiffs unaltered site
7 corresponding to the Domain Name did not actually show the words Wind Creek Casino
8 anywhere on the site and the only reason that the words appeared in Exhibit 7 was attributable
9 entirely to Defendant PCI and/or Defendant PCIs legal counsels deceptive conduct.
10
38.
The deceptive conduct might not have been readily transparent to those without
11 knowledge of search protocols; however, Plaintiffs careful scrutiny of the evidence revealed
12 that the partial url address at the top of the page showed that the words appeared only because
13 Defendant PCI and/or Defendant PCIs legal counsel inserted the words. Specifically, the reason
14 that Wind Creek Casino appeared on the document was due to the fact that Defendant PCI
15 and/or Defendant PCIs legal counsel manually entered the phrase into a search box that appeared
16 on the parked page. Defendant PCI and/or Defendant PCIs legal counsel then captured the screen
17 resulting from the search and used that evidence to suggest that the words Wind Creek Casino
18 appeared directly on the page when in fact it did not.
19
39.
Despite the foregoing, Defendant PCI prevailed in the UDRP and Plaintiff was
20 ordered to transfer the Domain Name to Defendant PCI. Plaintiff refuses to transfer its rightful
21 property to Defendant PCI. Administrative decisions under the UDRP are subject to de novo
22 review by this Court. As a result, an actual, substantial and immediate controversy exists,
23 justifying the declaratory relief that Plaintiff seeks.
24 / / /
25 / / /
26 / / /
27 / / /
28 / / /

12
COUNT I: DECLARATORY RELIEF
(Domain Name; Against Defendant PCI)
40.
Plaintiff realleges the foregoing paragraphs of this Complaint.
41.
Plaintiff is the rightful owner of the Domain Name and both registered and used the
5 Domain Name in good faith without intent to sell the Domain Name to Defendant PCI. Plaintiff
6 had no intention of confusing any of Defendant PCIs customers or diverting any traffic from
7 Defendant PCIs websites.
8
42.
Wind Creek is commonly used and a merely geographically descriptive term.
9 Many businesses use Wind Creek in their names, trademarks, and domain names. Defendant has
10 no exclusive right to the use of the term Wind Creek either as a trademark, a domain name, or
11 otherwise.
12
43.
Plaintiff believed and had reasonable grounds to believe that the registration and its
13 use of the Domain Name was and is lawful due to the obvious geographic appeal on the surface as
14 well as the Domain Names ability to function in relation to wind energy.
15
44.
A justiciable controversy exists between Plaintiff and Defendant PCI.
16
45.
To resolve this actual controversy, Plaintiff seeks a declaration and judgment that
17 the Domain Name is not identical or confusingly similar to a trademark or service mark in which
18 Defendant PCI has rights, Plaintiff has rights or legitimate interests in the Domain Name, the
19 Domain Name was registered in good faith, Plaintiff registered and used the Domain Name in
20 good faith, Plaintiff is the rightful owner of the Domain Name, and injunctive relief for Plaintiff to
21 retain ownership of the Domain Name.
22
23
COUNT II: ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT
24
(15 U.S.C. 1114; Against Defendant PCI)
25
46.
26
47.
Plaintiff is the registrant of the Domain Name.
27
48.
Plaintiffs use and/or registration of the Domain Name was/is not unlawful.
28

13
49.
Plaintiff is the rightful owner of the Domain Name and both registered and used the
2 Domain Name in good faith.

3
50.
Notwithstanding the foregoing, Plaintiffs Domain Name has been suspended,
4 disabled, or transferred under a policy implemented by a Registrar as described in described under

5 15 U.S.C. 1114(2)(D)(ii)(II).
6
51.
Defendant PCI prompted the foregoing and therefore had notice of the action.
52.
Upon the filing of the original complaint in this action, and notice of the same to
8 the Registrar, the order to transfer has been suspended pending resolution of this lawsuit and
9 Plaintiffs Domain Name has been temporarily disabled until such time that this lawsuit is
10 concluded.
11
53.
Plaintiff alleges that Defendant PCI obtained the order of transfer by making one or
12 more knowing and material misrepresentations that the Domain Name was identical to,
13 confusingly similar to, or dilutive of one or more of Defendant PCIs trademarks or service marks.
14
54.
Plaintiff is informed and believes and on that basis alleges that Defendant PCI
15 sought the suspension, disablement, or transfer of the Domain Name knowing that the Challenged
16 Registrations were procured through fraud.
17
55.
Plaintiff is informed and believes and on that basis alleges that Defendant PCI
18 sought the suspension, disablement, or transfer of the Domain Name knowing that the evidence
19 submitted in support of the UDRP complaint was false, deceptive, misleading, and/or intentionally
20 manipulated and modified.
21
56.
Consistent with the foregoing, Defendant PCI made knowing and material
22 misrepresentations in prompting the order of the suspension, disablement, or transfer of the

23 Domain Name and the resulting suspension and temporary disabling of Plaintiffs Domain Name.
24
57.
Pursuant to 15 U.S.C. 1114(2)(D)(v), Plaintiff seeks injunctive relief against the
25 suspension, disablement, or transfer of the Domain Name as well as reactivation of the Domain
26 Name.
27
58.
Pursuant to 15 U.S.C. 1114(2)(D)(iv), Plaintiff seeks any and all damages,
28 including costs and attorneys fees, incurred as a result of Defendant PCIs actions.

14
COUNT III: CANCELATION OF TRADEMARK REGISTRATIONS
(15 U.S.C. 1064, 1119; Against Defendant PCI)
59.
60.
Defendant PCI In obtaining the order for the suspension, disablement, or transfer of
5 Plaintiffs Domain Name under a policy implemented by a Registrar as described in described

6 under 15 U.S.C. 1114(2)(D)(ii)(II), Defendant PCI based the action on three registered
7 trademarks described herein as the Challenged Registrations.
8
61.
Pursuant to 15 U.S.C. 1119, in any action involving a registered mark the court
9 may determine the right to registration, order the cancelation of registrations, in whole or in part,
10 restore canceled registrations, and otherwise rectify the register with respect to the registrations of
11 any party to the action.
12
62.
Further, and again pursuant to 15 U.S.C. 1119, [d]ecrees and orders shall be
13 certified by the court to the Director, who shall make appropriate entry upon the records of the
14 Patent and Trademark Office, and shall be controlled thereby.
15
63.
Consistent with the foregoing, Plaintiff is informed and believes and on that basis
16 alleges that Defendant PCI made knowingly false material representations to the USPTO with the
17 intent to deceive the USPTO into issuing the Challenged Registration.
18
64.
Based on these knowingly false material misrepresentations which were made with
19 the intent to deceive the USPTO, the Challenged Registrations are subject to cancellation.
20
65.
Pursuant to 15 U.S.C. 1119, this being an action involving registered marks,
21 Plaintiff requests that the Court determine Defendant PCIs rights to the Challenged Registrations
22 and, if appropriate, order the cancelation of the Challenged Registrations, in whole or in part, and
23 otherwise rectify the register with respect to the Challenged Registrations.
24
66.
Further, and again pursuant to 15 U.S.C. 1119, Plaintiff seeks a decree and order
25 certified by the Court to the Director of the USPTO to make appropriate entry upon the records of
26 the Patent and Trademark Office.
27 / / /
28 / / /

15
1
2
DEFENDANT NAFS ACTIVITIES CREATING A JUSTICIABLE CONTROVERSY

67.
In the decision ordering the transfer of the Domain Name, Defendant NAF issued a
3 ruling that was not only factually and legally inaccurate, but so much so that it revealed clear bias
4 and deliberate wrongdoing on the part of Defendant NAF.
5
68.
The parties to a UDRP case are identified as Complainant (the entity seeking
6 transfer of the domain name who initiates the underlying complaint) and Respondent (the entity
7 who owns the domain name and defends against the complaint). The format of the decisions
8 issued by Defendant NAF in UDRP cases are typically structured in a specific manner (and the
9 decision issued by Defendant NAF in the UDRP in the case at hand followed that same format).
10 Specifically, the decision first lays out the factual allegations of the Complainant, followed by the
11 factual allegations of the Respondent, and then discusses the application of the law to the factual
12 allegations.
13
69.
In the decision in the Wind Creek UDRP, Defendant NAF followed the typical
14 format. However, in the section of the decision attributed to those factual assertions by
15 Respondent, Defendant NAF set out factual allegations that were not stated by either Respondent
16 (i.e., Plaintiff) or Complainant (i.e., Defendant PCI). Specifically, the decision states that
17 Respondent (i.e., Plaintiff) contended that VirtualPoint, Inc. is a generic domain name reseller.
18 Neither Respondent (i.e., Plaintiff) nor Complainant (i.e., Defendant PCI) made any such
19 contention and there is nothing in the records to corroborate Defendant NAFs finding in that
20 regard. Accordingly, the decision is false and jeopardizes Plaintiffs rights in that UDRP
21 decisions will often tip in favor of the complainant where the respondent is a generic domain name
22 reseller. By falsely stating in the decision that the Plaintiff labeled itself a generic domain name
23 reseller, this case will be deemed an admission by Plaintiff in any future UDRP cases and must
24 therefore be corrected.
25
70.
In addition to the above, the decision also contained what is clearly a typographical
26 error, but one that has damaging effect upon Plaintiff. Specifically, while the decision should have
27 stated that Plaintiff used a parking service Defendant NAF instead stated that Plaintiff used a
28 privacy service. Indeed, many UDRP decisions have found that the use of a privacy service is a

16
1 factor in finding bad faith registration and use of a domain name. Therefore, a decision that states
2 that Plaintiff uses privacy services, which is false, will be deemed an admission by Plaintiff in any
3 future UDRP cases and must therefore be corrected.
4
71.
On November 23, 2015, Plaintiff contacted Defendant NAF and requested that the
5 decision be modified. On November 24, 2015, Defendant NAF denied Plaintiffs request on
6 grounds that Supplemental Rule 16 prohibited Defendant NAF from modifying the decision.
7 Accordingly, on December 3, 2015, Plaintiff again contacted Defendant NAF and requested that
8 the decision at a minimum be redacted pursuant to very Supplemental Rule that Defendant NAF
9 relied upon to deny the earlier request. Specifically, Supplemental Rule 16 states, (b) Except if
10 the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the
11 full decision and the date of its implementation on a publicly accessible web site. Further,
12 Paragraph 4(j) of the Policy states, Notification and Publication. The Provider shall notify us of
13 any decision made by an Administrative Panel with respect to a domain name you have registered
14 with us. All decisions under this Policy will be published in full over the Internet, except when an
15 Administrative Panel determines in an exceptional case to redact portions of its decision.
16
72.
Based upon the above, Plaintiff requested that Defendant NAF exercise the
17 discretion to either not publish the case or, at a minimum, to redact the obviously erroneous and
18 harmful statements made therein. On December 4, 2015, Defendant NAF refused to exercise the
19 discretion.
20
73.
Plaintiff is informed and believes, and on that basis alleges, that Defendant NAFs
21 granting of relief and subsequent refusal to exercise discretion is the result of bias. Specifically,
22 Finnegan has filed approximately 373 UDRP cases with Defendant NAF, yet Plaintiff is informed
23 and believes and on that basis alleges that NAF has only issued 11 decisions (i.e., less than 3%)
24 denying relief to Finnegan with only two decisions being split decisions. In the remaining 360
25 cases, Defendant NAF has ordered transfer of the domain name to Finnegans client. The filing
26 fee is presently $1,300 for a single member panel meaning that Finnegan has potentially paid
27 Defendant NAF nearly a half million dollars in filing fees.
28

17
74.
As indicated above, Plaintiff pointed out to Defendant NAF that Defendant NAFs
2 findings of fact were not only incorrect, but that they would result in harm to Plaintiff
3 VirtualPoint.
The findings were not immaterial findings such as erroneous spellings,
4 typographical errors, incorrect dates, or the like. Rather, these were factual allegations that neither
5 side had asserted and that were of the type that are routinely relied upon to find against defendants
6 in UDRP proceedings. Despite the foregoing, Defendant NAF refused to correct the decision
7 thereby demonstrating partiality and deliberate wrongdoing. Plaintiff VirtualPoint was forced to
8 incur attorney fees and costs in requesting correction of the mistake (not once, but twice) as well
9 as the costs of this suit.
10
11
COUNT IV: DECLARATORY JUDGMENT
12
(UDRP Decision; Against Defendant NAF)
13
75.
14
76.
A justiciable controversy exists between Plaintiff and Defendant NAF.
15
77.
To resolve this actual controversy, Plaintiff seeks a declaration and judgment
16 requiring Defendant NAF to either modify, take down or redact the decision consistent with the
17 above.
18
19
COUNT V: COMMON LAW FRAUD
20
(Against Defendant NAF)
21
78.
22
79.
Defendant NAF did not act with impartiality; instead, Defendant NAF acted with
23 bias and failed to disclose that bias to Plaintiff.

24
80.
Defendant NAF misled Plaintiff by suppressing material facts from Plaintiff.
25
81.
Defendant NAFs suppression of material facts was deliberate, was intended to
26 mislead Plaintiff, and did in fact mislead Plaintiff.

27
82.
Defendant NAF had a duty to truthfully and affirmatively disclose the false and
28 suppressed facts because Defendant NAF was aware of both 1) that the suppressed material facts

18
1 affected Plaintiff's participation in the UDRP proceedings, and 2) that Plaintiff did not know of,
2 and could not have learned of with the exercise of reasonable diligence, the suppressed facts.
3
83.
Defendant NAFs suppressed material facts were concealed with the express
4 intention that Plaintiff would act as a result of such suppressed facts in a manner that Plaintiff
5 would not have acted if Plaintiff had known of the true facts suppressed by Defendant NAF.
6
84.
Plaintiff was at all times ignorant of the suppressed facts by Defendant NAF.
85.
Plaintiff did in fact act in a manner in which Plaintiff would not have acted had
8 Plaintiff known of the true facts and suppressed facts. Specifically, among other things, Plaintiff
9 relied on the presumption of impartiality on the part of Defendant NAF and would not have
10 participated in the UDRP proceedings.
11
86.
Plaintiffs action in reliance was reasonable and justified.
12
87.
As a direct and proximate result of Defendant NAFs conduct, Plaintiff suffered
13 and will suffer damages in an amount to be determined at trial.

14
88.
Because Defendant NAFs conduct was malicious, fraudulent and oppressive and
15 done with a conscious disregard of Plaintiffs rights, Plaintiff is also entitled to exemplary and
16 punitive damages in an amount to be determined at trial. Managing agents of Defendant NAF
17 approved of or ratified the acts complained of herein.
18
19
PRAYER FOR RELIEF
20 WHEREFORE, Plaintiff prays for judgment as follows:

21
a.
Plaintiff seeks a declaration and judgment that the Domain Name is not identical or
22 confusingly similar to a trademark or service mark in which Defendant PCI has rights, Plaintiff
23 has rights or legitimate interests in the Domain Name, the Domain Name was registered in good
24 faith, Plaintiff registered and used the Domain Name in good faith, Plaintiff is the rightful owner
25 of the Domain Name, and injunctive relief for Plaintiff to retain ownership of the Domain Name.
26
b.
Pursuant to 15 U.S.C. 1114(2)(D)(v), Plaintiff seeks injunctive relief against the
27 suspension, disablement, or transfer of the Domain Name as well as reactivation of the Domain
28 Name.

19
c.
Pursuant to 15 U.S.C. 1114(2)(D)(iv), Plaintiff seeks any and all damages,
2 including costs and attorneys fees, incurred as a result of Defendant PCIs actions described
3 herein and according to proof at trial.
4
d.
Pursuant to 15 U.S.C. 1119, Plaintiff requests that the Court determine Defendant
5 PCIs rights to the Challenged Registrations and, if appropriate, order the cancelation of the
6 Challenged Registrations, in whole or in part, and otherwise rectify the register with respect to the
7 Challenged Registrations by issuing a decree and order, certified by the Court, to the Director of
8 the USPTO to make appropriate entry upon the records of the Patent and Trademark Office.
9 Specifically,
10
e.
Plaintiff seeks a declaration and judgment requiring Defendant NAF to modify,
11 take down and/or redact the decision as described herein and consistent with the foregoing.
12
f.
An award against Defendant NAF and in favor of Plaintiff for any and all damages
13 that Plaintiff has suffered and will suffer, in an amount to be determined at trial, as a result of
14 Defendant NAFs conduct as described herein.
15
g.
Because Defendant NAFs conduct was malicious, fraudulent and oppressive and
16 done with a conscious disregard of Plaintiffs rights, Plaintiff also seeks exemplary and punitive
17 damages in an amount to be determined at trial.
18
h.
Such other and further relief as the Court may deem just and proper.
19
20 Dated: May 31, 2016
THE KINDER LAW GROUP, APC
21
22
By:
Brian P. Kinder, Esq.
Irvine, California 92612
O: (949) 216-3070
F: (949) 216-3074
E: bkinder@tklglaw.com
Attorneys for VirtualPoint, Inc.
23
24
25
26
27
28

20
DEMAND FOR JURY TRIAL
2
3
Plaintiff demands a trial by jury on all issues triable by jury.
4
5 Dated: May 31, 2016
THE KINDER LAW GROUP, APC
6
7
By:
Brian P. Kinder, Esq.
Irvine, California 92612
O: (949) 216-3070
F: (949) 216-3074
E: bkinder@tklglaw.com
Attorneys for VirtualPoint, Inc.
8
9
10
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12
13
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21

Virtualpoint v. Poarch Band of Creek Indians - Amended Complaint PDF

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Virtualpoint v. Poarch Band of Creek Indians - Amended Complaint PDF

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Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 1 of 22 Page ID #:607

1 Brian P. Kinder (212332)

19200 Von Karman Avenue, Fourth Floor

Attorney for Plaintiff

UNITED STATES DISTRICT COURT

12 VIRTUALPOINT, INC., dba Captive Media, ) Case No.:

16 POARCH BAND OF CREEK INDIANS, dba

1. Declaratory Judgment re Domain Name;

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 2 of 22 Page ID #:608

As explained in detail below, Defendant PCI acquired various trademark

In granting Defendant PCIs UDRP transfer request, Defendant NAF issued a

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 3 of 22 Page ID #:609

JURISDICTION AND VENUE

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 4 of 22 Page ID #:610

PARTIES AND PERSONAL JURISDICTION

Plaintiff is a California corporation with its principal place of business in Irvine,

Upon information and belief, Defendant PCI is a federally-recognized Indian tribe,

Upon information and belief, Defendant NAF is a Minnesota corporation with a

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 5 of 22 Page ID #:611

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 6 of 22 Page ID #:612

THE CHALLENGED TRADEMARK REGISTRATIONS

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 7 of 22 Page ID #:613

FILING DATE / NO.

Jan. 18, 2012

Sept. 11, 2013

live musical performances; Wagering services (Class 41);

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 8 of 22 Page ID #:614

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 9 of 22 Page ID #:615

On information and belief, Defendant PCI knowingly and intentionally

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 10 of 22 Page ID #:616

As a result, each of the resulting

registrations is likewise obtained through Defendant PCIs intentional misrepresentation

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 11 of 22 Page ID #:617

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 12 of 22 Page ID #:618

DEFENDANT PCIS ACTIONABLE ACTIVITIES AND

CREATION OF A JUSTICIABLE CONTROVERSY

4 the marks in the Challenged Registrations.

Regardless, after Defendant PCI obtained the Challenged Registrations through

21 intentionally manipulated the evidence submitted in support of the UDRP Complaint.

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 13 of 22 Page ID #:619

Regardless, Defendant PCI and/or Defendant PCIs legal counsel submitted as

SECOND AMENDED COMPLAINT

Case 8:15-cv-02025-CJC-KES Document 34 Filed 05/31/16 Page 14 of 22 Page ID #:620

COUNT I: DECLARATORY RELIEF

(Domain Name; Against Defendant PCI)

Plaintiff realleges the foregoing paragraphs of this Complaint.

Wind Creek is commonly used and a merely geographically descriptive term.

A justiciable controversy exists between Plaintiff and Defendant PCI.

COUNT II: ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT

(15 U.S.C. 1114; Against Defendant PCI)

Plaintiff realleges the foregoing paragraphs of this Complaint.

Plaintiff is the registrant of the Domain Name.