Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 1 of 12

FILED

/ UNITED STATES DISTR CT COURT

EASTERN DISTRICT OF VIRGINIA
•: 22 p 12=09
ALEXANDRIA DIV SION

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..,,, •••
INTERSECTIONS INC.,
a Delaware Corporation,
3901 Stoneeroft Blvd., Chantilly, VA 20151
Civil Action No.
Plaintiff,
U\OCN \05(b
v.

ID WATCHDOG, INC.
A Cayman Islands Corporation, Jury Trial Demanded
535 16"' St., Suite 700, Denver, CO 80202
and
IDENTITY REHAB CORPORATION
A Colorado Corporation
535 16"' St., Suite 700, Denver, CO 80202

Defendants.

COMPLAINT

Plaintiff, Intersections Inc. ("Intersections" or"Plaintiff), brings this Complaint

against Defendants, ID Watchdog, Inc. and Identity Rehab Corporation (collectively, "ID
Watchdog" or "Defendants") alleging as follows:

JURISDICTION AND VENUE

1. This is an action for trademark infringement and other related causes

arising from Defendants' use of a substantially identical trademark in connection with

identical goods and services. This practice infringes upon Plaintiffs Federal and

common law trademark rights, constitutes false advertising and unfair competition.
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2. Plaintiff seeks relief under the Federal Trademark Act, 15 U.S.C. § 1051,

et seq. ("Lanham Act"), particularly 15 U.S.C. §§ 1117 and 1125, for trademark

infringement, false designation of origin, false description or representation, and related

unfair competition. Plaintiff also asserts claims under the common law and state law.

3. This Court has subject matter jurisdiction over this action pursuant to 28

U.S.C. §§ 1331, 1332(a), 1338(a), and 1338(b). This Court also hasjurisdiction over any

state law claims pursuant to 28 U.S.C. § 1367(a).

4. On information and belief, Defendants are subject to the personal

jurisdiction of this Court because, among other things, Defendants have purposefully

availed themselves of the benefits of doing business in the Commonwealth of Virginiaby

advertising to and providing goods and services to the residents of the Commonwealth of

Virginia and by selling products and services to businesses and individuals located in the

Commonwealth of Virginia and by causing tortious injury to Plaintiff, who resides in this

District, through those actions.

5. Venue is proper under 28 U.S.C. §§ 1391(b) and 1391(c) in that, upon

information and belief, a substantial part of the events giving rise to the claims occurred

in this District and Defendants are residents of this District because theyare companies

subject to personal jurisdiction in this District.

THE PARTIES

6. Plaintiff, Intersections Inc., is a Delaware corporation with its principal

place of business at 3901 Stonecroft Blvd., Chantilly, VA 20151.

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7. Upon information and belief, Defendant ID Watchdog, Inc. is a Cayman

Island corporation with its principal place of business at 535 16th St., Suite 700, Denver,

CO 80202.

8. Upon information and belief, Defendant ID Rehab Corporation is a

Colorado corporation and a wholly owned subsidiary of ID Watchdog, Inc., both with

their principal places of business at 535 16th St., Suite 700, Denver, CO 80202.

FACTUAL BACKGROUND

9. Intersections, based in Chantilly, Virginia, is a leading provider of identity

theft protection services and credit bureau information services and has been actively

engaged in this business since 1999. Intersections has served more than 30 million

customers.

10. Intersections provides its services both to consumers and to businesses,

including assisting consumers with credit management, credit monitoring, identity theft

protection, identity theft insurance, credit education, fraud resolution assistance, credit

card registration services, and credit card cancellation and monitoring services. Many of

Intersections' business clients in turn make Intersections' services available to their

employees and/or customers. Intersections also provides its services to business clients

to assist in their responses to data security breaches that may expose sensitive personal

information.

11. Intersections offers an identity theft protection service called ID

CHECKUP.

12. Intersections has been using the trademark ID CHECKUP in connection

with identity theft protection services since 2008, and owns federal Trademark
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Application Serial No. 85/129,642 for ID CHECKUP and Design.

13. Over the years since its founding, Intersections has invested heavily in

advertising and promoting its brands and related services, including spending more than

$40 million in advertising, including $22.6 million in 2009 alone. Intersections

advertises its services via the Internet, including through its own website, through banner

ads, through adwords purchased from search engines such as Yahoo, Google, and MSN,

through affiliate marketing, through third parties who in turn market to their consumers

through online means and traditional marketing means such as direct mail, and also

through telemarketing and radio. Additionally, Intersections' services are advertised

through a variety of media available through Complainant's business clients, including in

store collateral advertising displays, newsletters, direct mail, brochures, and handouts.

14. During the past several years, Intersections has built up substantial

consumer goodwill for its many services and programs directed to credit management

and identity theft protection services.

15. As a result of Intersections' extensive advertising and promotion of its

brands and services, the public has come to associate the mark ID CHECKUP with

Intersections prior to Defendants' wrongful actions complained of herein.

16. Intersections has been vigilant in protecting its marks and has filed at least

three civil Complaints in Federal Court and has filed numerous opposition proceedings in

the United States Patent & Trademark Office to protect its valuable brands from

encroachment by confusingly similar marks adopted by third parties.

17. Defendants provide similar identity theft protection services as Plaintiff

and, like Plaintiff, market those services through various media, including the website
 Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 5 of 12

www.idwatchdog.com ("the ID Watchdog website").

18. Upon information and belief. Defendants launched an identity theft

protection service called ID Check in February, 2010.

19. Defendants' ID Check name and logo are substantially identical to

Plaintiffs ID Checkup mark. The services upon which ID Check and ID Checkup are

used are identical: analyzing identity risk.

idCHECKf \DchecWp
Defendants' Logo Plaintiffs Logo

20. Intersections has been using the trademark ID CHECKUP in connection

with identity theft protection services since 2008 and has been using the logo depicted

above since January 2010. Defendants' subsequent use of a substantially identical name

and logo in connection with identical services is likely to cause consumer confusion,

infringes upon Plaintiffs trademarks, and constitutes unfair competition.

21. Intersections contacted Defendants with its concerns but Defendants have

refused to cease use of the infringing trademark or otherwise cease their unfair

competition. As a result. Plaintiff has been forced to initiate this lawsuit in order to seek

relief.

COUNT I
LANHAM ACT
TRADEMARK INFRINGEMENT/FALSE DESIGNATION OF ORIGIN
17 U.S.C. S 1125(a)

33. Intersections incorporates by reference and realleges each and every

allegation of the Paragraphs above.

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34. Defendants' conduct constitutes direct, vicarious and contributory

trademark infringement of Intersections' trademark in violation of Section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a).

35. Defendants are using the name ID Check in interstate commerce by

advertising, offering for sale and selling services bearing the name ID Check.

36. Defendants' use of the ID Check name, which is substantially identical to

Plaintiff's ID Checkup trademark, in connection with the identical services, is likely to

cause confusion or to cause mistake or to deceive as to the origin, sponsorship or

affiliation of the services advertised and sold by Defendants.

37. Intersections has no control over the quality of services offered by

Defendants and because of the confusion as to the source, Intersections' valuable

goodwill with respect to its ID Checkup mark is at the mercy of Defendants.

38. Defendants are directly, vicariously and contributorily liable for

infringement of Intersections' trademark in violation of Section 43(a) of the Lanham Act,

15 U.S.C. § 1125(a).

39. Defendants' conduct has caused, and unless restrained by the Court, will

continue to cause irreparable injury to Intersections.

40. Defendants' conduct has damaged Intersections in an amount to be

determined at trial.

41. Upon information and belief, Defendants' aforesaid infringing conduct has

been willful, wanton, and malicious and done with an intent to deceive. Intersections is

therefore entitled to an award of its reasonable attorneys' fees and costs, and treble its

actual damages.
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42. Intersections has no adequate remedy at law and is further entitled to a

preliminary and permanent injunction against Defendants.

COUNT II
LANHAM ACT - UNFAIR COMPETITION
17 U.S.C. S 1125fa)

43. Intersections incorporates by reference and realleges each and every

allegation of the Paragraphs above.

44. Defendants' conduct constitutes direct, vicarious and contributory unfair

competition and the use of false descriptions and representations in violation of section

43(a)(1)(A) and (B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B).

45. Defendants - and /or their officers, agents, representatives, and employees

- have made false and misleading representations about their connection to Intersections'

goods and services. Specifically, Defendants have used the ID Check name and logo in

connection with identity risk analysis services such that they are likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

association of Defendants' services with Intersections' ID Checkup mark and logo and

the services associated therewith.

46. Defendants have caused their services to enter into interstate commerce.

47. Defendants' activities have deceived, or are likely to deceive, a substantial

portionof the purchasing public, and such deception is material in that it is likely to

influence the buying decisions of the purchasing public.

48. By reason of Defendants' conduct as alleged above, Intersections has

suffered, and will continue to suffer, substantial damage to its business reputation and

goodwill, as well as diversion of trade and loss of profits in an amount not yet
 Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 8 of 12

ascertained.

49. Defendants are directly, vicariously and contributorily liable for unfair

competition and the use of false descriptions and representations in violation of section

43(a)(1)(A) and (B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B).

50. Defendants' conduct has caused, and unless restrained by the Court, will

continue to cause irreparable injury to Intersections.

51. Defendants' conduct has damaged Intersections in an amount to be

determined at trial.

52. Upon information and belief, Defendants' aforesaid infringing conduct has

been willful, wanton, and malicious and done with an intent to deceive. Intersections is

therefore entitled to an award of its reasonable attorneys' fees and costs, and treble its

actual damages.

53. Intersections has no adequate remedy at law and is further entitled to a

preliminary and permanent injunction against Defendants.

COUNT HI
VIRGINIA COMMON LAW TRADEMARK INFRINGEMENT

54. Intersections incorporates by reference and realleges each and every

allegation of the Paragraphs above.

55. Defendants' use of the ID Check name creates the impression to a

consumer that Intersections and Defendants are somehow affiliated and is likely to

confuse consumers into purchasing Defendants' services when they were instead seeking

Intersections' services.

56. Defendants' use of the ID Check name, that is substantially identical to the

ID Checkup mark, is likely to cause confusion or to cause mistake or to deceive as to the

 Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 9 of 12

origin, sponsorship or affiliation of the services advertised and sold by Defendants.

57. Defendants' conduct constitutes direct, vicarious and contributory

trademark infringement under the common law.

58. Defendants' conduct has damaged Intersections in an amount to be

determined at trial.

59. Defendants' conduct has caused, and unless restrained by the Court, will

continue to cause irreparable injury to Intersections. Intersections has no adequate

remedy at law and is entitled to a preliminaryand permanent injunctionagainst

Defendants.

PRAYER FOR RELIEF

WHEREFORE, the Plaintiff, Intersections Inc. prays:

A. That this Court will adjudge that Intersections' service mark ID

CHECKUP has been infringed as a direct and proximate result of the acts of Defendants

as set forth in this Complaint, in violation of Intersections' rights under the Lanham Act,

15 U.S.C. § 1125(a) and under the Common Law;

B. That this Court will adjudge that Defendants have competed unfairly, and

made false descriptions and representations of the origin of its services as set forth in this

Complaint, in violation of Intersections' rights under the Lanham Act, 15 U.S.C. § 1125,

et seq. and in violation of the Virginia Common Law;

C. That Defendants and all officers, directors, agents, servants, employees,

affiliates, attorneys, successors, and assigns of Defendants, and all persons in active

concert or participation therewith, be preliminarily and permanently enjoined:

i. from committing any further acts of trademark infringement or

 Case 1:10-cv-01056-TSE -TCB Document 1 Filed 09/22/10 Page 10 of 12

unfair competition;

ii. from using the term ID Check, ID Checkup or any mark

incorporating the term ID Check or ID Checkup in any way that is

likely to cause consumer confusion or unfair competition with

Intersections' ID CHECKUP trademark;

iii. from using any term which is likely to be confused with

Intersections' ID CHECKUP trademark;

iv. from committing any other acts calculated to cause purchasers to

believe that Defendants' services are Intersections', and from

competing unfairly with Intersections in any way;

D. That Defendants have the burden to ensure that its officers, directors,

agents, servants, employees, affiliates, attorneys, successors, and assigns comply with

this Order;

E. That Intersections recover Defendants' profits and/or damages

Intersections suffered;

F. That, due to Defendants' willful actions and intentional disregard for

Intersections' rights, and to deter future infringement, the Court increase the damages and

profits awarded under the Lanham Act;

G. That Intersections recover pre-judgment and post-judgment interest on

each and every award;

H. That Intersections have and recover its attorneys' fees, taxable costs and

disbursements incurred in this action;

10
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I. That Intersections have such other and further relief as the Court may

deem just and proper.

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JURY DEMAND

Intersections respectfully demands a trial by jury of all matters to which it is

entitled to a trial by jury pursuant to Fed. R. Civ. P. 38.

INTERSECTIONS INC.

Dated: September 22, 2010 By: i&

Roger CalaizzifVa! Bar #32651
Elissa Brockbank Reese, Va. Bar #78969
(Admitted in VA, not admitted in DC)
Venable LLP
575 7th Street, NW
Washington, DC 20004-1601
Telephone (202) 344-4000
Fax (202)344-8300
Email: racolaizzi@venable.com

OF COUNSEL: Jacqueline Levasseur Patt

District of Columbia Bar #469766
Meaghan P.H. Kent
District of Columbia Bar #977821
Venable LLP
575 7lh Street, NW
Washington, DC 20004-1601
Telephone (202) 344-4000
Fax (202)344-8300
*Admitted to the Bar in the District of
Columbia

Attorneys for the Plaintiff

#402636

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