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					            Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 1 of 21


     LOBB & CLIFF, LLP
 1
     GREGORY A. NYLEN (SBN 151129)
 2   Email: gnylen@lobbcliff.com
     1650 Spruce Street, Suite 410
 3   Riverside, CA 92507
 4   Telephone: (951) 788-9410
     Facsimile: (951) 788-0766
 5
 6   Attorneys for Plaintiff SHUTTERSTOCK, INC.
 7
 8
                                UNITED STATES DISTRICT COURT
 9
                           SOUTHERN DISTRICT OF CALIFORNIA
10
11
      SHUTTERSTOCK, INC., a Delaware                     CASE NO. '14CV0869 WQHNLS
12    corporation,
13                 Plaintiff,                            COMPLAINT
14
      vs.
15                                                       [DEMAND FOR JURY TRIAL]
16    NORBERT PIKULSKI, an individual d/b/a
      shutterst9ck.com, shjtterstock.com,
17
      ehutterstock.com, zhutterstock.com,
18    whutterstock.com, shutterstpck.com,
      sh7tterstock.com, and shutterst0ck.com; and
19    DOES 1-10,
20                 Defendants.
21
22
23          Plaintiff Shutterstock, Inc. (“Shutterstock”) files this Complaint on knowledge as
24   to its own activities and on information and belief as to the activities of others:
25                                JURISDICTION AND VENUE
26          1.    This is an action for cybersquatting, trademark infringement, trademark
27   dilution, unfair competition and false designation of origin arising under the
28   Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d) and

                                                   1
                                              COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 2 of 21



 1   Trademark Act of 1946, 15 U.S.C. §§ 1051, et seq., (the “Lanham Act”), and for
 2   trademark and trade name infringement, unfair competition, and dilution under the laws
 3   of the State of California.
 4          2.     This Court has original subject matter jurisdiction over this action pursuant
 5   to 28 U.S.C. §§ 1331 and 1338(a) and (b); 15 U.S.C. §§ 1114, 1116, 1121 and 1128.
 6          3.     This Court has supplemental jurisdiction over Shutterstock’s claims under
 7   the laws of the State of California pursuant to 28 U.S.C. § 1367, because the state-law
 8   claims are so related to the claims over which this Court has original jurisdiction that
 9   they form part of the same case or controversy under Article III of the United States
10   Constitution.
11          4.     This Court has personal jurisdiction over each of the Defendants because
12   they conduct substantial, continuous, and systematic business within this District;
13   because Defendants engaged in acts or omissions causing injury within this District; and
14   because the claims alleged in this Complaint arise out of or relate to Defendants’ forum-
15   related activities.
16          5.     Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b)(2) and
17   1400(a) because the facts giving rise to the acts or omissions alleged herein took place in
18   this District and because Defendants are subject to personal jurisdiction in this District.
19                                         THE PARTIES
20          6.     Shutterstock is a corporation, organized and existing under the laws of the
21   State of Delaware, having its principal place of business at 350 Fifth Avenue, 21st Floor,
22   New York, New York 10118. Shutterstock is also licensed to do business in the State of
23   California and has an office in California.
24          7.     Upon information and belief, Defendant Norbert Pikulski (“Pikulski”) is an
25   individual residing at 12166 Cimbria Way, Lakeside, CA 92040, and conducting business
26   throughout the State of California and within this judicial district.
27          8.     DOES 1-10, whose identities and addresses are presently unknown to
28   Shutterstock, are individuals and corporate entities that, upon information and belief,

                                                   2
                                              COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 3 of 21



 1   have assisted, contributed to, aided and abetted, conspired with, and/or acted in concert
 2   with Pikulski in connection with his improper activities as alleged herein. The Complaint
 3   herein will be amended, if appropriate, to include the name or names of these individuals
 4   when such information becomes available.
 5                                   BACKGROUND FACTS
 6         A.     Shutterstock’s Valuable And Famous Intellectual Property.
 7         9.     Founded in 2003 and headquartered in New York City, Shutterstock is a
 8   publicly traded (NYSE: SSTK), innovative technology company, operating in more than
 9   150 countries and 20 languages. As a two-sided marketplace, Shutterstock’s mission is
10   to connect creative professionals with the best photos, vectors, illustrations and video
11   from thousands of contributors around the world.
12         10.    Shutterstock is the owner of the entire right, title and interest in and to the
13   federally and internationally registered SHUTTERSTOCK word mark (U.S. Registration
14   No. 3,084,900) (the “Shutterstock Word Mark”) in International Class 35 for the
15   licensing of digital data (namely still images) for use in the fields of electronic and print
16   publishing, graphic design, advertising, product packaging and interactive multimedia.
17   The Shutterstock Word Mark was first used in commerce on February 14, 2004, was
18   registered on April 25, 2006 and is incontestable. Shutterstock also owns all right, title
19   and interest in and to the federally registered SHUTTERSTOCK design marks (U.S.
20   Registration Nos. 4286040, 4286055, 4286051 and 4286050) in International Class 45
21   for the licensing of reproduction rights for various types of intellectual property,
22   including, inter alia, photographs, film, video, advertising, graphic design, product
23   packaging, illustrations, live performances, and certain other media. Shutterstock also
24   owns all right, title and interest in and to federally registered marks for its brands
25   OFFSET, SKILLFEED and BIGSTOCK (see, e.g., U.S. Reg Nos. 4350110, 4442589,
26   4446512, 4504338, and 3924779). All common law and federally registered trademarks
27   owned by Shutterstock are collectively referred to herein as the “Shutterstock
28   ///

                                                  3
                                              COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 4 of 21



 1   Trademarks”. Shutterstock also owns a number of related domain names,1 including,
 2   e.g., shutterstock.com, shutterstock.biz, shutterstock.fr, shutterstock.jp, shutterstock.hk,
 3   and shutterstock.info.
 4         11.    The Shutterstock Word Mark is used in connection with the licensing of
 5   photos, vectors, illustrations and videos. The Shutterstock Word Mark is world famous
 6   and known to artists, photographers, designers, producers, editors and other creators and
 7   consumers of photographic images, illustrations, vectors, and videos throughout the
 8   world. Shutterstock has invested substantial sums of money and resources to develop the
 9   Shutterstock Word Mark.
10         12.    Since 2004, Shutterstock has used the Shutterstock Word Mark continuously
11   in interstate, intrastate and foreign commerce, including commerce in the State of
12   California and in this judicial District.
13         13.    The Shutterstock Word Mark is a highly visible symbol of the history and
14   quality of services Shutterstock offers.            Shutterstock has widely promoted the
15   Shutterstock Word Mark in the United States and throughout the world, and has spent
16   millions of dollars advertising the brand. The public, customers, and the still and moving
17   image licensing industry have come to recognize that services delivered under the
18   Shutterstock Word Mark originate with Shutterstock exclusively.
19         14.    Shutterstock also exercises quality control over the use of the Shutterstock
20   Word Mark, and devotes significant resources to protecting the Shutterstock Word Mark.
21         15.    As a result of Shutterstock’s continuous and broad use of the Shutterstock
22   Word Mark worldwide, the continuous and unsolicited media coverage of Shutterstock,
23   the high degree of consumer recognition of Shutterstock’s Word Mark and other
24   intellectual property, and the millions of consumers who regularly use and enjoy
25   Shutterstock’s services, Shutterstock’s Word Mark is famous within the meaning of 15
26
     1
27    “Internet domain name” or “domain name” means a string of alphanumeric characters
28
     used to identify a specific website on the Internet. For example, the domain name for
     Shutterstock’s website is www.shutterstock.com (or simply “shutterstock.com”).
                                                     4
                                                 COMPLAINT
              Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 5 of 21



 1   U.S.C. § 1125(c). In an Office Action refusing registration of a confusingly similar
 2   unrelated mark, the Patent & Trademark Office stated “Shutterstock is a leading global
 3   provider” of stock content and the Shutterstock website, www.shutterstock.com “ranks
 4   among the top 500 most viewed websites in the world.” A copy of the Office Action is
 5   attached hereto as Exhibit A.
 6            B.    Defendants’ Serial Typosquatting Activities.
 7            16.   Pikulski is a serial typosquatter. A typosquatter registers an Internet domain
 8   name that is confusingly similar to a protected mark. A typosquatter domain name may
 9   be confusingly similar to a protected mark either because it is an intentionally misspelled
10   version of the protected mark that is similar in sight, sound or meaning (e.g.
11   “shutterstpck.com”) or because it incorporates the entire protected mark and adds
12   additional characters to it (e.g. “shutterstocki.com”).
13            17.   According to WhoIs reports dated as of March 19, March 26 and April 8,
14   2014 (copies of which are attached collectively hereto as Exhibit B),2 Pikulski is the
15   listed     owner   of   the   following   domains:    shutterst0ck.com,    shutterst9ck.com,
16   shutterstpck.com,         shjtterstock.com,       ehutterstock.com,        zhutterstock.com,
17   whutterstock.com and, sh7tterstock.com, (collectively, the “Typosquatter Domains”).
18   Pikulski is also the listed owner of number of domain names that appear to typosquat on
19   other well-known trademarks. A copy of a WhoIs record identifying 128 such domain
20   names owned by Pikulski as the listed owner as of March 26, 2014 is attached hereto as
21   Exhibit C.
22            18.   Defendants do not use the Typosquatter Domains in connection with any
23   bona fide offering of goods or services, or as any legitimate noncommercial or fair use.
24   Rather, when entered into a web browser such as Internet Explorer, Google Chrome or
25   Safari, the Typosquatter Domains (with the exception of ehutterstock.com) currently
26   2
      “WhoIs records” refer to publicly available records that provide information about the
27   owners and registrants of domain names. Among other things, the WhoIs record for a
28
     particular domain typically indicates who owns the domain name and which computer
     server hosts (i.e. makes available to Internet users) content available at that domain name.
                                                   5
                                               COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 6 of 21



 1   resolve to the domain googpussy.com and previously, at least one of the Typosquatter
 2   Domains (shutterstpck.com) resolved to the domain ehhun.com. According to WhoIs
 3   reports dated as of March 19, 2014, Pikulski is also the listed owner of googpussy.com
 4   and ehhun.com. See also Exhibit B. Googpussy.com and ehhun.com are pornographic
 5   websites offering extremely graphic and lurid videos of individuals engaged in explicit
 6   sexual activities (the “Pornography Websites”). There are no filters that would prevent a
 7   minor or anyone else from viewing this extreme content. Printouts of pages of the
 8   Pornography Websites as of March 12, March 26 and April 8, 2014 are attached hereto as
 9   Exhibit D. Exhibit D depicts the pages of the Pornography Websites to which the
10   Typosquatter Domains, including shutterstpck.com and sh7tterstock.com, resolve.
11   Furthermore, as recently as April 8, 2014, the names of at least two Typosquatter
12   Domains, ehutterstock.com and zhutterstock.com, are displayed at the top of the
13   googpussy.com Pornography Website. See Exhibit D.
14         19.    The Pornography Websites also offer advertising for other pornographic
15   websites and online services. For example, clicking on a “Premium” link at the top of the
16   page redirects a viewer to a website entitled “Wankz” resolving at www.wankz.com,
17   which offers “the best streaming porn” for a subscription fee of $29.95 per month. A
18   printout of which is attached hereto as Exhibit E. The googpussy.com Pornography
19   Website also has advertisements for other Internet pornography sites that charge fees that
20   appear at the bottom of the googpussy.com Pornography Website home page, some of
21   which change each time someone visits the site. Examples of these advertisements can
22   be seen at the bottom of the printout attached as Exhibit F.
23         20.    Shutterstock asked Pikulski to cease using certain of the Typosquatter
24   Domains and to transfer certain of the Typosquatter Domains to Shutterstock, but
25   Pikulski refused, and instead further demonstrated his malicious and bad intent by
26   registering additional Typosquatter Domains in response. Specifically, after learning
27   about the first Typosquatter Domain, shutterstpck.com, in early March of 2014, both
28   Shutterstock’s General Counsel and Corporate Counsel demanded that Pikulski turn over

                                                  6
                                             COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 7 of 21



 1   the domain. A copy of the email from Shutterstock’s Corporate Counsel to Pikulski
 2   dated March 12, 2014 is attached as Exhibit G. Pikulski did not respond or turn over the
 3   shutterstpck.com Typosquatter Domain; instead, that same day, Pikulski registered the
 4   shutterst0ck.com Typosquatter Domain. See Exhibit B. Pikulski proceeded to register
 5   the   ehutterstock.com,    shutterst9ck.com,       shjtterstock.com    and   sh7tterstock.com
 6   Typosquatter Domains between March 15 and March 23, 2014. See Exhibit B. On
 7   March 21, 2014, Shutterstock filed a complaint before the National Arbitration Forum
 8   relating to the shutterstpck.com and shutterst0ck.com Typosquatter Domains under the
 9   Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation
10   for Assigned Names and Numbers. Pikulski responded by posting on the same day on
11   his Twitter account “Fuck you Shutterstock! Bitches! Hoes skankz!” A copy of this
12   posting is attached as Exhibit H. Pikulski then registered the whutterstock.com and
13   zhutterstock.com Typosquatter Domains on March 23, 2014. See Exhibit B.
14         21.    Pikulski also owns a Facebook account on which he claims he is engaging in
15   business    similar   to   Shutterstock.       This     page   is     publicly   available   at
16   https://www.facebook.com/norbert.pikulski.         For example, on his Facebook page,
17   Pikulski boasts about starting a “norbies.com” website, as well as ehutterstock.com, at
18   which he will offer “stock image and vector searching,” claims to have been “accepted”
19   as a developer for “fotolias” [sic], and references joining fotolia.com, which Pikulski
20   describes as “the world’s leading stock photo agency.” Copies of printouts of relevant
21   pages from Pikulski’s Facebook page are attached collectively hereto as Exhibit I.
22         22.    Pikulski contacted Shutterstock on April 9, 2014 and stated that
23   “ehutterstock specializes in absolutely free images” and referenced “shutterst0ck
24   customers”. A copy of this email is attached hereto as Exhibit J. As of April 9, 2014, the
25   landing page for the ehutterstock.com Typosquatter Domain displayed a title for “Image
26   Categories” against a nude picture; the bottom of the page references the “Stock image
27   and networking platform SYMBIOSTOCK…”.                      A copy of this webpage is
28   ///

                                                    7
                                                COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 8 of 21



 1   attached hereto as Exhibit K. Prior to April 9, 2014, the ehutterstock Typosquatter
 2   Domain resolved to the Pornography Websites.
 3         23.    As noted above, Pikulski also owns a Twitter account.           Pikulski has
 4   demonstrated extremely harassing and aggressive behavior towards Shutterstock and
 5   attempted to tarnish and harm Shutterstock’s reputation in his postings on his Twitter
 6   account. For example, he has tagged Shutterstock (in the form of “#shutterstock”) in
 7   extremely offensive and suggestive posts, including his response to the complaint filed
 8   by Shutterstock described above and another post in which he claims that “a friend”
 9   claims that Shutterstock photos have viruses. Pikulski has also referenced additional
10   typosquatting and cybersquatting domains, including shuthersuck.com, shuttersuck.com
11   and shutterstocksucks.com, which do not appear to be active sites. Pikulski also has
12   made numerous references to lewd and offensive conduct, in certain of which posts he
13   has also tagged #shutterstock3 (e.g., this post from March 27, 2014, accompanied by a
14   picture of alcohol and illegal drugs: “What do u mean fuk ya theres drugs here...
15   #shutterstock shut her stock up... http://googpussy.com pic.twitter.com/KYcpJArGbI”).
16   Copies of relevant pages from Pikulski’s Twitter account, dated April 1, 2014, are
17   attached collectively hereto as Exhibit L.
18         C.     Harm to Shutterstock from Defendants’ Conduct.
19         24.    Defendants’ typosquatter schemes and use of the Typosquatter Domains as
20   alleged above infringe on Shutterstock’s famous and distinctive Word Mark, confuse the
21   consuming public, diminish the goodwill associated with Shutterstock and its Word
22   Mark, injure Shutterstock’s reputation, interfere with Shutterstock’s business, and
23   unjustly enrich Defendants.
24         25.    As a result of Defendants’ typosquatter schemes, the consuming public has
25   been and is likely to be confused with respect to whether Shutterstock is affiliated,
26
     3
27    As used in social media, the hashtag symbol (#) is used to identify messages on a
28
     specific topic. For example, searching “#shutterstock” will identify all messages in which
     #shutterstock appears on a specific social media platform.
                                                  8
                                             COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 9 of 21



 1   connected, or associated with Defendants and Defendants’ websites, including the
 2   Typosquatter Domains and the Pornography Websites (the Typosquatter Domains and
 3   the Pornography Websites are referred to collectively herein as “Defendants’ Websites”).
 4         26.    In addition, the consuming public has been and is likely to be confused as to
 5   whether Shutterstock is the source of Defendants’ offers, goods, and services, and as to
 6   whether Shutterstock sponsors and approves Defendants’ commercial activities.
 7         27.    Shutterstock’s distinctive and famous Word Mark has been diluted by
 8   blurring and diluted by tarnishment as a result of Defendants’ typosquatter schemes.
 9         28.    Shutterstock has suffered and continues to suffer significant harm to its
10   reputation and goodwill, including the goodwill associated with its Word Mark, as a
11   result of Defendants’ typosquatter schemes.
12         29.    Shutterstock has suffered substantial damages as a result of Defendants’
13   conduct, including damages from reduced use of Shutterstock’s website, damages to the
14   reputation and goodwill associated with Shutterstock’s Word Mark, costs to investigate
15   and combat Defendants’ typosquatter schemes, and costs to respond to consumers’
16   complaints and confusion about Defendants’ typosquatter schemes.
17                                     CLAIMS FOR RELIEF
18                                  FIRST CLAIM FOR RELIEF
19                                      CYBERSQUATTING
20                                      (15 U.S.C. § 1125 (d))
21         30.    Shutterstock realleges and incorporates by reference each and every
22   allegation above as if fully set forth herein.
23         31.    Shutterstock owns the Word Mark referenced in paragraph 10 above.
24         32.    Shutterstock’s Word Mark is famous and highly distinctive with regard to a
25   variety of services, including the licensing of digital media.
26         33.    The distinctive quality of Shutterstock’s Word Mark is of enormous value to
27   Shutterstock.
28   ///

                                                      9
                                               COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 10 of 21



 1           34.   Shutterstock began using its distinctive and famous Word Mark in 2004,
 2   approximately ten years prior to Defendants’ unauthorized and unlawful activities.
 3           35.   Defendants have registered, trafficked in, and used the Typosquatter
 4   Domains that are confusingly similar to and dilutive of Shutterstock’s Word Mark
 5   knowing that the Typosquatter Domain names are confusingly similar to and dilutive of
 6   Shutterstock’s Word Mark.
 7           36.   Defendants registered their Typosquatter Domains with a bad faith intent to
 8   profit from the fame and goodwill associated with Shutterstock and Shutterstock’s Word
 9   Mark.
10           37.   Defendants engage in the conduct described in this Complaint without
11   Shutterstock’s consent or authorization. Defendants neither applied for a license nor
12   sought permission from Shutterstock to use its Word Mark, and Defendants are not
13   associated with Shutterstock in any way.
14           38.   Defendants intend to and do divert consumers from Shutterstock’s online
15   location to Defendants’ Websites, which harm the goodwill represented by Shutterstock’s
16   marks by creating a likelihood of confusion as to the source, sponsorship, affiliation, or
17   endorsement of Defendants’ Websites.
18           39.   Defendants’ Websites harm Shutterstock’s reputation and the goodwill
19   associated with Shutterstock’s Word Mark by causing consumers to associate
20   Shutterstock with the negative qualities of Defendants’ Websites, including, but not
21   limited to, the confusing and deceptive manner in which Defendants’ Websites generate
22   Internet traffic, the salacious, pornographic, confusing and deceptive content of
23   Defendants’ Websites, the misleading nature of the commercial activities carried at
24   Defendants’ Websites, the shoddy design of Defendants’ Websites and the unreliable
25   functionality of those websites.
26           40.   The Typosquatter Domains further harm Shutterstock’s reputation and the
27   goodwill associated with Shutterstock’s Word Mark by causing consumers to associate
28   ///

                                                 10
                                             COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 11 of 21



 1   Shutterstock with a competing business, ehutterstock.com, which claims to offer stock
 2   imagery.
 3          41.   Defendants do not use the Shutterstock Word Mark for a bona fide offering
 4   of goods and/or services. Rather, Defendants engage in their typosquatter scheme and
 5   use the Typosquatter Domains for commercial gain, and do not make a legitimate
 6   noncommercial or fair use of the Shutterstock Word Mark. Instead, Defendants intend to
 7   capitalize on Shutterstock’s Word Mark to drive traffic to the Pornography Websites.
 8          42.   On information and belief, Defendants registered or acquired the
 9   Typosquatter Domains knowing they were identical or confusingly similar to the
10   distinctive and famous Shutterstock Word Mark.
11          43.   Defendants’ conduct has caused irreparable and incalculable harm and
12   injury to Shutterstock and, unless enjoined, will cause further irreparable and incalculable
13   injury for which Shutterstock has no adequate remedy at law.
14          44.   Defendants’ conduct constitutes a knowing and willful violation of
15   Shutterstock’s rights under 15 U.S.C. § 1125(d).
16          45.   As a result of Defendants’ actions as alleged above, Shutterstock is entitled
17   to injunctive relief against Defendants prohibiting them from registering or owning any
18   other domains that incorporate or otherwise infringe Shutterstock’s Word Mark
19   (including without limitation by typosquatting).
20          46.   As a result of Defendants’ actions as alleged above, Shutterstock is also
21   entitled to all other remedies available under the Lanham Act, including, but not limited
22   to, cancellation of Defendants’ rights in their Typosquatter Domains and/or transfer of
23   those Typosquatter Domain names to Shutterstock, compensatory and consequential
24   damages in an amount to be proven at trial, statutory penalties, disgorgement of
25   Defendants’ profits, and reasonable costs and attorneys’ fees.
26   ///
27   ///
28   ///

                                                 11
                                             COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 12 of 21



 1                                SECOND CLAIM FOR RELIEF
 2                               TRADEMARK INFRINGEMENT
 3                                        (15 U.S.C. § 1114)
 4          47.    Shutterstock realleges and incorporates by reference each and every
 5   allegation above as if fully set forth herein.
 6          48.    Defendants and Shutterstock offer their services through the same channel
 7   of trade, the Internet.
 8          49.    Defendants have stated that they intend to offer stock photo licensing
 9   services similar to those offered by Shutterstock.
10          50.    In connection with their typosquatter schemes and their ownership and use
11   of the Typosquatter Domains, Defendants use Shutterstock’s Word Mark and words,
12   terms, names, symbols, and devices that are substantially similar to Shutterstock’s Word
13   Mark, in commerce, for commercial purposes, and in connection with the advertising,
14   distribution, and sale of goods and services.
15          51.    Defendants’ use of the Typosquatter Domains is likely to cause confusion,
16   or to cause mistake, or to deceive as to the affiliation, connection, or association of
17   Defendants and Defendants’ Websites with Shutterstock.
18          52.    Defendants’ use of the Typosquatter Domains is likely to cause confusion,
19   or to cause mistake, or to deceive as to whether Shutterstock is the source of Defendants’
20   goods, services, and commercial activities, and as to whether Shutterstock approves and
21   sponsors Defendants’ goods, services, and commercial activities.
22          53.    Because of the likelihood of confusion caused by Defendants’ conduct, any
23   defects or faults in Defendants’ Websites and commercial activities injure Shutterstock’s
24   reputation and the fame and goodwill associated with Shutterstock and Shutterstock’s
25   Word Mark.
26          54.    Defendants engage in the conduct described in this Complaint without
27   Shutterstock’s consent or authorization.
28   ///

                                                      12
                                                COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 13 of 21



 1           55.   Defendants engage in the conduct described in this Complaint with
 2   knowledge of the fame and goodwill associated with Shutterstock and Shutterstock’s
 3   marks and with the intent to trade off that fame and goodwill.
 4           56.   On information and belief, Defendants have induced and encouraged others
 5   to engage in the same conduct or substantially similar conduct and, in addition or in the
 6   alternative, have provided services or consideration to others with knowledge or reason
 7   to know that they were engaged in infringing conduct.
 8           57.   Defendants’ conduct has caused irreparable and incalculable harm and
 9   injury to Shutterstock and, unless enjoined, will cause further irreparable and incalculable
10   injury for which Shutterstock has no adequate remedy at law.
11           58.   Defendants’ conduct constitutes a knowing and willful violation of
12   Shutterstock’s rights under 15 U.S.C. § 1114.
13           59.   Defendants’ conduct is deliberate, willful, fraudulent, and without any
14   extenuating circumstances, and is an exceptional case within the meaning of 15 U.S.C. §
15   1117.
16           60.   Shutterstock is entitled to injunctive relief against Defendants, as well as all
17   other remedies available under the Lanham Act, including, but not limited to, damages in
18   an amount to be proven at trial, statutory penalties, disgorgement of Defendants’ profits,
19   and costs and attorneys’ fees.
20                                 THIRD CLAIM FOR RELIEF
21                          FALSE DESIGNATION OF ORIGIN AND
22                                    UNFAIR COMPETITION
23                                      (15 U.S.C. § 1125(e))
24           61.   Shutterstock realleges and incorporates by reference each and every
25   allegation above as if fully set forth herein.
26           62.   Defendants’ use of the Typosquatter Domains as alleged above is likely to
27   cause confusion to the general purchasing public.
28   ///

                                                      13
                                               COMPLAINT
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 1           63.   By infringing Shutterstock’s Word Mark as alleged above, Defendants
 2   misrepresent and falsely describe to the general pubic the origin and source of their stock
 3   content licensing and pornographic websites and the explicit pornographic services the
 4   Pornography Websites offer for sale, and creates a likelihood of confusion by ultimate
 5   purchasers as to both the source and sponsorship of such services.
 6           64.   Defendants’ unlawful, unauthorized and unlicensed actions as alleged above
 7   creates express and implied misrepresentations that the Typosquatter Domains, the stock
 8   content licensing services offered on the ehutterstock Typosquatter Domain and the
 9   pornographic services offered for sale on the Pornography Websites to which the
10   remaining Typosquatter Domains resolve were created, authorized or approved by
11   Shutterstock, all to Defendants’ profit and Shutterstock’s great damage and injury.
12           65.   Defendants’ aforesaid acts are a knowing and willful violation of Section
13   43(a) of the Lanham Act, 15 U.S.C. § 1125(a), in that Defendants’ use of Shutterstock’s
14   Word Mark, in connection with Defendants’ goods and services in interstate commerce,
15   constitutes a false designation of origin and unfair competition.
16           66.   Shutterstock has no adequate remedy at law and, if Defendants’ activities
17   are not enjoined, Shutterstock will continue to suffer irreparable harm and injury to its
18   goodwill and reputation.
19           67.   Defendants’ conduct is deliberate, willful, fraudulent, and without any
20   extenuating circumstances, and is an exceptional case within the meaning of 15 U.S.C. §
21   1117.
22           68.   Shutterstock is also entitled to as all other remedies available under the
23   Lanham Act, including, but not limited to, damages in an amount to be proven at trial,
24   statutory penalties, disgorgement of Defendants’ profits, and costs and attorneys’ fees.
25   ///
26   ///
27   ///
28   ///

                                                  14
                                             COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 15 of 21



 1                                FOURTH CLAIM FOR RELIEF
 2                                   TRADEMARK DILUTION
 3                                        15 U.S.C. § 1125(c)
 4         69.    Shutterstock realleges and incorporates by reference each and every
 5   allegation above as if fully set forth herein.
 6         70.    Shutterstock’s Word Mark and other marks are famous as a result of
 7   enormous publicity and Shutterstock’s strong and loyal user base, and are widely
 8   recognized by the general public of the United States as a designation of Shutterstock’s
 9   services.
10         71.    Shutterstock’s Word Mark became famous before Defendants registered the
11   Typosquatter Domains and began operating their typosquatter schemes.
12         72.    In connection with their Typosquatter Domains, Defendants use and display
13   words, terms, names, symbols, and devices that are substantially similar to Shutterstock’s
14   Word Mark, in commerce, for commercial purposes, and in connection with the
15   advertising, distribution, and sale of goods and services.
16         73.    Defendants’ conduct causes dilution by blurring of Shutterstock’s Word
17   Marks within the meaning of 15 U.S.C. § 1125(c)(2)(B), because those schemes are
18   likely to cause an association with Shutterstock arising from the similarity of the marks
19   that impairs the distinctiveness of Shutterstock’s Word Mark and weakens the connection
20   in the public’s mind between Shutterstock’s Word Mark and Shutterstock’s services.
21         74.    Defendants’ typosquatter schemes and use of the Typosquatter Domains also
22   cause dilution by tarnishment of Shutterstock’s Word Mark within the meaning of 15
23   U.S.C. § 1125(c)(2)(C), because those schemes cause consumers to associate
24   Shutterstock with the negative qualities of Defendants’ Websites, including, but not
25   limited to, the extreme pornographic content on Defendants’ Websites, confusing and
26   deceptive manner in which Defendants’ Websites generate Internet traffic, the misleading
27   nature of the commercial activities carried on at Defendants’ Websites, and the shoddy
28   design of Defendants’ Websites. That association harms Shutterstock’s reputation.

                                                      15
                                               COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 16 of 21



 1           75.   Defendants intend to create an association with Shutterstock’s Word Mark
 2   and to trade on the widespread recognition of Shutterstock’s Word Mark by using marks
 3   that are substantially similar to Shutterstock’s Word Mark.
 4           76.   Defendants’ unauthorized use of words, terms, and names that are
 5   substantially similar to Shutterstock’s Word Mark was achieved with notice and full
 6   knowledge that such use was not authorized or licensed by Shutterstock. On information
 7   and belief, Defendants willfully intended to harm and trade on the recognition of
 8   Shutterstock’s Word Mark.
 9           77.   Defendants’ conduct has caused irreparable and incalculable harm and
10   injury to Shutterstock and, unless enjoined, will cause further irreparable and incalculable
11   injury for which Shutterstock has no adequate remedy at law.
12           78.   Defendants’ conduct constitutes a knowing and willful violation of
13   Shutterstock’s rights under 15 U.S.C. § 1125(c).
14           79.   Defendants’ conduct is deliberate, willful, fraudulent, and without any
15   extenuating circumstances, and is an exceptional case within the meaning of 15 U.S.C. §
16   1117.
17           80.   Shutterstock is entitled to injunctive relief against Defendants, as well as all
18   other remedies available under the Lanham Act, including, but not limited to, damages in
19   an amount to be proven at trial, statutory penalties, disgorgement of Defendants’ profits,
20   and costs and attorneys’ fees.
21                                     FIFTH CLAIM FOR RELIEF
22            COMMON LAW TRADEMARK AND TRADE NAME INFRINGEMENT
23           81.   Shutterstock realleges and incorporates by reference each and every
24   allegation above as if fully set forth herein.
25           82.   Shutterstock re-alleges and incorporates by reference each and every
26   allegation contained in the preceding paragraphs of this Complaint.
27           83.   Shutterstock has built up valuable goodwill in the Shutterstock trademarks
28   and trade names, including without limitation the Shutterstock Word Mark.

                                                      16
                                               COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 17 of 21



 1          84.    With full knowledge of the fame of the Shutterstock Word Mark,
 2   Defendants have traded, and continue to trade, on the goodwill associated with that
 3   trademark and trade name, and mislead the public into assuming a connection between
 4   Defendants’ Typosquatter Domains and Shutterstock.
 5          85.    Defendants’ acts of trademark and trade name infringement cause confusion
 6   and, mislead and deceive the pubic as to the source of Defendants’ Typosquatter
 7   Domains, permit Defendants to pass off the Typosquatter Domains as Shutterstock’s, and
 8   falsely suggest a connection between Defendants and Shutterstock and, unless restrained
 9   by this Court, will continue to do so, in violation of the common law of the State of
10   California, and to the detriment of Shutterstock and the unjust enrichment of Defendants.
11          86.    Defendants’ acts of trademark and trade name infringement have caused and
12   will continue to cause Shutterstock irreparable harm unless restrained by this Court.
13          87.    Shutterstock has no adequate remedy at law.
14                                  SIXTH CLAIM FOR RELIEF
15                  CALIFORNIA STATE LAW TRADEMARK DILUTION
16                CALIFORNIA BUSINESS AND PROFESSIONS CODE § 14335
17          88.    Shutterstock realleges and incorporates by reference each and every
18   allegation above as if fully set forth herein.
19          89.    Defendants’ acts have caused damage to Shutterstock by tarnishing
20   Shutterstock’s valuable reputation and diluting or blurring the distinctiveness of the
21   famous Shutterstock Word Mark in violation of California Business and Professions
22   Code § 14335, and will continue to tarnish and destroy the value of the Shutterstock
23   Word Mark unless enjoined by this Court.
24          90.    Shutterstock has no adequate remedy at law.
25   ///
26   ///
27   ///
28   ///

                                                      17
                                               COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 18 of 21



 1                               SEVENTH CLAIM FOR RELIEF
 2                  CALIFORNIA STATE LAW UNFAIR COMPETITION
 3         CALIFORNIA BUSINESS AND PROFESSIONS CODE §§ 17200 ET SEQ.
 4          91.   Shutterstock re-alleges and incorporates by reference each and every
 5   allegation contained in the preceding paragraphs of this Complaint.
 6          92.   The aforesaid acts by Defendants are likely to cause injury to Shutterstock’s
 7   reputation and result in Defendants unfairly competing with Shutterstock in violation of
 8   California Business and Profession Code § 17200 et seq. (the “UCL”).
 9          93.   Defendants’ actions as alleged above violate the “unfair” prong of the UCL
10   because (a) any utility of such actions is outweighed by the gravity of the harm they
11   cause to Shutterstock, (b) such actions are immoral, unethical, oppressive, unscrupulous
12   and substantially injurious to consumers, and (c) such actions constitute incipient
13   violations of state and federal antitrust laws.
14          94.   Defendants’ actions as alleged above violate the “fraudulent” prong of the
15   UCL because they are likely to mislead and confuse a statistically significant percentage
16   of reasonable consumers.
17          95.   Defendants’ actions as alleged above violate the “unlawful” prong of the
18   UCL because those same actions also constitute violations of the state and federal
19   statutes set forth above.
20          96.   Defendants’ conduct has injured Shutterstock, and unless enjoined, will
21   continue to cause great, immediate and irreparable injury to Shutterstock.
22          97.   Shutterstock is without an adequate remedy of law.
23          98.   Shutterstock is therefore entitled to injunctive relief and an order for
24   restitutionary disgorgement of all of Defendants’ ill-gotten gains pursuant to California
25   Business and Professions Code § 17203.
26   ///
27   ///
28   ///

                                                   18
                                               COMPLAINT
           Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 19 of 21



 1             WHEREFORE, Shutterstock demands judgment and prays for the following
 2   relief:
 3             1.   That Defendants, their officers, agents, servants, employees, attorneys,
 4   confederates, and all persons acting for, with, by, through or under them be preliminarily
 5   enjoined and restrained, at first during the pendency of this action and, thereafter,
 6   permanently:
 7                  a.    from using in any manner (including without limitation in any website
 8                        domain or Uniform Resource Locator) the Shutterstock Trademarks,
 9                        alone or in combination with any word or words which so resemble
10                        the Shutterstock Trademarks as to be likely to cause confusion,
11                        deception, or mistake on or in connection with the advertising,
12                        offering for sale, or sale of any product or service not Shutterstock’s,
13                        or not authorized by Shutterstock to be sold in connection with the
14                        Shutterstock Trademarks;
15                  b.    from passing off, inducing, or enabling others to sell or pass off any
16                        product as and for products produced by Shutterstock, not
17                        Shutterstock’s, or not produced under the control and supervision of
18                        Shutterstock and approved by Shutterstock for sale under the
19                        Shutterstock Trademarks;
20                  c.    from committing any acts calculated to cause purchasers to believe
21                        that Defendants’ products or services are those sold or offered under
22                        the control and supervision of Shutterstock, or sponsored or approved
23                        by, or connected with, or guaranteed by, or produced under the
24                        control and supervision of Shutterstock;
25                  d.    from further diluting and infringing the Shutterstock Trademarks and
26                        damaging Shutterstock’s goodwill;
27                  e.    from otherwise competing unfairly with Shutterstock in any manner;
28   ///

                                                   19
                                              COMPLAINT
         Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 20 of 21



 1                f.    from registering any further typosquatting domains that infringe upon
 2                      the Shutterstock Trademarks;
 3                g.    from interfering in any way with Shutterstock’s business; and
 4                h.    from engaging in any unlawful, misleading, deceptive, or malicious
 5                      activities directed at or relating to Shutterstock.
 6         2.     That Defendants account for and pay over to Shutterstock profits realized by
 7   Defendants by reason of Defendants’ unlawful acts herein alleged.
 8         3.     On all claims except for the claim under the UCL, that Shutterstock be
 9   awarded actual damages in an amount to be proven at trial.
10         4.     That the Typosquatter Domains be transferred to Shutterstock;
11         5.     That Shutterstock be awarded reasonable attorneys fees and costs and have
12   such other and further relief as the Court may deem equitable including, but not limited
13   to, any relief set forth under Sections 34-39 of the 1946 Trademark Act and/or C.G.S.A.
14   §§ 35-11(i), 42-110(a) et seq., 42-110(b) et seq.
15         6.     That Defendants be ordered to pay pre- and post-judgment interest to
16   Shutterstock.
17         7.     Such other and further relief as this Court may deem just and proper.
18
19   DATED: April 11, 2014                  LOBB & CLIFF, LLP
20
21                                       By: /s/
22                                         Gregory A. Nylen
                                           Attorneys for Plaintiff SHUTTERSTOCK, INC.
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                                                  20
                                             COMPLAINT
          Case 3:14-cv-00869-WQH-NLS Document 1 Filed 04/11/14 Page 21 of 21



 1                                DEMAND FOR JURY TRIAL
 2         Pursuant to Federal Rule 38(b), Shutterstock hereby demands a jury trial on all
 3   issues so triable that are raised by this Complaint.
 4
     DATED: April 11, 2014                   LOBB & CLIFF, LLP
 5
 6
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                                          By: /s/
                                            Gregory A. Nylen
 8                                          Attorneys for Plaintiff SHUTTERSTOCK, INC.
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                                                  21
                                              COMPLAINT

				
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