GED Testing Service LLC vs Learnscape

Thinking about using a trademark in your domain name? Then read this lawsuit by GED Testing Service LLC who owns the GED®. Turns out that Learnscape was sued for providing exam preparation software and services at GEDpathway.com, a domain Learnscape purchased which contained the Trademark GED®.

GED Testing Service sued on five counts which include Federal Trademark Infringement, Federal Unfair Competition, Cybersquatting, Unfair And Deceptive Trade Practices, Unfair And Deceptive Trade Practices and “Common Law Trademark Infringement And Unfair Competition”.

Probably most shocking was that the lawsuit asked for Learnscape be compelled to account to Plaintiffs for any and all profits derived by Learnscape (ouch!), and for all damages caused to Plaintiffs, punitive damages, all costs and reasonable attorneys’ fees, prejudgment interest on their monetary awards, turn over the Infringing Domain Name.

Think that’s bad, then read this GED lawsuit asking for as much as 1 Million per Counterfeit Mark.

Note: There is a Parody Defense to Trademark Law but it does not apply here.

I’ve included a copy of the lawsuit below for your reading pleasure.

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND GREENBELT DIVISION

GED TESTING SERVICE LLC,
1155 Connecticut Avenue N.W., 4th Floor
Washington, D.C. 20036

and

AMERICAN COUNCIL ON EDUCATION, )
One DuPont Circle N.W.
Washington, D.C. 20036,

Plaintiffs,
v.

LEARNSCAPE.COM, INC.,
4938 Hampden Lane, #209
Bethesda, Maryland 20814
Montgomery County,

Defendant.

COMPLAINT

Plaintiffs GED Testing Service LLC and American Council on Education (collectively, “Plaintiffs”) state the following for their Complaint against Defendant Learnscape.com, Inc.

NATURE OF THE ACTION

1. This is an action at law and in equity for trademark infringement, unfair competition, cybersquatting, and unfair and deceptive trade practices, arising under the federal Lanham Act, 15
U.S.C. §§ 1051 et seq. (the “Lanham Act”); the Anticybersquatting Consumer Protection Act, 15 U.S.C.
§ 1125(d) (“ACPA”); the Maryland Consumer Protection Act, MD. CODE ANN., COM. LAW § 13-301 et seq.; and the common law.

PARTIES

2. Plaintiff American Council on Education (“ACE”) is a corporation organized and existing under the laws of the District of Columbia, with its principal place of business at One DuPont Circle N.W., Washington, D.C. 20036. American Council on Education is the owner of the GED® trademarks.

3. Plaintiff GED Testing Service LLC (“GEDTS”) is a limited liability company organized and existing under the laws of the State of Delaware, with its principal place of business at 1155 Connecticut Avenue NW, 4th Floor, Washington, D.C. 20036. GEDTS is a joint venture between ACE and NCS Pearson, Inc. (“NCS Pearson”). GEDTS is the exclusive licensee and a sublicensor of the GED® trademarks.

4. On information and belief, Defendant Learnscape.com, Inc. (“Learnscape”) is a corporation organized and existing under the laws of the State of Delaware, with a principal place of business at 4938 Hampden Lane, #209, Bethesda, Maryland 20814. Learnscape provides exam preparation software and services under the GEDPATHWAY mark. Learnscape is also the registrant of record for the domain name (the “Infringing Domain Name”). A true and correct copy of the WHOIS database record for the Infringing Domain Name is attached as Exhibit A.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction under 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. This Court has supplemental jurisdiction over Plaintiffs’ related claims under 28 U.S.C. §§ 1338 and 1367.

6. This Court has personal jurisdiction over Learnscape because it is a citizen of this State, does business in this State, has committed tortious acts in this State, and has otherwise established contacts within this State making the exercise of personal jurisdiction proper.

7. Venue is proper in this District in accordance with 28 U.S.C. § 1391(b) because Learnscape resides in this District, does business in this District, and a substantial part of the events or omissions giving rise to Plaintiffs’ claims occurred in this District.

FACTS COMMON TO ALL COUNTS FOR RELIEF

Plaintiffs’ Trademark and Service Mark Rights

8. Founded in 1918, ACE is the major coordinating body for the nation’s higher education institutions, representing more than 1,600 college and university presidents, and more than 200 related associations nationwide.

9. For decades, ACE and its licensees have used the GED® trademark in connection with educational testing and related services, specifically in connection with a battery of tests used for the purpose of awarding a high school equivalency credential. Currently, the GED® test is used by all 50 U.S. states, the District of Columbia, U.S. insular areas, Canadian provinces and territories, the U.S. military, and federal correctional institutions. Nearly 800,000 GED® tests are taken each year.

10. In early 2011, ACE entered into a joint venture with NCS Pearson to create a new corporate entity, GED Testing Service LLC, responsible for the future implementation of the GED® testing program, combining the leading technology and test administration expertise of NCS Pearson with the extensive experience of ACE and its well-known GED® mark for educational testing services. As part of the joint venture, ACE continues to own and maintain control over use of the GED® mark, but GEDTS has been delegated the day to day authority to manage the GED® test and to take the necessary steps to safeguard the GED® brand. As part of its duties, GEDTS uses the GED® mark in commerce and extensively promotes the services offered under the GED® mark.

11. In addition to its strong common law rights, ACE is the owner of several federal trademark registrations of the GED® mark or a variation thereof, including the following:

(a) Reg. No. 1,321,397 of the GED® mark for “educational testing services”;

(b) Reg. No. 2,613,984 of the GED® mark for “educational testing services”; and

(c) Reg. No. 3,448,412 of the GED TESTING SERVICE® mark for “educational testing services, namely, providing adults who did not receive a high school diploma with the opportunity to earn their jurisdiction’s high school equivalency credential by passing a battery of five tests in reading, writing, mathematics, social studies, and science.” (collectively, the “GED® Registrations”). Affidavits have been filed in accordance with Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065, and have been accepted and acknowledged by the USPTO, for two of the registrations, Reg. Nos. 1,321,397 and 2,613,984, and these registrations are therefore incontestable. True and correct copies of the Certificates of Registration and TARR printouts from the USPTO’s online database reflecting the current status for each of the GED® Registrations are attached as Exhibit B.

12. Over the decades, ACE has expended considerable sums of money promoting and marketing its services under the GED® mark and in developing consumer brand recognition for the GED® mark. As a result of ACE’s continuous, widespread use and promotion of the GED® mark in connection with its educational testing services, the GED® mark has acquired a high degree of recognition and distinctiveness as a symbol of the quality services offered by ACE and by GEDTS under license from ACE. Consumers are familiar with and identify the GED® mark with ACE and, by reason of this identification, products and services associated with the GED® mark are understood by the public and trade to be marketed and offered under ACE’s authority and control or otherwise derived from ACE.

Learnscape’s Wrongful Acts

13. Decades after ACE’s adoption and first use of the GED® mark in connection with educational testing services, and well after ACE established protectable rights in its GED® mark, Learnscape began using the GEDPATHWAY mark in connection with exam preparation software and services, offering information and services highly related to those long offered by ACE in connection with its GED® mark.

14. For example, the website located at the Infringing Domain Name prominently features the GEDPATHWAY mark and advertises the goods and services offered by Learnscape under the mark. True and correct copies of printouts from Learnscape’s website, demonstrating its use of the GEDPATHWAY mark, are attached as Exhibit C.

15. Not only is Learnscape’s use of a confusingly similar imitation of the GED® mark in website advertising content and for online and downloadable software likely to cause confusion, such confusion is further aggravated by Learnscape’s incorporation of the entirety of the GED® mark within the name of the Infringing Domain Name.

16. By registering, using, and trafficking in the Infringing Domain Name, Learnscape has acted with a bad faith intent to profit from the goodwill ACE has developed in its distinctive GED® mark. On information and belief, Learnscape is intentionally seeking to cause confusion and to trade on ACE’s goodwill in its GED® mark in an effort to reap undeserved profits.

17. As part of its infringing activities, Learnscape also filed an application for registration of the GEDPATHWAY mark, which ultimately matured to registration. The registration, which covered “downloadable computer programs and software for use in teaching and learning reading, math, social studies, science, literature and essay topics based on GED requirements, featuring lessons, pre-tests, post-tests and practice tests,” issued on July 18, 2006, and was assigned Registration No. 3,117,153. The inclusion of the GED® mark within Learnscape’s description of goods makes clear that Learnscape had actual knowledge of the GED® mark at the time it filed its application to register the GEDPATHWAY mark.

18. In June 2011, ACE sent a letter to Learnscape, discussing ACE’s prior rights in, and long history of use of, the GED® mark and requesting that Learnscape assign its registration of the GEDPATHWAY mark to ACE. ACE did not receive any response to this letter.

19. Accordingly, in July 2011, ACE instituted a cancellation proceeding against Learnscape, seeking to cancel Learnscape’s registration of the GEDPATHWAY mark. Later that year, the Trademark Trial and Appeal Board entered judgment by default against Learnscape, granting ACE’s petition to cancel and cancelling Learnscape’s registration of the GEDPATHWAY mark.

20. Despite the cancellation of its registration of the GEDPATHWAY mark, Learnscape has continued to use the GEDPATHWAY mark to designate its software products and services and has continued to use the Infringing Domain Name to sell these products and services, as evidenced by Exhibit C. Accordingly, Learnscape is continuing willfully to ignore ACE’s rights in the GED® mark and is seeking to trade on the goodwill and communicative power of this mark.

21. Learnscape had constructive knowledge and, on information and belief, actual knowledge, of ACE’s strong, established rights in the GED® mark before Learnscape began using the infringing GEDPATHWAY mark. Such knowledge was acquired by virtue of ACE’s federal registrations covering the GED® mark, some of which pre-date Learnscape’s adoption and first use of its GEDPATHWAY mark, and as a result of ACE’s longstanding and exclusive use of the GED® mark nationwide for decades prior to Learnscape’s adoption and first use of the GEDPATHWAY mark.

22. Consumers throughout the United States are familiar with the GED® mark and, as a result of Learnscape’s actions, are likely to believe erroneously that Learnscape’s goods and services are those of ACE or are otherwise connected with, authorized, endorsed, or sponsored by ACE.

23. Learnscape’s use of a mark that is confusingly similar to the GED® mark, and which in fact incorporates the entirety of the GED® mark, is deceiving the public, causing immediate and irreparable harm and damage to Plaintiffs, and unlawfully generating profits for Learnscape, particularly in view of the similarity and relatedness of the parties’ goods and services. If not enjoined, Learnscape’s conduct will cause significant consumer confusion, and will continue to harm Plaintiffs’ goodwill and business reputation.

COUNT I
FEDERAL TRADEMARK INFRINGEMENT

24. Plaintiffs repeat and incorporate the allegations contained in paragraphs 1-23.

25. Learnscape is using a confusingly similar imitation of the GED® mark in connection with unlicensed and unauthorized goods and services. This conduct has already caused, and is likely to continue causing, a likelihood of confusion, deception, and mistake by creating the false and misleading impression that Learnscape’s unlicensed and unauthorized goods and services are offered by Plaintiffs or are associated or connected with Plaintiffs, or have the sponsorship, endorsement, or approval of Plaintiffs.

26. Learnscape has used a confusingly similar imitation of ACE’s federally registered GED® mark in violation of 15 U.S.C. § 1114, and Learnscape’s activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of members of the trade and public and, additionally, injury to Plaintiffs’ goodwill and reputation as symbolized by ACE’s federally registered marks and common law rights, for which Plaintiffs have no adequate remedy at law.

27. Learnscape’s actions demonstrate an intentional intent to trade on the goodwill associated with ACE’s federally registered marks and common law rights, to Plaintiffs’ great and irreparable injury.

28. Because Learnscape’s conduct is causing and is likely to continue causing substantial injury to the public and to Plaintiffs, Plaintiffs are entitled to injunctive relief and to recover Learnscape’s profits associated with the infringement, Plaintiffs’ damages, Plaintiffs’ reasonable attorneys’ fees, and any other monetary relief the Court deems to be just in accordance with 15 U.S.C. §§ 1114, 1116, and 1117.

COUNT II
FEDERAL UNFAIR COMPETITION

29. Plaintiffs repeat and incorporate the allegations contained in paragraphs 1-23.

30. Learnscape’s use of a confusingly similar imitation of the GED® mark in connection with unlicensed and unauthorized goods and services has caused, and is likely to continue causing, a likelihood of confusion, deception, and mistake by creating the false and misleading impression that Learnscape’s goods and services are distributed by Plaintiffs or are associated or connected with Plaintiffs, or have the sponsorship, endorsement or approval of Plaintiffs.

31. Learnscape has made false representations, false descriptions, and false designations of origin in violation of 15 U.S.C. § 1125(a) in connection with Learnscape’s commercial use of a confusingly similar imitation of the GED® mark. Learnscape’s activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of members of the trade and public and, additionally, injury to Plaintiffs’ goodwill and reputation, for which Plaintiffs’ have no adequate remedy at law.

32. Learnscape’s actions demonstrate an intentional intent to trade on the goodwill associated with ACE’s federally registered marks and common law rights to the great and irreparable injury of Plaintiffs.

33. Because Learnscape’s conduct is causing and is likely to continue causing substantial injury to the public and to Plaintiffs, Plaintiffs are entitled to injunctive relief and to recover Learnscape’s profits associated with the infringement, Plaintiffs’ damages, Plaintiffs’ reasonable attorneys’ fees, and any other monetary relief the Court deems to be just in accordance with 15

U.S.C. §§ 1116 and 1117.

COUNT III
CYBERSQUATTING

34. Plaintiffs repeat and incorporate the allegations contained in paragraphs 1-23.

35. By registering and using the Infringing Domain Name, Learnscape has registered, trafficked in, and used a domain name that is confusingly similar to the GED® mark. Learnscape is using the Infringing Domain Name with the bad faith intent to profit unlawfully from the goodwill associated with the GED® mark, diverting consumers from Plaintiffs’ websites to the Infringing Domain Name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Infringing Domain Name and its associated website, for Learnscape’s commercial gain.

36. Learnscape’s actions constitute cybersquatting in violation of 15 U.S.C. § 1125(d).

37. Learnscape’s unauthorized use of the Infringing Domain Name has caused and, unless enjoined, will continue to cause, irreparable injury to Plaintiffs and to the goodwill associated with the GED® mark.

38. Because Learnscape’s infringing conduct is causing and is likely to continue causing substantial injury to the public and to Plaintiffs, Plaintiffs are entitled to injunctive relief, including the transfer of the domain name to ACE. In addition, Plaintiffs are entitled to recover either statutory damages under 15 U.S.C. § 1117(d) or Learnscape’s profits, together with Plaintiffs’ costs, reasonable attorneys’ fees, and any other monetary relief the Court deems to be just under 15 U.S.C. § 1117(a).

COUNT IV
UNFAIR AND DECEPTIVE TRADE PRACTICES
UNDER MD. CODE ANN., COM. LAW §§ 13-301 et seq.

39. Plaintiffs repeat and incorporate the allegations contained in paragraphs 1-23.

40. Learnscape has engaged in unfair and deceptive trade practices within the meaning of the Maryland Consumer Protection Act by (1) causing a likelihood of confusion or misunderstanding as to the source, origin, or sponsorship of the parties’ respective services; (2) causing a likelihood of confusion or of misunderstanding as to the affiliation, connection, or association of Learnscape with Plaintiffs; (3) using deceptive representations or designations of origin in connection with Learnscape’s services; and (4) engaging in other conduct that similarly creates a likelihood of confusion or of misunderstanding of the trade and public.

41. The unauthorized use by Learnscape of a confusingly similar imitation of the distinctive GED® mark is causing and, if not enjoined by this Court, is likely to continue causing substantial injury to the public and to Plaintiffs, and Plaintiffs are entitled to injunctive relief, as well as to an award of its attorneys’ fees, actual damages, and to an accounting for any profits enjoyed by Learnscape as a result of its unlawful conduct under MD. CODE ANN., COM. LAW § 13­ 408.

COUNT V
COMMON LAW TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION

42. Plaintiffs repeat and incorporate the allegations contained in paragraphs 1-23.

43. Learnscape’s conduct constitutes common law trademark infringement and unfair competition, and has created and will continue to create a likelihood of confusion, to Plaintiffs’ irreparable injury, unless restrained by this Court. Plaintiffs have no adequate remedy at law for this injury.

44. On information and belief, Learnscape has acted with full knowledge of Plaintiffs’ use of, and ACE’s strong common law rights in, the GED® mark without regard to the likelihood of confusion of the public created by such activities. Learnscape’s conduct demonstrates a bad faith, intentional, and willful intent to mislead, deceive, and confuse the public.

45. Such conduct is in violation of the common law prohibition against unfair competition. As a result of Learnscape’s actions, Plaintiffs have been damaged in an amount not as yet determined or ascertainable. At a minimum, however, Plaintiffs are entitled to injunctive relief, to an award of their actual damages, and to an accounting for any profits enjoyed by Learnscape as a result of its unlawful conduct. In light of Learnscape’s deliberately fraudulent and malicious use of a confusingly similar imitation of the GED® mark, and the need to deter Learnscape from future trademark infringement and unfair competition, Plaintiffs are also entitled to punitive damages.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray that:

1. Learnscape and all its agents, officers, employees, representatives, successors, assigns, attorneys, and all other persons acting for, with, by, through, or under authority from Learnscape, or in concert or participation with Learnscape, be enjoined and restrained from:

a. using the infringing GEDPATHWAY mark, the GED® mark, or any other copy, reproduction, or colorable imitation or simulation of the GED® mark in connection with any goods or services offered by Learnscape;

b. using any trade dress, trademark, service mark, name, logo, or source designation of any kind that is a copy, reproduction, colorable imitation, or simulation of or confusingly similar to, or in any way similar to, the trade dresses, trademarks, service marks, names, or logos of Plaintiffs;

c. engaging in any other conduct that will cause, or is likely to cause, confusion, mistake, deception, or public misunderstanding as to the affiliation, connection, association, origin, sponsorship, or approval of Learnscape’s services with or by Plaintiffs;

d. passing off, palming off, or assisting in passing off or palming off, Learnscape’s goods or services as those of Plaintiffs, or otherwise continuing any and all acts of unfair competition alleged in this Complaint; and

e. otherwise infringing upon the GED® mark or unfairly competing with Plaintiffs in any manner whatsoever.

2. Learnscape and/or its domain name registrar be ordered to transfer and assign to ACE the Infringing Domain Name.

3. Learnscape be compelled to account to Plaintiffs for any and all profits derived by Learnscape, and for all damages caused to Plaintiffs, under 15 U.S.C. § 1117(a), MD. CODE ANN., COM. LAW § 13-408, and the common law.

4. The award of damages resulting from Learnscape’s infringement, unfair competition, and false designation of origin of services be trebled.

5. Plaintiffs recover statutory damages under 15 U.S.C. § 1117(d), if they so elect, in the amount of $100,000.

6. In light of Learnscape’s willful and deliberate infringement of the GED® mark, Plaintiffs be awarded punitive damages.

7. Learnscape be required to pay to Plaintiffs the costs of this action and its reasonable attorneys’ fees in accordance with 15 U.S.C. § 1117(a) and MD. CODE ANN., COM. LAW § 13-408.

8. Plaintiffs be awarded prejudgment interest on their monetary awards.

9. Learnscape be required to deliver up for destruction all advertising and promotional materials, websites, labels, cartons, brochures, business stationary, business cards, information sheets, posters, signs, and any and all other printed or graphic materials of any type, including the electronic files, plates, molds, or other means of producing the materials, which bear references to the GED® mark or confusingly similar imitations thereof, and/or which are found to adopt or to infringe any of Plaintiffs’ trademarks or trade dresses or that otherwise unfairly compete with Plaintiffs and their goods and services.

10. Learnscape be directed to file with the Court and serve on Plaintiffs, within thirty (30) days after entry of a final injunction, a report in writing under oath setting forth in detail the manner and form in which Learnscape has complied with the injunction.

11. Plaintiffs have such other and further relief as the Court may deem just and proper.

This 27th day of February, 2012.

Respectfully submitted,
/s/ Barry J. Fleishman

Barry J. Fleishman (Md. Bar No. 15869)
Kilpatrick Townsend & Stockton LLP
607 14th Street NW, Suite 900
Washington, D.C. 20005-2018
Telephone: (202) 508-5835
Facsimile: (202) 585-0003
bfleishman@kilpatricktownsend.com
Attorneys for Plaintiffs
GED Testing Service LLC and American Council on Education

Of Counsel:

Alex S. Fonoroff (pro hac vice to be filed)
Sabina A. Vayner (pro hac vice to be filed)
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309-4528
Telephone: (404) 815-6500
Facsimile: (404) 815-6555
afonoroff@kilpatricktownsend.com
svayner@kilpatricktownsend.com

Case 8:12-cv-00630-JFM Document 1 Filed 02/27/12