Case 0:12-cv-60454-KMW Document 1 Entered on FLSD Docket 03/12/2012 Page 1 of 13

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No.

1-800-411-I.P. HOLDINGS, LLC, Plaintiff, v. TOTAL HEALTH CARE OF FLORIDA, INC., FIRST HEALTH REHABILITATION, INC., PHI NET GROUP, INC., and JAMIE A. FINE, D.C., individually, collectively d/b/a 1-800-801-PAIN, Defendants. ______________________________________________ COMPLAINT Plaintiff, 1-800-411-I.P. Holdings, LLC, sues Defendants, Total Health Care of Florida, Inc., First Health Rehabilitation, Inc., PHI Net Group, Inc., and Jamie A. Fine, D.C., collectively d/b/a 1-800-801-PAIN and alleges:

Jurisdiction & Venue 1. This is an action for trademark infringement, false designation of origin, dilution

and cybersquatting under Sections 32 and 43 of the Lanham Act, 15 U.S.C. 1114 and 1125, trademark dilution under Fla. Stat. 495.151, and unfair competition under Florida law. 2. This Court has subject matter jurisdiction under 15 U.S.C. 1121(a) and 28

U.S.C. 1331 and 1338(b). This Court has supplemental jurisdiction over all state law causes of action under 28 U.S.C. 1338(b) and 1367(a).

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3.

Venue is proper because all parties reside and do business in this judicial district. The Parties

4.

Plaintiff, 1-800-411-I.P. Holdings, LLC, is a Florida limited liability company

with its principal place of business in Broward County, Florida. 5. Defendants, Total Health Care of Florida, Inc., First Health Rehabilitation, Inc.,

and PHI Net Group, Inc. d/b/a 1-800-801-PAIN, are Florida corporations with their principal place of business in Broward County, Florida doing business as, inter alia, chiropractic clinics and as a chiropractic and attorney legal referral service. 6. Defendant, Jamie A. Fine, D.C, directs, controls, ratifies, participates in, and is

the moving force behind the infringing activity of 1-800-801-PAIN described herein. 411-PAIN and its Famous Trademarks 7. 1-800-411-PAIN Referral Service, LLC (411-PAIN), Plaintiffs exclusive

licensee, is a medical, chiropractic and lawyer referral service for accident victims.1 Specifically, 411-PAIN provides valuable assistance to victims of motor vehicle, slip and fall, work-related, and recreational accidents seeking medical, chiropractic and therapeutic care and legal advice by referring them to doctors and other health care professionals, scheduling appointments, and referring victims seeking legal advice to local attorneys. 8. 411-PAIN advertises its referral services using television, radio, billboards and

other media throughout Florida and in various other states. 9. Accident victims seeking 411-PAINs services are directed to call its 1-800-411-

PAIN (1-800-411-7246) toll free number and to access its websites, 411pain.com and 1800411pain.com.

Based on the commonality of interests as a result of their exclusive license relationship, reference to 411-PAIN herein includes reference to Plaintiff.

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10.

Plaintiff is the owner of U.S. Trademark Registration No. 2,621,497 dated

September 17, 2002 for the incontestable trademark 411PAIN, which is attached hereto as Exhibit A. Plaintiff, itself and/or by and through its predecessor in interest and licensee, has used the 411PAIN mark exclusively in interstate commerce in U.S. classes 100 and 101 since at least as early as 1996 for, inter alia, advertising, providing medical information in the field of pain, and general health care services. 11. Plaintiff is also the owner of U.S. Trademark Registration No. 3,885,749 dated

December 7, 2010 for the trademark 1-800-411-PAIN, which is attached hereto as Exhibit B. Plaintiff, itself and/or by and through its predecessors and licensee, has used the 1-800-411PAIN mark exclusively in interstate commerce in U.S. classes 100, 101 and 102 since at least as early as 1996 for numerous health care related services including, inter alia: a) placing advertisements for those in the field of medical personal injury; b) providing attorney referrals to those who are injured in vehicular, slip and fall, work-related and recreational accidents; and c) providing medical, health care and therapeutic services, including physical therapy and rehabilitation, pain management, treatment for orthopedic injuries, etc. The 411PAIN and 1800-411-PAIN trademarks are collectively referred to herein as the 411-PAIN Marks. 12. The 411-PAIN Marks are strong, inherently distinctive trademarks because they

require an effort of imagination by consumers in order for the marks to relate to advertising agency services, health care services, medical information services and general accident recovery information services. 13. Since at least as early as, respectively, 1998 and 1999, Plaintiff, itself and/or

through its predecessors and licensees, has owned and used exclusively in interstate commerce

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the domain names 411PAIN.com and 1800411PAIN.com (collectively, the 411-PAIN Domains). The home page of 411-PAINs website is attached hereto as Exhibit C. 14. Since its first use, 411-PAIN has spent millions of dollars advertising and

promoting the 411-PAIN Marks, Domains and Toll Free Number on, inter alia, television, radio and billboards throughout Florida and throughout the United States. 15. For example, the 411-PAIN Marks appear ubiquitously on hundreds of billboards

throughout Florida and the United States and the 411-PAIN Marks, Domains and Toll Free Number have become extremely well-known and famous. 16. Because of this extensive advertising and the substantial amount of referrals that

have resulted over the course of at least the last decade, the 411-PAIN Marks, Domains and Toll Free Number have become associated exclusively with 411-PAIN as the source of high quality, reputable medical, chiropractic and lawyer referral services and the substantial goodwill associated therewith. 17. 411-PAIN has successfully created a conscious connection in the public mind

between its Marks and its services and the public actually identifies the 411-PAIN Marks exclusively with 411-PAINs services. 18. In light of their fame and distinctiveness, the 411-PAIN Marks, Domains and Toll

Free Number have acquired substantial, if not incalculable, value to 411-PAIN. 19. Unfortunately, 411-PAINs fame has also created a market for copycats and

trademark infringers like Defendants, who have attempted to unlawfully profit off of 411PAINs success.

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Defendants Infringing Activity 20. Defendants, individually and/or collectively, advertise and promote their

chiropractic clinics and chiropractic, medical and attorney legal referral services using the designation 1-800-801-PAIN (the Infringing Designation). 21. Specifically, in May 2010, Defendants registered, and now maintain, the domain

name 800801PAIN.com, which they have since linked to 800801PAINFL.com and 1800801pain.blogspot.com (collectively, the Infringing Domains), through which they advertise and promote lawyer & doctor referrals. representative pages from Defendants various websites. 22. Defendants also maintain a Facebook page advertising and marketing their See Exhibit D hereto, which are

Infringing Designation and Infringing Domains. See Exhibit E hereto. 23. Defendants website is totally misleading; although touted as A FREE Resource

Site!, Defendants are plainly advertising and promoting their referral services, including a banner stating, 1-800-801-Pain has experienced Doctors and Chiropractors on staff to help with personal injuries such as car accidents & slip and fall accidents. We are also available to help with your legal fight. See Exhibit D. 24. Defendants advertising and marketing materials direct accident victims to their 1-

800-801-PAIN (1-800-801-7246) toll free number (Infringing Toll-Free Number) and to their websites, which are linked to the Infringing Domains. 25. Defendants first used the Infringing Designation, Infringing Domains and

Infringing Toll-Free Number at least 14 years after Plaintiffs first use of its famous trademarks. 26. Defendants use of the Infringing Designation, Infringing Domains and Infringing

Toll-Free Number to advertise, market and promote the identical or nearly identical services as

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those being provided under the 411-PAIN Marks, Domains and Toll Free Number is likely to cause confusion, or to cause mistake, or to deceive consumers, and to dilute the distinctiveness of Plaintiffs famous marks. 27. In particular, Defendants Infringing Designation, 1-800-801-PAIN, is

confusingly similar and, indeed, visually nearly identical, to Plaintiffs 1-800-411-PAIN Mark, 12 of 14 characters having been misappropriated. 28. The Infringing Designation also sounds confusingly similar to the 411-PAIN

Marks, especially where Defendants answer their Infringing Toll-Free Number and otherwise abbreviate themselves as 801PAIN. 29. Because of the close similarity, if a consumer saw Defendants Infringing

Designation in a television commercial, or, worse still, heard it in a radio commercial, the consumer would believe that the Infringing Designation emanates from the same source as 411PAIN. 30. Adding to the likelihood of confusion, Defendants appear to offer identical, or

nearly identical, services to those provided by 411-PAIN, and also advertise, market and promote their services through the same channels of trade and in the same geographic markets as 411PAIN. 31. Indeed, Defendants, who are attempting to duplicate 411-PAINs successful

business model, operate numerous clinics throughout Florida, including Miami Pain & Rehab, Inc., Ocala Pain & Rehab, Inc., Florida Pain & Rehab, Inc., Leesburg Pain & Rehab, Inc., and Delaney Health Center, all of which are being used to further Defendants infringing enterprise and to mislead the public into believing that Defendants are affiliated with 411-PAIN.

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32.

Defendants adopted, and are using, the Infringing Designation, Infringing

Domains and Infringing Toll Free Number in bad faith and with a willful and deliberate attempt to infringe. The 411-PAIN Marks have been in longstanding use in Florida and elsewhere since at least as early as 1996, and, as stated above they have, for many years, appeared ubiquitously on billboards and in other advertising media throughout Florida and the United States such that Defendants unquestionably were well aware of, and are attempting to unfairly capitalize from, the fame, goodwill and reputation associated with 411-PAIN. 33. Defendants have further attempted to mimic 411-PAIN by copying the red and

blue color pattern of 411-PAINs website and the distinctive, bold, stylized font of the word PAIN, and by reproducing their confusingly similar Infringing Toll-Free Number, 1-800-8017246, throughout their Infringing Domains. See Exhibit D. 34. On or about January 6, 2012, Plaintiff demanded that Defendants cease and desist

from their unlawful activities; however, Defendants ignored Plaintiffs demands, further evincing their willful and deliberate intent to infringe. See Letter attached hereto as Exhibit F. 35. Defendants unlawful infringement and dilution of 411-PAINs famous marks has

caused, and will continue to cause, substantial damages, including irreparable harm to 411PAINs reputation and goodwill for which there is no adequate remedy at law. 36. 37. Plaintiff has agreed to pay its attorneys a reasonable fee to prosecute this action. All conditions precedent to the bringing of this action have either been satisfied or

have been waived by Defendants.

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COUNT I Federal Trademark Infringement (15 U.S.C. 1114) Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 38. This is an action for trademark infringement of the 411-PAIN Marks under

Section 32 of the Lanham Act, 15 U.S.C. 1114 in connection with Defendants unlawful use of the Infringing Designation, Infringing Domains and Infringing Toll Free Number. 39. Defendants, without Plaintiffs consent, are using in commerce a reproduction,

copy, or colorable imitation of the 411-PAIN Marks in connection with the sale, offering for sale, distribution, and advertising of services on or in connection with, which such use is likely to cause confusion, or to cause mistake, or to deceive. 40. Defendants, without Plaintiffs consent, are reproducing, copying or colorably

imitating the 411-PAIN Marks and applying such reproduction, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. 41. As a result of Defendants misconduct, Plaintiff has been damaged.

COUNT II False Designation of Origin (15 U.S.C. 1125(a)) Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 42. This is an action for false designation of origin under Section 43 of the Lanham

Act, 15 U.S.C. 1125(a) in connection with Defendants unlawful use of the Infringing Designation, Infringing Domains and Infringing Toll Free Number.

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43.

Defendants, on or in connection with their services, use in commerce a word,

term, name, or symbol, or a combination thereof, or a false designation of origin which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with 411-PAIN, or as to the origin, sponsorship, or approval of Defendants services or commercial activities by 411-PAIN. 44. As a result of Defendants misconduct, Plaintiff has been damaged.

COUNT III Federal Dilution (15 U.S.C. 1125(c)) Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 45. This is an action for federal dilution of the 411-PAIN Marks under Section 43 of

the Lanham Act, 15 U.S.C. 1125(c), in connection with Defendants unlawful use of the Infringing Designation, Infringing Domains and Infringing Toll Free Number. 46. distinction. 47. At a time after the 411-PAIN Marks had become famous, Defendants commenced The 411-PAIN Marks are famous and distinctive, inherently and through acquired

use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of 411-PAINs Marks. 48. As a result of Defendants misconduct, Plaintiff has been damaged.

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COUNT IV Federal Cybersquatting (15 U.S.C. 1125(d)) Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 49. This is an action for cybersquatting under Section 43 of the Lanham Act, 15

U.S.C. 1125(d), in connection with Defendants unlawful use of the Infringing Domains. 50. Defendants had a bad faith intent to profit from the 411-PAIN Marks and

registered, trafficked in or used a domain name that is confusingly similar and dilutive to the 411-PAIN Marks. 51. 52. As a result of Defendants misconduct, Plaintiff has been damaged. Defendants Infringing Domains should be forfeited and cancelled or transferred

to Plaintiff under 15 U.S.C. 1125(d)(1)(C).

COUNT V Dilution under Florida Law (Fla. Stat. 495.151) Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 53. This is an action for dilution of the 411-PAIN Marks under Fla. Stat. 495.151 in

connection with Defendants unlawful use of the Infringing Designation, Infringing Domains and Infringing Toll Free Number. 54. 55. The 411-PAIN Marks are famous in Florida. At a time after the 411-PAIN Marks had become famous, Defendants

commercially used a mark or trade name that is likely to cause dilution of the distinctive quality of 411-PAINs Marks. 56. As a result of Defendants misconduct, Plaintiff has been damaged.

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COUNT VI Unfair Competition under Florida Law Plaintiff realleges paragraphs 1-37 as though set forth in full herein. 57. This is an action for unfair competition under Florida law in connection with

Defendants unlawful use of the Infringing Designation, Infringing Domains and Infringing Toll Free Number. 58. Defendants, on or in connection with their services, use in commerce a word,

term, name, or symbol, or a combination thereof, or a false designation of origin which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with 411-PAIN, or as to the origin, sponsorship, or approval of Defendants services or commercial activities by 411-PAIN. 59. As a result of Defendants misconduct, Plaintiff has been damaged.

PRAYER FOR RELIEF WHEREFORE, Plaintiff prays that the Court award the following relief: A. Temporarily and permanently enjoining Defendants, their officers, employees,

and agents, and all persons or entities in active concert or participation with any of them, from using, displaying, advertising or selling their services under, or otherwise doing business or holding themselves out to the public as, 1-800-801-PAIN, including all formative variations thereof, and any mark confusingly similar thereto, including 800801PAIN.com or 800801PAINFL.com; B. Temporarily and permanently enjoining Defendants from using the telephone

number 1-800-801-7246, including answering calls placed to this number or the inclusion of the number in materials available to the public;

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C.

Temporarily and permanently enjoining Defendants from engaging in any course

of conduct likely to cause confusion, deception or mistake, or injure Plaintiffs business reputation, or weaken the distinctive quality of Plaintiffs Marks; D. Order Defendants, in accordance with 15 U.S.C. 1118, to destroy all documents

and materials, including stationary, letterhead, business forms, business cards, statements, invoices, signage, brochures, invoices, pamphlets, and any other advertising and marketing materials bearing the Infringing Designation, Infringing Domains or Infringing Toll Free Number, or any formative variation thereof; E. Order Defendants to pay Plaintiff monetary relief under 15 U.S.C. 1117(a) in an

amount equal to Defendants profits plus damages sustained by Plaintiff, including treble damages, plus the cost of this action, including attorneys fees pursuant to 15 U.S.C. 1117(a); F. Find that this case is exceptional pursuant to 15 U.S.C. 1117(a) and 1125(c),

and treble any damages awarded to Plaintiff due to Defendants willful and intentional acts of trademark infringement, trademark dilution, and unfair competition; G. Award statutory damages under 15 U.S.C. 1117(d) in the amount of not less

than $1,000 and not more than $100,000 per domain name, as the court considers just; H. Order that the Infringing Domains be forfeited and cancelled or transferred to

Plaintiff under 15 U.S.C. 1125(d)(1)(C); and I. Such other relief as this Court deems is just and proper.

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Dated: March 12, 2012 Respectfully submitted, /s/Matthew S. Nelles Tara R. Epstein Florida Bar No. 72641 E-mail: tepstein@broadandcassel.com Matthew S. Nelles Florida Bar No.009245 E-mail: mnelles@broadandcassel.com BROAD AND CASSEL One Financial Plaza, Suite 2700 Fort Lauderdale, Florida 33394 Telephone: (954) 764-7060 Facsimile:(954) 761-8135
4842-3174-0174, v. 3

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