You are on page 1of 6

JS 44C/SD~JJDGE JONES

REV. 5/2010

CIVIL COVE1..o.

ov 5526

The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of initiating the civil docket sheet.

dI. 21 2010

PLAINTIFFS

DEFENDANTS

Nutri-Pet Research, Inc.,

HealthyPets Inc.,

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER Jeffrey Sonnabend, Sonnabendlaw, 600 Prospect Ave., Brooklyn, NY 11215-6012 718-832-8810

ATTORNEYS (IF KNOWN)

CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE) (DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Judge Previously Assigned

& Case No.

Has this or a similar case been previously filed in SDNY at any time?

If yes, was this case Vol.D Invol. 0 Dismissed. No 0 Yes 0 If yes, give date

(PLACE AN [x] IN ONE BOX ONL Y)

NATURE OF SUIT

FAIR LABOR STANDARDS ACT LABORlMGMT RELATIONS LABORlMGMT

REPORTING & DISCLOSURE ACT RAILWAY LABOR ACT [ ]870 TAXES (U.S. Plaintitf or

OTHER LABOR Defendant)

LITIGATION []871 IRS·THIRD PARTY

EMPL RET INC 26 USC 7609

SECURITY ACT

TORTS

FORFEITURE/PENALTY

ACTIONS UNDER STATUTES

BANKRUPTCY

[ ]422 APPEAL

28 USC 158

[ ]423 WITHDRAWAL 28 USC 157

PROPERTY RIGHTS

[ ]820 COPYRIGHTS ~QI2"I8IIT

840 TRADEMA:3>

SOCIAL SECURITY

[]861 HIA (139511)

[ ] 862 BLACK LUNG (923)

[ ]863 DIWC/DIWW (405(9)) [ ]864 SSID TITLE XVI

[ ]865 RSI (405(g))

FEDERAL TAX SUITS

OTHER STATUTES

[ ]400 STATE

REAPPORTIONMENT [ ]410 ANTITRUST

[ ]430 BANKS & BANKING [ ]450 COMMERCE

[ ]460 DEPORTATION

[ ]470 RACKETEER INFLU· ENCED & CORRUPT ORGANIZATION ACT (RICO)

[ ] 480 CONSUMER CREDIT []490 CABLE/SATELLITE TV [ ]810 SELECTIVE SERVICE [ ]850 SECURITIES!

COMMODITIES! EXCHANGE

[ ]875 CUSTOMER CHALLENGE

12 USC 3410

[ ]890 OTHER STATUTORY ACTIONS

[ ]891 AGRICULTURAL ACTS [ ] 892 ECONOMIC STABILIZATION ACT

[ ]893 ENVIRONMENTAL MATTERS

[ ]894 ENERGY ALLOCATION ACT

[ ] 895 FREEDOM OF INFORMATION ACT

[ ]900 APPEAL OF FEE DETERMINATION UNDER EQUAL ACCESS TO JUSTICE

[ ] 950 CONSTITUTIONALITY OF STATE STATUTES

PERSONAL INJURY

PERSONAL INJURY [ ]610

[ ]620 [ ] 362 PERSONAL INJURY·

MED MALPRACTICE [ ]625

[]365 PERSONAL INJURY

PRODUCT LIABILITY

[ ] 368 ASBESTOS PlERSONAL

INJURY PRODUCT [ ]630

LIABILITY [ ]640 [ ]650

PERSONAL PROPERTY [ ]660

AGRICULTURE OTHER FOOD & DRUG

DRUG RELATED SEIZURE OF PROPERTY

21 USC 881 LIQUOR LAWS RR & TRUCK AIRLINE REGS OCCUPATIONAL SAFETY/HEALTH OTHER

o CHECK IF THIS IS A CLASS ACTION UNDER F.R.C.P. 23

DO YOU CLAIM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.? IF SO, STATE:

DEMAND $. _

OTHER JUDGE DOCKET NUMBER. _

Check YES only if demand~/aint JURY DEMAND: [] YE~

NOTE: Please submit at the time of filing an explanation of why cases are deemed related.

CONTRACT

[ ]110 INSURANCE [ ]120 MARINE

[ ]130 MILLER ACT [ ]140 NEGOTIABLE

INSTRUMENT

[ ]150 RECOVERY OF OVERPAYMENT & ENFORCEMENT OF JUDGMENT

[ ]151 MEDICARE ACT

[ ]152 RECOVERY OF DEFAULTED STUDENT LOANS (EXCL VETERANS)

[ ]153 RECOVERY OF OVERPAYMENT OF VETERAN'S BENEFITS

[ ]160 STOCKHOLDERS SUITS [ ]190 OTHER CONTRACT

[ ]195 CONTRACT PRODUCT LIABILITY

[ ]196 FRANCHISE

[ ]310 AIRPLANE

[ ]315 AIRPLANE PRODUCT LIABILITY

[ ]320 ASSAULT, LIBEL & SLANDER

[ ] 330 FEDERAL EMPLOYERS' LIABILITY

[ ]340 MARINE

[ ] 345 MARINE PRODUCT LIABILITY

[]35O MOTOR VEHICLE

[ ]355 MOTOR VEHICLE PRODUCT LIABILITY [ ]360 OTHER PERSONAL INJURY

[ ] 370 OTHER FRAUD [ ]690

[ ] 371 TRUTH IN LENDING

[ ] 380 OTHER PERSONAL

PROPERTY DAMAGE LABOR [ ] 385 PROPERTY DAMAGE

PRODUCT LIABILITY []710

[ ]720 [ ]730

ACTIONS UNDER STATUTES

[ ]740 []790

CIVIL RIGHTS

PRISONER PETITIONS [ ]791

REAL PROPERTY

[]441 VOTING [ ]510 MOTIONS TO
[ ]210 LAND CONDEMNATION [ ]442 EMPLOYMENT VACATE SENTENCE IMMIGRATION
[ ] 220 FORECLOSURE [ ]443 HOUSING! 20 USC 2255
[ ]230 RENT LEASE & ACCOMMODATIONS [ ]530 HABEAS CORPUS [ ]462 NATURALIZATION
EJECTMENT [ ]444 WELFARE [ ]535 DEATH PENALTY APPLICATION
[ ] 240 TORTS TO LAND [ ] 445 AMERICANS WITH [ ]540 MANDAMUS & OTHER [ ]463 HABEAS CORPUS-
[ ] 245 TORT PRODUCT DISABILITIES· [ ]550 CIVIL RIGHTS ALIEN DETAINEE
LIABILITY EMPLOYMENT [ ]555 PRISON CONDITION [ J465 OTHER IMMIGRATION
[ ]290 ALL OTHER [ ]446 AMERICANS WITH ACTIONS
REAL PROPERTY DISABILITIES -OTHER
[ ]440 OTHER CIVIL RIGHTS Check if demanded in complaint:

ORIGIN

o 2a. Remoyed from 0 3 Remanded from 0 4 Reinstated or

State Court Appellate Court Reopened

o 2b.Remoyed from

o 5 Transferred from 0 6 Multidistrict

(Specify District) Litigation

o 7 Appeal to District Judge from Magistrate Judge Judgment

State Court AND

at least one party is pro se.

(PLACE AN X IN ONE BOX ONL Y)

o 1 u.s. PLAINTIFF 02 u.s. DEFENDANT

IF DIVERSITY, INDICA TE CITIZENSHIP BELOW. (28 USC 1322,1441)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

(Place an [X] in one box for Plaintiff and one box for Defendant)

PTF DEF PTF DEF PTF DEF
CITIZEN OF THIS STATE [ J1 [ J1 CITIZEN OR SUBJECT OF A [ J 3 [ j3 INCORPORATED and PRINCIPAL PLACE [ J 5 [ ]5
FOREIGN COUNTRY OF BUSINESS IN ANOTHER STATE
CITIZEN OF ANOTHER STATE [ J 2 [ J 2 INCORPORATED ~ PRINCIPAL PLACE [ ]4 [ ]4 FOREIGN NATION [ J 6 [ J 6
OF BUSINESS IN THIS STATE PLAINTIFF(S) ADDRESS(ES) AND COUNTY(lES)

HealthyPets Inc., 43450 Mintwood Street, Fremont, CA 94538

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)

Nutri-Pet Research, lnc., 227 Highway 33 East, Manalapan, NJ 07726

DEFENDANT(S) ADDRESS UNKNOWN

REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE RESIDENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:

Check one: THIS ACTION SHOULD BE ASSIGNED TO: D WHITE PLAINS (DO NOT check either box if this a PRISONER PETITION.)

DATE 7/20/2010 ADMITTED TO PRACTICE IN THIS DISTRICT

[ I NO 5 1997

kl YES (DATE ADMITTED Mo. Yr. )

RECEIPT # Attorney Bar Code #

Magistrate Judge is to be designated by the Cler~1M <1QW;!._

V, JUVOB COlT

Magistrate Judge is so DeSignated.

Ruby J. Krajick, Clerk of Court by

Deputy Clerk, DATED

UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)

J0DGE JONES

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

-------------------------------------------------- x 11 @ (~V

HealthyPets Inc.,

!~,:

'. ;c:'1

Plaintiff,

CIVIL COMPLAlNT

v.

-CV-

Nutri-Pet Research, Inc.,

Defendant.

--------------------------------------------------------x

cz.

The Parties

, --

1--

" -".

1.

r'0 Plaintiff is a corporation organized and existing under the laws of the Sbite or

',':, ,', 1 ~-.J1CJ

') California having its principal place of business at 43450 Mintwood Street, Fremont, C-A 9~8 2-~

N :-;(J Defendant Nutri-Pet Research, Inc., ("Nutri-Pet") is, upon information and bffief, --;

2.

a company organized and existing under the laws of the State of New Jersey having a principal

place of business at 227 Highway 33 East, Manalapan, NJ 07726

Nature of the Action

3. This action is brought under the Declaratory Judgment Act, 28 U.S.C. §§ 2201

and 2202.

4. This action is further brought under the federal Lanham Act, 15 U.S.c. § 1051 et

seq.

5. This action is brought for a declaration that Plaintiff's registration and use of the

domain <nupro.com> does not violate any enforceable rights of Defendant.

Jurisdiction and Venue

6. Jurisdiction is proper under 28 U.S.C. §§ 1331 and 1338.

7. Jurisdiction is further proper by virtue of Defendant's express submission to the jurisdiction of the Court, as detailed further below.

8. Venue is proper under 28 U.S.C. § 1391(b)(2) and 28 U.S.C. § 1391(c).

Facts

9. Defendant claims trademark rights to the word "nupro" for veterinary nutritional

products.

10. Plaintiff registered the domain with Register.Com (the "Registrar"), which is

located in this judicial district.

11. Plaintiff registered and used the domain <nupro.com> (the "Domain") for the

purpose of promoting genuine Nutri-Pet products. Plaintiff is an authorized reseller/retailer of the Nutri-Pet products it sells.

12. On or about May 4,2010, Defendant filed a proceeding, Case No. D201O-0699, in

accordance with the Uniform Domain-Name Dispute-Resolution Policy (the "UDRP") to force the transfer of ownership of the Domain from Plaintiff to Defendant.

13. In connection with the filing of the UDRP complaint, Defendant acquiesced to

jurisdiction of this Court.

14. On or about July 13,2010, the arbitration panel in the UDRP proceeding issued its

ruling in favor of Defendant.

2

15. In accordance with the UDRP policy and rules, the Registrar notified Plaintiff that

Plaintiff had until July 28, 2010 to initiate a federal action in order to prevent the transfer of the

Domain.

16. Plaintiff's registration and use of the Domain does not violate federal trademark

law, and is wholly permissible under both federal and the various states' trademark laws.

17. The UDRP panel's decision was incorrect and contrary to law.

First Count Declaratory Judgment

18. Plaintiff hereby incorporates the allegations of paragraph 1 through 17 as if stated

fully herein.

19. Plaintiff's registration and use of the Domain is lawful, and the UDRP decision is

contrary to law.

20. Plaintiff is and will be irreparably harmed if the Domain is transferred to

Defendant.

Prayer for Relief

WHEREFORE, Plaintiff respectfully requests that the Court enter judgment in favor Plaintiff:

a. Declaring that Plaintiffs registration and use of the Domain is lawful;

b. Declaring that the UDRP decision is contrary to law; and

c. Ordering Registrar to permanently refrain from transferring the Domain to

Defendant except as may be directed by Plaintiff; and

3

d. Providing all other equitable relief that the Court deems just and proper.

Dated: July 20, 2010

Respectfully submitted, HealthyPets Inc.

by h] a «c->

L---7(_-~_/

Jeffrey onnabend (JSI243) SonnabendLaw

600 Prospect Avenue

Brooklyn, NY 11215-6012 718-832-8810 JSonnabend@SonnabendLaw.com

4