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Complaint West Virginia Univ v Mivaman DBA Fastees

Complaint West Virginia Univ v Mivaman DBA Fastees

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Case 1:12-cv-00005-FPS Document 2

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF WEST VIRGINIA

WEST VIRGINIA UNIVERSITY BOARD OF GOVERNORS on behalf of WEST VIRGINIA UNIVERSITY 1018 Kanawha Boulevard East Suite 700 Charleston, WV 25301

) ) ) ) ) ) ) ) Plaintiff, ) ) v. ) ) MIVAMAN, LLC ) d/b/a www.fastees.com ) 230 Beechurst Avenue ) Morgantown, WV 26505 ) ) KEVIN W. FORD ) 230 Beechurst Avenue ) Morgantown, WV 26505 ) ) and ) ) JFORD, INC. ) th 202 50 Street ) Charleston, WV 25304 ) ) Defendants. ) __________________________________________)

Civil Action No. _________

COMPLAINT The West Virginia University Board of Governors (“WVU BOG” or “Plaintiff”) states the following for its six count Complaint against MivaMan, LLC, Kevin W. Ford, and JFord, Inc. (each a “Defendant” and in any combination of two or more referred to as the “Defendants”).

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SUBSTANCE OF THE ACTION 1. This is an action for trademark infringement, trademark dilution, cyberpiracy, and

unfair competition, arising under the Federal Trademark Act of 1946, 15 U.S.C. § 1051 et seq. (“Lanham Act”), the trademark and anti-dilution laws of West Virginia, W. Va. Code § 47-2-1 et seq., the unfair competition laws of West Virginia, and other applicable common law. 2. Defendant MivaMan, LLC (“MivaMan”) is a clothing manufacturer and/or

retailer that sells principally to the public and operates a website under the domain name www.fastees.com. Defendant Kevin W. Ford (“Ford”) is the organizer and managing member of MivaMan, and, on information and belief, was intimately involved in the conduct described in this Complaint. Defendant JFord, Inc. (“JFord”) facilitates and/or processes sales of MivaMan’s and Ford’s merchandise. Defendants sold and are selling merchandise that incorporates word marks, color schemes and other source-identifying indicia associated with WVU BOG. The tshirt designs for which Plaintiff asserts claims by this civil action are identified in Exhibit 1 and in the body of this Complaint. Defendants’ t-shirt designs are calculated to create the

misimpression that Defendants’ merchandise is licensed or sponsored by or otherwise affiliated with WVU BOG. Plaintiff brings this action to prevent Defendants from using Plaintiff's marks, from continuing to pass off their merchandise as that of Plaintiff, and from trading on the enormous goodwill associated with and earned through the efforts of WVU BOG. Defendants’ misconduct is likely to cause confusion and to deceive consumers and the public and will continue to do so absent relief from this Court. JURISDICTION AND VENUE 3. This Court has subject matter jurisdiction under section 39 of the Lanham Act, 15 This Court has jurisdiction over

U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338.

Plaintiff’s related state and common law claims pursuant to 28 U.S.C. §§ 1338 and 1367. 2

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4.

This Court has personal jurisdiction over Defendants because Defendants are

citizens of or reside in the State of West Virginia and they conducted and continue to conduct business in the State of West Virginia by selling the merchandise at issue in this action within this District. 5. This District is a proper venue under 28 U.S.C. § 1391(b) because (1) two

Defendants reside and/or have a principal office address located in this District and (2) a substantial part of the events giving rise to Plaintiff’s claims occurred in this District. THE PARTIES 6. Plaintiff, created by the legislature of West Virginia pursuant to W.Va. Code §

18B-2A-1 et seq., is the governing body of West Virginia University (the “University”) with the mission of general supervision and control over the academic and business affairs thereof. 7. 8. The University’s principal place of business is in Morgantown, West Virginia. Defendant MivaMan, LLC (“MivaMan”) is a West Virginia limited liability

company with its principal place of business located at 230 Beechurst Avenue, Morgantown, WV 26505. 9. On information and belief, Defendant JFord, Inc. (“JFord”) is a corporation of

unknown state origin with its principal place of business located at 202 50th Street, Charleston, WV 25304. JFord has not registered to do business in the State of West Virginia with the West Virginia Secretary of State. 10. On information and belief, Defendant Kevin W. Ford (“Ford”) is an individual of

the full age and majority residing in or around Morgantown, West Virginia, and at all times relevant to this Complaint, is and was a principal and managing member of MivaMan. Further on information and belief, Ford directed, controlled, participated in, engaged in, performed,

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authorized, approved, ratified, actively and knowingly caused, and was the moving, active, conscious force behind the acts of MivaMan and JFord forming the basis of this Complaint. FACTS COMMON TO ALL CLAIMS FOR RELIEF 11. WVU BOG owns a family of marks that incorporate the terms “West Virginia,”

“WVU,” “Mountaineers,” and “WV” and has obtained the following federal trademark1 registrations, among others: Trademark WEST VIRGINIA WVU MOUNTAINEERS FLYING WV (stylized) MOUNTAINEER (design mark) Reg. No. 2,611,149 2,599,930 2,613,676 1,321,952 1,321,767 Reg. Date Aug. 27, 2002 July 30, 2002 Sept. 3, 2002 Feb. 26, 1985 Feb. 26, 1985

On-line records from the U.S. Patent and Trademark Office for these federal registrations are attached hereto as Exhibit 2. 12. WVU BOG also owns common law trademark rights to GOLD RUSH, a phrase

used extensively by the University at sporting events to reference or encourage its fan base to wear gold-colored apparel in support of the University’s athletic teams. 13. WVU BOG uses a gold and blue color scheme in interstate commerce in

connection with its educational and entertainment services, along with its licensed apparel and other merchandise, including the uniforms of its athletic teams, souvenirs and memorabilia. The gold and blue color scheme is used prominently and repeatedly in connection with WVU BOG’s athletic teams and its many other organizations, activities and services, as well as with goods sold by WVU BOG or its licensees. WVU BOG uses the gold and blue color scheme in connection with the WEST VIRGINIA mark, the University’s name, as an element of its logos and design marks, and in numerous additional contexts.
1

WVU BOG has extensively and

For purposes of this Complaint, trademarks and service marks owned by the WVU BOG are referred to herein collectively as "trademarks".
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continuously used and promoted its gold and blue color scheme before the activities of Defendants outlined in this Complaint. 14. WVU BOG’s gold and blue color scheme has achieved significant fame and

public recognition, especially when appearing in connection with athletic teams and events and related apparel items. Because of its widespread use in connection with WVU BOG’s activities and licensed merchandise, the gold and blue color scheme has tremendous power as a source identifier of WVU BOG, particularly when used in connection with other indicia identifying or suggesting West Virginia University, such as references to athletic events in which a West Virginia University team is participating, the history of West Virginia University’s athletic successes, or the geographic area in which West Virginia University is located. DEFENDANTS’ UNLAWFUL ACTIVITIES 15. WVU BOG owns registered and unregistered trademarks, including word marks,

logos, color schemes, and other source-identifying indicia (collectively, the “Plaintiff’s Marks”). Merchandise placed in interstate commerce and sold at Defendants’ 230 Beechurst Avenue, Morgantown, WV 26505 store, which markets to and directs its sales at nearby West Virginia University students and alumni, and via the internet by Defendants infringes Plaintiff’s Marks and otherwise unfairly competes with products properly licensed by Plaintiff. Defendants’ merchandise incorporates Plaintiff’s Marks or confusingly similar imitations thereof. Defendants’ merchandise also combines Plaintiff’s Marks with references to popular University phrases known to the general public and references to the geographic area in which the University is located or associated.

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16.

Defendants sold and continue to sell and offer for sale t-shirts depicted below:

This t-shirt design, identified by Defendants as Product Code: collegeshwag-1, is crafted to conjure and trade upon the University’s identity by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between WEST and VIRGINIA. 17. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: 1024, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with BY GOD interposed between WEST and VIRGINIA.

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18. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: westbygodvirginianavy, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with BY GOD interposed between WEST and VIRGINIA. 19. Defendants also sold and continue to sell or offer to sell t-shirts depicted below:

This t-shirt, identified by Defendants as Product Code: 1031, is a transparent and blatant effort to trade on the identity of the University by incorporating the following: (a) the University’s gold and blue color scheme; and (b) the phrase "Let's Go! Drink Some bEERS!", clearly referencing WVU BOG's MOUNTAINEERS mark and the popular cheer often recited at University sporting events, "Let's Go! Mountaineers!".

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20.

Defendants also sold and continue to sell or offer to sell t-shirts depicted below:

This t-shirt, which also is identified by Defendants as Product Code: 1031, is a transparent and blatant effort to trade on the identity of the University by incorporating the following: (a) the University's gold and blue color scheme; and (b) the phrase "Let's Go! Drink some beers!", clearly referencing WVU BOG's MOUNTAINEERS mark and the popular cheer often recited at University sporting events, "Let's Go! Mountaineers!". 21. Defendants also sold and continue to sell or offer to sell t-shirts depicted below:

This t-shirt, which also is identified by Defendants as Product Code: letsgodrinksomebeersweat, is a transparent and blatant effort to trade on the identity of the University by incorporating the following: (a) the University's gold and blue color scheme; and (b) the phrase "Let's Go! Drink Some beers!", clearly referencing WVU BOG's MOUNTAINEERS mark and the popular cheer often recited at University sporting events, "Let's Go! Mountaineers!".

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22.

Defendants also sold and continue to sell or offer to sell t-shirts depicted below:

This t-shirt, identified by Defendants as Product Code: letsgodrinksomebeersltblue, is a transparent and blatant effort to trade on the identity of the University by incorporating the phrase "Let's Go! Drink Some beers!", clearly referencing WVU BOG's MOUNTAINEERS mark and the popular cheer often recited at University sporting events, "Let's Go! Mountaineers!". 23. Defendants also sold and continue to sell or offer to sell coolers depicted below:

This cooler, which also is identified by Defendants as Product Code: pbcooler, is a transparent and blatant effort to trade on the identity of the University by incorporating the following: (a) the University's gold and blue color scheme; and (b) the phrase "Let's Go! Drink Some bEERS!", clearly referencing WVU BOG's MOUNTAINEERS mark and the popular cheer often recited at University sporting events, "Let's Go! Mountaineers!".

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24. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: 1037, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with an image of the State of West Virginia and a hand raising the middle finger interposed between WEST and VIRGINIA. 25. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: 1038, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with an image of the State of West Virginia and a hand raising the middle finger interposed between WEST and VIRGINIA.

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26. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: doitinthemud, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark. 27. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: 99-1, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark.

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28. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: dont-curse-1, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with F##### interposed between WEST and VIRGINIA. 29. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: wfv1-1, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between WEST and VIRGINIA.

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30. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: 1038, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) a clear reference to WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between BEST and VIRGINIA. 31. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: bestfuckinvirginianavy, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) a clear reference to WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between BEST and VIRGINIA.

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32. below:

Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: bestfuckinvirginiagold, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) a clear reference to WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between BEST and VIRGINIA. 33. below: Defendants also sold and continue to sell and offer for sale t-shirts depicted

This t-shirt, identified by Defendants as Product Code: collegeshwag-3, is calculated to conjure and trade upon the identity of the University by including the following: (a) the gold and blue color scheme of the University; and (b) WVU BOG's GOLD RUSH mark, with FUCKIN interposed between GOLD and RUSH. 34. Defendants also sold or offered for sale t-shirts bearing the phrase "WEST BY

GOD VIRGINIA", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Code: 1023, is designed to trade upon the identity of the University by including: (a) the

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gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with BY GOD interposed between WEST and VIRGINIA. 35. Defendants also sold or offered for sale t-shirts bearing the phrase "BLOOD

SWEAT AND EERS", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Code: 1030, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) the phrase "BLOOD SWEAT AND EERS", clearly referencing WVU BOG's MOUNTAINEERS mark. 36. Defendants also sold or offered for sale t-shirts bearing the phrase "I ONLY

FLASH WEST VIRGINIA FANS", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Codes: 1025 and 1032, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark. 37. Defendants also sold or offered for sale t-shirts bearing the phrase "I ONLY

SLEEP WITH WEST VIRGINIA FANS", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Code: 1034, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark. 38. Defendants also sold or offered for sale t-shirts bearing the image of a

mountaineer with the phrase, "The Incredible EERS", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Code: 1039, is designed to trade upon the identity of the University by including: (a) the University’s gold and blue color scheme; (b) an image of the Mountaineer mascot of the University which is an imitation of WVU BOG's registered

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mountaineer mascot design mark; and (c) the phrase "The Incredible EERS", clearly referencing WVU BOG's MOUNTAINEERS mark. 39. Defendants also sell or offer for sale t-shirts bearing the phrase "VERY

WASTED", as depicted in Exhibit 1. This t-shirt, formerly identified by Defendants as Product Code: 1040, is designed to trade upon the identity of the University by including: (a) the gold and blue color scheme of the University; and (b) an imitation of WVU BOG's FLYING WV mark. 40. Defendants also sold or offered for sale temporary tattoos bearing the phrase

"West Fuckin Virginia." This temporary tattoo design is crafted to conjure and trade upon the University’s identity by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's WEST VIRGINIA mark, with FUCKIN interposed between WEST and VIRGINIA. 41. Defendants also sold or offered for sale temporary tattoos bearing the phrase

"Gold Fuckin Rush." This temporary tattoo design is crafted to conjure and trade upon the University’s identity by including: (a) the gold and blue color scheme of the University; and (b) WVU BOG's GOLD RUSH mark, with FUCKIN interposed between GOLD and RUSH. 42. All of Defendants' foregoing infringing products as described or identified in

paragraphs 16 through 41 or in Exhibit 1 or substantially similar infringing products are at issue in this case ("Defendants' Infringing Products"). 43. Defendants' Infringing Products are not manufactured by Plaintiff, nor are they

licensed, authorized, sponsored, endorsed or approved by Plaintiff.

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44.

Plaintiff's Marks have been used extensively and continuously over a lengthy

period of time by Plaintiff and authorized licensees before Defendants manufactured, offered for sale, or sold Defendants' Infringing Products. 45. Defendants’ Infringing Products are similar to and compete with goods sold or Defendants sell

licensed by Plaintiff and are sold through the same channels of trade.

Defendants' Infringing Products in or near Morgantown, West Virginia, and Defendants’ Infringing Products appear directly alongside merchandise licensed and authorized by Plaintiff. Defendants, through both their Morgantown store and via the internet, sell their Infringing Products in interstate commerce. Defendants do everything in their power to ensure that “hot market” conditions will exacerbate and increase the confusion caused by their t-shirt designs. 46. Defendants’ Infringing Products are likely to deceive, confuse and mislead

prospective and actual purchasers into believing that Defendants’ Infringing Products are or were produced or authorized by or in some manner associated with Plaintiff. The likelihood of confusion, mistake and deception engendered by Defendants’ Infringing Products is causing actual and irreparable harm to Plaintiff and its reputation, as evidenced by, among other things, national press coverage involving the offensive nature of Defendants' Infringing Products. 47. Prospective and actual purchasers viewing Defendants’ Infringing Products and

perceiving a defect, lack of quality, or any impropriety are likely to mistakenly attribute them to Plaintiff and/or its lawful licensees. By causing such a likelihood of confusion, mistake and deception, Defendants are inflicting irreparable harm to Plaintiff’s goodwill and reputation. 48. Defendants’ merchandise is calculated to trade on the immense goodwill and

commercial magnetism of Plaintiff’s reputation and identity. Defendants are attempting to pass off their merchandise as that of Plaintiff.

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49.

Defendants willfully, intentionally and maliciously adopted imitations with other

material likely to cause and enhance confusion, and have otherwise deliberately attempted to pass off their products as those provided or licensed by Plaintiff. COUNT I FEDERAL TRADEMARK INFRINGEMENT 50. 51. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-49. Defendants’ use of Plaintiff's Marks and confusingly similar imitations thereof is

likely to cause confusion, deception, and mistake by creating the false and misleading impression that Defendants’ goods are manufactured or distributed by Plaintiff, or affiliated, connected, or associated with it, or have its sponsorship, endorsement, or approval. 52. Defendants have used Plaintiff's Marks and marks confusingly similar thereto in

violation of 15 U.S.C. § 1114, and Defendants’ 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 the Plaintiff’s goodwill and reputation as symbolized by its federally registered marks, for which Plaintiff has no adequate remedy at law. 53. Defendants’ actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with Plaintiff’s Marks to Plaintiff’s great and irreparable injury. 54. Defendants have caused and are likely to continue causing substantial injury to

the public and to Plaintiff, and Plaintiff is entitled to injunctive relief and impoundment and destruction of Defendants’ infringing products and to recover actual damages, Defendants’ profits, enhanced profits and damages, costs and reasonable attorneys’ fees under 15 U.S.C. §§ 1114, 1116, 1117, 1118.

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COUNT II FEDERAL UNFAIR COMPETITION 55. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-54

as if fully set forth here. 56. Defendants’ merchandise has caused and is likely to cause confusion, deception,

and mistake by creating the false and misleading impression that Defendants’ goods are manufactured or distributed by Plaintiff, or affiliated, connected, or associated with it, or have its sponsorship, endorsement, or approval. 57. Defendants have made false representations, false descriptions, and false

designations of origin in violation of 15 U.S.C. § 1125(a), and Defendants’ 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 Plaintiff’s goodwill and reputation, for which Plaintiff has no adequate remedy at law. 58. Defendants’ actions demonstrate an intentional, willful, and malicious intent to

trade on the goodwill associated with the Plaintiff to the great and irreparable injury of Plaintiff. 59. Defendants’ conduct has caused, and is likely to continue causing, substantial

injury to the public and to Plaintiff, and Plaintiff is entitled to injunctive relief and impoundment and destruction of Defendants’ infringing products and to recover actual damages, profits, enhanced profits and damages, costs and reasonable attorneys’ fees under 15 U.S.C. § 1125(a), 1116 and 1117. COUNT III COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 60. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-59

as if fully set forth here.

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61.

Defendants’ acts referenced hereinabove constitute common law trademark

infringement and unfair competition, and have created and will continue to create a likelihood of confusion, to the irreparable injury of Plaintiff unless restrained by this Court. Plaintiff has no adequate remedy at law for this injury. 62. Defendants acted with full knowledge of Plaintiff, Plaintiff's Marks, and

Plaintiff’s statutory and common law rights therein and without regard to the likelihood of confusion of the public created by Defendants’ activities. 63. Defendants’ actions demonstrate an intentional, willful, and malicious intent to

trade on the good will associated with the Plaintiff, and to pass off their goods as those of Plaintiff, to the great and irreparable injury of Plaintiff. 64. As an initial matter, Plaintiff is entitled to immediate and permanent injunctive

relief for the irreparable harm caused by Defendants. As a result of Defendants’ acts, Plaintiff has been damaged in an amount to be determined at trial. COUNT IV FEDERAL TRADEMARK DILUTION 65. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-64

as if fully set forth here. 66. Plaintiff’s Marks are distinctive, strong, and famous and became so before

Defendants’ activities described in this Complaint. 67. Defendants are making commercial use of Plaintiff’s Marks, and Defendants’

activities have caused and are causing dilution of the distinctive quality of Plaintiff’s Marks. Defendants’ conduct erodes the public’s exclusive identification of these marks with Plaintiff and tarnishes and degrades the positive associations and prestigious connotations of Plaintiff's Marks.

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68.

Defendants willfully intended to trade on Plaintiff’s reputation and to cause

dilution of Plaintiff’s Marks. 69. Plaintiff therefore is entitled to injunctive relief and impoundment and destruction

of Defendants’ infringing products and to recover actual damages, profits, enhanced profits and damages, costs, and reasonable attorneys’ fees under 15 U.S.C. § 1125(c), 1116 and 1117. COUNT V STATE TRADEMARK DILUTION 70. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-69

as if fully set forth here. 71. Plaintiff’s Marks are distinctive, strong, and famous and became so before

Defendants’ activities described in this Complaint. 72. Defendants’ unauthorized use in commerce of Plaintiff’s Marks or imitations

thereof dilutes and is likely to dilute the distinctiveness of Plaintiff’s Marks and to injure Plaintiff’s reputation. Defendants’ conduct erodes the public’s exclusive identification of

Plaintiff's Marks with Plaintiff and tarnishes and degrades the positive associations and prestigious connotations of Plaintiff's Marks. 73. Defendants are causing and will continue to cause irreparable injury to Plaintiff’s

business reputation and the good will represented by Plaintiff’s Marks. Defendants’ conduct violates W. Va. Code § 47-2-1 et seq. and, in particular, W. Va. Code § 47-2-13, and the antidilution laws of the several states. 74. Plaintiff therefore is entitled to injunctive relief and impoundment and destruction

of Defendants’ infringing products and to recover actual damages, profits, enhanced profits and damages, costs, and reasonable attorneys’ fees under W. Va. Code § 47-2-14.

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COUNT VI CYBERPIRACY – 15 U.S.C. § 1125(d) 75. Plaintiff repeats and incorporates by reference the allegations in paragraphs 1-74

as if fully set forth here. 76. In April 2010, Defendants registered, with MISK.com,

www.westfuckinvirginia.com and www.westfuckingvirginia.com, two domain names that include the Plaintiff’s WEST VIRGINIA mark. 77. Shortly after registering the two domain names, Defendants began using the

www.westfuckinvirginia.com and www.westfuckingvirginia.com domain names for commercial purposes. 78. Defendants had a bad faith intent to profit using the Plaintiff’s Marks as

evidenced by, among other things, having the domain names resolve to a common webpage with prominent links to www.fastees.com, the webpage which Defendants use to sell and offer for sale Defendants’ Infringing Products. 79. Defendants’ actions complained of herein have injured and will continue to injure

WVU BOG. WVU BOG has sustained, and will continue to sustain, substantial injuries, loss and damage to its business, reputation, and/or good will, entitling it to an award of damages, an injunction to prohibit such acts in the future, transfer of www.westfuckinvirginia.com and www.westfuckingvirginia.com domain names, and any other domain names registered by Defendants which use any of the Plaintiff’s Marks, from Defendants to WVU BOG, and attorneys’ fees and costs.

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WHEREFORE, Plaintiff prays that this Court: 1. Preliminarily and permanently enjoin Defendants and all agents, officers,

employees, representatives, successors, assigns, attorneys, and all other persons acting for, with, by, through, or under authority from Defendants, or in concert or participation with Defendants, from: a. using Plaintiff’s Marks or any other copy, reproduction, or colorable imitation or simulation of Plaintiff’s Marks on or in connection with Defendants’ apparel, or other goods or services, or the goods or services of any entity with which Mr. Kevin W. Ford is associated or affiliated; b. using any trademark, service mark, name, logo, design, color scheme, or source designation of any kind on or in connection with Defendants’ clothing or other goods or services, or the goods or services of any entity with which Mr. Kevin W. Ford is associated or affiliated, that is a copy, reproduction, colorable imitation, or simulation of, or confusingly similar to, or in any way similar to or dilutive of the Plaintiff’s trademarks, service marks, names, logos, or color schemes. c. using any trademark, service mark, name, logo, design, color scheme, or source designation of any kind on or in connection with Defendants’ clothing or other goods or services, or the goods or services of any entity with which Mr. Kevin W. Ford is associated or affiliated, that is likely to cause confusion, mistake, deception, or public misunderstanding that such goods or services are produced or provided by Plaintiff, or are sponsored or authorized by or in any way connected or related to Plaintiff; and

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d.

passing off, palming off, or assisting in passing off or palming off, Defendants’ website, clothing, or other goods or services, or the goods or services of any entity with which Mr. Kevin W. Ford is affiliated or associated, as those of Plaintiff, or otherwise continuing any and all acts of unfair competition as alleged in this Complaint;

2.

Order Defendants to recall any products found to infringe or violate Plaintiff’s

rights which have been shipped by Defendants, or under their authority, to any customer including, but not limited to, any wholesaler, distributor, retailer, consignor, or marketer, and also to deliver to each such customer a copy of this Court’s order as it relates to said injunctive relief against Defendants; 3. Order Defendants to deliver up for impoundment and for destruction all clothing

items, bags, boxes, labels, tags, signs, packages, receptacles, advertising, sample books, promotional material, stationary or other materials in the possession, custody, or under the control of Defendants that are found to adopt or to infringe any of Plaintiff’s Marks or that otherwise unfairly compete with Plaintiff and its products and services; 4. Order Defendants to account to Plaintiff for any and all profits derived by

Defendants for products found to violate Plaintiff’s rights, and to pay damages to Plaintiff for the acts forming the basis of this Complaint; 5. Award Plaintiff enhanced profits and trebled damages based on Defendants’

willful and intentional use of Plaintiff’s Marks and willful and intentional effort to pass off Defendants’ products; 6. Order, adjudge, and decree the transfer of the www.westfuckingvirginia.com and

www.westfuckinvirignia.com domain names, as well as any other domain names Defendants

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have registered which use the Plaintiff’s Marks, to the Plaintiff or order the forfeiture or cancellation of such domain names; 7. Order Defendants to pay to Plaintiff the costs of this action and Plaintiff’s

reasonable attorneys’ fees; 8. award; and 9. Order or award Plaintiff such other and further relief as the Court may deem just. Order Defendants to pay prejudgment and post judgment interest on any monetary

WEST VIRGINIA UNIVERSITY BOARD OF GOVERNORS, on behalf of West Virginia University By Counsel, DARRELL V. McGRAW, JR. ATTORNEY GENERAL

s/ J. Eric Whytsell J. Eric Whytsell (W.Va. Id. # 6395) Special Assistant Attorney General JACKSON KELLY PLLC 1875 Connecticut Avenue, NW Suite 1110 Washington, DC 20009 202-973-0200 tel. 202-973-0232 fax ewhytsell@jacksonkelly.com

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