Delta Airlines, Inc. (“Delta”) sued a handful of defendants in Federal court last week over a pet shipment website that appears to be affiliated with the company. Delta is seeking an injunction and damages against John Doe defendants. The complaint alleges federal trademark infringement and counterfeiting, wire fraud, unfair competition, tarnishment of a famous mark under the Lanham Act, federal and state civil Racketeer Influenced and Corrupt Organizations Act (RICO) violations, deceptive trade practices, and unjust enrichment.
The defendants registered the domain “DeltaPetTransit.com” with NameCheap, Inc. and used the company WhoisGuard, Inc. as a proxy registrant to hide their true identity. The counterfeit website displayed a Google phone number and email address, along with an additional phone number and address in Simi Valley, Nevada that do not exist. Delta alleges the defendants appropriated Delta marks in an effort to advertise fake pet shipping services on the website while pretending to be owned and operated by Delta. Specifically, the complaint claims the defendants infringed Delta’s trademarks with “counterfeit marks”, tarnished a famous mark through misappropriation of marks such as DELTA, WIDGET LOGO, and LIVERY, and engaged in unfair competition through false designations of origin and false advertising.
Federal and state civil RICO violations also make an appearance in the case. According to Delta, the defendants violated state and Federal racketeering laws through participation in the infringing scheme. In addition to treble damages and attorney’s fees under RICO, Delta seeks a preliminary and permanent injunction, an order to deliver all materials in possession for the purpose of destruction, special and general damages to be proved at trial (including quasi-contractual relief for an unjust enrichment claim), and punitive damages.
Takeaway: Advertisers that find themselves defending trademark infringement suits may wish to consider the civil remedy provisions in RICO statutes in the event that the infringers are engaging in criminal schemes which injure a company’s business or property—including injuries sustained as a result of trademark infringement.