UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ----------------------------------------------------------X : Morris Visitor Publications, LLC. , : Civil Action No.

11-12175 : Plaintiff, : : COMPLAINT AND DEMAND FOR -against: JURY TRIAL : Where Inc., formerly d/b/a uLocate : Communications, Inc., : : Defendant. : ----------------------------------------------------------X COMPLAINT Plaintiff, Morris Visitor Publications, LLC, (Plaintiff or MVP), for its Complaint against Where, Inc., f/k/a uLocate Communications, Inc. (Defendant or WI), alleges as follows: NATURE OF THE ACTION 1. MVP brings this action against WI for trademark infringement and false

designation of origin and unfair competition in violation of the Trademark Laws of the United States (the Lanham Act of 1946), as amended, 15 U.S.C. 1051 et seq. and the statutes and common law of the Commonwealth of Massachusetts. MVP owns the federally registered trademark WHERE and has owned and consistently used the trademark WHERE since at least 1936 in connection with publication of location-specific content, in print, online, and social media, relating to news, reviews, and information on leisure activities. 2. This action arises from the unauthorized use of MVPs trademark WHERE by

Defendant (formerly known as uLocate Communications, Inc.) for confusingly similar services, namely, publishing location-specific content, including lodging, dining, shopping, tourist

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attraction and event information for each location, along with maps, directories, calendars and money-saving coupons, for consumers seeking leisure activities both locally and for travel. Defendants use of the WHERE trademark has created actual confusion in the marketplace and is likely to cause additional confusion in the future. Specifically, it is clear by their actions that consumers and others actually believe that either Plaintiffs WHERE is Defendants WHERE or the Plaintiffs products and services are affiliated or associated with the Defendants products and services, or vice versa. Defendants use of the WHERE mark violates the Lanham Act, 15 U.S.C. 1051, et seq., M.G.L. c. 93A, and/or Massachusetts common law. 3. As a result of Defendants actions, MVP is suffering a loss of the enormous

goodwill it has created in its trademarks and is losing profits from lost sales of genuine products and services. This action seeks injunctive relief and damages for Defendants infringement of MVPs intellectual property rights. THE PARTIES 4. Plaintiff, Morris Visitor Publications, LLC, is a Georgia limited liability company

with its principal place of business at 725 Broad St., Augusta, GA 30901. 5. Defendant, Where, Inc., is a Delaware corporation with its principal place of

business at 77 No. Washington St, Boston, MA 02114. JURISDICTION AND VENUE 6. This Court has jurisdiction over the subject matter of this Complaint pursuant to

15 U.S.C. 1121 and 28 U.S.C. 1331, 1338(a) and (b), as these claims arise under the Trademark Laws of the United States. This Court also has supplemental jurisdiction over the pendent state law claims pursuant to 28 U.S.C. 1367(a).

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7.

Defendant is based in Boston, Massachusetts and is subject to personal

jurisdiction in this district. Upon information and belief, Defendant does business and solicits business in this Commonwealth through its infringing website, located at www.where.com. 8. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(a) because

Defendant resides within the district and a substantial number of Defendants wrongful acts giving rise to this action occurred here. GENERAL ALLEGATIONS I. MVPS BUSINESS AND TRADEMARKS 9. MVP publishes and distributes a variety of publications under its WHERE

trademark in the United States and abroad to assist millions of people who seek and select leisure activities, including during trip planning, after arrival at their destinations and/or by individuals and businesses planning entertainment in their local areas. 10. MVP has continuously used its WHERE mark in connection with providing its

publications and the content therein since as early as 1936, and has used the WHERE mark for its online publications since at least as early as 1996.1 As a result, WHERE is recognized as one of the worlds largest curator and publisher of Local Content. 11. MVPs publications contain location-specific dining, shopping, entertainment,

galleries, museums, attractions, accommodations and event information for each location, along with maps, directories, calendars and money-saving coupons (the Local Content). The Local MVPs predecessors in interest, including but not limited to Where International, LP, began publishing and distributing Local Content publications under the WHERE brand as early as 1936. On or about October 25, 2004, MVP acquired nearly all the world-wide rights to the trademark WHERE from Where International, LP. The only rights that were not obtained were those rights within Canada and Cuba (which were retained by the seller) and Australia (which were owned by a third-party group). During 2004, MVP licensed its rights for Alaska to a thirdparty licensee, however, on or about October 13, 2011, MVP re-acquired all licensing rights to WHERE in Alaska. 3
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Content also often includes stories about interesting people, places and histories of each area. MVP invests significant time and efforts to ensure that the Local Content is of the highest quality is informative and reliable. 12. MVPs Local Content publications are branded under MVPs family of WHERE Magazine, WHERE Quick Guides, WHERE

WHERE marks, namely:

Guestbooks, WHERE CONCIERGE and WHERE Maps. 13. U.S: a. WHERE (U.S. Reg. No. 730,450) for weekly magazines distributed in leading hotels and motels primarily directed to traveler guests, in Class 016, Registered April 24 1962; WHERE (U.S. Reg. No. 2,280,351) for (i) books and periodicals, in Class 016; (ii) telecommunication services, namely, the electronic transmission of voice, text, video and imaging, in Class 038; (iii) electronic and digital storage of information; travel information services, in Class 039; (iv) computer services, namely, providing an on-line magazine in the field of travel, hotel, restaurants and entertainment, in Class 042, Registered September 28, 1999; WHERE (U.S. Reg. No. 3,445,058) for (i) providing information, news and commentary in the field of travel, in Class 039; (ii) providing on-line reviews of restaurants and hotels; providing advice to tourists and business travelers on hotel and restaurant destinations; providing reviews of restaurants, in Class 043, Registered June 10, 2008; MVP owns the following incontestable WHERE trademark registrations in the

b.

c.

See Exhibit 1. 14. MVPs WHERE publications provide advertisers with targeted vehicles to

attract business from tourists, visitors and locals who refer to MVPs publications. An important part of MVPs business model, throughout the world, is the sale of advertising against the Local Content featured in each of the wide array of its WHERE print and digital publication offerings.

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15.

While MVPs WHERE publications were originally distributed through print

media, MVP has expanded use of its WHERE mark and distribution of its WHERE publications to encompass digital media as well. MVPs predecessor acquired the

www.wheremagazine.com URL on June 10, 1998 and thereafter launched a website touting WHERE Magazine in the Spring of 2000. MVP and/or its licensees attempted to acquire the where.com URL but were unable to do so because it was owned by a third-party. Subsequently, MVP acquired the www.wheretraveler.com URL on June 14, 2007. The current website is located at www.wheretraveler.com because the where.com URL is owned by WI. 16. Most of MVPs publications are also now available online and through mobile

applications, which further promotes MVPs WHERE brand, disseminates MVPs WHERE Local Content and expands options and convenience for MVPs customers, readers and advertisers alike. 17. More recently, MVP has also expanded use of its WHERE mark and Local

Content in connection with social media platforms, including Facebook and Twitter. 18. For more than 75 years, WHERE has been a top Local Content source for

visitors and locals in the United States and abroad with more than 62.5 million editions globally printed per year. Annually, it is projected that WHERE has reached more than 264 million readers/viewers with timely and reliable Location Destination on the best shopping, dining, cultural attractions and entertainment a city has to offer. 19. Plaintiffs WHERE mark has become an asset of substantial value symbolizing

Plaintiffs products, services and goodwill.

II.

DEFENDANTS BUSINESS AND INFRINGING ACTIVITIES

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20.

On information and belief, uLocate Communications, Inc. was founded in 2004

by partners, Geoff Palmer, Frank Schroth, and Alan Phillips. uLocate Communications, Inc. was a technology company headquartered in Boston. During March of 2010, uLocate

Communications, Inc. changed its corporate name to Where, Inc. On information and belief, during April, 2011, Where, Inc. was purchased by eBay. 21. On information and belief, uLocate n/k/a WI spent its early days creating

technology for family tracking services, as well as building location based software applications for companies such as MapQuest and Helio. 22. In March 2007, uLocate n/k/a WI launched a location-based mobile service.

Initially, during December 2005, and more actively beginning during November 2007, uLocate began filing applications to register WHERE in connection with its computer and related technology services. 23. During November 2007, MVPs trademark attorney Timothy E. Moses sent a

letter to uLocate n/k/a WI notifying uLocate n/k/a WI of MVPs trademark registrations for WHERE, as well as MVPs predecessors use of the WHERE mark since 1936. The letter also warned uLocate n/k/a WI not to infringe upon MVPs rights if it commenced use of confusingly similar WHERE mark in connection with goods or services similar to MVPs. 24. Furthermore, upon information and belief, during early 2010, WI launched an

application (available for download for use on iPhone and Android PDAs) branded under WHERE. The application includes location technology that senses the users physical location and then provides users with information about dining, bars, attractions (including art galleries, local events, museums and shopping) and offers made by local establishments, including discounts and coupons.

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25.

Moreover, uLocate n/k/a WI publishes at www.where.com (the WI Website)

which now provides local guides and content including places to eat, drink and play, as well as exclusive local daily details. The WI website also sells ad space against its content. 26. By implementing a Local Content based service, WI now directly competes with

MVP by publishing competing local content and selling advertising against such content. As a result, WIs use of the mark WHERE created confusion with MVPs registered trademarks for WHERE and MVPs common law trademark rights to WHERE. 27. Consumers believe and are likely to believe that the Local Content offered under

Defendants use of the WHERE mark is produced by or are authorized, endorsed, related to or sponsored by MVP. Consumers are likely to expect that Defendants Local Content is of the same quality as MVPs. 28. MVP has no control over the quality of the Local Content and other goods or

services provided by Defendant under the WHERE mark. 29. The favorable goodwill that MVP has developed in WHERE is at risk as a result

of Defendants use of the confusingly similar WHERE mark. 30. Defendants use of WHERE, if permitted, will lessen the capacity of MVPs

trademark WHERE to identify and distinguish MVPs products, thereby causing harm to MVP. 31. Defendants actions have and will continue to have the effect of nullifying

Plaintiffs right to exclusive use of its trademarks free from infringement. 32. Defendants use of an infringing WHERE trademark has been and continues to be

deliberate, willful, wanton, and with knowledge of Plaintiffs trademark, making this an exceptional case within the meaning of 15 U.S.C. 1117.

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33.

Upon information and belief, Defendant has realized, and continues to realize,

substantial revenues, profits and other benefits rightfully belonging to Plaintiff as a result of its infringement. 34. As a direct and proximate result of the Defendants actions, Plaintiff has suffered

financial loss, plus attorneys fees, costs and interest. 35. Defendants use of the WHERE trademark has caused and, unless restrained

and enjoined by this Court, will continue to cause, irreparable injury to the Plaintiff, for which it has no adequate remedy at law. 36. Defendants infringing and wrongful acts were and are intentional. COUNT I (Federal Trademark Infringement Under 15 U.S.C. 1114(1)) 37. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 38. MVP owns the U.S. Trademark Registrations for WHERE, namely, U.S. Reg.

Nos. 730,450, 2,280,351 and 3,445,058. 39. MVP has used the marks shown in U.S. Reg. Nos. 730,450, 2,280,351 and

3,445,058 since a date prior to any date on which Defendant may rely. 40. Defendants WHERE mark is identical to Plaintiffs WHERE trademarks in

appearance, sound, and commercial impression. 41. Defendants goods and services using the WHERE mark are confusingly similar

to, related to and directly competitive with Plaintiffs products set forth in marks shown in has used the marks shown in U.S. Reg. Nos. 730,450, 2,280,351 and 3,445,058. 42. Defendant manufactures, sells, offers to sell, distributes or advertises to the same

customers and through the same channels of trade as Plaintiff.

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43.

Defendant sells, offers for sale, distributes or advertises goods on or in connection

with the WHERE mark such that it is likely to cause confusion, or to cause mistake or to deceive the relevant consuming public as to the source of the goods or the affiliation, connection or association of Defendant with Plaintiff in violation of 15 U.S.C. 1114(1), Section 32(1) of the Lanham Act. COUNT II (False Designation of Origin, and Unfair Competition Under the Lanham Act, 15 U.S.C. 1125(a)) 44. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 45. The acts of Defendant alleged herein constitute the use in interstate commerce of

a word, term, name symbol, or device, or any combination thereof, or false designation of origin, in connection with the sale, or offering for sale, of good in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A). These acts of the Defendant are likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with Plaintiff. 46. Defendants use of the mark WHERE and misappropriation of Plaintiffs brand

name and reputation for publishing Local Content has caused confusion and is likely to cause confusion or mistake in the future as to the origin and association of the WHERE mark. 47. Because of the potential damage to Plaintiffs business and reputation, and the

potential that Defendants business under the infringing WHERE trademark will engulf Plaintiffs reputation, Defendants use of the infringing WHERE mark is likely to harm the reputation of Plaintiff, not only through traditional likelihood of confusion and deception, but through reverse confusion in the marketplace.

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48.

Defendants unauthorized marketing and advertising of their content and services

using the infringing WHERE mark constitutes a false designation of origin or false representation that wrongly and falsely designated Defendants products as originating from, associated, or connected with, Plaintiff and constitutes the use of false description or representation in interstate commerce in violation of 15 U.S.C. 1125(a). COUNT III (Trademark Dilution Under 15 U.S.C. 1125(c)) 49. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 50. mark. 51. Through consistent and continued use, product promotion, and consumer and As described above, Plaintiff owns valid and existing rights in the WHERE

industry recognition, Plaintiff has developed the WHERE mark to the point where it is famous. 52. Defendant did not begin using the confusingly similar mark in connection with

entertainment, attractions, and travel content until after the WHERE mark became famous. 53. Upon information and belief, Defendant has used the WHERE mark to take

advantage of the goodwill and reputation established in the WHERE mark and to dilute the strength of the WHERE mark. 54. Defendants use of a similar WHERE mark is likely to cause confusion of the

distinctive qualities of Plaintiffs WHERE mark in violation of 15 U.S.C. 1125 (c). COUNT IV (Trademark Infringement Under M.G.L. c. 110H) 55. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above.

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56.

Defendants use of an infringing WHERE mark has caused or is likely to cause

consumer and potential consumers to be confused, mistaken, and deceived as to the source origin, sponsorship or approval of its business. 57. The above-described actions constitute trademark infringement in violation of

M.G.L. c.110H. COUNT V (Unfair or Deceptive Acts and Practices Under M.G.L. c.93A) 58. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 59. Plaintiff and Defendant are engaged in the conduct of trade and commerce within

the meaning of Chapter 93A of the Massachusetts General Laws. 60. The foregoing conduct by Defendant constitutes unfair or deceptive acts and

practices within the meaning of Chapter 93A. 61. Through the unfair acts and practices described above, Plaintiff has been, and

continues to be, damaged by Defendant. 62. Defendant has profited thereby, and unless its conduct is enjoined, Plaintiff will

continue to suffer irreparable injury that cannot adequately be calculated or compensated by monetary damages 63. Accordingly, Plaintiff seeks injunctive relief pursuant to Section II of Chapter

93A of the Massachusetts General Laws. 64. By using Plaintiffs WHERE mark in connection with the sale, offering for sale,

and/or advertising of goods and/or services to the general public in connection with Local Content, Defendant has violated Plaintiffs rights.

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65.

Accordingly, Plaintiff is entitled to judgment in an amount equal to three times its

damages, together with reasonable attorneys fees, pursuant to Mass. Gen. Laws. c. 93A 11. COUNT VI (Common Law Trademark Infringement) 66. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 67. Plaintiffs ownership and use of the WHERE mark in the market for Local

Content predates the use by Defendant of the same mark in the same market. 68. Defendants use in commerce of the WHERE mark constitutes common law

trademark infringement in that it is without Plaintiffs consent and has created actual confusion, and is likely to continue to create confusion, as to source and origin. COUNT VII (Unjust Enrichment) 69. MVP restates and incorporates by reference each and every allegation set forth in

the paragraphs above. 70. Defendant has usurped for itself revenues and property rights belonging to

Plaintiff for the purposes of enhancing the commercial value of its own business. 71. As a direct and proximate result of the Defendants actions, Plaintiff has suffered,

and will continue to suffer, loss of profits by virtue of Defendants conduct. REQUEST FOR RELIEF WHEREFORE, in consideration of the foregoing, Plaintiff respectfully prays for the following relief against Defendant: 1. Enter judgment in favor of Plaintiff on all counts;

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2.

Enter a preliminary injunction and a permanent injunction to prevent further

violation of the Plaintiffs right and to prevent violations of 15 U.S.C. 1125, pursuant to U.S.C. 1116(a)-(c), restraining Defendant and its officers directors, employees agents, affiliates, successors, assigns, and all those in privity or acting in concert or participation with any of them: a. From using the word WHERE in connection with the publication of Local Content in print, online, on social media platforms, or otherwise; From diluting, blurring, passing off or falsely designating the origin of WHERE and from injuring Plaintiffs goodwill and reputation; From doing any other act or thing likely to induce the belief that Defendants services or products are in any way connected with, sponsored, affiliated, licensed, or endorsed by Plaintiff; From using WHERE or any substantially similar name, for goods or services on the internet, or as domain names, email addresses, social media domain names, meta tags, invisible data, or otherwise engaging in acts or conduct that would be likely to cause confusion or mistake as to the source, sponsorship or affiliation of Defendant with Plaintiff. From otherwise infringing upon Plaintiffs WHERE mark; and From otherwise unfairly competing with Plaintiff.

b.

c.

d.

e. f. 3.

Order Defendant to give notice to its customers and correspondents and any

publicity sources with which it has commenced using the name, mark, or domain name containing WHERE that it is: a. b. 4. Not connected or affiliated with Plaintiff, its business or website; and No longer using the name or mark WHERE.

Order Defendant, in accordance with 15 U.S.C. 1116(a), to file with this Court

and serve upon the Plaintiff within thirty (30) days after service of any injunction a report in writing under oath, setting forth in detail the manner and form in which Defendant has complied with the permanent injunction.

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5. Plaintiff. 6. 7.

Order Defendant to transfer ownership of the where.com domain name to

Cancelling Defendants U.S. Trademark Registrations. Order Defendant to account for and pay over to Plaintiffs all gain, profits, and

advantages derived from the use of the WHERE mark, pursuant to 15 U.S.C. 1117 and other applicable law. 8. Order Defendant to pay the Plaintiffs the actual damages sustained as a result of

Defendants wrongful conduct. 9. Order Defendant to pay the Plaintiff three times Defendants profits made as a

result of its wrongful conducts or three times Plaintiffs damages, whichever is greater, pursuant to 15 U.S.C. 1117 and any other applicable law. 10. Order Defendant to pay pre-judgment interest on Plaintiffs damages as provided

in 15 U.S.C. 1117 and other applicable law. 11. Order Defendant to pay the costs of this action as provided in 15 U.S.C. 1117

and other applicable law. 12. Order Defendant to pay Plaintiffs attorneys fees as provided by 15 U.S.C. 1117

and other applicable law. 13. Order Defendant to pay the costs of this action as provided in 15 U.S.C. 1117

and other applicable law. 14. Grant such other and further relief as is just and proper. JURY DEMAND Plaintiff demands a trial by jury on all issues so triable.

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Dated: December 8, 2011

By: /s/ Gary E. Lambert Attorneys for Plaintiff Gary E. Lambert BBO# 548303 Lambert & Associates 92 State Street Suite 200 Boston, MA 02109 Telephone: 617.720.0091 Facsimile: 617.7206307 Lambert@lambertpatentlaw.com Tamara Carmichael tcarmichael@loeb.com 345 Park Avenue New York, NY 10154 Telephone: 212.407.4000 Facsimile: 212.407.4990 Timothy E. Moses Moses Law Group, LLC 6 George C. Wilson Court, Suite B Augusta, Georgia 30909-6593 Telephone: 706.860.8030 Email: tem@temoses.com

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