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Complaint

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Marc J. Randazza, CA Bar No. 269535

Ronald D. Green, Pro Hac Vice forthcoming

RANDAZZA LEGAL GROUP, PLLC

4035 S. El Capitan Way

Las Vegas, NV 89147

Telephone: 702-420-2001

Facsimile: 305-437-7662

ecf@randazza.com

Attorneys for Plaintiff,

Multi Media, LLC

IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

MULTI MEDIA, LLC, a California

limited liability company,

Plaintiff,

vs.

<CHATURBATE.TO>, a domain name,

Defendant.

Case No. ___________________

COMPLAINT

Plaintiff Multi Media, LLC (“Multi Media”) brings this in rem Complaint 

against Defendant domain name <chaturbate.to> (the “Domain Name”) and 

alleges as follows:

NATURE OF THE ACTION

1. This is an in rem action under the Anticybersquatting Consumer 

Protection Act (the “ACPA”) for injunctive and other relief relating to the bad faith 

registration and use of the <chaturbate.to> Domain Name, which infringes upon 

Plaintiff Multi Media’s distinctive CHATURBATE trademarks, registered with the U.S. 

Patent and Trademark Office and Multi Media’s domain name at 

<chaturbate.com>. 

Case 3:17-cv-00301 Document 1 Filed 01/20/17 Page 1 of 8
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Complaint

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THE PARTIES

2. Plaintiff Multi Media is a California limited liability company with its 

principal place of business in Lake Forest, California.

3. <chaturbate.to> is an Internet domain name. Multi Media is unaware 

of the Registrant, as Tonic, LLC, the registry for the .to ccTLD does not appear to 

keep a publicly available Whois database.

4. Upon information and belief, the domain name registrar for the 

Domain Name is Tonic, LLC, a California limited liability company with its principal 

place of business in Pt. San Quentin, California.

JURISDICTION AND VENUE

5. This action arises, inter alia, under Section 2201 of the Judicial Code, 

28 U.S.C. § 2201, and Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 

1125.

6. This Court has subject matter jurisdiction pursuant to Section 39(a) of 

the Lanham Act, 15 U.S.C. § 1121(a), and Sections 1131 and 1338(a) of the Judicial 

Code, 28 U.S.C. §§ 1331 and 1338(a).

7. Venue is proper in this District pursuant to 28 U.S.C. § 1139(b)(2) and 

15 U.S.C. § 1126(d)(2)(C) because the cause of action arises in this District and the 

res (i.e., the Domain Name that is the subject of this action) is maintained by a 

registrar, Tonic, within the boundaries of this District and which has its situs in this 

District.

8. This Court has in rem jurisdiction over the Domain Name pursuant to 

15 U.S.C. § 1125(d)(2)(C), 28 U.S.C. § 1655, and interpretive case law. Plaintiff is 

informed and believes, and thereupon alleges, that this Court lacks in personam

jurisdiction over the Registrant of the Domain Name, which would have been the 

defendant in a civil action pursuant to 15 U.S.C. § 1125(d)(1). On information and 

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belief, the registrant is a citizen of a foreign country without the requisite minimum 

contacts to establish in personam jurisdiction in this Court.

9. The Domain Name violates Plaintiff’s rights in its CHATURBATE marks, 

which are protected pursuant to 15 U.S.C. § 1125(a).

INTRADISTRICT ASSIGNMENT

10. The registrar for the Domain Name, Tonic, is located in Marin County. 

Accordingly, pursuant to Local Rules of Court 3-2(c) and (d), the Clerk shall assign 

the action to the San Francisco Division. 

BACKGROUND

Multi Media’s Trademark Rights

11. Multi Media owns and operates the website located at the 

<chaturbate.com> Domain Name. For several years, it has used the Domain 

Name in connection with the provision of streaming audio, visual, and audiovisual 

material and other entertainment services.

12. Multi Media registered the Domain Name on February 26, 2011, and 

its website went live on or about June 30, 2011, looking largely as it does today 

and containing Multi Media’s distinctive logo and the ability for users to stream 

video and audio content.

13. Presently, the website at <chaturbate.com> is one of the most 

popular websites in the world, ranking at 200 on Alexa Internet’s list of the world’s 

most popular websites, placing it securely within the rare top 1,000 sites for overall 

traffic.

14. CHATURBATE is an inherently distinctive “fanciful” mark, as it is an 

invented term that has no meaning outside of identifying Plaintiff Multi Media’s 

provision of services.

15. Through Plaintiff’s continued use and promotion, the CHATURBATE 

mark has become distinctive throughout the United States and the world in 

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connection with Plaintiff’s services. Internet users have come to distinguish and 

recognize the legitimacy of Plaintiff’s services as a result of this use and promotion, 

and so Plaintiff’s marks are entitled to trademark rights.

16. Plaintiff Multi Media currently possesses 2 registrations for 

CHATURBATE with the United States Patent and Trademark Office:

a. CHATURBATE (U.S. Reg. No. 4,288,943) in International Classes 38 

(streaming of audio, visual, and audiovisual material via a global 

computer network; telecommunications service) and 42 (providing a 

website that gives computer users the ability to upload, exchange, 

and share photos, videos, and video logs); and

b. CHATURBATE (and design) (U.S. Reg. No. 4,988,208) in International 

Classes 38 and 42.

17. Plaintiff’s registrations are prima facie evidence of the validity of the 

marks, of Plaintiff’s ownership of the marks, and of Plaintiff’s exclusive rights to use 

the mark in U.S. commerce.

The Registrant’s Bad Faith Registration and Use of the Domain Name

18. The Domain Name incorporates the entirety of Plaintiff’s CHATURBATE 

mark and differs from Plaintiff’s <chaturbate.com> domain name only I that it uses 

the <.to> generic top-level domain (“TLD”).

19. Upon information and belief, the Domain Name was registered for 

the purpose of obtaining Internet traffic from visitors who intended to visit Plaintiff’s 

<chaturbate.com> website, but who instead arrived at the <chaturbate.to> 

website either by mistyping the TLD or mistakenly clicking on the Registrant’s site 

while performing an Internet search.

20. The Registrant’s website provides the exact goods and services at the 

Domain Name as those provided by Plaintiff at <chaturbate.com>.

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21. Plaintiff has never authorized the use of its CHATURBATE marks within 

the Domain Name.

22. Upon information and belief, the Domain Name does not and 

cannot reflect the legal name of the registration of the Domain Name.

23. Upon information and belief, the Registrant of the Domain Name has 

not and cannot engage in bona fide noncommercial or fair use of the Domain 

Name.

24. Upon information and belief, the Registrant of the Domain Name was 

aware of Plaintiff’s CHATURBATE marks prior to acquiring the Domain Name.

25. Upon information and belief, the Registrant registered the Domain 

Name with the intent to divert Internet visitors away from Plaintiff’s 

<chaturbate.com> website for commercial gain by creating a likelihood of 

confusion as to the source, sponsorship, affiliation, or endorsement of the Domain 

Name and the website located at the Domain Name.

The Registrant’s Knowledge of Plaintiff and its Marks Is Evidence of Bad Faith

26. The Registrant of the Domain Name acquired it on or about October 

14, 2015. By that point, Plaintiff had been using its marks for over 4 years and 

acquired 2 USPTO registrations for the CHATURBATE mark.

27. Shortly after acquiring the Domain Name, the Registrant used it to 

provide services nearly identical to those offered by Plaintiff at its 

<chaturbate.com> website.

28. The Registrant was clearly aware of the CHATURBATE marks and the 

<chaturbate.com> website, given that Plaintiff’s name is inherently unique and 

fanciful and that the Registrant used the Domain Name for the same purposes for 

which Plaintiff uses the <chaturbate.com> domain name.

29. The Registrant also had constructive knowledge of Plaintiff’s marks as 

early as June 28, 2012, when Plaintiff filed its first application with the USPTO. 

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Complaint

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30. Registrant’s knowledge of Plaintiff and the CHATURBATE marks is 

evidence of Registrant’s bad faith in selecting, acquiring, registering, and using 

the Domain Name.

Registrant’s Actions Are Likely to Cause Confusion

31. The Registrant’s selection, acquisition, registration and use of the 

Domain Name is likely to cause confusion, mistake, or deception as to the 

affiliation, connection, or association of Registrant with Plaintiff, or as to the origins, 

sponsorship, or approval of Registrant’s Domain Name and website by Plaintiff, 

thereby causing injury, loss, and damage to Plaintiff.

32. The extent of potential confusion among Internet visitors between 

Registrant’s Domain Name and Plaintiff’s marks is substantial.

33. Registrant’s use of the Domain Name does, and will likely continue 

to, falsely suggest a relationship between the Registrant’s Domain Name and 

Plaintiff’s services.

FIRST CLAIM FOR RELIEF

Violation of the Anti-cybersquatting Consumer Protection Act

15 U.S.C. § 1125(d)

34. Plaintiff incorporates by reference each and every preceding 

allegation in this Complaint.

35. Plaintiff is the owner of the distinctive, famous, and federally 

registered CHATURBATE marks.

36. Plaintiff’s marks are distinctive of Plaintiff’s services, for which they 

have been continually used and registered, and were distinctive well before the 

Domain Name was registered.

37. Registrant has no rights in Plaintiff’s marks or the Domain Name.

38. Registrant’s Domain Name is confusingly similar to Plaintiff’s marks.

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39. Registrant has registered, trafficked in, used, and is using the Domain 

Name with the bad faith intent to profit from Plaintiff’s CHATURBATE marks.

40. Registrant’s actions are a violation of the Lanham Act § 43(d), 15 

U.S.C. § 11259(d).

41. Plaintiff has been, is now, and will continue to be irreparably harmed 

by the Registrant’s aforementioned actions, and, unless enjoined by this Court, 

Registrant’s unauthorized use of the Domain Name will continue. There is no 

adequate remedy at law for the harm caused by Registrant’s acts.

42. Upon information and belief, this Court lacks in personam jurisdiction 

over the Registrant, who would otherwise be the defendant in this action under 

15 U.S.C. § 1125(d).

43. Because Plaintiff Multi Media owns the exclusive right to the 

CHATURBATE marks and Registrant has no rights to them whatsoever, it is 

appropriate for the Court to declare Plaintiff as the rightful owner of the Domain 

Name and order the prompt transfer of the Domain Name to Plaintiff.

. . .

. . .

. . .

. . .

. . .

. . .

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Complaint

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PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays that this Court:

A. Declare, adjudge, and decree that Plaintiff is the sole legal and 

equitable owner of the Domain Name;

B. Direct that the registration of the Domain Name be transferred to 

Plaintiff; and

C. Award such other and further relief that this Court deems just and 

equitable. 

Dated: January 20, 2017. Respectfully Submitted,

RANDAZZA LEGAL GROUP, PLLC

/s/ Marc J. Randazza

Marc J. Randazza, CA Bar No. 269535

Ronald. Green, Pro Hac Vice forthcoming

4035 S. El Capitan Way

Las Vegas, NV 89147

Attorneys for Plaintiff,

Multi Media, LLC

Case 3:17-cv-00301 Document 1 Filed 01/20/17 Page 8 of 8