az urbanathlon

8/3/2019 az urbanathlon

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Thomas S. Moring (Bar No. 021247)PAK & MORING

8930 East Raintree Drive, Suite 100

Scottsdale, AZ 85260Telephone: (480) 444-9999

Facsimile: (480) [email protected]

Kevin G. Smith

Artem N. Sokolov

SUGHRUE MION, PLLC2100 Pennsylvania Avenue N.W., Suite 800

Washington D.C. 20037

Telephone: (202) 293-7060Facsimile: (202) 293-7860

[email protected]

[email protected]

Attorneys for Plaintiff,

Rodale Inc.

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF ARIZONA

RODALE INC.

Plaintiff,

v.

AZ URBANATHLON LLC,

HATTEN HOLDINGS, INC. d/b/a

MOUNTAINSIDE FITNESS CENTERS,

&

JUSTIN HUNTINGTON (as an individual)

Defendants.

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CASE NO.: CV _______________

COMPLAINT FOR FEDERAL AND

COMMON LAW TRADEMARK

INFRINGEMENT AND UNFAIR

COMPETITION

(JURY TRIAL DEMANDED)

Plaintiff Rodale Inc., (Plaintiff or Rodale), by its undersigned attorneys for its causes

of action against Defendants AZ URBANATHLON LLC (AZU), Hatten Holdings, Inc. d/b/a

Case 2:11-cv-02008-PGR Document 1 Filed 10/14/11 Page 1 of 13
mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]


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Mountainside Fitness Centers (Hatten) and Justin Huntington (Huntington) (collectively

Defendants), alleges as follows:

JURISDICTION AND VENUE

1. This is a civil action for federal trademark infringement and federal unfaircompetition, as well as trademark infringement and unfair competition under the common law of

the state of Arizona.

2. Jurisdiction over this matter is conferred on the Court by 28 U.S.C. 1331, 1338and 1367, and 15 U.S.C. 1121.

3. The Court has personal jurisdiction over the Defendants by virtue of theirpresence in this judicial district and division and because the tortious activities complained of

herein have occurred and are occurring in this judicial district.

4. Venue is proper in the District of Arizona under 28 U.S.C. 1391(c) becauseDefendants reside within this Courts jurisdiction.

PARTIES

5. Plaintiff, Rodale is a Pennsylvania corporation, having its principal place ofbusiness at 33 East Minor Street, Emmaus, Pennsylvania 18098.

6. On information and belief, Defendant AZ URBANATHLON LLC is an Arizonacorporation, having its principal place of business at 3345 S. Val Vista Dr. STE 110, Gilbert, AZ

85297.

7. On information and belief, Defendant Justin Huntington is an individual residingat 6900 E Princess Dr #1151, Phoenix, Arizona 85054.



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8. On information and belief, Defendant Hatten Holdings, Inc. d/b/a MountainsideFitness Centers is an Arizona corporation having its principal place of business at 120 S. Ash

Avenue #201, Tempe, AZ 85281.

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9. On information and belief Defendant AZU is owned by or related to DefendantHatten.

RODALE AND ITS URBANATHLON TRADEMARK

10. Plaintiff, Rodale, a publisher of books and magazines since 1930, has been aleading provider of health, fitness, exercise, diet, nutrition and wellness information for many

decades, via print, online and digital media. For example, Rodale, is a leading publisher of

health and wellness lifestyle magazines, including MENS HEALTH Magazine, WOMENS

HEALTH Magazine and RUNNERS WORLD Magazine and affiliated websites.

11. Rodale owns all right, title, and interest in and to Federal Registration No.3,241,571 for the trademark URBANATHLON, issued on the Principal Register of the United

States Patent and Trademark Office on May 15, 2007 for the goods and services identified in the

following table. A copy of this registration is attached hereto as Exhibit A. The aforementioned

registration is valid, subsisting, uncancelled, and unrevoked.

International

Class

Description of Goods and Services

Class 016 PRINTED INSTRUCTIONAL AND EDUCATIONAL MATERIALSIN THE FIELDS OF OUTDOOR RECREATION, HEALTH, FITNESS,

DIET, EXERCISE, LIFESTYLE, PRODUCTS, GEAR, APPAREL

AND EQUIPMENT; PRINTED VISUALS IN THE NATURE OF

PROMOTIONAL MATERIALS

Class 041 EDUCATIONAL SERVICES, NAMELY, WORKSHOPS ANDSEMINARS IN THE FIELDS OF OUTDOOR RECREATION,

HEALTH, FITNESS, DIET, EXERCISE AND LIFESTYLE, AND

OUTDOOR PRODUCTS, NAMELY, OUTDOOR GEAR, APPAREL

AND EQUIPMENT; ENTERTAINMENT SERVICES, NAMELY,ARRANGING CONTESTS AND CONDUCTING SHOWS AND



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EVENTS FEATURING OUTDOOR RECREATION, HEALTH,

FITNESS, DIET, EXERCISE AND LIFESTYLE, AND OUTDOOR

PRODUCTS, NAMELY, OUTDOOR GEAR, APPAREL ANDEQUIPMENT; PROVIDING INFORMATION IN THE FIELDS OF

OUTDOOR RECREATION, FITNESS, EXERCISE, LIFESTYLE AND

OUTDOOR PRODUCTS, NAMELY, OUTDOOR GEAR, APPARELAND EQUIPMENT VIA THE INTERNET; AND ENCOURAGING

AMATEUR SPORTS AND PHYSICAL EDUCATION BY

ORGANIZING AND PROMOTING, SPONSORING, SANCTIONING,CONDUCTING AND ADMINISTERING AMATEUR ATHLETIC

PROGRAMS AND ACTIVITIES

12. Rodale has been using its trademark, URBANATHLON since at least as earlyas June 2006. Under the URBANATHLON mark, Rodale provides goods and services in the

fields of outdoor recreation, health, fitness and exercise, and in connection with promoting,

organizing, conducting and administering amateur outdoor athletic events, including urban-based

obstacle course races.

13. Rodale is the owner of domain names and associated websites at:http://www.urbanathlon.com/ and http://www.menshealthurbanathlon.com/ among others, which

allow users to register for or learn more about Rodales URBANATHLON races; provide users

with news, results, pictures and other information related to Rodales URBANATHLON

events; and serve as an online forum to share fitness tips, stories and advice, and advertise and

promote its outdoor events and activities. Rodale also operates a Facebook page, which

provides an alternative forum for users to share advice, training tips and other information

related to Rodales URBANATHLON races. (http://www.facebook.com/pages/Mens-Health-

Urbanathlon/152363428164411)

14. Since 2006 Rodale has promoted and organized and hosted races in the UnitedStates and all over the world under the URBANATHLON mark, including races in Chicago,

http://www.urbanathlon.com/http://www.menshealthurbanathlon.com/http://www.facebook.com/pages/Mens-Health-Urbanathlon/152363428164411http://www.facebook.com/pages/Mens-Health-Urbanathlon/152363428164411http://www.facebook.com/pages/Mens-Health-Urbanathlon/152363428164411http://www.facebook.com/pages/Mens-Health-Urbanathlon/152363428164411http://www.menshealthurbanathlon.com/http://www.urbanathlon.com/


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New York, San Francisco, Singapore, South Africa, Germany, Australia and Japan, among

others.

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15. Rodale has invested substantially in developing content for, and advertising andpromoting its goods and services under the URBANATHLON mark throughout the United

States, including this judicial district. For example, Rodale has promoted its

URBANATHLON trademark through nationwide advertising and promotional efforts, as well

as individual and exclusive sponsorships and events. In 2011 alone, Rodale will host events in

New York, Chicago and San Francisco, which are sponsored by Gatorade, Jeep, Gillette

and Columbia, among others. Rodale has advertised its specific racing events via radio, in

news outlets, fitness/running-related websites and using social media, such as Facebook,

YouTube, and others. In addition, Rodale sells and distributes promotional gear bearing the

URBANATHLON mark, including t-shirts distributed at various racing events.

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16. As a result of Rodales substantial promotion and advertising, as well as Rodaleslong and continuous use of its URBANATHLON mark for over five (5) years, Rodales

URBANATHLON mark has become highly regarded in the sports, fitness, running, athletic

events and activities, and healthy lifestyle fields.

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DEFENDANTS AND THEIR WRONGFUL ACTIVITIES

17. In 2010 and 2011, Defendants began using an identical mark(URBANATHLON) in connection with identical goods and services (amateur outdoor athletic

events, including urban-based obstacle course races and goods associated with these events) that

are directed to identical consumers (outdoor and marathon enthusiasts), in direct competition

with Rodale.



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18. Specifically, Defendant AZ URBANATHLON LLC was incorporated inDecember 2, 2010, using Rodales URBANATHLON mark as a principal part of the corporate

name. (Exhibit B).

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19. Defendant Huntington first registered the domain name,

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20. Defendant Hatten announced its involvement with the AZ URBANATHLON onAugust 8, 2011 via a blog post on

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http://www.azurbanathlon.com , on January 13, 2011 as indicated by a Whois report procured

in connection with the Defendants website. (Exhibit C).

http://blog.mountainsidefitness.com , a website belonging to

Defendant Hatten. In the blog post, Defendant Hatten announced: I am excited to announce

that Mountainside Fitness will be the Presenting Sponsor of the 2011 AzUrbanathlon, a 5k race

with 10 obstacles. (Exhibit D).

21. Defendants had constructive knowledge of Rodales URBANATHLON mark asof at least May 15, 2007 by virtue of its registration on the Principal Register of the United States

Patent and Trademark Office.

22. On information and belief, Defendants knew of Rodale when they adopted andused the URBANATHLON mark, and when Defendant Huntington first registered its domain

name, http://www.azurbanathlon.com , by virtue of Rodales substantial advertising, promotion

and use of the mark since at least June 2006.

23. Defendants also had actual notice of Rodales URBANATHLON mark as of atleast October 6, 2011 by virtue of a cease and desist letter from Rodales counsel.

24. On information and belief, ignoring Rodales substantial trademark rights in theURBANATHLON mark, Defendants planned, organized, advertised and promoted an urban-

http://www.azurbanathlon.com/http://blog.mountainsidefitness.com/http://www.azurbanathlon.com/http://www.azurbanathlon.com/http://blog.mountainsidefitness.com/http://www.azurbanathlon.com/


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based obstacle course race under the name AZ URBANATHLON, which is scheduled to take

place on November 5, 2011.

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25. On information and belief, the Defendants November 5, 2011 date wasspecifically chosen so as not to coincide with Rodales races under the URBANATHLON

mark, that are scheduled for October 15, 2011 (Chicago), October 29, 2011 (New York), and

November 13, 2011 (San Francisco).

26. Defendants have engaged in a wide-spread advertising campaign in connectionwith their November 5, 2011 race, including advertising and promotion via:

News outlets (e.g., Arizona channel 12 news (KPNX), The Arizona Republic,

Phoenix NewTimes and azcentral.com)

Billboards (Exhibit E). Running and tri-athlon websites:

o http://www.race360.com/marathon/races/detail.asp?eventid=15996 ;o http://www.trifind.com/re_50744/AZUrbanathlonpresentedbyMountainsideFitnes

s.html;

o http://www.usracecalendar.com/content/az-urbanathlon ;o http://www.active.com/running/scottsdale-az/az-urban-race-2011 ; ando http://www.walkjogrun.net/events/running/AZ-URBANATHLON/1931900 ,

among others.

Facebook (http://www.facebook.com/azurbanathlon )

Twitter (http://twitter.com/#!/azurbanathlon ) YouTube (http://www.youtube.com/watch?v=MU8rgC1d8ms&feature=youtu.be ),

and others.

http://www.race360.com/marathon/races/detail.asp?eventid=15996http://www.trifind.com/re_50744/AZUrbanathlonpresentedbyMountainsideFitness.htmlhttp://www.trifind.com/re_50744/AZUrbanathlonpresentedbyMountainsideFitness.htmlhttp://www.usracecalendar.com/content/az-urbanathlonhttp://www.active.com/running/scottsdale-az/az-urban-race-2011http://www.walkjogrun.net/events/running/AZ-URBANATHLON/1931900http://www.facebook.com/azurbanathlonhttp://twitter.com/#!/azurbanathlonhttp://www.youtube.com/watch?v=MU8rgC1d8ms&feature=youtu.behttp://www.youtube.com/watch?v=MU8rgC1d8ms&feature=youtu.behttp://twitter.com/#!/azurbanathlonhttp://www.facebook.com/azurbanathlonhttp://www.walkjogrun.net/events/running/AZ-URBANATHLON/1931900http://www.active.com/running/scottsdale-az/az-urban-race-2011http://www.usracecalendar.com/content/az-urbanathlonhttp://www.trifind.com/re_50744/AZUrbanathlonpresentedbyMountainsideFitness.htmlhttp://www.trifind.com/re_50744/AZUrbanathlonpresentedbyMountainsideFitness.htmlhttp://www.race360.com/marathon/races/detail.asp?eventid=15996


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28. Defendants misappropriation of Rodales URBANATHLON mark is likely tocause confusion, mistake and deception as to the source of Defendants goods and services, and

is likely to falsely suggest sponsorship, connection, license, or association between Defendants,

their goods, services and commercial activities and Rodale. Defendants wrongful acts are

willful and in wanton disregard of Rodales valuable trademark rights.

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7. Defendants have also sold T-shirts advertising their event, which improperlyinclude Rodales URBANATHLON mark. (Exhibit F).

COUNT I

FEDERAL TRADEMARK INFRINGEMENT

29. Paragraph 1-28 are incorporated herein by reference as though fully set forthherein.

30. This cause of action arises under Section 32 of the Lanham Act, 15 U.S.C. 1114.31. Defendants unauthorized use of the mark and name URBANATHLON in

connection with promoting, conducting and administering an amateur athletic event, namely an

urban-based obstacle course race, as the major component of its corporate name, and as a

principal part of the http://www.azurbanathlon.com domain name, is likely to cause confusion,

mistake or deception of the public that the source or origin of such services is with Rodale or that

Defendants have an association with or are sponsored by Rodale. Defendants use of the

URBANATHLON mark further creates the clear and false impression that Rodale has approved

or endorsed Defendants and their goods and services by permitting use of a confusing similar

mark in connection with the promotion of Defendants goods and services.

32. Defendants use of the URBANATHLON mark, without Rodales permission,constitutes direct and/or contributory infringement of Rodales federally registered mark (Exhibit

A).

http://www.azurbanathlon.com/http://www.azurbanathlon.com/


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33. Defendants goods and services are advertised and promoted through the samechannels of trade (e.g., the Internet, print media, TV, radio and word of mouth, etc.) to the same

types of end customers (e.g., outdoor and marathon enthusiasts) as those rendered by Rodale.

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34. Rodale has no control over Defendants goods or services that feature confusinglysimilar imitations of Rodales federally registered URBANATHLON mark (Exhibit A), with

the result that Rodales valuable goodwill with respect to its marks is irreparably damaged by

Defendants acts complained of herein.

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35. On information and belief, Defendants will continue to infringe the rights securedto Rodale by Rodales federal trademark registration unless restrained by this Court.

36. As a result of said trademark infringement by Defendants, Rodale has sufferedand continues to suffer irreparable injury, for which it has no adequate remedy at law.

COUNT II

COMMON LAW TRADEMARK INFRINGEMENT

37. The allegations of paragraphs 1-36 are incorporated herein by reference as thoughfully set forth herein.

38. The cause of action arises under the common law of the State of Arizona.39. Defendants aforementioned conduct, in adopting and using marks that are

confusingly similar to Rodales URBANATHLON mark, has infringed and is infringing upon

Rodales rights in its mark.

40. Defendants aforementioned conduct constitutes common law trademarkinfringement.

41. As a result of said infringement, Rodale has suffered and continues to sufferserious and substantial injury, including irreparable injury, for which it has no remedy at law.



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COUNT III

FEDERAL UNFAIR COMPETITION

42. Paragraphs 1-41 are incorporated herein by reference as though fully set forthherein. This cause of actions arises under Section 43(a) of The Lanham Act, 15 U.S.C. 1125(a).

43. Defendants unauthorized use of the mark and name URBANATHLON inconnection with promoting, conducting and administering an amateur outdoor athletic event,

namely an urban-based obstacle course race, as the major component of its corporate name, and

as a principal part of the http://www.azurbanathlon.com domain name, is likely to cause

confusion, mistake or deception as to the source or origin of Defendants services within the

meaning of Section 43(a) of The Lanham Act, 15 U.S.C. 1125.

44. The foregoing acts of Defendants create the clear and false impression that Rodaleand Defendants are related, and/or that Rodale has approved or endorsed Defendants and/or

Defendants goods and services. This misrepresentation is likely to cause confusion, mistake or

deception as to the relationship, affiliation, connection or association of Rodale and Defendants

in violation of Section 43(a) of The Lanham Act, 15 U.S.C. 1125.

45. The foregoing acts of Defendants are causing Rodale serious and irreparable harmwhich will continue unless enjoined by this Court.

COUNT IV

COMMON LAW UNFAIR COMPETITION

46. The allegations of paragraphs 1-45 are incorporated herein by reference as thoughfully set forth herein.

47. This cause of action arises under the common law of the State of Arizona.



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48. By the acts and activities complained of herein, Defendants are in a position topass off its goods and services as those produced by, under license from, or with the approval of

Rodale.

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50. By means and as a result of said unfair competition, Rodale has suffered andcontinues to suffer serious and substantial injury, including irreparable injury for which it has no

adequate remedy at law.

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49. Defendants aforementioned conduct constitutes unfair competition.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Rodale prays for relief against Defendants as follows:

1. That Defendants, their partners, agents, representatives, servants, employees,associates, attorneys, successors and assigns, and any and all persons or entities acting by,

through, under or in active concert or in participation with any or all of them, be enjoined

preliminarily during the pendency of this action and thereafter permanently by Order of this

Court from doing, abiding, causing, or abetting any of the following:

a. directly or indirectly infringing Rodales URBANATHLON mark;b. passing off, inducing, or enabling others to sell or pass off any products or

services as or for products or services rendered by Rodale that are not Rodales,

or are not rendered by or under the control, supervision, or approval of Rodale;

c. directly or indirectly engaging in any acts or activities calculated to trade uponand/or tarnish Rodales URBANATHLON mark or the reputation or goodwill

of Rodale, or in any manner to compete with Rodale unfairly;

d. using in the promotion, advertising, marketing and/or distribution of its productsor services the domain name http://www.azurbanathlon.com/, or any mark,



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2. That Defendants take all necessary and appropriate steps to recall for destructionall advertising and other materials, including but not limited to, websites and promotional

materials bearing Defendants URBANATHLON word mark and name.

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3. That Defendants take all necessary and appropriate steps to cease using the

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5. That Defendants be required to pay over to Rodale all damage suffered by Rodaleas a result of Defendants acts herein complained of, and that such damages be trebled.

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6. That Rodale be awarded punitive damages for the willful and wanton acts ofunfair competition and other unlawful injurious acts of Defendants complained of herein.

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8. That Rodale be awarded such other and further relief as the Court may deem justand proper.

trade name, or domain name that simulates, imitates, or is confusingly similar to

Rodales URBANATHLON mark in such a manner as to deceive, to falsely

describe or represent the source of the services, or otherwise create confusion

upon the purchasing public or the trade;

e. further violating Rodales property rights and goodwill; andf. otherwise competing unfairly with Rodale in any manner whatsoever.

http://www.azurbanathlon.com/ domain name and to transfer said domain name to Rodale.

4. That Defendants be required to pay over to Rodale all profits realized from itsunlawful acts complained of herein.

7. That Rodale be awarded its reasonable attorneys fees and the costs of this action.

DEMAND FOR JURY TRIAL

Plaintiff hereby requests a jury trial on all issues.



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Dated this 14th day of October, 2011

OF COUNSEL

Kevin G. Smith (pro hac pending)

Artem N. Sokolov (pro hac pending)

SUGHRUE MION, PLLC2100 Pennsylvania Avenue N.W.,

Suite 800

Washington D.C. 20037Telephone: (202) 293-7060

Facsimile: (202) 293-7860

Thomas S. Moring (Bar No. 021247)

PAK & MORING8930 East Raintree Drive, Suite 100

Scottsdale, AZ 85260

Telephone: (480) 444-9999Facsimile: (480) 308-0015

Attorneys for Plaintiff,

Rodale Inc.


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