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HomeMy WebLinkAbout02-4602D. L. SPITLER LUMBER CO., INC., t/d/b/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, 1NC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED Defendants 1N THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY NO. ~.,~ ~ /-}/(.a 02... NOTICE You have been sued in court. If you wish to defend against the claims set forth in the following pages, you must take action within twenty (20) days after this Complaint and Notice are served, by entering a written appearance personally or by attorney and filing in writing with the court your defenses or objections to the claims set forth against you. You are warned that if you fail to do so, the case may proceed without you and a judgment may be entered against you by the court without further notice for any money claimed in the Complaint or for any other claim or relief requested by the Plaivtiffs. You may lose money or property or other rights important to you. YOU SHOULD TAKE THIS PAPER TO YOUR LAWYER AT ONCE. IF YOU DO NOT HAVE A LAWYER OR CANNOT AFFORD ONE, GO TO OR TELEPHONE THE OFFICE SET FORTH BELOW TO FIND OUT WHERE YOU CAN GET LEGAL HELP: Cumberland County Bar Association 2 Liberty Avenue Carlisle, Pennsylvania 17013 Telephone (717) 249-3166 Carl C. Kisch, Esquire ID Number 75901 Ten East High Street Carlisle, PA 17013 (717) 243-3341 ,4 ttorneys for Plaintiff WILLIAIVIS & OTTO Date: September 23, 2002 SHERIFF'S CASE NO: 2002-04602 P COMMONWEALTH OF PENNSYLVANIA: COUNTY OF CUMBERLAND D L SPITLER LUMBER CO INC TDBA VS LASHAY JOHN M ET AL RETURN - OUT OF COUNTY R. Thomas Kline , Sheriff or Deputy Sheriff who being duly sworn according to law, says, that he made a diligent search and and inquiry for the within named DEFENDANT , to wit: SOFA DISCOUNTERS EAST TDBA SOFAS UNLIMITED but was unable to locate Them in his bailiwick. deputized the sheriff of DAUPHIN County, serve the within COMPLAINT & NOTICE He therefore Pennsylvania, to On October 9th 2002 , this office was in receipt of the attached return from DAUPHIN Sheriff's Costs: Docketing Out of County Surcharge Dep Dauphin Co 6.00 9.00 10.00 29.25 .00 54.25 10/09/2002 MDW&O R{ Thomas Kline Sheriff of Cumberland County Sworn and subscribed to before me this /~/"~ day of ~ ,~ 6~ ~L A.D. ' ; Prothonotary' ~ SHERIFF'S RETURN ~ASE NO: 2002-04602 P COMMONWEALTH OF PENNSYLVANIA: COUNTY OF CUMBERLAND D L SPITLER LUMBER CO INC TDBA VS LASHAY JOHN M ET AL - REGULAR VALERIE WEARY , Sheriff or Deputy Sheriff of Cumberland County, Pennsylvania, who being duly sworn according to says, the within COMPLAINT & NOTICE was served upon LASH_AY JOHN M the law, DEFENDANT , at 1920:00 HOURS, on the 1st day of October , 2002 at 4713 CARLISLE PIKE MECHANICSBURG, PA 17055 FABIOLA SALLACK a true and attested copy of COMPLAINT & NOTICE by handing to SALES ASSOCIATE together with and at the same time directing Her attention to the contents thereof. Sheriff's Costs: Docketing 18.00 Service 8.97 Affidavit .00 Surcharge 10.00 .00 36.97 Sworn and Subscribed to before me this /V ~ day of ~r~ J (3~, 2_~ A.D. /~othonotary / / ~ So Answers: R. Thomas Kline 10/09/2002 MDW&O By: SHERIFF'S CASE NO: 2002-04602 P COMMONWEALTH OF PENNSYLVANIA: COUNTY OF CUMBERLJ~ND D L SPITLER LUMBER CO INC TDBA VS LASHAY JOHN M ET AL RETURN - REGULAR VALERIE WEARY Sheriff or Deputy Sheriff of Cumberland County, Pennsylvania who being duly sworn according to law, says, the within COMPLAINT & NOTICE was served upon SOFA DISCOUNTERS INC TDBA SOFAS UNLIMITED the DEFENDANT , at 1920:00 HOURS, at 4713 CARLISLE PIKE MECHANICSBURG, PA 17055 FABIOLA SALLACK on the 1st day of October 2002 by handing to SALES ASSOCIATE a true and attested copy of COMPLAINT & NOTICE together with and at the same time directing Her attention to the contents thereof. Sheriff's Costs: Docketing 6.00 Service .00 Affidavit .00 Surcharge 10.00 .00 16.00 Sworn and Subscribed to before me this /y ~ day of ~/f~_~ ~.l~ A.D. Prothonotary' So Answers: R. Thomas Kline 10/09/2002 MDW&O By: Mary Jane Snyder Real Estate Deputy William T. Tully Solicitor Dauphin County Harrisburg, Pennsylvania 17101 ph: (717) 255-2660 fax:(717)255-2889 Jack Lotwick Sheriff J. Daniel Basile Chief Deputy Michael W. Rinehart Assistant Chief Deputy Commonwealth of Pennsylvania County of Dauphin AND NOW:September 27, COMPLAINT SOFA DISCOUNTERS EAST TDBA SOFAS UNLIMITED to RUBY GARDNER-OFFICE MGR of the original COMPLAINT to him/her the contents thereof at 4359 LINGLESTOWN RD HBG, PA 17112-0000 D L SPITLER LUMBER CO INC vs SOFA DISCOUNTERS EAST TDBA SOFAS Sheriff's Return No. 2234-T - -2002 OTHER COUNTY NO. 02-4602 2002 at 10:30AMserved the within upon by personally handing 1 true attested copy(les) and making known Sworn and subscribed to ~efore me this 30TH day of SEPTEMBER, PROTHONOTARY 2002 So Answers, She~/.f.~hin County, Pa. Sheriff's Costs: $29.25 PD 09/26/2002 RCPT NO 169703 RM . In The Court of Common Pleas of Cumberland County, Pennsylvania D.L. Spitler L~nber Co, Inc tdba Sofa Selections VS. John M. Lashay et al SERVE: Sofa Discounters East Inc tdba Sofas Unlimited NO. 02 4602 civil Now, September 25, 2002 , I, SHERIFF OF CUMBERLAND COUNTY, PA, do hereby deputize the Sheriffof Dauphin Coun~ to execute this Writ, this deputation being made at the request and risk of the Plaintiff. Sheriff of Cumberland County, PA NOW, within Affidavit of Service , 20 _, at o'clock __ M. served the upon at by handing to a and made known to copy of the original So answers, the contents thereof. Sworn and subscribed before me this day of ,20 Sheriff of COSTS SERVICE MILEAGE AFFDAVIT County, PA D. L. SPITLER LUMBER CO., 1NC., t/d/b/a SOFA SELECTIONS Plaintiff JOHN M. LASHAY, individual, SOFA DISCOUNTERS, 1NC. t/dPo/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED, Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY COMPLAINT AND NOW, comes Plaintiff, D. L. SPITLER LUMBER CO., 1NC. t/d/b/a SOFA SELECTIONS, by and through its attorneys, MARTSON DEARDORFF WILLIAMS & OTTO, and hereby avers as follows: 1. Plaintiff, D. L. Spitler Lumber Co., Inc., is a Pennsylvania corporation with a principal place of business at 5430 Jonestown Road, 17112. Harrisburg, Dauphin County, Pennsylvania The Defendant, John M Lashay, is an adult individual residing at 155 East Lauer Lane, Hampden Township, Cumberland County, Pennsylvania 17011, who is the sole owner and manager, or is the primary owner and manager, of the other two Defendants. 3. The Defendant, Sofa Discounters, Inc. t/dgo/a Sofas Unlimited, is a Pennsylvania corporation with a principal place of business at 4713 Carlisle Pike, Mechanicsburg, Pennsylania 17055, which engages in interstate commerce by operating a retail store in which sofas and furniture are sold to the public. 4. The Defendant, Sofa Discounters East, Inc. t/d/b/a Sofas Unlimited, is a Pennsylvania corporation with a principal place of business at 4359 Linglestown Road, Harrisburg, Pennsylvania 17112, which engages in interstate commerce by operating a retail store in which sofas and furniture are sold to the public. 5. Since January 1996, Plaintiff`has operated retail stores exclusively using the name "Sofa Selections" in Dauphin and Cumberland Counties, Pennsylvania, in which Plaintiff` sells sofas and furniture to the public and engages in interstate commerce. 6. Plaintiff` competes with other retail furniture stores in Dauphin, Perry, Cumberland, Lebanon, Lancaster, and York Counties, including Defendant Sofas Unlimited, which is engaged in a business similar to Plaintiff's, which targets a similar consumer, and which operates stores only a few miles away from Plaintiff's enterprises. 7. For the protection of Plaintiff and the public, on or about March 12, 1996, Plaintiff properly registered the trademark "Sofa Selections" with the Pennsylvania Department of State pursuant to the Pennsylvania trademark registration taws. 8. On or about November 30, 1999, Plaintiff properly registered the fictitious name "Sofa Selections" with the Pennsylvania Department of State pursuant to Pennsylvania laws concerning names of businesses. 9. Plaintiff has extensively used the mark "Sofa Selections" in newspaper advertising, in radio advertisements, in television commercials, on signs identifying the location of the business, and on all business correspondence and accounts to the point that the consuming public of Cumberland, Dauphin, Lebanon, Lancaster, Perry, and York Counties immediately associates the term with Plaintiff's enterprise and thus the mark has become distinctive, famous, and has acquired secondary meaning. 10. In September 1999, Defendants registered the internet domain names "sofaselections.com" and "sofaselections.net," with Network Solutions, Inc. and listed themselves as authorized licensees of the domain names. 11. On or about September 10, 2002, Defendants re-registered the internet domain names "sofaselections.com" and "sofaselections.net." 12. Defendants intentionally registered, and re-registered, these domain names, which are identical and/or confusingly similar to Plaintiff's registered trademark, in bad faith, with the intent to profit therefrom, and with knowledge that it would deprive Plaintiff of access to its registered trademark for use on the Internet. 13. Since at least September 2001, Defendants have maintained an internet website promoting the Sofas Unlimited retail stores in Dauphin and Cumberland Counties. 14. Since at least September 2001, Defendants have used PlaintiWs mark, Sofa Selections, without permission, in the form of two domain names, "sofasections.com" and "sofaselections.net,' as website addresses for its website which promotes its competing retail stores, Sofas Unlimited. 15. Defendants' use of PlaintiWs mark as a domain name acts to point consumers interested in learning about Sofa Selections directly to the website promoting Plaintiff's primary competitor, Defendants' retail stores, Sofas Unlimited, and intentionally deceives consumers into believing that Defendants are affiliated with Plainti~ 16. Plaintiff is powerless to stop Defendants' use of its mark since the domain names, "sofaselections.com" and "sofaselections.net," are controlled by a computer in the possession of Defendants or Defendants' agents, and no two organizations can have the same domain name. 17. Since 1996, Defendants have intentionally used the trademark "Sofa Selections" in newspaper advertising and in road signs promoting Sofas Unlimited in an attempt to confuse consumers and dilute Plaintiff's mark. 18. On or about June 24, 1997, Plaintiff sent a cease and desist letter to Sofas Unlimited demanding that it cease using the mark "Sofa Selections" in advertising. A copy of this letter is attached hereto as "Exhibit A.' 19. In February 2002, an agent of Plaintiffasked an agent of Defendant John M. Lashay to surrender his registration of"sofaselections.com" and "sofaselections.net.' 20. Defendant Lashay's agent indicated that Defendant Lashay refused to give up his registration of"sofaselections.com' and "sofaselections.net" despite Plaintiff's demand. 21. In September 2002, Plaintiff sent a second cease and desist letter to Sofas Unlimited demanding that it cease using the mark "Sofa Selections" as an Internet domain name tied to its own website, sofasunlimited.com A copy of this letter is attached hereto as "Exhibit B.' 22. For the past five years, Defendants have demonstrated a pattern of trademark infringement, dilution, unfair competition, and cyberpiracy by misusing Plaintiff's registered and famous mark despite demands by Plaintiffto cease and desist. 23. In using Plaintiff's mark "Sofa Selections," Defendants have attempted to pass themselves off as the same as, or affiliated with, Sofa Selections and trade on Plaintiff's reputation of selling a variety of quality sofas and furniture to the public at affordable prices. 24. Defendants' use of Plaintiff's mark in connection with the sale of goods and promotion of its business on the Internet and in advertising has been without Plaintiff's consent, has been used in a manner likely to cause confusion, mistake, and to deceive as to the source or origin of the goods, and constitutes illegal trademark infringement under Pennsylvania law. 25. Defendants' use of Plaintiff' s mark was with knowledge of the existence of Plaintiff's business, and with knowledge of Plaintiff's use of its mark Sofa Selections, and was done in bad faith. 26 In using Plaintiff's mark, Defendants have willfully intended to trade on the Plaintiff's reputation, to cause dilution to the mark, and to lure consumers to Sofas Unlimited with the wrong impression that it is affiliated with Plaintiff, Sofas Selections. 27. In using Plaintiff's mark, Defendants have in fact diluted the effectiveness of the mark "Sofa Selections" in promoting PlaintiWs enterprise in advertising and on the Internet. 28. Defendants' unauthorized use of Plaintiff's mark irreparably harms Plaintiff by depriving Plaintiff of control of its reputation, by causing loss of good will and trade, by confusing consumers, and by diluting the effectiveness of its mark. 29. Enjoining Defendants from using Plaintiff's mark, Sofa Selections, will not cause harm to Defendant. 30. Enjoining Defendants from using Plaintiff's mark, Sofa Selections, is in the public interest. COUNT I PENNSYLVANIA TRADEMARK INFRINGEMENT 31. Paragraphs 1 through 30 are incorporated herein as if fully set forth. 32. Defendants are illegally infringing upon Plaintiff's registered mark through unauthorized use of the mark on the Internet, and in advertising, in violation of 54 Pa.C.S. § 1123. 33. Defendants have infringed upon Plaintiff's mark with knowledge and in bad faith. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award damages, costs, and reasonable attorney fees to Plaintiff as permitted by the Pennsylvania Trademark Act, 54 Pa.C.S §§ 1101 et seq. COUNT H PENNSYLVANIA TRADEMARK DILUTION 34. Paragraphs 1 through 33 are incorporated herein as if fully set forth. 35. Defendants' unauthorized commercial use of Plaintiff's famous and distinctive mark has diluted the effectiveness of the mark in violation of Pennsylvania law, 54 Pa.C.S. § 1124. 36. Defendants have willfully intended to trade on Plaintiff's reputation and/or cause dilution of the mark in violation of Pennsylvania law, 54 Pa.C.S. § 1124. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award damages, costs, and reasonable attorney fees to Plaintiff as permitted by 54 Pa.C.S. §§ 1101 et seq. COUNT III UNFAIR COMPETITION UNDER SECTION 43 OF THE LANHAM ACT, 15 U.S.C. § 1125 AND PENNSYLVANIA COMMON LAW UNFAIR COMPETITION 37. 38. § l 2s. Paragraphs 1 through 36 are incorporated herein as if fully set forth. This Court has jurisdiction to hear claims brought under the Lanham Act, 15 US.C. 39. Defendants have violated the Lanham Act, 15 U.S.C. § 1125, by using Plaintiff's mark in a manner likely to cause confusion among consumers as to the affiliation, connection, or association of Defendants' business, Sofas Unlimited. 40. Defendants have intentionally misused Plaintiff's mark in bad faith in an attempt to pass themselves off as affiliated with Plaintiff and cause actual confusion among consumers. 41. Defendants' behavior has been so egregious as to constitute an exceptional case requiring an award of damages, lost profits, and attorney fees. WHEREFORE, Plaintiff requests that this Court enjoin Defendants fi.om using Plaintiff's trademark, Sofa Selections, and award treble damages, lost profits, costs, and reasonable attorney fees to Plaintiff as permitted by 15 U.S.C. § § 1051 et seq and Pennsylvania common law. COUNT IV VIOLATION OF TIlE ANTICYBERQUATTING CONSUMER PROTECTION ACT OF 1999, SECTION 1125(d) OF THE LANHAM ACT 42. 43. § 1125. 44. Paragraphs 1 through 41 are incorporated herein as if fully set forth. This Court has jurisdiction to hear claims brought under the Lanham Act, 15 U.S.C. Defendants have violated Section 1125(d) of the Lanham Act by registering, re- registering, and using Plaintiff's mark as a domain name to point consumers to its own website promoting Sofas Unlimited with the intent to profit therefrom. 45. Defendants have acted in bad faith by intentionally registering, and re-registering, Plaintiff's mark with knowledge of Plaintiff's claim to, or use of, the mark Sofa Selections. 46. Defendants' behavior has been so egregious as to constitute an exceptional case requiring an award of damages, lost profits, and attorney fees. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using PlaintiWs trademark, Sofa Selections, and award treble damages, lost profits, costs, and reasonable attorney fees to Plaintiff as permitted by 15 U.S.C § § 1051 et seq., and to do the following: a. Order the transfer of the registration of the domain names "sofaselections.com' and "sofaselections. net" to Plaintiff pursuant t o 15 U.S. C § 1125 (d)( 1 )(C)~ and b. Assess and award statutory damages in the amount of$100,000.00 per domain name as permitted by 15 U.S.C. § 1117(d). Date: September 23, 2002 MARTSON DEARDORFF WILLIAMS & OTTO By ~~_ Carl C. Risch, Esquire ID Number 75901 Ten East High Street Carlisle, PA 17013-3093 (717) 243-3341 A ttorneysfor Plaintiff L. SPITLER LUMBER CO., INC. HAMPDEN CENTRE 4920 CARl ISLE PIKE MECHANICSBDRG PA, 17055 CERTIFIED MAIL Sofas Unlimited 4713 Carlisle Pike Mechanicsburg PA 17055 June 24, 1997 Your recent ads using the phrase "SOFA SELECTION,° and "LEATHER SELECTION" are an infringement on the marks owned by this company. You are to cease and desist immediately i~ their use whatsoever. Any use from this date will result in legal actio~ against Sofas Unlimited, The Patriot News and any other ~ediu~ which pro~otes the use of the~ for you. Sincerely, Donald L. Spitler Presi dent EXHIBIT A Do L. SPITLER LUMBER CO., 5430 JONESTOWN ROAD HARRISBURG PA, 17112 717 763-8912 717 763-9341 FAX INC. September 19, 2002 CERTIFIED MAIL JACK LASHAY SOFAS UNLIMITED 4713 CARLISLE PIKE MECHANICSBURG PA 17050 Dear MR LASHAY: IT HAS COME TO MY ATTENTION THAT YOU HAVE STOLEN THE SOFA SELECTIONS TRADE NA24E TO USE AS YOUR DOMAIN NAME. I DEMAND THAT YOU STOP IT'S USE I~4EDIATELY. I ALSO DEMAND THAT YOU I~4EDIATELX ARRANGE TO HAVE THE DOMAIN NAME OF SOFA SELECTIONS TRANSFERRED TO D. L. SPITLER LUMBER CO., INC., AND ASSUME SUCH EXPENSE AS WELL AS THE EXPENSE OF ESTABLISHING THE WEB SITE. IF THE ABOVE DEMANDS ARE MET I~4EDIATELX, I WILL LOOK FAVORABLY TO ACCEPTING A REASONABLE SETTLEMENT FOR THE HOR~ENDOUS FINANCIAL LOSS TO D L SPITLER LUMBER CO., INC. DBA SOFA SELECTIONS. Donald Spitler President EXHIBIT B ~9~2/2~02 14:45 717~4S1S50 MDWO F~GE 1~/i~ Donald L. Spitler, who is President olD. L. Spitler Lumber Co., hac, acknowledges that he has the authority to execute this Verification on behalf of the D.L. Spider Lumber Co., Inc and certifies that the foregoing Complaint is based upon information which has been gathered by my counsel in the preparation of the lawsuit. The language of this document is o~'counse[ and not my own. I have read the document and to the extend that the document is based upon information which ! have gix,en to my counsel, it is true and correct to the best of my knowledge, information, and belief To the extent that the content oftlae document is that of counsel, I have relied upon counsel in making this Verification. This statement and Verification is made subject to the ~nalties of I S Pa.C, S. § 4904 relating to unsworn falsification to autlaoffties, which provides that It' I make knowingly false averments, ! may be subject to criminal peralties. D. L. SPITLER LUMBER CO., 1NC., t/d/b/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, 1NC., t/d/b/a SOFAS UNLIMITED Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION- EQUITY NO. O TO: JOHN M. LASHAY, ET AL., YOU ARE HEREBY NOTIFIED TO PLEAD TO THE ENCLOSED MOTION WITHIN 20 DAYS FROM SERVICE HEREOF OR A DEFAULT JUDGMENT MAY BE ENTERED AGAINST YOU. PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION AND NOW, comes the Plaintiff, D. L. Spitler Lumber Co., Inc., t/dPo/a Sofa Selections, by and through its attorneys, Martson Deardorff Williams & Otto, and hereby moves this Court for a preliminary injunction under Pa. R.CP. 1531 enjoining and restraining Defendants pending final hearing and determination of this action from further interfering with Plaintiff's trademark, and in support avers as follows: 1. Unless Defendants are effectively restrained and enjoined from their improper conduct, as described with particularity in the Verified Complaint filed in this case and in this Motion for Preliminary Injunction, Plaintiff will continue to suffer immediate, substantial, and irreparable harm by being powerless to stop Defendants unauthorized use of Plaintiff's mark. 2. Plaintiff filed his Verified Complaint on September 23, 2002. 3. Defendants' use of Plaintiff's mark causes consumers to be deceived, confused, and misled into the belief that Defendants are affiliated with Plaintiff, Sofa Selections. 4. Defendants' continued unauthorized use of Plaintiff's mark dilutes the effectiveness of the mark "Sofa Selections" in promoting Plaintiff's enterprise through advertising and on the Internet. 5. Defendants' unauthorized use of Plaintiff's mark deprives Plaintiff of control over its reputation, loss of good will and trade, and dilutes the effectiveness of Plaintiff's mark. 6. Defendants' unauthorized use of Plaintiff's mark poses a direct threat to the stability of Plaintiff's business reputation, good will and trade, and the effectiveness of Plaintiff's mark. 7. Defendants are intentionally infringing upon Plaintiff' s mark with the intent to lure consumers away from Plaintiff's business and to Defendants' business. 8. The issuance ora preliminary injunction will not cause undue inconvenience or loss to the Defendants, but will prevent irreparable injury to the Plaintiff, and is in the public interest. 9. Plaintiff is likely to succeed in proving at trial that the Defendants' activities are actionable and enjoinable. 10. In support of this Motion for Preliminary Injunction, Plaintiff incorporates herein the Verified Complaint filed in this action as if the same were fully restated at length. WHEREFORE, Plaintiffs respectfully request that this Court enter an Order enjoining and restraining Defendants and their employees, agents, assigns, and successors in interest from further infringing upon Plaintiff's trademark, "Sofa Selections," and retain jurisdiction of this matter to ensure that the Court's order and decree is obeyed. Plaintiffs request that this Order specifically enjoin, but not be limited to, Defendants' use of the trademark, "Sofa Selections," on the Internet. Date: September 23, 2002 MAR~ WILLIAMS PA Attorney I.D. No. 75901 Ten East High Street Carlisle, PA 17013 (717) 243-3341 Attorneys for Plaintiff & OTTO D. L. SPITLER LUMBER CO., INC., t/d/b/a SOFA SELECTIONS Plaintiff JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/dPo/a SOFAS UNLIMITED Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION- EQUITY NO, Ool - ~. o Z ORDER AND NOW, this ~4]Vday of /~ ,2002, upon consideration of the attached Motion for Preliminary Injunction, a hearing in the above-captioned matter is hereby setfor (~3~ /0r ,2002, at /.'~0 o'clock, in Counroom #_ ~ Cumberland County, Pennsylvania. Jill M. Lashay, Esquire Klett, Rooney, Lieber & Schorling, P.C. 240 N. Third Street, Suite 600 Harrisburg, PA 17101-1503 (717) 231-77220 Attorneys for Defendants D.L. SPITLER LUMBER CO., INC., : IN THE COURT OF COMMON PLEAS tYdPola SOFA SELECTIONS, Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC., t/dPo/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED, Defendants CUMBERLAND COUNTY, PENNSYLVANIA NO. 02-4602 TO: NOTICE OF FILING OF NOTICE OF REMOVAL FILED ON BEHALF OF DEFENDANTS JOHN M. LASHAY, ET AL. Office of the Prothonotary Cumberland County Court of Common Pleas One Courthouse Square Carlisle, PA 17013-3387 You are hereby notified, pursuant to 28 U.S.C. ~ 1446(d), that on October 7, 2002, Defendants John M. Lashay, et al., filed a Notice of Removal of the above action from the Court of Common Pleas of Cumberland County to the United States District Court for the Middle District of Pennsylvania. A copy of the Notice of Removal is attached. Dated: October 8, 2002 Respectfully submitted, J21111eMn ~ .~whaar~slaw ' ' k..~ ;- ~ -~ KLETT LIEBER ROONEY & SCHORLING 240 N. Third Street, Suite 600, Harrisburg, PA 17101-1503 (717)231-7700 Attorneys for Defendants KRLSHAR:21309.1 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF PENNSYLVANIA D.L. SPITLER LUMBER CO., INC., t/d/b/a SOFA SELECTIONS, Plaintiff Vo JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC., t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED, Defendants 1 ::CV 02-1793 CIVIL ACTION NO. FILED HARRISBURG, PA : OCT 0 7 2002 NOTICE OF REMOVAL MARY E. D'AN~Ft/EA, CLERk' Per ,, ~-~,/( T~ " Dep6ty-gl'erk Pursuant to 28 U.S.C. § 1441, Defendants John M. Lashay, Sofa Discounters, Inc. t/d/b/a Sofas Unlimited, and Sofa Discounters East, Inc., t/d/b/a Sofas Unlimited (collectively referred to as "Defendants"), by their undersigned attorneys, hereby remove this action from the Court of Common Pleas of Cumberland County. Removal is based on the following: KRLSHAR:21309.1 1. On or about September 25, 2002, PlaintiffD.L. Spitler Lumber Co. Inc., t/d/b/a Sofa Selections ("Plaintiff"), commenced an action against Defendants in the Court of Common Pleas of Cumberland County, Pennsylvania captioned "D.L. Spitler Lumber Co. Inc., t/d/b/a Sofa Selections v. John M. Lashay, Sofa Discounters, Inc. t/d/b/a Sofas Unlimited, and Sofa Discounters East, Inc., t/d/b/a Sofas Unlimited," Civil Action No. 02-4602. 2. Defendants received a copy of Plaintiff's Complaint on September 27, 2002. A copy of the Complaint is attached hereto as Exhibit "A." On the same date, Defendants received a copy of Plaintiff' s Motion for Preliminary Injunction and Order scheduling hearing on October 10, 2002. A' copy of the Motion and Order is attached hereto as Exhibit "B." As of this date, the Defendants have received no other process or pleadings in this case. 3. In the Complaint, Plaintiff alleges that Defendants have illegally infringed upon and diluted the effectiveness of Plaintiff's distinctive and famous mark through unauthorized use of such mark on the Internet and in advertising in violation of Pennsylvania law, 54 Pa. C.S. §§ 1123-1124. 4. In the Complaint, Plaintiff alleges that Defendants have violated the Lanham Act, 15 U.S.C. § 1125, by intentionally misusing Plaintiff's mark in a bad faith attempt to pass themselves off as affiliated with Plaintiff and to KRLSHAR:21309.1 2 cause confusion among consumers as to the affiliation, connection or association of Defendants' business. 5. Plaintiff further asserts in the Complaint that Defendants have, intentionally and in bad faith, violated Section 1125(d) of the Lanham Act, i.e., The Anti-Cybersquatting Consumer Protection Act of 1999, by registering, re- registering and using Plaintiffs mark as a domain name to point consumers to its own website with the intent to profit therefrom. The Lanham Act, and all amendments thereto, is a law of the United States. 7. Plaintiffs' action is therefore one over which the United States District Court has original jurisdiction pursuant to 28 U.S.C. § 1331, which states, in pertinent part, "The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States." 8. 28 U.S.C. § 1441(a) provides that "any civil action brought in a State court of which the district courts of the United States have original jurisdiction, may be removed by the defendant or the defendants, to the district court of the United States for the district and division embracing the place where such action is pending." KRLSHAR:21309. I 3 9. 28 U.S.C. § 1441(b) provides that "[a]ny civil action of which the district courts have original jurisdiction founded on a claim or right arising under the Constitution, treaties or laws of the United States shall be removable without regard to the citizenship or residence of the parties." 10. 28 U.S.C. § 1441(c) provides that "[w]henever a separate and independent claim or cause of action within the jurisdiction conferred by section 1331 of this title is joined with one or more otherwise non-removable claims or causes of action, the entire case may be removed and the district court may determine all issues therein, or, in its discretion, may remand all matters in which State law predominates." 11. Because this is an action over which federal district courts have original jurisdiction, and because Cumberland County is embraced by the United States District Court for the Middle District 0fPennsylvania, the action involving both federal and pendant state claims is prope~'ly removed to the United States District Court for the Middle District of Pennsylvania under 28 U.S.C. § 1441 (a), (b) and (c). 12. This Notice is timely under 28 U.S.C. § 1446(b) in that it is filed within thirty (30) days after receipt by Defendants of a copy of the Complaint, the first pleading from which it could be ascertained that the case is KRLSHAR:21309.1 4 removable. WHEREFORE, Defendants hereby remove the above action now pending in the Court of Common Pleas of Cumberland County, Pennsylvania to the United States District Court for the Middle District of Pennsylvania. Respectfully submitted, Dated: October 7, 2002 Jill M. L~shay ' ~ Pa. I.D. No. 79985 Allen C. Warshaw Pa. I.D. No. 17145 KLETT ROONEY LIEBER & SCHORLING A Professional Corporation 240 N. Third Street, Suite 600, Harrisburg, PA 17101-1503 (717)231-7700 Attorneys for Defendants KRLSHAR:21309.1 5 © © D. L. SPITLER LUMBER CO., 1NC., t/d/b/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED Defendants 1N THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY NO. 0 ,X - qd; o NOTICE You have been sued in court. If you wish to defend against the claims set forth in the following pages, you must take action within twenty (20) days al~er this Complaint and Notice are served, by entering a written appearance personally or by attorney and filing in writing with the court your defenses or objections to the claims set forth against you. You are warned that if you fail to do so, the case may proceed without you and a judgment may be entered against you by the court without further notice for any money claimed in the Complaint or for any other claim or relief requested by the Plair,.tiffs. You may lose money or property or other fights important to you: YOU SHOULD TAKE THIS PAPER TO YOUR LAWYER AT ONCE. IF YOU DO NOT HAVE A LAWYER OR CANNOT AFFORD ONE, GO TO OR TELEPHONE THE OFFICE SET FORTH BELOW TO FIND OUT WHERE YOU CAN GET LEGAL HELP: Cumberland County Bar Association 2 Liberty Avenue Carlisle, Pennsylvania 17013 Telephone (717) 24~-3166 .. .. ~ ;.- :,,--- -:.-, ~ WILLIAMS & OTTO - .'i' '~_"'. e :..~ .:'r "...~:.::-~. ?"a.Carl C. Risch, Es~ire · '1 ~/ ~.e ..~ . ~oO.+- ID Number 75901 ~~;; ~_ ~__ Ten East High Street '- ' --- Carlisle, PA 17013 U .~~ .... C~ (717)243-3341 /lttorneys for Plaintiff Date: September 23, 200: D. L. SPITLER LUMBER CO., INC., t/dJb/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. ffd/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED, Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY NO. COMPLAINT AND NOW, comes Plaintiff, D. L. SPITLER LUMBER CO., INC. t/d/b/a SOFA SELECTIONS, by and through its attorneys, MARTSON DEARDORFF WILLIAMS & OTTO, and hereby avers as follows: 1. Plaintiff, D. L. Spitler Lumber Co., Inc., is a Pennsylvania corporation ~ith a principal place of business at 5430 Jonestown Road, Harrisburg, Dauphin County, Pennsylvania 17112. 2. The Defendant, John M. Lashay, is an adult individual residing at 155 East Lauer Lane, Hampden Township, Cumberland COunty, Penn~..ylvania 17011, who is the sole owner and manager, or is the primary owner and manager, of the other two Defendants. 3. The Defendant, Sofa Discoumers, Inc. tJd/b/a Sofas Unlimited, is a Pennsylvania corporation with a principal place of business at 4713 Carlisle Pike, Mechanicsburg, Pennsylania 17055, which engages in interstate commerce by operating a retail store in which sofas and furniture are sold to the public. 4. The Defendant, Sofa Discounters East, Inc. t/d/b/a Sofas Unlimited, is a Pennsylvania corporation with a principal place of business at 4359 Linglestown Road, Harrisburg Pennsylvania 17112, which engages in interstate commerce by operating a retail store in which sofas and furniture are sold to the public. 5. Since January 1996, Plaintiff has operated retail stores exclusively using the name "Sofa Selections" in Dauphin and Cumberland Counties, Pennsylvania, in which Plaintiff sells sofas and furniture to the public and engages in interstate commerce. 6. Plaintiff competes with other retail furniture stores in Dauphin, Perry, Cumberland, Lebanon, Lancaster, and York Counties, including Defendant Sofas Unlimited, which is engaged in a business similar to Plaintiff's, which targets a similar consumer, and which operates stores only a few miles away from Plaintiff's enterprises. 7. For the protection of Plaintiff and the public, on or about March 12, 1996, Plaintiff properly registered the trademark "Sofa Selections" with the Pennsylvania Department of State pursuant to the Pennsylvania trademark registration laws. 8. On or about November 30, 1999, Plaintiff properly registered the fictitious name "Sofa Selections" with the Pennsylvania Department of State pursuant to Pennsylvania laws concerning names of businesses. 9. Plaintiff has extensively used the mark "Sofa Selections" in newspaper advertising, in radio advertisements, in television commercials, on signs identifying the location of the business, and on all business correspondence and accounts to the point that the consuming public of Cumberland, Dauphin, Lebanon, Lancaster, Perry, and York Counties immediately associates the temt with Plaintiff's enterprise and thus the mark has become distinctive, famous, and has acquired secondary meaning. 10. In September 1999, Defendants registered the internet domain names "sofaselections.com" and "sofaselections.net," with Network Solutions, Inc. and listed themselves as authorized licensees of the domain names. 11. On or about September 10, 2002, Defendants re-registered the intemet domain names "sofaselections.com" and "sofaselections.net." 12. Defendants intentionally registered, and re-registered, these domain names, which are identical and/or confusingly similar to PlaintiWs registered trademark, in bad faith, with the intent to profit therefrom, and with knowledge that it would deprive Plaintiff of access to its registered trademark for use on the Internet. 13. Since at least September 2001, Defendants have maintained an internet website promoting the Sofas Unlimited retail stores in Dauphin and Cumberland Counties. 14. Since at least September 2001, Defendants have used Plaintiff's mark, Sofa Selections, without permission, in the form of two domain names, "sofasections.com" and "sofaselections.net," as website addresses for its website which promotes its competing retail stores, Sofas Unlimited. 15. Defendants' use of Plaintiff's mark as a domain name acts to point consumers interested in learning about Sofa Selections directly to the website promoting Plaintiff's primary competitor, Defendants' retail stores, Sofas Unlimited, and intentionally deceives consumers into believing that Defendants are affiliated with PlaintifE. 16. Plaintiff is powerless to stop Defendants' use of its mark since the domain names, "sofaselections.com" and "sofaselections.ne{," are controlled by a computer in the possession of Defendants or Defendants' agents, and no two organizations can have the same domain name. 17. Since 1996, Defendants have intentionally used the trademark "Sofa Selections" in newspaper advertising and in road signs promoting Sofas Unlimited in an attempt to confuse consumers and dilute Plaintiff's mark. 18. On or about June 24, 1997, Plaintiff sent a cease and desist letter to Sofas Unlimited demanding that it cease using the mark "Sofa Selections" in advertising. A copy of this letter is attached hereto as "Exhibit A." 19. In February 2002, an agent of Plalntiffasked an agent of Defendant John M. Lashay to surrender his registration of"sofaselections.com" and "sofaselections.net." 20. Defendant Lashay's agent indicated that Defendant Lashay refused to give up his registration of"sofaselections.com" and "sofaselections.net" despite Plaintiff's demand. 21. In September 2002, Plaintiff'sent a second cease and desist letter to Sofas UnliSted demanding that it cease using the mark "Sofa Selections" as an Internet domain name tied to its own website, sofasunlimited.com. A copy of this letter is attached hereto as "Exhibit B." 22. For the past five years, Defendants have demonstrated a pattern of trademark infringement, dilution, unfair competition, and cyberp[r~cy by misusing Plaintiff's registered and famous mark despite demands by Plalntiffto cease and desist. 23. In using Plaintiff's mark "Sofa Selections," Defendants have attempted to pass themselves off as the same as, or affiliated with, Sofa Selections and trade on Plaintiff's reputation of selling a variety of quality sofas and furniture to the public at affordable prices. 24. Defendants' use of Plaintiff's mark in connection with the sale of goods and promotion of its business on the Internet and in advertising has been without Plaintiff's consent, has been used in a manner likely to cause confusion, mistake, and to deceive as to the source or origin of the goods, and constitutes illegal trademark infringement under Pennsylvania law. 25. Defendants' use of Plaintiff's mark was with knowledge of the existence of Plaintiff's business, and with k~towledge of Plaintiff's use of its mark Sofa Selections, and was done in bad faith. 26. In using Plaintiff's mark, Defendants have willfully intended to trade on the Plaintiff's reputation, to cause dilution to the mark, and to lure consumers to Sofas Unlimited with the wrong impression that it is affiliated with Plaintiff, Sofas Selections. 27. In using Plaintiff's mark, Defendants have in fact diluted the effectiveness of the mark "Sofa Selections" in promoting Plaintiff's enterprise in advertising and on the Internet. 28. Defendants' unauthorized use of Plaintiff's mark irreparably harms Plainti~ by depriving Plaintiff of control of its reputation, by causing loss of good will and trade, by confusing consumers, and by diluting the effectiveness of its mark. 29. Enjoining Defendants from using Plaintiff's mark, Sofa Selections, will not cause harm to Defendant. 30. Enjoining Defendants from using Plaintiff's mark, Sofa Selections, is in the public interest. COUNT I PENNSYLVANIA TRADEMARK INFRINGEMENT 31. Paragraphs 1 through 30 are incorporated herein as if fully set forth. 32. Defendants are illegally infringing upon Plaintiff's registered mark through unauthorized use of the mark on the Internet, and in advertising in violation of 54 Pa.C.S. § 1123. 33. Defendants have infringed upon Plaintiff's mark with knowledge and in bad faith. WHEREFORE, Plaintiff' requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award damages, costs, and reasonable attorney fees to Plaintiff as permitted by the Pennsylvania Trademark Act, 54 Pa.C.S. §§ 1101 et seq. COUNT H PENNSYLVANIA TRADEMARK DII.UTION 34. Paragraphs 1 through 33 are incorporated herein as if fully set forth. 35. Defendants' unauthorized commercial use of Plaintiff's famous and distinctive mark has diluted the effectiveness of the mark in violation of Pennsylvania law, 54 Pa. CS. § 1124. 36. Defendants have willfully intended to trade on Plaintiff's reputation and/or cause dilution of the mark in violation of Pennsylvania law, 54 Pa. CS. § 1124. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award damages, costs, and reasonable attorney fees to Plaintiff as perafitted by 54 Pa.C.S. §§ 1101 etseq. COUNT HI UNFAIR COMPETITION UNDER SECTION 43 OF THE LANHAM ACT, 15 U.S.C. § 1125 AND PENNSYLVANIA COMMON LAW UNFAIR COMPETITION 37. 38. § 1125. Paragraphs 1 through 36 are incorporated herein as if fully sex forth. This Court has jurisdiction to hear claims brought under the Lanham Act, 15 U.S.C. 39. Defendants have violated the Lanham Act, 15 U.S.C. § 1125, by using Plaintiff's mark in a manner likely to cause confusion among consumers as to the affiliation, connection, or association of Defendants' business, Sofas Unlimited. 40. Defendants have intentionally misused Plaintiff's mark in bad faith in an attempt to pass themselves off as affiliated with Plaintiff and cause actual confusion among consumers. 41. Defendants' behavior has been so egregious as to constitute an exceptional case requiring an award of damages, lost profits, and attorney fees. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award treble damages, lost profits, costs, and reasonable attorney fees to Plaintiff as permitted by 15 U.S.C. §§ 1051 et seq and Pennsylvania common law. COUNT IV VIOLATION OF T~ ANTICYBERQUATTING CONSUMER PROTECTION ACT OF 1999, SECTION 1125(d) OF TIlE LANI~AM ACT 42. 43. § 1125. Paragraphs 1 through 41 are incorporated herein as if fully set forth. This Court has jurisdiction to hear claims brought under the Lanham Act, 15 U.S.C. Defendants have violated Section 1125(d) of the Lanham ACt by registering re- registering, and using Plaintiff's mark as a domain name to point consumers to its own website promoting Sofas Unlimited with the intent to profit therefrom. 45. Defendants have acted in bad faith by intentionally registering, and re-registering, Plaintiff's mark with knowledge &Plaintiff's claim to, or use of, the mark Sofa Selections. 46. Defendants' behavior has been so egregious as to constitute an exceptional case requiring an award of damages, lost profits, and attorney fees. WHEREFORE, Plaintiff requests that this Court enjoin Defendants from using Plaintiff's trademark, Sofa Selections, and award treble damages, lost profits, costs, and reasonable attorney fees to Plalntiffas permitted by 15 U.S.C. §§ 1051 et seq., and to do the following: a. Order the transfer of the registration of the domain names "sofaselections. com" and "sofaselections.net" to Plalntiffpursuant to 15 U.S.C. § 1125(d)(1)(C); and b. Assess and award statutory damages in the amount of $100,000.00 per domain name as permitted by 15 USC. § 1117(d). Date: September 23, 2002 MARTSON DEARDORFF WILLIAMS & OTTO Carl C. Risch, Esquire ID Number 75901 Ten East High Street Carlist.e, PA 17013-3093 (717) 243-3341 /lttorneys for Plaintiff D. L. SPITLER LUMBER CO., INC. HAMPDEN CENTRE 4920 C~RLISLE PIKE MEOHANICSBURG PA, 17055 71~1 ~6~6~ i~AX CERTIFIED MAIL June 24, 1997 Sofas Unlimited 4713 Carlisle Pike Mecha~icsburg PA 17055 Your recent ads using the phrase "SOFA SELECTION" and "'LEATHER SELECTION" are aM infringement on the marks owned by this company. You are to cease and desist immediately i~ their use whatsoever. Any use from this date will result in legal action against S~fas Unlimited, The Patriot News and any other medium which promotes the use of the~ for you. ~ Sincerely, Donald L. Spitler President EXHIBIT A D. L. SPITLER LUMBER CO., INC. 5430 JONESTOWN ROAD HARRISBURG PA, 17112 717 763-8912 717 763-9341 FAX Septe~er 19, 2002 CERTIFIED MAIL JACK LASHAY SOFAS UNLIMITED 4713 CARLISLE PIKE MECHANICSBURG PA 17050 Dear MR LASHAY: IT HAS COME TO MY ATTENTION THAT YOU HAVE STOLEN THE SOFA SELECTIONS TRADE NAME TO USE AS YOUR DOMAIN NAME. I DEMAND THAT YOU STOP IT'S USE I~IATELX. I ALSO DEMAND THAT YOU I~L%TELX ARRANGE TO HAVE THE DOMAIN NAME OF SOFA SELECTIONS TRANSFERRED TO D. L. SPITLER LUMBER CO., INC., AND ASSUME SUCH EXPENSE AS WELL AS THE EXPENSE OF ESTABLISHING THE WEB SITE. IF THE ABOVE DEMANDS ARE MET ~IA~ELX~ I WILL LOOK FAVORABLY TO ACCEPTING A REASONABLE SETTLEMENT FOR THE HOrrenDOUS FINANCIAL LOSS TO D L SPITLER LUMBER CO., INC. DBA SOFA SELECTIONS. Donald Spitler President EXHIBIT B Donald L. Spitler, who is P~e~idem olD. L. Spitler Lumber Co., l.nc., acknowled8~ that he has the a~thorky to execute this Verification on behalf of the D.L. Spiller Lumber Co., Ina. and certifies that the foregoing Complaint is based upon information which has been gathered by my counsel in the preparation of the htwsuit~ The language ofthls document is of counsel and not my own. I have read the doeuraent and tn the caend that the document is based upon information which I P. ave given to my counsel, it is true a~d correct to the best of my knowledge, ir/orm~tion, and belief To the extent thaz tl~e content of the document is that ef¢ounsel, .[ have relied upon ¢ounsd in making this Verification, This statement and Verification is made subject to the penalties of 18 Pa.C.S. § 4904 relaling to unswom falsification to autbmfifies, which provides that Lt'I make knowingly false averments~ I may be s~bject Io criminal penalties. Date: el" 16- D. L. SPITLER LUMBER CO., INC., t/clgo/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION- EQUITY NO. ~.~. ,~ (a~ ~.L. ORDER A_ND NOW, this ,.m73 day of .ZJ_ ~to_. ,2002, upon consideration of I the attached Motion for Preliminary Injunction,. a hearing in the above-captioned matter is he. reby set for /~) < _~?.~t,~ /O ,2002, at/, :~,::~ o'clock, in Courtroom # Cumberland County, Pennsylvania. BY THE COURT D. L. SPITLER LUMBER CO., INC., t/d/b/a SOFA SELECTIONS Plaintiff JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/d/b/a SOFAS UNLIMITED Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY NO. ORDER AND NOW, this ~ day of ,2002, after a heating and on consideration of Plaintiff's Verified Complaint and Motion for Preliminary Injunction, and it appearing to the Court that immediate and irreparable damage and injury will continue to res. u. lt to the Plaintiffbefore the case can be fully heard on its merits if a preliminary injunction is not issued, it is hereby ORDERED AND DECREED that: 1. Defendants, and their employees, agents, assigns, and successors in interest, are enjoined and restrained from further interfering with Plaintiff' s trademark, "Sofa Selections;" 2. Defendants, and their employees, agents, assigns, and successors in interest, are enjoined and restrained from using Plaintiff's trademark} "Sofa Selections," on the Internet. 3. This Order shall remain in full force and effect until such time as this Court specifically orders otherwise; and 4. Plaintiffs may proceed in their action for such other and further relief as this Court may deem appropriate, proper, necessary, and just. BY THE COURT D. L. SPITLER LUMBER CO., INC., tYd/b/a SOFA SELECTIONS Plaintiff V. JOHN M. LASHAY, individual, SOFA DISCOUNTERS, INC. t/d/b/a SOFAS UNLIMITED, and SOFA DISCOUNTERS EAST, INC., t/dYo/a SOFAS UNLIMITED Defendants IN THE COURT OF COMMON PLEAS OF CUMBERLAND COUNTY, PENNSYLVANIA CIVIL ACTION - EQUITY NO. TO: JOHN M. LASHAY, ET AL., YOU ARE HEREBY NOTIFIED TO PLEAD TO THE ENCLOSED MOTION WITHIN 20 DAYS FROM SERVICE HEREOF OR A DEFAULT JUDGMENT MAY BE ENTERED AGAINST YOU. PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION AND NOW, comes the Plaintiff, D. L. Spitler Lumber Co., Inc., t/clgo/a Sofa Selectiona, by and through its attorneys, Martson DeardorffWilliams & Otto, and hereby moves this Court for a preliminary injunction under Pa. R.C.P. 1531 enjoining and restraining Defendants pending final heating and determination of this action from further interfering with Plaintiff's trademark, and in support avers as follows: 1. Unless Defendants are effectively restrained and enjoined from their improper conduct, as described with particularity in the Verified Complaint filed in this case and in this Motion for Preliminary Injunction, Plaintiff will continue to suffer immediate, substantial, and irreparable leu',,, by being powerless to stop Defendants unauthorized use of Plaintiff's mark. 2. Plaintifffiled his Verified Complaint on September 23, 2002. 3. Defendants' use of Plaintiff's mark causes consumers to be deceived, confused, and misled into the belief that Defendants are affiliated with Plaintiff, Sofa Selections. 4. Defendants' continued unauthorized use of Plaintiff's mark dilutes the effectiveness of the mark "Sofa Selections" in promoting Plaintiff's enterprise through advertising and on the Intemet. 5. Defendants' unauthorized use of Plaintiff's mark deprives Plaintiff of control over its reputation, loss of good will and trade, and dilutes the effectiveness of PlaintifFs mark. 6. Defendants' unauthorized use of PlaintitTs mark poses a direct threat to the stability of Plaintiff's business reputation, good will and trade, and the effectiveness of PlaintitTs mark. 7. Defendants are intentionally infringing upon Plaintiff's mark with the iment to lure consumers away from Plaintiff's business and to Defendants' business. 8. The issuance of a preliminary injunction will not cause undue inconvenience or loss to the Defendants, but will prevent irreparable injury to the Plaintiff, and is in the public interest. 9. Plaintiff is likely to succeed in proving at trial that the Defendants' activities are actionable and enjoinable. 10. In support of this Motion for Preliminary Injunction, Plaintiffincorporates herein the Verified Complaint filed in this action as if the same were fully restated at length. WHEREFORE, Plaintiffs respectfully request that this Court enter an Order enjoining and restraining Defendants and their employees, agems, assigns, and successors in interest fi'om further infringing upon Plaimiff's trademark, "Sofa Selections," and retain jurisdiction of this matter to ensure that the Court's order and decree is obeyed. Plaintiffs request that this Order specifically enjoin, but not be limited to, Defendants' use of the trademark, "Sofa Selections," on the Imemet. Date: September 23, 2002 MAR .~~ WILLIAMS & OTTO By ~ Carl L. m ch, PA Attorney I.D. No. 75901 Ten East High Street Carlisle, PA 17013 (717) 243-3341 Attorneys for Plaintiff CERTIFICATE OF SERVICE I hereby certify that a tree and correct copy of the foregoing Notice of Removal was served upon counsel for Plaintiffs, by first class mail, postage prepaid, on October 7, 2002, at the following address: Carl C. Risch, Esquire MARTSON DEARDORFF WILLIAMS & OTTO ID Number 75901 Ten East High Street Carlisle, PA 17013-3093 Jill Nff. Lashaf'~,./ ' ' d- KRLSHAR:21309.1 CERTIFICATE OF SERVICE I hereby certify that a tree and correct copy of the foregoing Notice of Removal was served upon counsel for Plaintiffs, by first class mail, postage prepaid, on October 8, 2002, at the following address: Carl C. Risch, Esquire MARTSON DEARDORFF WILLIAMS & OTTO ID Number 75901 Ten East High Street Carlisle, PA 17013-3093 KRLSHAR:21309.1