ATLANTA (CN) - A nonprofit working for HIV prevention claims in court that an online dating service not only infringed its "Mister" trademark, it uses it to promote unsafe sex among HIV-positive men.
Positive Impact sued DH Services in Federal Court, alleging trademark infringement and dilution of its "Mister" mark.
Based in Atlanta, Positive Impact offers health counseling, testing and HIV prevention services to people in the metropolitan Atlanta area. The nonprofit relies on grants and private donations, and targets mostly gay men and other people affected by HIV or at risk for contracting HIV, according to the complaint.
Positive Impact claims it has used the Mister mark to promote its counseling and prevention services since at least early 2010. The mark has been continuously associated with the organization's Mister Community Center, a drop-in center for testing, information and counseling, with its website, mistercenter.org, and with its various workshops and events, according to the lawsuit.
Positive Impact claims that New York-based DH Services, which runs an online dating site and iPhone application, started using an identical mark in May 2011.
DH has no affiliation with Positive Impact and uses the mark to promote social networking and dating services for gay men, according to the complaint.
"In mid-2011, defendant DH began a wide-scale roll-out of a website and downloadable mobile application, or 'app,' offering online dating and social networking services targeted to gay men under the marks Mister and Mr.," the complaint states. "The target audience for each party's services is therefore identical. DH's dating app offers customized options for its members that are entirely antithetical to the health counseling and HIV prevention services that Positive Impact provides under the Mister mark. Specifically, DH's 'Mister' app solicits gay men to search for and create profiles soliciting a broad range of sexual encounters, including unprotected sex with men who have identified themselves as HIV-positive."
Positive Impact claims it asked DH to stop using the Mister trademark, but DH refused and filed a preemptive lawsuit in the Southern District of New York, seeking a declaration of non-infringement.
Positive Impact says its motion to dismiss that action is pending in New York.
"Since filing its action in New York, DH has also engaged in a pattern of bullying behavior, including trying to attack Positive Impact's superior trademark rights by allegedly purchasing a third party's common law rights in a Mr. mark for a once-a-year party in San Francisco, Calif. (held, on information and belief, only a total of five times prior to DH's acquisition) and holding a highly publicized 'launch' party for the 'Mister' app in Atlanta in August 2013," the complaint states. "Notwithstanding its actual knowledge of Positive Impact's superior rights, DH is attempting to use its superior resources to overwhelm Positive Impact and cause irreparable harm to its trademark rights." (Parentheses in complaint).
In April 2011, DH applied to register the marks Mister and Mr. with the U.S. Patent and Trademark Office, claiming a first-use date of May 11, 2011, according to the complaint.
Positive Impact claims DH's use and promotion of the Mister mark has confused consumers and sponsors, and harmed Positive Impact's reputation and goodwill.
"DH's use of the DH Mister marks in association with a dating service that is used to solicit unsafe sex among gay men is antithetical to Positive Impact's mission and use of its Mister mark, and it dilutes and tarnishes Positive Impact's rights in its Mister mark and is likely to cause confusion," the complaint states.
Positive Impact seeks an injunction and compensatory and punitive damages for trademark infringement, unfair competition, unfair trade practices and trademark dilution, under federal and Georgia laws.
It is represented by Christopher Bussert with Kilpatrick Townsend & Stockton.
DH Services CEO Carl Sandler told Courthouse News in an email that he cannot comment on pending litigation.