To The
FBI FEDERAL BUREAU OF INVESTIGATION
Copy to: Department of Justice
US EMBASSY BOGOTA COLOMBIA
US GOVERNMENT.
REF: COMPLAINT ID: I 1506071229174771
OF: TOTAL PLAY INC. AND TOTALPLAY S.A.S.
AGAINST: GO DADDY INC ARIZONA USA / TV AZTECA SAB OF CV MEXICO D.F.
COMPLAINT ID : unauthorized transfer of assets, www.total-play.com www.total-play.co domains. transferred by Go Daddy INC and usufruct and used by TV AZTECA SAB DE CV, without complaints have been completed and legal requirements to the competent authorities
The panel comprised: David Quinto (Hollywood, Ca, USA), Loureiro Da Silva (Rio de Janeiro, Brazil) and Pablo Palazzi (Buenos Aires, Argentina). They disregarded order more tests and failed regardless of who TOTAL PLAY INC, owns the trademarks and trade names TOTALPLAY® in Colombia and the United States. Without investigating, the company GripGuard Inc changed its name to TOTAL PLAY INC. legally registered with the Department of State of New York and to the Chamber of Commerce of Barranquilla. Pursuing complaint with the prosecution of Colombia because there was violation of the right to personal and professional privacy and human rights of the natural person JOHNY ALFONSO ROMERO ROCHA. WIPO has not acted background on the subject when it is your duty to do so
JOHNY ALFONSO ROMERO ROCHA, male, of legal age and domiciled in Barranquilla, Colombia, identified with Citizenship Card 72.200.057 from Barranquilla, passport number AM 852285 from COLOMBIA, social security number 598-52-66//, DIRECTOR OF TOTAL PLAY INC AND TOTALPLAY SAS, acting on behalf and in representation of the corporations TOTAL PLAY INC. and TOTALPLAY S.A.S., I hereby and respectfully represent that I am filing COMPLAINT against the corporations: GO DADDY INC Represented by Blake Irving and TVAZTECA S.A.B. DE C.V., Foreign Company Legally Represented by Mr. Darío de Jesus Rodríguez Villicaña, Francisco Xavier Borrego Hinojosa Linage or Who does substitute him at the time of Service of Notice of this action, and TVAZTECA SUCURSAL COLOMBIA, identified with NIT 900.474.762-2 Branch Office of TVAZTECA S.A.B. DE C.V. in Colombia and legally represented by Ms. GLADYS ALEXANDRA REYES GOMEZ or Who shall substitute her at the time of Service of Notice of this action, all of the above pursuant the following
RECITALS:
- On August 10th of 2011 was created in the State of New York, in the United States, the company GRIPGUARD INC. as a corporation, under section 402 of the Corporate Business Law, designating Mr. JOHNY ALFONSO ROMERO ROCHA as Director;
GRIPGUARD INC. did use the trademark and trade name TOTALPLAY for the first time and as from August 31st 2011, and in commerce as from October 31st 2011, proceeding to request the awarding of the exclusive registration of said rights on December 21st 2011, for the nominative trademark TOTALPLAY and on January 3rd 2012 for the mixed trademark TOTALPLAY.
Upon completion of all relevant procedures, the aforementioned trademarks were awarded through the following registries: for the mixed trademark TOTALPLAY: Reg. No. 4190587 dated August 14th 2012, for the nominative trademark TOTALPLAY: Reg. No. 4243480 dated November 13th 2012, both registrations are for the International Nice Class 25 that does comprise Clothing, Footwear and Hat manufacturing in general
All registrations were awarded by the Federal Department of Trademarks and Patents of the United States.
GRIPGUARD INC. pursuant the Free Trade Agreement executed between the U.S. and Colombia, exercising the priority replevin right provided for at the Paris Covenant, did apply for the registration for Colombia of the trade name TOTALPLAY on December 29th 2011, nominative trademark TOTALPLAY on December 29th 2011, both with priority at December 21st 2011, date when registration in the United States was applied for, and the mixed trademark TOTALPLAY. On April 15th 2012, with priority at January 3rd 2012, date when registration in the United States was applied for, all of the above for International Nice Class 25
These registrations in Colombia were granted on the following dates: the trade name through Resolution 1511 dated January 24th 2012 and Deposit Certificate No. 20718 dated January 24th 2012, the nominative trademark through resolution 59232 dated September 28th 2012 and Certificate No. 467274 and the mixed trademark through resolution No. 59224 dated September 28th 2012 and Certificate No. 467273
All of the aforementioned documents were issued by the Superintendence of Industry and Commerce of Colombia
We hereby clarify to the Court that GRIPGUARD INC. requested the change of the corporate name or firm name GRIPGUARD INC. to TOTAL PLAY INC. at the New York State Department on April 23rd 2012, with filing No. 120508000091, said proceedings were completed on May 8th 2012, certificated by the Secretary of the Department of State of the State of New York DANIEL E. SHAPIRO
Pursuant all of the above it is established with absolute clarity that the legitimate owner of the aforementioned trademarks, both in the United States as well as in Colombia is TOTAL PLAY INC.
- Throughout the application and awarding proceedings for the trademarks' registration in the United States, no opposition nor claims from any corporation or individual were filed, thus, said proceedings were satisfactorily completed for GRIPGUARD INC. currently TOTAL PLAY INC.
- Throughout the proceedings for application and award of the trademarks' registration in Colombia, the company TVAZTECA S.A.B. DE C.V. did file objection to the registration thereof, yet eventually the Director of Distinctive Signs of the Superintendence of Industry and Commerce, through Resolution 59224 dated September 28th 2012 and 59232 dated September 28th 2012 did rule said objections as groundless and the trademarks' registrations were awarded to GRIPGUARD INC. currently TOTAL PLAY INC., the aforementioned resolutions were appealed by TVAZTECA S.A.B. DE C.V. but the decisions contested were confirmed through resolutions 603 and 604 dated January 22nd 2013 by the Deputy Superintendent of Industry and Commerce at the Superintendence of Industry and Commerce of Colombia
- The Corporation TOTAL PLAY INC. as the legitimate owner of the aforementioned trademarks, for the due publicity and legitimate use in commerce uses at the world-wide WEB the following domain names: TOTAL-PLAY.COM, TOTALPLAY.COM.CO, TOTAL-PLAY.CO, TOTAL-PLAY.COM.CO and MITOTALPLAY.COM.CO the registrant and holder of title of these domain manes in the internet is the corporation TOTAL PLAY INC. who has been exercising the legitimate utilization of the aforementioned trademarks and domain names quite some time before TVAZTECA S.A.B. DE C.V. did file any claim
- Due to the fact it did not obtain positive results in Colombia through the objections filed with regards to the aforementioned trademarks, the company TVAZTECA S.A.B. DE C.V. did file a complaint at the ARBITRATION AND MEDIATION CENTER OF THE WORLD COPYRIGHTS ORGANIZATION in Switzerland, on this occasion in view of the presumed illegitimate utilization by TOTAL PLAY INC. of the domain names www.total-play.com, www.totalplay.com.co, www.mitotalplay.com.co, www.total-play.com.co, and www.total-play.co, the juridical or administrative grounds of the complaint are based in provisions at the Uniform Policy for the Settlement of Controversies on the Matter of Domain Names, Article 4°, sections a. – b. – and c., and in the Regulations of the Uniform Policy for the Settlement of Controversies on the Matter of Domain Names, Article 3.- it being a biased, ill-advised complaint with false arguments that does not state the facts in the actual manner they did occur, whereby the claimants did manage to induce to error the ruling officials, this eventually concluded in a ruling against TOTAL PLAY INC. whereby the registers GODADDY.COM and MI.COM.CO are ordered to transfer the domain names subject of dispute to TVAZTECA S.A.B. DE C.V.
- At the ruling or resolution was not taken into consideration the fact that GRIPGUARD INC. corporation is the same corporation as TOTAL PLAY INC., and the administrative experts' panel did not apply the same body of rules or regulations that do govern this procedure, such as article 12th, that reads:
"Besides the complaint and reply writ, the group pf experts, pursuant their legal powers, could request other depositions or documents from either party"
And, the same regulations, as part of the powers granted thereby, allows the panel of experts to extend the terms fixed thereat, (article 10).
This means that the panel was presented the doubt with regards to the corporation that actually is the owner of the domain names and per se, the former did assume, without any further research, that there did not exist any relationship between the two corporations, when it has been actually established that it is the same juridical person. GRIPGUARD INC. is the same TOTAL PLAY INC.
By assuming this incorrect position, the OMPI panel of experts did determine in a wrong manner that TOTAL PLAY INC. has no rights nor legitimate interests with regards to the domain names subject to dispute, and as corollary I hereby foist Bad Faith to the defendant in the use of the aforementioned domain names. Action that has caused huge damage to TOTAL PLAY INC.
- Notwithstanding the aforementioned decision, the previously quoted Regulations at Article 18 and the OMPI Policy at Article 4 paragraph K, grant the parties the possibility to file at competent jurisdiction in their respective countries, all claims or complaints about facts investigated or decided upon by the former
The claimant, at the complaint petition in Spanish before OMPI did state that it would be subject to Colombian Jurisdiction, and the complaint petition in English leaves open the possibilities provided for at said regulations, to proceed at the jurisdiction of either party.
- In the event the OMPI resolution whereby it is ordered to transfer the domain names subject to dispute from TOTAL PLAY INC. to TVAZTECA S.A.B. DE C.V., at the WEB, the damages that would be caused to the corporation TOTAL PLAY INC., affecting the development of its strategic plan and its positioning in the global market through the WEB.
Eventually, the promotion of its brands, products, franchises and trade names legally obtained would be voided in an undue manner at the national and international markets, thus generating huge economic losses to the corporation both in its projections as well as in the investments made, which, we estimate, at this time would be undetermined, however we do estimate such at more than USD 1.000.000 (USD. $1.000.0000).
Regardless such economic loss, what actually does interest the claimants at this action is the ability to use the domain names without any conditions, names that had been used in a legitimate manner by TOTAL PLAY INC and TOTALPLAY S.A.S., up to the time when OMPI did order the transfer thereof.
- TOTAL PLAY S.AS., is a Colombian company licensee of TOTAL PLAY INC., for the entire Colombian territory, thus, its interests shall also be affected by the decision of OMPI, for this reason it is a corporation with legitimate interest in this action and must be acknowledged as a party of this action.
- In order to reach a possible settlement and with the purpose of complying with the requisite of admissibility required at these actions, the claimants TOTAL PLAY INC. and TOTALPLAY S.A.S., did resort to the ANA BOLIVAR DE CONSUEGRA CONCILIATION AND ARBITRATION CENTER of UNIVERSIDAD SIMON BOLIVAR, and, through summons to a hearing to all parties mentioned hereat, the CONCILIATION HEARING was held on the 22nd day of May of 2013, said hearing did not attain any results.
CLAIMS:
That through ruling that is determined as res judicata, it be decided:
FIRST: That are the property under full and absolute ownership of the corporation TOTAL PLAY INC. and of its licensee in Colombia TOTAL PLAY S.A.S., the web domain names, www.total-play.com, www.totalplay.com.co, www.mitotalplay.com.co, www.total-play.com.co and www.total-play.co.
SECOND: That as a consequence of the aforementioned declaration the defendants be sentenced to restore, upon execution of this ruling, in favor of the claimant, the aforementioned domain names.
THIRD: Also, that the official registers at the WEB, GODADDY.COM and MI.COM.CO be ordered to transfer in favor of the claimants the aforementioned domain names.
FOURTH: That the defendants be sentenced as owners in bad faith and also to cover court costs.
FIFTH: That the defendants be sentenced to the payment of indemnification for damages caused to the claimants for the amount of USD. $1.000.000 (one million dollars)
SIXTH: DIRECT EXAMINATION
That a direct examination be decreed to the legal representatives of the defendants, so that they do complete the examination I shall formulate them.
SEVENTH: EXPERT EVIDENCE
I hereby request the designation of experts specialized in the matter who shall determine the value in actual currency of the damages caused to my constituents by the actions of the defendants, nevertheless, my constituents do estimate said loss at more than USD 1.000.000, LEGAL TENDER (USD$1.000.000).
REGISTRATION OF THE ACTION:
I hereby request the FBI and US department of Jusitice to register this action with the official WEB registers WEB GODADDY.COM (Go Daddy INC) [email protected], [email protected], [email protected] and MI.COM.CO (Internet Marketer SAS) [email protected] [email protected] so that the aforementioned domain names are not marketed nor used until this action is decided upon. And for the former to remain under the control of TOTAL PLAY INC and TOTALPLAY SAS pursuant regulations that govern the matter of domain names.
LEGAL GROUNDS
United States Constitution: Safeguards of civil rights (Amendments 13, 14, 15, 19, 23, 24, 26)
BUSSINES CORPORATION LAW
Colombia Trade Promotion Agreement (TPA)
AMOUNT:
As the proceedings herein are those established at Ledger III, Title XXI, of the Civil Procedure Code. In view of the nature of the matter and the location of the claimants and defendants and in view of the amount which I do estimate as in excess of one MILLION Dollars, LEGAL TENDER (USD. $1.000.000.oo). This Court is competent to hear the action.
EVIDENCE:
- Certificate of Incumbency and legal representation GripGuard Inc. duly certified and apostilled.
- Certificate of Change of Name of GripGuard Inc. to TOTALPLAY Inc. duly certified and apostilled.
- Certificate of Incumbency and legal representation of TOTAL PLAY S.A.S.
- Title of the nominative trademark TOTALPLAY issued by the Bureau of Patents and Trademarks of the United States of America.
- Title of the mixed trademark TOTALPLAY issued by the Bureau of Patents and Trademarks of the United States of America
- Deposit of Trade Name TOTALPLAY issued by the Superintendence of Industry and Commerce of Colombia.
- Resolution of the Awarding of the Trade Name
- Title of the nominative trademark TOTALPLAY issued by the Superintendence of Industry and Commerce of Colombia
- Title of the mixed trademark TOTALPLAY issued by the Superintendence of Industry and Commerce of Colombia.
- Solutions # 59232 and # 59224 dated September 28th 2012, issued by the Superintendence of Industry and Commerce whereby is awarded the TOTALPLAY Nice class 25 trademark and the objections by TV AZTECA SAB DE CV is ruled groundless.
- Resolutions 603 and 604 dated January 22nd 2013 whereby ruling is made upon the appeal filed by TV AZTECA SAB DE CV whereby is confirmed the Awarding of the registry of the TOTALPLAY trademark at Nice class 25.
- Policy and Regulations for the settlement of disputes on matters regarding domain names of OMPI approved by ICAAN
- Lawsuit filed by TV AZTECA at OMPI
- Reply to the Lawsuit by LEGAL FORCE in representation of TOTAL PLAY INC. and JOHNY ALFONSO ROMERO ROCHA at OMPI.
- OMPI resolution whereby is ordered the transfer of the aforementioned domain names from TOTAL PLAY INC. to TVAZTECA S.A.B. DE C.V.
- Conciliation Record from the Ana Bolívar de Consuegra Conciliation Center
ATTACHMENTS:
All listed at the Evidence paragraph, copies of the action to be served to the defendants and archive and for performance of the action.
NOTICES:
TOTAL PLAY INC
80 STATE
ALBANY NY
12207-2543
USA
TOTALPLAY SAS
Carrera 34 Nº. 47-23
Suite # 1 in Barranquilla
Atlántico
Colombia.
The defendants at ;
TV Azteca, S.A.B. de C.V.. Periférico Sur 4121. Colonia Fuentes del Pedregal. 14141 México, D.F. MEXICO.
Carrera 9 A N°. 99-02 Of. 1001 Bogotá D.C. – COLOMBIA.
Respectfully,
JOHNY ALFONSO ROMERO ROCHA
DIRECTOR TOTAL PLAY INC
EIN 45-3049896
DIRECTOR TOTALPLAY SAS
NIT 900.603.020
CC 72.200.057
usufruct illegal domains: www.total-play.com
www.total-play.co
