Paysafe Holdings UK Limited asks the Court to declare that the
What’s in a name? Paysafe Holdings UK Limited and Paysafecard.Com Wertkarten GMBH have launched a lawsuit at the New York Southern District Court, targeting Nebraska-based PaySAFE, LLC in a trademark dispute.
Both the plaintiffs and the defendant in the case have trademark registrations related to the Paysafe name in the United States. The plaintiffs (that is, Paysafe Holdings and Paysafecard) emphasize that the Defendant (the Nebraska-based PaySAFE LLC) was founded fifteen years later, in 2011.
The companies have co-existed without any clash over trademarks for years because PaySAFE LLC provides online escrow services for buyers and sellers of commercial goods such as cars and other vehicles, agricultural machinery, construction equipment, livestock, antiques, jewelry, art, and firearms under the trademark PaySAFE. On information and belief, the Defendant does not offer any financial services.
However, the Defendant has allegedly begun a campaign of interfering with Paysafe’s use and registration of its senior PAYSAFE trademark. Inter alia, Defendant has sent demand letters objecting to Paysafe’s ownership and use of the domain name <www.paysafe.com> (which Paysafe has owned since August 2011), Defendant has asserted that Paysafe’s use of Paysafe’s senior trademark infringes and dilutes Defendant’s junior rights.
Also, the Defendant has objected to Paysafe’s use of the PAYSAFE mark on LinkedIn and other social media platforms, and Defendant has filed letters of protest with the United States Patent & Trademark Office (USPTO) objecting to Paysafe’s registration of its trademarks.
In addition, the Defendant has demanded $3.5 million in payment to drop its objections.
The plaintiffs bring this action alleging that the Defendant’s assertions are without merit and that the Defendant’s actions have placed a cloud over Paysafe’s use and registration of its PAYSAFE trademark and <www.paysafe.com> domain name in the United States.
According to the plaintiffs, the Defendant’s challenges are part of a campaign solely intended to extort a monetary payment from Paysafe and not based on protecting its trademark from what it believes is a genuine existence of a likelihood of confusion.
The plaintiffs seek that that the Court declare that the PAYSAFE Marks do not infringe or dilute upon Defendant’s trademark, or constitute false designation of origin, do not violate the Lanham Act. The plaintiffs also ask the Court to declare that the <www.paysafe.com> domain name does not cybersquat upon or otherwise violate Defendant’s trademark and does not violate the Lanham Act.
The case is captioned Paysafe Holdings UK Limited et al v Paysafe, LLC (1:18-cv-00075).