“Defendants contrived that false narrative with the intention that WIPO would rely on it in rendering its decision and, in turn, decide the domain name dispute in their favor.” – Trader Joe’s complaint
A trademark lawsuit filed by popular grocery store chain, Trader Joe’s, against a cryptocurrency platform called “Trader Joe”—which the complaint alleges is a deliberate reference to the supermarket—has come to light this week. Trader Joe’s claims that the crypto firm buried its origin story in order to win international litigation over the domain name, traderjoexyz.com.
Trader Joe’s has offered grocery services under the mark TRADER JOE’S for more than 50 years. According to the lawsuit, a co-founder of the crypto company Trader Joe, going by the handle “cryptofish,” admitted in a Substack publication that the company’s name originally derived from the name of the Trader Joe’s supermarket chain (see image).
However, in the domain name proceeding brought by Trader Joe’s supermarket at the World Intellectual Property Organization (WIPO), Trader Joe made representations claiming that the company was named after Joe Liu, the brother of Cheng Chieh Liu, who is the registrant of traderjoexyz.com. “Defendants contrived that false narrative with the intention that WIPO would rely on it in rendering its decision and, in turn, decide the domain name dispute in their favor,” said the complaint. WIPO did accept Liu’s representations and Trader Joe’s domain name complaint was dismissed.
According to the complaint, Trader Joe operates an X page, a mobile application, a YouTube channel, a website and numerous other social media accounts using the Trader Joe name, and in some cases, the exact word mark, TRADER JOE’S. The X page features an image of the avatar, “Trader Joe,” standing in front of a produce stand surrounded by produce and “marketplace imagery.” The crypto firm has also registered the domain names trader-joes.site and trader-joe.website.
Additionally, Trader Joe engaged in criminal behavior through its “vandalism-based marketing campaign in Paris during Paris Blockchain Week—plastering ‘Trader Joe’ branded material on public and private property around the city, as shown below,” said the complaint.
Although the supermarket made numerous attempts via cease-and-desist letters to resolve the matter privately, “[d]efendants failed to respond, let alone comply
Trader Joe’s charges that the crypto company engaged in fraud for misrepresenting its origin story in the WIPO proceedings and requests injunctive relief; that it is entitled to defendants’ profits and reasonable attorneys’ fees for trademark infringement; and is seeking a permanent injunction against any use in commerce of the TRADER JOE’S family of marks, the “Trader Joe” name or any confusingly similar variation, as well as treble damages for willful dilution; damages and fees associated with willful violations of the Anti-Cybersquatting Consumer Protection Act as well as an order transferring the domain names traderjoexyz.com, trader-joes.site, and trader-joe.website to Trader Joe’s or cancellation of the domain names; as well as declaratory relief, common law conversion and unfair competition claims.
Michael Keyes of Dorsey & Whitney said Trader Joe’s “should be in a solid position to take this one to the bank.” Keyes explained:
“Although the parties’ respective goods and services are quite different on first blush (a grocer vs. a currency exchange platform), I could envision an argument that crypto is becoming more mainstream and used for a variety of personal and household purchases in a variety of contexts. Thus, the parties’ services are not as ‘far apart’ as one might initially conclude.”
Keyes also noted that the federal dilution claim means Trader Joe’s will have to prove it owns a famous mark, “which basically means it is a household name such as Apple, McDonald’s, Nike and other similar vaunted brands.”
Keyes added: “Trader Joe’s is no doubt a renowned brand in the grocery store arena, but it will be interesting to see if it can prove it belongs in the pantheon with other famous brands.”
All images were taken from complaint.