Telemedicine Solutions LLC v. Woundright Technologies, LLC

27 F. Supp. 3d 883 (2014)

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Nature of the Case

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Facts

P is an LLC organized under the laws of Illinois. Its principal place of business is in Schaumburg, Illinois. P is in the wound care industry, promoting, marketing, selling, and providing services related to its 'Wound Rounds' system, an electronic documentation and wound care management system that enables medical providers to identify and manage patients at risk for pressure ulcers. P registered the domain name 'woundrounds.com' in February 2006, and augments its online presence by using social media sites such as YouTube, Facebook, LinkedIn, and Twitter. P marketed its products and services as early as November 1, 2006. P also has added webinars, seminars, teleconferences, and social media presentations to its 'WoundRounds' offerings, and has provided downloadable webinars since early 2010. P secured federal trademark registrations for its 'WOUND ROUNDS' system and stylized logo and has applied for a federal trademark for another stylized version of its 'WoundRounds' mark. The 'WoundRounds' marks have become well-known throughout the wound care industry and P has a strong national reputation and considerable goodwill with an estimated worth in the millions. D is an LLC organized under the laws of Wyoming with its principal place of business in Laramie, Wyoming. D uses the term 'WoundRight' to denote its goods and services, which are alleged to be 'the same or nearly identical' to P's. 'WoundRight' is 'a complete mobile wound care solution that automates assessment documentation for wounds, ostomies, and incontinence management.' The 'WoundRight' electronic application is intended for use on mobile devices, and can be downloaded from third-party websites that can be accessed from D's website, 'woundrightapp.com.' D's website was registered on May 15, 2012, and can be accessed by customers anywhere in the United States. Customers cannot download the WoundRight app directly from the website and cannot purchase supplemental 'census credits' to expand the utility of the app without placing a telephone call to D's Wyoming office. D has no physical presence in Illinois. D has never sold any products or services to customers in Illinois. D has sent employees to demonstrate and sell its products at industry conferences around the country, but none of those conferences were in Illinois. P alleges that D's actions specifically targeted the Illinois market for an electronic wound care and management software system. D uses Facebook and Twitter, to communicate with potential customers throughout the United States. D uses social media channels to promote its product and to call attention to the wound care field generally. D has purchased Google AdWords ads that appear as the top result when a user searched Google for the term 'woundrounds.' The text-only ad included a link to Defendant's website and read, 'Considering WoundRounds? - Don't waste your time. Try the latest wound care app for free!' D claims it 'has never placed any internet advertisements or sent any email advertisements that are specifically directed at or targeted to individuals or businesses located in Illinois.' D avers that 'WoundRight has not purposely exploited the Illinois market for its business, either by advertising its products and services on its website or otherwise.' P sued D. Plaintiff alleges that D has transacted business in Illinois via its advertising, marketing, and solicitation activities; its website; and its placement of its product into the stream of commerce in Illinois. P claims that D specifically targeted P by using a confusingly similar trademark, intentionally attempting to cause confusion or create a false association between its product and P, misappropriating P's Illinois clients and consumers, and willfully attempting to damage P and its business. D moved to dismiss P’s suit for lack of personal jurisdiction.