Zynga filed the lawsuit in Maryland federal court on Tuesday, alleging Imagenesis' use of the name MafiaVille will infringe several trademarks Zynga owns in connection to its social media games such as "CityVille," "PetVille," "FrontierVille" and "FarmVille."
Zynga claimed that over 65 million people play its "Ville" games each month on various platforms including Facebook and mobile phone apps and that consumers have associated the VILLE trademarks with Zynga long before Imagenesis even thought of the name MafiaVille.
In December 2010, Zynga discovered that Imagenesis had registered the domain name MafiaVille.com and was using the website to promote the "MafiaVille" game. Zynga sent Imagenesis a cease and desist letter to notify Imagenesis of its trademark rights and to demand that it stop using the name.
Imagenesis chose to continue use of the name and filed a trademark application for MAFIAVILLE with the U.S. Patent and Trademark Office. Imagenesis also filed for a declaratory judgment in Maryland federal court asking for a ruling that the name MafiaVille does not infringe or dilute Zynga's trademarks. However, Imagenesis failed to have counsel appear on its behalf and the action was dismissed.
In the complaint, Zynga alleged that not only did Imagenesis know of Zynga's success with its various Ville games in the social gaming sphere before naming its game "MafiaVille," but also that Imagenesis actually chose the name in order to benefit from Zynga's success with its "Ville" games and its game "Mafia Wars."
The company alleged that the name MafiaVille is likely to cause confusion and deceive players into thinking that the game is either made by Zynga or is in some way connected with it. Zynga also claimed that as Imagenesis is aware of Zynga's VILLE trademarks, Imagenesis is willfully infringing its trademarks and is attempting to take advantage of the goodwill Zynga has spent years developing.
Zynga is alleging trademark infringement, dilution, false designation of origin and unfair competition. The company is seeking to block the MAFIAVILLE trademark, an injunction preventing Imagenesis from using the name, damages, Imagenesis' profits earned from using the name and treble damages.