Katie Cazorla et al v. Ken Hughes et al

Filing 27

PRELIMINARY INJUNCTION ORDER by Judge Margaret M. Morrow. The Preliminary Injunction is effective immediately and shall remain in effect during the pendency of this action. (ah)

1 Kenneth D. Freundlich (SBN 119806)

Michael J. Kaiser (SBN 258717)

2 FREUNDLICH LAW

16133 Ventura Boulevard, Suite 1270

3 Encino, CA 91436

P: [phone]

4 F: [phone]
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E-Mail: [e-mail]
[e-mail]

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Attorneys for Plaintiffs

7 Walter Afanasieff, Katie Cazorla,
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The Painted Nail LLC and Katie Cazorla Designs, LLC
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

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KATIE CAZORLA, an individual;

) Case No. CV14-2112-MMM-CWx

11 WALTER AFANASIEFF, an individual; )

THE PAINTED NAIL LLC, a California )
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CAZORLA DESIGNS, LLC, a California )
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limited liability company
) PRELIMINARY INJUNCTION
) ORDER
Plaintiffs,
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vs.
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KEN HUGHES, an individual; and
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DIGITAL WELDERS, an entity of
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unknown form
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Defendants.
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12 limited liability company; KATIE
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PRELIMINARY INJUNCTION ORDER

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TO DEFENDANTS KEN HUGHES AND DIGITAL WELDERS:

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This matter having come before the Honorable Margaret M. Morrow on April

3 7, 2014, on Plaintiffs Katie Cazorla, Walter Afanasieff, The Painted Nail LLCand
4 Katie Cazorla Designs, LLC's (“KC Designs”) ("Plaintiffs") application for a
5 preliminary injunction against Defendants Ken Hughes and Digital Welders
6 (collectively, "Defendants"), with Kenneth D. Freundlich, Esq. and Michael J.
7 Kaiser, Esq. of Freundlich Law appearing for Plaintiffs, and Defendant Ken Hughes
8 appearing via telephone, pro se;
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And, the Court having considered the Complaint, the Declarations and

10 Memorandum of Points and Authorities presented by Plaintiffs in support of their
11 applicationand in Reply to Hughes’ Opposition, Hughes’ Opposition (and Hughes’
12 two supplemental declarations , as well as the arguments made orally before the
13 Court;
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And the Court having found that good cause exists therefor, and Plaintiffs

15 having shown, inter alia, that immediate and irreparable harm will result to Plaintiffs
16 in the absence of the requested relief.
17 THE COURT FINDS THAT:
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1. Plaintiff The Painted Nail LLC has a registered trademark in "THE

19 PAINTED NAIL" mark (U.S. Reg. No. 4076664) (“the Mark”).
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2. It appears likely the Mark was distinctive at the time it was registered.

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3. It appears likely Defendants have, with a bad faith intent to profit,

22 intentionally used the Mark without Plaintiff The Painted Nail LLC's permission in a
23 domain name (ThePaintedNail.com) identical or substantially similar to the Mark by
24 altering the registration and related contact and domain registrar account information
25 associated with ThePaintedNail.com without Plaintiff The Painted Nail LLC's
26 permission in a manner that excludes Plaintiff from exercising its rightful dominion
27 over ThePaintedNail.com.
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PRELIMINARY INJUNCTION ORDER

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4. The Painted Nail LLC has demonstrated a likelihood of success on the

2 merits of its cybersquatting claim against Defendants under 15 U.S.C. § 1125(d). At
3 the very least, Plaintiff The Painted Nail LLC has shown there are serious questions
4 going to the merits of its cybersquatting claim under 15 U.S.C. § 1125(d).
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5. KatieCazorla.com is identical to the name of Plaintiff Katie Cazorla.

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6. It appears likely Defendants, with a bad faith intent, registered

7 KatieCazorla.com in Defendants' names without Plaintiff Cazorla's permission, and
8 used KatieCazorla.com without permission or consent from Plaintiff.
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7. Accordingly, Plaintiff Cazorla has demonstrated a likelihood of success

10 on the merits of her cybersquatting claim under Cal. Bus. and Prof. Code § 17525.
11 At the very least, Plaintiff Cazorla has shown there are serious questions going to the
12 merits of her cybersquatting claim under Cal. Bus. and Prof. Code § 17525.
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8. It appears likely that, for Plaintiffs' good and valuable consideration to

14 Defendants, Defendants agreed orally to purchase and register KatieCazorla.com,
15 EverythingNailz.com, TheNailCollective.com, and HiSocietea.com on Plaintiff Katie
16 Cazorla’s behalf and in her name. It appears likely Defendants breached the aforesaid
17 agreement by registering those domains in Defendants' names.
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9. It appears likely that, for good and valuable consideration, Defendants

19 agreed to maintain ThePaintedNail.com and the website content thereat on Plaintiff
20 The Painted Nail LLC's behalf. It appears likely Defendants breached the aforesaid
21 agreement by changing certain contact information for ThePaintedNail.com so that
22 even though it remains registered in Plaintiff Cazorla's name with domain registrar
23 GoDaddy.com, the contact information and administrative "keys" wrongfully belong
24 to Defendants and not to The Painted Nail LLC.
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10. It appears likely that, for good and valuable consideration, Defendants

26 also agreed to design and build content for the websites associated with all domain
27 names in dispute. It appears likely that it was agreed between the parties that all
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PRELIMINARY INJUNCTION ORDER

1 website content would be the exclusive property of Plaintiffs Katie Cazorla and The
2 Painted Nail LLC. It appears likely Defendants breached the aforesaid agreement by,
3 prior to this litigation, refusing to deliver to Plaintiffs exclusive title to and
4 possession of the domain names and the website content associated therewith.
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11. It appears likely that Plaintiffs Katie Cazorla and The Painted Nail LLC

6 performed their contractual obligations under the parties' agreement.
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12. Accordingly, Plaintiffs Katie Cazorla and The Painted Nail LLC have

8 demonstrated a likelihood of success on their breach of contract claim. At the very
9 least, Plaintiffs Katie Cazorla and The Painted Nail LLC have shown there are
10 serious questions going to the merits of their breach of contract claim.
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13. It appears likely that Plaintiffs will suffer immediate and irreparable

12 harm if an injunction is not entered because, inter alia, (i) allowing Defendants to
13 continue to control the websites could cause Plaintiffs serious harm, as Defendants'
14 prior conduct in registering the domain names using Defendants' contact information,
15 removing web content, and refusing to transfer domain names when Plaintiffs
16 demanded they do, demonstrates that absent a court order, Defendants may take
17 action that is harmful to Plaintiffs' livelihood in ways that are difficult to measure,
18 (ii) Defendants could refuse to transfer EverythingNailz.com, the NailCollective.com
19 and HiSocieta.com to Plaintiffs, (iii) Plaintiff Cazorla is imminently opening a salon
20 at the W Hotel and lack of web content and access to ThePaintedNail.com reduces
21 profits and harms Plaintiffs' business goodwill in ways that are hard to quantity, (iv)
22 given that Cazorla is, to some extent, a public figure, her inability to control the
23 website bearing her name creates a likelihood of confusion as to the source,
24 sponsorship, and affiliation and endorsement of KatieCazorla.com, and (v) Cazorla’s
25 inability to control EverythingNailz.com prevents her from promoting her new
26 wholesale nail supply business, Everything Nailz, which is opening imminently in
27 Studio City. This has harmful effects that are difficult to quantity.
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PRELIMINARY INJUNCTION ORDER

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14. The balance of hardships tips sharply in Plaintiffs' favor because, inter

2 alia, as demonstrated above, Plaintiffs will likely suffer immediate and irreparable
3 harm if an injunction does not issue, whereas there is no evidence that Defendants
4 would suffer any hardship as a result of this Preliminary Injunction.
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15. It is in the public interest for this injunction to issue because the reach of

6 the injunction may not be limited only to the Parties but may also include customers
7 of The Painted Nail, who may experience confusion if they are unable to browse
8 ThePaintedNail.com website.
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IT IS THEREFORE ORDERED, ADJUDGED AND DECREED that

10 Plaintiffs' Motion for a Preliminary Injunction is hereby GRANTED.
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IT IS FURTHER ORDERED that Defendants and their respective officers,

12 agents, servants, employees and/or all persons acting in concert or participation with
13 them, shall immediately cease and desist all use of Katie Cazorla's, The Painted Nail
14 LLC's, and Katie Cazorla Designs, LLC's names, trademarks, domain names and
15 website materials, except insofar as Defendants are using them on websites lawfully
16 owned by Defendants which are not the subject of this preliminary injunction,
17 including http://digitalwelders.com; and
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IT IS FURTHER ORDERED that Defendants and their respective officers,

19 agents, servants, employees and/or all persons acting in concert or participation with
20 them, shall immediately cease and desist from assigning, transferring or otherwise
21 hypothecating any of the following domain names: (a) KatieCazorla.com;
22 (b)EverythingNailz.com; (c) TheNailCollective.com; (d) ThePaintedNail.com, and
23 (e) HiSocietea.com (all five, collectively, "Plaintiffs' Domain Names"), to anyone
24 other than Plaintiffs; and
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IT IS FURTHER ORDERED that the domain registrar transfer Plaintiffs'

26 Domain Names forthwith in a manner that permits Plaintiffs Cazorla and The Painted
27 Nail full, complete, and exclusive administration and control over these domain
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PRELIMINARY INJUNCTION ORDER

1 names, only restricting Plaintiffs, during the pendency of this action, from further
2 transfer of Plaintiffs' Domain Names to third parties; and
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IT IS FURTHER ORDERED that Defendants take all necessary actions to

4 assist the registrar in transferring Plaintiffs' Domain Names to Plaintiff Cazorla
5 forthwith, such that Cazorla has full, complete, and exclusive administration and
6 control over Plaintiffs' Domain Names; and
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IT IS FURTHER ORDERED that Defendants transfer any and all website

8 content at the following domain names in the following manner forthwith: (a)
9 KatieCazorla.com to Plaintiff Katie Cazorla Designs, LLC, including, without
10 limitation, the web store associated therewith (b) EverythingNailz.com to Plaintiff
11 Cazorla, (c) TheNailCollective.com to Plaintiff Cazorla, and (d) HiSocietea.com to
12 Plaintiff Cazorla; and
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IT IS FURTHER ORDERED that Defendants forthwith transfer to Plaintiffs

14 Cazorla and/or The Painted Nail, LLC, all website content referring or relating to
15 The Painted Nail, LLC in Defendants' possession, custody or control including,
16 without limitation, the web store associated therewith; and
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IT IS FURTHER ORDERED that Defendants and their respective officers,

18 agents, servants, employees and/or all persons acting in concert or participation with
19 them, shall cooperate with Plaintiffs and/or the domain registrar, (i) to remove all of
20 Defendants' access to Plaintiffs' Domain Names, including without limitation,
21 disassociating Defendants with respect to hosting accounts connected with Plaintiffs'
22 Domain Names, and (ii) to assure that Plaintiffs have exclusive unfettered access to
23 and administration and control over Plaintiffs' Domain Names; and
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IT IS FURTHER ORDERED that Plaintiffs shall not be required to post a

25 bond because the evidence indicates that Defendants will not suffer any damage by
26 the issuance of this preliminary injunction.
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PRELIMINARY INJUNCTION ORDER

EFFECTIVE DATE/TIME

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This Preliminary Injunction is effective immediately and shall remain in effect

3 during the pendency of this action.
4 SO ORDERED, this 8

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day of April, 2014.

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____________________
Margaret M. Morrow
United States District Judge

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PRELIMINARY INJUNCTION ORDER