Andersen Tax LLC v. Laffont-Reveilhac et al

Filing 23

STIPULATION AND ORDER re 22 Consent Judgment and Permanent Injunction Against Defendant MoHala Enterprises, LLC D/B/A Sundial Consulting filed by Andersen Tax LLC. Signed by Judge Edward M. Chen on 4/17/17. (bpfS, COURT STAFF) (Filed on 4/17/2017)

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COOLEY LLP
JOHN W. CRITTENDEN (101634)
[e-mail]
CHANTAL Z. HWANG (275236)
[e-mail]
101 California Street, 5th Floor
San Francisco, CA 94111-5800
Telephone: [phone]
Facsimile:
[phone]
Attorneys for Plaintiff
Andersen Tax LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OP CALIFORNIA

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SAN FRANCISCO DIVISION

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ANDERSEN TAX LLC, a Delaware limited
liability company,

CASE No.17-cv-01311

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Plaintiff,
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IS
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STEPHANE LAFFONT-REVEILHAC,an
individual; VERONIQUE MARTINEZ,an
individual; ARTHUR ANDERSEN & CO.,
SAS, a Societe par Actions Simplifiee under
the laws of France; and MOHALA
ENTERPRISES,LLC D/B/A SUNDIAL
CONSULTING,a California limited liability
company.

[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION AGAINST
DEFENDANT MOHALA ENTERPRISES,
LLC D/B/A SUNDIAL CONSULTING

Defendants.

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Plaintiff Andersen Tax LLC ("Plaintiff' or "Andersen Tax") filed a Complaint on March

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13, 2017 against defendants Stephane Laffont-Reveilhac ("Laffont-Reveihac"), Veronique

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Martinez ("Martinez"), Arthur Andersen & Co., SaS, formerly known as Quatre Juillet Maison

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Blanche, SaS,("AA SAS"), and MoHala Enterprises, LLC d/b/a Sundial Consulting ("MoHala")

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alleging trademark counterfeiting pursuant to 15 U.S.C. § 1114, trademark infringement pursuant

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to 15 U.S.C. § 1114, unfair competition arising under the California Business &Professions Code

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§ 17200, et seq., and other related claims.

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Plaintiff and Defendant MoHala (the "Parties") have now entered into a Confidential

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Settlement Agreement to resolve the controversies and disputes between them arising out of and

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relating to the matters alleged in the Complaint based on certain terms and conditions, including

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the entry of a Consent Judgment in the following form. The Parties jointly request that this

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Consent Judgment be entered by the Court.

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STIPULATED FACTS AND CONCLUSIONS

Having considered the matters, IT IS HEREBY ORDERED, ADJUDGED AND

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DECREED that:

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1.

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This Court has jurisdiction over the subject matter of this action under 15 U.S.C. §

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This Court has personal jurisdiction over Defendant MoHala and venue is proper

in this District under 28 U.S.C. § 1391.
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Defendant MoHala is a limited liability company established under the laws of the

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State of California with its principal place of business at 215 W. Franklin Street, Floor 3,

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Monterey, California 93940.

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4.

Plaintiff owns the rights to the trademark ANDERSENOO , including all rights, title,

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and interest, together with any and all goodwill associated therewith, in and to U.S. Trademark

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Registration No. ("Reg. No.") 2,777,252 for the mark ANDERSEN in connection with

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"
[e]ducational services, namely, conducting conferences in the fields of business," in Class 41, as

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well as U.S. Reg. No. 3,913,520 for the mark ANDERSEN in connection with "[p]roviding

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facilities for educational training, business education and training, and educational conventions,"

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in Class 41 (collectively, "ANDERSEN Registrations"). The ANDERSEN Registrations are in

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full force and effect on the PTO's Principal Register and gives rise to presumptions in favor of

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Plaintiff with respect to validity, ownership, and exclusive ,nationwide rights to use the

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ANDERSENOO mark throughout the United States.

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5.

Plaintiff has been using the trademark ANDERSEN TAX in U.S. commerce since

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at least as early as September 2, 2014 to promote various services related to tax preparation and

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consulting services and financial consulting and advisory services relating to tax.

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Plaintiff also owns registered and common (aw U.S. trademark rights in its logo,

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which consists of an image depicting a pair of three-panel double doors with a frame encasing

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both the top and the sides of the doors (the "Double Doors Design Mark"). This includes U.S.

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Reg. No. 5,078,595 for the Double Doors Design Mark in connection with various services

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in Class 35, and "financial advice relating to tax planning; financial consulting and advisory

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services relating to tax," in Class 36. The Double Doors Design Mark registration is in full force

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and effect on the PTO's Principal Register and gives rise to presumptions in favor of Plaintiff

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with respect to validity, ownership, and exclusive- nationwide rights to use the Double Doors

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Design Mark throughout the United States.

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7.

At the time of the filing of the Complaint, Defendant MoHala was a member of the

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network of individuals and entities recruited by defendant Laffont-Reveilhac and defendant

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Martinez to become affiliates of defendant AA SAS. Defendant MoHala's contact information

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was listed on the website located at www.arthLu~andersenco.com/en/, as the "Monterey Partner" of

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the network located in Monterey, California, U.S.A. Consistent with the Confidential Settlement

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Agreement, Defendant MoHala has since withdrawn its membership from the AA SAS network.

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ORDER AND PERMANENT INJUNCTION

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Pursuant to the terms of the Confidential Settlement Agreement between the Parties,

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Plaintiff and Defendant MoHala have agreed that Plaintiff is entitled to a permanent injunction

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against Defendant MoHala. It is hereby ORDERED and adjudged that:

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A.

Defendant MoHala and its owners, subsidiaries, affiliates, directors, officers,

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investors, agents, employees, and all persons or entities acting in concert or participation with

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them who receive actual notice of this Order, are permanently restrained and enjoined from using,

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applying to register as a trademark, or registering any domain name incorporating the name

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ANDERSEN, ARTHUR ANDERSEN, or any other name or trademark containing the names

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ANDERSEN or phonetic equivalents thereto, including without limitation, ANDERSON.

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B.

Defendant MoHala and its owners, subsidiaries, affiliates, directors, officers,

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investors, agents, employees, and all persons or entities acting in concert or participation with

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them who receive actual notice of this Order, are permanently restrained and enjoined from using

Coo~Fv LLP
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or applying to register as a trademark the Double Doors Design Mark or any icons, logos, or

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images that are similar thereto.

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of ensuring Defendant MoHala's compliance with this Consent Judgment.
Each party to this Consent Judgment shall bear its own attorney's fees and costs.

The Clerk is directed to enter this Consent Judgment forthwith.

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April 17 2017

Dated:

UNIT
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S DISTRICT
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IT IS SO

NO

RT

M. Chen

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NO

F
D IS T IC T O
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ER

The Parties hereby agree to the terms of this Consent Judgment.

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H

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F
D IS T IC T O
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APPROVED AS TO FORM AND CONTENT.;

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Dated: April ~3, 2017
Jo n W. Crittenden
ooley LLP
Attorneys for Plaintiff
Andersen Tax LLC

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Dated: April 12, 2017

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Coo~evLLP
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SAN FNANc'ISCt~

144063041

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Judge

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Honorable Edward M. Chen
hen
United States Districtdward M. C
E Judge

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ORDERED

Judge Edward

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DERED

O OR
IT IS S

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It is SO ORDERED AND ADJUDGED.

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UNIT
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S DISTRICT
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FO

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This Couct retains continuing jurisdiction over this action, including for purposes

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C.

~
y`~`~~'Y' ~~
Imad H. Hala
CEO
Defendant MoHala Enterprises, LLC
d/b/a Sundial Consulting

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PROOF OF SERVICE
(FRCP 5)

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I am a citizen of the United States and a resident of the State of California. I am employed

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in San Francisco County, State of California, in the office of a member of the bar of this Court, at

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whose direction the service was made. I am over the age of eighteen years, and not a party to the

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within action. My business address is Cooley LLP, 101 California Street, 5th Floor, San Francisco,

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California 94111-5800. On the date set forth below I served the documents described below in the

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manner described below:

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PROPOSED CONSENT JUDGMENT AND PERMANENT INJUNCTION
AGAINST DEFENDANT MOHALA ENTERPRISES, LLC D/B/A SUNDIAL
CONSULTING

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(BY U.S. MAIL) I am personally and readily familiar with the business practice of
Cooley LLP for collection and processing of correspondence for mailing with the
United States Postal Service, and I caused such envelope(s) with postage thereon
fully prepaid to be placed in the United States Postal Service at San Francisco,
California.

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on the following part(ies) in this action:
MOHALA ENTERPRISES, LLC D/B/A SUNDIAL CONSULTING
C/O Northwest Registered Agent, Inc.
906 W 2nd Ave, Suite 100
Spokane, WA 99201

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MOHALA ENTERPRISES, LLC D/B/A SUNDIAL CONSULTING
215 W. Franklin Street, 3rd Floor
Monterey, CA, 93940 .

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Executed on April 13, 2017, at San Francisco, California.

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/s/ Chantal Z. Hwang
Chantal Z. Hwang

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COOLEY LLP
ATTO RNEY S AT LAW
SAN FRA NCI S CO

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