Pacific Law Center et al v. Saadat-Nejad

Filing 55

MOTION for Permanent Injunction by Pacific Law Center. (Attachments: # 1 Memo of Points and Authorities in Support of Permanent Injunction# 2 Declaration of Edward J. McIntyre in Support of Permanent Injunction)(McIntyre, Edward)

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EDWARD J. MCINTYRE [SBN 80402] [e-mail] SOLOMON WARD SEIDENWURM & SMITH, LLP 401 B Street, Suite 1200 San Diego, California 92101 Telephone: [phone] Facsimile: [phone] Attorneys for Pacific Law Center and Solomon Ward Seidenwurm & Smith, LLP

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

PACIFIC LAW CENTER, a Professional Law Corporation; and SOLOMON WARD SEIDENWURM & SMITH, LLP, Plaintiffs, v. SHAHROKH SAADAT-NEJAD, an individual, Defendant.

CASE NO. 07-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION Date: Time: Ctrm: March 28, 2008 10:30 a.m. 6, Third Floor

Hon. Janis L. Sammartino

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TABLE OF CONTENTS PAGE(S) I PREAMBLE.......................................................................................................................... 1 The Beginning. ...................................................................................................................... 1 The Attacks. .......................................................................................................................... 1 This Action............................................................................................................................ 1 II THIS COURT'S EARLIER FINDINGS .............................................................................. 2 The Temporary Restraining Order. ....................................................................................... 2 The Order. ................................................................................................................. 2 The Findings.............................................................................................................. 2 The Preliminary Injunction. .................................................................................................. 4 Pacific Law Center. ................................................................................................... 4 Solomon Ward........................................................................................................... 5 Saadat-Nejad Retains and then Fires Pacific Law Center..................................................... 5 Saadat-Nejad Misappropriates Pacific Law Center's Domain Name. .................................. 6 Saadat-Nejad Misappropriates Solomon Ward's Domain Names. ....................................... 7 The Evidence of Saadat-Nejad's Misappropriation. ............................................................. 8 III THE 1999 ANTI-CYBERSQUATTING AND CONSUMER PROTECTION ACT GIVES THIS COURT THE POWER PERMANENTLY TO ENJOIN SAADATNEJAD'S MISAPPROPRIATION OF PACIFIC LAW CENTER AND SOLOMON WARD'S SERVICE MARKS, TRADE NAMES AND DOMAIN NAMES ................................................................................................................................. 8 Cybersquatting Factors.......................................................................................................... 8 Ninth Circuit Standard. ......................................................................................................... 9 No Commercial Use Requirement. ..................................................................................... 10 This Court's Prior Findings................................................................................................. 11 IV PACIFIC LAW CENTER AND SOLOMON WARD ARE ENTITLED TO A PERMANENT INJUNCTION............................................................................................ 11

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The Anti-Cybersquatting and Consumer Protection Act Provides For Permanent Injunctive Relief...................................................................................................... 11 SAADAT-NEJAD'S CONDUCT VIOLATES OTHER PROVISION OF THE LANHAM ACT AS WELL ................................................................................................ 12 Trade Name Infringement. .................................................................................................. 12 Trade Name Infringement/Dilution..................................................................................... 13 Trademark Infringement. .................................................................................................... 13 False Designation of Origin. ............................................................................................... 14 SAADAT-NEJAD'S CONDUCT ALSO VIOLATES CALIFORNIA LAW ................... 15 California Unfair Trade Practice Act. ................................................................................. 15 Unauthorized Use of Name. ................................................................................................ 15 CONCLUSION ................................................................................................................... 15

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TABLE OF AUTHORITIES PAGE(S)

Bellagio v. Denhammer, et al., 2001 U.S. LEXIS 24764 (D. Nev. 2001) ............................................................................ 12 Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005).......................................................................................... 10, 11 Daimler Chrysler v. The Net Inc., 388 F.3d 201 (6th Cir. 2004)................................................................................................ 10 E.&J. Gallo Winery v. Spider Webs, Ltd., et al., 286 F.3d 270 (5th Cir. 2002)................................................................................................ 12 Earth Island Institute v. United States Forrest Service, 351 F.3d 1291 (9th Cir. 2003).............................................................................................. 10 Earth Island v. United States Forest Service, 442 F.3d 1147 (9th Cir. 2006).............................................................................................. 10 Flow Control Industries, Inc. v. Amhi, Inc., 278 F.Supp.2d 1193 (W.D. Wash. 2003) ............................................................................ 12 Ford Motor Company v. Catalanatte, 342 F.3d 543 (6th Cir. 2003)................................................................................................ 10 Mattel, Inc. v. Internet Dimensions, Inc., 55 USPQ2d 1620 (S.D. NY 2000) ........................................................................................ 8 Phillip Morris USA, Inc. v. Marlborough Express, Tobacco Traders and Trust, et al., 2005 U.S. Dist. LEXIS 4359 (E.D. NY 2005) .................................................................... 12 Qwest Communications International v. Sonny Corporation, 2006 U.S. Dist. LEXIS 87007 (W.D. Wash. 2006) ............................................................ 12 Seattle Laptop Incorporated v. A-1 Best Computer, Inc., 2006 U.S. Dist. LEXIS 13013 (W.D. Wash. 2006) ............................................................ 12 Sporty's Farm, LLC v. Sportman's Market, Inc., 202 F.3d 489 (2d Cir. 2000) .................................................................................................. 8 The Christensen Firm v. Chameleon Data Corp., 2006 US. Dist. LEXIS 79710 (W.D. Wash. 2006) ............................................................. 10 STATUTES 15 U.S.C. §1125(a).......................................................................................................................... 14 15 U.S.C. §1125(d) ............................................................................................................. 3, 8, 9, 11
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Business & Professions Code § 17200............................................................................................ 15 Civil Code § 3344 ........................................................................................................................... 15 Federal Rule of Evidence 201 ..................................................................................................... 1, 10

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I PREAMBLE This case only underscores the maxim "no good deed goes unpunished." The Beginning. Saadat-Nejad hired Pacific Law Center, at the very last minute, to represent him in a criminal matter. Pacific Law Center immediately jumped in. He then fired Pacific Law Center-- as was his right. Pacific Law Center refunded all the money Saadat-Nejad's family had advanced, even though it had obviously earned some, if not all of, that retainer.1 The Attacks. Saadat-Nejad then stole Pacific Law Center's domain name and used it viciously to attack his former lawyers. So, Pacific Law Center hired Solomon Ward to represent it in a superior court action Pacific Law Center had filed against Saadat-Nejad. After Solomon Ward obtained a restraining order against him, he then stole Solomon Ward's domain name as well and launched a vicious, anti-Semitic attack on Solomon Ward.2 This Action. So, Pacific Law Center and Solomon Ward sued Saadat-Nejad in this Court based on, inter alia, the Anti-Cybersquatting provisions of the Lanham Act.3 This Court granted Pacific Law Center and Solomon Ward's motion for a temporary restraining order and, thereafter, a preliminary injunction. At each hearing, the Court conducted a patient and extended colloquy with Saadat-Nejad informing him what he could and could not do.
Declaration of Edward J. McIntyre, ¶ 7. Pacific Law Center and Solomon Ward have already put examples pulled from websites Saadat-Nejad controls before this Court at earlier proceedings. They respectfully refer the Court to the declarations and exhibits previously filed and, pursuant to Federal Rule of Evidence 201, take judicial notice of the Court's files. For example, McIntyre Declaration, with Exhibits (Docket No. 3); Slattery Declaration, with Exhibits (Docket No. 3); Phillips Declaration, with Exhibits (Docket No. 18); Supplemental Memorandum, with Exhibits (Docket No. 18); McIntyre Declaration (Docket No. 36); McIntyre Declaration (Docket No. 39); Exhibits in Notice of Lodgment, and specifically Exhibits 5 through 11 (Docket No. 39); McIntyre Declaration (Docket No. 48). The transcripts of the March 29, 2007 and April 26, 2007 hearings are at Docket No. 39, Exhibits 2 and 4. Before imposing on this Court, however, Pacific Law Center and Solomon Ward attempted to see if resolution was possible. They met with Saadat-Nejad for four hours on Friday, March 15; he showed up at Solomon Ward's offices with a baseball bat and tape recorder.

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As a result, Saadat-Nejad attacked Judge Burns personally, accusing him, among other lies, of being in Solomon Ward's pocket.4 The temporary restraining order, however, did not stop Saadat-Nejad; neither did the preliminary injunction. Nor did this Court's colloquies that warned Saadat-Nejad not to "get chalk on his shoes," or he would go to jail.5 Accordingly, the Court found Saadat-Nejad in contempt and incarcerated him for almost two weeks.6 Pacific Law Center and Solomon Ward now seek to have the Court's preliminary injunction made permanent. II THIS COURT'S EARLIER FINDINGS The Temporary Restraining Order. The Order. On March 29, 2007, this Court entered a temporary restraining order that states: Shahrokh Saadat-Nejad, and anyone acting in concert with him, is hereby enjoined and restrained from: 1. Registering, and trafficking in, any internet website or domain name that contains the words Pacific, Law and Center, with or without other words or symbols, in any respect whatsoever; 2. Registering, and trafficking in, any internet website or domain name that contains the words Solomon and Ward, with or without other words or symbols, in any respect whatsoever; 3. Registering and trafficking in, the service mark or trade name Pacific Law Center in any respect whatsoever. 4. Registering and trafficking in the service mark or trade name Solomon Ward or Solomon Ward Seidenwurm & Smith in any respect whatsoever. The Findings. In entering that order, the Court made the following findings of fact and law:
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See, for example, Transcript of April 26, 2007 hearing, Exhibit 4, and specifically p. 4:35 (Docket No. 39); see also Exhibits 5.2 and 9.6 (Docket No. 39). By way of further example, he claimed in his response to the preliminary injunction motion (Docket No. 24) that Solomon Ward has "judges in their back pockets," the same accusation that he leveled against Judge Burns. Transcript of April 26 hearing, 4:22-23 (Docket No. 39). Contempt order, entered July 14, 2006 (Docket No. 43); July 12, 2007 minute order (Docket No. 12).

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The standard for issuing a temporary restraining order is identical to the standard for issuing a preliminary injunction. A party seeking injunctive relief under Rule 55 must show ... [a strong likelihood] of probable success on the merits and the possibility of irreparable harm or alternatively if serious questions are raised and the balance of hardships tips sharply in the moving party's favor. These formulations represent two points on a sliding scale, which the required degree of irreparable harm increases as the probability of success decreases. Even if the court is uncertain of the moving party's likelihood of success on the merits, a TRO may still issue if the moving party convinces the court that the balance of hardships tips in its favor. Here I find that the plaintiffs have shown both a combination of probable success on the merits and the possibility of irreparable harm and that serious questions are raised and the balance of hardships tips sharply in the moving party's favor. The TRO in this case is supported by declarations of Mr. McIntyre and Thomas Slate (phonetic), a supervising lawyer at pacific law center. Their declarations substantiate that Mr. Saadat-Nejad intentionally obtained and used confusing websites to discredit and disparage the two law firms and to make what they allege are false and inflammatory accusations about the law firms and their lawyers. As a result, there has been harm to their reputation and businesses. The declarations also substantiate that each law firm has established a secondary meaning to their service marks and trademark names associated with their professional practices. Mr. Saadat-Nejad, in the court's opinion, having viewed both his evidence and that submitted by the plaintiffs, does not appear to have any legitimate trademark or common law or registered right to use any name even remotely similar to Pacific Law Center or Solomon Ward and specifically no right to use pacificlawcenters.com and pacific/law/centers.com or solomonwardlawfirm.com or solomonwardsandiego.com. I find in agreement with the plaintiffs that there's a great likelihood of harm if this conduct persists to their reputation. As I said, I've found that they've established, both law firms, a secondary meaning to these marks and the names associated with their professional practices. The court has examined the underlying law in this case, the 1999 AntiCybersquatting and Consumer Protection Act, codified at Title 15 of the United States Code, Section 1125(d). The purpose of that section is to protect consumers and American businesses and to promote growth of online commerce, provide clarity for trademark owners by prohibiting bad faith and abusive registration of distinctive marks as internet domain names with the intent to profit from the goodwill associated with those marks. In addition, the 9th Circuit has held that the not [Anti-Cybersquatting Act] contain a commercial use [requirement] they probably can in this case. Show actual commercial interference with their law practices from Mr. SaadatNejad's Anti-Cybersquatting Act does not contain a commercial use requirement so that although they probably can in this case, the plaintiffs don't need to show actual commercial interference with their law practices from Mr. Saadat-Nejad's domain name misappropriation in order to prevail.7
Transcript of March 29, 2007 hearing, pp. 2:15-2:18 (Docket No. 39). [Emphasis added.]

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The Preliminary Injunction. On April 26, 2007, this Court entered a preliminary injunction that repeated verbatim the Court's prior temporary restraining order. In entering that preliminary injunction, the Court found: The Court incorporates the transcript of proceedings at the temporary restraining order. I understand that it has not yet been prepared, but I incorporate that into my finding and analysis today. The legal standards discussed at that hearing and in the order that followed it apply here as well. The Court confirms its findings from the earlier hearing. I find that a preliminary injunction should issue. I find both a combination of probable success on the merits on the part of the plaintiffs and the possibility of irreparable harm of the kind that would issue has not ceased subject to a court order. The balance of hardships tips sharply in favor of the moving party.8 BACKGROUND FACTS Pacific Law Center and Solomon Ward have already presented substantial evidence-- sufficient to support this Court's temporary restraining order, preliminary injunction and finding of contempt.9 For the Court's convenience, however, they will reiterate some of the material, background facts. The Players. Pacific Law Center. Pacific Law Center is a San Diego professional law corporation, with a practice emphasizing criminal, bankruptcy and personal injury cases. Pacific Law Center owns the trade name and service mark "Pacific Law Center" and the domain names "pacificlawcenter.com," "pacificlawcenter.net," "pacificlawcenter.org" and "pacificlawcenter.ws."10 Pacific Law Center has used the exclusive trade name and service mark "Pacific Law Center" in its professional business and in an extensive advertising and marketing campaign,

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Transcript of April 26, 2007 hearing, 4:12-13 (Docket No. 39). See, for example McIntyre Declaration, with Exhibits (Docket No. 3); Slattery Declaration, with Exhibits (Docket No. 3); Phillips Declaration, with Exhibits (Docket No. 18); Supplemental Memorandum, with Exhibits (Docket No. 18); McIntyre Declaration (Docket No. 36); McIntyre Declaration (Docket No. 39); Exhibits in Notice of Lodgment, and specifically Exhibits 5 through 11 (Docket No. 39); McIntyre Declaration (Docket No. 48). Declaration of Edward McIntyre, ¶ 3.

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including television, telephone business directories, print and various other media.11 Pacific Law Center has built up valuable goodwill in its "Pacific Law Center" service mark and trade name, and the public generally has come to associate its mark exclusively with Pacific Law Center's professional business in California.12 Pacific Law Center has also used and advertised the internet domain names, and operated internet sites at the addresses, "pacificlawcenter.com," "pacificlawcenter.net," "pacificlawcenter.org" and "pacificlawcenter.ws" to advertise and promote its activities as a law firm.13 Solomon Ward. Solomon Ward Seidenwurm & Smith, LLP is a professional law corporation in San Diego, that is, and has been for 30 years, known and practicing throughout California and across the country.14 Solomon Ward has used the exclusive service marks and trade names "Solomon Ward Seidenwurm & Smith" and "Solomon Ward" in its professional business. Solomon Ward has registered the internet domain names "swsslaw.com" and "solomonward.com" and has operated internet sites at swsslaw.com to make the public aware of its professional practice.15 Solomon Ward has over the years built up valuable goodwill in its service marks and trade names and the general public has come to associate those names exclusively with Solomon Ward's professional practice in San Diego, throughout California and across the nation.16 Saadat-Nejad Retains and then Fires Pacific Law Center. On August 31, 2006, Saadat-Nejad retained Pacific Law Center to defend him against criminal charges pending in San Diego and for which he was then incarcerated. Shortly thereafter, Saadat-Nejad became dissatisfied with Pacific Law Center's representation, terminated its representation of him and began a course of conduct, including posting disparaging comments
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Id. at ¶ 4. Id. at ¶ 5. Id. at ¶ 6. Id. at ¶ 14. Id. at ¶ 15. Id. at ¶ 16.

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about Pacific Law Center on the internet calculated to interfere with and damage it and its business operations.17 Saadat-Nejad Misappropriates Pacific Law Center's Domain Name. On September 20, 2006, Saadat-Nejad registered and obtained ownership of the internet domain name "pacificlawcenters.com," which is confusingly similar to the internet domain names registered to Pacific Law Center and sites it uses.18 He maintained registration of the internet domain name of, and operated the internet site at, "pacificlawcenters.com" with the intent of (1) intercepting actual and potential clients of Pacific Law Center and the general public who use internet search engines "key word" search features which would otherwise lead them to Pacific Law Center's internet site(s), (2) intercepting consumers who have added the letter "s" to Pacific Law Center's true internet site name(s) in attempting to find plaintiffs internet site; and (3) once consumers enter Saadat-Nejad's internet site, exposing them to its content, which is intended and designed to disparage and harm the goodwill of Pacific Law Center, attempt to dissuade actual and potential clients from doing business with Pacific Law Center and to entice them to communicate by email with Saadat-Nejad and to visit another internet site which is owned and operated by Saadat-Nejad under the internet domain name "ushostage.com."19 Saadat-Nejad has made clear that he will not stop using the Pacific Law Center mark and tradename. He further made clear that he intended to continue his vendetta against Pacific Law Center arising out of its representation of him in state court.20 Saadat-Nejad, through a lawyer purporting to represent him, told Pacific Law Center that unless it pays him $500,000 he will continue to use its domain name. Saadat-Nejad reiterated that threat at a meeting at Solomon Ward's office.21 Pacific Law Center knows that it has lost clients as a result of Saadat-Nejad's
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Id. at ¶ 8. Id. at ¶ 9. Id. at ¶ 10. Id. at ¶ 11. Id. at ¶ 12.

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misappropriation of its trade name and its domain name. On January 12, 2007, Pacific Law Center filed an action in superior court against SaadatNejad, Case No. GIC 878352. On February 23, 2007, Pacific Law Center retained Solomon Ward to represent it in that lawsuit. On February 27, 2007, Solomon Ward successfully obtained a restraining order against Saadat-Nejad. Saadat-Nejad Misappropriates Solomon Ward's Domain Names. On March 10 or 11, 2007, Saadat-Nejad obtained a confusingly similar domain name "solomonwardlawfirm.com." Saadat-Nejad maintained registration of that internet domain name and operated the internet site at solomonwardlawfirm.com with the intent of (1) intercepting actual and potential clients of Solomon Ward and the general public who use internet search engines' "keyword" search features which would otherwise lead them to Solomon Ward's internet sites; (2) intercepting clients who have added "law firm" to Solomon Ward's true internet site name in an attempt to find Solomon Ward; and (3) once clients enter Saadat-Nejad internet site, exposing them to its conduct which is intended and designed to disparage and harm the goodwill of Solomon Ward, attempting to dissuade actual and potential clients from doing business with Solomon Ward and to entice them to communicate by email with Saadat-Nejad and to visit another internet site which is owned and operated by Saadat-Nejad under the internet domain name "ushostage.com."22 He has also registered and used solomonwardsandiego.com.23 Saadat-Nejad has made clear that he will not stop using the Solomon Ward mark and trade name. He further made clear that he intended to continue his vendetta against Solomon Ward because it represented Pacific Law Center in both the state and this action.24 Solomon Ward has already had inquiries about the pirate site that Saadat-Nejad has used.25 At this point it is clear that Pacific Law Center and Solomon Ward have already suffered irreparable harm as a result of Saadat-Nejad's conduct and they will continue to suffer irreparable

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Id. at ¶ 10. Id. at ¶ 18. Id. at ¶ 11. Id. at ¶ 21.

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harm unless this Court stops him.26 There is no way accurately to determine the whole of the harm that Saadat-Nejad has done to Pacific Law Center and Solomon Ward and their reputation and the reputation of their attorneys. As a result, money damages are inadequate to repair that harm. In that respect, Pacific Law Center and Solomon Ward have already suffered and continues to suffer irreparable harm and will do so until this Court stops Saadat-Nejad.27 The Evidence of Saadat-Nejad's Misappropriation. This Court's record is already filled with evidence of Saadat-Nejad's misappropriation of their service marks, trade names and domain names. Accordingly, Pacific Law Center and Solomon Ward will not further burden the Court with additional volumes of paper. Instead, Pacific Law Center and Solomon Ward respectfully request this Court to take judicial notice of its own files and direct the Court specifically to the exhibits already in the record.28 III THE 1999 ANTI-CYBERSQUATTING AND CONSUMER PROTECTION ACT GIVES THIS COURT THE POWER PERMANENTLY TO ENJOIN SAADAT-NEJAD'S MISAPPROPRIATION OF PACIFIC LAW CENTER AND SOLOMON WARD'S SERVICE MARKS, TRADE NAMES AND DOMAIN NAMES Congress passed the 1999 Anti-Cybersquatting and Consumer Protection Act--15 U.S.C. § 1125(d)--to protect consumers and American business, to promote growth of online commerce, and to provide clarity for trademark owners by prohibiting bad faith and abuse of registration of distinctive marks as Internet domain names with the intent to profit from goodwill associated with those marks.29 Cybersquatting Factors. Saadat-Nejad has no trademark or other intellectual property rights in Pacific Law Center
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Id. at ¶ 22. Id. at ¶ 22. Those Exhibits and authenticating declarations are at McIntyre Declaration, with Exhibits (Docket No. 3); Slattery Declaration, with Exhibits (Docket No. 3); Phillips Declaration, with Exhibits (Docket No. 18); Supplemental Memorandum, with Exhibits (Docket No. 18); McIntyre Declaration (Docket No. 36); McIntyre Declaration (Docket No. 39); Exhibits in Notice of Lodgment, and specifically Exhibits 5 through 11 (Docket No. 39); McIntyre Declaration (Docket No. 48). Mattel, Inc. v. Internet Dimensions, Inc., 55 USPQ2d 1620 (S.D. NY 2000). Sporty's Farm, LLC v. Sportman's Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000) (cybersquatting defined as "prevent[ing] use of the domain name by the mark owners, who might infrequently have been willing to pay `ransom' in order to get `their names' back.").

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or Solomon Ward's domain names; indeed, the Solomon Ward domain name also consists of the legal names of two Solomon Ward founding partners, Herbert J. Solomon and William O. Ward. Saadat-Nejad has no prior use of either domain name in connection with any bona fide offering of goods or services. Nor does Saadat-Nejad have a bona fide non-commercial or fair use of any mark in a site accessible under the domain name. Saadat-Nejad has made clear his intent to divert clients from Pacific Law Center and Solomon Ward's on-line locations to sites accessible under the domain names that he has registered with the intent to tarnish or disparage Pacific Law Center and Solomon Ward. He has created a likelihood of confusion about the source, sponsorship, affiliation or endorsement of his sites. Saadat-Nejad has demanded half a million dollars--through a lawyer purportedly representing him--to stop using the pacificlawcenters.com domain name and other Pacific Law Center domain names. The Pacific Law Center and Solomon Ward marks are distinctive and famous in that they are widely recognized by the general consuming public in San Diego, in California and across the United States as a designation of the services respectively of Pacific Law Center and Solomon Ward. Saadat-Nejad's registration of multiple domain names which he knows are identical or confusingly similar to the marks of Pacific Law Center and Solomon Ward--marks that are distinctive and famous. In short, Pacific Law Center and Solomon Ward have established eight of the nine factors that 15 U.S.C. § 1125(d)(1)(B) and 15 U.S.C. § 1125(c)(1) suggests a court might consider in determining whether there is actionable cybersquatting. Indeed, the only factor that Pacific Law Center and Solomon Ward have not addressed is whether Saadat-Nejad provided material and misleading false contact information when he applied for the registration of the domain names. He has, however, a pattern of prior conduct, first in his attack on Pacific Law Center and, subsequently, his attack on Solomon Ward. Ninth Circuit Standard. Under the Ninth Circuit standard, this Court may grant the injunctive relief sought because Pacific Law Center and Solomon Ward have demonstrated: (1) success on the merits of their
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cybersquatting claims and the Lanham Act and, (2) actual irreparable injury; (3) a balance of hardships favoring them; and (4) advancement of the public interest ....30 In addition, Pacific Law Center and Solomon Ward have demonstrated a combination of success on the merits and actual irreparable harm and that serious questions are raised and the balance of hardships tips sharply in their favor.31 Saadat-Nejad has no right to misappropriate domain names already registered to Pacific Law Center or Solomon Ward or to misappropriate domain names so confusingly similar to the names they use. He is attempting to hold Pacific Law Center hostage for at least a half a million dollars. No Commercial Use Requirement. Neither Pacific Law Center nor Solomon Ward has to show any commercial interference with their law practices to prevail under the Anti-Cybersquatting Act. In a case almost directly in point,32 the Ninth Circuit has held that the Anti-Cybersquatting Act does not contain a commercial use requirement.33 The Christensen law firm sued Chameleon because, Chameleon had shifted the registration of the Christenson law firm's domain names to itself to gain leverage in a payment dispute. The district court held: An individual may be held liable under the ACPA for cybersquatting if the person (1) registers, traffics in, or uses a domain name identical or confusingly similar to a distinctive mark, and (2) has a bad faith intent to profit from use of the mark as a domain name.34 The court noted that many of the decisions under ACPA refer to "an extortionate offer to sell" as the hallmark of a bad faith intent to profit and found that Chameleon's "extortionate offer"
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Earth Island v. United States Forest Service, 442 F.3d 1147, 1158-59 (9th Cir. 2006), quoting Earth Island Institute v. United States Forrest Service, 351 F.3d 1291, 1297-98 (9th Cir. 2003). Id. at 1159. Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 608-81 (9th Cir. 2005); The Christensen Firm v. Chameleon Data Corp., 2006 US. Dist. LEXIS 79710 (W.D. Wash. 2006). See also Daimler Chrysler v. The Net Inc., 388 F.3d 201 (6th Cir. 2004); Ford Motor Company v. Catalanatte, 342 F.3d 543 (6th Cir. 2003). Id. at 680-681. The Christensen Firm, supra, 2006 U.S. Dist. LEXIS *8.

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to transfer the domain names back to resolve the fee dispute created a fact issue concerning its bad faith intent to profit. That intent may be shown by an offer to transfer a domain name to obtain a benefit in commercial dispute negotiation. The district court also found, as a matter of law, that the transfer of the domain names constituted "registration" of those domain names under the ACPA. Bosley Medical provided surgical hair transplants and owns, among others, the registered trademark Bosley Medical. Kramer, a dissatisfied former patient, purchased the domain name bosleymedical.com. Then, five days later, Kramer delivered a two page letter that read: Let me know if you want to discuss this. Once it is spread over the internet it will have a snowball effect and be too late to stop. M. Kramer [phone number]. P.S. I always follow through on my promises. Reversing the district court's grant of summary judgment in Kramer's favor the Ninth Circuit held that 15 U.S.C. § 1125(d) does not require plaintiff to show that the defendant has engaged in any commercial use. Rather, all that the trademark owner asserting an anticybersquatting claim must establish is (1) a valid trademark entitled to protection; (2) that its mark is distinct and famous; (3) the defendant's domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner's mark; and (4) the defendant used, registered or trafficked in the domain name; (5) with a bad faith intent to profit.35 This Court's Prior Findings. As this Court has twice found, Pacific Law Center and Solomon Ward have made a very strong showing of each of those elements. They have also demonstrated irreparable harm. Accordingly, they are entitled to permanent injunctive relief. IV PACIFIC LAW CENTER AND SOLOMON WARD ARE ENTITLED TO A PERMANENT INJUNCTION The Anti-Cybersquatting and Consumer Protection Act Provides For Permanent Injunctive Relief. Injunctive relief is the remedy of choice for cybersquatting as well as trademark and unfair
35

Bosley Medical Institute, supra, 403 F.3d at 681.

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-1107-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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competition violation precisely because there is no adequate remedy at law for the injury caused by a defendant's continuing infringement.36 Other district courts within the Ninth Circuit have entered similar permanent injunctions.37 At the July 12, 2007 contempt hearing, the Court found, inter alia that its preliminary injunction was clear on its face and that Pacific Law Center and Solomon Ward had produced clear and convincing evidence that Saadat-Nejad had persisted in registering/trafficking internet website names and terms since the entry of the preliminary injunction that violate that preliminary injunction. And so, the Court found Saadat-Nejad in contempt and had him jailed for civil contempt as a coercive measure to force him to abandon his continuing and future plan and violations of the preliminary injunction. The Court ordered Saadat-Nejad taken into custody until the July 25 hearing. At the July 25 hearing, again after extended colloquy, Saadat-Nejad said that he would obey the Court's preliminary injunction order. Accordingly, the Court released him from custody and ordered him to obey that injunction. All Court's prior findings, including the need for incarceration for civil contempt, underscore the need for a permanent injunction in this case. Pacific Law Center and Solomon Ward have established its entitlement to such injunctive relief. V SAADAT-NEJAD'S CONDUCT VIOLATES OTHER PROVISION OF THE LANHAM ACT AS WELL Trade Name Infringement. Saadat-Nejad's use of the internet domain names and sites "pacificlawcenters.com" and "solomonwardlawfirm.com" also constitutes an unlawful, willful, fraudulent and malicious interference with the service marks and trade names of Pacific Law Center and Solomon Ward. Saadat-Nejad's wrongful use of the confusingly similar internet domain name and internet
36 37

Bellagio v. Denhammer, et al., 2001 U.S. LEXIS 24764, *15 (D. Nev. 2001). See, for example, E.&J. Gallo Winery v. Spider Webs, Ltd., et al., 286 F.3d 270 (5th Cir. 2002); Flow Control Industries, Inc. v. Amhi, Inc., 278 F.Supp.2d 1193 (W.D. Wash. 2003); Seattle Laptop Incorporated v. A-1 Best Computer, Inc., 2006 U.S. Dist. LEXIS 13013 (W.D. Wash. 2006); Qwest Communications International v. Sonny Corporation, 2006 U.S. Dist. LEXIS 87007 (W.D. Wash. 2006); see also Daimler Chrysler v. The Net Inc., et al. 388 F.3d 2001 (6th Cir. 2004); Phillip Morris USA, Inc. v. Marlborough Express, Tobacco Traders and Trust, et al., 2005 U.S. Dist. LEXIS 4359 (E.D. NY 2005).

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-1207-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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sites "pacificlawcenters.com" and "solomonwardlawfirm.com" has already caused, and will continue to cause, irreparable injury to Pacific Law Center and Solomon Ward by misleading, confusing and misdirecting their clients, potential clients and the general public, intercepting potential "hits" on Pacific Law Center and Solomon Ward's internet sites and luring them to Saadat-Nejad's internet sites at "pacificlawcenters.com," "solomonwardlawfirm.com" and "us hostage.com." Trade Name Infringement/Dilution. Saadat-Nejad's registration of the internet domain name and operation of the internet site "pacificlawcenters.com" and "solomonwardlawfirm.com" for his own purposes also constitutes a statutory infringement and dilution of Pacific Law Center and Solomon Ward's service marks and trade names and acts of unfair competition. Pacific Law Center and Solomon Ward's service marks are distinct and famous marks. The Pacific Law Center and Solomon Ward marks are inherently strong and distinctive, have long been used in connection with services with which they appear, have long been the subject of substantial advertising and promotion, have been used and advertised throughout the United States, are widely recognized by consumers and those in the legal profession. Saadat-Nejad committed these acts after Pacific Law Center and Solomon Ward's service marks have become famous. Saadat-Nejad's acts have lessened the capacity of Pacific Law Center and Solomon Ward's famous marks to identify and distinguish Pacific Law Center and Solomon Ward's services. Saadat-Nejad's acts have blurred the unique association which had existed between Pacific Law Center and Solomon Ward's service marks and the services they offer, under those service marks. Trademark Infringement. Saadat-Nejad's use of Pacific Law Center and Solomon Ward's names and marks is without their permission or authority and had caused confusion among members of the public. Saadat-Nejad committed these acts of service mark infringement with full knowledge and disregard for Pacific Law Center and Solomon Ward's rights and with the intent to cause confusion and to deceive.
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-1307-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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False Designation of Origin. Saadat-Nejad's acts also violate 15 U.S.C. §1125(a) in that he has used a false designation of origin, a false or misleading description and representation of fact which is likely to cause confusion, and to cause mistake, and to deceive with respect to the affiliation, connection or association of Saadat-Nejad with Pacific Law Center and Solomon Ward and with respect to the origin, sponsorship, association, and approval of Saadat-Nejad's conduct by Pacific Law Center and Solomon Ward. Pacific Law Center and Solomon Ward's service marks are distinct and famous marks. The Pacific Law Center and Solomon Ward's marks are inherently strong and distinctive, have long been used in connection with services with which they appear, have long been the subject of substantial advertising and promotion, have been used and advertised throughout the United States and are widely recognized by consumers and those in the legal profession. Saadat-Nejad committed his misappropriation after Pacific Law Center and Solomon Ward's service marks have become famous. Saadat-Nejad has made use of marks that Pacific Law Center and Solomon Ward own in connection with services in interstate commerce. Saadat-Nejad's conduct violates the Lanham Act §43(c) in that he has caused dilution of quality of Pacific Law Center and Solomon Ward's service marks, all to Pacific Law Center and Solomon Ward's irreparable injury and damage. Saadat-Nejad's acts have lessened the capacity of Pacific Law Center and Solomon Ward's famous marks to identify and distinguish Pacific Law Center and Solomon Ward's services. Saadat-Nejad's acts have blurred the unique association which had existed between Pacific Law Center and Solomon Ward's service marks and the services they offer, market and distribute under those service marks. Saadat-Nejad's acts also violate 15 U.S.C. §1125(a) in that Saadat-Nejad has used a false designation of origin, a false or misleading description and representation of fact which has caused confusion and is likely to cause confusion, mistake, and to deceive with respect to the affiliation, connection or association of Saadat-Nejad with Pacific Law Center and Solomon Ward and with respect to the origin, sponsorship, association, and approval of Saadat-Nejad's conduct by Pacific
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-1407-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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Law Center and Solomon Ward. The Lanham Act provides for injunctive relief to prevent future violation of Pacific Law Center and Solomon Ward's service mark and trade name rights in addition to Saadat-Nejad's violations of the Anti-Cybersquatting Act. VI SAADAT-NEJAD'S CONDUCT ALSO VIOLATES CALIFORNIA LAW California Unfair Trade Practice Act. Saadat-Nejad's use of the internet domain names and sites "pacificlawcenters.com" and "solomonwardlawfirm.com" constitutes an unfair trade practice, that also entitles Pacific Law Center and Solomon Ward to injunctive relief under the provisions of California Business & Professions Code §§ 17200, et seq. Unauthorized Use of Name. Saadat-Nejad's conduct also constitutes the unauthorized use of Herbert Solomon and William Ward's names under the laws of the State of California, Civil Code §3344. Injunctive relief is not only the remedy of choice for violations of the Lanham Act but also for violations of California Unfair Trade Practices Act and Civil Code § 3344. VII CONCLUSION Pacific Law Center and Solomon Ward stand squarely among those whom Congress intended to protect by the Anti-Cybersquatting and Consumer Protection Act. Saadat-Nejad has no right to misappropriate their service marks, their trade names and their domain names, and then /// /// /// /// /// /// ///
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-1507-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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make extortionate demands for a half a million dollars or more just to leave them alone. Pacific Law Center and Solomon Ward are entitled to a permanent injunction in the same form as this Court's preliminary injunction.

DATED: November 15, 2007

Respectfully submitted, SOLOMON WARD SEIDENWURM & SMITH, LLP

By:

/s/ Edward J. McIntyre EDWARD J. MCINTYRE Attorneys for Pacific Law Center and Solomon Ward

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-1607-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION

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CERTIFICATE OF SERVICE I caused the PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION to be served in the following manner: Electronic Mail Notice List The following are those who are currently on the list to receive e-mail notices for this case. Electronic Mail Notice List NONE. The following party who is not on the list to receive e-mail notices for this case. He therefore requires manual noticing, via Federal Express: Shahrokh Saadat-Nejad 3713 Mt. Ashmun Place San Diego, CA 92111 VIA FEDERAL EXPRESS /s/ Edward J. McIntyre EDWARD J. MCINTYRE

-1707-CV-00460 JLS (POR) PACIFIC LAW CENTER AND SOLOMON WARD'S MEMORANDUM IN SUPPORT OF THEIR MOTION FOR PERMANENT INJUNCTION