Pacific Law Center et al v. Saadat-Nejad

Filing 76

MEMORANDUM OF FACTS AND CONTENTIONS OF LAW by Solomon Ward Seidenwurm and Smith LLP. (Attachments: # 1 Solomon Ward's Exhibit List, # 2 Solomon Ward's Witness List)(McIntyre, Edward) Modified on 5/29/2008, atty contacted re s/ (mkz).

Pacific Law Center et al v. Saadat-Nejad

Doc. 76

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EDWARD J. MCINTYRE [SBN 80402]
[e-mail] SOLOMON WARD SEIDENWURM & SMITH. LLP 401 B Street, Suite 1200 San Diego, Califomia 92101 Telephone: [phone] Facsimile : (619) 23 1 -47 5 5

Attomeys for SOLOMON WARD SEIDENWURM & SMITH, LLP

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

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PACIFIC LAW CENTER, A Professional Corporation and SOLOMON WARD SEIDENWURM & SMITH, LLP.,
CASE NO. 07-CV-00460 JLS (POR) Hon. Janis L. Sammartino

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Plaintift
SOLOMON WARD'S MEMORANDUM OF CONTENTIONS OF FACT AND LAW
SHAHROKH SAADAT-NEJAD,
Defendant.

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P100427 518:57 122.003

07-cv-o0460 LAB
N WARD'S MEMORAN

NTIONS OF FACT AND

Dockets.Justia.com

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15 16 The Anti-Cybersquating aad Consumer Protection Act Gives This Court the Power Permanently to Enjoin SAADAT-NEJAD's Misappropriation of SOLOMON WARD'S Service Marks, T¡ade Names and Domain Names'........'..."6

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Cybersquatting Factors.

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............. No Commercial Use Requirement This Court's Prior Findings.
Legal Standard for Permanent Injunction.

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The Anti-Cybersquatting Act Provides For Perma¡ent Injunctive Relief. ............................9 23

SAADAT-NEJAD'S Conduct Violates Other Lanham Act Provisions. .............................10
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.... Trade Name Infringement/Dilution. ....................., Trademark Infringement. ............. False Designation of Origin. .......
Trade Name Infringement.

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N WARD'S MEMORANDUM

NS OF FACT

AND LAW

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TABLE OT'AUTHORITIES
Page(s)
FEDERÄL CASES

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American-Arab Anti-Discrimination Committee v. Reno

Amoco Prod. Co. v. Village of Gambell 480 U,S. s31

(198Ð........

.......................... 8

Bellagio v. Denhammer, et al. 2001 U.S. LEX[S24764 (D. Nev.

2001).................

............9

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Bosley Medical Insîiture, Inc. v. Kremer

403F.3d672

(9'Cir.2005)...

................ 8,9

Daimler Chrysler v. The Net Inc., et al. 388 F.3d 2001 (6'n Cir. 2004)................. Daimler Chrysler v. The Net Inc.
388 F.3d 201

............................. 9

(6'Cir.

2004)...

...................

8

.15

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E.&J. Gallo Winery.v, Spider \lebs, Ltd., et al. 286F.3d270 (5'Cir. 2002)...
eBay Inc. v. MercÐxchange, L.L.C. 547 U.S.388

.... . .'... ......9

(2006)........ 2003)......

........................-.7

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Flow Control Industries, Inc. v. AmhL Inc. 278 F.Supp.2d 1193 (W.D. Wash. Ford Motor Comparyt v. Catalanatte 342F.3d 543 (6'n Ctu. Hodgers-Durgin v. De La Vina 199 F.3d 1037 (9'Cir.

.............'.......'. 9

2003)................. 1999).......... 2000)..........

.................................8

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.....................................

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Mattel, Inc. v. Internet Dimensions, Inc. s5 uspQ2d 1620 (s.D. NY

.............................6

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Phíllip Morris USA, Inc. v. Marlborough Express, Tobacco Traders and Trust, et al. 2005 U.S. Dist. LEXIS 4359 (8.D. NY 2005)..........
Qwest Communications Interndtional v. Sonny Corporatìon 2006 U.S. Dist. LEXIS 87007 (W.D. Wash.

........... 9

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2006).....

................................... 9

WARD'S MEMOR,ANDUM OF

Seattle Laptop Incorporated v. A-1 Besr Computer, Inc. 2006 U.S. Dist. LEXIS 13013 (w.D. Wash.

2006)......

.................................. 9

Sporty's Fdrm, LLC v. Sportman's Market, Inc. 202F3d489 (2d

Cir.2000)... .............

....................6

Walsh v. City and County of Honolulu 460 F. Supp. 2d 1207

................... 8

CALIFORNIA STATUES

Califomia Business & Professions Code $$ 17200, et Califomia Civil Code ô

seq.....

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3344......

ARD'S MEMORANDUM OF CONTENTIONS OF

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SOLOMON WARD respectfully submits that the trial of this case involves the following
facts and issues of law.

CONTENTIONS OF'F'ACT
Most, ifnot all, ofthe issues offact are not in dispute or are indisputable.

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Solomon Ward.
Solomon Ward Seidenwurm & Smith, LLP is a professional law corporation in San Diego, that is, and has been for more than 30 years, known and practicing law throughout Califomia and
across the counfiy.

Solomon Ward uses and has used the exclusive service ma¡ks and hade names "Solomon

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Ward Seidenrvr¡rm & Smith" and "Solomon Ward" in its professional business.
Solomon Ward has registered the internet domain names "swsslawcom" and

"solomonward.com" and has operated internet sites at swsslaw.com to make the public aware of
its professional practice. Solomon Ward has over many years built up valuable goodwill in its service ma¡ks and
trade names and both the legal profession and the general public has come to associate those names exclusively with Solomon Ward's professional practice in San Diego, throughout

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California and across the nation. Saadat-Neiad Retained and then Fired Pacific Law Center.
On August
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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, SaadaGNejad became dissatisfied with Pacific Law Center's representation and terminated its representation of him.

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Saadat-Neiad Misappropriates Pacific Law Center's Domain Name.
On September 20, 2006, Saadat-Nejad registered and obtained ownership ofthe intemet domain name "pacificlawcenters.com," which is confusingly similar to the intemet domain names registered to Pacific Law Center and sites it uses.
He maintained registration of the intemet domain name of, and operated the intemet site at,

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"oacificlawcenters.com. "

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Saadat-Nej ad, through a lawyer purporting to represent him, told Pacific Law Center that,

unless it paid him S500,000, he would continue to use its domain name. Saadat-Nej ad reiterated

that threaf af a meeting at Solomon Ward's office.

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Superior Court Action.
On January 12,2007, Pacific Law Center filed an action in superior court against Saadat-

Nejad, Case No. GIC 878352.
On February 23, 2007,Paciftc Law Cente¡ retained Solomon \üard to represent it in that

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lawsuit.
On February 27,2007, Solomon Ward successfully obtained a restraining order against
Saadat-Nej ad.

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Saadat-Neiad Misappropriates Solomon Ward's Domain Names.
On March 10 or 11, 2007, Saadat-Nej ad obtained the domain name

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"solomonwardlawfirm.com."
Saadat-Nej ad maintained registration of that intemet domain name and operated the

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intemet site at solomonwardlarvf,trm.com. SaadafNejad's intent was (1) to intercept Solomon Ward's actual and potential clients and
the general public who use intemet search engines' "keyword" search features that would otherwise lead them to Solomon Ward's intemet sites; and (2) to intercept clients who have added

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"law firm" to Solomon Ward's t¡ue intemet site name in an attempt to find Solomon Ward; and
(3) once clients enter saadat-Nejad intemet site, to expose them to its content, which he designed

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specifically to disparage and harm the goodwill of Solomon Ward, attempting to dissuade actual
and potential clients from doing business

with Solomon Ward and enticing them to communicate

by email with Saadat-Nejad and to visit another internet site that Saadat-Nejad owns and operates
under the intemet domain name "ushostage.com."
SaadaGNejad also registered and used solomonwardsandiego'com' Saadat-Nejad has made clear that he intended to continue his vendetta against Solomon

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Ward because it represented Pacihc Law Center initially in the state action and later in this action.

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Solomon V/ard has had inquiries questioning its association with the pirate site that Saada! Nejad has used. Solomon Ward has already suffered irreparable harm as a result of Saadat-Nej ad's conduct
and it

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will continue to suffer irreparable harm unless this Court stops him.
There is no way accwately to determine the whole of the harm that Saadat-Nejad has done

to Solomon Ward and its reputation and the reputation of its attorneys. Money damages are inadequate to repair that harm and, in that respect, Solomon Ward has
already suffered and continues to suffer irreparable harm and will do so until this Court stops SaadarNejad. This Court's record is already filled with evidence of SaadalNejad's misappropriation Solomon Ward's service marks, trade names and domain names. Accordingly, Solomon Ward respectfully request this Court to take judicial notice of its own files and di¡ect the Court

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of

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specifically to the exhibits already in the record.'

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This Action.
Solomon Ward sued Saadat-Nejad based oî, inter aliø,the Anfi-Cybersquatting provisions of the Lanham Act.2 This Court granted Solomon Ward's motion for a temporary restraining order and, thereafter, issued a preliminary injunction.

At

each hearing, the Court conducted a patient and extended colloquy

with Saadat-Nejad

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informing him what he could and could not do.

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Those Exhibits and authenticating declarations are at Mclntyre Declaration, with Exhibits (Docket No. 3), Slattery Declaration, \vith Exhibits (Docket No. 3); Phillips Declaration, with Exhibits (Docket No lS); Supplemental Memorandum, with Exhibits (Docket No. l8); Mclntyre Declaration (Docket No. 36); Mclntyre Declaration (Docket No. 39); Exhibits in Notice ofLodgment, and specifically Exhibits 5 through I I (Docket No. 39); Mclntlre Declaration (Docket No. 48).

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SOLOMON W

DUM OI CONTENTIO

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As a result, Saadat-Nejad attacked Judge Bums personally, accusing him, among other
lies, of being in Solomon Wa¡d's pocket.3
The temporary restraining order, however, did not stop Saadat-Nejad; neither did the

preliminary injunction. Nor did this Court's colloquies that wamed Saadat-Nejad not to "get chalk on his shoes,"
or he would go to jail.a Accordingly, the Court found Saadat-Nej ad in contempt and incarcerated

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him for almost two weeks.s
Solomon Ward now seeks to have this Court's preliminary injunction made permanent.

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The Temporary Restraininq Order. The Order.
On March 29,2007, this Court entered a temporary restraining order that states:

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Shahrokh Saadat-Nejad, and anyone acting in concert with him, is hereby enjoined
and restrained from:

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Registering, and trafficking in, any intemet website or domain name that contains the words Pacific. Law a¡d Center. with or without other words or symbols, in any respect whatsoever;

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2.

Registering, and trafficking in, any intemet website or domain name that contains the wordÀ Solomon a¡d Ward, with or without other words or symbols, in any respect whatsoever;

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Registering and trafficking in, the service mark or trade name Pacific Law Center in any respect whatsoever. Registering and trafficking in the service mark or trade name Solomon Ward or Sòlomon Ward Seidenwurm & Smith in any respect whatsoever.

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The Findines.

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In entering that order, the Court made the following findings offact and law:
The standard for issuing a temporary restraining order is identical to the standa¡d
Before imposing on this Court, however, Pacjfic Law Center and Solomon Ward attempted to see ifresolution was possible. They met with Saadat-Nej ad for four hours on Friday, March I 5; be showed up at Solomon Ward's
offrces with a baseball bat and tape recorder. See, for example, Transcript of April 26, 200? 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 pretiminary injunction motion (Docket No. 24) that Solomon Ward has 'Judges in their back pockets," the same accusation that he leveled against Judge Bums. Transcript of April 2 6 heating,4:22-23 (Docket No. 39). Contempt order, entered July 14,2006 (DocketNo. 43); July 12,2007 minute order (Docket No. l2).

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DUM OF CONTENTI

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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 ineparable harm or altematively if serious questions are raised and the balance of hardships tips sharply in the moving party's favor. These formulations represenf twó points on a sliding scale, which the required degree of irreoarable harm increases ás the probabilitv ofsuccess decreases. Even ifthe court is unce¡tain of the moving party's likelihooã of success on the merits, a TRO may still issue if the moving party convinces the cou¡t that the balance of hardships tips in its favor.
Here I find that the plaintiffs have shown both a combination ofprobable success on the merits and the possibility of irreparable harm and that serious questions are raised a¡d the balance of ha¡dships tips sharpìy in the moving party's favor. The TRO in this case is supported by declarations of Mr. Mclntyre and Thomas Slate þhonetic), 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.

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The declarations also substantiate that each law firm has established a secondary meaning to their service marks and trademark names associated with their professibnal practices. Mr. Saadat-Nejad, in the court's opinion, having viewed both his evidènce and that submitted by the plaintiffs, does not appear to have any legitimate trademark or common law or registered right to use any fttme even . , remotely simila¡ to Pacific Law Center or Solomon Ward and specifically no right to use pacificlawcenters.com and paciftc/law/centers.com or solomonwardlarlfirm.com or solomonwardsandiego.com.

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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 lawfirms, a secondary mea¡ing to these marks and the names associated with their professional practices.
The court has examined the underlying law in this case, the 1999 Anti' Cybersquatting and Consumer Protection Act, codified at Title 15 ofthe 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 hademark 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.

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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 thât although they probably can in this case, the plaintiffs don't need to show actual commercial interieience with their law praptices from Mr. Saadat-Nej ad's domain name misappropriation in order to prevail."

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Transcript ofMarch 29,2001lilearng, pp. 2:15-2:18 (Docket No. 39). [Emphasis added ]

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The Prelimina¡ry Iniunction.
On April 26,2007, this Court ente¡ed 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 ofproceedings 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 orde¡ that followed it apply here as well.
The Court confirms its findings from the earlier hea¡ing. I find that a preliminary iniunction should issue. I find both a combination of probable success onthe märits on the part of the plaintiffs and the possibility ôf ineparable harm ofthe kind that would isùe has not èeased subject to-ã cou¡t order. The balance of hardships tips sharply in favor of the moving party.'

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ISSUES OF LAW

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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 ofregistration

of

distinctive marks as Internet domain names with the intent to profit from goodwill associated with
those marks.8

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Cvbersquattins Factors.
SaadalNejad has no trademark or other intellectual property rights in Solomon Watd'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. SaadafNejad has no prior use of either domain name in connection wilh any bonafide

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offering of goods or services. Nor does Saadat-Nejad have abonaJìde non-commercial or fairuse

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Transcript of April26,2001 hearing, 4:12-13 @ocket No. 39). Mattel, Inc. v. Internel Dimensiong Inc.,55 USPQ2d 1620 (SD'NY2000). Sporty's Fqrm, LLCv. Spartman's Mørket, Inc.,2O2F.3d 489,493 (2d CÍ. 2000) (cybersquatting defined as "prevent[ing] use ofthe domain name by the mark owners, who might inûequentþ have been willing to pay 'ransom' in order to get 'tieir names' back:").

LOMON WAR

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of any mark in a site accessible under the domain name. Saadat-Nejad has made clear his intent to divert clients ftom Solomon Ward's online locations to sites accessible under the domain names
that he has registered with the intent to tamish or disparage 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 dolla¡s-through a lawyer

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purportedly representing

him-to

stop using the pacificlawcenters.com domain name and other

Pacific Law Center domain names.
The Solomon Ward marks are distinctive and famous in that they are widely recognized by the general consuming public in San Diego, in Califomia and across the United States as a designation of the services of Solomon Ward. SaadarNej ad's registration of multiple domain
names which he knows are identical or confusingly similar to the marks of Solomon

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Wa¡d-

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marks thàt are distinctive and famous. Solomon Wa¡d has established eight of the nine factors that 15 U.S.C. S 1125(d) (1XB) and 15 U.S.C. $ 1125(cXl) suggests a court might consider in determining whether there is actionable cybersquatting. Indeed, the only factor that Solomon Ward has not addressed is whether SaadafNejad provided material and misleading false contact information when he applied

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for the registration of the domain names. He has, however,

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pattem of prior conduct,

fi¡stinhis

attack on Pacific Law Center and, subsequently, his attack on Solomon Ward.

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Legal Standard for Permanent Iniunction.
The Supreme Court has identified the requirements for granting permanent injunctive

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relief: According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfu a four-factor test bef'ore a court mãy grant such relief. A plaintiff must demonstrate: (1)thatithas suffered an ineparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance ofhardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the^ public interest would nol be disserved by a permanent injunction.'

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eBayInc.v. MercExchange, L.L.C.,54'7 U.5.388, 391 (2006). See also Americqn-Arqb Anti-Disqimination
Commiüee y. Reno,70 F.3d 1045, 1066-67

(9' Cir. 1995) ("The

requirements for the issuance of a permanent

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The standards for permanent injunction and preliminary injunction are essentially the same

with the exception that in order for

a permanent

injunction to issue, plaintiff must ultimately show

actual success on the merits, instead ofprobably success on the merits.l0 SaadarNejad has no right to misappropriate domain names already registered to Solomon Ward or to misappropriate domain names so confusingly simila¡ to the names it uses.

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No Commercial Use Requirement.
Solomon Ward does not have has to show any commercial interference with its law
practices to prevail under the Anti-Cybersquatting Act.

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In a case almost directly in point,lr the Ninth Circuit has held that the Anti-Cybersquanrng Act does not contain a commercial use requirement.l2 The Christensen law firm sued Chameleon
because, Chameleon had shifted the registration of the Ch¡istenson law firm's domain names to

itself to gain leverage in a payment dispute. The district court held:

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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 mar! , and (2) has a bad faith intent to profit from use of the ma¡k as a
domain name.

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The court noted that many ofthe decisions under ACPA refer to "an extortionate offer to

sell" as the hallmark ofa bad faith intent to profit and found that Chameleon's "extortionate offer" to Íansfer the domain names back to resolve the fee dispute created a fact issue conceming 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 ofthe domain names constituted "¡eeistration" of those domain names under the ACPA.
injunction are the likelihood ofsubstantial and immediate irreparable injury and the inadequacy ofremedies at law;') See Hodgers-Durgin v. De La Vina,l99 F.3d 1037, 1042 (9^ Ctr' 1999) Amoco Prod. Co. v. Villøge of Gambell, 480 tJ.5. 531, 546 n.12 (1987 ) (emphasis added); see also ll/alsh v. City and County of Honolulu,460F. Supp. 2d 1207. l2l1 (D. Hawaii 2006). Bosley Medical Inst¡tute, Inc. v. Kremer,403 F.3d 672,608-81(9' Ci¡. 2005); The Christensen Fírmv Chømeleon Dato Corp.,2006 US. Dist. LEXIS 79710 (W.D. Wash.2006). See also Daimler Chrysler v. The Net Inc.,388F.3d201 (6ú Cir.2OO4); Ford Motor Compdny v. Catølqnqtte,342 F.3d 543 (6'Cir' 2003) Id. at 680-681. The Christensen Firm, supra,2006 U.S, Dist. LEXIS *8.

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SOLOMON WARD

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Bosley Medical provided surgical hair transplants and owns, among others, the registered trademark Bosley Medical. Kramer, a dissatisfied former patient, purchased the domain name

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bosleymedical.com. Then, five days later, Kramer delivered

a

two page letter that read:

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Let me know if you want to discuss this. Once it is spread over the intemet it will have a snowball effect a¡d 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

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Circuit held that 15 U.S.C. $ 1125(d) does not require plaintiffto show that the defendant has
engaged in any commercial use. Rather, all that the trademark owner asserting an anti-

cybersquatting 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, o¡ in

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the case of famous marks, dilutive of, the owner's mark; and (4) the defendant used, registered or

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trafficked in the domain name; (5) with a bad faith intent to profit.ra

This Court's Prior Findings.
As this Court has already twice found, Solomon Ward has made a very strong showing of
each elements. It has also demonstrated irreparable harm.

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Injunctive reliefis the remedy ofchoice for cybersquatting as well as trademark and unfair
competition violation precisely because there is no adequate remedy at law for the injury caused

by a defendant's continuing infringement.15 Other district courts within the Ninth Circuit have
entered similar permanent injunctions.l6

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At the July 12,2007 contempt hearing, the Court foun d, inter alia thal its preliminary
iniunction was clear on its face and that Pacific Law center and solomon ward had produced

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Bosley Medical Institute, supra, 403 F.3 d at 681 . Bellagio v. Denhqmmer, et a1.,2001U.S. LEXIS 24764, *15 (D. Nev. 2001). See, for example, E.&J. Gqlto lftnery v Spider lltebs, Ltd., et aI.,286 F.3d270 (5' Cir' 2002); Flow Control lndustries, Inc.v. Amhi, lnc.,278 F.Sttpp.2d I 193 (W.D. Wash.2003); Seqttle Laptop Incorpordtedy. A-1 Best Computer,12c., 2006 U.S. Dist. LEXIS 13013 (W.D. Wash. 2006); Qwest Communications Internatíonal v. Sonny Corporation, 2006 U.S. Dist. LEXIS 87007 (W.D. Wash. 2006); see also Dqimler Chrysler v. The Net Inc., et q\.388 F.3d2001 (6tr Cit.2OO4)i Phillíp Morris USA, Inc. v. Marlborough Express,'Tobacco Trqders qnd Trust. et ø1..2005 tJ.s. Dist. LEXIS 4359 (E.D. NY 2005).

OMON WARD'S

UM OF CONTE

OF FACT AND LA

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clear and convitrcing evidence that Saadat-Nejad had persisted in registering/traffrcking internet
website names and terms since the entry of the preliminary injunction that violate that preliminary

injunction. Accordingly, 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

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violations ofthe preliminary injunction. The Court ordered Saadat-Nejad taken into custody until
the July 25 hearing.

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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.

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Pacific Law Center and Solomon Ward have established its entitlement to such injunctive relief.

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SAADAT-NEJAD'S Conduct Violates Other Lanham Act Provisions.
Trade Name Infringement.
Saadat-Nejad's use of the intemet domain name and site "solomonwardlawûrm.com"

Saadat-Nejad's use of the intemet domain name and site "solomonwardlawfirm.com" constitutes
an

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unlaqûrl, willful, fraudulent and malicious interference with Solomon Ward's service ma¡ks

and trade names.

Saadat-Nejad's wrongful use of the confusingly similar intemet domain name and intemet

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site "solomonwardlawfirm.com" has already caused, and will continue to cause, Solomon Ward ineparable injury by misleading, confusing and misdirecting their clients, potential clients and the
general public, intercepting potential "hits" on solomon ward's intemet sites and luring them to

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Saadat-Nejad's intemet sites at "solomonwardlawfirm.com" and "us hostage.com."

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Trade Name Infrinsement/Dilution.
SaadafNejad's registration of the intemet domain name and operation of the intemet site

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"solomonwardlarvfrrm.com" for his own purposes also constitutes a statutory infringement and

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dilution of Pacific Law Center and Solomon Ward's service marks and trade names and acts of
unfair competition.

OF FACT AN D LAW

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Solomon Ward's service ma¡ks are distinct and famous marks. The 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

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legal profession. Saadat-Nejad committed these acts after Solomon Ward's service marks became famous.

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7 8 9 10

SaadafNejad's acts have lessened the capacity of Solomon Wa¡d's famous marks to

identify and distinguish Solomon Ward's services. Saadat-Nejad's acts have blurred the unique
association which had existed between Solomon Ward's service marks and the services it offers, under those service marks.

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Trademark Infringement.
Saadat-Nejad's use of Solomon Ward's names a¡d marks is without its 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 Solomon Ward's rights and with the intent to cause confusion and to deceive.

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False Desisnation of Origin,
SaadafNej ad's acts also violate 15 U.S.C. $1125(a) in that he has used a false designation

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oforigin,

a false or misleading description and representation

of fact which is iikely to cause

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confusion, and to cause mistake, and to deceive with respect to the affiliation, connection or association of Saadat-Nejad with Solomon Ward and with respect to the origin, sponsorship, association, and approval ofSaadafNejad's conduct by Solomon Ward. Solomon Ward's service marks are distinct and famous ma¡ks. Solomon Wa¡d's marks are

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inherently strong and distinctive, have long been used in connection with services with which

it

appear, have long been the subject of substantial advertising and promotion, have been used and

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advertised throughout the United States and are widely recognized by consumers and those in the legal profession. Saadat-Nejad committed his misappropriation after Solomon Ward's service marks became famous.

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OF CONTENTIONS OF FACT AND LAW

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Saadat-Nejad has made use of marks that Solomon Wa¡d owns in connection with services

in interstate commerce.
Saadat-Nejad's conduct violates the Lanham Act $43(c) in that he has caused dilution

of

4 f, 6 7

quality of Solomon Ward's service ma¡ks to Solomon Wa¡d's ineparable injury and damage.
Saadat-Nejad's acts have lessened the capacity of Solomon Ward's famous marks to

identifr and distinguish Solomon Ward's services. Saadat-Nejad's

acts have bluned the unique

association that had existed between Solomon Ward's service marks and the services it offets,

I
9

markets a¡d distributes under those service marks. Saadat-Nejad's acts also violate 15 U.S.C. $1125(a) in that Saadat-Nejad has used a false
desigrration oforigin, a false or misleading description and representation of fact which has caused

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confusion and is likely to cause confusion, mistake, and to deceive with respect to the affiliation, connection or association of Saadat-Nejad with Solomon Ward and with respect to the origin, sponsorship, association, and approval of Saadat-Nejad's conduct by Solomon Ward. The Lanham Act provides for injunctive reliefto prevent future violation of Solomon

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Ward's service mark and trade name rights in addition to Saadat-Nejad's violations of the AntiCybersquatting Act.

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SAADAT-NEJAD'S Conduct Also Violates California Law. California Unfair Trade Practice Act.
SaadalNejad's use of the intemet domain name and site "solomonwardlawfirm.com"
constitutes an unfair trade practice, that also entitles Solomon Ward to injunctive ¡elief under the provisions of Califomia Business & Professions Code $$ 17200, et seq.

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'rt
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Unauthorized Use of Name.
Saadal-Nej ad's conduct also constitutes the unauthorized use of Herbert Solomon and

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Willìam Ward's names under the laws of the Califomia Civil Code $3344.
Injunctive relief is not only the remedy of choice for violations ofthe Lanham Act but also fo¡ violations of Califomia Unfair Trade P¡actices Act and Civil Code $ 3344.

)<
26

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SOLOMON WARD'5

CONTENTIONS OF

F

Relief Requested.
Solomon Ward stands squarely among those whom Congress intended to protect by the

Anti-Cybersquatting and Consumer Protection Act, the other La¡ham Act provisions and whom Califomia Legislatu¡e also intended to protect. SaadafNejad has no right to misappropriate
Solomon Ward's service marks. its trade names and its domain names. Solomon Ward is entitled

to a permanent injunction in the same form as this Court's preliminary injunction.

DATED: Mav27.2008

SOLOMON WARD SEIDENWURM & SMITH, LLP

ARD J. M Attomeys for SOLOMON WARD SEIDENWURM

SOLOMON WARD'S MEMORAN DUM

CERTIFICATE OF SERVICE
1

,
3

I caused the:

(1)
LAW;

SOLOMON WARD'S MEMORANDUM OF CONTENTIONS OF FACT AND

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(2) (3)

SOLOMON WARD'S WITNESS LIST; AND SOTOMON WARD'S EXHIBIT LIST 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

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Electronic Mail Notice List
NONE,

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I manually served the following: Shahrokh SaadarNejad 3713 ML Ashmun Place San Diego, C492111

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15

16 17 18 19

VIA FEDERAT

EXPRESS

Mclntvre
MCINTYRE

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P:303a88.1 :57 1 22.003 1.4

07-cv-00460 LAB (POR)