Pacific Law Center et al v. Saadat-Nejad

Filing 80

BRIEF Addressing Issues This Court's Order Raised Directing Parties to Show Cause Why Summary Judgment Should Not Be Entered by Solomon Ward Seidenwurm and Smith LLP. (Attachments: # 1 Declaration of Edward J. McIntyre, # 2 Declaration of Michael M. Vasseghi, # 3 Exhibit Notice of Lodgment of Exhibits)(McIntyre, Edward) Modified on 7/28/2008 to term motion, correct event (mkz).

Pacific Law Center et al v. Saadat-Nejad

Doc. 80

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EDWARD J. MCINTYRE ISBN 80402] emci ntyre@swss law.com MICHAEL M. VASSECHI ISBN 210737] mvassegh i@swss law.com SOLOMON WARD SEIDENWURM & SMITH, 401 B Street, Suite 1200 San Diego, California 92101 Teleohone: (61 9) 231-0303 Facsimile: ß1Ð 231-47 55

LLP

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Attornevs for SOLOMON WARD SEIDENWURM & SMITH, LLP

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT

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CALIFORNIA

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PACIFIC LAW CENTER, A Professional Corporation and SOLOMON WARD SEIDENWURM & SMITH, LLP.,

CASE NO. 07-CV-00460 JLS (POR)

Plaintiff,

SOTOMON WARD'S BRIEF ADDRESSING ISSUES THIS COURT'S ORDER RAISED DIRECTING PARTIES TO SHOW CAUSE WHY SUMMARY IUDGMENT SHOULD NOT BE ENTERED
Date: Time:

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SHAHROKH SAADAT-NEJAD,
Defendant.

To Be Determined To Be Determined
is L. Sammartino

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Courtroom:6
Hon.
Jan

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p:o0432243.3:eo126.ol

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07-CV-00460 JLS (POR)

Dockets.Justia.com

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TABLE OF CONTENTS
PAGE(S)

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.................... pRocEDURAL BACKCROUND FACTUAL BACKCROUND Solomon Ward...............
|NTRODUCT|ON
Saadat-Nejad Retained, then Fired Pacific Law Center'.. '.......

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

ì

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..."'..........'.2

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..........2

Saadat-Nejad Misappropriates Pacific Law Center's Domain Name. ."'..'....'..........'.. 3

Then Saadat-Nejad Misappropriated Solomon Ward's Domain Names'.'......... ......,..4

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Misappropriation....,............ ..'...'..'......'..5 ...............................s PREVTOUS FTNDINCS OF THIS COURT........... ......"...6 The Findings. ....'......'..7 The Preliminary lnjunction.
Evidence of Saadat-Nejad's SAADAT-NEJAD SHOULD BE PERMANENTLY ENJOINED FROM RECISTERINC AND MAINTAININC WEB SITES WITH "SOLOMON WARD" .................................8 tN THE DOMAIN

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N4ME......... Prior Demands for Money. Quid Pro Quo Ransom in Disguise......
No Commercial Use

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......"......'....12
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A Demand For Money ls Not Necessary for an ACPA Violation. .........'..........'.......'

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Requirement.................. Saadat-Nejad Registered Multiple Web Sites........

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A Permanent lnjunction Will Not lnfringe On Saadat-Nejad's First Amendment .."'.....'......".16 Rights..............
JUDCE BURNS', FINDINCS SHOULD

STAND

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2A

vil

CONCLUSION

SOLOMON W

BRIEF

WHY

JUDCMENT

BE

E

NTERE D

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TABLE OF AUTHORIT¡ES
page(s)
CAsEs

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Bosley Medical lnstitute lnc. v. Kremer, 403 F.3d 672(9'h

c¡.2005)............... 1960)...............

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Castner v. First National Bank of Anchorage, 278 t.2d 376 (grh cir. Fairbank v. Wunderman Cato Johnson, 212F.3d 528 (9'h

........................17

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Cir.2000)............... 2007\

.............'.......'..17 .....'.....17 ................'.'."'.15 .........". .'. pass¡m ...........'.'10

/n re: Cenesisintermedia, lnc. Securities Lit., 2002 U.S. Dist. LEXIS 95243 (C.D. Cal. Lamparello v. Falwell, 420 F.3d 309 (4rh cir.

2005)............... 2004)......,........

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Lucas Nursery and Landscaping, lnc. v. Crosse, 359 F.3d 806 (6'h Clr.

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Sporfy's Farm, LLC v. Sportman's Market, lnc.,

2O2F.3d489 Qd

Cir.2000)

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Ihe Christensen Firm v. Chameleon Data Corp.,
2006 U.S. Dist. LEXIS 79710 (Wash.
The Toronto Dominion Bank v. Karpachev, 188 F.Supp.2d 110 (Mass. 2002\

2006)..............

.'....."'...."..."'.".14
'.......'..13,14 .".......'.......10,
11

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

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TMI lnc. v. Maxwell, 368 F.3d 433 (5rh cir.
STATUTES

2004)...............

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15 U.S.C., S

112s(d).........

...........'....--..---.7

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SUMMARY JU

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soloMoN

WARD SEIDENWURM & SMITH respectfully submits the following brief

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in response to this Court's June 16, 2008 Order.
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INTRODUCTION No good deed goes unpunished. Solomon Ward did what it does best-it
represented a client in a lawsuit. ln retaliation, SaadafNejad turned on Solomon Ward, appropriated, with miniscule and confusingly similar variation, Solomon ward's domain
names and launched web sites attacking the

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firm. His web

sites accuse Solomon ward

attorneys, among other things, of sponsoring terrorism, and engaging in international child
sex slavery. These are not "gripe sites"-sites registered by disgruntled customers to

complain about a bad experience with an entity that provided them with poor product or

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service. Saadat-Nejad was never a client of Solomon Ward, and has no basis to gripe about
the firm.
Because Saadat-Nejad's web sites violated the Anti-Cybersquatting Protection Act,

this Courl granted Solomon Ward a temporary restraining order and then a preliminary

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injunction; both barred Saadat-Nejad from misappropriating Solomon Ward's domain

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names-or ones so close that it was difference without distinction. The subsequent
contempt proceedings demonstrate that, if given the opportunity, saadat-Nejad will resunect
those web sites. Solomon Ward requests that this Court make its preliminary injunction permanent in order to prevent Saadat-Nejad from doing just that.

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PROCEDURAL BACKGROUND On June 12,2008, this Court heard Solomon Ward's motion to make this Coutt's

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preliminary injunction pefmanent. sua sponte, the Court entered an order to show cause

why summary judgment should not be granted and requested the parties brief three issues:
1)

what const¡tutes bad faith intent to profit as required under Anti-Cybersquatting Protection

Act; 2) what is the legality of "gripe sites;" 3) if defendant did posses bad faith intent; but no
longer does, can the Court still permanently enjoin him from creating gripe sites that

OMON W

BRIEF WHY

JU

DCME

LD BE ENTE

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incorporate the words "solomon Ward" and "Pacific Law Center."r An analysis of the first

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inquiry, necessarily answers the second and third questions.

ilt
FACTUAL BACKGROUND

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Solomon Ward. Solomon Ward has been for 30 years, known and practicing law throughout

Calìfornia and across the country.2 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

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"swsslaw.com" and "solomonward.com" and has operated internet sites at swsslaw.com to
make the public aware of its professional practice.3

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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.o

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Saadat-Neiad Retained, 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, Saadat-Nejad became dissatisfied with Pacific Law Center's representat¡on,

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terminated ¡ts representation of him and began a course of conduct, including posting
disparaging comments about Pacific Law Center on the internet calculated to intelere with and damage it and its business operations.s

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See Order: Directing Parties To Show Cause As to Why Summary Judgment Should Not Be Entered. Dated July 16,2008. (Docket No. 78) Declaration of Edwaró J. Mclntyre ("Mclntyre Decl.") in Support of Solomon Ward's

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Application for TRO at /d. at f 15. /d. at I 16.

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14. (Docket No.55)

ld.atfL

BRIEF WHY

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DCME NT

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Saadat-Neiad Misappropriates Pacific Law Center's Domain Name.

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On September 20, 2006, Saadat-Nejad registered and obtained ownership of the
internet domain name "pacificlawcenters.com," which is confusingly similar to the internet

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domain names registered to Pacific Law Center and sites it

uses.6

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

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of Pacific Law Center and the general public who use ¡nternet search engines "key word"
search features which would otherwise lead them to Pacific Law Center's internet site(s), (2)

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intercepting consumers who have added the letter "s" to Pacific Law Center's true ¡nternet
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

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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."T
Saadat-Nejad has made clear that he

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will not stop using the Pacific

Law Center mark

and trade name. He further made clearthat he intended to continue his vendetta against Pacific Law Center arising out of its representation of him in state court.s SaadarNejad, through a lawyer purporling to represent him, told Pacific Law Center

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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.e Pacific Law Center knows that it has lost clients as a result of Saadat-Nejad's

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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

6 /d.atf9. i /d. at f 10. I /d. at u 11.

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td. atn 12.

SOLOMON W

SUMMARY JU

LD BE ENTERED

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saadat-Nejad, case No.

clc

878352. on February 23, 2007, Pacific Law center retained

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Solomon Ward to represent it in that lawsuit. On February 27,2OO7, Solomon Ward successfully obtained a restraining order against Saadat-Nejad. Then Saadat-Neiad Misappropriated Solomon Ward's Domain Names.
Saadat-Nejad has obtained at least two a confusingly similar domain names

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"solomonwardlawfi rm.com" and "solomonwardsandiego'com'"r0
Saadat-Nejad maintained registration of these internet domain names and operated

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these internet sites 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

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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 ¡ts

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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.

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"ll will not stop
using the Solomon Ward mark and

Saadaf Neiad has made clear that he

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.r'z Solomon Ward has already had inquiries about the pirate site that Saadat-Nejad has
used.

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"
At this point it is clear that Solomon Ward has already suffered irreparable harm as a

result of Saadat-Neiad's conduct and it

will continue to suffer irreparable harm

unless this

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to t'

ld. ld. ld. 13 ld.

"

at l[ 18. at 10.

âr111 ^+ftr

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BRIEF WHY

Y JUDGME

ULD BE E

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Court stops him permanently.'o There is no way to accurately determine the whole of the
harm that SaadafNejad has done to Solomon Ward and its reputation and the reputation of
its attorneys. As a result, money damages are inadequate to repair that

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harm. ln that

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respect, solomon ward has already suffered and

will continue to suffer irreparable harm

untilthis Court stops Saadat-Nejad for good.t5
Evidence of Saadat-Neiad's Misappropriation. This Court,s record is already filled with evidence of SaadatNejad's misappropriation

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of Solomon Ward's service marks, trade names and domain names. Solomon Ward respectfully requests this Court to take judicial notice of its own files and direct the Court specifically to the exhibits already in the record.t6

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IV
PREVIOUS FINDINGS OF THIS COURT

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This court has granted 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.

As a

result, Saadat-Nejad attacked Judge Burns personally, accusing him, among other lies, of being in Solomon Ward's pocket.tt
The temporary restraining order, however, did not stop SaadaGNejad; neither did the

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preliminary injunction. Nor did this Court's colloquies that warned saadat-Nejad not to "get

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Those"Exhibits and authenticating declarations are at Mclntyre Declaration, with Exhibits (Docket No.3); Slattery Declaration, with Exhibits (Docket No.3); Phillips Declaration, with Exhibits (Óocket No. 18); Supplemental Memorandum, with Exhibits (Docket No' 18); Mclntyre Declaration (Docket No. 36); Mclntyre Declaration (Docket No' 39); Exñibits in'Norice of Lodgment, and specifically Exhibits 5 through 11 (Docket No. 39); Mclntvre Declaration (Docket No. 48). See, fór example, Transcript of April 26, 2OO7 hearing, Exhibit 4, and specifically p. 4:35 (Docket No. 39); see also Exhibits 5.2 and 9.6 (Docket No. 39). By way ot turther example. he claimed in his response to the preliminary injunction motion (Docket No. 24) that Solomon Ward has ".ludges in their back pockets," the same accusation that he leveled against J udge Burns.

N WARD'

WHY SU

MENT SH

E ENTERED

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chalk on his shoes," or he would go to jail.rs Accordingly, the Court found Saadat-Nejad in contempt and incarcerated him for almost two weeks.'' On March 29, 2OO7, this Court entered a temporary restrain¡ng order that states:
Shahrokh Saadat-Nejad, and anyone acting in concert with him, is hereby enjoined and restrained from: Registering, and trafficking in, any internet web site or domain name that contalns the words Pacific, Lãw and Center, with or without other words or symbols, in any respect whatsoever;
Registering, and trafficking in, any internet web site or domain name that contiins the words Solomoriand Wãrd, 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 Sólomoñ Ward Seidenwurm & Smith in any respect whatsoever.

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The Findings. ln entering that order, this Court made the following findings of fact and law:
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 musl show ... [a strong likelihood] of probable success on the merits and the possibility of irreparable harm or alternatively if serious questions are ràised and the balânce of hardships tips sharply in the moving party's favor. These formulatlons represent two points on a sliding scale, wn¡ón tne required degree of ineparable harm increases as the probability of success decreases. Evõn if the court is uncefiain 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. ir¡clñtvre and Thomas Slate (phonetic), a dupervisiirg lawyer at pacific law centei. Their declarations sribstantiate that Mr. Saaðat-Nêjad intentionally obtained and used confusing web sites 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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Transcript of April 26 hearing, 4:22-23 (Docket No. 39). Contempt order, entered July 14, 2006 (Docket No. 43); )uly 12,2007 minute order (Docket No. 12).

ENT SHOU LD

The declarations also substantiate that each law firm has established a secondary meaning to their service marks and trademark names associated with theii professiõnal practices. Mr. SaadalNejad, in the court's opinion, having viewed both hid evidence and that submitted by the plaintiffs, does not aÞoea"r to have anv legitimate trademark or common law or registered right to uiò anv name eveir relmotelv similar to Pacific Law Center or Solomon Ward and soecificallv no rieht to use pacificlawcenters.com and oacific/law/centers.cõm or solomonwa rd lawfirm.com or solomonwardsandiego.com.
I find in agreement with the plaintiffs that there's a great likelihood of harm if this condùct oersists to their reputation. As I said, l'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 underlving law in this case, the 1999 AntiCvbersquatting and Consumer Protêctlon Act, codified at Title 15 of the U'n¡ted States eode, Section 1 125(d). The purpose of that section is to protect consumers and Amêrican businesses and to promote growth of online commerce, provide clarity for trademark owirers by prohibiting bad faith and abusive reeistration of disiinctlve marks as internet domain names with the Intent to piofit from the goodwill associated with those marks'

ln addition, the 9th Circuit has held that the Anti-Cybersquatting Act does not conta¡n 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 praciic-es from Mr. Saadat-Nejad's domain name misappropriation in order to orevail."
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16 ll The Preliminary lniunction.
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On April 26,2007, this Court entered a preliminary injunction that repeated verbatim
the Court's prior temporary restraining order. ln entering that preliminary injunction, this Court found: The Court incorporates the transcript of proceedings at the temporary restrainins ordei. I understand that it has not yet been prepared, but I incorporafu that into my finding and analysis today. The legal.standards discussed at that hearinþ 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 iuccess on'thó merits on the part ofthe plaintiffs and the possibility of irreparable harm of the kind ihat would issue has not ceased subject to a couft order. The balance of hardships tips sharply in favor of the moving party.''

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20 Transcriptof March 29,2OO7 hearing,pp.2:15-2:18(DocketNo.39). lEmphasisadded.] 2' Transcriþt o1 April 26,2007 hearing,4:12-13 (Docket No. 39)'

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SAADAT-NEJAD SHOULD BE PERMANENTLY ENJOINED FROM RECISTERING AND MAINTAIÑING WEB SITES WITH "SOLOMON WARD" !N THE DOMAIN NAME The Anti-cybersquatting Protection Act ("ACPA") lists nine non-exclusive factors for courts to consider in deciding wheiher a defendant has a bad faith intent to profit from use

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of a mark. Analyzing these factors leads to the inescapable conclusion that this Court should
afford Solomon Ward the intended protection of the ACPA. lt analyzes each of these nine factors in turn.
(1) the trademark or other intellectual property rights of the person, if any, in the domain name;

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'1977. The firm has used the Solomon Ward is a San Diego based firm, established in
exclusive service marks and trade names "solomon Ward Seidenwurm & Smith" and

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"solomon Ward" in its professional business. The firm has registered the internet domain
names "swsslaw.com" and "solomonward.com" and has operated sites at "swsslaw.com" to make the public aware of its professional practice. solomon ward has more than thirty years of established right to use ¡ts own name as its domain name.

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saadat-Nejad registered multiple sites with domain names that contain the name, "Solomon Ward."
(2) the extent to wh¡ch the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

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"solomon Ward" is Solomon Ward's name; ¡t does not constitute any paft of SaadatNejad's legal name, nor is he referred to by any of those names.

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prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(3) the person's

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Saadat-Nejad's web sites were designed for the sole purpose of attacking and

disparaging Solomon Ward. Saadat-Nejad's web sites offered no goods or services, of any
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BRIEF

W

UMMARY JU

SHOULD

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(4) the person's bona fide noncommercial or

fair use of the mark in a site accessible under

the domain name;
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,,Bona F¡de," saadat-Neiad's web sites Are Not Legitimate cripe sites And Therefore Not
Cases dealing with the ACPA look to the intent of the web site creator to determine

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whether the use of the site is "bona fide" or constitutes "fair use." In Lucas Nursery

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defendant registered the domain name www.lucasnursery.com to post her dissatisfaction

with a landscaping company she had actually used, and included complaints regarding its
poor preparation of thesoil before laying sod. The court held that there was no ACPA

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violation because her actions did not amount to "bad faith intent to profit'" The court,
however, qualified its reasoning: "[p]erhaps most important to our conclusion are,
[defendant's] actions, which seem to have been underlaken in the spirit of informing fellow consumers about the practices of a landscaping company that she believed had performed

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inferior work on her yard."23
The crifical distinction between Saadat-Nejad's web sites and the single site registered by defendant in Lucas Nursery is that the lucas Nursery defendant was a customer of the entity she registered a gripe site against. Had she not been a customer, she would

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,,gripe." whether she actually obtained poor services from the nursery have had no basis to
is irrelevant. What was important was the she contracted for Lucas Nursery's services, used

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their services, paid them, and was ultimately unhappy with the service they provided her.
He connection with Lucas Nursery provided a "bona fide," "fair use" reason for registering a

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gripe site. SaadatNejad was never a client of Solomon Ward. Solomon Ward never provided
any services to SaadafNejad, and therefore he has no reason to have a gripe about any orofessional services Solomon Ward rendered to him. The only reason Solomon Ward came ¡nto saadat-Nejad's scope was because it successfully represented its client, Pacific Law

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lucas Nursery and Landscaping,, lnc. v. Crosse, 359 F'3d 806
added). /d. at 811.

(6tn

Cir' 2004) (emphasis

SUMMARY

J

U

NT SHOU LD

B

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Lenrer.
//Fair saadat-Neiad,s web s¡tes Provide No valuable Information, and Do Not const¡tute Use."

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The content of the gripe site registered by the Lucas Nursery defendant was

informative, and used as a platform to publish what the customer perceived as a legitimate complaint about plaintiff's services. The gripe site provided at least two legitimate, "fair use"
purposes:1) to warn would-be customers that the nursery might provide them with sub-par service; and 2) to induce the nursery to improve its level of service to avoid the embarrassment of such criticism in the future.
Saadat-Nejad's web sites have no such informative or "fair use" qualities. The

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content of Saadat-Nejad's web sites are filled with baseless accusations, such as allegations that Solomon Ward attorneys represent child abusers and child molesters, and that they
engage in international child sex slavery.to No legitimate purpose exists for these web sites,

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,,gripe." They do not warn potential Solomon Ward clients about any and are void of any
deficiencies in the firm's services. lndeed they cannot since Saadat-Nejad has no basis for
such a "gripe" because he was never a cl¡ent. Nor do the sites motivate Solomon Ward to improve anything about the firm. That is
because Saadat-Nejad's web sites either criticize Solomon Ward for things it cannot change

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(that many attorneys at the firm have certain religious affiliations), or that are simply not true, (that Solomon Ward attorney's engage in international child sex slavery or that they support certain terfofist organizations). The unique circumstances of each case should be considered in each case which do not fit neatly into the specific factors enumerated by

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Congress.2t The unique cifcumstances and reality of this case is that Saadat-Nejad has no
basis for any gripe again Solomon Ward.

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2o htto://sol omonwardlawf

i

"

ÏàãSããrtvt-i^r^,-tlèi.iportnan'sMarket, Inc',2o2F.3d489,499(2"dClr.2000)'

rm

.com

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2/2007\

SHOULD

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TMI

lnc.,26 another case

cited in this Court's July 16, 2008 Order also discusses the
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intent behind gripe web sites. As in Lucas Nursery, TMI lnc. also involved a gripe site by
dissatisfied customer, unhappy with
m

isrepresentations the homebuilder TMl, lnc. made.

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Like the defendant in Lucas Nursery, the defendant in TMI lnc. registered a single site for the

purpose

of publicizing his dispute with

plaintiff.

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That court said: Perhaps most important to our conclusion are,, [defendant's] actìons, which seem'to have heen undertaken in the spirit of informing fellow consumets about the practices of a landscaping company that she helieved had performeë! inferior work on her'yaid. One of the ACPA's main objectives is ihe protection of consumers froni slick internet peddlers who trade on the nanìes and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely

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10

not inconsistent with this ideal."

l1
12 13 14 15 Saadat-Nejad's web sites simply attack Solomon Ward and are devoid of the "spirit of

informing fellow consumers" about Solomon Ward. His web sites differ materially from the web sites at issue in Lucas Nursery and TMI /nc.-where defendants' web sites were
registered with at least a facial appearance of consumer protection or consumer information. (5) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or_Cisparage the mark, by creating a likelihood of confusiõn as to the source, sponsorship, affiliaiion, or endorsement of the site; Several factors support Saadat-Nejad's intent to divert customers from Solomon

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21

Ward's web site to one of his own. First, the fact that the domain names are designed so
that anyone performing a "keyword" search for Solomon Ward's legitimate web site gets
Saadat-Nejad's web sites as an option.

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Once the person is re-directed to his web sites, he provides the following

admonition: "WARNINC: DO NOT HlRE." lt is obvious that he intends this to be read by ootential of current Solomon ward clients. His "intent to divert" is also apparent because he

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'6 "

TMI lnc. v. Maxwell, 368 F.3d 433 TMI lnc. at 440 (emphasis added).

(5'h

cir. 2004).

ARD'S BRIEF WHY

JUDCMEN

LD BE ENTE

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one tr¡p to the office, he brought a baseball bat with him). He refused.30

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3

During this phone conversation, Saadat-Nejad said that he would enter into a stipulation for permanent injunction, but he made his demand for money from Solomon Ward clear and certain. He wanted to be compensated for the "harms" Solomon Ward had
caused him, including causing him to go to lail and filing falsified documents.3'

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J

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7

When asked how much money he thought he was entitled to receive, Saadat-Nejad
stated that the amount was for "you [Solomon Ward] to figure out."r2 Asking for

money-

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regardless of how one labels the demand-is further evidence that Saadat-Nejad demands

compensation as a precondition to agreeing to a permanent injunction that would bar him

from using web sites with Solomon Ward's name in their domain names. A Demand For Money ls Not Necessary for an ACPA Violation.
Even if SaadarNejad had truly abandoned his idea of holding Solomon Ward's web
sites for ransom. that alone, does not overcome an ACPA violation.

12
13

14
15

ln The Toronto Dominion

Bank33

("TDB"), Boris Karpachev, a disgruntled customer of

TD Waterhouse, registered several domain names composed of variant misspellings of the
name tdwaterhouse.com.'o On the internet sites associated with these domain names,

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Karpachev accused TD Waterhouse of "webfascism" and Toronto-Dominion Bank for its

involvement in "white collar crime."3s Toronto Dominion Bank moved for summary judgment on its claims for trademark infringement and unfair competition under the ACPA.
There was no dispute that plaintiff had a preexisting distinctive and famous mark and that the domain names that Karpachev registered were identical or confusingly similar. The

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))
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25

court looked to whether Karpachev had acted in bad faith with intent to profit from plaintiff's

30 Declaration of Michael M. Vasseghi u 2 (filed concurrently herewith)'

3'

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SaadarNejad, of course, went to jail for violating Judge Burns' order, not becauöe of anything fhat Solomon Ward did. Similarly, Solomon Ward has never filed any falsified documents in this case. 32 td. aT n 4. 33 The Toronto Dominion Bank v. Karpachev, 188 F.Supp.2d 1 10 (Mass' 2002). 3o td. at 113. 35 ld. at 1'12.

/d. at tf

3.

SOLOMON W

WHY SUMMARY JU

LD BE ENTERED

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mark, and found that he had "traversed" several of the nine factors, including the fact that 1) he intended to divert consumers from plaintiffs' mark; 2) he created multiple domain names;
3) the domain names that were created were not in connection with the offering of any

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5

goods or services; 4) he had no intellectual propedy rights to the names; and 5) he had acted

with intent to tarnish or disparage TD Waterhouse's and Toronto Dominion Bank's

marks.36

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Based on these findings, the Court granted plaintiff's motion for summary judgment on the

ACPA claims. Saadat-Nejad has "traversed" every single ACPA factor Karpachev 'traversed" in

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TDB, and more. Notably, nothing in TDB suggests that Karpachev, asked for any money in
exchange for the "release" of the domain names he had created. The lack of a demand for money did not preclude the fDB court from granting summary judgment that supported a

12 13

findine of an ACPA violation.

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Judge Burns has already established that there is no need for Solomon Ward to show

commercial interference with its law practice to prevail under the ACPA37 and this Court
appears to concur with Judge Burns.38 The Ninth

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circuit

has held that the ACPA does not

contain a commercial use requirement.3e ln lf,e Christensen Firm,oo lhe law firm sued
because the defendant had shifted the registration of the firm's domain names to itself to

gain leverage in a payment dispute. Besides finding that defendant was not entitled to summary judgment on plaintiff's ACPA claims against him, despite the absence of a

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"commercial use," the case again highlights that gripe sites are sites by those with a preexisting relationship with the party at issue-an attorney-client relationship in the case of
Chdstensen.

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36 ld. aT 114. 37 Transcriot of March 29,2007 hearing, 4:17-28 (Docket No. 39). to 'ts See Transcript ofJune 12,2OOB hearing, p'9 -F.3d 672,9 608Notice ofLodgment. " Boslev Medicallnstitute lnc. v. Kremer,403 Exhibit (9'" Cir. 2005). oo The Christensen Firm v. Chameleon Dàta Corp.,2006 U.S. Dist. LEXIS 79710 (W ash.
2006).

WARD'S

BRI

SUMMARY JU

SHOU LD

1

Saadat-Neiad Registered Multiple Web Sites.

,
3

ln Lucas Nurseryo' the defendant registered only the domain name www.lucasnursery.com to post her complaints about landscaping company she had used,
and included complaints about poor soil preparation. ln that case the court held that there was no ACPA violation because her actions did not amount to "bad faith intent to profit." The lucas Nursery court held that the sole distinction between the case before it and
a case on which the Lucas Nursery plaintiff

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IDB-

relied-was that in IDB, the defendant registered

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multiple web sites, not just one.a2 Saadat-Nejad has registered at least four separate domain
names

-

two for Solomon Ward, and two for Pacific Law Center'

Lamparello,n3 another case the Court cited, is similarly distinguishable on this and

other grounds. First, the Lamparello defendant only registered a single web site. Saadat-

Nejad registered mult¡ple sites. Second, at no point did the tampareilo defendant attempt to
sell thesite, ordemand any money during the course of the l¡tigat¡on. Saadat-Nejad has not been so virtuous. Third, the Lamparello Court made a finding that there was no confusion between the site created by defendant and Fallwell's site. Here, this Court has already considered and ruled on this issue, finding that "Mr. SaadalNejad intentionally obtained and
used confusing web sites to discredit and disparage the two law firms."o" Fourth, "the

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primary motive of Lamparello's web site was to express opinions on issues that were
contrary to those of Reverend Falwell, and not to take away monies or profit."as Here,
Saadat-Nejad ls not attempt¡ng to provide any legitimate views that oppose those of

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Solomon Ward. Furthermore, his intent is to prevent potential clients from using Solomon

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Ward's services as evidenced by his web sites'"WARNINC: DO NOT HlRE" admonition'
This is evidence of his intent to take away clients, and as a result, "monies or profit," from

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Lucas Nursery and Landscaping, lnc. v. Crosse, 359 F.3d 806 (6'h Cir. 2004)' /d. at 811. Lamoarello v. Falwell,420 F.3d 309 (4'" Cir' 2005). Find'ings of Law and Fact by Judge Burns at March 29, 2007 hearing, pp.2:15-2:18 (Docket No. 39). Lamparello supra at 312 (internal quotes and brackets omitted)'

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Solomon Ward,
(7) the person's provision of material and misleading false contact information when àóÑlni ioi ttru'resistration of the domain name, the person's intentional failure to aicurate Ëontact information, or the person's prior conduct indicating a pattern " such conduct; oif*ítá¡""

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Solomon Ward has no information whether Saadat-Nejad provided material and misleading contact information when applying to register the domain names'
(8) the person's registration or acquisition of multiple domain names which the person ù,1.*i ä* ¡¿ã"ticäl or confusingly similar to mark! of others that are distinctive at the that i-¡r"-ãtì*¡.t-tion of such dom"ain names, or dilutive of famous marks of othersgoods are or f'.e of registration of such äomain names, without regard to the services of the parties; and

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i;;;; "iiù

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SaadatNe.jad registered multiple confusingly similar domain names to Solomon

Ward's legitimate web site. Solomon Ward is aware of at least two such sites: solomonwardlawfirm.com and solomonwardsandiego.com.
(9) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous.

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Solomon Ward's name is distinctive and famous and has achieved secondary

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meaning. lt has been in existence since 1977 and its name in the legal community is known
and well respected.
Eight of the nine factors used to determine "bad faith intent to profit" support a

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conclusion that Saadat-Nejad violated the ACPA. Having shown success on the merits, a
permanent injunction should issue.

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A permanent lniunction

will

Not Infringe on saadat-Neiad's First Amendment Rights.

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A permanent injunction will only prevent Saadat-Nejad from disparaging solomon

ward on web sites that contain "solomon ward" in their domain name. lt will have no
effect on any other web sites he registers for purposes of attacking Solomon Ward or anyone

else. At the June 12,2OOB hearing Saadat-Nejad admitted that he had forty such web sites
up and running as of then.o6 Alune27,2008 coogle search revealed eight different web

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2A

a6 Transcript ofJune 12, 2008 hearing, p' 24 - Exhibit 9 to Notice of Lodgment'

SHOU LD

1

sites with various disparaging remarks about solomon ward or Pacific Law center.'7 The

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pefmanent inlunction-in the form of the existing preliminary injunction- will not affect
those web sites, nor

will it prejudice Saadat-Nejad in any way. Thus, Saadat-Nejad

has

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ample opportunily to criticize Solomon Ward; the ACPA, however, bars him from
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isappropriating solomon ward's own trade name, service mark of re8istefed domain name

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to do it.
Even when the ACLU intervened in this case on Saadat'Nejad's

behall it did not do

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so because of any potential First Amendment violations or issues related to the ACPA. Rather, the ACLU',s sole contention was that the court should ensure that saadatrNejad had

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counsel for the civil contempt proceeding or at least validly waived his right to counsel.ou

During the June 12,2OO8 hearing before this Court, Saadat-Nejad accused Solomon Ward of shutting down some of his sites, including ushostage.com. Solomon Ward did no
such thing. Solomon Ward filed a complaint with ICANN (lnternet Corporation for Assigned
Names and Numbers), asking that it shut down the two web sites containing "Solomon

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Ward" in the domain names,

as Judge Burns

ordered.oe Co Daddy Software lnc' ("Co

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Daddy") is the registrar of these two web sites as well as some of the other web sites that
Saadat-Nejad had registered, including ushostage.com. To the extent

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co

Daddy shut down

any of Saadat-Nejad's web sites (other than the two Solomon Ward requested), Saadat-Nejad
shou ld take that matter up with Co Daddy.

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VI BURNS'FINDINGS SHOULD STAND IUDGE ,,cenerally, one judge should not overrule the prior decision of another iudge sitting in the same case because of the principles of comity and uniformity which preserve the

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48
49

Vasseghi Decl. tì 5.;See Exhibits 1 through I to Notice of Lodgment. .^ Brief õf Amicus öuiiae ACLU of San Diego & lmperial Counties 2:1-3 (Docket No.46). Mclntyre Decl. f 3 and Exhibits.

WARD'S

SUMMARY

J

NT SHOU

NTERED

1

orderly functioning of the judicial process."s0 ln the Ninth circuit,

a

judge should only

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overrule a prior judge's decision for the "most cogent reasons" or when "exceptional
ci rcumstances exist."5t

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Judge Burns' findings of fact and law in this case should not be disturbed, including

findings of the existence of "both probable success on the merits and the possibility of
irreparable harm and that serious questions are raised and the balance of hardships tips

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sharply in the moving party's favor." Judge Burns also found that "Saadat-Nejad intentionally obtained and used confusing web sites to discredit and disparage the two law

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firms.,, No ,,exceptional circumstance" exists for this court to set aside or exclude these
findings that Judge Burns' has already made in this case. Accordingly, the existing preliminary injunction should be made permanent and this case should end.

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vil
CONCLUSION
saadat-Nejad has no right to misappropriate solomon ward's service marks, its trade
names and its domain names. Based on the previous findings of this Court, the evidence

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already of record, and arguments establishing that it has actually succeeded on the merits,

solomon ward is entitled to a permanent injunction in the same form as this court's preliminary injunction.
DATED: July 25, 2008 Respectfully submitted,

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SOLOMON WARD SEIDENWURM & SMITH, LLP

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By:

lsl Edward l. MclntYre
EDWARD J. MCINTYRE MICHAEL M. VASSECHI Attorneys for Solomon Ward Seidenwurm & Smith, LLP

(C'D' re: cenesisintermedia, lnc. Securities Lit.,2oo7 u-S. Dist. LEXIS 95243,+-1-0 530 (9'" Cir. C.ul. ZOO/I citing to Fairbank v. Wunderman Cato Johnson, 212 F.3d 528, 2000). *11., citing To Castner v' First ln re benesisint ermedia, /nc. Securities Lit. supra at Nationa/ Bank of Anchorage, 278 F.2d 37 6, 37 9-380 (9'" Ci r. 1 960).

ln

ULD

BE

E

1

CERTIFICATE OF SERVICE
I caused the SOLOMON WARD'S BRIEF ADDRESSING ISSUES THIS COURT'S

t
3

ORDER RAISED DIRECTING PARTIES TO SHOW CAUSE WHY SUMMARY JUDGMENT

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SHOULD NOT BE ENTERED 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.

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Electronic Mail Notice List
Robert F. Clarke, Esq. (SBN 79BBl) Ph illips & Associates 3030 N. Third Street, Suite 1100 Phoenix, A285012 Telephone: [phone] Facsimile: 602) 288-1671 Attorneys for Pacific Law Center The following pady is not on the list to receive e-mail notices from the Cour1. We are

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emailing copies to Mr. Saadat-Nejad at [e-mail]'
ln addition, we are sending hard copies via Federal Express: Shahrokh Saadat-Nejad 371 3 Mt. Ashmun Place San Diego, CA92111

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VIA FEDERAL

EXPRESS

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Mclntvre
MCINTYRE

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SOLOMON WA

BRIEF WHY

MENT SHOULD