Butter IPH, LLC v. Sanchez

Filing 20

ORDER Granting in part and Denying in part 14 Motion to Reopen Case. Granting 19 Ex Parte Motion for enforcement of default judgment. Signed by Judge James C. Mahan on 12/11/2012. (Copies have been distributed pursuant to the NEF - SLR)

1
2
3
4
UNITED STATES DISTRICT COURT
5
DISTRICT OF NEVADA
6
7
BUTTER IPH, LLC,

8
9

2:12-CV-445 JCM (VCF)

Plaintiff(s),

10

v.

11

JAYSON SANCHEZ,

12
Defendant(s).

13
14

ORDER

15

Presently before the court are two motions filed by plaintiff. No responses have been filed

16

to either motion. Plaintiff’s first motion seeks to reopen the case and for an order to show cause to

17

find eNom, Inc. (“eNom”) in contempt of court. (Doc. # 14). Plaintiff’s second motion is an ex

18

parte motion for enforcement of judgment. (“Doc. # 19).

19

I.

Background

20

Plaintiff filed a complaint on March 16, 2012, alleging claims of trademark infringement,

21

trademark dilution and unfair competition under the Lanham Act against defendants Jayson Sanchez

22

and 1Oak Entertainment Group. (See doc. # 1, Compl.). Plaintiff made substantial attempts to

23

effectuate service, but defendant Sanchez evaded service. (See doc. # 6). This court granted service

24

by publication. (See doc. # 8).

25

Defendant refused to litigate this suit. Plaintiff properly filed a motion for entry of clerk’s

26

default, which was granted. (See docs. ## 9-10). Plaintiff then filed a motion with the court for

27

entry of a default, which this court granted. (See docs. # 11-12). In its judgment, the court found

28
James C. Mahan
U.S. District Judge

1

that “[t]he trademarks used by defendants are confusingly similar and thus could negatively affect

2

plaintiff’s goodwill and reputation.” (Doc. # 12). The court also “enjoined [defendants] from using

3

<1oakmusic.com> and the Twitter account at https://twitter.com/#1/oakMusic, or any confusingly

4

similar marks or domain names.” (Id.).

5

After judgment was entered, plaintiff continued to monitor the enjoined sites. Defendant

6

continued to use the site <1oakmusic.com> for approximately one month, but it appears that the site

7

has been taken down. A search revealed that eNom was the registrar for the <1oakmusic.com>

8

domain name. Plaintiff sent a copy of the injunctive order to the legal department at eNom and

9

demanded that eNom either terminate or transfer the domain name. eNom refused. Plaintiff then

10

filed the instant motions.

11

II.

Discussion

12

Federal Rule of Civil Procedure 70 provides that “if a judgment requires a party to . . .

13

perform any [ ] specific act and the party fails to comply within the time specified, the court may

14

order the act to be done – at the disobedient party’s expense – by another person appointed by the

15

court. When done, the act has the same effect as if done by the party.” The rule also provides that

16

the court “may enter a judgment divesting any party’s title and vesting it in others. That judgment

17

has the effect of a legally executed conveyance.”

18

Pursuant to Rule 70, the court finds it appropriate to divest eNom, or any other third party,

19

of the infringing website and requiring the relevant domain name registries and domain name

20

registrars to transfer ownership of the infringing domain name to plaintiff.

21

Plaintiff also moves the court for an order to show cause, to find eNom in contempt, and to

22

sanction eNom. The “court has wide latitude in determining whether there has been contemptuous

23

defiance of its order.” Gifford v. Heckler, 741 F.2d 263, 266 (9th Cir. 1984). Further, courts “retain[

24

] discretion to establish appropriate sanctions.” United States v. Bright, 596 F.3d 683, 694 (9th Cir.

25

2010). The court does not find it appropriate to issue sanctions or order a representative of eNom

26

to appear at this time.

27

...

28
James C. Mahan
U.S. District Judge

-2-

1

Accordingly,

2

IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that plaintiff’s motion to

3

reopen case (doc. # 14) be, and the same hereby, is GRANTED in part and DENIED in part

4

consistent with the foregoing.

5
6

IT IS FURTHER ORDERED, ADJUDGED, AND DECREED that plaintiff’s ex parte
motion for enforcement of default judgment (doc. # 19) be, and the same hereby is GRANTED.

7

IT IS FURTHER ORDERED, ADJUDGED, AND DECREED that the infringing domain

8

<1oakmusic.com> be transferred to plaintiff as new owner. The domain registry eNom, Inc., and

9

any other entity or individual with the authority and ability to affect this transfer, shall fully

10

cooperate in the transfer of the infringing domain name <1oakmusic.com> to plaintiff Butter IPH,

11

LLC.

12

DATED December 11, 2012.

13
14
UNITED STATES DISTRICT JUDGE
15
16
17
18
19
20
21
22
23
24
25
26
27
28
James C. Mahan
U.S. District Judge

-3-