Aetna Inc. v. All Market Products & Services, LLC, et. al.,

Filing 7

ORDER Granting Plaintiff's 2 Emergency Motion for TRO. Aetna must immediately post a bond in the amount of $1,000 to effectuate this order. Plaintiff's 2 Emergency Motion for Preliminary Injunction is set for 8/5/2016 02:00 PM in LV Courtroom 6D before Judge Jennifer A. Dorsey. Responses due by 8/4/2016. Replies due by 8/5/2016. Signed by Judge Jennifer A. Dorsey on 8/2/2016. (Copies have been distributed pursuant to the NEF - SLD)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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Aetna Inc.,

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2:16-cv-01819-JAD-PAL

Plaintiff

Order Granting Motion for Temporary
Restraining Order and Setting Motion for
Preliminary Injunction for Hearing with
an Expedited Briefing Schedule

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v.

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All Market Products & Services, LLC, et al.,
[ECF No. 2]

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Defendants

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Aetna, Inc. sues All Market Products & Services, LLC (dba Dental Shield USA), Dental

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Club America, LLC, Ryan Ousdahl, Andrew D. Ross, Dean Austin, and Wyngate International,

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Inc. under the Lanham Act1 for trademark infringement, unfair competition and false designation

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of origin, and dilution of a famous mark.2 Aetna moves on an emergency basis for both a

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temporary restraining order without notice and a preliminary injunction against the defendants. I

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find that Aetna has met the standard to obtain a without-notice temporary restraint on its claim

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against the defendants for unfair competition and false designation of origin. I thus grant the

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motion for temporary restraining order in part and set the motion for preliminary injunction for

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hearing at 2:00 p.m. on Friday, August 5, 2016, with an expedited briefing schedule.

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Background
Aetna provides medical-insurance and care plans to individuals and employers.3 One of

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the plans that Aetna provides is Aetna Dental Access, which is a discount dental-care program

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that, for a monthly or annual fee, allows enrollees to obtain dental services at discounted prices

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15 U.S.C. §§ 1051, et seq.

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ECF No. 1.

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See ECF No. 2 at 18 ¶ 3.

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from participating dental-care providers.4 Aetna is the registered owner of the Aetna logo and

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Aetna, Aetna Dental, and Aetna Dental Access trademarks.5

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Aetna alleges that All Market Products & Services, LLC is a Nevada limited-liability

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company that does business as Dental Shield USA.6 Aetna is informed and believes that Andrew

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Ross and Ryan Ousdahl are members of All Market.7 Aetna alleges that Dental Club America,

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LLC is a Nevada limited-liability company.8 Aetna attached to its complaint printouts from the

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Nevada Secretary of State, which I take judicial notice of under FRE 201(b), providing that Ross

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is the resident agent for both All Market and Dental Club and a managing member of All

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Market.9 The Nevada Secretary of State also lists Ryan Ousdahl as being a managing member of

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All Market.10 Aetna alleges that Wyngate International, Inc. is a Florida corporation,11 Dean

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Austin is the owner of Wyngate,12 and the website www.dentalclubamerica.com is registered to

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Austin at Wyngate.13
Aetna became aware, through consumer complaints,14 that the defendants were

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conducting print, web-based, and telemarketing campaigns for their “Dental Shield” and “Dental

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Id. at 18, ¶¶ 4–5.

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Id. at 15, ¶ 4.

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ECF No. 1 at ¶¶ 8–9.

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Id. at ¶ 10.

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Id. at ¶ 11.

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Compare ECF No. 1 at 18–19 with ECF No. 1 at 23–24.

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ECF No. 1 at 18–19.

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Id. at ¶ 12.

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Id. at ¶ 13.

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Id. at ¶ 18.

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ECF No. 2 at 18–19, ¶¶ 6–8.

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Club America” programs wherein Dental Shield claimed that it had an exclusive contract with

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Aetna, had merged with Aetna, or was Aetna,15 and Dental Club held itself out as an authorized

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seller of the Aetna Dental Access program.16 Aetna asserts that Dental Club’s and Dental

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Shield’s claims are false.17 It also asserts that Dental Club and Dental Shield made unauthorized

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use of Aetna’s trademarks in their web-based and print advertisements.18

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Aetna mailed a letter to the defendants on June 25, 2016, informing them that their

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conduct was unauthorized and infringed on Aetna’s trademarks.19 Dental Club disabled its

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website and Dental Shield removed Aetna’s trademarks from its website.20 But Aetna continued

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to receive complaints that consumers were still receiving telemarketing calls about the Aetna

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Dental Access program from the defendants’ operators.21 Aetna thus sent a second letter

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demanding that the defendants cease their infringing activities and to provide documentation

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regarding their activities of allegedly enrolling individuals in the Aetna Dental Access program.22

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But Aetna’s letters were returned as rejected by the recipients and not opened.23

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Discussion
A.

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Standard to Obtain Temporary Injunctive Relief Without Notice
District courts “may issue a temporary restraining order without written or oral notice to

the adverse party or its attorney” only when “specific facts in an affidavit or a verified complaint

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ECF No. 2 at 22, ¶¶ 3–4.

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Id. at ¶ 5.

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Id. at ¶¶ 4–5.

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See id. at ¶¶ 6–7.

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Id. at ¶ 6.

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Id. at ¶ 7.

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Id. at ¶ 8.

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Id. at ¶ 10.

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Id.

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clearly show that immediate and irreparable injury, loss or damage will result to the movant

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before the adverse party can be heard in opposition” and “the movant’s attorney certifies in

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writing any efforts made to give notice and the reasons why it should not be required.”24 I find

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that Aetna has met this standard.

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The declarations that Aetna submitted from compliance lead Keri Wood and Aetna’s lead

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counsel, William Dolan, demonstrate that immediate and irreparable injury, loss, or damage will

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result to Aetna before the defendants can be heard in opposition to the motion for temporary

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restraint. Despite two cease-and-desist letters and telephone conversations between Aetna and

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the defendants, Wood and Dolan declare that the defendants continue to hold themselves out in

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telemarketing calls25 and online-provided “Member Information Guides”26 as having the

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authority to sell memberships in the Aetna Dental Access program and as being associated with

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Aetna. This has caused actual confusion and loss of good will with consumers, who have called

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Aetna to complain, including to complain about the high volume of telemarketing calls that they

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have received from the defendants.27 It has also caused the Indiana Department of Insurance to

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issue an investigative demand to Aetna in response to a complaint filed by an insured.28 The

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insured claims that she received a call from a person claiming to be an agent of both Dental

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Shield and Aetna offering to enroll her in the Dental Shield referral program, which the agent

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incorrectly stated was part of the Aetna Dental PPO Network, and that she was repeatedly and

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fraudulent charged by Dental Shield for the program.29

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FED. R. CIV. PROC. 65(b)(1).

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ECF No. 2 at 18–19, ¶¶ 6–7;

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Id. at 23–24, ¶ 12.

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Id. at 18–19, ¶ 7.

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Id. at 19, ¶ 8.

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Id.

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Dolan certifies that he spoke with Scott telephonically on July 29, 2016, about the

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impending litigation and temporary restraint motion and sought the defendants’ consent to a

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temporary restraining order, expedited discovery schedule, and waiver of service.30 Scott

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declined the offer, stating his need to first consult with an attorney.31

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B.

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Standard to Obtain Injunctive Relief
The legal standard for issuing a temporary restraining order and the legal standard for

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preliminary injunctive relief are “substantially identical.”32 In Winter v. Natural Resources

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Defense Council, Inc., the Supreme Court clarified that the standards “require[ ] a party to

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demonstrate ‘that he is likely to succeed on the merits, that he is likely to suffer irreparable harm

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in the absence of preliminary relief, that the balance of equities tips in his favor, and that [a

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temporary restraining order] is in the public interest.’”33 “[I]f a plaintiff can only show that there

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are ‘serious questions going to the merits’—a lesser showing than likelihood of success on the

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merits—then a preliminary injunction may still issue if the ‘balance of hardships tips sharply in

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the plaintiff’s favor,’ and the other two Winter factors are satisfied.”34

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Aetna demonstrated that it is likely to succeed on the merits of its unfaircompetition and false-designation-of-origin claim.

In order to prevail on its claim for unfair competition and false designation, Aetna must
show that it has a valid, protectable trademark and that the defendants’ use of that mark is likely

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ECF No. 3 at 8, ¶¶ 2–3.

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Id. at 8, ¶ 4.

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See Stuhlbarg Intern. Sales Co. v. John D. Brush and Co., 240 F.3d 832, 839 n. 7 (9th Cir.
2001) (stating that the “analysis is substantially identical for the injunction and the TRO”).

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Stormans, Inc. v. Selecky, 586 F.3d 1109, 1127 (9th Cir. 2009) (quoting Winter v. Natural Res.
Def. Council, Inc., 555 U.S. 7, 20 (2008)).
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Shell Offshore, Inc. v. Greenpeace, Inc., 709 F.3d 1281, 1291 (9th Cir. 2013) (quoting with
emphasis Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011)).
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to cause confusion.35 Jane Condron, who has served as a paralegal in Aetna’s Intellectual

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Property and Technology Group of Law & Regulatory Affairs department for 18 years, declares

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that Aetna owns various federally registered marks including the Aetna logo and Aetna Dental

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Access trademark.36 Aetna compliance officer Wood declares that consumers have contacted

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Aetna complaining about the activities of defendants, who have held themselves as being

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affiliated with or authorized by Aetna to sell memberships in the Aetna Dental Access program.37

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Wood also declares that Aetna has received an investigative demand from the Indiana

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Department of Insurance regarding a complaint that an insured filed after a person claiming to be

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an agent of both the defendants and Aetna enrolled her in a program that was incorrectly stated as

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being part of the “Aetna Dental PPO Network” and repeatedly charged her for the program.38

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Aetna’s lead counsel Dolan declares that the defendants used Aetna’s marks in online and print

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advertisements and held themselves out in print, online, and telephonic marketing activities as

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being associated with Aetna, being Aetna itself, and authorized to enroll people in Aetna’s dental

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program.39 Dolan declares that all of the defendants’ claims and activities are false and

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unauthorized.40 Based on this record, I find good cause to believe that Aetna will likely succeed

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on the merits of its claim of unfair competition and false designation of origin claim against the

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defendants.

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Kythera Biopharmaceuticals, Inc. v. Lithera, Inc., 998 F. Supp. 2d 890, 897–98 (C.D. Cal.
2014) (collecting cases) (also providing that a claim for false designation requires proof of the
same elements as a claim for trademark infringement).
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ECF No. 2 at 14–15, ¶¶ 1, 4.

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Id. at 18–19, ¶¶ 6–7.

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Id. at 19, ¶ 8.

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Id. at 22, ¶¶ 3–5.

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Id.

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2.

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“Irreparable harm is traditionally defined as harm for which there is no adequate remedy,

Aetna demonstrated that it is likely to suffer irreparable harm.

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such as an award of damages.”41 “In trademark cases, irreparable harm is typically found in a

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plaintiff’s loss of control over their business reputation, loss of trade[,] and loss of goodwill.”42

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Aetna has submitted evidence showing that, despite two cease-and-desist letters, the defendants

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have continued to represent in telemarketing activities that they are affiliated with Aetna and

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authorized to enroll people in the Aetna Dental Access program. Aetna’s evidence shows that

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consumers have complained to Aetna about defendants’ actions (including incessant

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telemarketing calls) and that the Indiana Department of Insurance is investigating Aetna on a

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claim from an insured stemming from defendants’ activities. The evidence shows that Aetna has

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already lost some control over its business reputation and goodwill. I find that Aetna has

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adequately shown that it will likely suffer irreparable harm absent a temporary restraining order.

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3.

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Aetna must also establish that “the balance of equities tips in [its] favor.”43 This Winter

The equities balance in favor of temporary relief.

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factor requires me to consider the effect that granting or denying temporary injunctive relief will

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have on each party.44 The evidence tends to show that none of the defendants has the right to use

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Aetna’s trademarks or to claim an association with Aetna. Aetna has established that it has spent

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considerable time and resources developing its trademarks and good will.45 This supports the

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conclusion that Aetna will suffer irreparable harm if the defendants are permitted to continue

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using Aetna’s trademarks or to claim an association with Aetna or its products and services. A

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narrowly tailored order temporarily restraining All Market Products & Services, LLC (dba Dental

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Arizona Dream Act Coalition v. Brewer, 757 F.3d 1053, 1068 (9th Cir. 2014) (citing Rent-ACtr., Inc. v. Canyon Tel. & Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991)).

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Maxim Integrated Prods., Inc. v. Quintana, 654 F. Supp. 2d 1024 (N.D. Cal. 2009).

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See Winter, 555 U.S. at 20.

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Id. at 24 (quoting Amoco Prod. Co. v. Villate of Gambell, Alaska, 480 U.S. 531, 542 (1987)).

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See ECF No. 2 at 15, ¶¶ 3, 5.

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Shield USA), Dental Club America, LLC, Ryan Ousdahl, Andrew D. Ross, Dean Austin, and

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Wyngate International, Inc. (or anyone in privity with them) from using Aetna’s trademarks or

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representing in any medium that they are affiliated with Aetna or that they are authorized to offer

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enrollment (directly or indirectly) in the Aetna Dental Access program should not have any

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harmful effect on the defendants. With this limitation, the equities tip sharply in favor of Aetna.

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4.

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The final Winter factor requires me “‘to consider whether there exists some critical public

No public interest will be affected.

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interest that would be injured by the grant of’” a temporary restraining order.46 I do not perceive

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any critical public interest that would be injured by a narrowly tailored restraining order that

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prohibits the defendants from utilizing Aetna’s trademarks or holding themselves out in any

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medium as being affiliated with Aetna or having the authorization to enroll people in the Aetna

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Dental Access program.

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Conclusion

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Accordingly, IT IS HEREBY ORDERED that Aetna’s motion for a temporary

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restraining order [ECF No. 2] is GRANTED. All Market Products & Services, LLC (dba

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Dental Shield USA), Dental Club America, LLC, Ryan Ousdahl, Andrew D. Ross, Dean Austin,

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and Wyngate International, Inc. including, without limitation, all of their officers, members

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agents, servants, and employees, and all other persons acting in concert or participation with

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them who receive actual notice of this order, whether acting directly or indirectly, are temporarily

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restrained from using Aetna’s trademarks or representing in any medium that they are affiliated

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with Aetna or that they are authorized to offer enrollment (directly or indirectly) in the Aetna

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Dental Access program. This temporary restraining order is issued at 12:00 p.m. on Tuesday,

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August 2, 2016, and expires at 5:00 p.m. on Friday, August 5, 2016, unless it is extended or

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converted into a preliminary injunction.

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See Alliance for the Wild Rockies, 632 F.3d at 1138 (quoting Cal. Pharmacists Assn. v.
Maxwell-Jolly, 596 F.3d 1098, 1114–15 (9th Cir. 2010) (internal quotations omitted)).
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IT IS FURTHER ORDERED under FRCP 65(c) that Aetna must immediately post a

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bond in the amount of $1,000 to effectuate this order and recompense the defendants if is later

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determined that they have been wrongfully restrained.

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IT IS FURTHER ORDERED that Aetna must provide telephonic and, if possible, email

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notice to the defendants that this order has been entered and the deadlines imposed herein, and

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must also serve the defendants with a copy of the motion for preliminary injunction [ECF No. 2]

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and a copy of this order.

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IT IS FURTHER ORDERED that Aetna’s motion for preliminary injunction [ECF No. 2]

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will be heard at 2:00 p.m. on Friday, August 5, 2016, in Courtroom 6 D at 333 Las Vegas Blvd.

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South, Las Vegas, Nevada 89101. The defendants have until 9:00 a.m. on Thursday, August 4,

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2016, to file a response to that motion. Aetna has until 10:00 a.m. on Friday, August 5, 2016,

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to file any reply.

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DATED: August 2, 2016.

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_______________________________
______________________
_ _____ _ ___ _
___
Jennifer A. Dorsey
Jennifer A. Dorsey
n
o y
United States District Judge
United States District Judge
ited t
t
tri

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