Grupo Andrea S.A. de c.v. v. Privacy Protection Service, Inc. et al, No. 2:2008cv05589 - Document 141 (C.D. Cal. 2009)
Court Description: FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) by Judge S. James Otero in favor of Grupo Andrea S.A. de c.v. against Privacy Protection Service, Inc. Within 30 days from the entry of this Final Judgmentand Order, Privacy shall pay to Grupo the amount of $600,000.00 U.S. dollars to cover costs and attorneys fees and damages.( MD JS-6. Case Terminated ) (lc)
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Grupo Andrea S.A. de c.v. v. Privacy Protection Service, Inc. et al 1 2 3 4 5 6 7 8 9 10 11 Doc. 141 JERROLD ABELES, State Bar No. 138464 JS-6 Abeles.Jerry@arentfox.com JENNIFER C. TERRY, State Bar No. 200541 Terry.Jennifer@arentfox.com ARENT FOX LLP 555 West Fifth Street, 48th Floor Los Angeles, CA 90071 Telephone: 213 629-7400 Facsímile: 213 629-7401 MICHAEL A. GROW (admitted pro hac vice) Grow.Michael@arentfox.com EFRAIN BRITO (admitted pro hac vice) Brito.Efrain@arentfox.com ARENT FOX LLP 1050 Connecticut Avenue, NW Washington, DC 20036-5339 Telephone: 202 857-6000 Facsimile: 202 857-6395 Attorneys for Plaintiff GRUPO ANDREA S.A. DE C.V. 12 13 UNITED STATES DISTRICT COURT 14 CENTRAL DISTRICT OF CALIFORNIA 15 WESTERN DIVISION 16 17 GRUPO ANDREA S.A. DE C.V., a Mexican Corporation, 18 19 20 21 22 23 Plaintiff, Case No. CV 08-5589 SJO (VBKx) FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) v. PRIVACY PROTECTION SERVICE, INC., a Texas Corporation dba Oakwood Services, Inc., and OVERSEE.NET, a California Corporation, 24 Defendants. 25 26 27 The parties having (i) entered into a settlement agreement resolving this dispute and (ii) jointly moved for entry of this Consent Judgment terminating this 28 FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) – CASE NO. CV08-5589 SJO (VBKX) A RENT F OX LLP ATTORNEYS AT LAW LOS ANGELES RPP/351151.1 Dockets.Justia.com 1 proceeding, and for good cause shown, it is hereby ORDERED, ADJUDGED, 2 AND DECREED that: 1. 3 This court has subject matter jurisdiction over Plaintiff’s claims 4 for trademark counterfeiting, trademark and trade name infringement, trademark 5 and trade name dilution, cybersquatting and other acts of unfair competition arising 6 under the statutes of the United States, 15 U.S.C. § 1051 et. seq.), and the common 7 law. 2. 8 9 This Court has court has jurisdiction over the subject matter of the federal claims asserted by Plaintiff under Section 39 of the Trademark Act of 10 1946, 15 U.S.C. § 1121 and under the Judicial Code, 28 U.S.C. § § 1331, 1332 and 11 1338. 3. 12 13 The court has supplemental jurisdiction over the state and common law pursuant to 28 U.S.C. § 1367. 4. 14 Plaintiff Grupo Andrea S.A. de C.V. (“Grupo”) is a corporation 15 organized and existing under the laws of the Mexico with its principal place of 16 business address at Juan Alonso de Torres, No. 106, Fracc. San Jeronimo, Leon, 17 GTO Mexico C.P. 37204 and with offices in this jurisdiction in Bell Gardens and 18 Panorama City, California. 19 5. Defendant Privacy Protection Service, Inc. is a Texas 20 corporation doing business as Oakwood Services, Inc. (“Privacy”), which has 21 addresses at 1721 S. Interstate Highway 35 E, Apt. 15208, Waxahachie, TX 75165- 22 3140 and at 18352 Dallas Parkway #136, Dallas, Texas 75287, and which is doing 23 business in the State of California within this judicial district. 6. 24 Former defendant Oversee.net (“Oversee”) is a California 25 corporation, which has a principal place of business at 515 S. Flower St., Suite 26 4400, Los Angeles, California, within this judicial district. 7. 27 28 -2FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) – CASE NO. CV08-5589 SJO (VBKX) A RENT F OX LLP ATTORNEYS AT LAW LOS ANGELES Grupo is the owner of a family of trademarks, service marks, RPP/351151.1 1 and trade names containing the word ANDREA, including ANDREA, ANDREA & 2 Design, ANDREA COLECCION, and MIA DE ANDREA (the “ANDREA Marks” 3 or “Marks”). These Marks have been widely used in connection with the sale and 4 advertising of shoes and clothing in California and other locations throughout the 5 United States. 6 8. Privacy is the registrant of the domain name andrea.com, which 7 is confusingly similar to the ANDREA Marks, and Ondova Limited Company LLC 8 d/b/a BudgetNames.com is the registrar. 9. 9 In early 2008, Privacy used or allowed others to use the 10 andrea.com domain name at a website containing confusingly similar imitations of 11 Grupo’s well known federally registered trademark ANDREA. This website was 12 used to advertise and sell shoes and other products offered by Grupo’s competitors. 10. 13 On August 26, 2008 Grupo filed its Complaint against Privacy 14 and Oversee.net, alleging trademark counterfeiting in violation of federal law, 15 trademark and trade name infringement in violation of federal and common law, 16 trademark and trade name dilution in violation of federal and state law, 17 cybersquatting in violation of federal law, and other acts of unfair competition 18 arising under the statutes of the United States various claims arising under the 19 Lanham Act, 15 U.S.C. § 1051, et seq. (including claims under the 20 Anticybersquatting Consumer Protection Act (“ACPA”), at 15 U.S.C. § 1125(d)) 21 and California law. 11. 22 23 Judgment is entered against Privacy and in favor of Grupo on each of the causes of action pled in the Complaint. 12. 24 Pursuant to 15 U.S.C. § 1167, the laws of the State of California, 25 the common law, and the parties’ settlement agreement, Privacy and its agents, 26 servants, employees, attorneys, successors, assigns, and all others in privity or 27 acting in concert or participation with Privacy, are hereby PERMANENTLY 28 -3FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) – CASE NO. CV08-5589 SJO (VBKX) A RENT F OX LLP ATTORNEYS AT LAW LOS ANGELES RPP/351151.1 1 2 ENJOINED from: (A) Directly or indirectly using the names or marks that contain with word 3 ANDREA, or any domain name or mark that consists of or incorporates ANDREA, 4 and any other domain name or mark confusingly similar to the ANDREA Marks; 5 (B) Directly or indirectly using in any manner any service mark, 6 trademark, trade name, domain name, trade dress, word, numbers abbreviations 7 design, color, arrangement, collocation, or any combinations thereof, that would 8 imitate, resemble or suggest the ANDREA Marks; 9 10 11 (C) Otherwise infringing Grupo’s trademarks, service marks, and trade names; (D) Directly or indirectly using, registering or reserving any domain name, 12 trademark, service mark or trade name that includes the mark ANDREA, or is 13 confusingly similar to any of the ANDREA Marks. 13. 14 It is further ordered that Verisign, Inc. as the registry of the 15 domain name andrea.com is Directed to change the registrar of record for the 16 domain name andrea.com from the current registrar to a registrar selected by Grupo 17 Andrea S.A. de C.V., including without limitation Network Solutions LLC, which 18 subsequently will register the domain name andrea.com in the name of Grupo 19 Andrea S.A. de C.V. 14. 20 Privacy shall take all actions necessary to cause the andrea.com 21 domain name be transferred to Grupo, including execution of any necessary transfer 22 documentation required by the current registrar for the domain name or by 23 Verisign, Inc. as the registry of the domain name andrea.com. 15. 24 Within thirty (30) days from the entry of this Final Judgment 25 and Order, Privacy shall pay to Grupo the amount of $600,000 (six hundred 26 thousand) U.S. dollars to cover costs and attorneys’ fees and damages incurred by 27 Grupo. 28 -4FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) – CASE NO. CV08-5589 SJO (VBKX) A RENT F OX LLP ATTORNEYS AT LAW LOS ANGELES RPP/351151.1 16. 1 2 parties hereto. 17. 3 4 This Final Judgment and Order shall be final and binding on all Except as provided herein, each party shall bear its own costs and attorneys fees. 18. 5 The Court hereby retains jurisdiction over this matter for 6 purposes of enforcing the settlement agreement between the parties and this 7 Consent Judgment. 8 9 10 11 IT IS SO ORDERED. 10-27-09 ______________________ Dated ___________________________________ UNITED STATES DISTRICT JUDGE 12 13 14 AGREED: 15 16 Arent Fox LLP Fox Rothschild LLP By______________________ Jerrold Abeles Attorney for Plaintiff Grupo Andrea S.A. de C.V. By_________________________ Jeffrey S. Kravitz Attorney for Defendant Privacy Protection Service, Inc. Grupo Andrea S.A. de C.V. Privacy Protection Service, Inc. By___________________ Title:_________________ By_______________________ Title:_____________________ 17 18 19 20 21 22 23 24 25 26 27 28 -5FINAL JUDGMENT AND ORDER FOR PERMANENT INJUNCTION (BY CONSENT) – CASE NO. CV08-5589 SJO (VBKX) A RENT F OX LLP ATTORNEYS AT LAW LOS ANGELES RPP/351151.1
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