Consumerinfo.com, Inc. v. Alex Chang et al
Filing
920
SECOND AMENDED JUDGMENT AND PERMANENT INJUNCTION by Judge Valerie Baker Fairbank. IT IS HEREBY ORDERED, ADJUDGED AND DECREED as follows: (1) Judgment is entered in favor of One Technologies and Adaptive and against ConsumerInfo. (2) Judgment is enter ed in favor of ConsumerInfo and against OneTechnologies. (3) Judgment is entered in favor of ConsumerInfo and against Adaptive. (4) [VACATED]. (5) Damages are awarded in favor of ConsumerInfo and against Adaptive in the amount of $450,000. (6) A daptive, together with its officers, directors, agents, servants, employees and attorneys, and other person who are in active concert or participation with Adaptive, are hereby enjoined and restrained 899 . (See attached Amended Judgment for further information). (jp)
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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WESTERN DIVISION
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CONSUMERINFO.COM, INC., a
California corporation,
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Plaintiff,
v.
ONE TECHNOLOGIES LP, a Delaware
limited partnership; ADAPTIVE
MARKETING LLC, a Delaware
corporation; and DOES 1-50, inclusive,
SECOND AMENDED
JUDGMENT AND PERMANENT
INJUNCTION
Hon. Valerie Baker Fairbank
Action Filed:
May 28, 2009
Defendants.
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Case No. CV 09-3783-VBF(MANx)
AND RELATED COUNTERCLAIMS
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CV 09-3783-VBF(MANX)
[PROPOSED] SECOND AMENDED JUDGMENT AND
PERMANENT INJUNCTION
OHS WEST:261233686.1
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On September 23, 2010, this Court granted in part and denied in part
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Defendants’ Joint Motion for Partial Summary Judgment of ConsumerInfo’s
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Claims and granted in part and denied in part Plaintiff ConsumerInfo.com, Inc.’s
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Motion For Partial Summary Judgment Against Adaptive Marketing. Based upon
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the Court Order re Motions for Partial Summary Judgment, docket number 403, (1)
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defendants One Technologies LP (“One Tech”) and Adaptive Marketing LLC
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(“Adaptive”) are entitled to final judgment against plaintiff ConsumerInfo.com, Inc.
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(“ConsumerInfo”) on ConsumerInfo’s trade dress, counterfeiting, copyright
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infringement, vicarious copyright infringement and contributory copyright
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infringement claims; and (2) ConsumerInfo is entitled to final judgment against
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Adaptive on Adaptive’s false advertising counterclaim.
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On January 12, 2011, the jury in this case issued a verdict as to the legal
claims still at issue between the parties, docket number 722, as follows:
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“VERDICT FORM
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SECTION A: ConsumerInfo’s Trademark Infringement Claim -
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FREECREDITREPORT.COM
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1.
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Is FREECREDITREPORT.COM a valid and protectable trademark?
Yes
_X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section B.
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2.
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Does ConsumerInfo own FREECREDITREPORT.COM as a trademark?
Yes
_X______
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section B.
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3.
Did the Defendant use FREECREDITREPORT.COM, or a similar term,
-1-
OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
[PROPOSED] SECOND AMENDED JUDGMENT AND
PERMANENT INJUNCTION
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without the consent of ConsumerInfo in a manner that is likely to cause confusion
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among ordinary purchasers as to the source of the goods?
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Adaptive Marketing
Yes
_______
No
__X____
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One Technologies
Yes
_______
No
__X ___
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If you answered “yes” to this Question as to either Defendant, proceed to the next
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Question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section B
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as to that Defendant.
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…
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SECTION B: ConsumerInfo’s Trademark Infringement Claim - TRIPLE
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ADVANTAGE
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1.
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Is TRIPLE ADVANTAGE a valid and protectable trademark?
Yes
__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section C.
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2.
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Does ConsumerInfo own TRIPLE ADVANTAGE as a trademark?
Yes
__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section C.
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3.
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the consent of ConsumerInfo in a manner that is likely to cause confusion among
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ordinary purchasers as to the source of the goods?
Did the Defendant use TRIPLE ADVANTAGE, or a similar term, without
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Adaptive Marketing
Yes
_______
No
__X_____
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One Technologies
Yes
_______
No
__X_____
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If you answered “yes” to this Question as to either Defendant, proceed to the next
-2OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
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Question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section C
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as to that Defendant.
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…
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SECTION C: ConsumerInfo’s Cybersquatting Claim
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Answer the questions in this Section C only if you found
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FREECREDITREPORT.COM is a valid and protectable trademark owned by
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ConsumerInfo.
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1.
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FREECREDITREPORT.COM mark?
Did the Defendant have a bad faith intent to profit from the
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Adaptive Marketing
Yes
__X_____
No _______
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One Technologies
Yes
__X_____
No _______
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If you answered “yes” to this Question as to either Defendant, proceed to the next
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question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section D
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as to that Defendant.
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2.
Did the Defendant register, traffic in, or use a domain name that:
a)
If the FREECREDITREPORT.COM mark was valid and protectable at
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the time the domain name was registered, was identical or confusingly similar to
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the FREECREDITREPORT.COM mark; or
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b)
If the FREECREDITREPORT.COM mark was famous at the time the
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domain name was registered, was identical, confusingly similar or dilutive of the
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FREECREDITREPORT.COM mark?
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Adaptive Marketing
Yes
__X_____
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OHS WEST:261233686.1
No _______
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
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One Technologies
Yes
__X_____
No _______
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If you answered “yes” to this Question as to either Defendant, proceed to the next
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question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section D
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as to that Defendant.
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3.
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a fair use?
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Was the Defendant’s use of FREECREDITREPORT.COM, or a similar term,
Adaptive Marketing
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No
__X_____
One Technologies
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Yes
Yes
_______
No
__X_____
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If you answered “yes” to this Question as to either Defendant, proceed to Section
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D as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to the next
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question as to that Defendant.
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4.
Has Defendant’s cybersquatting caused ConsumerInfo damage?
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Adaptive Marketing
Yes
__X_____
No _______
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One Technologies
Yes
__X_____
No _______
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If you answered “yes” to this Question as to either Defendant, proceed to the next
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Question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section D
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as to that Defendant.
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5.
Did Defendant earn any profits that are attributable to cybersquatting?
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Adaptive Marketing
Yes
__X_____
No _______
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One Technologies
Yes
__X_____
No _______
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Proceed to the next question.
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-4OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
1
6.
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Defendant’s cybersquatting.
Please write in the amount, if any, of damage to ConsumerInfo caused by
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Adaptive Marketing
$450,000____
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One Technologies
$120,000___
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Proceed to the next question.
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to cybersquatting.
Adaptive Marketing
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$1,050,000____
One Technologies
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Please write in the amount, if any, of Defendant’s profits that are attributable
$280,000___
Proceed to the next question.
8.
Did ConsumerInfo fail to mitigate damages?
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Adaptive Marketing
Yes
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No
__X_____
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One Technologies
Yes
_______
No
__X_____
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If you answered “yes” to this Question as to either Defendant, proceed to the next
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question as to that Defendant.
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If you answered “no” to this Question as to either Defendant, proceed to Section D
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as to that Defendant.
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…
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SECTION D: ConsumerInfo’s Dilution Claim
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Answer the questions in this Section D only if you found
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FREECREDITREPORT.COM is a valid and protectable trademark owned by
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ConsumerInfo.
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1.
Is FREECREDITREPORT.COM famous?
Yes
___X____
No _______
If you answered “yes” to this Question, proceed to the next Question.
If you answered “no” to this Question, proceed to Section E.
-5OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
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2.
Adaptive Marketing
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Yes
__X_____
No _______
One Technologies
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Did the Defendant use FREECREDITREPORT.COM in commerce?
Yes
__X_____
No _______
If you answered “yes” to this Question as to either Defendant, proceed to the next
question as to that Defendant.
If you answered “no” to this Question as to either Defendant, proceed to Section E
as to that Defendant.
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3.
became famous?
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Adaptive Marketing
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Yes
_______
No
___X____
One Technologies
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Did the Defendant begin using FREECREDITREPORT.COM after it
Yes
_______
No
___X____
If you answered “yes” to this Question as to either Defendant, proceed to the next
question as to that Defendant.
If you answered “no” to this Question as to either Defendant, proceed to Section E
as to that Defendant.
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…
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SECTION E: ConsumerInfo’s Contributory Liability Claim Against Adaptive
Marketing
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1.
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FREECREDITREPORT.COM or TRIPLE ADVANTAGE trademarks?
Did One Technologies infringe ConsumerInfo’s
Yes
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__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section F.
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2.
Did Adaptive Marketing intentionally induce One Technologies to infringe
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ConsumerInfo’s FREECREDITREPORT.COM or TRIPLE ADVANTAGE?
-6OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
1
Yes
_______
No
___X____
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section F.
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…
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SECTION F: ConsumerInfo’s Vicarious Liability Claim Against Adaptive
Marketing
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1.
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FREECREDITREPORT.COM or TRIPLE ADVANTAGE trademarks?
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Did One Technologies infringe ConsumerInfo’s
Yes
__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section G.
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2.
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transaction with third parties and that One Technologies had the authority to bind
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Adaptive in transactions with third parties; or that Adaptive and One Technologies
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exercise joint ownership or control over the infringing conduct?
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Do you find that Adaptive had the authority to bind One Technologies in
Yes
__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section G.
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3.
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Was ConsumerInfo damaged by the infringement?
Yes
__X_____
No _______
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section G.
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4.
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One Technologies’ infringement of FREECREDITREPORT.COM and/or TRIPLE
Please write in the amount, if any, of damage to ConsumerInfo casued by
-7OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
1
ADVANTAGE??
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$120,000___
Proceed to the next Question.
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5.
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attributable to the infringement of FREECREDITREPORT.COM and/or TRIPLE
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ADVANTAGE.
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Please write in the amount, if any, of One Technologies’ profits that are
$280,000___
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6.
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Did ConsumerInfo fail to mitigate damages?
Yes
________
No __X_____
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section G.
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…
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SECTION G: One Technologies’ Claim for Fraud on the United States Patent
and Trademark Office
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1.
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examiner regarding a material question?
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Did ConsumerInfo make a false representation to the PTO trademark
Yes
_______
No
__X_____
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If you answered “yes” to this Question, proceed to the next Question.
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If you answered “no” to this Question, proceed to Section H.
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…
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SECTION H: One Technologies’ Claim for Cancellation
1.
Do you find that FREECREDITREPORT.COM is generic?
Yes
_______
No
__X_____”
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OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
1
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Based upon the parties’ oral stipulation after the verdict was entered,
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Adaptive is entitled to judgment notwithstanding the verdict on ConsumerInfo’s
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claim for vicarious trademark infringement.
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On February 9, 2011, the Court granted Adaptive’s motion to voluntarily
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dismiss with prejudice its counterclaims of trademark infringement under the
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Lanham Act and common law trademark infringement, docket number 767.
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On February 10, 2011, One Technologies’ counterclaim for monopolization
and attempted monopolization was orally dismissed with prejudice on the record.
On February 10, 2011, the Court held a bench trial on Defendants’ equitable
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affirmative defenses and to determine the scope of injunctive relief, if any, to be
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awarded to ConsumerInfo. Following this bench trial, the Court issued a
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Memorandum of Decision and Findings of Fact and Conclusions of Law After
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Court Trial, docket number 791, setting the amount of monetary relief
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ConsumerInfo is entitled to, and ordering an injunction to issue, as described
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below.
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On June 30, 2011, the Court granted in part Defendant One Tech's Motion
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For Judgment As A Matter Of Law Pursuant To FRCP 50(B), docket number 872,
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reducing the amount of damages awarded against One Technologies.
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On _____, 2011, the Court granted the Joint Motion by ConsumerInfo.com,
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Inc. and One Technologies LP to Partially Vacate the Amended Judgment, docket
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number _____.
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Accordingly, IT IS HEREBY ORDERED, ADJUDGED AND DECREED
as follows:
1.
Judgment is entered in favor of One Technologies and Adaptive and
against ConsumerInfo
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-9OHS WEST:261233686.1
CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
1
a. On ConsumerInfo’s first claim for relief for trademark
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infringement of FREECREDITREPORT.COM and TRIPLE
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ADVANTAGE under the Lanham act;
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b. On ConsumerInfo’s first claim for relief for trade dress
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infringement under the Lanham Act;
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c. On ConsumerInfo’s second claim for relief for dilution of
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FREECREDITREPORT.COM under the Lanham Act;
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d. On ConsumerInfo’s third claim for relief for counterfeiting of
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FREECREDITREPORT.COM under the Lanham Act;
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e. On ConsumerInfo’s sixth claim for relief for common law
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trademark infringement of FREECREDITREPORT.COM and
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TRIPLEADVANTAGE;
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f.
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under the Lanham Act;
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g. On ConsumerInfo’s eighth claim for relief for vicarious liability
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under the Lanham Act;
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h. On ConsumerInfo’s ninth claim for relief for contributory liability
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under the Lanham Act;
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i.
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On ConsumerInfo’s tenth claim for relief for copyright
infringement;
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j.
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On ConsumerInfo’s eleventh claim for relief for vicarious
copyright infringement;
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k. On ConsumerInfo’s twelfth claim for relief for contributory
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On ConsumerInfo’s seventh claim for relief for unfair competition
copyright infringement.
2.
Judgment is entered in favor of ConsumerInfo and against One
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Technologies
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a. [VACATED]
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- 10 OHS WEST:261233686.1
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SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
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b. On One Technologies’ first counterclaim for cancellation of
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federal trademark registration under the Lanham Act;
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c. On One Technologies’ second counterclaim for monopolization
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and attempted monopolization;
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d. On One Technologies’ third counterclaim for trademark
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infringement under the Lanham Act;
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e. On One Technologies’ fourth counterclaim for false advertising
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and unfair competition under the Lanham Act;
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f.
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trademark infringement;
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g. On One Technologies’ seventh counterclaim for declaratory
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judgment of unenforceability;
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h. On One Technologies’ eighth counterclaim for contributory
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On One Technologies’ fifth counterclaim for common law
liability under the Lanham Act;
3.
Judgment is entered in favor of ConsumerInfo and against Adaptive
a. On ConsumerInfo’s fourth claim for relief for cybersquatting and
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fifth claim for relief for cybersquatting of a famous mark
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Adaptive’s registering, trafficking in, and/or use of the domain
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names freetriplecreditreport.com, freecreditreport2009.com,
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freecreditreport2010.com, freecreditreport2011.com,
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freecreditreport2012.com, freecreditreport2013.com,
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freecreditreport2014.com, freecreditreport2015.com,
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freecreditreport2016.com, freecreditreport2017.com,
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freecreditreport2018.com, freecreditreport2019.com and
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freecreditreport2020.com;
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b. On Adaptive’s first counterclaim for trademark infringement under
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the Lanham Act;
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CV 09-3783-VBF(MANX)
SECOND AMENDED JUDGMENT AND PERMANENT
INJUNCTION
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c. On Adaptive’s second counterclaim for false advertising and unfair
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competition under the Lanham act;
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d. On Adaptive’s third counterclaim for common law trademark
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infringement.
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4.
[VACATED]
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5.
Damages are awarded in favor of ConsumerInfo and against Adaptive
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in the amount of $450,000.
6.
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Adaptive, together with its officers, directors, agents, servants,
employees and attorneys, and other person who are in active concert or
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participation with Adaptive, are hereby enjoined and restrained from
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further registering, trafficking in or otherwise using the following
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domain names: freetriplecreditreport.com, freecreditreport2009.com,
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freecreditreport2010.com, freecreditreport2011.com,
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freecreditreport2012.com, freecreditreport2013.com,
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freecreditreport2014.com, freecreditreport2015.com,
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freecreditreport2016.com, freecreditreport2017.com,
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freecreditreport2018.com, freecreditreport2019.com, and
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freecreditreport2020.com.
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7.
Adaptive, together with its officers, directors, agents, servants,
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employees and attorneys, and other person who are in active concert or
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participation with Adaptive, are hereby ordered, to the extent possible
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and to the extent they maintain any rights, title and interest in the
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following domains (1) to relinquish all rights, title and interest in the
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following domain names: freetriplecreditreport.com,
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freecreditreport2009.com, freecreditreport2010.com,
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freecreditreport2011.com, freecreditreport2012.com,
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freecreditreport2013.com, freecreditreport2014.com,
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freecreditreport2015.com, freecreditreport2016.com,
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INJUNCTION
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freecreditreport2017.com, freecreditreport2018.com,
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freecreditreport2019.com, and freecreditreport2020.com; and (2) to
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transfer all domains listed in this paragraph to ConsumerInfo or its
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authorized representative within fourteen (14) days of entry of this
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permanent injunction.
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8.
[VACATED]
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9.
[VACATED]
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10.
The registrar or registrars of record are hereby authorized to transfer
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the aforementioned domains to ConsumerInfo or its authorized
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representative at ConsumerInfo’s request accompanied by a copy of
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this permanent injunction.
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IT IS SO ORDERED.
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Dated: September 20, 2011
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Honorable Percy Anderson
United States District Court Judge
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