Case 2:08-cv-02299-HRH Document 32

Filed 07/13/11 Page 1 of 7

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

XCENTRIC VENTURES, L.L.C., an Arizona Limited Liability Corporation,

) ) ) ) Plaintiff, ) ) vs. ) ) ELIZABETH ARDEN, d/b/a ) Complaintsboard.com, et al., ) ) Defendants. ) ___________________________________)

No. 2:08-cv-2299-HRH

O R D E R Motion to Enforce Permanent Injunction The court has completed its preliminary review of plaintiff’s motion1 to enforce the permanent injunction that was entered against defendant on October 22, 2009.2 defendant from: A. Willfully using without authorization copyrighted material owned by or licensed to any of the following: a. Xcentric Ventures, LLC b. Ripoff Report c. Any customer of Xcentric or Ripoff Report. The permanent injunction enjoined

1

Docket No. 21. Docket No. 16. -1-

2

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B.

Willfully using without authorization the “RIP-OFF REPORT” mark in connection with any consumer complaint website, message board, blog, article, or any other type of publication.[3]

Defendant was also ordered to remove all content that is in violation of the permanent injunction from www.complaintsboard.com. In the event that is not completed within seven (7) days of this judgment, the host of www.complaintsboard.com is directed to terminate services for ComplaintsBoard until such time that ComplaintsBoard removes all infringing content from www.complaintsboard.com and is in compliance with this permanent injunction.[4] The permanent injunction also provided that in the event defendant ComplaintsBoard fails to remove the content that is in violation of the permanent injunction from the website www.complaintsboard.com within seven (7) days of this judgment, pursuant to Section 3.b of the Uniform Domain Name Dispute Resolution Policy, plaintiff may obtain transfer of the registration from the Domain Name Registrar(s) of the domain names for all websites still containing content in violation of the permanent injunction, including, but not n e c e s s a r i l y l i m i t e d t o , 5 www.complaintsboard.com.[ ] Plaintiff contends that defendant has been posting copyrightprotected material that is licensed to plaintiff in violation of the permanent injunction. To support this contention, plaintiff submits

3

Judgment at 2, Docket No. 16. Id. at 2-3. Id. at 3. -2-

4

5

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ten exhibits which contain a screen shot of an article posted on the Ripoff Report website and a screen shot of the same or similar article posted on the ComplaintsBoard website.6 Plaintiff has also submitted the declaration of David Gingras, general counsel for plaintiff, who avers that he “personally prepared all of these exhibits and I obtained the screen shots in each exhibit by visiting Xcentric’s website located at www.RipoffReport.com and then by visiting Defendant’s website located at www.ComplaintsBoard.com.”7 Gingras further avers that he created these exhibits on January 18, 2011.8 Plaintiff contends that this evidence shows that defendant

continued to violate the permanent injunction for more than seven days after October 22, 2009. Thus, plaintiff argues that it is

entitled to obtain transfer of the registration of defendant’s domain name pursuant to Section 3.b of the Uniform Domain Name Dispute Resolution Policy, as provided for in the permanent

injunction.

Section 3.b of the Dispute Resolution Policy requires In the alternative,

a court order to effectuate the transfer.9

plaintiff suggests that the court could order eNom, Inc., defen-

Exhibits B-K, Motion to Enforce Permanent Injunction, Docket No. 21. Declaration of David Gingras in Support of Plaintiff’s Motion to Enforce Permanent Injunction at 2, ¶¶ 3 & 5, Exhibit L, Motion to Enforce Permanent Injunction, Docket No. 21.
8 7

6

Id. at ¶ 6.

Uniform Domain Name Dispute Resolution Policy, § 3.b, Exhibit M, Motion to Enforce Permanent Injunction, Docket No. 21. -3-

9

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dant’s domain name registrar, to transfer defendant’s domain name to plaintiff. The eNom Registration Agreement provides that the

transfer of domain names registered with eNom “shall be governed by ICANN’s transfer policy ... including the Registrar Transfer Dispute Resolution Policy[.]”10 eNom’s own transfer policy also provides

that it will transfer a domain name pursuant to a court order.11 Defendant first argues that plaintiff’s proof of continuing infringement is inadmissible because Exhibits B-K have not been properly authenticated nor has a foundation been laid for their introduction into evidence. Defendant contends that Gingras’

declaration cannot introduce and authenticate these exhibits because it was submitted as an exhibit and because in his declaration Gingras refers to exhibits labeled 1 and 1-A, etc. rather than exhibits B, C, D, etc. Defendant also argues that the dates of the

publication of the posts on its website have not been authenticated. Defendant concedes that Exhibits C-K contain posts that were published on plaintiff’s website prior to October 22, 2009,12 the date the permanent injunction was issued. But, defendant argues

that it is not possible to tell from the exhibits when these items

10

Motion to Enforce Permanent Injunction at 3, Docket No. 21.

eNom’s policy on Transfer of Sponsorship of Registration Between Registrars at 1, Exhibit N, Motion to Enforce Permanent Injunction, Docket No. 21. Exhibit B contains a report that was allegedly published on January 27, 2010. -412

11

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were actually posted on its website.

Defendant contends that

plaintiff has not presented any testimony establishing when the items were actually published and posted. Exhibits B-K are admissible. Gingras’ declaration, even though it was submitted as an exhibit itself, sufficiently authenticates these exhibits. But, these exhibits do not establish the date the Each post contains a

reports were posted on defendant’s website.

date on which it was “submitted” and/or “posted”, but that does not necessarily mean that is the date the report in question was actually put up on defendant’s website. More importantly, Exhibits B-K do not establish that defendant willfully infringed plaintiff’s copyright. The permanent injunction only enjoins defendant material. avers from Mark that the willful who use is of plaintiff’s owner of

copyrighted

Schultz, “[s]ince

part

Complaintsboard

October

22,

2009,

ComplaintsBoard has not copied any material from Plaintiff’s website in compliance with the Permanent Injunction. ComplaintsBoard since that date that may Any posts found on contain Plaintiff’s

copyrighted material were posted by its third party users, not by ComplaintsBoard, knowledge.”13 and were posted without ComplaintsBoard’s

Plaintiff acknowledges that if consumers posted the

infringing reports on defendant’s website, then defendant would not

Declaration of Mark Schultz in Support of Defendant’s Opposition to Plaintiff’s Motion to Enforce Permanent Injunction at 4, ¶ 9, Docket No. 28. -5-

13

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be willfully infringing plaintiff’s copyright in violation of the permanent injunction. The only way to tell who actually posted the reports on each website will be for the parties to submit their author information to the court. The court can then conduct an in

camera review to determine if the authors of the reports from plaintiff’s website are the same as the authors of the reports on defendant’s website. If, after its review of the author information, the court determines that defendant has violated the permanent injunction, the court will then decide what remedy would be appropriate. Plaintiff would only be entitled to a transfer of defendant’s domain name if the infringing posts are continuing violations. The permanent

injunction provides for a transfer of defendant’s domain name “in the event defendant ComplaintsBoard fails to remove the content that is in violation of the permanent injunction from the website www.complaintsboard.com within seven (7) days of the judgment[.]”14 Although the permanent injunction prohibits defendant from willfully infringing plaintiff’s copyrights in the future, the transfer sanction only applies to posts that were published on

ComplaintsBoard’s website as of October 22, 2009, and that defendant failed to take down within seven days of the permanent injunction being issued. As discussed above, the evidence that plaintiff has

submitted does not establish what date the allegedly infringing

14

Judgment at 3, Docket No. 16. -6-

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posts were published.

Plaintiff will have to submit additional

evidence as to when the posts in question were actually put on defendant’s website. Defendant’s argument that the court could not order a transfer, if one were warranted, is meritless. Plaintiff requested that ICANN and/or eNom, Inc. be ordered to transfer defendant’s domain name. eNom, Inc. is the registrar of defendant’s domain name and it could be ordered to transfer defendant’s domain name, if the court were to determine that defendant violated the permanent injunction by failing to remove all infringing content within seven days of the permanent injunction being issued. plaintiff is entitled to a But any decision as to whether will have to await the

transfer

submission of additional evidence. On or before August 3, 2011, plaintiff and defendant shall submit their author information for the posts contained in Exhibits B-K and plaintiff shall submit any additional evidence it has as to when these posts were published on defendant’s website. DATED at Anchorage, Alaska, this 13th day of July, 2011. /s/ H. Russel Holland United States District Judge

-7-

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