Remax International, Inc. v. Bouity Max Mortgage, Inc.

Full title: REMAX INTERNATIONAL, INC., a Colorado Corporation, Plaintiff, v. EQUITY…

Court: United States District Court, S.D. California

Date published: Apr 9, 2006

Case No. 04CV1744 WQH (CAB) (S.D. Cal. Apr. 9, 2006)

Opinion

Case No. 04CV1744 WQH (CAB).

April 9, 2006

MARK H. KRIETZMAN (SBN 126806) VALERIE W. HO (SBN 200505) GREENBERG TRAURIG, LLP. Santa Monica, California.

GEORGE G. MATAVA JOHN R. POSTHUMUS GAYLE L. STRONG GREENBERG TRAURIG, LLP Denver, Colorado, Attorneys for Plaintiff, REMAX INTERNATIONAL, INC.

FLYNN STILLMAN Cardiff, CA, Attorney for Defendants Equity Max Mortgage, Inc. and Richard F. Bonora.

ORDER AND CONSENT JUDGMENT

CATHY BENCIVENGO, Magistrate Judge

This action was commenced by Plaintiff, RE/MAX International, Inc. ("RE/MAX"), against Defendants Equity Max Mortgage, Inc. d/b/a EMAX Realty International and Richard F. Bonora (collectively, "Defendants"). RE/MAX and Defendants have agreed to settle this matter and to terminate this action by entry of an Order and Consent Judgment which incorporates their settlement agreement, and in particular, the terms, admissions and covenants as follows:

THE PARTIES TERMS OF SETTLEMENT

1. This is an action for acts of trademark infringement in violation of federal, state and common law trademark infringement, federal, state, and common law trademark dilution, and state and common law unfair competition.

2. The Court has subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1338 and 1367. This Court has personal jurisdiction over the Defendants. Venue is proper in this judicial district.

3. RE/MAX is a corporation incorporated under the laws of the State of Colorado with its principal place of business at 8390 East Crescent Parkway, Suite 600, Greenwood Village, Colorado 80111. Throughout the United States, real estate brokerage services are provided through a network of sub-franchisors, franchisors, franchisees and affiliated independent contractor/sales associates who use the trademarks of RE/MAX in connection with providing such real estate brokerage services (the "RE/MAX Network").

4. RE/MAX is the owner of U.S. Trademark Registration Nos. 1,139,014; 1,339,510; and 2,403,626 for the service mark "RE/MAX" and U.S. Trademark Registration Nos. 2,054,698 and 2,106,387 for the service mark "REMAX" (collectively, the "RE/MAX name trademark"), U.S. Trademark Registration Nos. 1,139,014 and 1,339,510 have achieved incontestability under 15 U.S.C. § 1065. The federal registration rights in the RE/MAX name trademark are collectively referred to us the "RE/MAX Trademark." Entities affiliated with the RE/MAX Network provide real estate brokerage services in interstate commerce in the United States under the RE/MAX Trademark.

5. The Defendants, having a principal place of business, at 1011 Carnino Del Mar #240, Del. Mar. CA 92014, are in the business of, among other things, providing real estate brokerage services in the State of California. In connection with its brokerage business, Defendants have used the marks "EMAX" and "EMAX Realty International" to advertise and promote their real estate services. Defendants obtained on or about September 23, 2003, the domain name ernaxrealty.com

6. Defendants admit that the RE/MAX Trademark as set forth above is valid and enforceable. Defendants further admit that they have used the EMAX mark and EMAX Realty International trade name in connection with offering and providing real estate brokerage services.

7. The parties have agreed to the entry of this Order and Consent Judgment which incorporates their settlement resolving the dispute between the parties. Each party has read this Order and Consent Judgment and agrees to be fully bound by its terms in resolution of the parties' respective claims and counterclaims.

THEREFORE, IT IS ORDERED AND ADJUDGED.

A. Defendants, and any of their principals, agents, servants, employees, successors and assigns, and all those in privity, concert or participation with Defendants who receive actual notice of this Order by personal service or otherwise, are hereby immediately and permanently enjoined and restrained from use of the EMAX mark and EMAX Realty International trade name in connection with providing, advertising or promoting real estate services or real estate-related goods and services, and shall cease all such use within sixty days of entry of this Order and Consent Judgment, but in any event no later than June 1, 2006.

B. Defendants shall cease all use of the domain nameemaxrealty.com after April 30, 2006, and shall transfer to RE/MAX the domain registration for emaxrealty.com within ten days of that date.

C. Violation by Defendants of the injunctive relief set forth herein would cause irreparable harm and injury and, in such event, RE/MAX shall be entitled to seek enforcement of the specific provisions of this Order and Consent Judgment.

D. RE/MAX expressly reserves the right to object to and/or pursue legal action regarding any mark, name or design adopted and used by Defendants, which RE/MAX believes, in its sole discretion, to constitute infringement and/or dilution of the RE/MAX Trademark, including but not limited to any mark, name or design containing the prefix "RE" and/or the suffix "MAX."

E. The Court further finds that exercise of continued jurisdiction is warranted for the purpose of interpretation and enforcement of this Order and Consent Judgment, and shall retain jurisdiction over the parties and the subject matter of this litigation for that purpose only.

F. The parties have consented to the entry of this Order and Consent Judgment without further notices. Each party shall bear its own costs and fees.

DONE AND ORDERED in San Diego, California this 9 day ofApril, 2006.

STATE OF CALIFORNIA COUNTY OF LOS ANGELES

I am employed in the aforesaid county, State of California; I am over the age of 18 years and not a party to the within action; my business address is 2450 Colorado Avenue, Suite 400E, Santa Monica, CA 90404.

On March April 5, 2006 I served the JOINT MOTION FOR ENTRY OF ORDER AND CONSENT JUDGMENT on the interested parties in this action by placing the true copy thereof, enclosed in a sealed envelope, postage prepaid, addressed as follows; X (BY MAIL) (BY FEDERAL EXPRESS) (BY FACSIMILE) (BY PERSONAL SERVICE)

Philip H. Stillman Flynn Stillman 224 Birmingham Drive Suite 1A Cardiff, CA 92007 I deposited such envelope in the mail at Santa Monica, California. The envelope was mailed with postage thereon fully prepaid, X I am readily familiar with the business practice of my place of employment in respect to the collection and processing of correspondence, pleadings and notices for mailing with United States Postal Service. The foregoing sented envelope was placed for collection and mailing this date consistent with the ordinary business practice of my place of employment, so that it will be picked up this date with postage thereon fully prepaid in the ordinary course of such business. I am readily familiar with the business practice of my place of employment in respect to the collection and processing of correspondence, pleadings and notice for delivery by Federal Express. Under the practice, it would be deposited with Federal Express on that same day with postage thereon fully prepared at Santa Monica, California in the ordinary course of business. I am aware that on motion of the party served, service is presumed invalid if delivery by Federal Express is more than one day after date of deposit with Federal Express. On ________, I transmitted the foregoing document(s) by facsimile sending number. Pursuant to rule 2009(i)(4), I caused the machine to print a transmission record of the transmission, a true and correct copy of which is attached to this declaration. I delivered such envelope by hand to the offices of the addressee. Executed on ____________, at Santa Monica, California. X (FEDERAL) I declare under penalty of perjury that the foregoing is true and correct, and that I am employed at the office of a member of the bar of this Court at whose direction the service was made.

Executed on APRIL 5, 2006, at Denver, Colorado.

__________________________ Signature

__________________________ Name