Comp Exam'r Agency v. Juris, Inc., No. 96-0213-WMB (Ctx), 1996 WL 376600 (C.D. Cal. May 22, 1996)

PRELIMINARY INJUNCTION

WM. MATTHEW BYRNE, Jr., Chief Judge.

The Motion for and Order To Show Cause re Preliminary Injunction came on for hearing on April 23, 1996. Crosby, Heafey, Roach & May Professional Corporation, by Morgan W. Tovey and William R. Overend, appeared for Defendant and Counterclaimant Juris, Inc.; Veatch, Carlson, Grogan & Nelson, by Lyn A. Woodward and Mark Weinstein, appeared for Plaintiff and Counterclaim Defendant The Comp Examiner Agency, Inc. and Counterclaim Defendant Mr. Rene Thomas Folse.

Having considered the pleadings, and all papers submitted in support of the application for a temporary restraining and order to show cause regarding preliminary injunction, and in opposition thereto, and having heard oral argument in open court, the Court finds that:

1. Juris, Inc. ("Juris") is the owner of the trademark "JURIS," which has been registered on the Principal Register of the United States Patent and Trademark Office since 1988 and has become incontestable under Section 15 of the Lanham Act, 15 U.S.C. 1065;

2. Juris has demonstrated a likelihood of success of proving that Plaintiff and Counterclaim Defendant, The Comp Examiner Agency, Inc., and Counterclaim Defendant Mr. Rene Thomas Folse (collectively "TCE") are infringing Juris' registered trademark through TCE's use of an identical mark "juris" as a second level domain name and website on the computer medium of the Internet and through other marketing channels to sell, distribute, advertise, and/or market its goods and services to Juris' target market of lawyers and law firms, because TCE's use of the "juris" mark is likely to cause confusion as to the source or sponsorship of those goods and services, 15 U.S.C. 1114 and 1125;

4. Juris has shown that TCE's use of the "juris" domain name and mark in connection with their Internet site is causing irreparable injury to Juris;

5. The probable harm to Juris from TCE's conduct outweighs any inconvenience that TCE will experience if it is required to stop using "juris com" as a second level domain name and website; and

6. The public interest favors entry of a preliminary injunction on the facts of this case.

THEREFORE, IT IS HEREBY ORDERED that a preliminary injunction should issue. TCE, its officers, agents, servants, employees, and attorneys and those persons in active concert and participation with TCE who receive actual notice of this preliminary injunction, are, pending further order from this Court, enjoined from directly or indirectly using the name "juris" or the Internet domain name "juris.com," or any confusingly similar variation thereof, including, but not limited to "juriscom.com," for the advertising, operation or maintenance of any Internet site or bulletin board service.

IT IS FURTHER ORDERED that TCE shall, within seven (7) days of the signing of this Order, remove all content from the "juris.com" site, including its home page, sub-domains, and bulletin board service ("BBS"), and cease operating the "juris.com" web site and BBS. However, TCE shall be allowed, pending further order from this Court, to maintain the function of the juris.com site whereby the site serves as a "gateway" for directing and interpreting electronic mail transmissions through the network's UNIX system, so long as this function does not in any way require users to input or otherwise use or see the name "juris.com." TCE shall further be allowed to post a "referral notice" at the URL address "http:www.juris.com" and at the BBS site until July 30, 1996, which shall provide the new location of TCE's Internet site. The referral notice shall not contain any hypertext link to TCE's new site or sites or to any other site. After the expiration of the 90 day referral period, TCE must remove the referral notice and thereafter discontinue any use, either direct or indirect of the name "Juris" or "juris.com" and domain name "juris.com," or any other confusingly similar name.

IT IS FURTHER ORDERED that TCE shall not sell Internet access software under the "juris.com" domain name, juris.com website, juris.com BBS or any juris.com conventional advertising, pending further order from this Court.

IT IS FURTHER ORDERED that this Order shall be effective immediately and that, within seven (7) days hereof, Juris shall post a bond pursuant to Federal Rule of Civil Procedure 65(c) in the amount of $5,000.00.

IT IS SO ORDERED.