Verizon California Inc. et al v. Navigation Catalyst Systems, Inc. et al. Featured Case

Plaintiffs Verizon California Inc., Verizon Trademark Services LLC and Verizon Licensing Company alleged that Defendants Navigation Catalyst Systems Inc. and Basic Fusion Inc. have used an automated process to register and use over three million domain names, many of which are confusingly similar to famous or distinctive trademarks owned by others.

Plaintiff: Verizon Licensing Company, Verizon Trademark Services LLC and Verizon California Inc.
Defendant: Navigation Catalyst Systems, Inc. and Basic Fusion, Inc.
 
Case Number: 2:2008cv02463
Filed: April 15, 2008
 
Court: California Central District Court
Office: Western Division - Los Angeles Office
County: Ventura
Presiding Judge: Audrey B. Collins
Referring Judge: Charles F. Eick
 
Nature of Suit: Trademark
Cause of Action: 15:1125 Trademark Infringement (Lanham Act)
Jury Demanded By: Plaintiff

Available Case Documents

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Date Filed#Document Text
May 5, 2008 10 Featured Case
ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY Sarah B. Deutsch for Leave to Appear Pro Hac Vice 9 to appear on behalf of Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. Sarah B. Deutsch is designated as local counsel. Fee PAID. (bm)
May 2, 2008 11
APPLICATION OF NON-RESIDENT ATTORNEY John Thorne for Leave to Appear Pro Hac Vice. FEE PAID. filed by plaintiff Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (bm) Modified on 5/6/2008 (bm, ).
May 2, 2008 12 Featured Case
ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY John Thorne for Leave to Appear Pro Hac Vice 11 on behalf of Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. David J. Steele is designated as local counsel. Fee PAID. (bm) Modified on 5/6/2008 (bm, ).
May 9, 2008 13
PROOF OF SERVICE Executed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, upon Navigation Catalyst Systems, Inc. served on 4/23/2008, answer due 5/13/2008. Original Summons Not returned. (Steele, David)
May 9, 2008 14
PROOF OF SERVICE Executed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, upon Basic Fusion, Inc. served on 4/23/2008, answer due 5/13/2008. Original Summons not returned. (Steele, David)
May 15, 2008 15
CORPORATE DISCLOSURE STATEMENT filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc. identifying Connexus Corporation as Corporate Parent. (Givens, Elizabeth)
May 16, 2008 16
APPLICATION OF NON-RESIDENT ATTORNEY Brett E. Lewis for Leave to Appear Pro Hac Vice. FEE NOT PAID. filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Proposed Order on Brent Lewis Pro Hac Vice Application)(Givens, Elizabeth)
May 15, 2008 17
ANSWER to Complaint - (Discovery), Complaint - (Discovery) 1 with JURY DEMAND, COUNTERCLAIM against Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC filed by defendants' Navigation Catalyst Systems, Inc., Basic Fusion, Inc..(bp)
May 15, 2008 18
CERTIFICATION of Interested Parties filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (bp)
May 20, 2008 19 Featured Case
ORDER by Judge Audrey B. Collins Granting APPLICATION OF NON-RESIDENT ATTORNEY Brett E. Lewis for Leave to Appear Pro Hac Vice. 16 by Brett E. Lewis to appear on behalf of Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Michael King and Janice Kroll are designated as local counsel. Fee NOT PAID. (es)
April 15, 2008 1
COMPLAINT against Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc. (Filing fee $ 350 PAID.) Jury Demanded., filed by plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.(ghap) Additional attachment(s) added on 4/22/2008 (hha). Additional attachment(s) added on 4/23/2008 (tdo).
May 15, 2008 20
Certification and Notice of Interested Parties filed by defendants Navigation Catalyst Systems, Inc. and Basic Fusion, Inc. (ps)
June 4, 2008 21
Plaintiffs' ANSWER to Answer to Complaint (Discovery), Answer to Complaint (Discovery), Counterclaim, 17 Answer to Counterclaims of Defendants filed by Plaintiffs/Counterclaim-Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.(Steele, David)
June 9, 2008 22
NOTICE OF MOTION AND MOTION for Preliminary Injunction re: registration of domain names filed by Plaintiffs/Counterclaim-Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. Motion set for hearing on 6/30/2008 at 10:00 AM before Judge Audrey B. Collins. (Attachments: # 1 Appendix Memorandum of Points & Authorities in Support of Motion for Preliminary Injunction, # 2 Declaration Declaration of Janis M. Manning in Support of Motion for Preliminary Injunction, # 3 Exhibit Exh. A to Manning Declaration, # 4 Exhibit Exh. B to Manning Declaration, # 5 Exhibit Exh. C to Manning Declaration, # 6 Exhibit Exh. D to Manning Declaration, # 7 Exhibit Exh. E to Manning Declaration, # 8 Exhibit Exh. F to Manning Declaration, # 9 Declaration Declaration of Anne F. Bradley in Support of Motion for Preliminary Injunction, # 10 Exhibit Exh. A to Bradley Declaration, # 11 Exhibit Exh. B to Bradley Declaration, # 12 Exhibit Exh. C to Bradley Declaration, # 13 Exhibit Exh. D-Pt.1 to Bradley Declaration, # 14 Exhibit Exh. D-Pt.2 Bradley Declaration, # 15 Exhibit Exh. D-Pt.3 Bradley Declaration, # 16 Exhibit Exh. D-Pt.4 to Bradley Declaration, # 17 Exhibit Exh. D-Pt.5 to Bradley Declaration, # 18 Exhibit Exh. E to Bradley Declaration, # 19 Exhibit Exh. F to Bradley Declaration, # 20 Exhibit Exh. G to Bradley Declaration, # 21 Exhibit Exh. H to Bradley Declaration, # 22 Exhibit Exh. I to Bradley Declaration, # 23 Exhibit Exh. J. to Bradley Declaration, # 24 Exhibit Exh. K to Bradley Declaration, # 25 Proposed Order Proposed Order for Preliminary Injunction)(Steele, David)
April 15, 2008 23
CERTIFICATION AND NOTICE of Interested Parties filed by plaintiffs Verizon Licensing Company, Verizon California Inc., and Verizon Trademark Services LLC. (ps)
April 15, 2008 24
REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification). (ps) Modified on 6/16/2008 (ps).
June 16, 2008 25
MEMORANDUM in Opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett)
June 16, 2008 26
DECLARATION of Matt Wrock in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett)
June 16, 2008 27
DECLARATION of Matt Wrock in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Wrock Exhibit A part 1, # 2 Exhibit Wrock Exhibit A part 2, # 3 Exhibit Wrock Aff Exhibit A part 3)(Lewis, Brett)
June 16, 2008 28
DECLARATION of Robert P. Johnson in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Johnson Decl. Ex. A, # 2 Exhibit Johnson Decl. Ex. B, # 3 Exhibit Johnson Decl. Ex. C, # 4 Exhibit Johnson Decl. Ex. D, # 5 Exhibit Johnson Decl. Ex. E, # 6 Exhibit Johnson Decl. Ex. F, # 7 Exhibit Johnson Decl. Ex. G, # 8 Exhibit Johnson Decl. Ex. H, # 9 Exhibit Johnson Decl. Ex. I, # 10 Exhibit Johnson Decl. Ex. J, # 11 Exhibit Johnson Decl. Ex. K, # 12 Exhibit Johnson Decl. Ex. L, # 13 Exhibit Johnson Decl. Ex. M, # 14 Exhibit Johnson Decl. Ex. N, # 15 Exhibit Johnson Decl. Ex. O, # 16 Exhibit Johnson Decl. Ex. P, # 17 Exhibit Johnson Decl. Ex. Q, # 18 Exhibit Johnson Decl. Ex. R, # 19 Exhibit Johnson Decl. Ex. S)(Lewis, Brett)
June 16, 2008 29
DECLARATION of Seth Jacoby in opposition to MOTION for Preliminary Injunction re: registration of domain names 22 filed by Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Attachments: # 1 Exhibit Jacoby Ex. A, # 2 Exhibit Jacoby Ex. D, # 3 Exhibit Jacoby Ex. E, # 4 Exhibit Jacoby Ex. F, # 5 Exhibit Jacoby Ex. G, # 6 Exhibit Jacoby Exhibit H, # 7 Exhibit Jacoby Ex. I, # 8 Exhibit Jacoby Ex. J, # 9 Exhibit Jacoby Ex. K, # 10 Exhibit Jacoby Ex. L, # 11 Exhibit Jacoby Ex. M, # 12 Exhibit Jacoby Ex. N, # 13 Exhibit Jacoby Ex. O, # 14 Exhibit Jacoby Ex. P, # 15 Exhibit Jacoby Ex. Q, # 16 Exhibit Jacoby Ex. B, # 17 Exhibit Jacoby Ex. C)(Lewis, Brett)
April 15, 2008 2
CERTIFICATION AND NOTICE of Interested Parties filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (ghap) Additional attachment(s) added on 4/23/2008 (tdo, ).
June 19, 2008 30 Featured Case
ORDER RE CONFERENCE: 1. PRETRIAL CONFERENCE PURSUANT TO F.R.CIV.P. 16 AND 26; AND LOCAL RULE 26; 2. MOTIONS & EX PARTE APPLICATIONS; 3. EFILING - COURTESY COPIES by Judge Audrey B. Collins, Set/Reset Deadlines/Hearings: Pretrial/Scheduling Conference set for 8/11/2008 10:00 AM before Judge Audrey B. Collins. (See document for text of order.) (ps)
June 23, 2008 31
REPLY in support of a MOTION for Preliminary Injunction re: registration of domain names 22 filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, Counter Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Declaration of David Steele in Support of Motion for Preliminary Injunction, # 2 Exhibit A-M to Declaration of D. Steele, # 3 Exhibit N-P to Declaration of D. Steele)(Steele, David)
June 30, 2008 32 Featured Case
ORDER by Judge Audrey B. Collins: This order shall constitute the Courts findings of fact and conclusions of law on this issue. Based on the findings and conclusions set forth above, the Court hereby GRANTS in part and DENIES in part Plaintiffs Motion for a Preliminary Injunction 22 . Plaintiffs request for an order enjoining Defendants from registering any domain name using an automated process is DENIED. However, the Court will issue a Preliminary Injunction enjoining Defendants from registering or using any domain name that is identical or confusingly similar to the following marks: VERIZON, VERIZON WIRELESS, FIOS, VERIZON FIOS, VZ, VZACCESS, VZEMAIL, VZGLOBAL, VZVOICE, and VZW.Defendants will be further enjoined from assisting, aiding, or abetting any other person or business entity in registering or using any domain name that is identical or confusingly similar to these same ten marks. As the injunctive relief ordered is relatively modest, the Court orders Plaintiffs to post a $10,000.00 bond within ten days of the date of entry of the Preliminary Injunction. If Plaintiffs fail to post the bond in a timely manner, the Preliminary Injunction will be vacated. (ir)
June 30, 2008 33
MINUTES: Plaintiffs motion for Preliminary Injunction 22 . Motion granted in part and denied in part by Judge Audrey B. Collins Court Reporter: Katherine Stride. (ir)
July 3, 2008 34
NOTICE AND REQUEST of Settlement Procedure Selection (Sp3); parties request to appear before a retired judicial officer or other dispute resolution body for mediation type settlement proceedings. Filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC(Kroll, Howard)
July 18, 2008 35
STIPULATION to Continue Pretrial/Scheduling Conference from August 11, 2008 to September 8, 2008 filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Proposed Order to Continue Pretrial/Scheduling Conference)(Steele, David)
July 21, 2008 36 Featured Case
ORDER TO CONTINUE PRETRIAL/SCHEDULING CONFERENCE by Judge Audrey B. Collins, GRANTING Stipulation to Continue, 35 : ( Pretrial/Scheduling Conference set for 9/8/2008 at 10:00 AM before Judge Audrey B. Collins.) (ca)
August 29, 2008 37
JOINT REPORT Rule 26(f) Discovery Plan ; estimated length of trial 7-10 days, filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC, Defendants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc., Counter Defendants Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC.. (Criona, Danielle)
September 2, 2008 38
WITHDRAWAL of, Answer to Counterclaim, 21 , Answer to Complaint (Discovery), Answer to Complaint (Discovery), Counterclaim, 17 , filed by Counter Claimants Navigation Catalyst Systems, Inc., Basic Fusion, Inc.. (Lewis, Brett)
September 8, 2008 39
NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following error(s) was found: Docket entry text must match document e-filed; Judge's initial indicated incorrectly on document. RE: Notice of Withdrawal of Claim 38 . In response to this notice the court may order (1) an amended or correct document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ab)
April 15, 2008 3
CORPORATE DISCLOSURE STATEMENT filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC identifying none as Corporate Parent. (ghap) Additional attachment(s) added on 4/22/2008 (hha, ).
September 8, 2008 40
MINUTES OF Scheduling Conference held before Judge Audrey B. Collins: Add claims/parties cutoff: 12/1/2008; Discovery cut-off: 3/1/2009; Expert Discovery cutoff: 6/12/09; Law and Motion cutoff: 6/29/2009; Final Pretrial Conference: 9/28/2009 10:00 AM; Jury Trial set for 10/13/2009 08:30 AM; Counsel are reminded of the requirements of Local Rule 16-14. Counsel shall submit their notice of settlement selection within 10 days.Court Reporter: Katherine Stride. (lc) Modified on 9/10/2008 (lc).
September 8, 2008 41 Featured Case
CIVIL JURY TRIAL ORDER by Judge Audrey B. Collins: The above matter is set for trial before the Honorable Audrey B. Collins, Courtroom 680, Roybal Federal Building, 255 East Temple Street, Los Angeles, CA 90012. PRETRIAL AND TRIAL DATES 1. The Court orders the following dates: a. Cut-off date for filing motions to join other parties and amending the pleadings isDecember 1, 2009. b. Discovery cut-off is March 1, 2009; Expert Discovery cut-off is June 16, 2009. c. Cut-off date for motions to be filed is Monday, June 29, 2009. d. Final Pretrial Conference is set for Monday, September 28, 2009, at 10:00 a.m. Trial counsel must be present. Note: Counsel must comply with Local Rule 16. e. Trial is set for Tuesday, October 13, 2009, at 8:30 a.m. PLEASE READ DOCUMENT FOR FURTHER INFORMATION (ca)
October 21, 2008 42
STIPULATION for Judgment as to Defendants, STIPULATION for Permanent Injunction as to Defendants filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Proposed Order for Final Judgment and Permanent Injunction)(Steele, David)
October 21, 2008 43
NOTICE OF MOTION AND Joint MOTION for Release of Funds filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (Attachments: # 1 Proposed Order Returning Plaintiffs' Deposit Posted in Support of Preliminary Injunction)(Steele, David)
October 22, 2008 44
NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following errors were found: Case name and number not on Title Page. Proposed Order was not submitted as separate attachment RE: Stipulation for Judgment, Stipulation for Permanent Injunction 42 . In response to this notice the court may order (1) an amended or correct document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ir)
October 22, 2008 45
NOTICE TO FILER OF DEFICIENCIES in Electronically Filed Documents. The following error(s) was found: Incorrect event used. Correct event is Motion and Related Filings - Request - Order. Proposed document shall be submitted as separate attachment RE: Joint MOTION for Release of Funds 43 . In response to this notice the court may order (1) an amended or correct document to be filed (2) the document stricken or (3) take other action as the court deems appropriate. (ir)
October 22, 2008 46 Featured Case
STIPULATED ORDER by Judge Audrey B. Collins regarding Stipulated Request for Release of Funds 43 . Plaintiffs and Defendants further request that the Clerk of the Court remit the funds, payable to Christie, Parker & Hale LLP to the following address: Christine, Parker & Hale LLP c/o David J Steele, Esq at 3501 Jamboree Road Suite 6000- North Tower Newport Beach, CA 92660. (ir)
October 22, 2008 47 Featured Case
STIPULATED ORDER for Final Judgment and Permanent Injunction 42 by Judge Audrey B. Collins: The parties, having reached a full settlement of this matter, hereby stipulate and agree to the entry of final judgment and permanent injunction as follows: 1. Defendants Navigation Catalyst Systems, Inc. and Basic Fusion, Inc. and their officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this Order, shall be permanently enjoined. This Court has jurisdiction over the parties and the subject matter of this action. This Court shall retain jurisdiction to the extent necessary to enforcethis Permanent Injunction. All relief not expressly granted herein is DENIED. Each party shall bear its own costs, expenses and attorneys fees. This is a Final Judgment. (Made JS-6. Case Terminated.) (ir)
November 4, 2008 48
REPORT ON THE DETERMINATION OF AN ACTION Regarding a Patent or Trademark. (Closing) (ir)
April 15, 2008 4
REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification) filed by Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (ghap)
April 18, 2008 5
NOTICE OF FILING FEE DUE on Pro Hac Vice Application mailed to attorney Sarah B Deutsch for Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (ghap)
April 18, 2008 6
NOTICE OF FILING FEE DUE on Pro Hac Vice Application mailed to attorney John Thorne for Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (ghap)
May 1, 2008 7
NOTICE of Manual Filing filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC of Applications of Non-Resident Attorney to Appear in a Specific Case for John Thorne & Sarah B. Deutsch. (Steele, David)
May 1, 2008 8
NOTICE of Manual Filing filed by Plaintiffs Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC of Notice of Manual Filing of Applications of Non-Resident Attorney to Appear in a Specific Case and Proposed Orders for John Thorne and Sarah B. Deutsch. (Attachments: # 1 Proposed Order On Application of Non-Resident Attorney to Appear in a Specific Case for John Thorne# 2 Proposed Order On Application of Non-Resident Attorney to Appear in a Specific Case for Sarah B. Deutsch)(Steele, David)
May 2, 2008 9
APPLICATION OF NON-RESIDENT ATTORNEY Sarah B. Deutsch for Leave to Appear Pro Hac Vice. FEE PAID, filed by plaintiff Verizon Licensing Company, Verizon California Inc., Verizon Trademark Services LLC. (bm)

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Plaintiff: Verizon Licensing Company
Represented By: John Thorne
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Plaintiff: Verizon Trademark Services LLC
Represented By: Howard A Kroll
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Plaintiff: Verizon California Inc.
Represented By: John Thorne
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Defendant: Navigation Catalyst Systems, Inc.
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Defendant: Basic Fusion, Inc.
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