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UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

GIOCONDA LAW GROUP PLLC ) a New York Professional Limited Liability ) Company )

) JUDGE OETKEN Plaintiff )

) No 12 CV 4919 (JPO) v )

) ARTHUR WESLEY KENZIE )

an individual ) )

Defendant ) )

Upon the Complaint and the Order to Show Cause Why a Preliminary Injunction

Should Not Be Entered dated July 25 2012 and the Defendant having been served with

the Complaint and the Order to Show Cause by International Registered Mail and not

having opposed the relief sought herein the Court issues the following Preliminary

Injunction

1 This is an action for cybersquatting under the Anticybersquatting

Consumer Protection Act for federal trademark infringement and false designation of

origin in violation of the Lanham Act for unlawful interception and disclosure of

electronic communications in violation of the Wiretap Act for violations of Sections 349

and 350 of the New York General Business Law and for trademark infringement and

unfair competition in violation of the common law of the State of New York

2 This Court has jurisdiction over the subject matter of this action pursuant

to Section 39 of the Lanham Act 15 Sc sect 112128 USc sectsect 1331 and 1338 (a) for

COPIES MAILED TO PRO SEPARTY otlUG 2 12012

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 1 of 9

the claims arising out of violations of the Lanham Act under 18 USC sect 2510 and 2511

for the acts of unlawful interception and disclosure of electronic communications has

supplemental jurisdiction pursuant to 28 U SC sect 1367 for the claims arising out of the

violation of Sections 349 and 350 of the New York Business Law and all other claims

arising under the common law of the State of New York and under sectsect 1338(b) and 1367

for the claims arising under the common law of unfair competition

3 This Court possesses personal jurisdiction over the Defendant because the

Defendant intentionally directed tortious conduct toward New York and this Judicial

District with knowledge that such conduct would be likely to cause harm to the Plaintiff

and to the public located in New York

4 Venue is proper in this Judicial District under 28 USC sect 1391 as a

substantial part of the events giving rise to this action occurred in this Judicial District

5 The Plaintiff is the record owner of the Gioconda Law Group Service

Mark No4 130021 which is attached hereto as Exhibit 1 (the Gioconda Law Group

Service Mark) The Plaintiff has proffered evidence that the Gioconda Law Group

Service Mark is distinctive valid and enforceable

6 The Plaintiff has demonstrated that it is likely to prevail on its claim for

cybersquatting under the Anticybersquatting Consumer Protection Act for its claim of

federal trademark infringement and false designation of origin in violation of the Lanham

Act for its claim of unlawful interception and disclosure of electronic communications in

violation of the Wiretap Act for its claim of violations of Sections 349 and 350 of the

New York General Business Law and for its claims of trademark infringement and unfair

competition in violation of the common law of the State of New York

2

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 2 of 9

7 The Plaintiff has demonstrated that it and the public would suffer

irreparable harm in the absence of a Preliminary Injunction The Plaintiff has also shown

that the balance of hardships should an injunction issue tips in its favor and the Plaintiff

has shown that enjoining the Defendants activities is in the public interest

WHEREFORE IT IS ORDERED THAT

A Defendant and his agents servants employees and all those in active concert

or participation with him who receive actual notice of the terms hereof shall

be and are preliminary restrained and enjoined from

1 Using any Internet domain name or electronic mail address that simulates

reproduces counterfeits copies or imitates the Gioconda Law Group

Service Mark

2 Intercepting receiving andor disclosing the contents of any electronic

mail or other communications intended for or addressed to the Plaintiff~

3 Creating registering or exercising control over any Internet domain

name(s) andor websites(s) to simulate or impersonate the Plaintiff

4 Engaging in any course of conduct whatsoever likely to cause confusion

mistake or deception with the Plaintiff

5 Using any false or misleading description or representation tending to

falsely describe or represent the Defendants identity services domain

name(s) electronic mail address( es) or website(s) as being those ofthe

Plaintiff or sponsored by or associated with the Plaintiff and from

offering any such services into commerce

3

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 3 of 9

6 Infringing the Gioconda Law Group Service Mark by creating producing

distributing circulating selling marketing offering for sale advertising

promoting displaying or otherwise offering for sale any services or

products not authorized by the Plaintiff that bear any simulation

reproduction counterfeit copy or colorable imitation of the Gioconda

Law Group Service Mark

7 Making any statement or representation whatsoever which is likely to lead

the trade or the public to believe that any services or products offered

distributed or sold by the Defendant are in any manner associated with or

connected to the Plaintiff

8 Effecting any assignments or transfers fonning new entities or

associations or utilizing any other device for the purpose of circumventing

or otherwise avoiding the prohibitions set forth herein

IT IS FURTHER ORDERED THAT the Defendant shall deliver to the Plaintiff

any and all electronic mails in his custody possession or control that were addressed to

any e-mail addresses [ANY]GIOCONDOLAWCOM by burning such e-mails

onto an encrypted CD or DVD-ROM and delivering the same to the Plaintiff and by

sending the password to the encrypted CD or DVD-ROM by a separate fonn of delivery

to the Plaintiff and

IT IS FURTHER ORDERED THAT third party Internet Registrar of Record

GoDaddycom Inc place a Registrar Lock on each of the Internet domain names that

are listed in Exhibits 2 and 3 attached hereto such that these domain names cannot be

transferred or expire pending further Order of this Court and

4

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 4 of 9

the claims arising out of violations of the Lanham Act under 18 USC sect 2510 and 2511

for the acts of unlawful interception and disclosure of electronic communications has

supplemental jurisdiction pursuant to 28 U SC sect 1367 for the claims arising out of the

violation of Sections 349 and 350 of the New York Business Law and all other claims

arising under the common law of the State of New York and under sectsect 1338(b) and 1367

for the claims arising under the common law of unfair competition

3 This Court possesses personal jurisdiction over the Defendant because the

Defendant intentionally directed tortious conduct toward New York and this Judicial

District with knowledge that such conduct would be likely to cause harm to the Plaintiff

and to the public located in New York

4 Venue is proper in this Judicial District under 28 USC sect 1391 as a

substantial part of the events giving rise to this action occurred in this Judicial District

5 The Plaintiff is the record owner of the Gioconda Law Group Service

Mark No4 130021 which is attached hereto as Exhibit 1 (the Gioconda Law Group

Service Mark) The Plaintiff has proffered evidence that the Gioconda Law Group

Service Mark is distinctive valid and enforceable

6 The Plaintiff has demonstrated that it is likely to prevail on its claim for

cybersquatting under the Anticybersquatting Consumer Protection Act for its claim of

federal trademark infringement and false designation of origin in violation of the Lanham

Act for its claim of unlawful interception and disclosure of electronic communications in

violation of the Wiretap Act for its claim of violations of Sections 349 and 350 of the

New York General Business Law and for its claims of trademark infringement and unfair

competition in violation of the common law of the State of New York

2

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 2 of 9

7 The Plaintiff has demonstrated that it and the public would suffer

irreparable harm in the absence of a Preliminary Injunction The Plaintiff has also shown

that the balance of hardships should an injunction issue tips in its favor and the Plaintiff

has shown that enjoining the Defendants activities is in the public interest

WHEREFORE IT IS ORDERED THAT

A Defendant and his agents servants employees and all those in active concert

or participation with him who receive actual notice of the terms hereof shall

be and are preliminary restrained and enjoined from

1 Using any Internet domain name or electronic mail address that simulates

reproduces counterfeits copies or imitates the Gioconda Law Group

Service Mark

2 Intercepting receiving andor disclosing the contents of any electronic

mail or other communications intended for or addressed to the Plaintiff~

3 Creating registering or exercising control over any Internet domain

name(s) andor websites(s) to simulate or impersonate the Plaintiff

4 Engaging in any course of conduct whatsoever likely to cause confusion

mistake or deception with the Plaintiff

5 Using any false or misleading description or representation tending to

falsely describe or represent the Defendants identity services domain

name(s) electronic mail address( es) or website(s) as being those ofthe

Plaintiff or sponsored by or associated with the Plaintiff and from

offering any such services into commerce

3

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 3 of 9

6 Infringing the Gioconda Law Group Service Mark by creating producing

distributing circulating selling marketing offering for sale advertising

promoting displaying or otherwise offering for sale any services or

products not authorized by the Plaintiff that bear any simulation

reproduction counterfeit copy or colorable imitation of the Gioconda

Law Group Service Mark

7 Making any statement or representation whatsoever which is likely to lead

the trade or the public to believe that any services or products offered

distributed or sold by the Defendant are in any manner associated with or

connected to the Plaintiff

8 Effecting any assignments or transfers fonning new entities or

associations or utilizing any other device for the purpose of circumventing

or otherwise avoiding the prohibitions set forth herein

IT IS FURTHER ORDERED THAT the Defendant shall deliver to the Plaintiff

any and all electronic mails in his custody possession or control that were addressed to

any e-mail addresses [ANY]GIOCONDOLAWCOM by burning such e-mails

onto an encrypted CD or DVD-ROM and delivering the same to the Plaintiff and by

sending the password to the encrypted CD or DVD-ROM by a separate fonn of delivery

to the Plaintiff and

IT IS FURTHER ORDERED THAT third party Internet Registrar of Record

GoDaddycom Inc place a Registrar Lock on each of the Internet domain names that

are listed in Exhibits 2 and 3 attached hereto such that these domain names cannot be

transferred or expire pending further Order of this Court and

4

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 4 of 9

7 The Plaintiff has demonstrated that it and the public would suffer

irreparable harm in the absence of a Preliminary Injunction The Plaintiff has also shown

that the balance of hardships should an injunction issue tips in its favor and the Plaintiff

has shown that enjoining the Defendants activities is in the public interest

WHEREFORE IT IS ORDERED THAT

A Defendant and his agents servants employees and all those in active concert

or participation with him who receive actual notice of the terms hereof shall

be and are preliminary restrained and enjoined from

1 Using any Internet domain name or electronic mail address that simulates

reproduces counterfeits copies or imitates the Gioconda Law Group

Service Mark

2 Intercepting receiving andor disclosing the contents of any electronic

mail or other communications intended for or addressed to the Plaintiff~

3 Creating registering or exercising control over any Internet domain

name(s) andor websites(s) to simulate or impersonate the Plaintiff

4 Engaging in any course of conduct whatsoever likely to cause confusion

mistake or deception with the Plaintiff

5 Using any false or misleading description or representation tending to

falsely describe or represent the Defendants identity services domain

name(s) electronic mail address( es) or website(s) as being those ofthe

Plaintiff or sponsored by or associated with the Plaintiff and from

offering any such services into commerce

3

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 3 of 9

6 Infringing the Gioconda Law Group Service Mark by creating producing

distributing circulating selling marketing offering for sale advertising

promoting displaying or otherwise offering for sale any services or

products not authorized by the Plaintiff that bear any simulation

reproduction counterfeit copy or colorable imitation of the Gioconda

Law Group Service Mark

7 Making any statement or representation whatsoever which is likely to lead

the trade or the public to believe that any services or products offered

distributed or sold by the Defendant are in any manner associated with or

connected to the Plaintiff

8 Effecting any assignments or transfers fonning new entities or

associations or utilizing any other device for the purpose of circumventing

or otherwise avoiding the prohibitions set forth herein

IT IS FURTHER ORDERED THAT the Defendant shall deliver to the Plaintiff

any and all electronic mails in his custody possession or control that were addressed to

any e-mail addresses [ANY]GIOCONDOLAWCOM by burning such e-mails

onto an encrypted CD or DVD-ROM and delivering the same to the Plaintiff and by

sending the password to the encrypted CD or DVD-ROM by a separate fonn of delivery

to the Plaintiff and

IT IS FURTHER ORDERED THAT third party Internet Registrar of Record

GoDaddycom Inc place a Registrar Lock on each of the Internet domain names that

are listed in Exhibits 2 and 3 attached hereto such that these domain names cannot be

transferred or expire pending further Order of this Court and

4

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 4 of 9

6 Infringing the Gioconda Law Group Service Mark by creating producing

distributing circulating selling marketing offering for sale advertising

promoting displaying or otherwise offering for sale any services or

products not authorized by the Plaintiff that bear any simulation

reproduction counterfeit copy or colorable imitation of the Gioconda

Law Group Service Mark

7 Making any statement or representation whatsoever which is likely to lead

the trade or the public to believe that any services or products offered

distributed or sold by the Defendant are in any manner associated with or

connected to the Plaintiff

8 Effecting any assignments or transfers fonning new entities or

associations or utilizing any other device for the purpose of circumventing

or otherwise avoiding the prohibitions set forth herein

IT IS FURTHER ORDERED THAT the Defendant shall deliver to the Plaintiff

any and all electronic mails in his custody possession or control that were addressed to

any e-mail addresses [ANY]GIOCONDOLAWCOM by burning such e-mails

onto an encrypted CD or DVD-ROM and delivering the same to the Plaintiff and by

sending the password to the encrypted CD or DVD-ROM by a separate fonn of delivery

to the Plaintiff and

IT IS FURTHER ORDERED THAT third party Internet Registrar of Record

GoDaddycom Inc place a Registrar Lock on each of the Internet domain names that

are listed in Exhibits 2 and 3 attached hereto such that these domain names cannot be

transferred or expire pending further Order of this Court and

4

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 4 of 9

IT IS FURTHER ORDERED THAT Plaintiff shall post security in the amount

of$j)JOOO

IT IS FURTHER ORDERED THAT the Plaintiff may serve this Order on the

Defendant by International Registered Mail which shall constitute proper and effective

service of process under Fed R Civ P 4

SO ORDERED

J~ Hon J Paul Oetken United States District Court Judge Southern District ofNew Yark

Dated f1 ( 2shy

5

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 5 of 9

GI()C()NDA LAW GROlJP PLLC

Reg ~o 4130021 IOcoNl 1 (ROLl PUC (NEW YORK L1Mrlln LIABILITY COMPANY) 1(1I11 ItOOI

Registered Apr ) 72012 i PINN PLAL NI W YORK 1Y i 011 )

Int CI 45 FOR PROVIDI1(i INTORMAlIOi IN Till FIUD or INTfLucn1i PROPFRTY IN CLASS 45 (liS US IOOANll 1(1)

SERVICE 1ARK FiRST lS[ 12-21-~OO() ll COlHRU lc-21-200

SUPPLEMDilAL REGISTER Till MARK CONSISTS tlI STANDARD CllARCTIRS WITlOCi ClAll TO ANY PARshyflU IIJR HJ1T sTYLE SilL OR COLOR

NO UAlvf IS 1vlAI)I ro Till LXCLUSTV RIGIIT TO l SI LAW GROLl PLLe AIAj1 I ROvl n II MARK AS SIIOWN

SIR NO XS-403x(7 IIIID PR X-22-20l JAM SR 2-~-2()12

iS1AT KIIAN LXAMINING AITORNIY

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 6 of 9

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Artbur Wesley J(enzies Active CYBERSQUATTED Domains

Domain Name Date Registered Date of Expiration appomatic net 13-Apr-12 13-Apr-13

appomaticorg 13-Apr-12 13-Apr-13

bellrnediaprcom 8-Jul-ll 8-Jul-12

blakchatcom 13-Sep-ll 13-Sep-12

firefoxproxycom 6-May-09 6-Maymiddot 13

iamabaristacom 4-Apr-07 4-Apr-13

kevinmitnikccom 13-Sep-l1 13-Sep-12

logrneincom 12-Sep-l1 12-Sep-12

8-Jul-l1lululernoncom 8-Jul-13

nevvscorp com 8-Jul-11 8-Jul-13

ipcvvorIdcom 8-Jul-ll 8-Jul-13

6-May-09I proxyfirefox com 6-May-13

Iqvvestcom 8-Jul-l1 8-Jul-13

rnacvvorld com 8-Jul-ll 8-Jul-13

rnastercard com 8-Jul-ll 8-Jul-13

rncafeecom 8-Jul-ll 8-Jul-13

8-Jul-llrncdonaldscom 8-Jul-13

rnobilerne com 8-Jul-ll 8-Jul-12

rnobi icity com 8-Jul-ll 8-Jul-12

rnonstercom 8-Jul-ll 8-Jul-13

rnysqlcom 8-Jul-ll 8-Jul-13

12-Aug-l1srnashlab com 12-Aug-12

tor-porjectorg 13-Sep-ll 13-Sep-12

tor-projetc org 13-Sep-l1 13-Sep-12

uottavvacom 8-Jul-l1 8-Jul-12----_ __-_ __shy~

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 7 of 9

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Artbur Wesley J(enzies Active CYBERSQUATTED Domains

Domain Name Date Registered Date of Expiration appomatic net 13-Apr-12 13-Apr-13

appomaticorg 13-Apr-12 13-Apr-13

bellrnediaprcom 8-Jul-ll 8-Jul-12

blakchatcom 13-Sep-ll 13-Sep-12

firefoxproxycom 6-May-09 6-Maymiddot 13

iamabaristacom 4-Apr-07 4-Apr-13

kevinmitnikccom 13-Sep-l1 13-Sep-12

logrneincom 12-Sep-l1 12-Sep-12

8-Jul-l1lululernoncom 8-Jul-13

nevvscorp com 8-Jul-11 8-Jul-13

ipcvvorIdcom 8-Jul-ll 8-Jul-13

6-May-09I proxyfirefox com 6-May-13

Iqvvestcom 8-Jul-l1 8-Jul-13

rnacvvorld com 8-Jul-ll 8-Jul-13

rnastercard com 8-Jul-ll 8-Jul-13

rncafeecom 8-Jul-ll 8-Jul-13

8-Jul-llrncdonaldscom 8-Jul-13

rnobilerne com 8-Jul-ll 8-Jul-12

rnobi icity com 8-Jul-ll 8-Jul-12

rnonstercom 8-Jul-ll 8-Jul-13

rnysqlcom 8-Jul-ll 8-Jul-13

12-Aug-l1srnashlab com 12-Aug-12

tor-porjectorg 13-Sep-ll 13-Sep-12

tor-projetc org 13-Sep-l1 13-Sep-12

uottavvacom 8-Jul-l1 8-Jul-12----_ __-_ __shy~

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 7 of 9

Arthur Wesley Kenzies Active GENERIC Domains

Domain Name Date Registered Date of Expiration

1 16ishcom 3-Feb-09 3-Feb-13

2 l7ishcom 3-Feb-09 3-Feb-13

3 bio-piracycom 13-Feb-12 13-Feb-13

4 blackhole mobi 29-Mar-12 29-Mar-13

5 copyfightcom 26-Mar-04 26-Mar-13

6 digitnotarcom 12-Sep-ll 12-Sep-12

7 freshexnet 30-Dec-tO 30-Dec-12

8 freshlocalpickscom 3I-Jan-09 31-Jan-13

9 I game-me com 2I-Jan-04 21-Jan-13

to Igameplaygocom 20-Jan-07 20-Jan-I3

11 Igeoblockedcom 30-Nov-08 30-Nov-12

12 IgeoQfivacycom 29-Nov-03 29-Nov-12

13 georestricted com 17-Apr-08 17-Apr-13

14 geospoofcom 27-Jun-07 27-Jun-13

15 gotomyipcom 13-Jul-04 13-Jul-13

16 heirloomdietcom 20-Nov-1O 20-Nov-12

17 heritagebeanscom 20-Nov-tO 20-Nov-12

I

18 iamapiani stcom 27-A2f-09 27-AjJr-13

19 inviziblecom 2-0ct-03 2-0ct-12

20 ippagescom 3I-Dec-03 31-Dec-12

21 ipwhatevercom 3-Aug-04 3-Aug-12

22 lookupiQcom 6-Jun-04 6-JlIn-13

23 lovetoc1imbcom 23-Apr-07 23-Apr-I3

~ rnllmbaibabycom to-Mar-1O to-Mar-13

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 8 of 9

25 noi ncometaxparty com 16-Sep-1O 16-Sep-12

26 onlyfreshandlocalcom 31-Jan-09 31-Jan-13

27 onlyfreshpicked com 4-Apr-09 4-Apr-13

28 I pickaproxy com 29-Jan-07 29-Jan-13

29 Iplatinumhatcom 2-Jun-ll 2-Jun-13

30 playopoliscom 4-Dec-l0 4-Dec-12

31 playopolisnet 27-May-09 27-May-13

32 povertyindustrycom 13-Dec-09 13-Dec-12

33 pri vacy-ecosystem com 3-Apr-06 3-Apr-13

34 pri vacyecosystemcom 3-Apr-06 3-Apr-13

35 I pri vacypow ered com 6-Dec-08 6-Dec-12

36 Iproxyecosystemcom 6-May-09 6-May-13

37 Iproxyuporg 13-Sep-ll 13-Sep-12

38 security-ecosystemcom 28-Sep-06 28-Sep-12

39 showmyhtmlcom 7-Aug-l1 7-Aug-12

40 showmyhtml5com 7-Augmiddot11 7-Aug-12

41 showmyipcom 4-Dec-OO 4-Dec-14

42 sslmitmcom 24-Nov-1O 24-Nov-12

43 tIsmitmcom 24-Nov-1O 24-Nov-12 I

44 upcensorscom 8-Dec-08 8-Dec-12

45 upcensorsnet 8-Dec-08 8-Dec-12

46 votenopartyus 25-May-04 24-May 13

47 w hyswedencom 12-Jun-07 12-Jun-13

48 wizardsandwitchescom 20-Sep-05 20-Sep-13

49 yafreshcom 19-Feb-09 19-Feb-13

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 9 of 9

25 noi ncometaxparty com 16-Sep-1O 16-Sep-12

26 onlyfreshandlocalcom 31-Jan-09 31-Jan-13

27 onlyfreshpicked com 4-Apr-09 4-Apr-13

28 I pickaproxy com 29-Jan-07 29-Jan-13

29 Iplatinumhatcom 2-Jun-ll 2-Jun-13

30 playopoliscom 4-Dec-l0 4-Dec-12

31 playopolisnet 27-May-09 27-May-13

32 povertyindustrycom 13-Dec-09 13-Dec-12

33 pri vacy-ecosystem com 3-Apr-06 3-Apr-13

34 pri vacyecosystemcom 3-Apr-06 3-Apr-13

35 I pri vacypow ered com 6-Dec-08 6-Dec-12

36 Iproxyecosystemcom 6-May-09 6-May-13

37 Iproxyuporg 13-Sep-ll 13-Sep-12

38 security-ecosystemcom 28-Sep-06 28-Sep-12

39 showmyhtmlcom 7-Aug-l1 7-Aug-12

40 showmyhtml5com 7-Augmiddot11 7-Aug-12

41 showmyipcom 4-Dec-OO 4-Dec-14

42 sslmitmcom 24-Nov-1O 24-Nov-12

43 tIsmitmcom 24-Nov-1O 24-Nov-12 I

44 upcensorscom 8-Dec-08 8-Dec-12

45 upcensorsnet 8-Dec-08 8-Dec-12

46 votenopartyus 25-May-04 24-May 13

47 w hyswedencom 12-Jun-07 12-Jun-13

48 wizardsandwitchescom 20-Sep-05 20-Sep-13

49 yafreshcom 19-Feb-09 19-Feb-13

Case 112-cv-04919-JPO Document 14 Filed 082112 Page 9 of 9