LOBLAW COMPANIES LIMITED, LOBLAWS INC., and
PRESIDENT'S CHOICE.COM, INC., Plaintiffs,
vs.
GUITA M. AZIMI d/b/a PRESIDENTCHOICE.COM, Defendant.
AND RELATED CROSS-ACTION.

Case No. C 00 3591 WHO

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

2001 U.S. Dist. LEXIS 20793

December 10, 2001

COUNSEL:

For LOBLAW COMPANIES LIMITED, LOBLAWS INC, PRESIDENT'S CHOICE.COM INC., Plaintiffs: Michael A. Grow, Joseph R. Price, Arent Fox Kintner Plotkin & Kahn, Washington, DC.

For LOBLAW COMPANIES LIMITED, LOBLAWS INC, PRESIDENT'S CHOICE.COM INC., Plaintiffs: David A. Cohen, Andrew T. Mortl, Glynn & Finley, Walnut Creek, CA.

GUITA M. AZIMI, defendant, Pro se, Walnut Creek, CA.

GUITA M. AZIMI, Counter-claimant, Pro se, Walnut Creek, CA.

For LOBLAW COMPANIES LIMITED, LOBLAWS INC, PRESIDENT'S CHOICE.COM INC., Counter-defendants: David A. Cohen, Andrew T. Mortl, Glynn & Finley, Walnut Creek, CA.

For LOBLAW COMPANIES LIMITED, LOBLAWS INC, PRESIDENT'S CHOICE.COM INC., Counter-defendants: Michael A. Grow, Joseph R. Price, Arent Fox Kintner Plotkin & Kahn, Washington, DC.

For PAUL M. GORDON, PAUL GORDON, Special Master: Paul M. Gordon, Gordon & Goddard, Oakland, CA.

Hon. William H. Orrick, United States District Judge.

FINAL JUDGMENT ON CONSENT

This matter being in condition for entry of final judgment on consent terminating this action, and the parties having reached a confidential settlement agreement as to those issues not resolved by the Court's prior decision on the parties' cross motions for summary judgment, it is hereby ORDERED, ADJUDGED AND DECREED that:

1. This Court has jurisdiction over the parties and the subject matter of this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, 1367 and resulting in the judgment on consent.

2. Plaintiffs Loblaws Inc. Loblaw Companies Limited and President's Choice.com, Inc. (hereinafter referred to collectively as "Loblaws") are the lawful owners of all right, title and interest in and to the trade names, trademarks, and service marks PRESIDENT'S CHOICE, PRESIDENT'S CHOICE GREEN, PRESIDENT'S CHOICE FINANCIAL and PRESIDENT'S CHOICE SPLENDIDO, WWW.PRESCHOICEFINANCIAL.COM, (collectively the President's Choice marks"), and these marks are valid and enforceable. Loblaws is the lawful owner of all right, title and interest in and to numerous domain names incorporating the President's Choice marks including but not limited to the domain names "PRESIDENTS-CHOICE.COM," and "PRESIDENTSCHOICE.CA."

3. The United States Patent and Trademark Office has recognized Loblaws' rights in the PRESIDENT'S CHOICE marks by granting the following incontestable trademark registrations: Reg. No. 1,021,633, PRESIDENT'S CHOICE (in block letters), Reg. No. 1,579,226 PRESIDENT'S CHOICE (in stylized letters); and the following additional registrations Reg. No. 1,983,186, PRESIDENT'S CHOICE GREEN; Reg. No. 1,969,029, PRESIDENT'S CHOICE GREEN & Design; 1,981,827, PRESIDENT'S CHOICE GREEN & Design; Reg. No. 2,005,449, PRESIDENT'S CHOICE GREEN & Design; Reg. No. 2,056,512, PRESIDENT'S CHOICE GREEN & Design; Reg. No. 1,996,331, PRESIDENT'S CHOICE GREEN; 1,896,624, PRESIDENT'S CHOICE SPLENDIDO; Reg. No. 2,185,223, PRESIDENT'S CHOICE; Reg. No. 1,897,066, PRESIDENT'S CHOICE SPLENDIDO; Reg. No. 2,039,201 PRESIDENT'S CHOICE; and Reg. No. 2,468,750, PRESIDENT'S CHOICE.

4. Loblaws has objected to Azimi's use of the name and mark PRESIDENT CHOICE and the Presidentchoice Domain Names on the grounds that such use constitutes trademark and trade name infringement under federal and common law; counterfeiting; false designation of origin, passing off and false advertising under federal law; trademark and trade name dilution under federal and state law; violation of the Federal Anticybersquatting Consumer Protection Act; and unfair competition under state and common law.

5. Defendant Guita Azimi filed a Reply specifically denying each and every count, resulting in a confidential settlement and this judgment on consent.

6. Each of the counterclaims asserted in this action by the Defendant Guita Azimi are dismissed with prejudice, as per the confidential settlement agreement and the prior order of the court.

WHEREFORE, on the basis of the confidential settlement agreement and the parties' consent, it is hereby ORDERED, ADJUDGED and DECREED that:

(1) Pursuant to 15 U.S.C. § 1116, and the law of the State of California, Defendant Guita Azimi and her officers, agents servants, employees, attorneys, and Mohsen Azimi, though not a party to the civil action, and those persons in active concert or participation with them, are, permanently enjoined from:

(a) Using without the express permission of Loblaws, PRESIDENT CHOICE, PRESIDENT'S CHOICE, PRESIDENT CHOICE.COM or any other trademark, service mark, trade name, fictitious name, or domain name that includes the words "PRESIDENT'S", "PRESIDENT", or "CHOICE", or any other mark, name or domain name that is confusingly similar to Loblaws' PRESIDENT'S CHOICE marks; (b) Using in any manner any service mark, trademark, trade name, trade dress, words, numbers, abbreviations, designs, colors, arrangements, collocations, or any combinations thereof which would imitate, resemble or suggest Loblaws' famous PRESIDENT'S CHOICE trademarks, service marks and trade names; (c) Objecting to, contesting, interfering with or otherwise infringing Loblaws' PRESIDENT'S CHOICE trademarks, service marks and trade names; (d) Unfairly competing with Loblaws, diluting the distinctiveness of Loblaws' famous PRESIDENT'S CHOICE trademarks, service marks and trade names, disparaging Loblaws or its names and marks, and otherwise injuring Loblaws' business reputation in any manner; (e) Maintaining any Internet website, publishing or sending any e-mail or other messages, or maintaining any telephone or other directory listing using the name or mark PRESIDENT CHOICE or the domain names "PRESIDENTCHOICE.COM," "PRESIDENTCHOICE.NET," "PRESIDENTCHOICE.ORG," "PRESIDENTCHOICEONLINE.COM," "PRESIDENTCHOICE.CC," "PRESIDENTCHOICE.INFO," "PRESIDENTOFFICE.COM" "CHOICEOFCEO.COM," "CHOICEOFCEO.NET," "CHOICE OFCEO.ORG" or any domain name containing the words "PRESIDENT", "PRESIDENT'S"or CHOICE or any other domain name or mark confusingly similar to PRESIDENT'S CHOICE; (f) Applying to register, registering, reserving or maintaining any trademark, service mark, trade name, fictitious name, or domain name that includes the words PRESIDENT'S, PRESIDENT, or CHOICE, or any other mark, name or domain name that is confusingly similar to any of Loblaws' PRESIDENT'S CHOICE marks.

(2) Pursuant to 15 U.S.C. § 1118 and the law of the State of California, Azimi is directed to deliver up to Loblaws for destruction all products, advertisements, labels, signs, prints, packages, wrappers, receptacles and all other materials in her possession or under her control that resemble or bear the name or mark "PRESIDENT CHOICE," "PRESIDENTCHOICE.COM," or any domain name or mark containing the words President's, President, Choice or any other reproduction, counterfeit, copy or colorable imitation of Loblaws' trademarks and trade names and all plates, molds, matrices, and other means of making or duplicating the same.

(3) Pursuant to 15 U.S.C. § 1125(d), Azimi shall sign all documents and take all additional action that may be necessary to transfer and assign to Loblaws the domain names "PRESIDENTCHOICE.COM," "PRESIDENTCHOICE.NET," "PRESIDENTCHOICE.ORG," "PRESIDENTCHOICEONLINE.COM," "PRESIDENTCHOICE.CC," "PRESIDENTCHOICE.INFO," "CHOICEOFCEO.COM," "CHOICEOFCEO.NET," "CHOICE OFCEO.ORG," and any other domain names registered by Azimi that resemble or imitate Loblaws' name or mark "PRESIDENT'S CHOICE."

(4) The parties will keep the terms of their settlement agreement strictly confidential, and shall not disclose any information on the terms of their confidential settlement agreement to any third parties, including the media.

(5) Each party and its attorneys and agents will make a reasonable and good faith effort to return to the opposing party all documents or things obtained through discovery or through voluntary disclosure in this action, specifically including those labelled and designated "LL" and "AA".

(6) Each party will bear its own costs and attorneys fees unless agreed upon. SO ORDERED:

Date: DEC 10 2001
Hon. William H. Orrick
United States District Judge