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ordering a preliminary injunction in part due to the plaintiff's "well-founded fears" that additional infringing products would appear in the marketplace
Summary of this case from House of Bryant Publ'ns, LLC v. City of Lake CityOpinion
Case No. 2:11-cv-01508-KJD-PAL.
October 11, 2011
David S. Kahn, Nevada Bar No. 007038, J. Scott Burris, Nevada Bar No. 010529, Juan P. Rodriguez, Nevada Bar No. 010733, WILSON, ELSER, MOSKOWITZ, EDELMAN DICKER LLP, Las Vegas, NV.
Stephen M. Gaffigan ( Pro Hac Vice), STEPHEN M. GAFFIGAN, P.A., Ft. Lauderdale, Florida, Attorneys for Plaintiff, CHANEL, INC.
ORDER GRANTING PLAINTIFF'S APPLICATION FOR ENTRY OF PRELIMINARY INJUNCTION
THIS CAUSE is before the Court on Plaintiff's Application for Entry of Preliminary Injunction (the "Application for Preliminary Injunction") (# 7), and upon the Preliminary Injunction Hearing held on October 11, 2011. The Court has carefully reviewed said Motion, the entire court file and is otherwise fully advised in the premises.
By the instant Application (# 7), Plaintiff Chanel, Inc. ("Chanel"), moves for entry of a preliminary injunction against Defendants, the Partnerships and Unincorporated Associations identified on Schedule "A" attached hereto (the "Defendants"), for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, and 1125(a) and (d).
The Court convened the hearing on October 11, 2011, at which only counsel for Plaintiff was present and available to present evidence supporting the Application for Preliminary Injunction. The Defendants have not responded to the Application for Preliminary Injunction, nor made any filing in this case, nor have the Defendants appeared in this matter either individually or through counsel. Because Plaintiff has satisfied the requirements for the issuance of a preliminary injunction, the Court will grant Plaintiff's Application for Preliminary Injunction.
I. Factual and Procedural Background
On September 26, 2011, the Court entered a temporary restraining order on the following facts from Plaintiff's Complaint, Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction, and supporting evidentiary submissions.
Chanel is a corporation duly organized under the laws of the State of New York with its principal place of business in the United States located at Nine West 57th Street, New York, New York 10019. (Compl. ¶ 3.) Chanel operates boutiques throughout the world, including within this Judicial District. See id. Chanel is, in part, engaged in the business of manufacturing and distributing throughout the world, including within this Judicial District, a variety of high quality luxury goods. (Declaration of Adrienne Hahn Sisbarro in Support of Plaintiff's Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction ["Hahn Decl."] ¶ 5.)
Chanel is, and at all times relevant hereto has been, the owner of all rights in and to the following trademarks:
Exhibit
(the "Chanel Marks") which are registered on the Principal Register of the United States Patent and Trademark Office and are used in connection with the manufacture and distribution of high quality goods in the categories identified above. (Hahn Decl. ¶ 4; see also United States Trademark Registrations of the Chanel Marks at issue ["Chanel Trademark Registrations"] attached as Exhibit A to the Hahn Decl.).
The Defendants have advertised, offered for sale, and/or sold, at least, handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings, bearing what Plaintiff has determined to be counterfeits, infringements, reproductions, and/or colorable imitations of the Chanel Marks. Although each of the Defendants may not copy and infringe each Chanel Mark for each category of goods protected, Chanel has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the Chanel Marks. (Hahn Decl. ¶¶ 11-15; Declaration of Brandon Tanori in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction ["Tanori Decl."] ¶ 4.) The Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, infringements, reproductions, and/or colorable imitations of the Chanel Marks. (Hahn Decl. ¶ 9.)
Plaintiff's counsel retained Brandon Tanori ("Tanori") of Investigative Consultants, a licensed private investigative firm, to investigate suspected sales of counterfeit Chanel branded products by the Defendants. (Hahn Decl. ¶ 10; Tanori Decl. ¶ 3.) Between August 25, 2011 and September 1, 2011, Tanori accessed the Internet websites operating under the ten of the domain names at issue in this action, chanelbagsnow.com, co-cochanel.com, chanel-j12.org, cheapshoes169.com, luxurychanelgifts.com, voguechanel.com, replicachanelonline.com, hahaclothing.com, topbrandbag.net, and fashioncheapjewelry.com, placed orders for the purchase of various Chanel branded products, including two handbags, one wallet, one watch, one pair of shoes, one scarf, one pair of earrings, one pair of sunglasses, one tee shirt, and one necklace, and requested each product purchased be shipped to his address in Las Vegas, Nevada. (Tanori Decl. ¶ 4 and Composite Exhibit A attached thereto.) Tanori's purchases were processed entirely online, which included providing shipping and billing information, payment, and confirmation of his orders. (Tanori Decl. ¶ 4 and Composite Exhibit A attached thereto.)
Thereafter, a representative of Chanel, Adrienne Hahn Sisbarro, reviewed and visually inspected the web page listings, including images, for each of the Chanel branded goods purchased by Tanori and determined the items were non-genuine Chanel products. (Hahn Decl. ¶¶ 11-12, 15.) Additionally, Hahn reviewed and visually inspected the items bearing the Chanel Marks offered for sale via the Internet websites operating under the partnership and/or unincorporated association names identified on Schedule "A" hereto (the "Subject Domain Names") and determined the products were non-genuine Chanel products. (Hahn Decl. ¶ 13-15 and Composite Exhibits B and C attached thereto, relevant web page captures from the Defendants' Internet websites operating under the Subject Domain Names displaying the Chanel branded items offered for sale.)
On September 20, 2011, Plaintiff filed its Complaint (# 1) against the Defendants for trademark counterfeiting and infringement, false designation of origin, and cyberpiracy. On September 21, 2011, Plaintiff filed its Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction (# 7). On September 26, 2011, the Court issued an Order Granting Plaintiff's Ex Parte Application for a Temporary Restraining Order and temporarily restrained the Defendants from infringing the Chanel Marks at issue. Pursuant to the Court's September 26, 2011 Order, Plaintiff provided the Defendants notice and copies of the Court's September 26, 2011 Order and Plaintiff's Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction and supporting papers via publication on the website located athttp://servingnotice.com/sdv/index.html, via email to the email address reflected in the domain registration data for the Subject Domain Names, via email to the email address provided on the Internet websites operating under the Subject Domain Names, electronically via the contact submission web page provided on the websites for the Subject Domain Names, and/or via email to the registrar of record for each of the Subject Domain Names.
II. Conclusions of Law
The declarations and supporting evidentiary submissions Plaintiff submitted in support of its Application for Preliminary Injunction support the following conclusions of law:
A. Plaintiff has a very strong probability of proving at trial that consumers are likely to be confused by the Defendants' advertisement, promotion, sale, offer for sale, and/or distribution of handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings bearing counterfeits, infringements, reproductions, and/or colorable imitations of the Chanel Marks, and that the products the Defendants are selling are copies of Plaintiff's products that bear marks which are substantially indistinguishable from and/or colorful imitations of the Chanel Marks on handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings.
B. Because of the infringement of the Chanel Marks, Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction order is not granted. It clearly appears from the following specific facts, as set forth in Plaintiff's Complaint, Plaintiff's Application for Preliminary Injunction, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to Plaintiff and to consumers because it is more likely true than not that:
1. The Defendants appear to be operating Internet business operations which advertise, promote, offer for sale, and sell, at least, handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings bearing counterfeit and infringing trademarks in violation of Plaintiff's rights;
2. Plaintiff has well-founded fears that more counterfeit and infringing handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings bearing Plaintiff's trademarks will appear in the marketplace; that consumers may be misled, confused, and disappointed by the quality of these products; and that Plaintiff may suffer loss of sales for its genuine products;
3. Plaintiff has well-founded fears that unless the injunction is granted, the Defendants can easily and quickly transfer the registrations for many of the Subject Domain Names, or modify registration data and content, change hosts, and redirect traffic to other websites, thereby thwarting Plaintiff's ability to obtain meaningful relief;
4. The balance of potential harm to the Defendants in restraining their trading in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation and goodwill as a manufacturer of high quality handbags, wallets, shoes, boots, sunglasses, scarves, tee shirts, watches, and costume jewelry, including necklaces, bracelets, earrings, brooches, and rings, if such relief is not issued; and
5. The public interest favors issuance of the preliminary injunction in order to protect Plaintiff's trademark interests and the public from being defrauded by the palming off of counterfeit goods as Plaintiff's genuine goods.
Accordingly, after due consideration, it is
ORDERED AND ADJUDGED that Plaintiff's Application for Entry of a Preliminary Injunction (# 7) hereby is GRANTED as follows
(1) The Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with the Defendants having notice of this Preliminary Injunction are hereby restrained and enjoined, pending termination of this action:
(a) From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing the Chanel Marks, or any confusingly similar trademarks, other than those actually manufactured or distributed by Plaintiff; and
(b) From secreting, concealing, destroying, selling off, transferring, or otherwise disposing of: (i) any products, not manufactured or distributed by Plaintiff, bearing the Chanel Marks, or any confusingly similar trademarks; or (ii) any evidence relating to the manufacture, importation, sale, offer for sale, distribution, or transfer of any products bearing the Chanel Marks, or any confusingly similar trademarks.
(2) The Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with the Defendants having notice of this Preliminary Injunction shall, until the conclusion of this action, discontinue the use of the Chanel Marks or any confusingly similar trademarks, on or in connection with all Internet websites owned and operated, or controlled by them including the Internet websites operating under the Subject Domain Names;
(3) The Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with the Defendants having notice of this Preliminary Injunction shall, until the conclusion of this action, discontinue the use of the Chanel Marks, or any confusingly similar trademarks within domain name extensions, metatags or other markers within website source code, from use on any webpage (including as the title of any web page), any advertising links to other websites, from search engines' databases or cache memory, and any other form of use of such terms which is visible to a computer user or serves to direct computer searches to websites registered by, owned, or operated by the Defendants, including the Internet websites operating under the Subject Domain Names;
(4) The Defendants shall not transfer ownership of the Subject Domain Names during the pendency of this Action, or until further Order of the Court;
(5) The domain name Registrars for the Subject Domain Names are directed, to the extent it is not already done, to transfer to Plaintiff's counsel, for deposit with this Court, domain name certificates for the Subject Domain Names;
(6) The Registrars and the top-level domain (TLD) Registries for the Subject Domain Names, upon receipt of this Preliminary Injunction shall, to the extent it is not already done, change or assist in changing, the Registrar of record for the Subject Domain Names, excepting any such domain names which such Registries have been notified in writing by the Plaintiff have been or will be dismissed from this action, to a holding account with the United States based Registrar, GoDaddy.com, Inc. GoDaddy.com, Inc. shall hold and/or continue to hold access to the Subject Domain Names in trust for the Court during the pendency of this action. Additionally, GoDaddy.com, Inc., upon receipt of this Order, shall, to the extent not already done, immediately update and/or not modify the Domain Name System ("DNS") data it maintains for the Subject Domain Names, which link the domain names to the IP addresses where their associated websites are hosted, from NS1.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which currently causes the domain names to resolve to the website where a copy of the Complaint, Summonses, Orders, and all other documents on file in this action are displayed. Alternatively, GoDaddy.com, Inc. may, to the extent not already done, institute and/or maintain a domain name forwarding which will automatically redirect any visitor to the Subject Domain Names to the following Uniform Resource Locator ("URL") http://servingnotice.com/sdv/index.html whereon copies of the Complaint, Summonses, Orders, and all other documents on file in this action are displayed. The Subject Domain Names shall be maintained on Lock status, preventing the modification or deletion of the domains by the registrar or the Defendants;
(7) Plaintiff may continue to enter the Subject Domain Names into Google's Webmaster Tools and cancel any redirection of the domains that have been entered there by the Defendants which redirect traffic to the counterfeit operations to a new domain name and thereby evade the provisions of this Preliminary Injunction;
(8) The Defendants shall continue to preserve copies of all their computer files relating to the use of any of the Subject Domain Names and shall continue to take all steps necessary to retrieve computer files relating to the use of any of the Subject Domain Names and that may have been deleted before the entry of this Preliminary Injunction;
(9) Plaintiff shall maintain its bond in the amount of Twenty-Thousand Dollars and Zero Cents ($20,000.00), as payment of damages to which the Defendants may be entitled for a wrongful injunction or restraint, during the pendency of this action, or until further Order of the Court;
(10) This Preliminary Injunction shall remain in effect during the pendency of this action, or until such further date as set by the Court or stipulated to by the parties;
(11) This Preliminary Injunction shall apply to the Subject Domain Names and any other domain names properly brought to the Court's attention and verified by sworn affidavit which verifies such new domain names are being used by the Defendants for the purpose of counterfeiting the Chanel Marks at issue in this action and/or unfairly competing with Chanel in connection with search engine results pages.
IT IS SO ORDERED.