Opinion
Case No. 21-cv-60790-BLOOM/Valle
05-28-2021
LOUIS VUITTON MALLETIER, Plaintiff, v. AAALVSALE.COM, et al., Defendants.
ORDER ON MOTION FOR ENTRY OF FINAL DEFAULT JUDGMENT
THIS CAUSE is before the Court upon Plaintiff's Louis Vuitton Malletier ("Plaintiff"), Motion for Entry of Final Default Judgment Against Defendants, ECF No. [25] ("Motion"), filed on May 27, 2021. A Clerk's Default was entered against Defendants on May 21, 2021, ECF No. [23], as Defendants failed to appear, answer, or otherwise plead to the Complaint, ECF No. [1], despite having been served. See ECF No. [17]. The Court has carefully considered the Motion, the record in this case, the applicable law, and is otherwise fully advised. For the following reasons, Plaintiff's Motion is GRANTED.
I. INTRODUCTION
Plaintiff sued Defendants for trademark counterfeiting and infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114; false designation of origin under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); cybersquatting under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(d); common-law unfair competition; and common-law trademark infringement. The Complaint alleges that Defendants are promoting, advertising, distributing, offering for sale and selling goods bearing and/or using counterfeits and confusingly similar imitations of Plaintiff's registered trademarks within the Southern District of Florida through the fully interactive commercial Internet websites and supporting domains operating under their domain names identified on Schedule "A" attached to Plaintiff's Motion for Entry of Final Default Judgment (the "Subject Domain Names"). See ECF No. [25] at 16-21.
Plaintiff further asserts that Defendants' unlawful activities have caused and will continue to cause irreparable injury to Plaintiff because Defendants have (1) deprived Plaintiff of its right to determine the manner in which its trademarks are presented to the public through merchandising; (2) defrauded the public into thinking Defendants' goods are goods authorized by Plaintiff; (3) deceived the public as to Plaintiff's association with Defendants' goods and the websites that market and sell the goods; and (4) wrongfully traded and capitalized on Plaintiff's reputation and goodwill, as well as the commercial value of Plaintiff's trademarks.
In its Motion, Plaintiff seeks the entry of default final judgment against Defendants in an action alleging trademark counterfeiting and infringement, false designation of origin, cybersquatting, common-law unfair competition, and common-law trademark infringement Plaintiff further requests that the Court (1) enjoin Defendants from producing or selling goods that infringe its trademarks; (2) disable, or at Plaintiff's election, transfer the domain names at issue to Plaintiff; (3) assign all rights, title, and interest, to the domain names to Plaintiff and permanently delist or deindex the domain names from any Internet search engines; (4) permanently cease all services to Defendants in connection with the domain names at issue; and (5) permanently close the domain registration accounts in which the domain names at issue are located.
Defendants are the Individuals, Partnerships, and Unincorporated Associations identified on Schedule "A" of Plaintiff's Motion, and Schedule "A" of this Order. See ECF No. [25] at 16-21.
Louis Vuitton chooses not to seek an award of statutory damages in connection with its claims.
Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a final judgment of default against a party who has failed to plead in response to a complaint. "[A] defendant's default does not in itself warrant the court entering a default judgment." DirecTV, Inc. v. Huynh, 318 F. Supp. 2d 1122, 1127 (M.D. Ala. 2004) (quoting Nishimatsu Constr. Co., Ltd. v. Houston Nat'l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975)). Granting a motion for default judgment is within the trial court's discretion. See Nishimatsu, 515 F.2d at 1206. Because the defendant is not held to admit facts that are not well pleaded or to admit conclusions of law, the court must first determine whether there is a sufficient basis in the pleading for the judgment to be entered. See id.; see also Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987) ("[L]iability is well-pled in the complaint, and is therefore established by the entry of default. . ."). Upon a review of Plaintiff's submissions, it appears there is a sufficient basis in the pleading for the default judgment to be entered in favor of Plaintiff.
The factual background is taken from Plaintiff's Complaint, ECF No. [1], Plaintiff's Motion for Entry of Final Default Judgment Against Defendants, ECF No. [25], and supporting evidentiary submissions.
Plaintiff Louis Vuitton Malletier is the owner of the entire right, title and interest in and to the Louis Vuitton trademarks, which are valid and registered on the Principal Register of the United States Patent and Trademark Office (the "Louis Vuitton Marks"):
| Trademark | RegistrationNumber | RegistrationDate | Class(es) / Relevant Goods |
|---|---|---|---|
| Image materials not available for display. | 0,297,594 | September 20,1932 | IC 18. Trunks, valises, traveling bags, satchels, hat boxesand shoe boxes used for luggage, hand bags, andpocketbooks. |
| LOUISVUITTON | 1,045,932 | August 10,1976 | IC 18. Luggage and ladies' handbags. |
| Image materials not available for display. | 1,519,828 | January 10,1989 | IC 18. Trunks, valises, traveling bags, satchels, hat boxesand shoe boxes used for luggage, hand bags,pocketbooks. |
| Image materials not available for display. | 1,770,131 | May 11, 1993 | IC 25. Clothing for men and women, namely, shawls,sashes, scarves; headgear. |
| Image materials not available for display. | 1,794,905 | September 28,1993 | IC 16. Stationery, pads of stationery, calendars, indexesfor articles made for travellers, notebooks, envelopes;writing paper, office requisites in the nature of writingpads, pencil holders, pen cases, pencil cases, nibs, nibsof gold, inkwells, inkstands.IC 25. Clothing for men and women; namely belts,shawls, sashes, scarves; footwear headgear. |
| Image materials not available for display. | 1,938,808 | November 28,1995 | IC 14. Jewelry, watches and straps for wrist watches.IC 24. Travel blankets made of textile. |
| LOUISVUITTON | 1,990,760 | August 6, 1996 | IC 14. Watches and straps for wrist watches.IC 16. Catalogues featuring luggage and travelaccessories, bags, small leather goods, and garments;notebooks, anthologies, and pamphlets referring totravel; calendars; telephone indexes; fountain pens,ballpoint pens, nibs, covers for pocket and desk diaries,and checkbook holders.IC 18. Trunks; traveling trunks; suitcases; traveling bags;luggage; garment bags for travel; hat boxes for travel;shoe bags for travel; umbrellas; animal carriers;rucksacks; haversacks; leather or textile shopping bags;beach bags; handbags; vanity cases sold empty; attachécases; tote bags, travel satchels; clutch bags; briefcases;wallets; pocket wallets; credit card cases; business cardcases; bill and card holders; checkbook holders; keycases; change purses; briefcase-type portfolios.IC 24. Travel blanketsIC 25. Shirts; sweatshirts; polo shirts; T-shirts;headwear; jackets; ties; belts; shawls; scarves. |
| Image materials not available for display. | 2,177,828 | August 4, 1998 | IC 14. Goods made of precious metals, namely, shoeornaments, ornamental pins; jewelry, namely, rings, earrings, cufflinks, bracelets, charms, necklaces; horologicalinstruments, straps for watches, watches and wrist-watches, and cases for watches.IC 18. Goods made of leather or imitations of leather arenot included in other classes, namely, boxes made fromleather; trunks, valises, traveling bags, luggage for travel,garment bags for travel, vanity cases sold empty,rucksacks, hand bags, beach bags, shopping bags,shoulder bags, attaché cases, briefcases, and fine leathergoods, namely, pocket wallets, purses, leather keyholders, business card cases, calling card cases, andcredit card cases, umbrellas.IC 25. Clothing and underwear, namely, shirts,waistcoats, raincoats, skirts, coats, pullovers, trousers,dresses, jackets, shawls, stoles, scarves, neckties, pocketsquares, belts, shoes, boots, and sandals. |
| Image materials not available for display. | 2,181,753 | August 18,1998 | IC 14. Jewelry, namely, rings, ear rings, bracelets,charms, necklaces, horological instruments, straps forwatches, watches, and wrist-watches, and cases forwatches.IC 18. Goods made of leather or imitations of leather arenot included in other classes, namely, boxes made fromleather; trunks, valises, traveling bags, luggage for travel,garment bags for travel, vanity cases sold empty,rucksacks, hand bags, beach bags, shopping bags,shoulder bags, attaché cases, briefcases, and fine leathergoods, namely, pocket wallets, purses, leather keyholders, business card cases, calling card cases, creditcard cases, and umbrellas.IC 25. Clothing and underwear, namely, shirts,waistcoats, raincoats, skirts, coats, pullovers, trousers,dresses, jackets, shawls, stoles, scarves, neckties, pocketsquares, belts, shoes, boots, and sandals. |
| Image materials not available for display. | 2,361,695 | June 27, 2000 | IC 25. Clothing, namely, sweaters, shirts, sweatshirts,polo shirts, t-shirts, suits, waistcoats, raincoats, skirts,coats, pullovers, trousers, dresses, jackets, shawls, stoles,scarves, neckties, pocket squares, pocket handkerchiefsquares for wear, gloves, ties, belts, bathing suits, shoes,boots and sandals, and hats. |
| Image materials not available for display.LOUISVUITTONPARIS | 2,378,388 | August 22,2000 | IC 18. Goods made of leather or imitations of leather notincluded in other classes, namely, boxes of leatherprincipally used for travel purposes, trunks, valises,traveling bags, * traveling sets for containing cosmeticsand jewelry, * handbags, beach bags, shopping bags,shoulder bags, brief cases, pouches, fine leather goodsnamely, pocket wallets, purses, key cases, business cardcases, credit card cases. |
| Image materials not available for display. | 2,399,161 | October 31,2000 | IC 25. Clothing and underwear, namely, shirts, poloshirts, t-shirts, waistcoats, raincoats, skirts, coats,trousers, dresses, jackets, shawls, stoles, scarves,neckties, gloves, ties, belts, bathing suits, shoes, bootsand sandals, hats. |
| Image materials not available for display. | 2,773,107 | October 14,2003 | IC 14. Jewelry including rings, earrings, cuff links,bracelets, charms, necklaces, and medallions;horological and chronometric instruments and apparatus,namely, watches,IC 18. Travel bags, travel bags made of leather; luggagetrunks and valises, garment bags for travel, vanity-casessold empty; rucksacks, shoulder bags, handbags; attachécases, briefcases, drawstring pouches, pocket wallets,purses, umbrellas, business card cases made of leather orof imitation leather, credit card cases made of leather orof imitation leather; key holders made of leather or ofimitation leather.IC 25. Clothing, namely, shirts, T-shirts, belts, scarves,neck ties, shawls, skirts, raincoats, overcoats, trousers,jeans, pullovers, frocks, highheeled shoes, low-heeledshoes, boots, tennis shoes; hats |
| LOUISVUITTON | 2,904,197 | November 23,2004 | IC 14: jewelry, namely, rings, earrings, cuff links,bracelets, charms, necklaces, (( tie pins, and medallions;keyrings made of precious metal; )) horological andchronometric instruments, namely, watches, wrist-watches, (( clocks, )) (( alarm clocks; )) straps for wrist-watches and watch cases. |
| LOUISVUITTON | 2,909,003 | December 7,2004 | IC 009. Optical instruments and apparatus, namely,spectacles, eyeglasses, spectacle cases.IC 024. Textiles and textile goods, namely, householdlinen including bed [ and bath ] linen [, handkerchiefs oftextile ]. |
| Image materials not available for display. | 3,107,072 | June 20, 2006 | IC 09. Spectacles, sunglasses and spectacle cases.IC 14. Jewelry, namely, rings, earrings and ear clips, cufflinks, bracelets, charms, necklaces, tie pins, medallions;horological and chronometric apparatus and instruments,namely, watches, watch cases, alarm clocks; jewelryboxes of precious metal, their alloys or coated therewith.IC 18. Leather and imitation leather products, namely,traveling bags, traveling sets comprised of bags orluggage, trunks and suitcases, garment bags for travelpurposes; vanity cases sold empty, rucksacks, shoulderbags, handbags, attaché cases, document wallets andbriefcases made of leather, pouches made of leather,wallets, purses, key cases, business card cases, creditcard cases; umbrellas.IC 25. Clothing and undergarments, namely, shirts, tee-shirts, belts, scarves, neckties, shawls, skirts, raincoats,overcoats, trousers, denim trousers, dresses, jackets,sashes for wear, bathing suits, shoes, boots. |
| Image materials not available for display. | 3,576,404 | February 17,2009 | IC 18: boxes of leather or imitation leather for packagingand carrying goods, trunks, suitcases, traveling setscomprised of matching luggage, traveling bags, luggage,garment bags for travel, ((vanity cases not fitted, ))toiletry cases sold empty, rucksacks, satchels, handbags,beach bags, leather shopping bags, sling bags, suitcarriers, shoulder bags, waist bags, purses, travel cases,briefcases, briefcase-type portfolios, leather pouches,wallets, change purses, key cases, business card cases,calling card cases. |
| Image materials not available for display. | 4,192,541 | August 21,2012 | IC 03. Soaps for personal use; perfumery; essential oils;cosmetics; creams for the hair, face, and body; lotionsfor the hair, face, and body; shower and bath gels;shower and bath preparations; shampoos; make-uppreparations, namely, foundations, lipsticks, eyeshadows, mascara, make-up powder, and nail polish.IC 09. Sunglasses; spectacles; optical lenses; spectaclecases; telephones; mobile telephones; smart phones; PCtablets; personal digital assistants; MP3 players;accessories for telephones, mobile telephones, smartphones, PC tablets, personal digital assistants, and MP3players, namely, hands-free kits for telephones, batteries,covers, housings, façades, chargers, hand straps, andneck straps.IC 14. Jewelry; key rings of precious metal; tie pins;medallions; jewelry boxes; watches; watch bands; alarmclocks; cases for timepieces.IC 16. Printed matter, namely, pamphlets, catalogs, andbooks in the field of travel, luggage, luxury goods,fashion, clothing, sports, the arts; publications, namely,brochures and booklets in the field of travel, luggage,luxury goods, fashion, clothing, sports, the arts;stationery; stationery articles, namely, note pads, writingbooks, drawing books, calendars, agendas, notebooks,envelopes, letter paper, and index cards; covers fordiaries, indexes, and pads; office requisites, namely,letter trays, paper cutters, pencils, inkstands, inkwells,paperweights, pencil holders, pen holders, writing pads,pens, balls, and nibs for pens; postcards; paper labels;newspapers; printed documents, namely, printedcertificates.IC 18. Boxes of leather or imitation leather forpackaging and carrying goods; traveling bags; leathertraveling sets of luggage; trunks; suitcases; garment bagsfor travel; vanity cases sold empty; toiletry bags soldempty; backpacks; handbags; attaché cases; leatherdocument cases; wallets; purses; leather key cases;umbrellas.IC 24. Textiles and textile goods, namely, bath linen, bedlinen, table linen, towels, bed covers, textile table cloths.IC 25. Clothing, namely, underwear, shirts, tee-shirts,pullovers, skirts, dresses, trousers, coats, j ackets, beltsfor clothing, scarves, sashes for wear, gloves, neckties,socks, bathing suits; footwear; headwear.IC 34. Cigar and cigarette cases of leather and imitationleather. |
| LOUISVUITTON | 4,530,921 | May 13, 2014 | IC 09. Optical apparatus, namely, binoculars; blank USBsticks; spectacles; sunglasses; spectacle frames; spectacleglasses; spectacle cases; accessories for telephones,mobile phones, smart phones, tablet devices, PDAs, andMP3 Players, namely, covers, neck straps, neck cords,and bags and cases specially adapted for holding orcarrying portable telephones and telephone equipmentand accessories.IC 16. Paper bags; boxes of cardboard or paper;cardboard and paperboard envelopes and pouches forpackaging; plastic materials for packaging, namely,bags; posters; pamphlets referring to travel; postcards;catalogs featuring luggage, travel accessories, bags,small leather goods, and clothing; paper labels; tradingcards; greeting cards; business cards; invitation cards;printed publications, namely, books, newspapers,leaflets, and magazines featuring luggage, travelaccessories, purses, small leather goods, and clothing;bookbinding materials; printed photographs; photographalbums; stationery, namely, note pads, desk pads, writingpads, drawing pads, envelopes, note paper; calendars;pocket calendars; note books; telephone indexes; diarycovers; diaries; office requisites, namely, letter trays,paper knives, ink stands, inkwells, paper weights, pencilholders, pen holders, pencil tubs, blotting pads, pencils,fountain pens, rubber erasers, pen cases; printing types;printing blocks; table linens of paper.IC 25. Clothing, namely, pullovers, vests, shirts, tee-shirts, trousers, jackets, suits, coats, rain coats,waterproof jackets, waterproof pants, overcoats, parkas,skirts, dresses, pajamas, dressing gowns, nightgowns,robe, gloves, neck ties, belts for clothing, leather belts,scarves, pocket squares, sashes for wear, shawls,stockings, socks, tights, braces for clothing, suspenders,stoles, underwear, lingerie, bathing suits; headwear;shoes; slippers; boots; half-boots.IC 26. Buttons; hooks and eyes; shoe buckles; hairaccessories, namely, hair pins, barrettes, hair bows, hairclips, hair bands, hair wraps; hair ornaments; broochesfor clothing; clothing fasteners, namely, scarf holders. |
| Image materials not available for display. | 4,614,736 | September 30,2014 | IC 09. Optical apparatus, namely, binoculars; blank USBsticks; spectacles; sunglasses; spectacle frames; spectacleglasses; spectacle cases; accessories for telephones,mobile phones, smart phones, tablet devices, PDAs, andMP3 players, namely, covers, neck straps, neck cords,and bags and cases specially adapted for holding orcarrying portable telephones and telephone equipmentand accessories.IC 16. Paper bags, boxes of cardboard or paper,cardboard and paperboard envelopes and pouches forpackaging; plastic materials for packaging, namely,bags; posters; pamphlets referring to travel; postcards;catalogs featuring luggage, travel accessories, bags,small leather goods, and clothing; paper labels; tradingcards; greeting cards; business cards; invitation cards;printed publications, namely, books, newspapers,leaflets, and magazines featuring luggage, travelaccessories, purses, small leather goods, and clothing;bookbinding materials; printed photographs; photographalbums; stationery, namely, note pads, desk pads, writingpads, drawing pads, envelopes, note paper; calendars;pocket calendars; note books; telephone indexes; diarycovers; diaries; office requisites, namely, letter trays,paper knives, ink stands, inkwells, paper weights, pencilholders, pen holders, pencil tubs, blotting pads, pencils,fountain pens, rubber erasers, pen cases; printing types;printing blocks; table linens of paper.IC 26. Buttons; hooks and eyes; shoe buckles; hairaccessories, namely, hair pins, barrettes, hair bows, hairclips, hair bands, hair wraps; hair ornaments; broochesfor clothing; clothing fasteners, namely, scarf holders. |
Defendants, through the various fully interactive, commercial Internet websites and supporting domains operating under the domain names identified on Schedule "A" hereto (the "Subject Domain Names"), have advertised, promoted, offered for sale, or sold goods bearing what Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the Louis Vuitton Marks. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 9-11.
Plaintiff asserts multiple Defendants use some of their Subject Domain Names to act as supporting domain names to direct traffic to their fully-interactive, commercial websites, including those operating under other Subject Domain Names, from which consumers can complete purchases. See Declaration of Stephen M. Gaffigan [5-3] at ¶ 2, n.1.
Although each Defendant may not copy and infringe each Louis Vuitton Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the Louis Vuitton Marks at issue. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 10-11). Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Louis Vuitton Marks. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 9-11.
Plaintiff's representative reviewed and visually inspected each Defendants' Websites, including images reflecting the various items bearing the Louis Vuitton Marks offered for sale by Defendants through the Internet websites operating under the Subject Domain Names, and/or websites to which those domain names either automatically or manually redirect, and determined the products were non-genuine, unauthorized versions of Plaintiff's products. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 10-11.
III. ANALYSIS
A. Claims
1. Trademark Counterfeiting and Infringement Under 15 U .S.C. § 1114 (Count I)
Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides liability for trademark infringement if, without the consent of the registrant, a defendant uses "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114. In order to prevail on its trademark infringement claim under Section 32 of the Lanham Act, Plaintiff must demonstrate that (1) it had prior rights to the mark at issue; and (2) Defendants adopted a mark or name that was the same, or confusingly similar to Plaintiff's trademark, such that consumers were likely to confuse the two. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir. 1997)).
2. False Designation of Origin Under 15 U .S.C. § 1125(a) (Count II)
To prevail on a claim for false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), Plaintiff must prove that Defendants used in commerce, in connection with any goods or services, any word, term, name, symbol or device, or any combination thereof, or any false designation of origin that is likely to deceive as to the affiliation, connection, or association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval, of Defendants' goods by Plaintiff. See 15 U.S.C. § 1125(a)(1). The test for liability for false designation of origin under 15 U.S.C. § 1125(a) is the same as for a trademark counterfeiting and infringement claim - i.e., whether the public is likely to be deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992).
3. Cybersquatting Under 15 U .S.C. § 1125(d) (Count III)
The Anticybersquatting Consumer Protection Act ("ACPA") protects the owner of a distinctive or famous trademark from another's bad faith intent to profit from the trademark owner's mark by registering or using a domain name that is identical or confusingly similar to, or dilutive of, the trademark owner's mark without regard to the goods or services of the parties. See 15 U.S.C. § 1125(d). "To prevail under the ACPA, a plaintiff must prove that (1) its mark is distinctive or famous and entitled to protection; (2) the defendant's domain name is identical or confusingly similar to the plaintiff's mark; and (3) the defendant registered or used the domain name with a bad faith intent to profit." Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 F. App'x 252, 256 (11th Cir. 2006) (citing Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001)).
4. Common-Law Unfair Competition and Trademark Infringement (Counts IV and V)
Whether a defendant's use of a plaintiff's trademarks created a likelihood of confusion between the plaintiff's and the defendant's products is also the determining factor in the analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester, No. 83-8381-Civ-Paine, 1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) ("The appropriate test for determining whether there is a likelihood of confusion, and thus trademark infringement, false designation of origin, and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983.)".); see also Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) ("As a general rule . . . the same facts which would support an action for trademark infringement would also support an action for unfair competition.").
The analysis of liability for Florida common law trademark infringement is the same as the analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed Express, Inc. v. MedPets.com, Inc., 336 F. Supp. 2d 1213, 1217-18 (S.D. Fla. 2004).
B. Liability
The well-pled factual allegations of Plaintiff's Complaint properly allege the elements for each of the claims described above. See ECF No. [1]. Moreover, the factual allegations in Plaintiff's Complaint has been substantiated by sworn declarations and other evidence and establish Defendants' liability under each of the claims asserted in the Complaint. Accordingly, default judgment pursuant to Federal Rule of Civil Procedure 55 is appropriate.
C. Injunctive Relief
Pursuant to the Lanham Act, a district court is authorized to issue an injunction "according to the principles of equity and upon such terms as the court may deem reasonable," to prevent violations of trademark law. See 15 U.S.C. § 1116(a). Indeed, "[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant's continuing infringement." Burger King Corp. v. Agad, 911 F. Supp. 1499, 1509-10 (S.D. Fla. 1995) (citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is available. See e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222-23. Defendants' failure to respond or otherwise appear in this action makes it difficult for Plaintiff to prevent further infringement absent an injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003) ("[D]efendant's lack of participation in this litigation has given the court no assurance that defendant's infringing activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.").
Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) an issuance of an injunction is in the public's interest. eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006). Plaintiff has carried its burden on each of the four factors. Accordingly, permanent injunctive relief is appropriate.
Specifically, in trademark cases, "a sufficiently strong showing of likelihood of confusion . . . may by itself constitute a showing of a substantial threat of irreparable harm." McDonald's Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise Int'l Trading Inc., 51 F.3d 982, 986 (11th Cir. 1995) ("There is no doubt that the continued sale of thousands of pairs of counterfeit jeans would damage LS & Co.'s business reputation and might decrease its legitimate sales."). Plaintiff's Complaint alleges that Defendants' unlawful actions have caused Plaintiff irreparable injury and will continue to do so if Defendants are not permanently enjoined. See ECF No. [1]. Further, the Complaint alleges, and the submissions by Plaintiff show, that the goods promoted, advertised, offered for sale, and sold by Defendants are nearly identical to Plaintiff's genuine products and that consumers viewing Defendants' counterfeit goods post-sale would actually confuse them for Plaintiff's genuine products. See id. "Defendants' actions are likely to cause confusion of consumers at the time of initial interest, sale, and in the post-sale setting, who will believe all of Defendants' goods are genuine goods originating from, associated with, and/or approved by Plaintiff." See ECF No. [1] at 27.
Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Subject Domain Names because Plaintiff cannot control the quality of what appears to be its products in the marketplace. An award of monetary damages alone will not cure the injury to Plaintiff's reputation and goodwill that will result if Defendants' infringing and counterfeiting actions are allowed to continue. Moreover, Plaintiff faces hardship from loss of sales and its inability to control its reputation in the marketplace. By contrast, Defendants face no hardship if they are prohibited from the infringement of Plaintiff's trademarks, which is an illegal act.
Finally, the public interest supports the issuance of a permanent injunction against Defendants to prevent consumers from being misled by Defendants' products. See Chanel, Inc. v. besumart.com, 240 F. Supp. 3d 1283, 1291 (S.D. Fla. 2016) ("[A]n injunction to enjoin infringing behavior serves the public interest in protecting consumers from such behavior."). The Court's broad equity powers allow it to fashion injunctive relief necessary to stop Defendants' infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S. 1, 15 (1971) ("Once a right and a violation have been shown, the scope of a district court's equitable powers to remedy past wrongs is broad, for . . . [t]he essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case." (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical Co., 321 U.S. 707, 724 (1944) ("Equity has power to eradicate the evils of a condemned scheme by prohibition of the use of admittedly valid parts of an invalid whole."). District courts are expressly authorized to order the transfer or surrender of domain names in an in rem action against a domain name. See 15 U.S.C. § 1125(d)(1)(C), (d)(2). However, courts have not limited the remedy to that context. See, e.g., Philip Morris USA v. Otamedia Ltd., 331 F. Supp. 2d 228, 230-31 (S.D.N.Y. 2004) (transferring Yesmoke.com domain name to plaintiff despite the fact that plaintiff did not own a trademark in the term "Yesmoke" and noting that 15 U.S.C. § 1125 "neither states nor implies that an in rem action against the domain name constitutes the exclusive remedy for a plaintiff aggrieved by trademark violations in cyberspace"); Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 853 (E.D. Mich. 2006) (ordering the defendants to disclose all other domain registrations held by them and to transfer registration of a particular domain name to plaintiff in part under authority of 15 U.S.C. § 1116(a)).
Defendants have created an Internet-based counterfeiting scheme in which they are profiting from their deliberate misappropriation of Plaintiff's rights. Accordingly, the Court may fashion injunctive relief to eliminate the means by which Defendants are conducting their unlawful activities by disabling or transferring the Subject Domain Names and assigning all rights, title, and interest to the Subject Domain Names to Plaintiff, disabling, de-indexing or delisting the Subject Domain Names from any Internet search engine, permanently ceasing all services to Defendants in connection with the Subject Domain Names, including permanently deleting the Subject Domain Names from its DNS used for the DoH (1.1.1.1), and permanently closing the domain registration accounts in which the Subject Domain Names are located, where they may be disabled from further use as platforms for the sale of counterfeit goods. See ECF No. [25] at 13-14.
IV. CONCLUSION
Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiff's Motion, ECF No. [25], is GRANTED against those Defendants listed in the attached Schedule "A." Final Default Judgment will be entered by separate order.
DONE AND ORDERED in Chambers at Miami, Florida, on May 28, 2021.
/s/ _________
BETH BLOOM
UNITED STATES DISTRICT JUDGE Copies to:
Counsel of Record
SCHEDULE "A"
DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME
Defendant Number Defendant / Subject Domain Dame 1 aaalvsale.com 2 bestlvbag.com 3 fakeslouisvuitton.com 4 gotlouisvuitton.com 5 louis-sa.com 6 louistore.ru 7 louisvuitton24.com 8 louisvuittonbagmall.com 9 louisvuittonboutique.vip 10 louisvuittoncity.com 11 louisvuittondeal.vip 12 louisvuittonfemme.com 13 louisvuittonhk.com 14 louisvuittonid.com 15 louisvuitton-id.com 16 louisvuittonid.shop 17 louisvuitton-id.shop 18 louisvuittonmalaysia.shop 19 louisvuittonmode.com 20 louisvuittonn.online 21 louisvuittonn.vip 22 louisvuitton-ph.com 23 louisvuittonph.shop 23 louisvuitton-ph.store 23 louisvuittons.today 23 louisvuittonsg.live 23 louisvuittonsg.world 23 louisvuittonshop.today 24 louisvuittonphpp.com 25 louisvuittonppi.com 26 louisvuittonpro.com 27 louisvuittonpurse.net 28 louisvuittonreplicabags.org 29 louisvuittons.shop 30 louisvuitton-sg.com 31 louisvuitton-sgp.com 32 louisvuittonshop.live 33 louisvuittonshopping.live 19 34 louisvuittonsolde.com 35 louisvuittonsuperdiscount.shop 36 louisvuittonter.com 37 louisvuittonv.vip 38 louisvuittonvillage.com 39 lvecv.com 40 lvluxurybags.xyz 41 replicalvsell.com 42 replicaslouisvuitton.com 43 luxoii.com 43 bage.icu 43 bag-shop.online 43 bagsshop.icu 43 batt.shop 43 bbfl.icu 43 blvck.icu 43 finnmilesluxuryhomes.icu 43 funko.icu 43 geox.icu 43 gopro.icu 43 grih.icu 43 jabra.icu 43 jjre.icu 43 kmart.icu 43 leasetoownluxuryhomes.icu 43 lopo.club 43 louisvuittons-milano.icu 43 louisvuittonsoutletonline.icu 43 luxurybag.icu 43 luxurybrandshop.icu 43 luxury-shop.xyz 43 luxury-shops.icu 43 luxuryskinshop.icu 43 luxury-style.icu 43 lv-online-shop.icu 43 maloneluxurymarketing.icu 43 martinluxuryhomes.icu 43 mavi.icu 43 mcmhi.icu 43 mmmz.icu 43 mmxl.icu 43 myluxury.club 43 mytheresa.xyz 20 43 newseasonbag.icu 43 omio.icu 43 qlly.icu 43 qlvse.icu 43 shophandbag.top 43 shoppingbags.icu 43 tradesy.top 43 wkkj.icu 43 xmasgift.icu 43 yycx.icu 44 2020cokn.com 45 2020copy.com 46 acaxro.com 47 aeozv.com 48 ahandbags.com 49 aik-shop.com 50 alexcn.shop 51 alimorluxury.nl 52 angelbags.info 52 angelbags.pro 53 asibags.club 54 bagreplica.ru 55 bags-bag.net 56 bagsho.com 57 becomebag.com 58 brand-kingdom.com 59 brandsindustry.net 60 brendof-club.com 61 buildtote.com 62 byluxuryshopping.com 63 chinaluxurybag.com 64 closebags.com 65 collectbrand.com 66 copy432.com 67 copymm666.com 68 costbags.com 69 cozaka.com 70 crisandcoco.co 71 criticbags.com 72 cwen333.com 73 deathtote.com 74 dependbag.com 75 desgnrbrands.nl 21 76 discountretailbag.com 77 doubtbags.com 78 dresstote.com 79 ehinoh.com 80 ejfsbag.com 81 ekabags.club 82 elsebags.com 83 equaltote.com 84 exceptbags.com 85 exclusivekicks.co.uk 86 famebags.com 87 fasbags.com 88 fc888luxury.com 89 giybags.club 90 hacopy.com 91 handbagsonlinesales.com 92 happenbag.com 93 hebags.club 94 honbags.club 95 hubags.club 96 humanbags.com 97 idisad.com 98 igiwoc.com 99 ilebags.club 100 instockbags.com 101 istanbulbags.com 102 jwellis.ru 103 kjvips.com 104 labags.club 105 latterbag.com 106 lawobag.com 106 periclone.com 107 leibag.shop 108 lg4e62.vip 108 outaubags.com 108 qg5s63.vip 109 likelybag.com 110 likelybags.com 111 luiscanta.com 112 luxbag.ru 113 luxeborse.com 114 luxehandbageu.com 115 luxehandbagseu.com 22 116 lux-jp.com 117 luxmallac.com 118 luxurybagsi.com 119 luxurydrippers.online 120 luxury-dupes.com 121 mebbags.club 122 nasbags.club 123 ninki-111.com 124 noticebag.com 125 ogebags.club 126 onbags.club 127 otihop.com 128 outusbags.com 129 perfectfakehandbags.com 130 perfectkits.club 131 personbag.com 132 polbags.club 133 provebags.com 134 raisebags.com 135 replicabagselling.com 136 replicapursesshop.com 137 replicasbagsale.com 138 replicasbagshop.com 139 replybags.com 140 resbags.club 141 rwlbag.com 142 salecabag.com 143 saobag.com 144 sulbags.club 145 tihbags.club 146 toke333.com 147 top-qual.net 147 topqualm.com 147 xn--5-xz0gou.com 147 xn--6-xz0gou.com 147 xn--original-qk40bt8c.com 148 tracob.online 148 tracob.ru 149 tutbags.club 150 typebags.com 151 ulebags.club 152 underbags.com 153 usalbags.com 23 154 usaubags.com 154 usfsbags.com 154 xmwshjw.com 155 uscabags.com 156 usftbags.com 157 ushotbag.com 158 vogueaccent.com 159 voguebrands.net 160 vsnc333.com 161 wabagjp.net 162 wantmybags.com 163 weekbags.com 164 yayakopi.net 165 yourfashionoutlet.us