Opinion
Case 2:11-cv-00590-LDG-GWF.
May 25, 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 Tiffany (NJ), LLC.
ORDER GRANTING PLAINTIFF'S APPLICATION FOR ENTRY OF PRELIMINARY INJUNCTION
THIS MATTER is before the Court on Plaintiff's Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction (the "Application for Preliminary Injunction") (#5), and upon the Preliminary Injunction Hearing held on May 25, 2011. The Court has carefully reviewed said Motion, the entire court file and is otherwise fully advised in the premises.
By the instant Application (# 5), Plaintiff Tiffany (NJ), LLC ("Tiffany"), moves for entry of a preliminary injunction against Defendants, The Partnerships and Unincorporated Associations indentified on Schedule "A" hereto and Does 1-1000 (collectively "Defendants") for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, and 1125(a) and (d).
The Court convened the hearing on May 25, 2011, at which only counsel for Plaintiff was present and available to present evidence supporting the Application for Preliminary Injunction (#5). Defendants have not responded to the Application for Preliminary Injunction, nor made any filing in this case, nor have 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 (#5).
I. Factual and Procedural Background
On May 11, 2011, the Court entered a temporary restraining order on the following facts from Plaintiffs Complaint (#1), Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction (#5), and supporting evidentiary submissions
Tiffany is a Delaware limited liability company, with its principal place of business in the United States located at 15 Sylvan Way, Parsippany, NJ 07054. (Compl. ¶ 2.) Tiffany is engaged in the manufacture, promotion, distribution, and sale in interstate commerce, including within this Judicial District, of high quality products under Tiffany's trademarks. (Declaration of Steven Costello in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, and Order Authorizing Alternate Service of Process ["Costello Decl."] ¶ 5.)
Tiffany is, and at all times relevant hereto has been, the owner and/or exclusive licensee of all rights in and to the following Federally registered trademarks:
Exhibit
(the "Tiffany Marks") which are registered in International Classes 14 and 21, and are used in connection with the manufacture and distribution of, among other things, high quality jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes. (Costello Decl. ¶ 4. See also United States Trademark Registrations of the Tiffany Marks at issue ["Tiffany Trademark Registrations"] attached as Exhibit A to the Costello Decl.)
Defendants have advertised, offered for sale, and/or sold at least jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes, bearing what Plaintiff has determined to be counterfeits, reproductions, and/or colorable imitations of the Tiffany Marks. (Costello Decl. ¶¶ 9-15; Declaration of Brandon Tanori in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction ["Tanori Decl."] ¶ 4.) Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, and/or colorable imitations of the Tiffany Marks. (Costello Decl. ¶ 9.)
Plaintiff retained Brandon Tanori ("Tanori") of Investigative Consultants to investigate suspected sales of counterfeit Tiffany branded products by Defendants. (Costello Decl. ¶ 10; Tanori Decl. ¶ 3.) Between February 15, 2011 and February 25, 2011, Tanori accessed the Internet websites operating under the domain names brandtiffany.com, faketiffany.org, goldtiffanyjewelry.com, mirrorjewelry.com, myfaketiffany.com, replicatiffany.net, tiffanyforu.com, tiffanyo.com, and topltiffany.com, and placed orders for the purchase of Tiffany branded bracelets, necklaces, rings, earrings, and key rings. (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 Tiffany, Steven Costello, reviewed and visually inspected the web page listings, including images, for each of the Tiffany branded goods purchased by Tanori and determined the items were non-genuine Tiffany products. (Costello Decl. ¶¶ 11-12.) Additionally, Costello reviewed and visually inspected the items bearing the Tiffany Marks offered for sale via the Internet websites operating under the partnership and/or business association names identified on Schedule "A" hereto (the "Subject Domain Names") and determined the products were non-genuine Tiffany products. (Costello Decl. ¶ 12 and Composite Exhibit B attached thereto, relevant web page captures from Defendants' Internet websites operating under the Subject Domain Names displaying the Tiffany branded items offered for sale.)
On April 18, 2011, Plaintiff filed its Complaint (#1) against Defendants for trademark counterfeiting and infringement, false designation of origin, and cyberpiracy. On April 19, 2011, Plaintiff filed its Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction (#5). On May 11, 2011, the Court issued an Order Granting Plaintiffs Ex Parte Application for a Temporary Restraining Order and temporarily restrained Defendants from infringing the Tiffany Marks at issue. Proofs of Service confirming service via e-mail and publication on Defendants and compliance with the Court's May 11, 2011 Order were filed on May 24, 2011, certifying service of the Court's May 11, 2011 Order and Plaintiff's Ex Parte Application for Entry of a Temporary Restraining Order and Preliminary Injunction and supporting papers. (#'s 14, 15 and 16).
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 Defendants' advertisement, promotion, sale, offer for sale, and/or distribution of jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes, bearing counterfeits, reproductions, and/or colorable imitations of the Tiffany Marks, and that the products Defendants are selling are copies of Plaintiff's products that bear copies of the Tiffany Marks on jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes.
B. Because of the infringement of the Tiffany Marks, Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction is not granted. It clearly appears from the following specific facts, as set forth in Plaintiff's Complaint, 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. Defendants appear to be operating Internet business operations which promote, advertise, offer for sale, and sell at least jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes bearing counterfeit and infringing trademarks in violation of Plaintiff's rights;
2. Plaintiff has well-founded fears that more counterfeit and infringing jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes 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, 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 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 jewelry, including bracelets, necklaces, pendants, earrings and rings, cufflinks, money clips, key rings, watches, and gift boxes, if such relief is not issued; and
5. The public interest favors issuance of the preliminary injunction in order to protect Plaintiffs 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 Ex Parte Application for Entry of a Preliminary Injunction (#5) hereby is GRANTED as follows:
(1) Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with them having notice of this Order 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 Tiffany 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 Tiffany 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 Tiffany Marks, or any confusingly similar trademarks.
(2) Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with them having notice of this Order shall, until the conclusion of this action, discontinue the use of the Tiffany 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) Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with Defendants having notice of this Order shall, until the conclusion of this action, discontinue the use of the Tiffany 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 Defendants, including the Internet websites operating under the Subject Domain Names;
(4) 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 Plaintiffs 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 to a holding account with the United States based Registrar, GoDaddy.com, Inc. GoDaddy.com, Inc. shall hold and/or continue to hold 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 links 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, and Orders and 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/off/index.html whereon a copy of the Complaint, Summonses, and Orders and 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 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 Defendants which redirect traffic to the counterfeit operations to a new domain name and thereby evade the provisions of this Order;
(8) 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 and preserve computer files relating to the use of any of the Subject Domain Names and that may have been deleted before the entry of this Order;
(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 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 to be used by Defendants for the purpose of counterfeiting the Tiffany Marks at issue in this action and/or unfairly competing with Tiffany in connection with search engine results pages.
IT IS SO ORDERED.