Opinion
Case No. 2:11-cv-00590-LDG-GWF.
May 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 Tiffany (NJ), LLC.
ORDER GRANTING PLAINTIFF'S EX PARTE APPLICATION FOR ENTRY OF TEMPORARY RESTRAINING ORDER
THIS CAUSE is before the Court on Plaintiffs Ex Parte Application For Entry of a Temporary Restraining Order and Preliminary Injunction (the "Application for TRO"). Plaintiff, Tiffany (NJ), LLC ("Plaintiff" or "Tiffany"), moves ex parte, for entry of a temporary restraining order, and, upon expiration of the temporary restraining order, a preliminary injunction against Defendants, The Partnerships and Unincorporated Associations indentified on Schedule "A" hereto and Does 1-1000 (collectively "Defendants"), pursuant to 15 U.S.C. § 1116 and Fed.R.Civ.P. 65 for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, and 1125(a) and (d).
For reasons set forth herein, Plaintiff's Application for TRO is GRANTED.
I. Factual Background
The Court bases this Order on the following facts from Plaintiff's Complaint, Application for TRO, 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:
Trademark Registration No. Registration Date
TIFFANY CO 0,023,573 September 5, 1893 Tiffany 0,133,063 July 6, 1920 TIFFANY CO. 1,228,189 February 22, 1983 TIFFANY 1,228,409 February 22, 1983 TIFFANY CO. 1,283,306 June 26, 1984 ATLAS 1,605,467 July 10, 1990 T CO. 1,669,365 December 24, 1991 1,785,204 August 3, 1993 PERETTI 1,787,861 August 17, 1993 ELSA PERETTI 1,799,272 October 19, 1993 1,804,353 November 16, 1993 TIFFANY CO. 1,968,614 April 16, 1996 2,184,128 August 25, 1998 2,359,351 June 20, 2000 TIFFANY 2,639,539 October 22, 2002 ATLAS 2,886,655 September 21, 2004 (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 Plaintiffs 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, 2010, 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.)
II. Conclusions of Law
The declarations Plaintiff submitted in support of its Application for TRO 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 shoes and boots 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 temporary restraining order is not granted. It clearly appears from the following specific facts, as set forth in Plaintiff's Complaint, Application for TRO, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to Plaintiff and to consumers before Defendants can be heard in opposition unless Plaintiff's request for ex parte relief is granted:
1. Defendants own or control Internet business operations which 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. There is good cause to believe 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. There is good cause to believe that if Plaintiff proceeds on notice to Defendants on this Application for TRO, 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 trade in counterfeit and infringing branded goods if a temporary restraining order 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 temporary restraining order in order to protect Plaintiff's trademark interests and protect the public from being defrauded by the palming off of counterfeit goods as genuine goods of the Plaintiff.
Upon review of Plaintiff's Complaint, Application for TRO, and supporting evidentiary submissions, it is hereby
ORDERED that Plaintiff's Application for TRO is GRANTED, according to the terms set forth below:
TEMPORARY RESTRAINING ORDER
(1) Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with Defendants having notice of this Order are hereby temporarily restrained:
(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 Defendants having notice of this Order shall immediately 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 immediately 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 transfer to Plaintiffs counsel, for deposit with this Court, domain name certificates for the Subject Domain Names;
(6) The top-level domain (TLD) Registries for the Subject Domain Names, within ten (10) days of receipt of this Temporary Restraining Order shall change the registrar of record for the Subject Domain Names to a holding account with the United States based Registrar, GoDaddy.com, Inc. Upon transfer of the Subject Domain Names into the holding account, GoDaddy.com, Inc. will hold the Subject Domain Names in trust for the Court during the pendency of this action. Additionally, GoDaddy.com, Inc. shall immediately update 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, to NS1.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which will cause the domain names to resolve to the website where a copy of the Complaint, Summonses, and Temporary Restraining Order and other documents on file in this action are displayed. Alternatively, GoDaddy.com, Inc. may institute 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 Temporary Restraining Order and other documents on file in this action are displayed. After GoDaddy.com, Inc. has effected this change the Subject Domain Names shall be placed on Lock status, preventing the modification or deletion of the domains by the registrar or Defendants;
(7) Plaintiff may 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 preserve copies of all their computer files relating to the use of any of the Subject Domain Names and shall take all steps necessary to retrieve computer files relating to the use of the Subject Domain Names and that may have been deleted before the entry of this Order;
(9) This Temporary Restraining Order shall remain in effect until the date for the hearing on the Motion for Preliminary Injunction set forth below, or until such further dates as set by the Court or stipulated to by the parties;
(10) This Temporary Restraining Order 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;
BOND TO BE POSTED
(11) Pursuant to 15 U.S.C. § 1116(d)(5)(D), Plaintiff shall post a bond in the amount of Twenty Thousand Dollars and Zero Cents ($20,000.00), as payment of damages to which Defendant may be entitled for a wrongful injunction or restraint. Plaintiff shall post the bond prior to requesting the Registry to transfer control of the Subject Domain Names.
PRELIMINARY INJUNCTION
(12) A hearing is set before this Court in the United States Courthouse located 333 Las Vegas Blvd. So., Las Vegas, NV, Courtroom 6B, on Wednesday, May 25, 2011, at 9 a.m., or at such other time that this Court deems appropriate, on Plaintiff's Motion for a Preliminary Injunction restraining Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with Defendants from engaging in the activities that are subject of the above Temporary Restraining Order;
(13) Plaintiff shall serve a copy of the Application for TRO and this Order and all other pleadings and documents on file in this action on all Defendants by posting a copy of the Application for TRO and this Order on the website located athttp://servingnotice.com/off/index.html within forty-eight (48) hours of the Subject Domain Names being transferred to the GoDaddy.com, Inc. holding account, and such notice so given shall be deemed good and sufficient service thereof. Plaintiff shall thereafter further provide notice of these proceedings and copies of the documents on file in this matter to Defendants using all email addresses identified in the registration data for each of the Subject Domain Names. Any response or opposition to Plaintiff's Motion for Preliminary Injunction must be filed and served on Plaintiff's counsel prior to the hearing set for May 25, 2011, and filed with the Court, along with Proof of Service, on May 18, 2011. Plaintiff shall file any Reply Memorandum on or before May 23, 2011. The above dates may be revised upon stipulation by all parties and approval of this Court. Defendants are hereby on notice that failure to appear at the hearing may result in the imposition of a preliminary injunction against them pursuant to 15 U.S.C. § 1116(d) and Fed.R.Civ.P. 65.
IT IS SO ORDERED.