Opinion
Case No. 21-cv-62008-BLOOM/Valle
2021-10-12
YETI COOLERS, LLC, Plaintiff, v. The INDIVIDUALS, BUSINESS ENTITIES, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A, Defendants.
Stephen Michael Gaffigan, Stpehen M. Gaffigan, P.A., Fort Lauderdale, FL, for Plaintiff.
Stephen Michael Gaffigan, Stpehen M. Gaffigan, P.A., Fort Lauderdale, FL, for Plaintiff.
ORDER GRANTING PLAINTIFF'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION
BETH BLOOM, UNITED STATES DISTRICT JUDGE
THIS CAUSE is before the Court upon Plaintiff's Motion for Preliminary Injunction, ECF No. [7], ("Motion"). The Court has carefully considered the Motion, the record in this case, and the applicable law, and is otherwise fully advised.
By the instant Motion, Plaintiff, YETI Coolers, LLC ("Plaintiff"), moves for entry of a preliminary injunction against Defendants, for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a). The Court held a hearing by video conference on October 12, 2021, which was attended by counsel for Plaintiff only. During the hearing, Plaintiff directed the Court to evidence supporting the Motion for Preliminary Injunction. None of the Defendants formally responded to the Motion, nor have they made any appearance or filing in this case, either individually or through counsel. Because Plaintiff has satisfied the requirements for the issuance of a preliminary injunction, the Court grants the Motion.
Defendants are the Individuals, Business Entities, and Unincorporated Associations identified on Schedule "A" hereto (collectively "Defendants").
I. FACTUAL BACKGROUND
The factual background is taken from the Plaintiff's Complaint, ECF No. [1]. Plaintiff's Motion for Preliminary Injunction, ECF No. [7], and supporting evidentiary submissions. Plaintiff filed declarations and exhibits annexed thereto in support of its Motion for Preliminary Injunction. The declarations are available in the docket at the following entries: Declaration of Jeni Zuercher, ECF No. [7-1], Declaration of Stephen M. Gaffigan, ECF No. [7-3], and Declaration of Kathleen Burns, ECF No. [7-7].
Plaintiff, YETI Coolers, LLC, is the registered owner of the following trademarks, which are valid and registered on the Principal; Register of the United States Patent and Trademark Office (the "YETI Marks"):
Trademark Registration Registration Date Class(es)/Good(s) Number YETI 3,203,869 January 30, 2007 IC 021 — Portable coolers TUNDRA 4,083,930 January 10, 2012 IC 021 — Portable coolers ROADIE 4,083,932 January 10, 2012 IC 021 — Portable Coolers YETI TANK 4,818,317 September 22, IC 021 — Portable Coolers 2015 RAMBLER 4,998,897 July 12, 2016 IC 021 — Jugs
HOPPER FLIP 5,171,380 March 28, 2017 IC 021 — Portable Coolers HOPPER 5,232,872 June 27, 2017 IC 021 — Portable coolers RAMBLER 5,233,441 June 27, 2017 IC 021 — Beverageware; cups; drinking glasses; tumblers for use as drinking vessels; jugs; mugs; temperature-retaining drinking vessels; storage containers for household or domestic use, namely, vacuum container for hot or cold food and drink; beer growlers; insulated food and drink containers; stainless steel tumblers for use as drinking vessels; stainless steel drinking glasses; stainless steel beverageware; drinking straws. YETI HOPPER 5,329,935 November 7, 2017 IC 021 — Portable coolers YETI 5,885,556 October 15, 2019 IC 016 — Lunch bags TUNDRA 5,886,316 October 15, 2019 IC 021 — Non-electric coolers HAUL DAYTRIP 5,893,053 October 22, 2019 IC 021 — Insulated lunch boxes; lunch boxes; lunch bags not of paper; insulated lunch bags not of paper; non-electric portable coolers
HOPPER 6,153,620 September 15, IC 021 — Non-electric portable BACKFLIP 2020 coolers FLIP 6,200,636 November 17, IC 021 — Portable coolers 2020 YETI 6,211,352 December 1, 2020 IC 021 — Buckets; plastic buckets; industrial buckets; utility buckets; ranger buckets; fishing buckets; household containers for food and beverages; containers for household or kitchen use; plastic portable household cargo containers; portable non-electric water coolers; water dispensers; insulated water dispensers; portable beverage dispenser; handles specially adapted for beverageware
See Declaration of Jeni Zuercher, ECF No. [7-1] at 4-5; ECF No. [1-2] (containing Certificates of Registrations for the YETI Marks at issue.) The YETI Marks are used in connection with the manufacture and distribution of quality goods in the categories identified above. See Declaration of Jeni Zuercher, ECF No. [7-1] at 4-5.
Defendants, by operating commercial Internet websites and a supporting domain under Defendants’ respective domain names identified on Schedule "A" hereto (the "Subject Domain Names"), have advertised, promoted, offered for sale, or sold goods bearing and/or using what Plaintiff has determined to be counterfeits, infringements, reproductions and/or colorable imitations of the YETI Marks. See Declaration of Jeni Zuercher, ECF No. [7-1] at 10-14; Declaration of Stephen M. Gaffigan, ECF No. [7-3] at 2; Declaration of Kathleen Burns, ECF No. [7-7] at 4.
Although each Defendant may not copy and infringe each YETI Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing that each Defendant has infringed, at least, one or more of the YETI Marks. See Declaration of Zuercher, ECF No. [7-1] at 10-14. Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the YETI Marks. See Declaration of Zuercher, ECF No. [7-1] at 10, 13-14.
Counsel for Plaintiff retained Invisible Inc. ("Invisible"), a licensed private investigative firm, to investigate the promotion and sale of counterfeit and infringing versions of YETI branded products by certain Defendants and to obtain the available payment account data for receipt of funds paid to these Defendants for the sale of counterfeit versions of YETI branded products. See Declaration of Jeni Zuercher, ECF No. [7-1] at 12; Declaration of Stephen M. Gaffigan, ECF No. [7-3] at 2; Declaration of Kathleen Burns, ECF No. [7-7] at 3. Invisible accessed the Internet websites operating under the Subject Do of origin, cybersquatting, common law unfair competition, and common law trademark infringementmain Names for Defendant Numbers 1-25 and placed orders via these Subject Domain Names for the purchase of various products, all bearing and/or using counterfeits and infringements of at least one of YETI's trademarks at issue in this action and requested each product to be shipped to Invisible's address in the Southern District of Florida. See Declaration of Kathleen Burns, ECF No. [7-7] at 4 and Comp. Ex. 1 thereto, ECF Nos. [ 7 -8 through 7-9]. Each order was processed entirely online and following the placement of the orders, Invisible received information for finalizing payment for the various products ordered via PayPal, Inc. ("PayPal") to Defendants’ respective PayPal accounts, as identified on Schedule "A" hereto. (See id. ) Additionally, Invisible captured the PayPal Merchant Identification Numbers ("Merchant IDs") identified as part of the source code and account data for these Defendants. At the conclusion of the process, the detailed web pages Invisible captured and downloaded reflecting the YETI branded products promoted and offered for sale via the Subject Domain Names were sent to YETI's representative, Jeni Zuercher, for inspection. See Declaration of Stephen M. Gaffigan, ECF No. [7-3] at 2; Declaration of Jeni Zuercher, ECF No. [7-1] at 12.
Invisible was instructed to not transmit the funds to finalize the sale for the orders for most of the Defendants so as to avoid adding money to Defendants’ coffers. See Declaration of Kathleen Burns, ECF No. [7-7] at 4, n.1.
The customer service e-mail addresses identified for certain Defendants are also included in Schedule "A" hereto. See Declaration of Kathleen Burns, ECF No. [7-7] at 4, n.2.
The web pages captured and downloaded by Plaintiff's counsel's office, Stephen M. Gaffigan, P.A., identifying the customer service e-mail addresses for certain Defendants are included in Comp. Ex. 1 to the Declaration of Kathleen Burns, ECF No. [7-7] and identified on Schedule "A" hereto.
Additionally, YETI accessed the Internet websites operating under Defendant Numbers 1-2, 6-7, 9-10, 16-17, 19-21's Subject Domain Names and placed an order for the purchase of a product bearing counterfeits of, at least, one of the YETI Marks at issue in this action from each of these Defendants. Each order was processed entirely online and following the placement of the orders, YETI captured the PayPal Merchant IDs and any additional e-mail address identified as part of the source code and account data for these Defendants, as identified on Schedule "A" attached hereto. See Declaration of Jeni Zuercher, ECF No. [7-1] at 11 and Comp. Ex. 1 thereto, ECF No. [7-2].
Further, Plaintiff's counsel accessed each of the commercial Internet websites operating under Defendant Numbers 26-60's Subject Domain Names and downloaded web pages reflecting the YETI branded products promoted and offered for sale via these Subject Domain Names and provided the same to YETI's representative, Jeni Zuercher, for inspection. See Declaration of Stephen M. Gaffigan, ECF No. [7-3] at 3.
Plaintiff's representative conducted a review of the YETI branded goods offered for sale by Defendants via the Subject Domain Names by reviewing the Internet websites operating under the Subject Domain Names or the detailed web page captures thereof, and\or the website to which a certain domain name automatically redirects, and determined the products were not genuine versions of YETI's goods. See Declaration of Jeni Zuercher, ECF No. [7-1], at 13-14.
On September 23, 2021, the Plaintiff filed its Complaint, ECF No. [1], against the Defendants for federal trademark counterfeiting and infringement, false designation of origin, cybersquatting, common law unfair competition, and common law trademark infringement. On September 27, 2021, the Plaintiff filed its Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, ECF No. [7]. On September 28, 2021, this Court entered an Order Granting Ex Parte Application for Entry of Temporary Restraining Order (the "TRO"), ECF No. [10] and temporarily restrained Defendants from infringing the YETI Marks at issue. The Temporary Restraining Order also directed PayPal, Inc. ("PayPal"), to identify and restrain funds in payment accounts associated with Defendants and to divert those funds to a holding account. Pursuant to the Court's September 28, 2021 Order, Plaintiff served Defendants with a copy of the Complaint together with copies of the Ex Parte Application for Entry of Temporary Restraining Order, Preliminary Injunction, and Order Restraining Transfer of Assets, and the Court's September 28, 2021 Temporary Restraining Order, thereby providing notice and copies of the September 28, 2021 Temporary Restraining Order and Plaintiffs’ Ex Parte Application for Entry of Temporary Restraining Order, Preliminary Injunction, and Order Restraining Transfer of Assets via email to each Defendant's corresponding email/online contact form, or via e-mail to Defendant's registrar of record, and by posting copies of the Temporary Restraining Order and all other pleadings and documents on file in this action on the website located at http://servingnotice.com/yr6ain/index.html. Thereafter, Certificates of Service were filed confirming service on each Defendant, ECF Nos. [20], [22], and [23].
II. LEGAL STANDARD
To obtain a preliminary injunction, a party must demonstrate "(1) a substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on the non-movant; and (4) that the entry of the relief would serve the public interest." Schiavo ex rel. Schindler v. Schiavo , 403 F.3d 1223, 1225–26 (11th Cir. 2005) ; see also Levi Strauss & Co. v. Sunrise Int'l Trading Inc. , 51 F. 3d 982, 985 (11th Cir. 1995).
III. ANALYSIS
The declarations Plaintiff submitted in support of its Motion for Preliminary Injunction support the following conclusions of law:
A. Plaintiff has a 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 goods bearing and/or using counterfeits, reproductions, or colorable imitations of the YETI Marks, and that the products Defendants are selling and promoting for sale are copies of Plaintiff's products that bear copies of the YETI Marks.
B. Because of the infringement of the YETI 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, Motion for Preliminary Injunction, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to the Plaintiff and to consumers because it is more likely true than not that:
1. Defendants own or control commercial Internet websites operating under their Subject Domain Names which advertise, promote, offer for sale, and sell products bearing and/or using counterfeit and infringing trademarks in violation of Plaintiff's rights; and
2. There is good cause to believe that more counterfeit and infringing products bearing and/or using Plaintiff's trademarks will appear in the marketplace; that consumers are likely to be misled, confused, and disappointed by the quality of these products; and that Plaintiff may suffer loss of sales for its genuine products.
C. The balance of potential harm to Defendants in restraining their trade in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation, and its goodwill as a manufacturer and distributor of quality products, if such relief is not issued.
D. The public interest favors issuance of the preliminary injunction to protect Plaintiff's trademark interests and protect the public from being defrauded by the palming off of counterfeit products as Plaintiff's genuine goods.
E. Under 15 U.S.C. § 1117(a), Plaintiff may be entitled to recover, as an equitable remedy, the illegal profits gained through Defendants’ distribution and sales of goods bearing counterfeits and infringements of the YETI Marks. See Reebok Int'l, Ltd. v. Marnatech Enters., Inc. , 970 F.2d 552, 559 (9th Cir. 1992) (quoting Fuller Brush Prods. Co. v. Fuller Brush Co. , 299 F.2d 772, 777 (7th Cir. 1962) ("An accounting of profits under § 1117(a) is not synonymous with an award of monetary damages: ‘[a]n accounting for profits ... is an equitable remedy subject to the principles of equity.’ ")).
F. Requesting equitable relief "invokes the district court's inherent equitable powers to order preliminary relief, including an asset freeze, in order to assure the availability of permanent relief." Levi Strauss & Co. , 51 F.3d at 987 (citing Federal Trade Comm'n v. United States Oil & Gas Corp. , 748 F.2d 1431, 1433-34 (11th Cir. 1984) ); and
G. In light of the inherently deceptive nature of the counterfeiting business, and the likelihood that Defendants have violated federal trademark laws, Plaintiff has good reason to believe Defendants will hide or transfer their ill-gotten assets beyond the jurisdiction of this Court unless those assets are restrained.
IV. CONCLUSION
Accordingly, it is ORDERED AND ADJUDGED that Plaintiff's Motion, ECF No. [7], is GRANTED as follows:
(1) Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Order are enjoined and restrained until further Order of this Court:
a. From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing and/or using the YETI Marks, or any confusingly similar trademarks, other than those actually manufactured or distributed by the Plaintiff; and
b. From secreting, concealing, destroying, selling off, transferring, or otherwise disposing of: (i) any products, not manufactured or distributed by the Plaintiff, bearing and/or using the YETI Marks, or any confusingly similar trademarks; (ii) any evidence relating to the manufacture, importation, sale, offer for sale, distribution, or transfer of any products bearing and/or using the YETI Marks, or any confusingly similar trademarks; or (iii) any assets or other financial accounts subject to this Order, including inventory assets,
in the actual or constructive possession of, or owned, controlled, or held by, or subject to access by, any Defendant, including, but not limited to, any assets held by or on behalf of any Defendant.
(2) Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Order shall immediately discontinue, until further Order of this Court, the use of the YETI 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) Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Order shall immediately discontinue, until further Order of this Court, the use of the YETI Marks, or any confusingly similar trademarks within domain name extensions, meta tags or other markers within website source code, from use on any webpage (including as the title of any web page), from any advertising links to other websites, from search engines’ databases or cache memory, and any other form of use of such terms that are visible to a computer user or serves to direct computer searches to Internet websites registered, owned, or operated by any Defendant, including the Internet websites operating under the Subject Domain Names;
(4) Each Defendant shall not transfer ownership of the Subject Domain Names during the pendency of this action, or until further order of the Court;
(5) Each Defendant shall continue to preserve copies of all 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 that may have been deleted before the entry of this Order;
(6) Upon Plaintiff's request, the privacy protection service for any of the Subject Domain Names for which the registrant uses such privacy protection service to conceal the registrant's identity and contact information is ordered to disclose to Plaintiff the true identities and contact information of those registrants;
(7) The domain name registrars for the Subject Domain Names shall immediately, to the extent not already done, assist in changing the registrar of record for the Subject Domain Names to a holding account with a registrar of Plaintiff's choosing (the "New Registrar"), excepting any such domain names which such registrars have been notified in writing by Plaintiff has been or will be dismissed from this action, or as to which Plaintiff has withdrawn its request to immediately transfer such domain names. To the extent the registrars do not assist in changing the registrars of record for the domains under their respective control within one (1) business day of receipt of this Order, the top-level domain (TLD) registries, for the Subject Domain Names, or their administrators, including backend registry operators or administrators, within five (5) business days of receipt of this Order, shall change, or assist in changing, the registrars of record for the Subject Domain Names to a holding account with the New Registrar, excepting any such domain name which such registry has been notified in writing by Plaintiff has been or will be dismissed from this action, or as to which Plaintiff has withdrawn its request to immediately transfer such domain name. Upon the change of the registrars of record for the Subject Domain Names, the New Registrar will maintain access to the Subject Domain Names in trust for the Court during the pendency of this action. Additionally, the New Registrar shall immediately institute a temporary 302 domain name redirection which will automatically redirect any visitor to the Subject Domain Names to the following Uniform Resource Locator ("URL") http://servingnotice.com/yr6ain/index.html. whereon copies of the Complaint, this Order, and all other documents on file in this action are displayed. Alternatively, the New Registrar may update 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, to NS1.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which will cause the domain names to resolve to the website where copies of the Complaint, this Order, and all other documents on file in this action are displayed. After the New Registrar has effected this change, the Subject Domain Names shall be placed on lock status by the New Registrar, preventing the modification or deletion of the domains by the New Registrar or Defendants;
(8) Upon receipt of notice of this Order, the Defendants and all financial institutions, payment processors, banks, escrow services, money transmitters, or marketplace platforms, including but not limited to, PayPal, Inc. ("PayPal"), and their related companies and affiliates shall, to the extent not already done, (i) immediately identify and restrain all funds in all financial accounts and/or sub-accounts associated with the Internet websites operating under the Subject Domain Names, PayPal payees, merchant identification numbers, and/or the e-mail addresses identified on Schedule "A" hereto, as well as any other related accounts of the same customer(s); (ii) identify all other accounts which transfer funds into the same financial institution account(s) or any of the other financial accounts subject to this Order; and (iii) restrain the transfer of all funds, as opposed to ongoing account activity, held or received for their benefit or to be transferred into their respective financial accounts, and any other financial accounts tied thereto; and (iv) immediately divert those restrained funds to a holding account for the trust of the Court;
(9) Upon receipt of notice of this Order, the Defendants and all financial institutions, payment processors, bank, escrow services, money transmitters, or marketplace platforms receiving notice of this Order, including but not limited to, PayPal and their related companies and affiliates, shall further, to the extent not already done, provide Plaintiff's counsel with all data that details (i) an accounting of the total funds restrained and identify the financial account(s) and sub-account(s) which the restrained funds are related to, and (ii) the account transactions related to all funds transmitted into the financial account(s) and sub-account(s) which have been restrained. No funds restrained by this Order shall be transferred or surrendered by any financial institution, payment processor, bank, escrow service, money transmitter, or marketplace website, including but not limited to, PayPal, and their related companies and affiliates for any purpose (other than pursuant to a chargeback made pursuant to their security interest in the funds) without the express authorization of this Court;
(10) This Order shall apply to the Subject Domain Names, associated websites, and any other domain names, websites or financial accounts which are being used by the Defendants for the purpose of counterfeiting the YETI Marks and/or unfairly competing with Plaintiff;
(11) Any Defendant or financial institution account holder subject to this Order may petition the Court to modify the asset restraint set out in this Order; (12) As a matter of law, this Order shall no longer apply to any Defendant or associated e-commerce store dismissed from this action, or as to which Plaintiff has withdrawn its request for a preliminary injunction;
(13) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Federal Rule of Civil Procedure 65(c), the Plaintiff shall maintain its previously posted bond in the amount of Ten Thousand Dollars and Zero Cents ($10,000.00), 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. In the Court's discretion, the bond may be subject to increase should an application be made in the interest of justice;
(14) Additionally, for the purpose of providing additional notice of this proceeding, and all other pleadings, orders, and documents filed herein, the owners, operators and/or administrators of the financial institutions, payment processors, banks, escrow services, and money transmitters, including but not limited to PayPal, and their related companies and affiliates shall, to the extent not already done, at Plaintiff's request, provide Plaintiff's counsel with any e-mail address known to be associated with the Defendants’ respective Subject Domain Names;
(15) This Order shall remain in effect during the pendency of this action, or until further Order of this Court.
DONE AND ORDERED in Chambers at Miami, Florida, on October 12, 2021.
SCHEDULE "A"
DEFENDANTS BY NUMBER, SUBJECT DOMAIN NAME, MERCHANT ID, FINANCIAL ACCOUNT AND E-MAIL ADDRESS