Rolex Watch USA Inc v. Krishan Agarwal et al, No. 2:2012cv06400 - Document 105 (C.D. Cal. 2013)

Court Description: FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION AGAINST DEFENDANTS by Judge Fernando M. Olguin. Final judgment is entered in favor of Rolex and against Defendants Krishan Agarwal, Melrose.com LLC. It is further ordered that, pursuant to 15 U.S.C. & #167; 1117, judgment is entered against Defendants in the amount of $8,500,000. It is further ordered that this Court shall retain jurisdiction of this matter for all purposes, including for the purpose of enforcing the terms and provisions of this Final Consent Judgment and Permanent Injunction. (See attached document for details.) (lom)
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Rolex Watch USA Inc v. Krishan Agarwal et al 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Craig S. Summers (SBN 108688) craig.summers@kmob.com Matthew S. Bellinger (SBN 222228) matthew.bellinger@kmob.com KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street, Fourteenth Floor Irvine, CA 92614 Phone: (949) 760-0404 Facsimile: (949) 760-9502 Brian W. Brokate (Pro Hac Vice) bwbrokate@gibney.com Beth M. Frenchman (Pro Hac Vice) bfrenchman@gibney.com Jeffrey E. Dupler (Pro Hac Vice) jdupler@gibney.com Christina L. Winsor (Pro Hac Vice) cwinsor@gibney.com GIBNEY ANTHONY & FLAHERTY, LLP 665 Fifth Avenue New York, New York 10022 Phone: (212) 688-5151 Facsimile: (212) 688-8315 Attorneys for Plaintiff ROLEX WATCH U.S.A., INC. (continued on next page) 15 IN THE UNITED STATES DISTRICT COURT 16 17 FOR THE CENTRAL DISTRICT OF CALIFORNIA ROLEX WATCH U.S.A., INC., 18 19 20 21 22 23 24 25 26 27 Doc. 105 Plaintiff, v. KRISHAN AGARWAL, individually and d/b/a MELROSE JEWELERS, a fictitious business in Los Angeles County; MELROSE.COM, LLC, a Nevada limited liability company; and each d/b/a MELROSEJEWELERS.COM, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV12-6400 FMO (MRWx) FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION AGAINST DEFENDANTS Hon. Fernando M. Olguin 28 Dockets.Justia.com 1 2 3 4 5 6 7 8 Mitchell N. Reinis (SBN 36131) mreinis@freedmanweisz.com FREEDMAN WEISZ LLP th 2029 Century Park East, 19 Floor Los Angeles, California 90067 Phone: (310) 282-2500 Facsimile: (310) 282-2501 Jason H. Fisher (SBN 222982) jfisher@fisherlg.com FISHER LAW GROUP 1015 Gayley Ave., Suite 1100 Los Angeles, California 90024 Phone: (310) 746-3053 Facsimile: (310) 295-2259 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Attorneys for Defendants, MELROSE.COM, LLC and KRISHAN AGARWAL 1 Plaintiff Rolex Watch U.S.A., Inc. (“Rolex”) and Defendants Krishan 2 Agarwal (“Mr. Agarwal”) and Melrose.com, LLC (“Melrose”) consent and 3 agree to the terms and conditions of this Final Consent Judgment and Permanent 4 Injunction. 5 IT IS HEREBY ORDERED, ADJUDGED, AND DECREED AS 6 FOLLOWS: 7 1. The Court has personal jurisdiction over each of the parties to this 8 action. The Court also has subject matter jurisdiction over this action pursuant 9 to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). 10 11 12 13 14 15 16 2. Rolex is a New York Corporation having a place of business at 665 Fifth Avenue, New York, New York 10022. 3. Melrose is a Nevada limited liability company having a place of business at 655 S. Hill Street, Los Angeles, California 90014. 4. Mr. Agarwal is a United States citizen having a residence at 2576 Nichols Canyon Road, #204, Los Angeles, California 90046. 5. On July 26, 2012, Rolex filed this lawsuit against Mr. Agarwal and 17 Melrose (collectively, “Defendants”) for Trademark Counterfeiting under 15 18 U.S.C. § 1114, Trademark Infringement under 15 U.S.C. § 1114, False 19 Designation of Origin, False Descriptions, and Unfair Competition under 15 20 U.S.C. § 1125, and Federal Anti-Cybersquatting (Anti-Cyberpiracy) under 15 21 U.S.C. § 1125(d)(1)(A). On January 4, 2013, Defendants filed their Answer to 22 Rolex’s Complaint. 23 24 25 6. Rolex is the exclusive importer and distributor of Rolex watches in the United States. 7. Rolex is the owner of the following trademarks registered in the 26 U.S. Patent and Trademark Office (hereinafter collectively referred to as the 27 “Rolex Registered Trademarks”): 28 -1- 1 Trademark Reg. No. Date 2 ROLEX 0,101,819 1/12/1915 OYSTER 0,239,383 3/6/1928 PRESIDENT 0,520,309 1/24/1950 0,657,756 1/28/1958 3 4 Goods Watches, clocks, parts of watches and clocks, and their cases. Watches, movements, cases, dials, and other parts of watches. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Crown Design Wristbands and bracelets for watches made wholly or in part or plated with precious metals, sold separately from watches. Timepieces of all kinds and parts thereof. DATEJUST GMT-MASTER COSMOGRAPH SEA-DWELLER 0,674,177 2/17/1959 0,683,249 8/11/1959 0,733,081 6/19/1962 0,860,527 11/19/1968 MILGAUSS 0,875,616 8/26/1969 OYSTER PERPETUAL YACHT-MASTER SUBMARINER ROLEX DAYTONA DAYTONA EXPLORER II EXPLORER PEARLMASTER AIR-KING GMT-MASTER II 1,105,602 11/7/1978 Timepieces and parts thereof. Watches. Watches and chronometers. Watches, clocks and parts thereof. Watches [and clocks,] and parts thereof. Watches and parts thereof. 1,749,374 1,782,604 1,960,768 1/26/1993 7/20/1993 3/5/1996 Watches. Watches. Watches. 8. 2,331,145 3/21/2000 Watches. 2,445,357 4/24/2001 Watches. 2,518,894 12/18/2001 Watches. 2,547,630 3/12/2002 Watches. 2,953,542 5/17/2005 Watches and parts thereof. 2,985,308 8/16/2005 Watches and parts thereof. The Rolex Registered Trademarks are in full force and effect and are incontestable pursuant to 15 U.S.C. § 1065. 9. Melrose operates an on-line jewelry business through its website 27 (currently www.melrose.com and previously www.melrosejewelers.com). Mr. 28 Agarwal is the president and owner of Melrose. -2- 1 10. Melrose offers for sale and sells, among other items, altered Rolex 2 watches that bear one or more of the Rolex Registered Trademarks. Melrose’s 3 altered Rolex watches contain one or more non-genuine components (i.e. 4 components not manufactured by Rolex), including, for example, non-genuine 5 bezels, bracelets, and/or dials. 6 11. Melrose’s altered Rolex watches have non-genuine bracelets that 7 bear counterfeit copies of Rolex’s CROWN DESIGN ( 8 marks. 9 12. ) and/or ROLEX Melrose’s altered Rolex watches include refinished dials (some 10 with diamonds added) from which one or more of Rolex’s Registered 11 Trademarks have been removed and reapplied. 12 13. Melrose’s altered Rolex watches include non-genuine bezels (some 13 with diamonds added). The bezel of the watch is designed to create a sealed 14 pressure-proof environment for the watch movement. If the bezel is not of the 15 precise measurement and does not fit properly, outside elements such as water, 16 moisture, and dust can penetrate the watch case and damage the movement. 17 Rolex examined altered Rolex watches purchased from Melrose and determined 18 that the non-genuine bezels on the watches had insufficient fittings and did not 19 protect against the penetration of moisture into the watch movement. 20 14. Melrose’s unauthorized use of marks identical to or substantially 21 indistinguishable from one or more of the Rolex Registered Trademarks on 22 altered Rolex watches and in connection with the marketing and sale of altered 23 Rolex watches is likely to cause confusion, mistake, or deception among 24 consumers and the public. Such unauthorized use is likely to cause consumers 25 and the public to mistakenly believe that Melrose’s altered Rolex watches are 26 genuine Rolex watches or are authorized, sponsored, or approved by Rolex, 27 when, in fact, they are not. 28 -3- 15. 1 Melrose’s unauthorized use of the Rolex Registered Trademarks in 2 connection with its altered Rolex watches constitutes trademark counterfeiting 3 under 15 U.S.C. § 1114, trademark infringement under 15 U.S.C. § 1114, and 4 false designation of origin, false description, and unfair competition under 15 5 U.S.C. § 1125. 6 16. All of the foregoing acts have caused or will cause, and unless 7 restrained by this Court will continue to cause, serious and irreparable injury for 8 which Rolex has no adequate remedy at law. 17. 9 Melrose was also previously the owner of various domain names 10 and 11 rolexblogsite.com, 12 rolexwatchforum.net, 13 (hereinafter collectively referred to as the “Parking Sites”). Each of the Parking 14 Sites incorporates the famous ROLEX trademark. 15 websites, 18. including, but not limited rolexblogsite.net, rolexwatchforums.com, to: rolexgiveaway.ca, rolexwatchforum.com, and rolexwatchforums.net Melrose’s registration of the Parking Sites, which incorporate the 16 famous ROLEX trademark, violated the Anti-Cybersquatting Consumer Act, 15 17 U.S.C. § 1125(d)(1)(A)(ii)(II), and constituted Cybersquatting (Cyberpiracy) in 18 violation of 15 U.S.C. § 1125(d)(1)(A). 19 Parking Sites after this lawsuit was filed. 20 NOW, THEREFORE, IT IS FURTHER ORDERED, ADJUDGED, AND 21 DECREED, AS FOLLOWS: 22 A. Rolex obtained ownership of the Final judgment is entered in favor of Rolex and against Defendants 23 on Rolex’s claims for: (i) Trademark Counterfeiting under 15 U.S.C. § 1114, (ii) 24 Trademark Infringement under 15 U.S.C. § 1114, (iii) False Designation of 25 Origin, False Descriptions, and Unfair Competition under 15 U.S.C. § 1125, and 26 (iv) Federal Anti-Cybersquatting (Anti-Cyberpiracy) under 15 U.S.C. § 27 1125(d)(1)(A). 28 -4- 1 B. Defendants, and their officers, agents, servants, employees, 2 attorneys, and those persons in active concert or participation with them who 3 receive actual notice of this injunction by personal service or otherwise, and 4 including Krishan Agarwal personally, and his agents, servants, employees, 5 attorneys, and those persons in active concert or participation with him who 6 receive actual notice of this injunction by personal service or otherwise, are 7 permanently restrained and enjoined from: 8 1. Using the Rolex Registered Trademarks and any other 9 trademark of Rolex (hereinafter the “Rolex Marks”), and/or any 10 other reproduction, counterfeit, copy, or colorable imitation of 11 the Rolex Marks, and/or any marks likely to cause confusion 12 with the Rolex Marks, in connection with the advertisement, 13 promotion, offering for sale, or sale of: 14 a. any watches or watch products, including, but not limited 15 to, genuine Rolex watches, and altered Rolex watches 16 that have been reconstructed with non-genuine parts 17 consisting of cases, bezels, bracelets, and/or dials 18 (including but not limited to original Rolex dials that 19 have been altered by the addition of diamonds and/or 20 refinishing); 21 b. individual parts or components for watches, including, 22 but not limited to, genuine Rolex parts or components, 23 and non-genuine parts or components 24 Rolex watches, e.g. cases, bezels, bracelets, and/or dials; 25 or 26 designed to fit c. services resulting in the manufacture, conversion, 27 modification, repair, 28 reconditioning, refurbishing, -5- servicing, maintenance, certification, appraisal, 1 evaluation, or valuation of any Rolex watch products, 2 including, but not limited to, the addition or substitution 3 of non-genuine parts consisting of cases, bezels, 4 bracelets, and/or dials. 2. Advertising, promoting, offering for sale, or selling genuine or 5 non-genuine Rolex watches and/or watch parts. 6 7 3. Engaging in any course of conduct likely to cause confusion, 8 deception, or mistake, or injure Rolex’s business reputation or 9 dilute the distinctive quality of the Rolex Marks. 10 4. Using any false description or representation including words or 11 other symbols tending to falsely describe or represent 12 Defendants’ goods as being those of Rolex or sponsored by or 13 associated with Rolex or misrepresenting the nature or qualities 14 of Rolex’s or Defendants’ goods and from offering goods in 15 commerce. 16 C. Defendants are ordered to immediately and permanently take down 17 the www.melrose.com website, and any other website containing the term 18 “Melrose.” Defendants are further ordered to immediately transfer to Rolex the 19 www.melrose.com domain name and any and all right, title, and interest that 20 Defendants may have in any other domain names that contain the term 21 “Melrose”, which include at least the following domain names: www. 22 melrose.co.uk, 23 www.merlosejewelers.ca, 24 www.melrosejewelers.co.in, 25 www.melrosejewelers.com.mx, 26 www.melrosejewellers.ca, www.melrosejewellery.ca, www.melrosegems.co.uk, 27 www.melrosejewelers.es, 28 www.melrosejewelers.ae, www.melrosejewelers.jp, www.melrosegems.com, www.melrosejewelers.com, www.melrosejewelers.co.uk, www.melrose.co.in, www.melrose.com.mx, www.melrosejewelers.co.kr, www.melrosejewelers.de, www.melrosediamonds.ca, -6- www.melrosegems.ca, 1 and www.melrosejewelers.fr. Defendants are ordered to execute any and all 2 documents and do any acts (other than payment of money) reasonably requested 3 that are necessary to transfer all of their right, title, and interest, if any, to the 4 domain names. 5 D. 6 7 Defendants are ordered to deliver up to Rolex’s attorneys all Rolex watch heads that are in Defendants’ possession or control. E. Defendants are ordered to permanently remove from all watch 8 bracelets in their possession or control any of Rolex’s trademarks or marks that 9 resemble any of Rolex’s trademarks. After the markings are removed, 10 Defendants are further ordered to promptly notify Rolex in writing that the 11 marks have been removed and to make the bracelets available for inspection by 12 Rolex. 13 14 15 F. It is further ordered that, pursuant to 15 U.S.C. § 1117, judgment is entered against Defendants in the amount of $8,500,000. G. It is further ordered that this Court shall retain jurisdiction of this 16 matter for all purposes, including for the purpose of enforcing the terms and 17 provisions of this Final Consent Judgment and Permanent Injunction. 18 H. The parties agree to submit to the personal jurisdiction of this Court 19 in connection with this matter for all purposes, including for the purpose of 20 enforcing the terms and provisions of this Final Consent Judgment and 21 Permanent Injunction. 22 23 IT IS SO ORDERED. 24 25 26 Dated: September 12, 2013 /s/ Hon. Fernando M. Olguin United States District Judge 27 28 -7-