Rolex Watch U.S.A., Inc. v. Malik, No. 3:2014cv03589 - Document 12 (N.D. Cal. 2014)
Court Description: FINAL JUDGMENT re 11 filed by Rolex Watch U.S.A., Inc.. Signed by Judge Edward M. Chen on 11/6/14. (bpf, COURT STAFF) (Filed on 11/6/2014)
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Rolex Watch U.S.A., Inc. v. Malik 1 2 3 4 5 6 7 8 9 10 11 12 13 Doc. 12 HARVEY SISKIND LLP D. PETER HARVEY (SBN 55712) Email: pharvey@harveysiskind.com JANE A. LEVICH (SBN 293299) Email: jlevich@harveysiskind.com Four Embarcadero Center, 39th Floor San Francisco, CA 94111 Telephone: (415) 354-0100 Facsimile: (415) 391-7124 GIBNEY, ANTHONY & FLAHERTY, LLP MICHAEL LEE (pro hac vice pending) Email: mlee@gibney.com MAJA SZUMARSKA (pro hac vice pending) Email: mszumarska@gibney.com 665 Fifth Avenue New York, NY 10022 Telephone: (212) 688-5151 Facsimile: (212) 688-8315 Attorneys for Plaintiff Rolex Watch U.S.A., Inc. 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE NORTHERN DISTRICT OF CALIFORNIA 16 SAN FRANCISCO DIVISION 17 18 ROLEX WATCH U.S.A., INC., Case No. C 14-03589 EMC 19 Plaintiff, 20 21 v. [PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION 22 23 QASIM MALIK a/k/a ERIC MALIK and “JOHN DOES 1-10”, 24 25 Defendants. 26 27 28 [PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC Dockets.Justia.com 1 Plaintiff Rolex Watch U.S.A., Inc. (“Rolex”) filed a Complaint alleging trademark 2 counterfeiting pursuant to 15 U.S.C. § 1114 and trademark infringement pursuant to 15 U.S.C. 3 § 1114 against Qasim Malik a/k/a Eric Malik (“Defendant”). 4 5 I. STIPULATED FACTS AND CONCLUSIONS A. This Court has subject matter jurisdiction over this lawsuit pursuant to 15 U.S.C. 6 § 1121, 28 U.S.C. §§ 1331, 1338 and 28 U.S.C. § 1367. This Court has personal jurisdiction over 7 Defendant, Qasim Malik a/k/a Eric Malik. Venue is proper in this Court. 8 B. Rolex is the exclusive distributor and warrantor in the United States of Rolex watches, all 9 of which bear one or more of the Rolex Registered Trademarks as defined below. Rolex watches are 10 identified by the trade name and trademark ROLEX and one or more of the Rolex Registered 11 Trademarks. Rolex is responsible for assembling, finishing, marketing and selling in interstate commerce 12 high quality Rolex watches, watch bracelets and related products for men and women (hereinafter 13 referred to as “Rolex Watches”). Rolex is responsible for maintaining control over the quality of Rolex 14 products and services in this country. Rolex has developed an outstanding reputation because of the 15 uniform high quality of Rolex Watches and the Rolex Registered Trademarks are distinctive marks used 16 to identify these high quality products originating with Rolex. 17 18 C. Rolex is the owner of, including but not limited to, the following federal trademark registrations in the U.S. Patent and Trademark Office: 19 Reg. No. Reg. Date Goods 657,756 1/28/58 Timepieces of all kinds and parts thereof. DATEJUST 674,177 2/17/59 Timepieces and parts thereof. 23 DAY-DATE 831,652 7/4/67 Wrist watches. 24 DAYTONA 2,331,145 3/21/00 Watches. 25 EXPLORER II 2,445,357 4/24/01 Watches. 26 GMT-MASTER 683,249 8/11/59 Watches. GMT-MASTER II 2,985,308 8/16/05 Watches and parts thereof. 20 21 22 27 Trademark Crown Device 28 -1[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC Trademark Reg. No. Reg. Date Goods OYSTER 239,383 3/6/28 Watches, movements, cases, dials, and other parts of watches. OYSTER PERPETUAL 1,105,602 11/7/78 Watches and parts thereof. PRESIDENT 520,309 1/24/50 Wristbands and bracelets for watches made wholly or in part or plated with precious metals, sold separately from watches. ROLEX 101,819 1/12/15 Watches, clocks, parts of watches and clocks, and their cases. 8 ROLEX DAYTONA 1,960,768 3/5/96 Watches. 9 SEA-DWELLER 860,527 11/19/68 Watches, clocks and parts thereof. 10 SUBMARINER 1,782,604 7/20/93 Watches. TURN-O-GRAPH 2,950,028 5/10/05 Watches and parts thereof. 1 2 3 4 5 6 7 11 12 13 14 D. The Rolex Registered Trademarks are arbitrary and fanciful and are entitled to the highest level of protection afforded by law. E. Based on Rolex’s extensive advertising, sales and the wide popularity of Rolex products, 15 the Rolex Registered Trademarks are now famous and have been famous since well prior to the activities 16 of the Defendant. Rolex Registered Trademarks have acquired secondary meaning so that any product 17 or advertisement bearing such marks is immediately associated by consumers, the public and the trade as 18 being a product or affiliate of Rolex. 19 20 21 22 23 F. Rolex and its predecessors have used the Rolex Registered Trademarks for many years on and in connection with Rolex Watches and related products. G. Rolex has gone to great lengths to protect its name and enforce the Rolex Registered Trademarks. H. Long after Rolex’s adoption and use of the Rolex Registered Trademarks on its products 24 and after Rolex’s federal registration of the Rolex Registered Trademarks, Defendant began selling, 25 offering for sale, distributing, promoting and advertising in interstate commerce, through the Internet, 26 watches bearing counterfeits and infringements of the Rolex Registered Trademarks as those marks 27 28 -2[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC 1 appear on Rolex’s products and as shown in the Rolex Registered Trademarks attached to the Complaint 2 as Exhibit 1. 3 I. The spurious marks or designations used by Defendant in interstate commerce are 4 identical with, or substantially indistinguishable from, the Rolex Registered Trademarks on goods 5 covered by the Rolex Registered Trademarks. 6 J. Defendant admits he intentionally and willfully sold, offered for sale, distributed, 7 promoted and advertised merchandise bearing counterfeits of one or more of the Rolex Registered 8 Trademarks. 9 10 K. Defendant is not now, nor has he ever been associated, affiliated or connected with or endorsed or sanctioned by Rolex. 11 L. Rolex has gone to great lengths to protect its name and enforce its trademarks. 12 M. Rolex has no adequate remedy at law. 13 N. Defendant agrees that the amount in controversy in this action is greater than $75,000. 14 O. Defendant’s acts constitute willful trademark counterfeiting in violation of Section 32 of 15 the Lanham Act, 15 U.S.C. § 1114. 16 P. Defendant’s acts constitute willful trademark infringement in violation of Section 32 of 17 the Lanham Act, 15 U.S.C. §1114. 18 II. ORDER AND INJUNCTION 19 It is hereby ORDERED and adjudged that: 20 1. Defendant, his agents, servants, employees, attorneys and all persons acting in concert 21 and participation with him, and his successors and assigns, jointly and severally be and hereby are, 22 permanently restrained and enjoined from: 23 (a) using any reproduction, counterfeit, copy, or colorable imitation of the Rolex 24 Registered Trademarks to identify any goods or the rendering of any services not authorized by 25 Rolex; 26 27 28 -3[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC 1 (b) engaging in any course of conduct likely to cause confusion, deception or mistake, or 2 injure Rolex’s business reputation or weaken the distinctive quality of the Rolex Registered 3 Trademarks, Rolex’s name, reputation or goodwill; 4 (c) using a false description or representation including words or other symbols tending to 5 falsely describe or represent his unauthorized goods as being those of Rolex or sponsored by or 6 associated with Rolex and from offering such goods in commerce; 7 (d) further infringing or diluting the Rolex Registered Trademarks by manufacturing, 8 producing, distributing, circulating, selling, marketing, offering for sale, advertising, promoting, 9 displaying or otherwise disposing of any products not authorized by Rolex bearing any simulation, 10 reproduction, counterfeit, copy or colorable imitation of the Rolex Registered Trademarks; 11 (e) using any simulation, reproduction, counterfeit, copy or colorable imitation of the 12 Rolex Registered Trademarks in connection with the promotion, advertisement, display, sale, offering 13 for sale, manufacture, production, circulation or distribution of any unauthorized products in such 14 fashion as to relate or connect, or tend to relate or connect, such products in any way to Rolex, or to 15 any goods sold, manufactured, sponsored or approved by, or connected with Rolex; 16 (f) making any statement or representation whatsoever, or using any false designation of 17 origin or false description, or performing any act, which can or is likely to lead the trade or public, or 18 individual members thereof, to believe that any services provided, products manufactured, 19 distributed, sold or offered for sale, or rented by Defendant are in any way associated or connected 20 with Rolex, or is provided, sold, manufactured, licensed, sponsored, approved or authorized by 21 Rolex; 22 (g) engaging in any conduct constituting an infringement of any of the Rolex Registered 23 Trademarks, of Rolex’s rights in, or to use or to exploit, said trademark, or constituting any 24 weakening of Rolex’s name, reputation and goodwill; 25 (h) using or continuing to use the Rolex Registered Trademarks or trade names in any 26 variation thereof on the Internet (including but not limited to any postings on the website 27 www.craigslist.org, in the text of a website, as a domain name, or as a keyword, search word, 28 -4[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC 1 metatag, or any part of the description of the site in any submission for registration of any Internet 2 site with a search engine or index) in connection with any goods or services not directly authorized 3 by Rolex; 4 (i) hosting or acting as Internet Service Provider for, or operating or engaging in the 5 business of selling any website or other enterprise that offers for sale any products bearing the Rolex 6 Registered Trademarks; 7 (j) acquiring, registering, maintaining or controlling any domain names that include the 8 ROLEX trademark or any of the other Rolex Registered Trademarks or any marks confusingly 9 similar thereto, activating any website under said domain names, or selling, transferring, conveying, 10 11 12 13 or assigning any such domain names to any entity other than Rolex; (k) using any e-mail addresses to offer for sale any nongenuine products bearing counterfeits of the Rolex Registered Trademarks; and (l) effecting assignments or transfers, forming new entities or associations or utilizing any 14 other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in 15 subparagraphs (a) through (l). 16 2. In the event that Defendant is ever found by a court of competent jurisdiction, after notice 17 and opportunity to be heard, to be in violation of this Final Judgment the parties agree that (a) Rolex will 18 be entitled to all normal relief which it may request from the court; and (b) Rolex will be entitled to 19 recover any and all future and additional damages, fees and costs incurred by Rolex due to Defendant’s 20 violation of this Final Judgment, and judgment shall be entered against Defendant in that full amount. 21 3. The Court shall retain jurisdiction for the purpose of making any further orders necessary 22 or proper for the construction, implementation or modification of this Final Judgment, the enforcement 23 thereof and the punishment of any violations thereof. 24 25 26 27 4. Any act by Defendant in violation of the terms or conditions of this Final Judgment may be considered and prosecuted as contempt of this Court 5. This Final Judgment shall be binding upon and shall inure to the benefit of the parties and their respective heirs, successors and assigns, and acquiring companies. 28 -5[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC 1 The Court expressly determines that there is no just reason for delay in entering this judgment, 2 and pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court directs entry of judgment 3 against Defendant. execution by the Court. 6 D R DER E S SO O IT I _____________________________________ Hon. Edward M. Chen United States District Judgeen . Ch dward M Judge E 10 R NO 11 TH 12 ER 13 R NI A 9 11/6 DATED: _____________, 2014 UNI T ED 8 S IT IS SO ORDERED AND ADJUDGED: RT U O 7 S DI STRI CT TE C TA FO 5 This Final Judgment shall be deemed to have been served upon Defendant at the time of its A LI 4 N F D I S T I CT O R C 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -6[PROPOSED] FINAL JUDGMENT UPON CONSENT AND PERMANENT INJUNCTION CASE NO. C 14-03589 EMC
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