Abercrombie & Fitch Trading Co. v. 7starzone.com et al, No. 0:2014cv60087 - Document 9 (S.D. Fla. 2014)
Court Description: ORDER granting 5 Motion for Temporary Restraining Order, AND SCHEDULING HEARING on 2/7/14 at 10:00 a.m. Signed by Judge Marcia G. Cooke on 1/31/2014. (tm)
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Abercrombie & Fitch Trading Co. v. 7starzone.com et al Doc. 9 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No. 14-60087-CIV-COOKE/TURNOFF ABERCROMBIE & FITCH TRADING CO., Plaintiff, vs. 7STARZONE.COM, et al., Defendants. ____________________________________/ ORDER GRANTING PLAINTIFF’S EX PARTE APPLICATION FOR ENTRY OF TEMPORARY RESTRAINING ORDER THIS MATTER is before the me on Plaintiff’s Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction against Defendants, pursuant to 15 U.S.C. § 1116 and Federal Rule of Civil Procedure 65 and The All Writs Act, 28 U.S.C §1651(a), for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, and 1125(a) and (d) (“Ex Parte Application”). (ECF No. 5). I have reviewed the Ex Parte Application, the attachments thereto, the record, and the relevant legal authority. Because Plaintiff has satisfied the requirements for the issuance of a temporary restraining order, Plaintiff’s Application for Temporary Restraining Order (ECF No. 5) is granted for the reasons discussed herein. 1 Dockets.Justia.com I. 1. FACTUAL BACKGROUND1 Plaintiff Abercrombie & Fitch Trading Co. is the owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office (collectively, the “Abercrombie Marks”): Trademark ABERCROMBIE & FITCH abercrombie Registration Number 0,951,410 2,305,464 Registration Date Class / Goods JANUARY 23, 1973 IC 025 - men's and women's clothing and footwear-namely pants, shirts, skirts, jackets, coats, gloves, mittens, hats, underwear, shoes, belts, caps. IC 025 - Clothing, namely, coats, jackets, knit shirts, woven shirts, tJANUARY 4, shirts, shirts, underwear, pants, jeans, 2000 hats and shoes. IC 035 - Retail clothing store services IC 003 - personal care products, namely, perfume. IC 014 - jewelry, namely, necklaces and bracelets. ABERCROMBIE & FITCH 2,500,146 OCTOBER 23, IC 018 - handbags, tote bags and 2001 travel bags. IC 025 - clothing, namely, t-shirts, sweatshirts, sweatpants, jeans, sandals, visors, tank tops, swimwear, bikinis and camisoles. 1 This factual background is taken from Plaintiff’s Complaint (ECF No. 1), Plaintiff’s Ex Parte Application (ECF No. 5), and supporting evidentiary submissions. Plaintiff filed declarations and exhibits annexed thereto in support of its Ex Parte Application for Temporary Restraining Order. The declarations are available in the docket at the following entries: Declaration of Brandon Scott (ECF No. 5-1) and Declaration of Stephen M. Gaffigan (ECF No. 5-4). 2 A&F 2,530,664 JANUARY 15, 2002 IC 025 - clothing, namely, hats, caps, shirts, t-shirts, tank tops, knit tops, woven tops, halter tops, sweatshirts, sweatpants, underwear, boxer shorts, pants, short pants, jeans, skirts, footwear, sweaters, vests, coats, jackets, scarves. IC 035 - retail personal care product and clothing store services and mail order catalog services featuring personal care products and clothing. 3,212,644 February 27, 2007 IC 025 - clothing, namely, polo shirts, sweaters, t-shirts, shirts, knit tops, woven tops, sweatshirts, sweatpants, pants, shorts, caps, hats, scarves, jackets, coats, sandals, flip flops, belts, tank tops, underwear, boxer shorts, swim suits, pajamas, sleepwear. IC 035 - retail store services, and online retail store services featuring clothing, footwear, fashion accessories, fragrances and jewelry. HOLLISTER ABERCROMBIE 3,310,650 IC 025 - belts; blouses; boxer shorts; camisoles; caps; coats; footwear; halter tops; hats; jackets; jeans; knit shirts; loungewear; pants; sandals; OCTOBER 16, scarves; shirts; shoes; shorts; skirts; 2007 sweat pants; sweat shirts; sweat shorts; sweaters; swim wear; t-shirts; tank tops; underpants; undershirts; underwear. 3,484,799 IC 025 - coats; jackets; knit shirts; AUGUST 12, shirts; t-shirts; underwear; pants; 2008 jeans; hats; shoes. 3 HCO 3,529,071 IC 025 - clothing, namely, boxer shorts, caps, coats, hats, jackets, knit shirts, knit tops, loungewear, pants, NOVEMBER shirts, slacks, sweat pants, sweat 4, 2008 shirts, t-shirts and underwear. IC 035 - retail store services and online retail services featuring clothing. (See Declaration of Brandon Scott [“Scott Decl.”] at ¶ 5.) The Abercrombie Marks are used in connection with the manufacture and distribution of quality goods in the categories identified above. (See Scott Decl. at ¶ 5.) 2. The Group I Defendants, through the Internet websites operating under the domain names identified on Schedule “A” hereto (collectively, the “Group I Subject Domain Names”), have advertised, promoted, offered for sale, or sold, at least, clothing, namely t-shirts, polo shirts, sweat shirts, shirts, sweaters, sweat pants, shorts, jeans, jackets, and vests, tote bags, and caps, bearing what Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the Abercrombie Marks. (See Scott Decl. at ¶¶ 9-12; Declaration of Stephen M. Gaffigan [“Gaffigan Decl.”] at ¶ 2.) 3. Although each of the Group I Defendants may not copy and infringe each Abercrombie Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing each of the Group I Defendants has infringed, at least, one or more of the Abercrombie Marks at issue. (See Scott Decl. at ¶¶ 10-12; Gaffigan Decl. at ¶ 2 and Composite Ex. “A” thereto.) The Group I Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Abercrombie Marks. (See Scott Decl. at ¶¶ 9-10, 12.) 4. Plaintiff’s representative reviewed and visually inspected the items bearing the Abercrombie Marks offered for sale through the Internet websites operating under the 4 Group I Subject Domain Names and determined the products to be unauthorized, nongenuine versions of Plaintiff’s products. (See Scott Decl. at ¶¶ 10-12.) II. LEGAL STANDARD In order to obtain a temporary restraining order, a party must demonstrate “(1) [there is] 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) (applying the test to a preliminary injunction in a Lanham Act case). Additionally, a court may only issue a temporary restraining order without notice to the adverse party or its attorney if: (A) specific facts in an affidavit or a verified complaint clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition [and] (B) the movant’s attorney certifies in writing any efforts made to give notice and the reasons why it should not be required. FED. R. CIV. P. 65(b). Ex parte temporary restraining orders “should be restricted to serving their underlying purpose of preserving the status quo and preventing irreparable harm just so long as is necessary to hold a hearing and no longer.” Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers Local No. 70 of Alameida Cnty, 415 U.S. 423, 439, 94 S. Ct. 1113, 1124, 39 L.Ed.2d 435 (1974). III. ANALYSIS The declarations Plaintiff submitted in support of its Ex Parte Application support the following conclusions of law: 5 A. Plaintiff has a strong probability of proving at trial that consumers are likely to be confused by the Group I Defendants’ advertisement, promotion, sale, offer for sale, or distribution of clothing, namely t-shirts, polo shirts, sweat shirts, shirts, sweaters, sweat pants, shorts, jeans, jackets, and vests, tote bags, caps, and related goods bearing counterfeits, reproductions, or colorable imitations of the Abercrombie Marks, and that the products the Group I Defendants are selling or promoting are copies of Plaintiff’s products that bear copies of the Abercrombie Marks on clothing, namely t-shirts, polo shirts, sweat shirts, shirts, sweaters, sweat pants, shorts, jeans, jackets, and vests, tote bags, and caps. B. Because of the infringement of the Abercrombie 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, Ex Parte Application, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to Plaintiff and to consumers before the Group I Defendants can be heard in opposition unless Plaintiff’s request for ex parte relief is granted: 1. The Group I Defendants own or control Internet website businesses that advertise, promote, offer for sale, or sell, at least clothing, namely t-shirts, polo shirts, sweat shirts, shirts, sweaters, sweat pants, shorts, jeans, jackets, and vests, tote bags, and caps bearing counterfeit and infringing trademarks in violation of Plaintiff’s rights; 2. There is good cause to believe that more counterfeit and infringing products bearing 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 their genuine products and an unnatural erosion of the legitimate marketplace in which it operates; 6 3. There is good cause to believe that if Plaintiff proceeds on notice to the Group I Defendants on this Ex Parte Application, the Group I Defendants can easily and quickly transfer the registrations for many of the Group I 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; C. The balance of potential harm to the Group I 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 and distributor of quality products, if such relief is not issued; and D. The public interest favors issuance of the temporary restraining order in order to protect Plaintiff’s trademark interests and the public from being defrauded by the palming off of counterfeit products as genuine products of Plaintiff. IV. CONCLUSION For the foregoing reasons, it is ORDERED and ADJUDGED that Plaintiff’s Ex Parte Application for Temporary Restraining Order (ECF No. 5) is GRANTED as follows: (1) Each Group I Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any of the Group I 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 Abercrombie 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 Abercrombie Marks, or any confusingly similar trademarks; or (ii) any evidence relating to the manufacture, importation, sale, offer for sale, distribution, or transfer 7 of any products bearing the Abercrombie Marks, or any confusingly similar trademarks. (2) Each Group I Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with the any of Group I Defendants having notice of this Order shall immediately discontinue the use of the Abercrombie 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 Group I Subject Domain Names; (3) Each Group I Defendant, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any of the Group I Defendants having notice of this Order shall immediately discontinue the use of the Abercrombie 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 each Group I Defendant, including the Internet websites operating under the Group I Subject Domain Names; (4) Each Group I Defendant shall not transfer ownership of the Group I Subject Domain Names during the pendency of this Action, or until further Order of the Court; (5) The domain name Registrars for the Group I Subject Domain Names are directed to transfer to Plaintiff’s counsel, for deposit with this Court, domain name certificates for the Group I Subject Domain Names; 8 (6) Upon Plaintiff’s request, the privacy protection service for any Group I Subject Domain Names for which the Registrant uses such privacy protection service to conceal the Registrant’s identity and contact information are ordered to disclose to Plaintiff the true identities and contact information of those Registrants; (7) Upon entry of this Order, Plaintiff shall provide a copy of the Order by email to the registrar of record for each of the Group I Subject Domain Names, so that the registrar of record of each of the Group I Subject Domain Names may, in turn, notify each registrant of the Order and provide notice of the locking of the domain name to the registrant of record. After providing such notice to the registrars so the domain names may be locked, Plaintiff shall also provide notice and a copy of this Order to the registrant of each Group I Subject Domain Name via email, to the email address provided as part of the domain registration data for each of the Group I Subject Domain Names identified in the Ex Parte Application. If an email address was not provided as part of the domain registration data for a Group I Subject Domain Name, Plaintiff shall provide notice and a copy of this Order to the operators of the Internet websites via an email address and/or online submission forms provided on the Internet websites operating under such Group I Subject Domain Names. After forty-eight (48) hours have elapsed after the emailing of this Order to the registrars of record and the registrants, Plaintiff shall provide a copy of this Order to the registrars and the registries for the Group I Subject Domain Names for the purposes described in Paragraph 8, infra; (8) The domain name Registrars for the Group I Subject Domain Names shall immediately assist in changing the Registrar of record for the Group I Subject Domain Names, excepting any such domain names which such Registrars have been notified in 9 writing by Plaintiff have been or will be dismissed from this action, to a holding account with a Registrar of Plaintiff’s choosing (the “New Registrar”). 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 (or their administrators) for the Group I Subject Domain Names, within five (5) business days of receipt of this Order, shall, change or assist in changing, the Registrar of record for the Group I Subject Domain Names, excepting any such domain names which such Registries have been notified in writing by Plaintiff have been or will be dismissed from this action, to a holding account with the New Registrar. As a matter of law, this Order shall no longer apply to any Group I Defendant or associated domain name dismissed from this action. Upon the change of the Registrar of record for the Group I Subject Domain Names, the New Registrar will maintain access to the Group I 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 Group I Subject Domain Names to the following Uniform Resource Locator (“URL”) http://servingnotice.com/afserp9/index.html whereon copies of the Complaint 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 Group I 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, Temporary Restraining Order, and all other documents on file in this action are displayed. After the New Registrar has effected this change, the Group 10 I Subject Domain Names shall be placed on Lock status, preventing the modification or deletion of the domains by the New Registrar or the Group I Defendants; (9) Plaintiff may enter the Group I Subject Domain Names into Google’s Webmaster Tools and cancel any redirection of the domains that have been entered there by the Group I Defendants which redirect traffic to the counterfeit operations to a new domain name or website and thereby evade the provisions of this Order; (10) Each Group I Defendant shall preserve copies of all computer files relating to the use of any of the Group I Subject Domain Names and shall take all steps necessary to retrieve computer files relating to the use of the Group I Subject Domain Names that may have been deleted before the entry of this Order; (11) 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; (12) This Temporary Restraining Order shall apply to the Group I Subject Domain Names, associated websites, and any other domain names and websites properly brought to the Court’s attention and verified by sworn affidavit that such new domain names are being used by the Group I Defendants for the purpose of counterfeiting the Abercrombie Marks at issue in this action or unfairly competing with Plaintiff on the World Wide Web; (13) Pursuant to 15 U.S.C. § 1116(d)(5)(D), Plaintiff shall post a bond in the amount of Ten Thousand Dollars and Zero Cents ($10,000.00), as payment of damages to which the Group I Defendants may be entitled for a wrongful injunction or restraint, during the pendency of this action, or until further Order of the Court. 11 (14) A hearing shall be set before the undersigned in the United States Courthouse located at 400 North Miami Avenue, Courtroom 11-2, Miami, Florida, 33128, on February 7, 2014, at 10:00 a.m., or at such other time that this Court deems appropriate, at which time the Group I Defendants and/or any other affected persons may challenge the appropriateness of this Order and move to dissolve the same and at which time the Court will hear argument on Plaintiff’s requested preliminary injunction; (15) Plaintiff shall serve a copy of the Complaint, the Ex Parte Application, this Order, and all other pleadings and documents on file in this action on each Group I Defendant as described above and by posting copies of the Ex Parte Application and this Order on the website located at http://servingnotice.com/afserp9/index.html within fortyeight (48) hours of control of the Group I Subject Domain Names being changed to the Court via the New Registrar’s holding account, and such notice so given shall be deemed good and sufficient service thereof. Plaintiff shall continue to provide notice of these proceedings and copies of the documents on file in this matter to the Group I Defendants by regularly updating the website located at http://servingnotice.com/afserp9/index.html or by other means reasonably calculated to give notice which is permitted by the Court. (16) Any response or opposition to Plaintiff’s Motion for Preliminary Injunction must be filed and served on Plaintiff’s counsel forty-eight (48) hours prior to the hearing and filed with the Court, along with Proof of Service. Plaintiff shall file any Reply Memorandum twenty-four (24) hours prior to the hearing. The above dates may be revised upon stipulation by all parties and approval of this Court. The Group I Defendants are hereby on notice that failure to appear at the hearing may result in the imposition of a 12 preliminary injunction against them pursuant to 15 U.S.C. § 1116(d), The All Writs Act, 28 U.S.C. §1651(a), Fed. R. Civ. P. 65, and this Court’s inherent authority. DONE and ORDERED in Miami, Florida, this 31ST day of January 2014. Copies furnished to: William C. Turnoff, U.S. Magistrate Judge Counsel of record 13 SCHEDULE “A” DEFENDANTS BY SUBJECT DOMAIN NAMES AND DEFENDANT NUMBER Defendant Number 1 2 3 4 5 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 26 27 28 29 30 31 32 33 34 35 Domain Name 7starzone.com 998good.com abercrombie-1892.co.uk abercrombieandfitchcybermondayssale.com abercrombieandfitch-ireland.org pharmaciedesjardins.com abercrombieandfitchirelandonline.com abercrombieandfitchoutlet.net abercrombieandfitchoutlet.nl abercrombieandfitchukoutlet.com abercrombieclothing.co.uk abercrombiedk.com abercrombiefitchdesign.co.uk abercrombie-fitch-ireland.com abercrombiefitchjacket.com abercrombiefitcho4us.com abercrombie-fitch-outlet.org abercrombiefitchsukoutlet.co.uk abercrombieindublin.org abercrombieirelandonline.net abercrombieirelandsale.net abercrombienfitchirelandsale.com abercrombieoutleteuk.co.uk abercrombieoutletsales.org abercrombieoutletusa4s.com abercrombies.nl abercrombieshopusa.com abercrombiestoreusa.com abercrombieukshops.co.uk abercrombieusa1892.com abercrombievip.co.uk abercrombiewholesale.net abercrombiieandfitch.org abrombeoutletzousus.com adisportstyle.com af1892.co.uk afbrand.ca 14 36 37 38 39 40 41 43 44 45 46 47 48 49 50 51 52 53 55 56 57 58 59 60 61 62 63 64 65 66 66 67 68 68 69 70 71 72 73 74 74 75 afcoupon.com afonlineoutlet.com afoutletuscheap.com afukoutletshop.com anfcasual.com bestclothingamerica.com blackfridayabercrombieandfitch.com brandeasygo.com brandsuitshop.com brdtopclothes.net buysoonfashion.com cheapabercrombieandfitchireland.com cheapabercrombieuksale.co.uk cheap-hollisteroutlet.com cheapjordansx.com cheapukabercrombiefitchoutlet.com clothesbase.com dayhug.net ecdrop.co ecdrop.net ecsilkroad.com educationtechnologypartners.com evipoutlet.com fashiononlinebox.com firstclothes.co.uk fitchinbox.co.uk fitchoutletcanada.org fjktjt.com goppzshop.com louisfr.com gothollister.com goukaf.org goukabercrombie.org hcoukoutletsale.co.uk hollister-1922.co.uk hollisterclothings.com.au hollistercoutletsale.co.uk hollisterforcheap.com hollisterfrancecomagasin.com hollisterfrance1magasin.com hollisterfrancemagasine.fr 15 76 77 78 79 80 81 82 83 84 84 85 86 87 88 89 90 91 91 92 92 93 94 96 96 97 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112 112 hollisterinireland.net hollisterjacketssale.com hollisterjeansus.com hollistermuk.com hollisteroutletonlineuk.co.uk hollisteroutletsale-uk.com hollisteroutletstorecouk.com hollisteroutletusa4s.com hollisterr1922.co.uk solarpanelssuffolk.co.uk hollisterroutlet.co.uk hollistersaledublin.com hollistersfr.com hollistershoponline.com hollistersitoufficiale4it.com hollisterukmallshop.me.uk hollistesalelondon.co.uk hollisterukclothings.co.uk hollistukoutlet.co.uk hollistukoutlets.co.uk hooutletuk.com hopmy.com iabercrombieandfitchireland.com irelandabercrombieandfitchsale.com iclothingshoeschina.org igotoshopping.com incheapstore.com kikipolo.com lisasaler.com marcareplica.com newabercrombieoutlet.com officialhollistershop.com omelead.com onlineabercrombiesale.co.uk onlineunites.com ours-fashion.com outletabercrombieandfitch.co.uk outletabercrombieandfitch.com outlet-af.com ppfashiontrade.net buymoreclothing.com 16 113 114 114 115 116 117 118 119 120 121 122 123 124 125 126 127 128 replicaswholesales.com safelawnsblog.co.uk ipetz.co.uk saleabercrombiefitchaustralia.com sellingplaza.com shoeswholesaleprice.com shopabercrombiehoodies.com spring-shopping.com stm-polos.com stm-world.com toppricemall.com uk-abercrombiefitch.com u-shop.co.uk wholesalerofchina.net worthwholesaler.com worthyproducts.com yourshug.com 17
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