Abercrombie & Fitch Trading Co. v. Abercrombiesirelands.com et al, No. 0:2017cv61810 - Document 7 (S.D. Fla. 2017)
Court Description: ORDER granting 5 Ex Parte Temporary Restraining Order and Setting Hearing. Preliminary Injunction Hearing set for 10/13/2017 08:30 AM in Miami Division before Judge Robert N. Scola Jr. Signed by Judge Robert N. Scola, Jr. on 9/20/2017. (jle)
Abercrombie & Fitch Trading Co. v. Abercrombiesirelands.com et al Doc. 7 United States District Court for the Southern District of Florida Abercrombie & Fitch Trading Co., Plaintiff, v. Abercrombiesirelands.com, and others, Defendants. ) ) ) ) ) ) ) Case No. 17-61810-CIV-SCOLA Order Granting Ex Parte Temporary Restraining Order and Setting Hearing This matter is before the Court on the Plaintiff’s Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction (ECF No. 5) (the “Application for Temporary Restraining Order”). Plaintiff, Abercrombie & Fitch Trading Co. (“Plaintiff”) moves ex parte for entry of a temporary restraining order against the Defendants, the Individuals, Partnerships and Unincorporated Associations identified on Schedule “A” hereto (collectively “Defendants”), pursuant to 15 U.S.C. § 1116 and Fed. R. Civ. P. 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). The Court has carefully reviewed the Application for Temporary Restraining Order, the pertinent portions of the record, and is otherwise fully advised in the premises. 1. Factual Background1 The Plaintiff is the registered owner of the following trademarks on the Principal Register of the United States Patent and Trademark Office (collectively, the “Abercrombie Marks”): The factual background is taken from Plaintiff’s Complaint, Application for Temporary Restraining Order, and supporting evidentiary submissions. 1 Dockets.Justia.com Trademark ABERCROMBIE & FITCH abercrombie Registration Registration Number Date 0,951,410 2,305,464 Class / Goods IC 025 - men's and women's clothing and footwear-namely January 23, pants, shirts, skirts, jackets, 1973 coats, gloves, mittens, hats, underwear, shoes, belts, caps. January 4, 2000 IC 025 - Clothing, namely, coats, jackets, knit shirts, woven shirts, t-shirts, shirts, underwear, pants, jeans, 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, 2001 IC 018 - handbags, tote bags and travel bags. IC 025 - clothing, namely, tshirts, sweatshirts, sweatpants, jeans, sandals, visors, tank tops, swimwear, bikinis and camisoles. A&F 2,530,664 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, January 15, footwear, sweaters, vests, coats, 2002 jackets, scarves. IC 035 - retail personal care product and clothing store services and mail order catalog services featuring personal care products and clothing. HOLLISTER 2,774,426 October 21, 2003 IC 025 - clothing, namely, shirts, t-shirts, tank-tops, knit tops, woven tops, sweatshirts, sweatpants, jogging pants, swimwear, boxer shorts, pants, short pants, jeans, dresses, skirts, belts, sweaters, vests, coats, jackets, sold exclusively in applicant's stores. IC 035 - retail store services featuring clothing and personal care products provided exclusively in applicant's stores. 3,212,644 IC 025 - clothing, namely, polo shirts, sweaters, t-shirts, shirts, knit tops, woven tops, sweatshirts, sweatpants, pants, February 27, shorts, caps, hats, scarves, 2007 jackets, coats, sandals, flip flops, belts, tank tops, underwear, boxer shorts, swim suits, pajamas, sleepwear. HOLLISTER ABERCROMBIE HCO 3,310,650 3,484,799 3,529,071 October 16, 2007 IC 025 - belts; blouses; boxer shorts; camisoles; caps; coats; footwear; halter tops; hats; jackets; jeans; knit shirts; loungewear; pants; sandals; scarves; shirts; shoes; shorts; skirts; sweat pants; sweat shirts; sweat shorts; sweaters; swim wear; t-shirts; tank tops; underpants; undershirts; underwear. August 12, 2008 IC 025 - coats; jackets; knit shirts; shirts; t-shirts; underwear; pants; jeans; hats; shoes. IC 025 - clothing, namely, boxer shorts, caps, coats, hats, jackets, knit shirts, knit tops, loungewear, pants, shirts, November 4, slacks, sweat pants, sweat 2008 shirts, t-shirts and underwear. IC 035 - retail store services and on-line retail services featuring clothing. 3,745,497 February 2, 2010 IC 025 – clothing, namely, blouses, boxer shorts, camisoles, caps, coats, dresses, footwear, hats, jackets, jeans, knit shirts, knit tops, loungewear, pajamas, pants, scarves, shirts, shorts, skirts, sleepwear, sweat pants, sweat shirts, sweaters, swim wear, tshirts, tank tops, undershirts, underwear and vests, all sold exclusively through applicant’s Hollister stores and Hollister website. FITCH 3,827,154 3,964,371 August 3, 2010 May 24, 2011 IC 025 – Belts; Bottoms; Coats; Dresses; Footwear; Gloves; Headwear; Jackets; Leggings; Scarves; Sleepwear; Swimwear; Tops; Undergarments IC 025 - Clothing, namely, polo shirts, blouses, sweaters, tshirts, knit shirts, knit tops, sweatshirts, sweatpants, sweat suits, pants, jogging suits, jeans, shorts, skirts, caps, hats, scarves, jackets, coats, sandals, flip flops, socks, belts, tank tops, underwear, boxer shorts, swim suits, pajamas, sleepwear and thongs IC 035 - Retail store services and on-line retail store services featuring clothing, footwear, accessories, fragrances and jewelry 4,302,910 March 12, 2013 IC 025 - Bottoms; Sleepwear; Undergarments; Swimwear The Abercrombie Marks are used in connection with the manufacture and distribution of high quality goods in the categories identified above. (See Declaration of Seth Wood in Support of Plaintiff’s Application for Temporary Restraining Order (“Wood Decl.”) ¶ 4, ECF No. 5-1.) The Defendants, through the fully interactive, commercial Internet websites operating under the domain names identified on Schedule “A” hereto (collectively, the “Subject Domain Names”), have advertised, promoted, offered for sale, or sold goods bearing what Plaintiff has determined to be counterfeits, infringements, reproductions or colorable imitations of the Abercrombie Marks. (See Wood Decl. ¶¶ 9-12; see also relevant web pages from Defendants’ Internet websites operating under the Subject Domain Names attached as Composite Exhibit 2 to the Compl.) Although each Defendant may not copy and infringe each of the Plaintiff’s trademarks for each category of goods protected, the Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the trademarks at issue. (See Wood Decl. ¶¶ 10-12.) The 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 Wood Decl. ¶¶ 9-10, 12.) The Plaintiff's representative reviewed and visually inspected the items bearing the Abercrombie Marks offered for sale through the Defendants’ Internet websites operating under the Subject Domain Names and determined the products offered for sale were non-genuine, unauthorized versions of the Plaintiff’s products. (See id. at ¶¶ 10-12.) 2. Legal Standard To obtain a temporary restraining order, 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) (per curiam); 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. Bhd. of Teamsters & Auto Truck Drivers Local No. 70 of Alameda Cnty, 415 U.S. 423, 439 (1974). 3. Analysis The declarations the Plaintiff submitted in support of its Application for Temporary Restraining Order support the following conclusions of law: A. The Plaintiff has a very strong probability of proving at trial that consumers are likely to be confused by the Defendants’ advertisement, promotion, sale, offer for sale, or distribution of products bearing counterfeits, reproductions, or colorable imitations of the Abercrombie Marks, and that the products the Defendants are selling and promoting are copies of the Plaintiff's products that bear copies of the Abercrombie Marks. B. Because of the infringement of the Abercrombie Marks, the 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 the Plaintiff’s Complaint, Application for Temporary Restraining Order, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to the Plaintiff and to consumers before the Defendants can be heard in opposition unless the Plaintiff’s request for ex parte relief is granted: 1. The Defendants own or control Internet websites, domain names, or businesses which advertise, promote, offer for sale, or sell products bearing counterfeit and infringing trademarks in violation of the Plaintiff's rights; 2. There is good cause to believe that more counterfeit and infringing products bearing the 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 the Plaintiff may suffer loss of sales for its genuine products; and 3. There is good cause to believe that if the Plaintiff proceeds on notice to the Defendants of this Application for Temporary Restraining Order, the Defendants can easily and quickly transfer the registrations for many of the domain names at issue in this action, or modify registration data and content, change hosts, and redirect consumer traffic to other websites, thereby thwarting the Plaintiff’s ability to obtain meaningful relief; C. The balance of potential harm to the Defendants in restraining their trade in counterfeit and infringing branded products if a temporary restraining order is issued is far outweighed by the potential harm to the 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 temporary restraining order to protect the Plaintiff’s trademark interests and protect the public from being defrauded by the palming off of counterfeit products as the Plaintiff’s genuine products. 4. Conclusion For the foregoing reasons, it is ordered and adjudged that the Plaintiff’s Application for Temporary Restraining Order (ECF No. 5) is hereby 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 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 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 the Abercrombie 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 Abercrombie Marks, or any confusingly similar trademarks. 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 the use of the Abercrombie Marks or any confusingly similar trademarks, on or in connection with all Internet websites, domain names, or businesses 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 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), from 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 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. The domain name registrars for the Subject Domain Names are directed to transfer to the Plaintiff’s counsel, for deposit with this Court, domain name certificates for the Subject Domain Names; 6. Upon the 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 are ordered to disclose to the Plaintiff the true identities and contact information of those registrants; 7. Upon entry of this Order, the Plaintiff shall provide a copy of the Order by email to the registrar of record for each of the Subject Domain Names. Upon receipt of the Order, the registrar of record for each of the Subject Domain Names shall immediately lock each of the Subject Domain Names; shall notify each registrant of record of the Order; and shall 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, the Plaintiff shall also provide notice and a copy of this Order to the registrant for each Subject Domain Name via email to the email address provided as part of the domain registration data for each of the Subject Domain Names identified in the Application for Temporary Restraining Order. If an email address was not provided as part of the domain registration data for a Subject Domain Name, the Plaintiff shall provide notice and a copy of this Order to the operators of the Internet websites via an onsite email address or online submission form provided on the Internet websites operating under such Subject Domain Names. Forty-eight (48) hours after emailing this Order to the registrars of record and the registrants, the Plaintiff shall provide a copy of this Order to the registrars and the registries for the Subject Domain Names for the purposes described in Paragraph 8, below; 8. The domain name registrars for the Subject Domain Names shall immediately assist in changing the registrar of record for the Subject Domain Names, to a holding account with a registrar of the Plaintiff’s choosing (the “New Registrar”), excepting any such domain names which such registrars have been notified in writing by the Plaintiff have been or will be dismissed from this action, or as to which the 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 toplevel 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 registrar of record for the Subject Domain Names to a holding account with the New Registrar, excepting any such domain names which such registries have been notified in writing by the Plaintiff have been or will be dismissed from this action or as to which the Plaintiff has withdrawn its request to immediately transfer such domain names. Upon the change of the registrar 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/Acxe70/index.html whereon copies of the Complaint, this Order, and all other documents on file in this action shall be 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 shall be displayed. After the New Registrar has effected this change, the Subject Domain Names shall be placed on lock status, preventing the modification or deletion of the domains by the New Registrar or Defendants; 9. Each Defendant shall 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; 10. This Order shall remain in effect until the date for the ruling 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; 11. This Order shall apply to the 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 Defendants for the purpose of counterfeiting the Abercrombie Marks or unfairly competing with the Plaintiff on the World Wide Web; 12. As a matter of law, this Order shall no longer apply to any Defendant or associated domain name dismissed from this action or as to which the Plaintiff has withdrawn its request for a temporary restraining order; 13. Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), the 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 Defendants may be entitled for a wrongful injunction or restraint, during the pendency of this action, or until further Order of the Court. The Plaintiff shall post the bond prior to requesting the registry to change the registrar of record for the Subject Domain Names; 14. A hearing is set before this Court in the United States Courthouse located at 400 North Miami Avenue, Miami, Florida, 33128, Courtroom 12-3, on October 13, 2017, at 8:30 a.m., at which time the 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 the Plaintiff’s requested preliminary injunction; 15. The Plaintiff shall serve a copy of the Complaint, the Application for Temporary Restraining Order, and this Order on each Defendant by e-mail as described above, and by posting a copy of the Complaint, the Application for Temporary Restraining Order, this Order, and all other pleadings and documents filed in this action on the website located at http://servingnotice.com/Acxe70/index.html within forty-eight (48) hours of control of the 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. The Plaintiff shall continue to provide notice of these proceedings and copies of the documents on file in this matter to the Defendants by regularly updating the website located at http://servingnotice.com/Acxe70/index.html, or by other means reasonably calculated to give notice which is permitted by the Court; 16. Any response or opposition to the Plaintiff’s Motion for Preliminary Injunction must be filed and served on the Plaintiff’s counsel by October 10, 2017, and filed with the Court, along with Proof of Service. The above dates may be revised upon stipulation by all parties and approval of this Court. The 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), Fed. R. Civ. P. 65, 28 U.S.C. § 1651(a), and this Court’s inherent authority. 17. Upon entry of this Order, the Clerk is directed to unseal the Plaintiff’s Ex Parte Application for Entry of Temporary Restraining Order (ECF No. 5) and related attachments. Done and ordered at Miami, Florida, on September 20, 2017. ________________________________ Robert N. Scola, Jr. United States District Judge SCHEDULE “A” DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME Defendant Number 1 1 2 2 2 2 3 3 3 3 3 3 3 4 4 4 4 4 4 4 4 4 5 5 5 6 6 6 7 7 7 7 7 8 Subject Domain Name abercrombiesirelands.com thebielbymill.co.uk adampiccin.com circledoc.com foreverflowerz.com saralandas.com adayatthebeachat42.com centurionfellowship.com enjoyrrhh.com gus-myers.com infocabello.com josehermo.com kensmusclecars.com anolivedaily.com biofincamontefrio.com chabadgash.com csv2sql.com gelisimaikido.com missallyb.com pustasarim.com unbiased-audio.com bluegekkophoto.com balesavenue.com collegeparksunoco.com judyclarkeflowers.com baseballwhiz.com renewal-coupons.com adam2inc.com bearrubmassage.com laroyaholding.com morrisvillefirst.com swedwell.com wildkatphoto.com beinghumanyoga.com 8 8 9 10 10 11 11 11 11 12 12 12 13 14 14 14 15 15 15 15 15 16 16 17 17 17 18 18 18 18 18 19 19 19 19 19 19 19 chockyhendreth.com m-crecruitment.com bestpricefashionbrands.com blanquinegra.com kate-mara.us bonaire-beaches.com bprocs.com cantbuytomorrow.com prestamix.com bonoparroquial.com dylanandandy.com humbleliquorstore.com byronrice.com cavudining.com funny-hobby.com hobbynsport.com cftc-citroen-suc.com cottageindustriesonline.com melitopolcity.com reinertleprince.com transports-abrial.com championsgatewaygroup.com firstgleammarketing.com chironcoleweddings.com clip2be.com sustainableimaging.com christmassongstories.com errachidia10km.com forodeoportunidades.com latiendadejesus.com pykemessenger.com clickerhappiness.com cmi-eu.com coleccionlcde.com crossfityorkme.com jackparchman.com thegymonbowen.com wsidigitalpro.com 20 21 21 21 21 21 21 21 22 22 22 23 24 24 24 24 25 25 25 26 26 26 26 26 26 26 26 26 26 26 26 26 26 26 27 27 27 28 clothes-outletstore.com clubhotelmontreal.com dancestarmickey.com dietproteica.com ogeditor.com sabongnow.com viveksp.com palawanelnido.com coreenecollinshair.com seanreyesmusic.com tanzmentalcoach.com crossfitpoole.com dieta-acai-berry.com johnnysbarmercer.com vukovar-info.com maloneswrecker.com dietmoinhanh.com ecoandlogicesco.com freinmoteur.com edison83.com edsoncanoe.com happyfantickets.com fanretsu.com juegosdepapalouie.com nodame-music.com pawnmartonline.com hangitwright.com sherylyeagerart.com joannalovesfashion.com ktatkd.com libertyesa.com thefloodcleanupteams.com hotelchennaipalace.com poljoprivredanovoselo.com elevationcoaches.com lubbockrealtyonline.com top20videospain.com epplastics.com 29 30 31 32 32 32 33 33 33 33 33 34 35 35 36 36 36 36 37 37 37 37 38 39 39 40 41 42 42 42 43 44 45 45 46 47 48 49 fisherblogs.com footywallpapershd.com freekhoj.com frenchammer.com heightsshowcase.com start-upvisa.com goldfacedbetty.com mt-enkayaks.com ziandoball.com a1windowservice.com gtc-engraveit.com green-and-thrifty.com insidejokeshow.com thequiltingbookclub.com jumpforjoytahoe.com malerbetrieb-droese.com sayerkaucuk.com waterbypuritii.com kinvarabeautystudio.com magicna-zivaograda.com morii-mokei.com 30aniversarioivomec.com lowpricesfashion.com modeetcompagnie.com primal-parenting.com mylovelydresser.com pascal-bejeannin.com procyonsystem.com travelkolanta.com xtraingresos.com rudymentaire.com ssd-test.com theottimo.com tillthelastroom.com trade999.top unimogilev.com villagedeliandgrill.com accringtonroaddental.co.uk 50 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 boardgamebeastro.com buscamosafrancisco.com capturedwanderlust.com cervezasmayos.com egarri.com fotodued.com freedomyoga4all.com grogreenhouses.com longoservices.com metatea.co.uk nerakhoon.com pellerinstubular.com pictural.co.uk planetainformativo.com revista-temas.com signguysrc.com sweets2you.co.uk tompowersmusic.com toursbyq.com travaux-publics-47.com hollister-abercrombiefitch.fr
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