LOUIS VUITTON MALLETIER v. aaalvsale.com et al, No. 0:2021cv60790 - Document 26 (S.D. Fla. 2021)
Court Description: ORDER granting 25 Motion for Entry of Final Default Judgment. Signed by Judge Beth Bloom on 5/28/2021. See attached document for full details. (mc)
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LOUIS VUITTON MALLETIER v. aaalvsale.com et al Doc. 26 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No. 21-cv-60790-BLOOM/Valle LOUIS VUITTON MALLETIER, Plaintiff, v. AAALVSALE.COM, et al., Defendants. _____________________________/ ORDER ON MOTION FOR ENTRY OF FINAL DEFAULT JUDGMENT THIS CAUSE is before the Court upon Plaintiff’s Louis Vuitton Malletier (“Plaintiff”), Motion for Entry of Final Default Judgment Against Defendants, ECF No. [25] (“Motion”), filed on May 27, 2021. A Clerk’s Default was entered against Defendants on May 21, 2021, ECF No. [23], as Defendants failed to appear, answer, or otherwise plead to the Complaint, ECF No. [1], despite having been served. See ECF No. [17]. The Court has carefully considered the Motion, the record in this case, the applicable law, and is otherwise fully advised. For the following reasons, Plaintiff's Motion is GRANTED. I. INTRODUCTION Plaintiff sued Defendants for trademark counterfeiting and infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114; false designation of origin under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); cybersquatting under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(d); common-law unfair competition; and common-law trademark infringement. The Complaint alleges that Defendants are promoting, advertising, distributing, offering for sale and selling goods bearing and/or using counterfeits and confusingly similar imitations of Plaintiff’s registered trademarks within the Southern District of Florida through the fully interactive commercial Dockets.Justia.com Case No. 21-cv-60790-BLOOM/Valle Internet websites and supporting domains operating under their domain names identified on Schedule “A” attached to Plaintiff’s Motion for Entry of Final Default Judgment (the “Subject Domain Names”). See ECF No. [25] at 16-21. Plaintiff further asserts that Defendants’ unlawful activities have caused and will continue to cause irreparable injury to Plaintiff because Defendants have (1) deprived Plaintiff of its right to determine the manner in which its trademarks are presented to the public through merchandising; (2) defrauded the public into thinking Defendants’ goods are goods authorized by Plaintiff; (3) deceived the public as to Plaintiff’s association with Defendants’ goods and the websites that market and sell the goods; and (4) wrongfully traded and capitalized on Plaintiff’s reputation and goodwill, as well as the commercial value of Plaintiff’s trademarks. In its Motion, Plaintiff seeks the entry of default final judgment against Defendants1 in an action alleging trademark counterfeiting and infringement, false designation of origin, cybersquatting, common-law unfair competition, and common-law trademark infringement.2 Plaintiff further requests that the Court (1) enjoin Defendants from producing or selling goods that infringe its trademarks; (2) disable, or at Plaintiff’s election, transfer the domain names at issue to Plaintiff; (3) assign all rights, title, and interest, to the domain names to Plaintiff and permanently delist or deindex the domain names from any Internet search engines; (4) permanently cease all services to Defendants in connection with the domain names at issue; and (5) permanently close the domain registration accounts in which the domain names at issue are located. 1 Defendants are the Individuals, Partnerships, and Unincorporated Associations identified on Schedule “A” of Plaintiff’s Motion, and Schedule “A” of this Order. See ECF No. [25] at 16-21. 2 Louis Vuitton chooses not to seek an award of statutory damages in connection with its claims. 2 Case No. 21-cv-60790-BLOOM/Valle Pursuant to Federal Rule of Civil Procedure 55(b)(2), the Court is authorized to enter a final judgment of default against a party who has failed to plead in response to a complaint. “[A] defendant’s default does not in itself warrant the court entering a default judgment.” DirecTV, Inc. v. Huynh, 318 F. Supp. 2d 1122, 1127 (M.D. Ala. 2004) (quoting Nishimatsu Constr. Co., Ltd. v. Houston Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975)). Granting a motion for default judgment is within the trial court’s discretion. See Nishimatsu, 515 F.2d at 1206. Because the defendant is not held to admit facts that are not well pleaded or to admit conclusions of law, the court must first determine whether there is a sufficient basis in the pleading for the judgment to be entered. See id.; see also Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987) (“[L]iability is well-pled in the complaint, and is therefore established by the entry of default. . .”). Upon a review of Plaintiff’s submissions, it appears there is a sufficient basis in the pleading for the default judgment to be entered in favor of Plaintiff. FACTUAL BACKGROUND3 II. Plaintiff Louis Vuitton Malletier is the owner of the entire right, title and interest in and to the Louis Vuitton trademarks, which are valid and registered on the Principal Register of the United States Patent and Trademark Office (the “Louis Vuitton Marks”): Trademark Registration Number 0,297,594 LOUIS VUITTON 1,045,932 Registration Date Class(es) / Relevant Goods IC 18. Trunks, valises, traveling bags, satchels, hat boxes September 20, and shoe boxes used for luggage, hand bags, and 1932 pocketbooks. August 10, 1976 IC 18. Luggage and ladies’ handbags. 3 The factual background is taken from Plaintiff’s Complaint, ECF No. [1], Plaintiff’s Motion for Entry of Final Default Judgment Against Defendants, ECF No. [25], and supporting evidentiary submissions. 3 Case No. 21-cv-60790-BLOOM/Valle 1,519,828 LOUIS VUITTON IC 18. Trunks, valises, traveling bags, satchels, hat boxes January 10, and shoe boxes used for luggage, hand bags, 1989 pocketbooks. IC 25. Clothing for men and women, namely, shawls, sashes, scarves; headgear. 1,770,131 May 11, 1993 1,794,905 IC 16. Stationery, pads of stationery, calendars, indexes for articles made for travellers, notebooks, envelopes; writing paper, office requisites in the nature of writing September 28, pads, pencil holders, pen cases, pencil cases, nibs, nibs 1993 of gold, inkwells, inkstands. IC 25. Clothing for men and women; namely belts, shawls, sashes, scarves; footwear headgear. 1,938,808 November 28, IC 14. Jewelry, watches and straps for wrist watches. 1995 IC 24. Travel blankets made of textile. 1,990,760 IC 14. Watches and straps for wrist watches. IC 16. Catalogues featuring luggage and travel accessories, bags, small leather goods, and garments; notebooks, anthologies, and pamphlets referring to travel; calendars; telephone indexes; fountain pens, ballpoint pens, nibs, covers for pocket and desk diaries, and checkbook holders. IC 18. Trunks; traveling trunks; suitcases; traveling bags; luggage; garment bags for travel; hat boxes for travel; August 6, 1996 shoe bags for travel; umbrellas; animal carriers; rucksacks; haversacks; leather or textile shopping bags; beach bags; handbags; vanity cases sold empty; attaché cases; tote bags, travel satchels; clutch bags; briefcases; wallets; pocket wallets; credit card cases; business card cases; bill and card holders; checkbook holders; key cases; change purses; briefcase-type portfolios. IC 24. Travel blankets IC 25. Shirts; sweatshirts; polo shirts; T-shirts; headwear; jackets; ties; belts; shawls; scarves. 4 Case No. 21-cv-60790-BLOOM/Valle 2,177,828 2,181,753 2,361,695 IC 14. Goods made of precious metals, namely, shoe ornaments, ornamental pins; jewelry, namely, rings, ear rings, cufflinks, bracelets, charms, necklaces; horological instruments, straps for watches, watches and wristwatches, and cases for watches. IC 18. Goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, August 4, 1998 rucksacks, hand bags, beach bags, shopping bags, shoulder bags, attaché cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, and credit card cases, umbrellas. IC 25. Clothing and underwear, namely, shirts, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, belts, shoes, boots, and sandals. IC 14. Jewelry, namely, rings, ear rings, bracelets, charms, necklaces, horological instruments, straps for watches, watches, and wrist-watches, and cases for watches. IC 18. Goods made of leather or imitations of leather are not included in other classes, namely, boxes made from leather; trunks, valises, traveling bags, luggage for travel, garment bags for travel, vanity cases sold empty, August 18, rucksacks, hand bags, beach bags, shopping bags, 1998 shoulder bags, attaché cases, briefcases, and fine leather goods, namely, pocket wallets, purses, leather key holders, business card cases, calling card cases, credit card cases, and umbrellas. IC 25. Clothing and underwear, namely, shirts, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, scarves, neckties, pocket squares, belts, shoes, boots, and sandals. IC 25. Clothing, namely, sweaters, shirts, sweatshirts, polo shirts, t-shirts, suits, waistcoats, raincoats, skirts, coats, pullovers, trousers, dresses, jackets, shawls, stoles, June 27, 2000 scarves, neckties, pocket squares, pocket handkerchief squares for wear, gloves, ties, belts, bathing suits, shoes, boots and sandals, and hats. 5 Case No. 21-cv-60790-BLOOM/Valle 2,378,388 August 22, 2000 2,399,161 October 31, 2000 2,773,107 October 14, 2003 LOUIS VUITTON 2,904,197 November 23, 2004 LOUIS VUITTON 2,909,003 December 7, 2004 LOUIS VUITTON PARIS IC 18. Goods made of leather or imitations of leather not included in other classes, namely, boxes of leather principally used for travel purposes, trunks, valises, traveling bags, * traveling sets for containing cosmetics and jewelry, * handbags, beach bags, shopping bags, shoulder bags, brief cases, pouches, fine leather goods namely, pocket wallets, purses, key cases, business card cases, credit card cases. IC 25. Clothing and underwear, namely, shirts, polo shirts, t-shirts, waistcoats, raincoats, skirts, coats, trousers, dresses, jackets, shawls, stoles, scarves, neckties, gloves, ties, belts, bathing suits, shoes, boots and sandals, hats. IC 14. Jewelry including rings, earrings, cuff links, bracelets, charms, necklaces, and medallions; horological and chronometric instruments and apparatus, namely, watches, IC 18. Travel bags, travel bags made of leather; luggage trunks and valises, garment bags for travel, vanity-cases sold empty; rucksacks, shoulder bags, handbags; attaché cases, briefcases, drawstring pouches, pocket wallets, purses, umbrellas, business card cases made of leather or of imitation leather, credit card cases made of leather or of imitation leather; key holders made of leather or of imitation leather. IC 25. Clothing, namely, shirts, T-shirts, belts, scarves, neck ties, shawls, skirts, raincoats, overcoats, trousers, jeans, pullovers, frocks, highheeled shoes, low-heeled shoes, boots, tennis shoes; hats IC 14: jewelry, namely, rings, earrings, cuff links, bracelets, charms, necklaces, (( tie pins, and medallions; keyrings made of precious metal; )) horological and chronometric instruments, namely, watches, wristwatches, (( clocks, )) (( alarm clocks; )) straps for wristwatches and watch cases. IC 009. Optical instruments and apparatus, namely, spectacles, eyeglasses, spectacle cases. IC 024. Textiles and textile goods, namely, household linen including bed [ and bath ] linen [, handkerchiefs of textile ]. 6 Case No. 21-cv-60790-BLOOM/Valle 3,107,072 3,576,404 IC 09. Spectacles, sunglasses and spectacle cases. IC 14. Jewelry, namely, rings, earrings and ear clips, cuff links, bracelets, charms, necklaces, tie pins, medallions; horological and chronometric apparatus and instruments, namely, watches, watch cases, alarm clocks; jewelry boxes of precious metal, their alloys or coated therewith. IC 18. Leather and imitation leather products, namely, traveling bags, traveling sets comprised of bags or luggage, trunks and suitcases, garment bags for travel June 20, 2006 purposes; vanity cases sold empty, rucksacks, shoulder bags, handbags, attaché cases, document wallets and briefcases made of leather, pouches made of leather, wallets, purses, key cases, business card cases, credit card cases; umbrellas. IC 25. Clothing and undergarments, namely, shirts, teeshirts, belts, scarves, neckties, shawls, skirts, raincoats, overcoats, trousers, denim trousers, dresses, jackets, sashes for wear, bathing suits, shoes, boots. IC 18: boxes of leather or imitation leather for packaging and carrying goods, trunks, suitcases, traveling sets comprised of matching luggage, traveling bags, luggage, garment bags for travel, ((vanity cases not fitted, )) February 17, toiletry cases sold empty, rucksacks, satchels, handbags, 2009 beach bags, leather shopping bags, sling bags, suit carriers, shoulder bags, waist bags, purses, travel cases, briefcases, briefcase-type portfolios, leather pouches, wallets, change purses, key cases, business card cases, calling card cases. 7 Case No. 21-cv-60790-BLOOM/Valle 4,192,541 August 21, 2012 IC 03. Soaps for personal use; perfumery; essential oils; cosmetics; creams for the hair, face, and body; lotions for the hair, face, and body; shower and bath gels; shower and bath preparations; shampoos; make-up preparations, namely, foundations, lipsticks, eye shadows, mascara, make-up powder, and nail polish. IC 09. Sunglasses; spectacles; optical lenses; spectacle cases; telephones; mobile telephones; smart phones; PC tablets; personal digital assistants; MP3 players; accessories for telephones, mobile telephones, smart phones, PC tablets, personal digital assistants, and MP3 players, namely, hands-free kits for telephones, batteries, covers, housings, façades, chargers, hand straps, and neck straps. IC 14. Jewelry; key rings of precious metal; tie pins; medallions; jewelry boxes; watches; watch bands; alarm clocks; cases for timepieces. IC 16. Printed matter, namely, pamphlets, catalogs, and books in the field of travel, luggage, luxury goods, fashion, clothing, sports, the arts; publications, namely, brochures and booklets in the field of travel, luggage, luxury goods, fashion, clothing, sports, the arts; stationery; stationery articles, namely, note pads, writing books, drawing books, calendars, agendas, notebooks, envelopes, letter paper, and index cards; covers for diaries, indexes, and pads; office requisites, namely, letter trays, paper cutters, pencils, inkstands, inkwells, paperweights, pencil holders, pen holders, writing pads, pens, balls, and nibs for pens; postcards; paper labels; newspapers; printed documents, namely, printed certificates. IC 18. Boxes of leather or imitation leather for packaging and carrying goods; traveling bags; leather traveling sets of luggage; trunks; suitcases; garment bags for travel; vanity cases sold empty; toiletry bags sold empty; backpacks; handbags; attaché cases; leather document cases; wallets; purses; leather key cases; umbrellas. IC 24. Textiles and textile goods, namely, bath linen, bed linen, table linen, towels, bed covers, textile table cloths. IC 25. Clothing, namely, underwear, shirts, tee-shirts, pullovers, skirts, dresses, trousers, coats, jackets, belts for clothing, scarves, sashes for wear, gloves, neckties, socks, bathing suits; footwear; headwear. IC 34. Cigar and cigarette cases of leather and imitation leather. 8 Case No. 21-cv-60790-BLOOM/Valle LOUIS VUITTON 4,530,921 IC 09. Optical apparatus, namely, binoculars; blank USB sticks; spectacles; sunglasses; spectacle frames; spectacle glasses; spectacle cases; accessories for telephones, mobile phones, smart phones, tablet devices, PDAs, and MP3 Players, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories. IC 16. Paper bags; boxes of cardboard or paper; cardboard and paperboard envelopes and pouches for packaging; plastic materials for packaging, namely, bags; posters; pamphlets referring to travel; postcards; catalogs featuring luggage, travel accessories, bags, small leather goods, and clothing; paper labels; trading cards; greeting cards; business cards; invitation cards; printed publications, namely, books, newspapers, leaflets, and magazines featuring luggage, travel accessories, purses, small leather goods, and clothing; bookbinding materials; printed photographs; photograph albums; stationery, namely, note pads, desk pads, writing May 13, 2014 pads, drawing pads, envelopes, note paper; calendars; pocket calendars; note books; telephone indexes; diary covers; diaries; office requisites, namely, letter trays, paper knives, ink stands, inkwells, paper weights, pencil holders, pen holders, pencil tubs, blotting pads, pencils, fountain pens, rubber erasers, pen cases; printing types; printing blocks; table linens of paper. IC 25. Clothing, namely, pullovers, vests, shirts, teeshirts, trousers, jackets, suits, coats, rain coats, waterproof jackets, waterproof pants, overcoats, parkas, skirts, dresses, pajamas, dressing gowns, nightgowns, robe, gloves, neck ties, belts for clothing, leather belts, scarves, pocket squares, sashes for wear, shawls, stockings, socks, tights, braces for clothing, suspenders, stoles, underwear, lingerie, bathing suits; headwear; shoes; slippers; boots; half-boots. IC 26. Buttons; hooks and eyes; shoe buckles; hair accessories, namely, hair pins, barrettes, hair bows, hair clips, hair bands, hair wraps; hair ornaments; brooches for clothing; clothing fasteners, namely, scarf holders. 9 Case No. 21-cv-60790-BLOOM/Valle 4,614,736 IC 09. Optical apparatus, namely, binoculars; blank USB sticks; spectacles; sunglasses; spectacle frames; spectacle glasses; spectacle cases; accessories for telephones, mobile phones, smart phones, tablet devices, PDAs, and MP3 players, namely, covers, neck straps, neck cords, and bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories. IC 16. Paper bags, boxes of cardboard or paper, cardboard and paperboard envelopes and pouches for packaging; plastic materials for packaging, namely, bags; posters; pamphlets referring to travel; postcards; catalogs featuring luggage, travel accessories, bags, small leather goods, and clothing; paper labels; trading cards; greeting cards; business cards; invitation cards; September 30, printed publications, namely, books, newspapers, 2014 leaflets, and magazines featuring luggage, travel accessories, purses, small leather goods, and clothing; bookbinding materials; printed photographs; photograph albums; stationery, namely, note pads, desk pads, writing pads, drawing pads, envelopes, note paper; calendars; pocket calendars; note books; telephone indexes; diary covers; diaries; office requisites, namely, letter trays, paper knives, ink stands, inkwells, paper weights, pencil holders, pen holders, pencil tubs, blotting pads, pencils, fountain pens, rubber erasers, pen cases; printing types; printing blocks; table linens of paper. IC 26. Buttons; hooks and eyes; shoe buckles; hair accessories, namely, hair pins, barrettes, hair bows, hair clips, hair bands, hair wraps; hair ornaments; brooches for clothing; clothing fasteners, namely, scarf holders. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶ 4; ECF No. [1-3] (containing Certificates of Registrations for the Louis Vuitton Marks at issue). The Louis Vuitton Marks are used in connection with the manufacture and distribution of high quality luxury goods in the categories identified above. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 4-5. 10 Case No. 21-cv-60790-BLOOM/Valle Defendants, through the various fully interactive,4 commercial Internet websites and supporting domains operating under the domain names identified on Schedule “A” hereto (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 Louis Vuitton Marks. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 9-11. Although each Defendant may not copy and infringe each Louis Vuitton Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the Louis Vuitton Marks at issue. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 10-11). Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Louis Vuitton Marks. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 9-11. Plaintiff’s representative reviewed and visually inspected each Defendants’ Websites, including images reflecting the various items bearing the Louis Vuitton Marks offered for sale by Defendants through the Internet websites operating under the Subject Domain Names, and/or websites to which those domain names either automatically or manually redirect, and determined the products were non-genuine, unauthorized versions of Plaintiff’s products. See Declaration of Hadrien Huet, ECF No. [6-2] at ¶¶ 10-11. 4 Plaintiff asserts multiple Defendants use some of their Subject Domain Names to act as supporting domain names to direct traffic to their fully-interactive, commercial websites, including those operating under other Subject Domain Names, from which consumers can complete purchases. See Declaration of Stephen M. Gaffigan [5-3] at ¶ 2, n.1. 11 Case No. 21-cv-60790-BLOOM/Valle III. ANALYSIS A. Claims 1. Trademark Counterfeiting and Infringement Under 15 U.S.C. § 1114 (Count I) Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides liability for trademark infringement if, without the consent of the registrant, a defendant uses “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114. In order to prevail on its trademark infringement claim under Section 32 of the Lanham Act, Plaintiff must demonstrate that (1) it had prior rights to the mark at issue; and (2) Defendants adopted a mark or name that was the same, or confusingly similar to Plaintiff’s trademark, such that consumers were likely to confuse the two. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir. 1997)). 2. False Designation of Origin Under 15 U.S.C. § 1125(a) (Count II) To prevail on a claim for false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), Plaintiff must prove that Defendants used in commerce, in connection with any goods or services, any word, term, name, symbol or device, or any combination thereof, or any false designation of origin that is likely to deceive as to the affiliation, connection, or association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval, of Defendants’ goods by Plaintiff. See 15 U.S.C. § 1125(a)(1). The test for liability for false designation of origin under 15 U.S.C. § 1125(a) is the same as for a trademark counterfeiting and infringement claim – i.e., whether the public is likely to be deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992). 12 Case No. 21-cv-60790-BLOOM/Valle 3. Cybersquatting Under 15 U.S.C. § 1125(d) (Count III) The Anticybersquatting Consumer Protection Act (“ACPA”) protects the owner of a distinctive or famous trademark from another’s bad faith intent to profit from the trademark owner’s mark by registering or using a domain name that is identical or confusingly similar to, or dilutive of, the trademark owner’s mark without regard to the goods or services of the parties. See 15 U.S.C. § 1125(d). “To prevail under the ACPA, a plaintiff must prove that (1) its mark is distinctive or famous and entitled to protection; (2) the defendant’s domain name is identical or confusingly similar to the plaintiff’s mark; and (3) the defendant registered or used the domain name with a bad faith intent to profit.” Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 F. App’x 252, 256 (11th Cir. 2006) (citing Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001)). 4. Common-Law Unfair Competition and Trademark Infringement (Counts IV and V) Whether a defendant’s use of a plaintiff’s trademarks created a likelihood of confusion between the plaintiff’s and the defendant’s products is also the determining factor in the analysis of unfair competition under Florida common law. Rolex Watch U.S.A., Inc. v. Forrester, No. 838381-Civ-Paine, 1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) (“The appropriate test for determining whether there is a likelihood of confusion, and thus trademark infringement, false designation of origin, and unfair competition under the common law of Florida, is set forth in John H. Harland, Inc. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983.)”.); see also Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) (“As a general rule . . . the same facts which would support an action for trademark infringement would also support an action for unfair competition.”). 13 Case No. 21-cv-60790-BLOOM/Valle The analysis of liability for Florida common law trademark infringement is the same as the analysis of liability for trademark infringement under § 32(a) of the Lanham Act. See PetMed Express, Inc. v. MedPets.com, Inc., 336 F. Supp. 2d 1213, 1217-18 (S.D. Fla. 2004). B. Liability The well-pled factual allegations of Plaintiff’s Complaint properly allege the elements for each of the claims described above. See ECF No. [1]. Moreover, the factual allegations in Plaintiff’s Complaint has been substantiated by sworn declarations and other evidence and establish Defendants’ liability under each of the claims asserted in the Complaint. Accordingly, default judgment pursuant to Federal Rule of Civil Procedure 55 is appropriate. C. Injunctive Relief Pursuant to the Lanham Act, a district court is authorized to issue an injunction “according to the principles of equity and upon such terms as the court may deem reasonable,” to prevent violations of trademark law. See 15 U.S.C. § 1116(a). Indeed, “[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant’s continuing infringement.” Burger King Corp. v. Agad, 911 F. Supp. 1499, 1509-10 (S.D. Fla. 1995) (citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988)). Moreover, even in a default judgment setting, injunctive relief is available. See e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222-23. Defendants’ failure to respond or otherwise appear in this action makes it difficult for Plaintiff to prevent further infringement absent an injunction. See Jackson v. Sturkie, 255 F. Supp. 2d 1096, 1103 (N.D. Cal. 2003) (“[D]efendant’s lack of participation in this litigation has given the court no assurance that defendant’s infringing activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.”). 14 Case No. 21-cv-60790-BLOOM/Valle Permanent injunctive relief is appropriate where a plaintiff demonstrates that (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) an issuance of an injunction is in the public’s interest. eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93 (2006). Plaintiff has carried its burden on each of the four factors. Accordingly, permanent injunctive relief is appropriate. Specifically, in trademark cases, “a sufficiently strong showing of likelihood of confusion . . . may by itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s Corp. v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1998); see also Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 986 (11th Cir. 1995) (“There is no doubt that the continued sale of thousands of pairs of counterfeit jeans would damage LS & Co.’s business reputation and might decrease its legitimate sales.”). Plaintiff’s Complaint alleges that Defendants’ unlawful actions have caused Plaintiff irreparable injury and will continue to do so if Defendants are not permanently enjoined. See ECF No. [1]. Further, the Complaint alleges, and the submissions by Plaintiff show, that the goods promoted, advertised, offered for sale, and sold by Defendants are nearly identical to Plaintiff’s genuine products and that consumers viewing Defendants’ counterfeit goods post-sale would actually confuse them for Plaintiff’s genuine products. See id. “Defendants’ actions are likely to cause confusion of consumers at the time of initial interest, sale, and in the post-sale setting, who will believe all of Defendants’ goods are genuine goods originating from, associated with, and/or approved by Plaintiff.” See ECF No. [1] at 27. Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Subject Domain Names because Plaintiff cannot control the quality of what appears to be its products in the marketplace. An award of monetary damages alone will not cure the injury to 15 Case No. 21-cv-60790-BLOOM/Valle Plaintiff’s reputation and goodwill that will result if Defendants’ infringing and counterfeiting actions are allowed to continue. Moreover, Plaintiff faces hardship from loss of sales and its inability to control its reputation in the marketplace. By contrast, Defendants face no hardship if they are prohibited from the infringement of Plaintiff’s trademarks, which is an illegal act. Finally, the public interest supports the issuance of a permanent injunction against Defendants to prevent consumers from being misled by Defendants’ products. See Chanel, Inc. v. besumart.com, 240 F. Supp. 3d 1283, 1291 (S.D. Fla. 2016) (“[A]n injunction to enjoin infringing behavior serves the public interest in protecting consumers from such behavior.”). The Court’s broad equity powers allow it to fashion injunctive relief necessary to stop Defendants’ infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S. 1, 15 (1971) (“Once a right and a violation have been shown, the scope of a district court’s equitable powers to remedy past wrongs is broad, for . . . [t]he essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical Co., 321 U.S. 707, 724 (1944) (“Equity has power to eradicate the evils of a condemned scheme by prohibition of the use of admittedly valid parts of an invalid whole.”). District courts are expressly authorized to order the transfer or surrender of domain names in an in rem action against a domain name. See 15 U.S.C. § 1125(d)(1)(C), (d)(2). However, courts have not limited the remedy to that context. See, e.g., Philip Morris USA v. Otamedia Ltd., 331 F. Supp. 2d 228, 230-31 (S.D.N.Y. 2004) (transferring Yesmoke.com domain name to plaintiff despite the fact that plaintiff did not own a trademark in the term “Yesmoke” and noting that 15 U.S.C. § 1125 “neither states nor implies that an in rem action against the domain name constitutes the exclusive remedy for a plaintiff aggrieved by trademark violations in cyberspace”); Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 853 (E.D. 16 Case No. 21-cv-60790-BLOOM/Valle Mich. 2006) (ordering the defendants to disclose all other domain registrations held by them and to transfer registration of a particular domain name to plaintiff in part under authority of 15 U.S.C. § 1116(a)). Defendants have created an Internet-based counterfeiting scheme in which they are profiting from their deliberate misappropriation of Plaintiff’s rights. Accordingly, the Court may fashion injunctive relief to eliminate the means by which Defendants are conducting their unlawful activities by disabling or transferring the Subject Domain Names and assigning all rights, title, and interest to the Subject Domain Names to Plaintiff, disabling, de-indexing or delisting the Subject Domain Names from any Internet search engine, permanently ceasing all services to Defendants in connection with the Subject Domain Names, including permanently deleting the Subject Domain Names from its DNS used for the DoH (1.1.1.1), and permanently closing the domain registration accounts in which the Subject Domain Names are located, where they may be disabled from further use as platforms for the sale of counterfeit goods. See ECF No. [25] at 13-14. IV. CONCLUSION Based on the foregoing, it is ORDERED AND ADJUDGED that Plaintiff’s Motion, ECF No. [25], is GRANTED against those Defendants listed in the attached Schedule “A.” Final Default Judgment will be entered by separate order. DONE AND ORDERED in Chambers at Miami, Florida, on May 28, 2021. _____________________________ BETH BLOOM UNITED STATES DISTRICT JUDGE Copies to: Counsel of Record 17 Case No. 21-cv-60790-BLOOM/Valle 18 Case No. 21-cv-60790-BLOOM/Valle SCHEDULE “A” DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME Defendant Number 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 23 23 23 23 23 24 25 26 27 28 29 30 31 32 33 Defendant / Subject Domain Dame aaalvsale.com bestlvbag.com fakeslouisvuitton.com gotlouisvuitton.com louis-sa.com louistore.ru louisvuitton24.com louisvuittonbagmall.com louisvuittonboutique.vip louisvuittoncity.com louisvuittondeal.vip louisvuittonfemme.com louisvuittonhk.com louisvuittonid.com louisvuitton-id.com louisvuittonid.shop louisvuitton-id.shop louisvuittonmalaysia.shop louisvuittonmode.com louisvuittonn.online louisvuittonn.vip louisvuitton-ph.com louisvuittonph.shop louisvuitton-ph.store louisvuittons.today louisvuittonsg.live louisvuittonsg.world louisvuittonshop.today louisvuittonphpp.com louisvuittonppi.com louisvuittonpro.com louisvuittonpurse.net louisvuittonreplicabags.org louisvuittons.shop louisvuitton-sg.com louisvuitton-sgp.com louisvuittonshop.live louisvuittonshopping.live 19 Case No. 21-cv-60790-BLOOM/Valle 34 35 36 37 38 39 40 41 42 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 43 louisvuittonsolde.com louisvuittonsuperdiscount.shop louisvuittonter.com louisvuittonv.vip louisvuittonvillage.com lvecv.com lvluxurybags.xyz replicalvsell.com replicaslouisvuitton.com luxoii.com bage.icu bag-shop.online bagsshop.icu batt.shop bbfl.icu blvck.icu finnmilesluxuryhomes.icu funko.icu geox.icu gopro.icu grih.icu jabra.icu jjre.icu kmart.icu leasetoownluxuryhomes.icu lopo.club louisvuittons-milano.icu louisvuittonsoutletonline.icu luxurybag.icu luxurybrandshop.icu luxury-shop.xyz luxury-shops.icu luxuryskinshop.icu luxury-style.icu lv-online-shop.icu maloneluxurymarketing.icu martinluxuryhomes.icu mavi.icu mcmhi.icu mmmz.icu mmxl.icu myluxury.club mytheresa.xyz 20 Case No. 21-cv-60790-BLOOM/Valle 43 43 43 43 43 43 43 43 43 43 44 45 46 47 48 49 50 51 52 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 71 72 73 74 75 newseasonbag.icu omio.icu qlly.icu qlvse.icu shophandbag.top shoppingbags.icu tradesy.top wkkj.icu xmasgift.icu yycx.icu 2020cokn.com 2020copy.com acaxro.com aeozv.com ahandbags.com aik-shop.com alexcn.shop alimorluxury.nl angelbags.info angelbags.pro asibags.club bagreplica.ru bags-bag.net bagsho.com becomebag.com brand-kingdom.com brandsindustry.net brendof-club.com buildtote.com byluxuryshopping.com chinaluxurybag.com closebags.com collectbrand.com copy432.com copymm666.com costbags.com cozaka.com crisandcoco.co criticbags.com cwen333.com deathtote.com dependbag.com desgnrbrands.nl 21 Case No. 21-cv-60790-BLOOM/Valle 76 77 78 79 80 81 82 83 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 100 101 102 103 104 105 106 106 107 108 108 108 109 110 111 112 113 114 115 discountretailbag.com doubtbags.com dresstote.com ehinoh.com ejfsbag.com ekabags.club elsebags.com equaltote.com exceptbags.com exclusivekicks.co.uk famebags.com fasbags.com fc888luxury.com giybags.club hacopy.com handbagsonlinesales.com happenbag.com hebags.club honbags.club hubags.club humanbags.com idisad.com igiwoc.com ilebags.club instockbags.com istanbulbags.com jwellis.ru kjvips.com labags.club latterbag.com lawobag.com periclone.com leibag.shop lg4e62.vip outaubags.com qg5s63.vip likelybag.com likelybags.com luiscanta.com luxbag.ru luxeborse.com luxehandbageu.com luxehandbagseu.com 22 Case No. 21-cv-60790-BLOOM/Valle 116 117 118 119 120 121 122 123 124 125 126 127 128 129 130 131 132 133 134 135 136 137 138 139 140 141 142 143 144 145 146 147 147 147 147 147 148 148 149 150 151 152 153 lux-jp.com luxmallac.com luxurybagsi.com luxurydrippers.online luxury-dupes.com mebbags.club nasbags.club ninki-111.com noticebag.com ogebags.club onbags.club otihop.com outusbags.com perfectfakehandbags.com perfectkits.club personbag.com polbags.club provebags.com raisebags.com replicabagselling.com replicapursesshop.com replicasbagsale.com replicasbagshop.com replybags.com resbags.club rwlbag.com salecabag.com saobag.com sulbags.club tihbags.club toke333.com top-qual.net topqualm.com xn--5-xz0gou.com xn--6-xz0gou.com xn--original-qk40bt8c.com tracob.online tracob.ru tutbags.club typebags.com ulebags.club underbags.com usalbags.com 23 Case No. 21-cv-60790-BLOOM/Valle 154 154 154 155 156 157 158 159 160 161 162 163 164 165 usaubags.com usfsbags.com xmwshjw.com uscabags.com usftbags.com ushotbag.com vogueaccent.com voguebrands.net vsnc333.com wabagjp.net wantmybags.com weekbags.com yayakopi.net yourfashionoutlet.us 24
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