Chanel, Inc. v. chanel255.org et al
Filing
5
Plaintiff's MOTION for Temporary Restraining Order against Defendants ( Responses due by 6/4/2012), Plaintiff's MOTION for Preliminary Injunction against Defendants by Chanel, Inc.. (Attachments: # 1 Declaration of Stephen M. Gaffigan in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, # 2 Exhibit A to Declaration of Stephen M. Gaffigan, # 3 Exhibit B to Declaration of Stephen M. Gaffigan, # 4 Declaration of Adrienne Hahn Sisbarro in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, # 5 Exhibit A to Declaration of Adrienne Hahn Sisbarro, # 6 Exhibit B to Declaration of Adrienne Hahn Sisbarro, # 7 Exhibit C to Declaration of Adrienne Hahn Sisbarro, # 8 Declaration of Eric Rosaler in Support of Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction, # 9 Exhibit A to Declaration of Eric Rosaler, # 10 Text of Proposed Order Granting Plaintiff's Ex Parte Application for Entry of Temporary Restraining Order)(Gaffigan, Stephen)
<![CDATA[
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 12-21762-CIV-ALTONAGA/SIMONTON
CHANEL, INC.,
Plaintiff,
v.
CHANEL255.ORG, et al,
Defendants.
/
ORDER GRANTING PLAINTIFF’S EX PARTE MOTION
FOR TEMPORARY RESTRAINING ORDER
THIS CAUSE came before the Court upon Plaintiff, Chanel, Inc., (“Chanel”)’s Ex Parte
Application for Entry of Temporary Restraining Order and Preliminary Injunction (the “Ex Parte
Application for TRO”) [ECF No. 5]. The Ex Parte Application for TRO asks the Court to issue a
temporary restraining order and then a preliminary injunction against individuals who operate the
websites that infringe Chanel’s trademarks and that promote and sell counterfeit Chanel goods.
Among other things, Chanel asks that the Court enjoin Defendants from producing or selling goods
which infringe its trademarks, and that the Court seize control of the domain names of the
infringing websites and redirect the web traffic searching for those domains to another site
that displays a copy of the pleadings from this case. The Court has carefully considered the Ex
Parte Application for TRO and pertinent portions of the record.
I. INTRODUCTION
Plaintiff, Chanel, is suing the Partnerships and Unincorporated Associations Identified on
Schedule A attached to Plaintiff’s Complaint [ECF No. 1] and Does 1-1,000 (collectively
“Defendants”) and their various unknown associates for trademark counterfeiting and
1
infringement; false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C.
§1125(a); and cyberpiracy under 15 U.S.C. §1125(d). Chanel’s Complaint alleges Defendants
are promoting, advertising, distributing, offering for sale and selling counterfeit and infringing
Chanel branded products within the Southern District of Florida through fully interactive
commercial Internet websites operating under certain domain names (the “Subject Domain
Names”).1
Chanel alleges Defendants’ unlawful activities have caused and will continue to cause
irreparable injury to Chanel because Defendants have (1) deprived Chanel of its right to
determine the manner in which Chanel’s trademarks are presented to the public through
merchandising; (2) defrauded the public into thinking Defendants’ goods are authorized Chanel
goods; (3) deceived the public as to Chanel’s association with Defendants’ goods and the
websites which market and sell the goods; and (4) wrongfully traded and capitalized on Chanel’s
reputation and goodwill as well as the commercial value of Chanel’s trademarks.
In the Ex Parte Application for TRO, Chanel moves for the issuance of a temporary
restraining order, and, upon expiration of the temporary restraining order, a preliminary
injunction against Defendants, pursuant to 15 U.S.C. § 1116 and Federal Rule of Civil Procedure
65, for alleged violations of the Lanham Act.
II. FACTUAL BACKGROUND2
Chanel is a corporation duly organized under the laws of the State of New York with its
principal place of business in the United States located at Nine West 57th Street, New York,
1
The Subject Domain Names are (1) chanel255.org, (2) chanel-replica.us, (3) fakechanel.us, (4)
knockoffs-handbags.com, (5) replicacocochanel.com, (6) replica-designer-handbags.org, (7)
replicaheels.com, and (8) replicashandbags.us. (See Schedule A to Chanel’s Ex Parte
Application for TRO [ECF No. 5]).
2
The factual background is taken from the Complaint, the Ex Parte Application for TRO, and
supporting Declarations submitted by Chanel.
2
New York 10019. (See Compl. ¶ 2). Chanel manufactures, promotes, distributes, and sells in
interstate commerce, including within this Judicial District, high quality products under a number
of Chanel’s trademarks. (See Declaration of Adrienne Hahn Sisbarro in Support of Plaintiff’s Ex
Parte Application for TRO (“Hahn Decl.”) ¶¶ 4, 5.)
Chanel owns and has owned at all relevant times all rights in and to the following
Federally registered trademarks (the “Chanel Marks”):
Trademark
Registration
Number
Registration
Date
CHANEL
0,626,035
May 1, 1956
IC 018 – Women’s Handbags
1,314,511
January 15,
1985
IC 018 - Leather Goods-Namely,
Handbags
1,347,677
July 9, 1985
IC 018 - Leather Goods-namely,
Handbags
CHANEL
CHANEL
Class(es)/Goods
1,733,051
IC 018 - Leather Goods; namely,
Handbags, Wallets, Travel Bags,
Luggage, Business and Credit Card
November 17,
Cases, Change Purses, Tote Bags,
1992
Cosmetic Bags Sold Empty, and
Garment Bags for Travel
1,734,822
IC 018 - Leather Goods; namely,
Handbags, Wallets, Travel Bags,
November 24,
Luggage, Business Card Cases,
1992
Change Purses, Tote Bags, and
Cosmetic Bags Sold Empty
3,025,934
December 13,
IC 018 – Handbags
2005
3
The Chanel Marks are used in connection with the manufacture and distribution of high
quality goods in at least the categories identified above. (See Hahn Decl.) ¶ 5; see also Chanel
Trademark Registrations attached as Composite Exhibit A to the Hahn Decl).
Chanel hired Eric Rosaler (“Rosaler”) of AED Investigations, Inc. to investigate
suspected sales of counterfeit Chanel branded products by Defendants. (See Hahn Decl. ¶ 10;
Rosaler Decl. ¶ 3.) In May 2012, Rosaler accessed two (2) of the websites operating under the
Subject Domain Names chanel-replica.us and fakechanel.us and finalized the purchases of a
wallet and a handbag, respectively – each bearing counterfeits of at least one of the Chanel
Marks at issue in this action. (See Rosaler Decl. ¶ 4; Rosaler Decl. Ex. A). Both of Rosaler’s
purchases were processed entirely online. (See Rosaler Decl. at ¶ 4.)
Chanel then asked Adrienne Hahn Sisbarro, its representative who is familiar with
genuine Chanel goods and trained to detect counterfeits, to review and visually inspect the
chanel-replica.us and fakechanel.us web page listings, as well as detailed web page captures of
the Chanel branded wallet and Chanel branded handbag purchased by Rosaler. (See Hahn Decl.
¶¶ 3, 11). Hahn determined the items were not genuine, unauthorized Chanel products. (See
Hahn Decl. ¶¶ 3, 12, 15). Additionally, Hahn reviewed and visually inspected the items bearing
the Chanel Marks offered for sale on the Internet websites operating under all of the Subject
Domain Names and determined the products were not genuine Chanel products. (See id. ¶¶ 1315.)
Based on the investigations, Chanel alleges Defendants have advertised, offered for sale,
and/or sold handbags and wallets, bearing counterfeits, reproductions, and/or colorable
imitations of the Chanel Marks. (See Hahn Decl. ¶¶ 10-15; Rosaler Decl. ¶ 4). Defendants are
4
not now, nor have they ever been authorized or licensed to use, reproduce, or make counterfeits,
reproductions, and/or colorable imitations of the Chanel Marks. (See Hahn Decl. ¶ 9).
III. LEGAL STANDARD
Chanel has filed claims pursuant to 15 U.S.C. §§ 1114(1)(a), 1125(a), and 1125(d). Title
15 U.S.C. section 1116(a) provides the Court “shall have power to grant injunctions, according
to the principles of equity and upon such terms as the court may deem reasonable, to prevent the
violation of any right of the registrant of a mark registered in the Patent and Trademark Office or
to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.” 15 U.S.C. §
1116. Injunctive relief is also available under section 1116(a) for a violation of section
1114(1)(a). See 15 U.S.C. § 1116(d)(1)(A).
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 or
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
5
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, etc., 415 U.S. 423, 439 (1974).
With respect to scope, generally, “persons who are not actual parties to the action or in
privity with any of them may not be brought within the effect of a[n injunctive] decree merely by
naming them in the order.” 11C WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE, §
2956 at 335–36 (2d ed. 1995) (footnote omitted). However, “a decree of injunction not only
binds the parties defendant but also those identified with them in interest, in ‘privity’ with them,
represented by them or subject to their control.” Golden State Bottling Co. v. NLRB, 414 U.S.
168, 180 (1973) (citing Regal Knitwear Co. v. NLRB, 324 U.S. 9, 14 (1945)); see also Fed. R.
Civ. P. 65(d)(2). Specifically relevant to this case, 15 U.S.C. section 1114(2)(D) implicitly
provides the Court with authority to request or order “[a] domain name registrar, domain name
registry, or other domain name registration authority . . . [to] deposit[]with a court, in which an
action has been filed regarding the disposition of the domain name, documents sufficient for the
court to establish the court’s control and authority regarding the disposition of the registration
and use of the domain name.” 15 U.S.C. §§ 1114(2)(D)(i)–(ii).
IV. ANALYSIS
A.
Probability of Success on the Merits
1.
Counterfeiting and Infringement – 15 U.S.C. § 1114
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.” To prevail on its trademark infringement
claim, Chanel must demonstrate “(1) that it had prior rights to the mark at issue and (2) that the
6
defendant had adopted a mark or name that was the same, or confusingly similar to its mark,
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) (internal citation omitted)).
To evaluate likelihood of consumer confusion in a Lanham Act trademark claim, the
Eleventh Circuit has developed a seven factor balancing test. See Dieter v. B & H Indus. of Sw.
Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989). The seven factors are: “(1) type [or strength] of
mark; (2) similarity of mark; (3) similarity of the products the marks represent; (3) similarity of
the parties’ retail outlets and customers; (5) similarity of advertising media; (6) defendant’s
intent; and (7) actual confusion.” Lipscher v. LRP Publ’ns, Inc., 266 F.3d 1305, 1313 (11th Cir.
2001); see also Dieter, 880 F.2d at 326; Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675
F.2d 1160, 1164 (11th Cir. 1982). No single factor is dispositive. Lipscher, 266 F.3d at 1313.
The Court has considered these seven factors in light of the submissions provided by
Chanel and concludes the balance of factors indicates there is a likelihood consumers would
confuse Defendants’ websites and products with the genuine Chanel versions. In particular, the
submissions provided by Chanel support the strength of the Chanel Marks, show that the goods
produced and sold by Defendants are nearly identical to genuine Chanel products, indicate that
both Chanel and Defendants target the same U.S. customers on the Internet, suggest that
Defendants intended to benefit from the use of Chanel’s brand reputation, and show that
consumers viewing Defendants’ counterfeit goods post-sale would actually confuse them for real
Chanel products. Accordingly, Chanel has shown a probability of success on the merits of its
trademark counterfeiting and infringement claim under section 1114.
7
2.
False Designation of Origin – 15 U.S.C. § 1125(a)
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). As just discussed in relation to Chanel’s trademark
counterfeiting and infringement claims, Defendants’ goods are likely to be confused by
consumers for genuine Chanel products. Therefore, Chanel has shown a likelihood of success on
Chanel’s claim of false designation of origin.
3.
Cyberpiracy Claim – 15 U.S.C. § 1125(d)
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 which 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)).
As to the first element, the Chanel Marks are inherently distinctive because they are
arbitrary as applied to the products which they identify — i.e., they “do[] not suggest or describe
the goods or services offered thereunder.” Victoria’s Cyber Secret Ltd. P’ship v. V Secret
Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (citing Frehling Enters., Inc. v.
Int’l Select Group, Inc., 192 F.3d 1330, 1335–36 (11th Cir. 1999)). Moreover, the Chanel Marks
8
are indisputably famous because they enjoy widespread recognition by consumers. Regarding the
second element — use of confusingly similar domain names — Chanel has supplied a list of
domain names allegedly used by Defendants to sell counterfeit Chanel products. The confusingly
similar Subject Domain Names are chanel255.org, chanel-replica.us, fakechanel.us, and
replicacocochanel.com.3 Chanel has provided sufficient evidence in its submissions to support
the conclusion that these domain names are confusingly similar to at least some Chanel Marks.
With regard to the third element — whether Defendants registered the domain names with the
bad faith intent to profit — the Court has considered the nine factors laid out in 15 U.S.C. §
1125(d)(1)(B)(i)(I)–(IX) and concludes the submissions provided by Chanel adequately
demonstrate Defendants registered the Subject Domain Names in bad faith to attract customers
using the Chanel Marks to sell them counterfeit Chanel products. Consequently, Chanel has
shown a likelihood of success on the merits of its section 1125(d) claim.
B.
Irreparable Injury
The Eleventh Circuit has acknowledged that “once a plaintiff establishes a likelihood of
success on the merits of a trademark infringement claim,”4 there is a “presumption of irreparable
harm.” N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227 (11th Cir. 2008); see
also McDonald’s Corp. v. Robertson, 147 F.3d 1301, 1310 (11th Cir. 1998). However, the
strength of this presumption has been called into question by the Supreme Court’s decision in
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). See N. Am. Medical Corp., 522 F.3d at
3
The Court may seize control of the remaining Subject Domain Names which do not themselves
contain any Chanel Marks because the websites associated with those domain names allegedly
promote and offer for sale goods which infringe the Chanel Marks in violation of sections 1114
and 1125(a). See Tiffany (NJ), LLC v. Zheng, 11-60171-Civ-Altonaga, at 9 (S.D. Fla. Feb. 1,
2011) [ECF No. 13].
4
As discussed in the legal standard section supra, injunctive relief is available on each of
Chanel’s three claims, not only the trademark infringement claim. 15 U.S.C. § 1116(a).
9
1228. After eBay, a court may grant preliminary injunctive relief “without the benefit of a
presumption of irreparable injury,” or may “decide that the particular circumstances of the
instant case bear substantial parallels to previous cases such that a presumption of irreparable
injury is an appropriate exercise of its discretion in light of the historical traditions.” Id.
As already discussed, based on Chanel’s submissions to this point, there is a substantial
likelihood that consumers will incorrectly believe Defendants’ websites and products are
approved or sponsored by Chanel. Although the Court may be permitted to presume irreparable
harm from the likely consumer confusion in this case, it is not necessary to rely on a
presumption. The operation of Defendants’ websites displaying the Chanel Marks and the sale of
Defendant’s inferior goods to consumers is likely to cause irreparable damage to Chanel’s
reputation if it continues because Chanel will not have the ability to control the quality of what
appears to be its products in the marketplace. This damage to Chanel’s reputation and goodwill
could not be easily quantified nor could it be undone through an award of money damages. See
Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 313 (5th Cir. 2008).
C.
The Balance of Hardships
The Court is satisfied after reviewing Chanel’s submissions that the risk to the reputation
and goodwill associated with the Chanel Marks should Defendants’ infringing activities continue
outweighs any hardship to Defendants caused by enjoining those activities. It does not appear
that Defendants will suffer any legitimate hardship if a temporary restraining order is issued
because they have no legal right to use the Chanel Marks on their websites or to sell counterfeit
Chanel products.
10
D.
Public Interest
The public has an interest in not being misled as to the origin, source, or sponsorship of
trademarked products. See Nike, Inc. v. Leslie, 227 U.S.P.Q. 574, 575 (1985) (“[A]n injunction to
enjoin infringing behavior serves the public interest in protecting consumers from such
behavior.”); Nailtiques Cosmetic Corp. v. Salon Sciences, Corp., 41 U.S.P.Q.2d 1995, 1999
(1997) (citing Scarves By Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167 (2d Cir. 1976)) (“The
interests of the public in not being victimized and misled are important considerations in
determining the propriety of granting injunctive relief.”). Here, Chanel has demonstrated that
Defendants’ websites and products mislead consumers into believing they are approved or
sponsored by Chanel and make it more difficult for a consumer to be sure he or she is purchasing
a genuine Chanel product.
V. CONCLUSION
Based on Plaintiff’s Complaint, Ex Parte Application for TRO, and evidentiary
submissions, the undersigned concludes that the four-part test for injunctive relief has been
satisfied. Moreover, because providing notice of this suit before granting injunctive relief would
allow Defendants to funnel traffic to their current websites to new domains and allow Defendants
to continue selling counterfeit products, a temporary restraining order should issue.
Accordingly, it is
ORDERED AND ADJUDGED that Plaintiff’s Ex Parte Application for TRO [ECF No.
5] is GRANTED as follows:
1.
Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all
persons in active concert or participation with Defendants having notice of this Order are
hereby temporarily restrained:
11
a.
From manufacturing, importing, advertising, promoting, offering to sell, selling,
distributing, or transferring any products bearing the Chanel 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 Chanel 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 Chanel Marks, or any confusingly similar
trademarks.
2.
Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all
persons in active concert or participation with Defendants having notice of this Order
shall immediately discontinue the use of the Chanel 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 Subject Domain
Names;
3.
Defendants, their officers, directors, employees, agents, subsidiaries, distributors, and all
persons in active concert or participation with Defendants having notice of this Order
shall immediately discontinue the use of the Chanel 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
12
computer searches to websites registered by, owned, or operated by Defendants,
including the Internet websites operating under the Subject Domain Names;
4.
Defendants 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
Plaintiff’s counsel, for deposit with this Court, domain name certificates for the Subject
Domain Names;
6.
Upon Plaintiff’s request, the privacy protection service for any 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 Subject Domain Names, so that the registrar of record
of each of the 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 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 TRO. If an email
address was not provided as part of the domain registration data for a 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 Subject Domain Names. After forty-eight (48)
13
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 Subject Domain Names for the purposes described in Paragraph 8, infra.
8.
The Registrars shall immediately assist in changing the registrar of record for the Subject
Domain Names, 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, 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 TRO and
instructions on the change of the registrars of record, the top-level domain (TLD)
registries (or their administrators) for the Subject Domain Names, within five (5)
business days of receipt of this TRO, shall update the registrars of record for the Subject
Domain Names, 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, to the
New Registrar. As a matter of law, this Temporary Restraining Order shall no longer
apply to any Defendant or associated domain name dismissed from this action. 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/255/index.html whereon copies of the Complaint and all other
documents on file in this action are displayed. Alternatively, the New Registrar may
14
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,
Temporary Restraining Order, and all other documents on file in this action are
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 registrar or Defendants;
9.
Plaintiff may enter the Subject Domain Names into Google’s Webmaster Tools and
cancel any redirection of the domains that have been entered there by Defendants which
redirect traffic to the counterfeit operations to a new domain name and thereby evade the
provisions of this Order;
10.
Defendants shall preserve copies of all their 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;
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 Subject Domain Names and any
other domain names properly brought to the Court’s attention and verified by sworn
affidavit which verifies such new domain names are being used by Defendants for the
15
purpose of counterfeiting the Chanel Marks at issue in this action and/or unfairly
competing with Chanel in connection with search engine results pages; and
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
Defendants may be entitled for a wrongful injunction or restraint. Plaintiff shall post the
bond prior to requesting the registrars and the registries to transfer control of 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 12-2, on _____________, 2011 at
______, or at such other time that this Court deems appropriate, at which time
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 Ex Parte Application for TRO and this Order on
Defendants via their known e-mail addresses; specifically the e-mail addresses provided
by Defendants to the registrars responsible for the Subject Domain Names. In addition,
Plaintiff shall post a copy of the Ex Parte Application for TRO and this Order on the
website located at http://servingnotice.com/255/index.html, upon transfer of the Subject
Domain Names into the holding account with GoDaddy.com, Inc., and such notice so
given shall be deemed good and sufficient service thereof. 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 set for ______________, 2012, and
filed with the Court, along with Proof of Service. Defendants are hereby on notice that
16
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) and Fed. R. Civ. P. 65.
This Temporary Restraining Order expires at ______ on ________________, unless
extended for good cause.
DONE AND ORDERED in Chambers at Miami, Florida this __ day of ________, 2012.
________________________________
CECILIA M. ALTONAGA
UNITED STATES DISTRICT JUDGE
cc:
counsel of record
17
]]>
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?
