Chanel, Inc. v. et al, No. 4:2012cv02085 - Document 38 (S.D. Tex. 2013)

Court Description: FINAL JUDGMENT and Permanent Injunction in favor of plaintiff. Case terminated on 9/26/2013.(Signed by Judge Gray H. Miller) Parties notified.(rkonieczny, 4)
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Chanel, Inc. v. et al Doc. 38 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION CHANEL, INC., Plaintiff, v. THE PARTNERSHIPS AND UNINCORPORATED ASSOCIATIONS IDENTIFIED IN SCHEDULE “A” AND DOES 1-1000, Defendants. § § § § § § § § § § § CIVIL ACTION H-12-2085 F INAL J UDGMENT & P ERMANENT I NJUNCTION In accordance with the court’s memorandum opinion and order issued this day, it is ORDERED, ADJUDGED, AND DECREED: 1. That judgment by default be entered in favor of Chanel against the Partnerships and Unincorporated Associations Identified in Schedule “A” (“defendants”); 2. That defendants and their respective officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them who receive actual notice of this final judgment and permanent injunction by personal service or otherwise, are hereby permanently restrained and enjoined from engaging in any of the following acts or omissions: (A) from manufacturing (or causing to be manufactured), importing, advertising, promoting, distributing, selling, or offering to sell counterfeit or infringing goods bearing or using any of the Chanel Marks identified in Schedule “B” (the “Chanel Marks”); (B) from infringing, counterfeiting, or otherwise diluting the distinctive quality of the Chanel Marks, or taking any other action which has the effect of injuring Chanel’s business reputation or harming or tarnishing Chanel’s reputation and goodwill in the Chanel Marks; (C) from using the Chanel Marks, or any marks or trade dress confusingly similar thereto, in connection with the sale of any unauthorized goods; (D) from using any logos, trade names, words, symbols, or trademarks which may be calculated to falsely advertise defendants’ services or products as being sponsored, authorized or endorsed by, or in any way associated with Chanel; (E) from falsely representing themselves as being connected with Chanel, through sponsorship or association, or engaging in any act which is likely to falsely cause members of the trade or purchasing public to believe that defendants’ goods or services are in any way endorsed or approved by, or otherwise associated with, Chanel; (F) from using any reproduction, counterfeit, copy, or colorable imitation of the Chanel Marks in connection with the manufacture, importation, distribution, promotion, advertising, or sale of any goods sold by defendants, including, without limitation, handbags, wallets, sunglasses, shoes, dresses, watches, and costume jewelry (including earrings); (G) from affixing, applying, annexing or otherwise using in connection with the sale of any goods, a false description or representation, including words or other symbols tending to falsely describe or represent defendants’ goods as being those of Chanel or in any way endorsed by Chanel, and from offering such goods in commerce; (H) from using the Chanel Marks or any marks confusingly similar thereto (i) within domain name extensions, metatags, or other markers within website source code; (ii) on any webpage (including as the title of any web page), on any advertising links to other websites, or from any search engines’ databases or cache memory; or (iii) in any manner which is visible to a computer user or serves to direct computer searches to websites registered, owned, or otherwise operated by 2 defendants, including without limitation any of the Internet websites operated under any of the Subject Domain Names identified in Schedule “A” (“SDNs”); (I) from otherwise unfairly competing with Chanel; and (J) from effecting assignments or transfers, forming new entities or associations, or using any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth above. 3. Additional equitable relief to give practical effect to the permanent injunction: (A) The SDNs are hereby ordered to be immediately disabled. To the extent the current Registrars do not facilitate the disabling of the domain names within seven (7) days of the receipt of this judgment, the Registries shall, within thirty (30) days, change the Registrar of Record for the SDNs to a Registrar of Chanel’s choosing, and that Registrar shall disable the SDNs. (B) Upon Chanel’s request, the top level domain Registry for each of the SDNs shall, within thirty (30) days of receipt of this judgment, place the SDNs on Registry “hold” status for the life of the current registration, thus removing them from the top level domain zone files maintained by the Registry, which link the SDNs to the IP addresses where the associated websites are hosted. (C) Upon Chanel’s request, the Internet Corporation for Assigned Names and Numbers shall take all actions necessary to ensure that the top level domain Registry responsible for each of the SDNs disables the respective Subject Domain Name. 4. That Chanel recover against defendants, jointly and severally: (1) reasonable attorneys’ fees in the amount of $57,657.50; (2) reasonable investigative fees in the amount of $2,357.10; and (3) reasonable costs of action in the amount of $1,832.65 pursuant to 15 U.S.C. § 1117(a). 3 5. All funds currently held or restrained by PayPal, Inc. (“PayPal”) which are related to the PayPal account recipient, (“PayPal Account”), or any other accounts belonging to the customer(s) of the PayPal Account shall, within seven (7) days of receipt of this judgment, be transferred to Chanel to satisfy or partially satisfy the monetary amounts awarded herein. PayPal shall provide to Chanel at the time the funds are released, a breakdown reflecting (i) the total funds held or restrained by PayPal which relate to the relevant account(s); (ii) the total chargebacks, refunds, and/or transaction reversals that were deducted from such funds prior to release; and (iii) the total funds being released to Chanel. 6. Interest shall accrue on this award at a rate of 0.11% per annum, from the date of entry of this judgment until the date the judgment is paid. 7. Since defendants’ illegal counterfeiting and infringement of the Chanel Marks were engaged in intentionally, knowingly, maliciously, and willfully, the monetary amounts awarded in this judgment constitute non-dischargeable debts under § 523(a)(6) of the United States Bankruptcy Code, Title 11 U.S.C. § 101, et seq. 8. The court reserves and retains jurisdiction of the subject matter of this cause and of the parties hereto for the purpose of enforcing the terms of this judgment and permanent injunction. 9. The bond posted by Chanel in the amount of $10,000.00 shall be released by the Clerk of Court. This is a FINAL JUDGMENT. Signed at Houston, Texas on September 26, 2013. ___________________________________ Gray H. Miller United States District Judge 4 SCHEDULE A DEFENDANTS BY SUBJECT DOMAIN NAMES AND DEFENDANT NUMBER Domain Name Defendant No. 1 2 3 4 6 7 8 9 9 10 10 11 12 12 12 13 13 13 13 13 15 15 16 16 5 17 19 19 20 21 22 22 23 24 26 26 27 28 29 29 30 30 30 31 32 35 36 37 38 39 40 44 6 45 45 46 46 47 48 50 7 SCHEDULE B PLAINTIFF’S FEDERALLY REGISTERED TRADEMARKS (“CHANEL MARKS”) Trademark Registration Number Registration Date CHANEL 0,626,035 May 1, 1956 CHANEL 0,902,190 Nov. 10, 1970 IC 014 — Bracelets, Pins, & Earrings CHANEL 0,915,139 June 15, 1971 IC 025 — Women’s Shoes CHANEL 0,955,074 Mar. 13, 1973 IC 014 — Watches Class(es)/Goods IC 018 — Women’s Handbags CHANEL 1,241,265 June 7, 1983 1,314,511 CHANEL IC 025 — Suits, Jackets, Skirts, Dresses, Pants, Blouses, Tunics, Sweaters, Cardigans, Coats, Raincoats, Scarves, Shoes, & Boots Jan. 15, 1985 IC 018 — Leather Goods-Namely, Handbags 1,347,677 July 9, 1985 IC 018 — Leather Goods-Namely, Handbags IC 006 — Keychains IC 014 — Costume Jewelry IC 016 — Gift Wrapping Paper 1,501,898 Aug. 30, 1988 IC 025 — Blouses, Shoes, Belts, Scarves, Jackets, Men’s Ties IC 026 — Brooches and Buttons for Clothing CHANEL 1,510,757 Nov. 1, 1988 8 IC 009 — Sunglasses 1,654,252 CHANEL 1,733,051 1,734,822 J12 Aug. 20, 1991 IC 009 — Sunglasses IC 018 — Leather Goods-Namely, Handbags, Wallets, Travel Bags, Nov. 17, 1992 Luggage, Business and Credit Card Cases, Change Purses, Tote Bags, Cosmetic Bags Sold Empty, and Garment Bags for Travel IC 018 — Leather Goods-Namely, Handbags, Wallets, Travel Bags, Nov. 24, 1992 Luggage, Business Card Cases, Change Purses, Tote Bags, and Cosmetic Bags Sold Empty IC 014 — Timepieces; namely, Watches, & Parts Thereof 2,559,772 Apr. 9, 2002 3,025,934 Dec. 13, 2005 IC 018 — Handbags IC 009 - Eyeglass Frames, Sunglasses 3,025,936 Dec. 13, 2005 IC 025 - Gloves, Swimwear IC 026 - Hair Accessories namely Barrettes CHANEL 3,133,139 Aug. 22, 2006 IC 014 — Jewelry and Watches 9