Rolex Watch USA Inc v. Ted Chan et al

Filing 19

STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION by Judge R. Gary Klausner ( MD JS-6. Case Terminated ) (bp)

1 2 3 4 5 6 7 8 9 10 11 12 13 14 Anthony M. Keats (Bar No. 123672) E-Mail: akeats@kmwlaw.com David K. Caplan (Bar No. 181174) E-Mail: dcaplan@kmwlaw.com Caroline Y. Bussin (Bar No. 239343) E-Mail: cbussin@kmwlaw.com KEATS McFARLAND & WILSON LLP 9720 Wilshire Boulevard Penthouse Suite Beverly Hills, California 90212 Telephone (310) 248-3830 Facsimile: (310) 860-0363 JS-6 OF COUNSEL Brian W. Brokate (admitted pro hac vice) Email: bwbrokate@gibney.com John Macaluso (admitted pro hac vice) Email: jmacaluso@gibney.com GIBNEY, ANTHONY & FLAHERTY, LLP 665 Fifth Avenue New York, NY 10022 Telephone: (212) 688-5151 Facsimile: (212) 688-8315 Attorneys for Plaintiff ROLEX WATCH U.S.A., INC. 15 UNITED STATES DISTRICT COURT 16 CENTRAL DISTRICT OF CALIFORNIA 17 WESTERN DIVISION 18 19 ROLEX WATCH U.S.A., INC. 20 Plaintiff, v. 21 22 TED CHAN AND STEPHEN SHAR, INDIVIDUALLY AND D/B/A LUSSO 23 TIME AND WWW.LUSSOTIME.COM; UNKNOWN WEBSITES 1-10; 24 UNKNOWN ENTITIES 1-10; and JOHN DOES 1-10, 25 Defendants. 26 Case No.: CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 27 28 CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 THIS CAUSE comes before the Court upon the joint stipulation of Defendants 2 Ted Chan and Stephen Shar, individually and d/b/a LussoTime and 3 www.lussotime.com (“Defendants”), and Plaintiff Rolex Watch U.S.A., Inc. 4 (“Rolex”). 5 Plaintiff Rolex commenced this action on March 2, 2012 against Defendants. 6 In the Complaint, Rolex alleges federal trademark infringement, false designations of 7 origin and false description and dilution in violation of 15.U.S.C. §§ 1114, 1125 (a) 8 and (c), and unfair competition under the common law. 9 NOW THEREFORE, upon consent of the parties hereto, it is 10 ORDERED, ADJUDGED, AND DECREED: 11 1. 12 This Court has jurisdiction over the subject matter of this case and jurisdiction over Defendant. 13 2. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b). 14 3. Plaintiff Rolex is a corporation duly organized and existing under the 15 laws of the State of New York, having an office and principal place of business at 665 16 Fifth Avenue, New York, New York 10022. 17 4. Ted Chan is the co-owner, operator and/or controlling force behind 18 LussoTime and www.lussotime.com, and resides at 3020 Lombardy Road, Pasadena, 19 CA 91107. 20 5. Stephen Shar is the co-owner, operator and/or controlling force behind 21 LussoTime and www.lussotime.com, and resides at 790 King Street, San Gabriel, CA 22 91776. 23 24 25 6. Defendants’ principal place of business is 5482 Wilshire Blvd. # 267, Los Angeles, CA 90036. 7. Rolex is the owner of, including but not limited to, the following federal 26 trademark registrations in the U.S. Patent and Trademark Office (hereinafter referred 27 to as “Rolex Registered Trademarks”): 28 -1- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 2 Trademark Reg. No. Reg. Date Goods 3 ROLEX 101,819 1/12/15 4 and clocks, and their cases. 5 6 Watches, clocks, parts of watches 657,756 1/28/58 Timepieces of all kinds and parts thereof. CROWN DEVICE 7 8 9 10 8. The Rolex Registered Trademarks are arbitrary and fanciful and are entitled to the highest level of protection afforded by law. 9. Rolex and its predecessors have used the Rolex Registered Trademarks 11 for many years on and in connection with watches, related products and in 12 advertisements, posters and print ads. The Rolex Registered Trademarks identify high 13 quality products originating with Rolex. 14 10. Based upon Rolex’s extensive advertising, sales and the wide popularity 15 of Rolex products, the Rolex Registered Trademarks are now famous and distinctive, 16 and have been famous and distinctive since well prior to the activities of the 17 Defendants. 18 19 20 11. The Rolex Registered Trademarks are valid and subsisting and in full force and effect and have become incontestable pursuant to 15 U.S.C. § 1065. 12. Long after Rolex's adoption and use of the Rolex Registered Trademarks 21 on its products and after Rolex’s federal registration of the Rolex Registered 22 Trademarks, Defendants began using the Rolex Registered Trademarks on the website 23 www.lussotime.com and advertising that they will honor Rolex’s warranty terms and 24 conditions. 25 26 13. Defendants are not now, nor have they ever been, associated, affiliated, connected with, endorsed or sanctioned by Rolex. 27 28 -2- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 2 3 14. Rolex has never authorized or consented in any way to the use by Defendants of the Rolex Registered Trademarks or marks confusingly similar thereto. 15. Despite numerous cease and desist letters, Defendants continued to 4 prominently display the Rolex Registered Trademarks without authorization from 5 Rolex and continued to state that they will honor Rolex’s warranty terms and 6 conditions. 7 16. Defendants’ use of the Rolex Registered Trademarks are likely to cause 8 confusion, deception and/or mistake in the marketplace, relevant industry, and all 9 channels of trade for Rolex’s goods and services. 10 17. Defendant’s use of the Rolex Registered Trademarks are likely to cause 11 confusion, mistake or deception as to the source of Defendant’s goods and services, as 12 to an affiliation or connection between Rolex and Defendant’s goods and services, or 13 as to Rolex’s approval, endorsement or sponsorship of Defendant’s goods and 14 services. 15 18. 16 17 18 19 Defendants’ use of the Rolex Registered Trademarks is likely to dilute the distinctive quality of Rolex’s Rolex Trademarks. 19. Defendants’ use of the Rolex Registered Trademarks is likely to injure the business reputation of Rolex. 20. Defendants’ prominent display of the Rolex Registered Trademarks 20 intentionally, maliciously and willfully infringes and dilutes upon the Rolex 21 Registered Trademarks, despite knowledge that such use is illegal. 22 21. This case constitutes an exceptional case under 15 U.S.C. § 1117(a). 23 22. Rolex has suffered irreparable harm and damages as a result of 24 Defendants’ illegal acts. The injuries and damages sustained by Rolex have been 25 directly and proximately caused by the Defendants’ wrongful advertisement and 26 promotion using the Rolex Registered Trademarks. 27 28 -3- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 23. Defendants and their officers, agents, servants, employees and all persons 2 in active concert and participation with Defendants are hereby permanently restrained 3 and enjoined from: 4 a. imitating, copying or making unauthorized use of the Plaintiff’s Rolex 5 Registered Trademarks or any mark or combination of initials 6 confusingly similar thereto in any manner; 7 b. engaging in any course of conduct likely to cause confusion, 8 deception or mistake, or injure Rolex’s business reputation or weaken 9 the distinctive quality of the Rolex Registered Trademarks, Rolex’s 10 name, reputation or goodwill; 11 c. using false description or representation including words or other 12 symbols tending to falsely describe or represent their services as being 13 those of Rolex or sponsored by or associated with Rolex and from 14 offering such services in commerce; 15 d. using any simulation, reproduction, counterfeit, copy or colorable 16 imitation of the Rolex Registered Trademarks, or any words or initials 17 confusingly similar, as a trademark, trade name, domain name or 18 otherwise, in connection with the promotion, advertisement, display, 19 sale, offering for sale, circulation or distribution of any services in 20 such fashion or in any medium, as to relate or connect, or tend to 21 relate or connect, such services in any way to Rolex, or to any goods 22 or services sold, manufactured, sponsored or approved by, or 23 connected with Rolex; 24 e. making any statement or representation whatsoever, or using any false 25 designation of origin or false description, or performing any act, 26 which can or is likely to lead the trade or public, or individual 27 members thereof, to believe that any services provided, products 28 -4- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 manufactured, distributed, sold or offered for sale, licensed, or leased 2 or rented by Defendants are in any way associated or connected with 3 Rolex, or is provided, sold, manufactured, 4 approved or authorized by Rolex; licensed, sponsored, 5 f. engaging in any conduct constituting an infringement of the Rolex 6 Registered Trademarks, or any words confusingly similar, of Rolex’s 7 rights in or to use or to exploit said trademarks, or constituting any 8 weakening of Rolex’s name, reputation and good will; 9 g. using or continuing to use the Rolex Registered Trademarks or trade 10 name in any variation thereof on the Internet (either in the text of a 11 website, as a domain name, or as a keyword, search word, metatag, or 12 any part of the description of the site in any submission for 13 registration of any Internet site with a search engine or index) in 14 connection with any goods or services not directly authorized by 15 Rolex; 16 h. acquiring, maintaining, registering or applying to register as a 17 trademark, trade name, service mark, domain name or any other 18 source identifier the Rolex Registered Trademarks or any other 19 trademarks owned by Plaintiff, or any 20 infringes or is likely to be confused with Plaintiff’s trademarks or 21 trade names, or transferring conveying or assigning any such domain 22 names to any entity other than Rolex; other mark or name that 23 i. otherwise unfairly competing with Rolex; and 24 j. effecting assignments or transfers, forming new entities or 25 associations or utilizing any other device for the purpose of 26 circumventing or otherwise avoiding the prohibitions set forth in 27 subparagraphs (a) through (i). 28 -5- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 24. Judgment shall be entered jointly and severally against each person or 2 entity herein referred to collectively as “Defendants” in the amount of $2,500.00 USD 3 for Rolex’s damages as a result of Defendants’ conduct. 4 25. In the event Defendant(s) breach any term of this Consent Judgment and 5 Permanent Injunction, or otherwise infringe or dilute Rolex’s trademark rights, Rolex 6 shall be entitled to injunctive relief, damages and profits and Defendant(s) shall pay 7 Rolex attorneys’ fees and costs incurred as a result of such infringement, dilution, 8 and/or breach. 9 26. This Consent Judgment shall be binding upon and shall inure to the 10 benefit of the parties and their respective heirs, successors and assigns, and acquiring 11 companies. 12 27. This Court shall retain continuing jurisdiction over this cause to enforce 13 the terms of this Consent Final Judgment and Permanent Injunction and for the 14 modification and/or the punishment of any violations thereof. 15 16 28. The Permanent Injunction shall remain in full force and effect until modified by order of this Court. 17 18 19 Dated: July 24, 2012 HON. R. GARY KLAUSNER UNITED STATES DISTRICT JUDGE 20 21 22 23 24 25 26 27 Presented by: Of Counsel: Anthony M. Keats Keats McFarland & Wilson LLP 9720 Wilshire Boulevard Penthouse Suite Beverly Hills, California 90212 Brian W. Brokate (admitted pro hac vice) John Macaluso (admitted pro hac vice) Gibney Anthony & Flaherty LLP 665 Fifth Avenue New York, NY 10022 /s/Anthony M. Keats Anthony M. Keats Attorneys for Plaintiff ROLEX WATCH U.S.A., INC. Attorneys for Plaintiff ROLEX WATCH U.S.A., INC. 28 -6- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION 1 CONSENTS TO ENTRY 2 3 The undersigned hereby consent to the terms and conditions of this Consent 4 Judgment and Permanent Injunction in the form annexed hereto and consent to the 5 entry thereof. 6 7 ROLEX WATCH U.S.A., INC. 8 9 Dated: , 2012 By: 10 Name: 11 Its: 12 13 TED CHAN, individually and d/b/a LUSSO TIME AND WWW.LUSSOTIME.COM 14 15 16 Dated: , 2012 Ted Chan 17 18 19 STEPHEN SHAR, individually and d/b/a LUSSO TIME AND WWW.LUSSOTIME.COM 20 21 22 Dated: , 2012 23 Stephen Shar 24 25 26 27 28 -7- CV 12-01803 RGK (MANx) STIPULATED CONSENT FINAL JUDGMENT AND PERMANENT INJUNCTION