Rolex Watch U.S.A., Inc. v. Juoda Dvora et al

Filing 17

FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT by Judge Fernando M. Olguin. IT IS ORDERED, ADJUDGED AND DECREED as follows: Defendants, their agents, servants, employees, attorneys and all persons acting in concert and participation with them, and their successors and assigns, jointly and severally be and hereby are, permanently restrained and enjoined. Further ORDERED that in the event that Defendants are ever found by a court of competent jurisdiction, after notice and opportunity to be heard, to be in violation of this Final Judgment the parties agree that (a) Rolex will be entitled to all normal relief which it may request from the court; and (b) Rolex will be entitled to recover any and all future and additional damages, fees and costs incurred by Rolex due to Defendants' violation of this Final Judgment, and judgment shall be entered against Defendant in that full amount. (MD JS-6. Case Terminated.) (jp)

1 Anthony M. Keats (SBN 123672)

[e-mail]

2 Konrad K. Gatien (SBN 221770)

[e-mail]

3 Barak J. Kamelgard (SBN 298822)

[e-mail]

JS-6

4 STUBBS ALDERTON & MARKILES LLP

1453 3rd Street Promenade, Suite 300
5 Santa Monica, CA 90401
Telephone: [phone]
6 Facsimile: [phone]
7 Attorneys for Plaintiff
8

ROLEX WATCH U.S.A., INC.

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10

UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION

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ROLEX WATCH U.S.A., INC.,

CASE NO. 2:16-CV-00206 FMO (AFMx)

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Plaintiff,
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FINAL JUDGMENT AND
PERMANENT INJUNCTION
UPON CONSENT

v.

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JUODA DVORA and TAMI DVORA,
Defendants.

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CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

1

Plaintiff Rolex Watch U.S.A., Inc. (“Rolex”) and defendants Juoda Dvora and

2 Tami Dvora (hereinafter collectively referred to as “Defendants”), having agreed that
3 a Final Judgment and Permanent Injunction Upon Consent (hereinafter referred to as
4 “Final Judgment”) should be entered between them and good cause appearing
5 therefore:
6

1.

Rolex is a corporation duly organized and existing under the laws of the

7 State of New York, having an office and principal place of business at 665 Fifth
8 Avenue, New York, New York, 10022.
9

2.

Defendant Juoda Dvora is a resident of the State of California residing at

10 5506 Sylvia Avenue, Tarzana, CA 91356.
11

3.

Defendant Tami Dvora is a resident of the State of California residing at

12 5506 Sylvia Avenue, Tarzana, CA 91356.
13

4.

Rolex is the exclusive distributor and warrantor in the United States of

14 Rolex watches, all of which bear one or more of the Rolex Registered Trademarks as
15 defined below. Rolex watches are identified by the trade name and trademark ROLEX
16 and one or more of the Rolex Registered Trademarks. Rolex is responsible for
17 assembling, finishing, marketing and selling in interstate commerce high quality Rolex
18 watches, watch bracelets and related products for men and women (hereinafter referred
19 to as “Rolex Watches”). Rolex is responsible for maintaining control over the quality
20 of Rolex products and services in this country. Rolex has developed an outstanding
21 reputation because of the uniform high quality of Rolex Watches and the Rolex
22 Registered Trademarks are distinctive marks used to identify these high quality
23 products originating with Rolex.
24

5.

Rolex is the owner of the following federal trademark registrations in the

25 U.S. Patent and Trademark Office:
26 ///
27 ///
28 ///
-1CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

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2
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Trademark

Reg. No.
657,756

Reg. Date
1/28/1958

674,177
831,652
2,331,145
2,518,894
2,445,357
683,249
2,985,308
239,383

2/17/1959
7/4/1967
3/21/2000
12/18/2001
4/24/2001
8/11/1959
8/16/2005
3/6/1928

OYSTER
PERPETUAL
PRESIDENT

1,105,602

11/7/1978

520,309

1/24/1950

ROLEX

101,819

1/12/1915

ROLEX
DAYTONA
ROLEX
DEEP
SEA
SEA-DWELLER
SUBMARINER
TURN-O-GRAPH
YACHTMASTER
COSMOGRAPH

1,960,768

3/5/1996

Wristbands and bracelets for
watches made wholly or in part or
plated with precious metals, sold
separately from watches.
Watches, clocks, parts of watches
and clocks, and their cases.
Watches.

3,703,603

10/27/2009

Watches.

860,527
1,782,604
2,950,028
1,749,374

11/19/1968
7/20/1993
5/10/2005
1/26/1993

Watches, clocks and parts thereof.
Watches.
Watches and parts thereof.
Watches.

733,081

6/19/1962

Watches.

CROWN DEVICE
DATEJUST
DAY-DATE
DAYTONA
EXPLORER
EXPLORER II
GMT-MASTER
GMT-MASTER II
OYSTER

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Goods
Timepieces of all kinds and parts
thereof.
Timepieces and parts thereof.
Wrist watches.
Watches.
Watches.
Watches.
Watches.
Watches and parts thereof.
Watches, movements, cases, dials,
and other parts of watches.
Watches and parts thereof.

Correct and true copies of Rolex’s federal trademark registrations (hereinafter
collectively referred to as the “Rolex Registered Trademarks”) are attached to the
Complaint as Exhibit 1.
6.

The Rolex Registered Trademarks are arbitrary and fanciful and are

entitled to the highest level of protection afforded by law.
7.

Based on Rolex’s extensive advertising, sales and the wide popularity of

Rolex products, the Rolex Registered Trademarks are now famous and have been
famous since well prior to the activities of the Defendants. Rolex Registered
-2CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

1 Trademarks have acquired secondary meaning so that any product or advertisement
2 bearing such marks is immediately associated by consumers, the public and the trade
3 as being a product or affiliate of Rolex.
4

8.

Rolex and its predecessors have used the Rolex Registered Trademarks

5 for many years on and in connection with Rolex Watches and related products.
6

9.

Rolex has gone to great lengths to protect its name and enforce the Rolex

7 Registered Trademarks.
8

10.

Long after Rolex’s adoption and use of the Rolex Registered Trademarks

9 on its products and after Rolex’s federal registration of the Rolex Registered
10 Trademarks, Defendants began selling, offering for sale, distributing, promoting and
11 advertising in interstate commerce, through the Internet, watches bearing counterfeits
12 and infringements of the Rolex Registered Trademarks as those marks appear on
13 Rolex’s products and as shown in the Rolex Registered Trademarks attached to the
14 Complaint as Exhibit 1.
15

11.

The spurious marks or designations used by Defendants in interstate

16 commerce are identical with, or substantially indistinguishable from, the Rolex
17 Registered Trademarks on goods covered by the Rolex Registered Trademarks.
18

12.

Defendants admit they intentionally and willfully sold, offered for sale,

19 distributed, promoted and advertised merchandise bearing counterfeits of one or more
20 of the Rolex Registered Trademarks, despite the knowledge that such sales are illegal.
21

13.

Defendants are not now, nor have they ever been associated, affiliated or

22 connected with or endorsed or sanctioned by Rolex.
23

14.

Rolex has gone to great lengths to protect its name and enforce its

24 trademarks.
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15.

Rolex has no adequate remedy at law.

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16.

Defendants’ acts constitute willful trademark counterfeiting in violation

27 of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
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-3CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

1

17.

Defendants’ acts constitute willful trademark infringement in violation of

2 Section 32 of the Lanham Act, 15 U.S.C. §1114.
3

18.

Defendants agree that the jurisdiction of this Court is retained for the

4 purpose of making any further orders necessary or proper for the construction,
5 implementation or modification of this Final Judgment, the enforcement thereof and
6 the punishment of any violations thereof.
7

19.

Defendants agree that the amount in controversy in this action is greater

8 than $75,000.
9

20.

Rolex commenced this action on or about January 11, 2016, alleging

10 trademark counterfeiting, 15 U.S.C. § 1114, and trademark infringement, 15 U.S.C. §
11 1114 by Defendants.
12

21.

This Court has jurisdiction over the subject matter of this claim pursuant

13 to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331 and 1338 and personal jurisdiction over the
14 parties.
15

NOW, THEREFORE, upon the consent of the parties hereto, IT IS

16 ORDERED, ADJUDGED AND DECREED as follows:
17

A.

Defendants, their agents, servants, employees, attorneys and all persons

18 acting in concert and participation with them, and their successors and assigns,
19 jointly and severally be and hereby are, permanently restrained and enjoined from:
20

(a)

using any reproduction, counterfeit, copy, or colorable

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imitation of the Rolex Registered Trademarks to identify any

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goods or the rendering of any services not authorized by Rolex;

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(b)

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deception or mistake, or injure Rolex’s business reputation or

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weaken the distinctive quality of the Rolex Registered Trademarks,

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Rolex’s name, reputation or goodwill;

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(c)

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or other symbols tending to falsely describe or represent their

engaging in any course of conduct likely to cause confusion,

using a false description or representation including words

-4CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

1

unauthorized goods as being those of Rolex or sponsored by or

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associated with Rolex and from offering such goods in commerce;

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(d)

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Trademarks

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circulating, selling, marketing, offering for sale, advertising,

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promoting, displaying or otherwise disposing of any products not

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authorized by Rolex bearing any simulation, reproduction,

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counterfeit, copy or colorable imitation of the Rolex Registered

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Trademarks;

further infringing or diluting the Rolex Registered
by

manufacturing,

producing,

distributing,

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(e)

using any simulation, reproduction, counterfeit, copy or

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colorable imitation of the Rolex Registered Trademarks in

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connection with the promotion, advertisement, display, sale,

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offering for sale, manufacture, production, circulation or

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distribution of any unauthorized products in such fashion as to

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relate or connect, or tend to relate or connect, such products in any

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way to Rolex, or to any goods sold, manufactured, sponsored or

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approved by, or connected with Rolex;

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(f)

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any false designation of origin or false description, or performing

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any act, which can or is likely to lead the trade or public, or

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individual members thereof, to believe that any services provided,

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products manufactured, distributed, sold or offered for sale, or

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rented by Defendants are in any way associated or connected with

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Rolex, or is provided, sold, manufactured, licensed, sponsored,

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approved or authorized by Rolex;

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(g)

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of the Rolex Registered Trademarks, of Rolex’s rights in, or to use

making any statement or representation whatsoever, or using

engaging in any conduct constituting an infringement of any

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-5CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

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or to exploit, said trademark, or constituting any weakening of

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Rolex’s name, reputation and goodwill;

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(h)

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or trade names in any variation thereof on the Internet (including

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but not limited to in the text of a website, as a domain name, or as

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a keyword, search word, metatag, or any part of the description of

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the site in any submission for registration of any Internet site with

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a search engine or index) in connection with any goods or services

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not directly authorized by Rolex;

using or continuing to use the Rolex Registered Trademarks

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(i)

knowingly operating or engaging in a business involving a

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website or other enterprise that offers for sale any nongenuine

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products bearing the Rolex Registered Trademarks;

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(j)

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domain names that include the ROLEX trademark or any of the

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other Rolex Registered Trademarks or any marks confusingly

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similar thereto, activating any website under said domain names,

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or selling, transferring, conveying, or assigning any such domain

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names to any entity other than Rolex;

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(k)

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products bearing counterfeits of the Rolex Registered

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Trademarks;

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(l)

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known by Defendants to offer for sale any merchandise bearing

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counterfeits of the Rolex Registered Trademarks; and

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(m)

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associations or utilizing any other device for the purpose of

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circumventing or otherwise avoiding the prohibitions set forth in

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subparagraphs (a) through (l).

acquiring, registering, maintaining or controlling any

using any e-mail addresses to offer for sale any nongenuine

having any connection whatsoever with any websites

effecting assignments or transfers, forming new entities or

-6CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT

1

It is further ORDERED that in the event that Defendants are ever found by a

2 court of competent jurisdiction, after notice and opportunity to be heard, to be in
3 violation of this Final Judgment the parties agree that (a) Rolex will be entitled to all
4 normal relief which it may request from the court; and (b) Rolex will be entitled to
5 recover any and all future and additional damages, fees and costs incurred by Rolex
6 due to Defendants’ violation of this Final Judgment, and judgment shall be entered
7 against Defendant in that full amount.
8

It is further ORDERED that any act by Defendants in violation of the terms or

9 conditions of this Final Judgment may be considered and prosecuted as contempt of
10 this Court.
11

It is further ORDERED that the jurisdiction of this Court is retained for the

12 purpose of making any further orders necessary or proper for the construction,
13 implementation or modification of this Final Judgment, the enforcement thereof and
14 the punishment of any violations thereof.
15

It is further ORDERED that this Final Judgment shall be binding upon and shall

16 inure to the benefit of the parties and their respective heirs, successors and assigns,
17 and acquiring companies.
18

The Court expressly determines that there is no just reason for delay in entering

19 this judgment, and pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the
20 Court directs entry of judgment against Defendants.
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This Final Judgment shall be deemed to have been served upon Defendants at

22 the time of its execution by the Court.
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IT IS SO ORDERED:

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26 Dated: April 4, 2016

/s/
HON. FERNANDO M. OLGUIN
UNITED STATES DISTRICT JUDGE

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CV 16-00206 FMO (AFMx)
FINAL JUDGMENT AND PERMANENT INJUNCTION UPON CONSENT