Chanel Inc. v. US880
Filing
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ORDER Re Supplemental Briefing and/or Evidence Re Plaintiff's Motion for Default Judgment. Signed by Magistrate Judge Edward M. Chen on 4/14/2011. (emcsec, COURT STAFF) (Filed on 4/14/2011)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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CHANEL, INC.
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Plaintiff,
v.
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For the Northern District of California
United States District Court
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No. C-10-2601 PJH (EMC)
US880, et. al.
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Defendants.
___________________________________/
ORDER RE SUPPLEMENTAL
BRIEFING AND/OR EVIDENCE RE
PLAINTIFF’S MOTION FOR DEFAULT
JUDGMENT
(Docket No. 19)
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Pending before the Court is Plaintiff Chanel, Inc.’s Motion for Default Judgment against
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Defendant US880, an entity of unknown makeup d/b/a/ various internet websites. Having
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considered Plaintiff’s Motion and supporting papers, the Court finds invites supplemental briefing.
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Chanel requests an award of $3,000.00 per registered Chanel Mark (totaling eleven marks)
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per type of goods sold (totaling six – handbags, wallets, watches, sunglasses, scarves, and
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swimwear) for a total award of $198,000 ($3,000 x 66 infringements). Mot. at 13. Plaintiff bases its
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request on the statutory minimum ($1,000.00 per counterfeit mark per type of good sold) trebled to
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reflect Defendant’s willfulness. Plaintiff alleges that Defendants have knowingly sold or offered for
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sale goods bearing marks which are identical to the Chanel Marks with the intent to capitalize on the
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reputation and goodwill of the marks, and Plaintiff has provided evidence of the infringement of its
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marks. See Gaffigan Decl. Ex. 3; Supp. Gaffigan Ex. 3. Chanel’s calculation methodology
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(assessing a statutory penalty for each alleged infringement) appears to be reasonable. See Chanel,
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Inc. v. Xiuyin Lin, No. 09-4996, 2010 U.S. Dist. LEXIS 61205 (N.D. Cal., June 21, 2010) (awarding
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$456,000 in statutory damages for willful infringement of nineteen marks across eight categories of
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products); Chanel, Inc. v. Doan, 2007 U.S. Dist. LEXIS 22691, 2007 WL 781976, *6 (N.D. Cal.
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Mar. 13, 2007) (awarding $127,701 in statutory damages for willful infringement of six federally
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registered trademarks); Adobe Systems Inc. v. Kern, 2009 U.S. Dist. LEXIS 123566, 2009 WL
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5218005, *9 (N.D. Cal. Nov. 24, 2009) (awarding $250,000 in statutory damages for willful
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infringement of five federally registered trademarks); Adobe Systems, Inc. v. Taveira, 2009 U.S.
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Dist. LEXIS 127751, 2009 WL 506861, *6 (N.D. Cal. Feb. 27, 2009) (awarding $250,000 in
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statutory damages for willful infringement of five federally registered trademarks). Moreover,
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Plaintiff’s request is well within the $2 Million “per each counterfeit Chanel mark used and product
sold, as provided by 15 U.S.C. § 1117(c) . . . .” Compl. ¶ 43c. The Court nonetheless finds a
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For the Northern District of California
United States District Court
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shortcoming in Chanel’s request. There are two problems.
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First, as this Court previously noted, the original infringement table attached to the
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Declaration of Gaffigan as Ex. 3, documents 16 examples of infringements. Eight of the eleven
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registered marks are infringed by only one type of good (e.g. handbags); only three marks are
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infringed by more than one type of good. Plaintiff failed to prove each of the eleven marks are
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infringed by each of six types of goods. In Mr. Gaffigan’s supplemental declaration, Ex. 3, the
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infringement table lists three marks but does not specify the type of good allegedly infringing (as he
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did in the first declaration). While Mr. Gaffigan attaches printouts of offending websites, many of
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the printouts are not clear enough to identify the mark. In any event, Plaintiff has still failed to
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prove 66 infringements. See generally Televideo Sys., Inc. v. Heidenthal, 826 F.2d 915, 917-18 (9th
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Cir. 1987) (noting that while factual allegations of the complaint are generally taken as true after
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entry of default, damages must be proven); Board of Trustees of the Boilermaker Vacation Trust v.
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Skelly, Inc., No. 04-02841 CW, 2005 WL 443462 at *2 (N.D. Cal. Feb. 24, 2005) (explaining that, in
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moving for default judgment, “Plaintiff has the burden of proving damages through testimony or
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written affidavit.”).
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Second, many of the cited exemplars of particular infringements are websites which have not
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been sufficiently proven to be under the control and ownership of Defendant. Plaintiff provides
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evidence that fourteen internet domains (the twelve “Subject Domain Names” listed in Schedule A
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to the Supp. Gaffigan Decl. plus two of the “Additional Domain Names” listed in Schedule B) are
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registered to Defendant US880. See Supp. Gaffigan Decl. ¶ 10e, Comp. Exs. 2a, 2e. The proof is
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solid. The evidence tying Defendant to the remaining domain names listed in Schedule B, however,
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is more attenuated. Plaintiff argues that Mr. Gaffigan has adequately established that Defendant is
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the owner of each of these sites based on six criteria: “(1) email addresses; (2) tracking codes; (3)
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website redirection; (4) linking between websites; (5) common contact information provided on the
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websites and/or provided as part of the WHOIS domain name registration reports; and (6) self
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identifications.” Supp. Gaffigan Decl. ¶ 9. Only the fourteen sites (12 from Schedule A and 2 from
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Schedule B) satisfy the fifth criterion (actual registration data) – the strongest criteria. Id. at ¶ 10e,
Comp Ex. 2. The Court therefore turns to a discussion of the remaining criteria used by Mr.
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For the Northern District of California
United States District Court
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Gaffigan.
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Plaintiff posits, and the Court agrees, that “[i]dentical email addresses, either provided to the
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domain registrar or provided to customers of an Internet website, are strongly indicative of common
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ownership and control.” Id. ¶ 10a. Mr. Gaffigan’s analysis assumes that online merchants must
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provide accurate email addresses on their websites so their customers may ask questions and place
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orders. Id. Absent any reason to suspect otherwise, the Court finds this to be a reasonable
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assumption, and therefore concludes that sites providing an email address identical to one tied
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directly to US880 are under Defendant’s ownership or control. Mr. Gaffigan explains that the
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contact email address for US880 contained in the WHOIS data registration records is
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dreaming987@163.com. Id. Many of the “Additional Domain Names” are tied to Defendant via,
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inter alia, common email addresses. Nearly all of those list a common email address of
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dreaming987@163.com, which is reliably tied to Defendant. See id. Comp. Ex. 2. They also
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appear, based on domain name registrations, to have other contact information in common with
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US880, including their physical address, phone number, and the name US880. Id. at Ex. 2a.
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However, seven are not so reliably tied by email addresses because the listed email address is not
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that of US880, but those indirectly linked through other websites.
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Plaintiff ties many websites to Defendant based on identical tracking codes found in the
websites’ HTML code. Mr. Gaffigan explains that “[a] tracking code is inserted by a domain owner
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into a website’s HTML code in order to allow the site operator to collect statistics about the visitors
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to their website. . . . tracking code providers generate unique codes for each user . . . . [W]hen
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identical codes are used on multiple websites, all the tracking information from each website the
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code appears on goes to a single tracking account, indicating a common owner.” Id. ¶ 10b.
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Tracking codes on sites within domains registered to US880 are also found in the HTML code of
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other sites. See id. (explaining, e.g., that tracking code 51.1a:2988833 is found on multiple domains
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including edhardyshow.com); see, e.g., id. Ex. 2b at 59 (registrant contact information for
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edhardyshow.com). The Court accordingly finds that damages should be awarded with respect to
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domains tied to Defendant via tracking codes.
Plaintiff’s third criteria, “website redirection” is also satisfactory, provided the detour leads
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For the Northern District of California
United States District Court
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to a site reliably associated with Defendant. “A website redirect occurs when a server immediately
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moves and/or directs visitors attempting to visit one website to a different website.” Id. ¶ 10c. Of
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the nine domains associated by redirection, seven of them lead to domains not tied to Defendant by
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virtue of registration data, tracking codes, or contact information (e.g., email addresses). One,
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topairmax.com, is adequately connected to Defendant based on Mr. Gaffigan’s determination that it
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redirects to maxshoesworld.com, which is a domain tied to Defendant via 360gome.com (a domain
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registered to US880 and listed in Schedule A). See Supp. Gaffigan Decl. Ex. 1 (Docket No. 38-5) at
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3 (printout from www.360gome.com dated Sept. 14, 2010 advertising Chanel handbags), 170
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(noting that the www.360gome.com now redirects to maxshoesworld.com), 180 (printout from
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www.maxshoesworld.com dated Dec. 21, 2010 advertising Chanel handbags). Because the
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remaining seven domains are not adequately tied to Defendant by virtue of the website they
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automatically redirect to or any other reliable means, the Court finds that it would be inappropriate
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to consider them in its calculation of damages based on the record evidence.
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Plaintiff’s fourth criterion, links between websites, is more attenuated than automatic
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redirection. According to Mr. Gaffigan “an online merchant will not divert a possible sale to
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another Internet website, unless it is irrelevant on which Internet website the sale is processed, as the
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merchant receives payment from both.” Supp. Gaffigan Decl. ¶ 10d. But there are other reasons a
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merchant might link to another’s website, such as where they receive a commission from a resulting
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sale or click-through as part of a search engine optimization campaign. The fact that these websites
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sell “the same type of products” (not “identical” products), does not sufficiently prove common
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ownership and control based solely on links between websites.
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Plaintiff’s final criterion, while less substantial than some other indicators, is sufficient.
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Plaintiff contends that common “self-identifications,” whether purposeful or unintentional, indicate
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common control between websites. Id. ¶ 10f. Mr. Gaffigan points to an example from
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www.dearsunglass.com, which states: “The products we provide cover various aspects of fashion
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article, so you may choose products according to brand or choose brand according to products you
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like form watchesagent.com which is all-round shopping website.” Ex. 1 to Supp. Gaffigan Decl. at
132 (unedited). According to Plaintiff, this is sufficient to establish that common ownership and
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For the Northern District of California
United States District Court
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control of watchesagent.com and dearsunglass.com. The Court is persuaded that these “self-
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identifications” warrant the inference that Defendant is responsible for the four websites tied to it
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solely by virtue of such text.
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In total, the Court is satisfied that 73 of the 176 domains listed by Plaintiff are under the
Defendant’s ownership or control. The others listed on Schedule B are not.
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Because the asserted domain names are relevant to the relief sought by Plaintiff herein – both
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as exemplars for statutory damages as to particular infringements of certain marks and as to
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equitable relief – Plaintiff must “prove up” the essential elements for relief. Televideo Sys., Inc.,
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supra, 826 F.2d at 917-18. Based on the proof submitted, the Court finds the domains listed in
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Appendix A, infra, adequately tied to Defendant such that they may form a basis for damages and
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equitable relief. The others (not listed) are not.
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However, the Court will permit Plaintiff to file a supplemental filing to enhance this list.
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Plaintiff may also list substitute exemplars of alleged infringements based on those approved
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domains listed in Appendix A in order to prove violations entitling it to statutory damages. It may
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also enhance its table of infringements to assert more than 16 infringements. The supplemental
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filing shall be made by April 27, 2011.
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IT IS SO ORDERED.
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Dated: April 14, 2011
_________________________
EDWARD M. CHEN
United States Magistrate Judge
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For the Northern District of California
United States District Court
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APPENDIX A
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360gome.com
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atthego.com
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bagsagent.com
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belovebags.com
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belovewrist.com
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leaderol.com
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officalugg.com
runtimberland.com
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For the Northern District of California
United States District Court
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shopkiss.com
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timberlander.com
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timberlandsou.com
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watchesagent.com
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bagshow.biz
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sexyhygeia.com
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80trade.com
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abercrombiesales.com
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abercrombiestar.com
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allbestdvd.com
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bagsontheway.com
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bapeshopping.com
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basemall.info
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hotsalex.com
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ilikebuy.com
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ireplicachoice.com
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ispv.net
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kicksbap.com
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kicksboots.com
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mixitems.com
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mysoftware123.com
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onairbuy.com
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order24hours.com
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order2you.com
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youmestore.com
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topairmax.com
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topofbikini.com
thehandbagssale.com
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For the Northern District of California
United States District Court
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software4cpu.com
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shixy.com
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sellelec.com
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selinged.com
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robbtrade.com
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progiftstore.com
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pearltop.com
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gsshring.com
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gototbl.com
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golinksoflondon.com
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fangpinb2b.com
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fangpin.net
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fallowtrade.org
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e-superbuyer.com
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edhardyshow.com
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ed-hardys.com
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ecspeed.com
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ecshopking.com
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ecgoshop.com
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ecgohere.com
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ecbape.com
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easydoing.org
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dvdsword.com
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dearpolo.com
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dearmobiles.com
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dearbridal.com
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clortsblog.org
bikinismark.com
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For the Northern District of California
United States District Court
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bikinionlineshop.com
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webmydvd.com
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victor88.com
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selingbags.com
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dearsunglass.com
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