Chanel, Inc. v. herchanel.com et al
Filing
22
ORDER granting 6 Plaintiff's Motion for Preliminary Injunction. Signed by Judge James I. Cohn on 8/9/2013. (sry)
Chanel, Inc. v. herchanel.com et al
Doc. 22
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 13-61591-CIV-COHN/SELTZER
CHANEL, INC.,
Plaintiff,
v.
HERCHANEL.COM, et al.,
Defendants.
________________________/
ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION
THIS CAUSE is before the Court upon Plaintiff’s Motion for Preliminary
Injunction [DE 6] (“Motion”). The Court has carefully reviewed the Motion, the attached
declarations and exhibits [DE 6-1–6-10], and the record in this case. The Court has
also heard oral argument from Plaintiff’s counsel at a hearing on August 9, 2013.
Although Defendants received notice of these proceedings, none of them responded to
the Motion, nor did they appear at the preliminary-injunction hearing.
I.
Background
On July 23, 2013, Plaintiff Chanel, Inc., filed this action against eight-five
partnerships and business associations that sell clothing, accessories, and similar goods
through various websites. See DE 1 (Compl. for Inj. Relief).1 Plaintiff’s Complaint
alleges that Defendants’ goods bear counterfeit and confusingly similar imitations of
several registered trademarks owned by Plaintiff (the “Chanel Marks”). More, Plaintiff
1
Plaintiff has voluntarily dismissed three of the Defendants because their
“associated websites are subject to an Order of another District Court in an unrelated
action by a different trademark owner.” DE 10 (Notice of Voluntary Dismissal); see DE
13 (Order Dismissing Certain Defs.). Plaintiff’s Complaint also names unknown “John
Doe” Defendants.
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contends that many of the Defendants have acted with a bad-faith intent to profit from
the Chanel Marks by registering website domain names that are identical to, confusingly
similar to, or dilutive of the Chanel Marks. The Complaint asserts claims for trademark
counterfeiting and infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114;
false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);
cybersquatting under Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d); and
common-law unfair competition. See DE 1 at 13-17. Plaintiff seeks preliminary and
permanent injunctions barring further illegal conduct by Defendants, as well as an order
requiring that Defendants’ domain names be disabled and either cancelled or transferred
to Plaintiff’s control. See id. at 17-19.
Two days after filing its Complaint, Plaintiff filed an Ex Parte Application for Entry
of Temporary Restraining Order and Preliminary Injunction, see DE 6, along with
declarations and exhibits supporting that filing. See DE 6-1–6-10. On July 26, 2013, the
Court granted Plaintiff’s request for a temporary restraining order (“TRO”). See DE 8
(Order Granting Ex Parte Appl. for Entry of TRO). Based on strong evidence that
Defendants are selling counterfeit and infringing versions of Plaintiff’s trademarked
goods, the Court found that Plaintiff had established all four requirements for a TRO:
(1) a substantial likelihood of success on the merits, (2) that Plaintiff would suffer
irreparable injury if a restraining order were not granted, (3) that the threatened injury to
Plaintiff outweighed the harm the relief would cause to Defendants, and (4) that entry of
the restraining order would serve the public interest. See DE 8 at 6-8; Schiavo ex rel.
Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005) (per curiam).2 In
2
Additionally, the Court determined that a TRO should issue without notice to
Defendants because they could “easily and quickly transfer the registrations for many of
2
accordance with these findings, the Court temporarily restrained Defendants and
associated persons from using infringing versions of the Chanel Marks in connection
with their products, websites, and domain names. See DE 8 at 8-9. The Court also
ordered the registrars for Defendants’ domain names to transfer those names to a
holding account, after which all traffic to the websites would be redirected to a page
displaying the filings in this case. See id. at 9-12. In addition, the Court required Plaintiff
to post a bond of $10,000 and to promptly serve all filings in this case on Defendants
through their known e-mail addresses and the webpage containing the case filings.
See id. at 12-13.3
In the same Order, the Court set a hearing on Plaintiff’s Motion for Preliminary
Injunction and ordered Defendants to file and serve any Response to the Motion by
August 5, 2013. See DE 8 at 13. Further, the Court directed the parties, by noon on
August 7, 2013, to file Witness and Exhibit Lists for the preliminary-injunction hearing.
See id. at 14. The Court cautioned Defendants that “if they do not timely respond to
Plaintiff’s Motion for Preliminary Injunction and do not appear at the scheduled hearing,
the Court may enter a preliminary injunction against them by default.” Id. (emphasis
omitted).
As noted above, Defendants neither responded to the Motion nor appeared at the
hearing. Before the hearing, Plaintiff identified two witnesses who had submitted written
the . . . Subject Domain Names, or modify registration data and content, change hosts,
and redirect traffic to other websites, thereby thwarting Plaintiff’s ability to obtain
meaningful relief.” DE 8 at 7-8; see Fed. R. Civ. P. 65(b)(1).
3
The record indicates that Plaintiff has complied with the bond and service
requirements. See DE 16 (Pl.’s Notice of Filing Bond); DE 14-15, 18-19 (Certificates of
Service).
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declarations in support of the Motion. See DE 17 (Pl.’s Witness List and Ex. List).
Because Defendants did not appear at the hearing, however, Plaintiff relied on the
witnesses’ declarations in lieu of live testimony.
II.
Discussion
The preliminary injunction sought by Plaintiff would maintain the relief granted in
the TRO until this case is decided on the merits. See Fed. R. Civ. P. 65(b)(2) (providing
that a TRO normally expires after 14 days). The requirements for issuing a preliminary
injunction are the same as those for entering a TRO. See Schiavo, 403 F.3d at 1225-26
(“[T]he four factors to be considered in determining whether temporary restraining or
preliminary injunctive relief is to be granted . . . are whether the movant has established:
(1) 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 entry of the relief would serve the
public interest.”). Because a preliminary injunction is “an extraordinary and drastic
remedy,” it may not be granted unless the moving party “clearly carries the burden of
persuasion as to the four prerequisites.” Church v. City of Huntsville, 30 F.3d 1332,
1342 (11th Cir. 1994) (internal quotation marks omitted); see McDonald’s Corp. v.
Roberts, 147 F.3d 1301, 1306 (11th Cir. 1998). Unlike a TRO, a preliminary injunction
requires notice to the adverse party and a hearing. See Fed. R. Civ. P. 65(a).
Here, Plaintiff is substantially likely to succeed on the merits of its claims. Plaintiff
has presented clear evidence that Defendants are selling goods bearing unauthorized,
infringing copies of the Chanel Marks, thereby confusing the public about the origin of
those goods. See 15 U.S.C. §§ 1114, 1125(a). Plaintiff has likewise offered strong
evidence that many of the Defendants have engaged in a bad-faith effort to profit from
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the Chanel Marks by registering website domain names that improperly use those
trademarks. See 15 U.S.C. § 1125(d). Further, allowing Defendants to continue this
illegal conduct would cause irreparable harm to Plaintiff by reducing sales of its genuine
trademarked goods and by depriving it of the reputation and goodwill associated with
those products. Too, because Defendants have no right to sell counterfeit and infringing
goods, or to use the Chanel Marks in their domain names, the balance of harms strongly
favors Plaintiff. And halting Defendants’ conduct—which involves the sale of illicit goods
through unlawful means—serves the public interest. Plaintiff has therefore clearly
proven all four requirements for a preliminary injunction. See Schiavo, 403 F.3d at
1225-26; Church, 30 F.3d at 1342; see also Louis Vuitton Malletier, S.A. v. Bags-WatchReplicas.org, No. 12-62096-CIV, 2012 WL 5398634 (S.D. Fla. Nov. 2, 2012)
(granting preliminary injunction based on similar evidence).
Although Defendants have been given notice of the Motion and an opportunity to
respond, they have made no effort to rebut Plaintiff’s evidence warranting preliminary
injunctive relief. The Court thus concludes that Plaintiff’s Motion should be granted.
III.
Conclusion
For the foregoing reasons, it is hereby ORDERED AND ADJUDGED as follows:
1.
Plaintiff’s Motion for Preliminary Injunction [DE 6] is GRANTED;
2.
All provisions of the Court’s Order Granting Ex Parte Application for Entry of
Temporary Restraining Order [DE 8] shall remain in effect while this case is
pending or until the Court orders otherwise; and
3.
Plaintiff shall promptly serve a copy of this Order on Defendants through the
means specified in paragraphs 7 and 14 of the Order Granting Ex Parte
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Application for Entry of Temporary Restraining Order [DE 8 at 10, 13].
DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County,
Florida, this 9th day of August, 2013.
Copies provided to:
Counsel of record via CM/ECF
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