ABERCROMBIE & FITCH TRADING CO. v. abercrombieandfitchsale.us et al

Filing 8

TEMPORARY RESTRAINING ORDER AND ORDER SETTING HEARING ON MOTION FOR PRELIMINARY INJUNCTION. Signed by Judge Darrin P. Gayles on 3/3/2017. (zvr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 17-cv-60394-GAYLES
ABERCROMBIE & FITCH TRADING CO.,
Plaintiff,
v.
ABERCROMBIEANDFITCHSALE.US et al.,
Defendants.
/
TEMPORARY RESTRAINING ORDER
AND ORDER SETTING HEARING ON MOTION FOR PRELIMINARY INJUNCTION
THIS CAUSE comes before the Court on Plaintiff Abercrombie & Fitch Trading Co.’s
Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction
[ECF No. 6], against Defendants, the Individuals, Partnerships and Unincorporated Associations
identified on Schedule “A” hereto, pursuant to 15 U.S.C. § 1116, Fed. R. Civ. P. 65, and The All
Writs Act, 28 U.S.C. §1651(a), for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and
1125(a) & (d). Because the Court finds that the Plaintiff has satisfied the requirements for the
issuance of a temporary restraining order, the Plaintiff’s Application for Temporary Restraining
Order shall be granted.
I.

FACTUAL BACKGROUND 1
1.

Plaintiff Abercrombie & Fitch Trading Co., is the registered owner of the following

trademarks which are valid and registered on the Principal Register of the United States Patent
and Trademark Office (the “Abercrombie Marks”):

1

The factual background is taken from Plaintiff’s Complaint [ECF No. 1], Plaintiff’s Application for Temporary
Restraining Order, and supporting evidentiary submissions.

Trademark

ABERCROMBIE
& FITCH

abercrombie

Registration
Number

0,951,410

2,305,464

Registration
Date

Class / Goods

IC 025 - men’s and women’s clothing
JANUARY 23, and footwear-namely pants, shirts,
1973
skirts, jackets, coats, gloves, mittens,
hats, underwear, shoes, belts, caps.
JANUARY 4,
2000

IC 025 - Clothing, namely, coats, jackets,
knit shirts, woven shirts, t-shirts, shirts,
underwear, pants, jeans, hats and shoes.
IC 035 - Retail clothing store services
IC 003 - personal care products, namely,
perfume.
IC 014 - jewelry, namely, necklaces and
bracelets.

ABERCROMBIE
& FITCH

2,500,146

OCTOBER 23, IC 018 - handbags, tote bags and travel
2001
bags.
IC 025 - clothing, namely, t-shirts,
sweatshirts, sweatpants, jeans, sandals,
visors, tank tops, swimwear, bikinis and
camisoles.

A&F

2,530,664

IC 025 - clothing, namely, hats, caps,
shirts, t-shirts, tank tops, knit tops,
woven tops, halter tops, sweatshirts,
sweatpants, underwear, boxer shorts,
pants, short pants, jeans, skirts, footJANUARY 15, wear, sweaters, vests, coats, jackets,
2002
scarves.
IC 035 - retail personal care product
and clothing store services and mail order catalog services featuring personal
care products and clothing.

2

HOLLISTER

2,774,426

IC 025 - clothing, namely, shirts, t-shirts,
tank-tops, knit tops, woven tops, sweatshirts, sweatpants, jogging pants, swimwear, boxer shorts, pants, short pants,
jeans, dresses, skirts, belts, sweaters,
OCTOBER 21, vests, coats, jackets, sold exclusively in
2003
applicant’s stores.
IC 035 - retail store services featuring
clothing and personal care products
provided exclusively in applicant’s
stores.

3,212,644

February 27,
2007

IC 025 - clothing, namely, polo shirts,
sweaters, t-shirts, shirts, knit tops,
woven tops, sweatshirts, sweatpants,
pants, shorts, caps, hats, scarves, jackets,
coats, sandals, flip flops, belts, tank tops,
underwear, boxer shorts, swim suits,
pajamas, sleepwear.
IC 035 - retail store services, and on-line
retail store services featuring clothing,
footwear, fashion accessories, fragrances
and jewelry.

FITCH

HOLLISTER

ABERCROMBIE

3,304,999

3,310,650

3,484,799

October 2,
2007

IC 025 – clothing, namely, athletic
wear, beachwear, caps, footwear, hats,
knit shirts, knit tops, pants, shirts,
shorts, sleepwear, sweat pants, sweat
shirts, sweat shorts, sweaters, t-shirts.

IC 025 - belts; blouses; boxer shorts;
camisoles; caps; coats; footwear; halter
tops; hats; jackets; jeans; knit shirts;
OCTOBER 16, loungewear; pants; sandals; scarves;
2007
shirts; shoes; shorts; skirts; sweat pants;
sweat shirts; sweat shorts; sweaters;
swim wear; t-shirts; tank tops; underpants; undershirts; underwear.
AUGUST 12,
2008

3

IC 025 - coats; jackets; knit shirts;
shirts; t-shirts; underwear; pants; jeans;
hats; shoes.

HCO

3,529,071

NOVEMBER
4, 2008

IC 025 - clothing, namely, boxer shorts,
caps, coats, hats, jackets, knit shirts,
knit tops, loungewear, pants, shirts,
slacks, sweat pants, sweat shirts, t-shirts
and underwear.
IC 035 - retail store services and on-line
retail services featuring clothing.

3,745,497

February 2,
2010

IC 025 – clothing, namely, blouses,
boxer shorts, camisoles, caps, coats,
dresses, footwear, hats, jackets, jeans,
knit shirts, knit tops, loungewear,
pajamas, pants, scarves, shirts, shorts,
skirts, sleepwear, sweat pants, sweat
shirts, sweaters, swim wear, t-shirts,
tank tops, undershirts, underwear and
vests, all sold exclusively through
applicant’s Hollister stores and Hollister
website.

See Declaration of Seth Wood in Support of Application for Temporary Restraining Order (“Wood
Decl.”) ¶ 4. The Abercrombie Marks are used in connection with the manufacture and distribution
of goods in the categories identified above. Id.
2.

Defendants, through the fully interactive commercial Internet websites and sup-

porting domain names operating under their individual, partnership and/or business association
names identified on Schedule “A” hereto (the “Subject Domain Names”), have advertised, promoted, offered for sale, or sold goods bearing what Plaintiff has determined to be counterfeits,
infringements, reproductions, and/or colorable imitations of Plaintiff’s trademarks. See Wood
Decl. ¶¶ 9-12; Declaration of Virgilio Gigante in Support of Application for Temporary Restraining
Order (“Gigante Decl.”) ¶ 2; see also Compl. Composite Ex. 2 [ECF Nos. 1-2 through 1-6].
3.

Although each Defendant may not copy and infringe each Abercrombie Mark for

each category of goods protected, Plaintiff has submitted sufficient evidence showing each

4

Defendant has infringed, at least, one or more of the trademarks at issue. See Wood Decl. ¶¶ 10-12.
Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make
counterfeits, infringements, reproductions, and/or colorable imitations of the Abercrombie Marks.
See id ¶¶ 9-10, 12.
4.

Plaintiff’s representative reviewed and visually inspected the web page captures

reflecting various products offered for sale bearing the Abercrombie Marks via Defendants’ Internet
websites operating under the Subject Domain Names and determined the products offered for sale
were not genuine versions of Plaintiff’s products. See id. ¶¶ 10-12.
II.

LEGAL STANDARD
In order to obtain a temporary restraining order, a party must demonstrate “(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 nonmovant; and (4) that the entry of the relief would serve the public interest.” Schiavo ex. rel
Schindler v. Schiavo, 403 F.3d 1223, 1225–26 (11th Cir. 2005) (per curiam); see also Levi Strauss
& Co. v. Sunrise Int’l. Trading Inc., 51 F. 3d 982, 985 (11th Cir. 1995) (applying the test to a preliminary injunction in a Lanham Act case). Additionally, a court may issue a temporary restraining
order without notice to the adverse party or its attorney only if:
(A) specific facts in an affidavit or a verified complaint clearly show
that immediate and irreparable injury, loss, or damage will result to
the movant before the adverse party can be heard in opposition
[and] (B) the movant’s attorney certifies in writing any efforts made
to give notice and the reasons why it should not be required.
Fed. R. Civ. P. 65(b)(1). Ex parte temporary restraining orders “should be restricted to serving
their underlying purpose of preserving the status quo and preventing irreparable harm just so long
as is necessary to hold a hearing and no longer.” Granny Goose Foods, Inc. v. Bhd. of Teamsters
& Auto Truck Drivers Local No. 70, 415 U.S. 423, 439 (1974).
5

III.

ANALYSIS
The declarations that the Plaintiff submitted in support of its Application for Temporary

Restraining Order support the following conclusions of law:
A.

Plaintiff has a very strong probability of proving at trial that consumers are likely

to be confused by Defendants’ advertisement, promotion, sale, offer for sale, or distribution of
goods bearing counterfeits, reproductions, or colorable imitations of the Abercrombie Marks, and
that the products Defendants are selling and promoting for sale are copies of Plaintiff’s products
that bear copies of the Abercrombie Marks.
B.

Because of the infringement of the Abercrombie Marks, Plaintiff is likely to suffer

immediate and irreparable injury if a temporary restraining order is not granted. It clearly appears
from the following specific facts, as set forth in Plaintiff’s Complaint, Application for Temporary
Restraining Order, and accompanying declarations on file, that immediate and irreparable loss,
damage, and injury will result to Plaintiff and to consumers before Defendants can be heard in
opposition unless Plaintiff’s request for ex parte relief is granted:
1.

Defendants own or control Internet websites, domain names, or website

businesses which advertise, promote, offer for sale, or sell goods bearing counterfeit and
infringing trademarks in violation of Plaintiff’s rights;
2.

There is good cause to believe that more counterfeit and infringing products

bearing Plaintiff’s trademarks will appear in the marketplace; that consumers are likely to
be misled, confused, and disappointed by the quality of these products; and that Plaintiff
may suffer loss of sales for its genuine products and an unnatural erosion of the legitimate
marketplace in which it operates;
3.

There is good cause to believe that if Plaintiff proceeds on notice to Defend-

ants on this Application for Temporary Restraining Order, Defendants can easily and
6

quickly transfer the registrations for many of the Subject Domain Names, or modify registration data and content, change hosts, and redirect consumer traffic to other websites,
thereby thwarting Plaintiff’s ability to obtain meaningful relief;
C.

The balance of potential harm to Defendants in restraining their trade in counter-

feit and infringing branded goods if a temporary restraining order is issued is far outweighed by
the potential harm to Plaintiff, its reputation, and goodwill as a manufacturer and distributor of
quality products, if such relief is not issued; and
D.

The public interest favors issuance of the temporary restraining order in order to

protect Plaintiff’s trademark interests and protect the public from being defrauded by the palming
off of counterfeit goods as Plaintiff’s genuine goods.
IV.

CONCLUSION
For the foregoing reasons, it is ORDERED AND ADJUDGED that Plaintiff’s Ex Parte

Application for a Temporary Restraining Order [ECF No. 6] is GRANTED as follows:
(1)

Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors,

and all persons in active concert or participation with any Defendant having notice of this Order
are hereby temporarily restrained as follows:
a.

b.

(2)

From manufacturing, importing, advertising, promoting, offering to sell,
selling, distributing, or transferring any products bearing the Abercrombie
Marks, or any confusingly similar trademarks, other than those actually manufactured or distributed by Plaintiff; and
From secreting, concealing, destroying, selling off, transferring, or otherwise
disposing of: (i) any products, not manufactured or distributed by Plaintiff,
bearing the Abercrombie Marks, or any confusingly similar trademarks; or
(ii) any evidence relating to the manufacture, importation, sale, offer for sale,
distribution, or transfer of any products bearing the Abercrombie Marks, or
any confusingly similar trademarks.

Each Defendant, its officers, directors, employees, agents, subsidiaries, distributors,

and all persons in active concert or participation with any Defendant having notice of this Order
7

shall immediately discontinue the use of the Abercrombie Marks or any confusingly similar trademarks, on or in connection with all Internet websites, domain names, or businesses owned and
operated, or controlled by them, including the Internet websites operating under the Subject Domain
Names;
(3)

Each Defendant, its officers, directors, employees, agents, subsidiaries, distribu-

tors, and all persons in active concert or participation with any Defendant having notice of this
Order shall immediately discontinue the use of the Abercrombie Marks, or any confusingly similar
trademarks within domain name extensions, metatags or other markers within website source code,
from use on any webpage (including as the title of any web page), from any advertising links to
other websites, from search engines’ databases or cache memory, and any other form of use of such
terms which is visible to a computer user or serves to direct computer searches to websites registered by, owned, or operated by each Defendant, including the Internet websites operating under
the Subject Domain Names;
(4)

Each Defendant shall not transfer ownership of the Subject Domain Names during

the pendency of this action, or until further Order of the Court;
(5)

The domain name Registrars for the Subject Domain Names are directed to transfer

to Plaintiff’s counsel, for deposit with this Court, domain name certificates for the Subject Domain
Names;
(6)

Upon Plaintiff’s request, the privacy protection service for any of the Subject

Domain Names for which the Registrant uses such privacy protection service to conceal the Registrant’s identity and contact information is ordered to disclose to Plaintiff the true identities and
contact information of those Registrants;
(7)

Upon entry of this Order, Plaintiff shall provide a copy of the Order by email to

the registrar of record for each of the Subject Domain Names. Upon receipt of the Order, the reg8

istrar of record for each of the Subject Domain Names shall immediately lock each of the Subject
Domain Names; shall notify each registrant of record of the Order; and shall provide notice of
the locking of the domain name to the registrant of record. After providing such notice to the registrars so the domain names may be locked, Plaintiff shall also provide notice and a copy of this
Order to the registrant for each Subject Domain Name via email to the email address provided as
part of the domain registration data for each of the Subject Domain Names identified in the
Application for Temporary Restraining Order. If an email address was not provided as part of the
domain registration data for a Subject Domain Name, Plaintiff shall provide notice and a copy of
this Order to the operators of the Internet websites via an onsite email address and/or online
submission form provided on the Internet websites operating under such Subject Domain Names.
Forty-eight hours after emailing this Order to the registrars of record and the registrants, Plaintiff
shall provide a copy of this Order to the registrars and the registries for the Subject Domain
Names for the purposes described in Paragraph 8, below;
(8)

The domain name registrars for the Subject Domain Names shall immediately as-

sist in changing the registrar of record for the Subject Domain Names to a holding account with a
registrar of Plaintiff’s choosing (the “New Registrar”), excepting any such domain names which
such registrars have been notified in writing by Plaintiff have been or will be dismissed from this
action, or as to which Plaintiff has withdrawn its request to immediately transfer such domain
names. To the extent the registrars do not assist in changing the registrars of record for the domains under their respective control within one business day of receipt of this Order, the toplevel domain (“TLD”) registries for the Subject Domain Names or their administrators, including
backend registry operators or administrators, within five business days of receipt of this Order,
shall change, or assist in changing, the registrar of record for the Subject Domain Names to a
holding account with the New Registrar, excepting any such domain names which such registries
9

have been notified in writing by Plaintiff have been or will be dismissed from this action or as to
which Plaintiff has withdrawn its request to immediately transfer such domain names. Upon the
change of the registrar of record for the Subject Domain Names, the New Registrar will maintain
access to the Subject Domain Names in trust for the Court during the pendency of this action.
Additionally, the New Registrar shall immediately institute a temporary 302 domain name redirection which will automatically redirect any visitor to the Subject Domain Names to the following
Uniform Resource Locator (“URL”) http://servingnotice.com/Augk82/index.html whereon copies
of the Complaint, this Order, and all other documents on file in this action are displayed. Alternatively, the New Registrar may update the Domain Name System (“DNS”) data it maintains for
the Subject Domain Names, which link the domain names to the IP addresses where their associated websites are hosted, to NS1.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which
will cause the domain names to resolve to the website where copies of the Complaint, this Order,
and all other documents on file in this action are displayed. After the New Registrar has effected
this change, the Subject Domain Names shall be placed on lock status, preventing the modification
or deletion of the domains by the New Registrar or Defendants;
(9)

This Order shall no longer apply to any Defendant or associated domain name dis-

missed from this action or to which Plaintiff has withdrawn its request for a temporary restraining
order;
(10)

Each Defendant shall preserve copies of all computer files relating to the use of

any of the Internet websites under their Subject Domain Names and shall take all steps necessary
to retrieve computer files relating to the use of the Subject Domain Names that may have been
deleted before the entry of this Order;
(11)

This Order shall remain in effect until the date for the hearing on the Motion for

Preliminary Injunction set forth below, or until such further dates as set by the Court or stipulated
10

to by the parties;
(12)

This Order shall apply to the Subject Domain Names, associated websites, and

any other domain names and websites properly brought to the Court’s attention and verified by
sworn affidavit that such new domain names are being used by Defendants for the purpose of
counterfeiting the Abercrombie Marks at issue in this action or unfairly competing with Plaintiff
on the World Wide Web;
(13)

Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), Plaintiff shall

post a bond in the amount of Ten Thousand Dollars and Zero Cents ($10,000.00), as payment of
damages to which Defendants may be entitled for a wrongful injunction or restraint during the
pendency of this action, or until further Order of the Court. Plaintiff shall post the bond prior to
requesting the registries change to the registrar of record for the Subject Domain Names to a
holding account with the New Registrar;
(14)

A hearing is set before this Court in the United States Courthouse located at 400

North Miami Avenue, Courtroom 11-1, Miami, Florida, 33128, on March 14, 2017, at 10:00
a.m., at which time Defendants or any other affected persons may challenge the appropriateness
of this Order and move to dissolve the same and at which time the Court will hear argument on
Plaintiff’s requested preliminary injunction;
(15)

Plaintiff shall serve a copy of the Complaint, the Application for Temporary Re-

straining Order, and this Order on each Defendant by email as described above and by posting a
copy of the Complaint, the Application for Temporary Restraining Order, this Order, and all other
pleadings

and

documents

on

file

in

this

action

on

the

website

located

at

http://servingnotice.com/Augk82/index.html within forty-eight (48) hours of control of the Subject
Domain Names being changed to the Court via the New Registrar’s holding account, and such

11

notice so given shall be deemed good and sufficient service thereof. 2 Plaintiff shall continue to
provide notice of these proceedings and copies of the documents on file in this matter to Defendants by regularly updating the website located at http://servingnotice.com/Augk82/index.html or by
other means reasonably calculated to give notice which is permitted by the Court;
(16)

Any response or opposition to Plaintiff’s Motion for Preliminary Injunction must

be filed and served on Plaintiff’s counsel at least forty-eight (48) hours prior to the hearing and
filed with the Court, along with Proof of Service. Plaintiff shall file any Reply Memorandum
twenty-four (24) hours prior to the hearing. The above dates may be revised upon stipulation by
all parties and approval of this Court. Defendants are hereby on notice that failure to appear
at the hearing may result in the imposition of a preliminary injunction against them pursuant to 15 U.S.C. § 1116(d), Fed. R. Civ. P. 65, The All Writs Act, 28 U.S.C. § 1651(a), and
this Court’s inherent authority.
(17)

The Clerk is directed to UNSEAL all docket entries in this case.

DONE AND ORDERED in Chambers at Miami, Florida, this 3rd day of March, 2017.

DARRIN P. GAYLES
UNITED STATES DISTRICT JUDGE

2

In this Circuit, Fed. R. Civ. P. 65 has been interpreted to require that a party have notice of the motion and hearing;
perfecting service on a defendant is not a prerequisite to the entry of a preliminary injunction order. See Corrigan
Dispatch Co. v. Casa Guzman, S.A., 569 F.2d 300, 302 (5th Cir. 1978); Diamond Crystal Brands, Inc. v. Wallace,
531 F. Supp. 2d 1366, 1370-71 (N.D. Ga. 2008).

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SCHEDULE “A”
DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME
Defendant Number
1
1
1
2
2
2
2
2
3
4
4
4
5
6
6
6
6
6
7
8
9
9
9
9
9
9
9
9
9
9
9
9
10
11
12
12

Defendant / Domain Name
abercrombieandfitchsale.us
abercrombie-and-fitch.us
abercrombieoutlet.us
abercrombieandfitchoutlet.name
abercrombiekidsoutlet.name
hollister-clothing.org
hollistercoclothing.com
hollisteroutletclothing.com
abercrombieandfitchoutlet.net
abercrombie-andfitchs.com
abercrombiefitchs.cc
hollisterclothingstore.org
abercrombiefitchfrance.com
abercrombiegoteborg.com
horlogebox.com
mizzoulambdas.com
zapateriamadrid.com
fitchtshirt.com
abercrombiemilano.com
abercrombienorgeno.org
abercrombiesireland.com
hollistersclearance.com
abercrombiesnorge.com
abercrombiesoutletmadrid.es
dennisklein.eu
hollisterirelandclothing.com
hollisterirelandclothing.net
hollistersirelands.com
hollisteroutletmadrid.net
ropahollisteronline.net
japanabercrombies.com
obrazkynamobil.eu
abershortsoutlet.us
abwa-vivon.org
afdundrum.com
flytecnam.com

13

13
13
14
15
15
16
16
17
18
18
18
18
19
19
19
19
20
21
21
21
21
22
22
22
22
22
23
24
24
24
25
25
25
25
25
25
26
27
28
29

afonsale.com
poloaf.com
afukstore.co
akosuabyreginak.com
nisayna.com
artemvoronov.com
hollistervdublin.com
bakkerijdickjansen.nl
barfwear.org
urimanage.org
delmaryachtclub.org
shanesnow.org
bearfeeding.com
labsforkids.org
safecom-inc.org
vetementfrancevente.com
billionairemice.com
blush-dance.co.uk
danmarkabercrombieandfitch.net
dengielocal.co.uk
ropahollistermadrid.net
bombommousse.com
cheaphollistersclothings.com
hollister-india.com
ceecgreen.com
hollisters-online.net
borderlinedagboek.nl
boutique4luxury.net
ibrandshops.net
replica4luxury.com
buistore.se
diybrands8.com
diybrand.ru
topfans666.co
topfashionfans.com
myshoppingfans666.com
cheapbags.cn
cheap-store2016.com
cndiybiz.com
concertartshow.com
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30
31
32
32
33
34
35
35
35
35
36
36
37
38
39
39
40
41
42
43
44
45
46
47
48
49
50
51
52
53
54
55
56
57
58
59
60
61

duduok.com
fitnesskeuken.nl
focushopping.es
focushopping8.com
fr-abercrombie.com
hco-store.net
hollistercanada.com
hollister-clothingstore.net
hollistershirts.me.uk
hollisterclothing.net
hollisterclothing.org
hollisterclothingstore.com.co
hollisterdeutsch.eu
hollisterdeutschland.com
hollisterdundrums.com
virtualp.us
hollisterklass.com
hollisteronline.co.uk
hollisterpolosoutlet.com
imperialguardgaming.com
intraduziveis.org
joryclothes.com
kazazz.com.au
kledinghollister.nl
leefpark.nl
michelbodifee.nl
oneclothes.com
onlinepoloshirts.co.uk
optonovis.com
plymouthholidays.co.uk
positivi.be
remixemlak.com
scoolyishop.com
shakti-project.org
soldes-abercrombie.com
stylishsale.co
weisseditions.com
yiminer.com

15