Abercrombie & Fitch Trading Co. v. Abercrombiesirelands.com et al

Filing 17

Order Granting 5 Application For Entry Of Preliminary Injunction. Signed by Judge Robert N. Scola, Jr on 10/13/2017. (kpe)

United States District Court
for the
Southern District of Florida
Abercrombie & Fitch Trading Co.,
Plaintiff,
v.
Abercrombiesirelands.com, and
others, Defendants.

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Case No. 17-61810-CIV-SCOLA

Order Granting Application For Entry Of Preliminary Injunction
This matter is before the Court on the Plaintiff’s Application for Entry of
Preliminary Injunction (ECF No. 5) (the “Application for Preliminary
Injunction”) and upon the Preliminary Injunction Hearing held on October 13,
2017. The Court has carefully reviewed the Motion and the entire court file and
is otherwise fully advised in the premises.
By the instant Application, Plaintiff Abercrombie & Fitch Trading Co.
(“Plaintiff”) moves for entry of a preliminary injunction against the Defendants,
the Individuals, Partnerships and Unincorporated Associations identified on
Schedule “A” hereto (collectively “Defendants”), pursuant to 15 U.S.C. § 1116
and 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) and (d).
The Court convened a hearing on October 13, 2017, at which only
counsel for the Plaintiff was present and available to present evidence
supporting the Application for Preliminary Injunction. The Defendants have not
responded to the Application for Preliminary Injunction, nor made any filing in
this case, nor have the Defendants appeared in this matter either individually
or through counsel. Because the Plaintiff has satisfied the requirements for the
issuance of a preliminary injunction, the Court grants the Plaintiff’s
Application for Preliminary Injunction (ECF No. 5).

1. Factual Background1
The Plaintiff is the registered owner of the following trademarks on the
Principal Register of the United States Patent and Trademark Office
(collectively, the “Abercrombie Marks”):
Trademark

ABERCROMBIE
& FITCH

abercrombie

Registration Registration
Number
Date

0,951,410

2,305,464

Class / Goods

IC 025 - men's and women's
clothing and footwear-namely
January 23, pants, shirts, skirts, jackets,
1973
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,
2001

IC 018 - handbags, tote bags
and travel bags.
IC 025 - clothing, namely, tshirts, sweatshirts, sweatpants,
jeans, sandals, visors, tank tops,
swimwear, bikinis and
camisoles.

The factual background is taken from the Plaintiff’s Complaint, Application
for Preliminary Injunction, and supporting evidentiary submissions.
1

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,
January 15, footwear, sweaters, vests, coats,
2002
jackets, scarves.
IC 035 - retail personal care
product and clothing store
services and mail order catalog
services featuring personal care
products and clothing.

HOLLISTER

2,774,426

October 21,
2003

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, vests,
coats, jackets, sold exclusively
in applicant's stores.
IC 035 - retail store services
featuring clothing and personal
care products provided
exclusively in applicant's stores.

3,212,644

IC 025 - clothing, namely, polo
shirts, sweaters, t-shirts, shirts,
knit tops, woven tops,
sweatshirts, sweatpants, pants,
February 27, shorts, caps, hats, scarves,
2007
jackets, coats, sandals, flip
flops, belts, tank tops,
underwear, boxer shorts, swim
suits, pajamas, sleepwear.

HOLLISTER

ABERCROMBIE

HCO

3,310,650

3,484,799

3,529,071

October 16,
2007

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

August 12,
2008

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

IC 025 - clothing, namely, boxer
shorts, caps, coats, hats,
jackets, knit shirts, knit tops,
loungewear, pants, shirts,
November 4, slacks, sweat pants, sweat
2008
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, tshirts, tank tops, undershirts,
underwear and vests, all sold
exclusively through applicant’s
Hollister stores and Hollister
website.

FITCH

3,827,154

3,964,371

August 3,
2010

May 24,
2011

IC 025 – Belts; Bottoms; Coats;
Dresses; Footwear; Gloves;
Headwear; Jackets; Leggings;
Scarves; Sleepwear; Swimwear;
Tops; Undergarments
IC 025 - Clothing, namely, polo
shirts, blouses, sweaters, tshirts, knit shirts, knit tops,
sweatshirts, sweatpants, sweat
suits, pants, jogging suits, jeans,
shorts, skirts, caps, hats,
scarves, jackets, coats, sandals,
flip flops, socks, belts, tank tops,
underwear, boxer shorts, swim
suits, pajamas, sleepwear and
thongs
IC 035 - Retail store services
and on-line retail store services
featuring clothing, footwear,
accessories, fragrances and
jewelry

4,302,910

March 12,
2013

IC 025 - Bottoms; Sleepwear;
Undergarments; Swimwear

The Abercrombie Marks are used in connection with the manufacture and
distribution of high quality goods in the categories identified above. (See
Declaration of Seth Wood in Support of Plaintiff’s Application for Preliminary
Injunction (“Wood Decl.”) ¶ 4, ECF No. 5-1.)
The Defendants, through the fully interactive, commercial Internet
websites operating under the domain names identified on Schedule “A” hereto
(collectively, the “Subject Domain Names”), have advertised, promoted, offered
for sale, or sold goods bearing what the Plaintiff has determined to be

counterfeits, infringements, reproductions or colorable imitations of the
Abercrombie Marks. (See Wood Decl. ¶¶ 9-12; see also relevant web pages from
Defendants’ Internet websites operating under the Subject Domain Names
attached as Composite Exhibit 2 to the Compl.)
Although each Defendant may not copy and infringe each of the
Plaintiff’s trademarks for each category of goods protected, the Plaintiff has
submitted sufficient evidence showing each Defendant has infringed, at least,
one or more of the trademarks at issue. (See Wood Decl. ¶¶ 10-12.) The
Defendants are not now, nor have they ever been, authorized or licensed to
use, reproduce, or make counterfeits, reproductions, or colorable imitations of
the Abercrombie Marks. (See Wood Decl. ¶¶ 9-10, 12.)
The Plaintiff's representative reviewed and visually inspected the items
bearing the Abercrombie Marks offered for sale through the Defendants’
Internet websites operating under the Subject Domain Names and determined
the products offered for sale were non-genuine, unauthorized versions of the
Plaintiff’s products. (See id. at ¶¶ 10-12.)
On September 18, 2017, the Plaintiff filed its Complaint (ECF No. 1)
against the Defendants for trademark counterfeiting and infringement, false
designation of origin, cybersquatting, common law unfair competition, and
common law trademark infringement. On September 19, 2017, the Plaintiff
filed its Ex Parte Application for Entry of Temporary Restraining Order and
Preliminary Injunction (ECF No. 5). On September 20, 2017, the Court issued
an Order Granting Ex Parte Temporary Restraining Order (ECF No. 7, entered
on docket September 22, 2017) and temporarily restrained the Defendants
from infringing the Plaintiff’s Marks at issue. Pursuant to the Court’s
September 20, 2017 Order, the Plaintiff provided the Defendants with notice
and copies of the Court’s September 20, 2017 Order and Plaintiff’s Ex Parte
Application for Entry of a Temporary Restraining Order and Preliminary
Injunction via electronic mail (“e-mail”) to each Defendant’s corresponding email address(es) and via publication. Thereafter, Certificates of Service were
filed confirming service on the Defendants (ECF Nos. 11-12).
2. Legal Standard
To obtain a preliminary injunction, 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 non-movant; 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).
3. Analysis
The declarations the Plaintiff submitted in support of its Application for
Preliminary Injunction support the following conclusions of law:
A.
The Plaintiff has a very strong probability of proving at trial that
consumers are likely to be confused by the Defendants’ advertisement,
promotion, sale, offer for sale, or distribution of products bearing counterfeits,
reproductions, or colorable imitations of the Abercrombie Marks, and that the
products the Defendants are selling and promoting are copies of the Plaintiff's
products that bear copies of the Abercrombie Marks.
B.
Because of the infringement of the Abercrombie Marks, the Plaintiff
is likely to suffer immediate and irreparable injury if a preliminary injunction is
not granted. It clearly appears from the following specific facts, as set forth in
the Plaintiff’s Complaint, Application for Preliminary Injunction, and
accompanying declarations on file, that immediate and irreparable loss,
damage, and injury will result to the Plaintiff and to consumers because it is
more likely true than not that:
1.
The Defendants own or control Internet websites, domain
names, or businesses which advertise, promote, offer for sale, or sell products
bearing counterfeit and infringing trademarks in violation of the Plaintiff's
rights; and
2.
There is good cause to believe that more counterfeit and
infringing products bearing the 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 the Plaintiff may suffer
loss of sales for its genuine products.
C.
The balance of potential harm to the Defendants in restraining
their trade in counterfeit and infringing branded products if a preliminary
injunction is issued is far outweighed by the potential harm to the Plaintiff, its
reputation, and its goodwill as a manufacturer and distributor of quality
products if such relief is not issued.
D.
The public interest favors issuance of the preliminary injunction to
protect the Plaintiff’s trademark interests and protect the public from being
defrauded by the palming off of counterfeit products as the Plaintiff’s genuine
products.
4. Conclusion
For the foregoing reasons, it is ordered and adjudged that the Plaintiff’s

Application for Preliminary Injunction (ECF No. 5) is hereby 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 restrained and
enjoined until further Order of this Court:
a. 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 the Plaintiff; and
b. From secreting, concealing, destroying, selling off, transferring,
or otherwise disposing of: (i) any products, not manufactured or
distributed by the 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.
2.
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 shall immediately discontinue,
until further Order of this Court, 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, distributors, and all persons in active concert or participation
with any Defendant having notice of this Order shall immediately discontinue,
until further Order of this Court, 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 the extent not already done, to transfer to the Plaintiff’s counsel, for
deposit with this Court, domain name certificates for the Subject Domain
Names;
6.
Upon the 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
are ordered, to the extent not already done, to disclose to the Plaintiff the true
identities and contact information of those registrants;
7.
The domain name registrars for the Subject Domain Names shall
immediately, to the extent not already done, assist in changing the registrar of
record for the Subject Domain Names, to a holding account with a registrar of
the Plaintiff’s choosing (the “New Registrar”), excepting any such domain
names which such registrars have been notified in writing by the Plaintiff have
been or will be dismissed from this action, or as to which the 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 (1) business day of receipt of
this Order, the top-level domain (TLD) registries for the Subject Domain Names
or their administrators, including backend registry operators or administrators,
within five (5) 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 have been notified in writing by the Plaintiff have been or will be
dismissed from this action or as to which the 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/Acxe70/index.html
whereon copies of the Complaint, this Order, and all other documents on file in
this action shall be 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 shall be 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 the
Defendants;
8.
Each Defendant shall continue to preserve copies of all computer
files relating to the use of any of the 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;
9.
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 the Defendants for the purpose of counterfeiting the
Abercrombie Marks or unfairly competing with the Plaintiff on the World Wide
Web;
10. As a matter of law, this Order shall no longer apply to any
Defendant or associated domain name dismissed from this action or as to
which the Plaintiff has withdrawn its request for a preliminary injunction;
11. Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), the
Plaintiff shall maintain its previously posted bond in the amount of Ten
Thousand Dollars and Zero Cents ($10,000.00), as payment of damages to
which the Defendants may be entitled for a wrongful injunction or restraint,
during the pendency of this action, or until further Order of the Court; and
12. This preliminary injunction shall remain in effect during the
pendency of this action, or until further Order of this Court.
Done and ordered at Miami, Florida, on October 13, 2017.
________________________________
Robert N. Scola, Jr.
United States District Judge

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

Subject Domain Name
abercrombiesirelands.com
thebielbymill.co.uk
adampiccin.com
circledoc.com
foreverflowerz.com
saralandas.com
adayatthebeachat42.com
centurionfellowship.com
enjoyrrhh.com
gus-myers.com
infocabello.com
josehermo.com
kensmusclecars.com
anolivedaily.com
biofincamontefrio.com
chabadgash.com
csv2sql.com
gelisimaikido.com
missallyb.com
pustasarim.com
unbiased-audio.com
bluegekkophoto.com
balesavenue.com
collegeparksunoco.com
judyclarkeflowers.com
baseballwhiz.com
renewal-coupons.com
adam2inc.com
bearrubmassage.com
laroyaholding.com
morrisvillefirst.com
swedwell.com
wildkatphoto.com
beinghumanyoga.com

8
8
9
10
10
11
11
11
11
12
12
12
13
14
14
14
15
15
15
15
15
16
16
17
17
17
18
18
18
18
18
19
19
19
19
19
19
19

chockyhendreth.com
m-crecruitment.com
bestpricefashionbrands.com
blanquinegra.com
kate-mara.us
bonaire-beaches.com
bprocs.com
cantbuytomorrow.com
prestamix.com
bonoparroquial.com
dylanandandy.com
humbleliquorstore.com
byronrice.com
cavudining.com
funny-hobby.com
hobbynsport.com
cftc-citroen-suc.com
cottageindustriesonline.com
melitopolcity.com
reinertleprince.com
transports-abrial.com
championsgatewaygroup.com
firstgleammarketing.com
chironcoleweddings.com
clip2be.com
sustainableimaging.com
christmassongstories.com
errachidia10km.com
forodeoportunidades.com
latiendadejesus.com
pykemessenger.com
clickerhappiness.com
cmi-eu.com
coleccionlcde.com
crossfityorkme.com
jackparchman.com
thegymonbowen.com
wsidigitalpro.com

20
21
21
21
21
21
21
21
22
22
22
23
24
24
24
24
25
25
25
26
26
26
26
26
26
26
26
26
26
26
26
26
26
26
27
27
27
28

clothes-outletstore.com
clubhotelmontreal.com
dancestarmickey.com
dietproteica.com
ogeditor.com
sabongnow.com
viveksp.com
palawanelnido.com
coreenecollinshair.com
seanreyesmusic.com
tanzmentalcoach.com
crossfitpoole.com
dieta-acai-berry.com
johnnysbarmercer.com
vukovar-info.com
maloneswrecker.com
dietmoinhanh.com
ecoandlogicesco.com
freinmoteur.com
edison83.com
edsoncanoe.com
happyfantickets.com
fanretsu.com
juegosdepapalouie.com
nodame-music.com
pawnmartonline.com
hangitwright.com
sherylyeagerart.com
joannalovesfashion.com
ktatkd.com
libertyesa.com
thefloodcleanupteams.com
hotelchennaipalace.com
poljoprivredanovoselo.com
elevationcoaches.com
lubbockrealtyonline.com
top20videospain.com
epplastics.com

29
30
31
32
32
32
33
33
33
33
33
34
35
35
36
36
36
36
37
37
37
37
38
39
39
40
41
42
42
42
43
44
45
45
46
47
48
49

fisherblogs.com
footywallpapershd.com
freekhoj.com
frenchammer.com
heightsshowcase.com
start-upvisa.com
goldfacedbetty.com
mt-enkayaks.com
ziandoball.com
a1windowservice.com
gtc-engraveit.com
green-and-thrifty.com
insidejokeshow.com
thequiltingbookclub.com
jumpforjoytahoe.com
malerbetrieb-droese.com
sayerkaucuk.com
waterbypuritii.com
kinvarabeautystudio.com
magicna-zivaograda.com
morii-mokei.com
30aniversarioivomec.com
lowpricesfashion.com
modeetcompagnie.com
primal-parenting.com
mylovelydresser.com
pascal-bejeannin.com
procyonsystem.com
travelkolanta.com
xtraingresos.com
rudymentaire.com
ssd-test.com
theottimo.com
tillthelastroom.com
trade999.top
unimogilev.com
villagedeliandgrill.com
accringtonroaddental.co.uk

50
51
52
53
54
55
56
57
58
59
60
61
62
63
64
65
66
67
68
69
70

boardgamebeastro.com
buscamosafrancisco.com
capturedwanderlust.com
cervezasmayos.com
egarri.com
fotodued.com
freedomyoga4all.com
grogreenhouses.com
longoservices.com
metatea.co.uk
nerakhoon.com
pellerinstubular.com
pictural.co.uk
planetainformativo.com
revista-temas.com
signguysrc.com
sweets2you.co.uk
tompowersmusic.com
toursbyq.com
travaux-publics-47.com
hollister-abercrombiefitch.fr