Gucci America, Inc. v. 532buy.com et al

Filing 17

ORDER granting 6 Motion for Preliminary Injunction. Signed by Judge Darrin P. Gayles on 11/8/2017. (hmo)

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No. 17-cv-62068-GAYLES GUCCI AMERICA, INC., Plaintiff, v. 532BUY.COM, et al., Defendants. / ORDER GRANTING PRELIMINARY INJUNCTION THIS CAUSE comes before the Court on Plaintiff Gucci America, Inc.’s Application for Preliminary Injunction [ECF No. 6]. The Court has carefully reviewed the Application and the record and is otherwise fully advised in the premises. By the instant Application, Plaintiff moves for entry of a preliminary injunction against Defendants, the Individuals, Partnerships and Unincorporated Associations identified on Schedule “A” hereto, for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a) & (d). The Court convened a hearing on November 8, 2017, which was attended by counsel for Plaintiff only. During the hearing, Plaintiff directed the Court to evidence supporting the Application for Preliminary Injunction. Defendants have not responded to the Application for Preliminary Injunction, nor have Defendants made any filing in this case, nor have Defendants appeared in this matter either individually or through counsel. Because Plaintiff has satisfied the requirements for the issuance of a preliminary injunction, the Court grants Plaintiff’s Application for Preliminary Injunction. I. FACTUAL BACKGROUND1 1. Plaintiff Gucci America, Inc., is the owner of the following trademarks which are valid and registered on the Principal Register of the United States Patent and Trademark Office (the “Gucci Marks”): Trademark GUCCI Registration Number 0,876,292 Registration Date September 9, 1969 Class(es) / Good(s) IC 018 – pocketbooks, wallets, travel and duffel bags, attache cases, toilet cases sold empty, shoe bags, and umbrellas. IC 025 – shoes and boots. 0,959,338 May 22, 1973 IC 014 – watches. 1,106,722 GUCCI IC 025 – Neckties, scarves, belts, November 21, footwear, shirts, sweaters, coats, suits, [ 1978 dressing gowns, hats, socks, dresses, ] and bathing suits 1,122,780 July 24, 1979 1,123,224 July 31, 1979 IC 014 – goods made or coated with precious metal-namely, watches. 1,158,170 (Green Red Green Stripe Design) IC 018 – wallets, purses, handbags, shoulder bags, clutch bags, tote bags, card cases, attaché cases, valises, suitcases, duffles, and key cases. IC 025 – clothing-namely, neckties, June 23, 1981 scarves, belts, footwear, shirts, coats, hats, dresses, and bathing suits. (Green Red Green Stripe Design) 1 The factual background is taken from Plaintiff’s Complaint [ECF No. 1], Plaintiff’s Application for Preliminary Injunction, and supporting evidentiary submissions. 2 GUCCI Class(es) / Good(s) September 8, 1981 IC 025 – neckties, scarves, belts, footwear, shirts, sweaters, coats, suits, dressing gowns, hats, socks, dresses, and bathing suits. 1,200,991 July 13, 1982 IC 014 – Bracelets, rings, necklaces, cufflinks, pendants, money clips, keyrings, and pill boxes, all made wholly or in part of precious metal April 5, 1988 IC 025 – footwear. 1,511,774 GUCCI Registration Date 1,483,526 Trademark Registration Number November 8, 1988 IC 018 – Purses, handbags, shoulder bags, clutch bags, tote bags 1,168,477 (Green Red Green Stripe Design) (Blue/Red/Blue Stripe Design) 2,234,272 March 23, 199 IC 014 – Watches and clocks 3,039,629 January 10, 2006 IC 025 – footwear and belts. 3,039,630 January 10, 2006 IC 018 – wallets, purses, handbags, tote bags, business card cases, credit card cases and key cases, partly or wholly of leather. 3,039,631 January 10, 2006 IC 009 – Eyeglass frames and sunglasses 3 Trademark Registration Number Registration Date Class(es) / Good(s) 3,061,918 February 28, 2006 IC 018 – wallets, purses, handbags, shoulder bags, clutch bags, tote bags, duffel bags, business card cases, calling card cases, credit card cases, name card cases, key cases and attache cases. 3,072,547 March 28, 2006 3,072,549 IC 018 – wallets, purses, handbags, shoulder bags, clutch bags, tote bags, business card cases, credit card cases, March 28, 2006 partly and wholly of leather, key cases, cosmetic cases sold empty, briefcases, attaché cases, valises, suitcases, and duffles. 3,376,129 January 29, 2008 IC 025 – neckties, scarves, belts, footwear and gloves. IC 018 – wallets, purses, handbags, shoulder bags, tote bags, business card cases, credit card cases, partly and wholly of leather, cosmetic cases sold empty, briefcases, attaché cases, valises, suitcases and duffles. IC 009 – eyeglass frames and sunglasses. IC 014 – jewelry and watches. IC 016 – agendas and notebooks. 3,378,755 February 5, 2008 IC 018 – wallets, purses, handbags, shoulder bags, clutch bags, tote bags, business card cases, credit card cases, partly and wholly of leather, key cases, cosmetic cases sold empty, briefcases, attaché cases, valises, suitcases and duffles. IC 025 – scarves, belts, footwear, shirts, sweaters, coats, suits. 4 Registration Number Registration Date 3,391,739 Trademark March 4, 2008 Class(es) / Good(s) IC 009 – eyeglass frames and sunglasses. IC 006 – metal key rings. 3,470,140 July 22, 2008 IC 014 – jewelry, namely, earrings, pendants, rings, necklaces and watches; key rings of precious metal. IC 025 – apparel, namely, neckties, scarves, shirts, sweaters, coats, hats, socks, dresses, bathing suits, and gloves. IC 014 – jewelry. 4,229,081 October 23, 2012 IC 018 – wallets, purses, handbags, shoulder bags, clutch bags, tote bags, business card cases, credit card cases partly and wholly of leather, key cases, cosmetic cases sold empty, briefcases, attache cases, valises, suitcases and duffel bags. IC 025 – neckties, scarves, belts, footwear and gloves. 4,379,039 IC 025 – shorts, pants, jeans, leggings, tshirts, polo shirts, shirts, sweaters, sweatshirts, dresses, skirts, swimwear, August 6, 2013 one piece garments for infants and toddlers, cloth bibs, scarves, ties, hats, gloves, suspenders, belts. 4,407,020 IC 006 – Metal Key rings IC 009 – Sunglasses IC 014 – Jewelry IC 018 – Wallets, handbags, cosmetic September 24, cases; pet accessories, namely, collars 2013 for pets IC 025 – Footwear, t-shirts, shirts, dresses, leggings, hats, shawls, scarves, belts, pants, cardigans, body suits, cloth bibs, skirts, sweatshirts, jackets (Green Red Green Stripe Design) 5 Trademark Registration Number GUCCI 4,407,149 4,563,071 Registration Date Class(es) / Good(s) September 24, IC 009 – sunglasses and cases for 2013 sunglasses. July 8, 2014 IC 009 – protective covers and cases for mobile electronic devices and computers. IC 014 – watches. GUCCI GUCCI 4,563,098 4,563,132 July 8, 2014 IC 009 – protective covers and cases for mobile electronic communication devices and computers; computer application software for all mobile devices, namely, software for providing information in the field of fashion, the arts and lifestyle. July 8, 2014 IC 018 – handbags, shoulder bags, clutch bags, tote bags, briefcases, business card cases, credit card cases, backpacks, key cases, passport cases, cosmetic cases sold empty, valises, suitcases, luggage, all the foregoing being made in whole or in part of leather; pet accessories, namely, carriers, collars and leashes; pet collar accessories, namely, charms. IC 009 – protective covers and cases for mobile electronic communications devices and computers; cell phone straps. 4,567,107 July 15, 2014 6 IC 018 – shoulder bags, clutch bags, backpacks, document cases, cosmetic cases sold empty, briefcases, suitcases, general purpose trolley bags, laptop carrying cases, luggage, duffle bags, tote bags, all of the foregoing being made in whole or in part of leather. Trademark Registration Number Registration Date Class(es) / Good(s) IC 014 – jewelry and key rings of precious metal. 4,567,112 July 15, 2014 (Green Red Green Stripe Design) IC 009 – eyeglasses and sunglasses and cases therefor; protective covers and cases for mobile electronic communication devices and computers; cell phone straps; computer carrying cases. IC 018 – cosmetic cases sold empty, suitcases, luggage, duffle bags, diaper bags partly and wholly of leather; pet accessories, namely, carriers, collars and leashes. IC 009 – protective covers and cases for mobile electronic communications devices and computers; computer cases made of leather. IC 014 – watches. 4,583,258 August 12, 2014 IC 018 – backpacks, trollies, baby bags, computer cases made of leather, garment bags, pet accessories, namely, carriers, collars and leashes; pet collar accessories, namely, charms. IC 025 – clothing, namely, shirts and jackets. 5,073,022 November 1, 2016 IC 018 – handbags and wallets. IC 025 – belts and footwear. See Declaration of Vanni Volpi in Support of Application for Preliminary Injunction (“Volpi Decl.”) ¶¶ 4-5. The Gucci Marks are used in connection with the manufacture and distribution of high quality goods in the categories identified above. Id. 7 2. Defendants, through the fully interactive commercial Internet websites and supporting domains operating under their individual, partnership and/or business association names identified on Schedule “A” hereto (the “Subject Domain Names”),2 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 Volpi Decl. ¶¶ 9-12; Declaration of T. Raquel Wiborg-Rodriguez in Support of Application for Preliminary Injunction (“Wiborg-Rodriguez Decl.”) ¶ 2; see also Compl. Composite Ex. 2 [ECF Nos. 1-2 through 1-7]. 3. Although each Defendant may not copy and infringe each Gucci Mark for each category of goods protected, Plaintiff has submitted sufficient evidence showing each Defendant has infringed, at least, one or more of the trademarks at issue. See Volpi Decl. ¶¶ 9-12. Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the Gucci Marks. See id. ¶¶ 9-10, 12. 4. Plaintiff’s representative reviewed and visually inspected Defendants’ Websites, including web page captures reflecting various products offered for sale bearing the Gucci Marks via the Subject Domain Names, and determined the products offered for sale were non-genuine, unauthorized versions of Plaintiff’s products. See id. ¶¶ 10-12. 5. On October 23, 2017, Plaintiff filed its Complaint [ECF No. 1] against Defendants for federal trademark counterfeiting and infringement, false designation of origin, cybersquatting, common law unfair competition, and common law trademark infringement. On October 24, 2017, Plaintiff filed its Ex Parte Application for Entry of Temporary Restraining 2 Several Defendants use supporting domains to automatically redirect and forward consumers to a fully-interactive, commercial Internet website operating under one of the Subject Domain Names. These redirecting websites are identified as such in Composite Exhibit 2 attached to the Complaint. See Volpi Decl. ¶ 10 n.1; Wiborg-Rodriguez Decl. ¶ 2 n.1; see generally Compl. Composite Ex. 2 [ECF Nos. 1-2 through 1-7]. 8 Order and Preliminary Injunction [ECF No. 6]. On October 24, 2017, the Court entered an Order Granting Ex Parte Temporary Restraining Order [ECF No. 7] and temporarily restrained Defendants from infringing Plaintiff’s Marks at issue. Pursuant to the Court’s Order on October 24, 2017, Plaintiff properly served Defendants with a copy of the Complaint, together with a copy of the October 24, 2017 Order. Thereafter, Certificates of Service were filed confirming service on Defendants. [ECF Nos. 10, 11, & 12]. II. LEGAL STANDARD In order 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 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). III. ANALYSIS The declarations Plaintiff submitted in support of its Application for Preliminary Injunction 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 Gucci Marks, and that the products Defendants are selling and promoting for sale are copies of Plaintiff’s products that bear copies of the Gucci Marks. B. Because of the infringement of the Gucci Marks, Plaintiff is likely to suffer immediate and irreparable injury if a preliminary injunction is not granted. It clearly appears 9 from the following specific facts, as set forth in Plaintiff’s Complaint, Application for Preliminary Injunction, and accompanying declarations on file, that immediate and irreparable loss, damage, and injury will result to Plaintiff and to consumers because it is more likely true than not that: 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; and 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. C. The balance of potential harm to Defendants in restraining their trade in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation, and its goodwill as a manufacturer and distributor of quality products, if such relief is not issued; and D. The public interest favors issuance of the preliminary injunction 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 Application for Preliminary Injunction [ECF No. 6] is GRANTED as follows: 10 (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 as follows: a. b. (2) From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing the Gucci 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 Gucci 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 Gucci 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 shall immediately discontinue, until further Order of this Court, the use of the Gucci 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 Gucci 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 11 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 extend not already done, 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 the extent not already done, to disclose to 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 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 top-level 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 have been notified in writing by Plaintiff have 12 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/G8rjbw/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; (8) This Order shall no longer apply to any Defendant or associated domain name dismissed from this action or to which Plaintiff has withdrawn its request for a preliminary injunction; (9) Each Defendant shall continue to 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; 13 (10) 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 Gucci Marks at issue in this action or unfairly competing with Plaintiff on the World Wide Web; (11) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), 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 Defendants may be entitled for a wrongful injunction or restraint during the pendency of this action, or until further Order of the Court; (12) This Order shall remain in effect during the pendency of this action, or until further Order of this Court. DONE AND ORDERED in Chambers at Miami, Florida, this 8th day of November, 2017. ________________________________ DARRIN P. GAYLES UNITED STATES DISTRICT JUDGE 14 SCHEDULE “A” DEFENDANTS BY NUMBER AND SUBJECT DOMAIN NAME Def. No. 1 2 3 4 5 5 6 6 6 6 7 8 8 8 8 8 8 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 Defendant / Subject Domain Name 532buy.com 86itbags.com 8kanse.com aaabagszet.com alicebagshop.com felp.co.uk allgrafix.de iphonedekselnorges.com peluqueriazigzag.es topmoeders.nl autoarifagic.com bagu.store guccin.store guccionline.store gucciu.store handbagonline.store shoptope.store balenclaga-tw.com burberry-tw.com burberry-tw.net bv-tw.com chanel88.net chanel-boy.com chanel-cc.com coach669.com coach-tw.com gucci669.com gucci88888.com gucci-marmont.com gucci-tw.net hk-gucci.net hk-lv.net jxhxgd.com lv6666.net lv-neverfull.com lv-speedy.com lv-taiwan.com lv-taiwan9.com lv-wf.com miumiu-tw.com montblanc-tw.com 15 Def. No. 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 9 10 10 11 11 11 11 11 11 11 12 13 13 13 14 15 15 15 15 15 16 17 18 18 18 18 18 Defendant / Subject Domain Name never-full.com neverfull-lv.com panerai-tw.com santak-jx.com speedy-lv.com taipei-lv.com tw-burberry.com tw-bv.com tw-bvlgari.com tw-coach.com twlv2012.com vshop888.com watch-bvlgari.com watch-chopard.com watch-longines.net watch-lv.com xn--9et39ub04at3j.net xn--djrptm54eg7jdts.net beltsvon.cn shoesfactoryitaly.com bestfaketrade.com cheapreplicablack.com fakebagsshome.com fakebagsyun.com replicashop5s.com rightreplicastore.com wowbestreplica.com bestofdoorwerdt.nl bolsosguccis.com guccis-sitoufficiale.com guccistaschen-gunstig.biz brands369.com brisbaneshoppingmall.info shoppingtopbrands.top singapore-onlineshop.info sweetiemalluk.info worldofwatch.info buyne.net cavyrescueandretreat.org.uk cheapgucci.online cybermondaysale.online ebayoutlet.online guccioutlet.online montblancoutlet.online 16 Def. No. 18 19 20 20 20 20 20 20 20 20 20 20 20 20 21 21 22 23 24 24 24 25 26 27 28 29 30 31 32 32 32 33 34 35 36 37 38 39 40 41 42 43 44 45 Defendant / Subject Domain Name nordstromoutlet.online cheapguccibeltsreplicas.com cheapreplicamall.com imitationlowprice.com replicaaround.com delawaresecc.org emima.org insfhoe.org jothemo.org kcubf.org northfirst.org reflexer.org slotherapist.org socmexanat.org deporteros.es radio-taurus.de discountshoesbar.nl e8bagg.com eigeneralifegranada.es hellosandwich.nl journeybackstage.com emazoon.co.uk energielabelmaatwerk.nl extrakados.nl faesis.nl fakebagsshopping.com fashionbagce.com forceplayers.com foyerruralmoivrons.fr stefannachtnebel.com torten-update.de grafiehoek.nl guccioutletsonlineshop.com guccishoes.co.uk guccishoes.net.co hibestreplica.com hk-joyce.net ibagtaiwan.com ilovebestshoes.net jfbiaotw.com lv-sss.com jpchane1-shops.com kifo99.com kingwatch.store 17 Def. No. 46 47 48 49 50 51 51 51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 67 68 69 70 71 72 73 74 75 Defendant / Subject Domain Name lasvegasdvdtransfer.com lingkicks.net lombardiaaffari.it lux-and-time.net luxuryabc.com luxuryuksale.com fakehandbag.co.uk guccibags.org.uk lvdiscountbags2a.com mobileauthcorp.com mybag2017.com neo2city.es offerfakehandbags.com okgoodshoes16.com okshoessale.nl perfectpays.com productosoutlet.com remiggiproductions.com replicaonlinestore.com sluiterauto.com stainlessaaa.com swissseafoodimport.com talentlabonline.com truthinarchitecture.com tutrabajas.es ubgallery.store vonbags.com voorlageprijzen.nl watch-breitling.net welcome-doc.fr wembleyonlinemarket.co.uk zw7.nl 18

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