Gucci America, Inc. v. Zhou et al
Filing
12
ORDER granting 6 Ex Parte Motion for Temporary Restraining Order and Order Restraining Transfer of Assets Tied to the Counterfeiting Operation; Plaintiff to Post Bond in the amount of $30,000.00; Hearing Set for 8/26/2011 at 1:30 PM. Signed by Judge Patricia A. Seitz on 8/18/2011. (ls)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-22734-CIV-SEITZ/SIMONTON
GUCCI AMERICA, INC.,
Plaintiff,
v.
GUODONG ZHOU, et at.,
Defendants.
-------------------------------/
ORDER GRANTING TEMPORARY RESTRAINING ORDER EX PARTE
THIS CAUSE is before the Court on Plaintiffs Ex Parte Application for Entry of
Temporary Restraining Order and Preliminary Injunction and Order Restraining Transfer of
Assets Tied to the Counterfeiting Operation (the "Ex Parte Application for TRO and Asset
Restraint"). The Court has carefully reviewed the Application, the entire Court file and is
otherwise fully advised in the premises.
By the instant Application, Plaintiff, Gucci America, Inc. ("Gucci"), moves ex parte, for
entry of a temporary restraining order and order freezing the financial accounts used by
Defendants Guodong Zhou, Zheng Yueruo, Lin Feng, Wu Weilong, Shaosong Lin, Wu Jinlong,
and Does 1-1 0 (collectively "Defendants") doing business as the domain names identified on
Schedule "A" hereto (the "Subject Domain Names"), pursuant to 15 U.S.C. § 1116 and Fed. R.
Civ. P. 65.
1
I. Factual Back&round
The Court bases this Order on the following facts from Plaintiff s First Amended
Complaint, Ex Parte Application for TRO and Asset Restraint, and supporting evidentiary
submissions.
Gucci is a corporation duly organized under the laws of the State of New York, with its
principal place of business in the United States located at 685 Fifth Avenue, New York, New
York 10022. (First Amended Complaint,
~
2.) Gucci is engaged in the manufacture, promotion,
distribution, and sale in interstate commerce, including within this Judicial District, of high
quality products under multiple federally registered trademarks. (Declaration of Stacy Feldman
in Support of Plaintiffs Ex Parte Application for Entry of Temporary Restraining Order and
Preliminary Injunction and Order Restraining Transfer of Assets Tied to the Counterfeiting
Operation ["Feldman Decl."]
~~
4-5.)
Gucci is the owner of all rights in and to the following trademarks which are valid and
registered on the Principal Register of the United States Patent and Trademark Office:
Re&istration No.
Re&istration Date
GUCCI
0,876,292
September 9, 1969
GUCCI
0,959,338
May 22,1973
G9
1,107,311
November 28, 1978
1,122,780
July 24, 1979
1,168,477
September 8, 1981
3,039,629
January 10, 2006
(Green Red Green Stripe Design)
GUCCI
2
3,072,549
3,376,129
January 29, 2008
3,378,755
February 5, 2008
3,391,739
G9
March 28, 2006
March 4, 2008
(collectively the "Gucci Marks") which are registered in International Classes 9, 14, 18, and 25,
and are used in connection with the manufacture and distribution of, among other things
handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches. (Feldman Decl.
~
5; see
also United States Trademark Registrations of the Gucci Marks at issue ["Gucci Trademark
Registrations"] attached as Composite Exhibit A to the Feldman Decl.)
Defendants have advertised, offered for sale, and/or sold at least handbags, wallets,
footwear, belts, shirts, hats, sunglasses, and watches, bearing what Plaintiff has determined to be
counterfeits, reproductions, and/or colorable imitations of the Gucci Marks. (Feldman Decl.
~~
11-13; Declaration of Eric Rosaler in Support of Plaintiffs Ex Parte Application for Entry of
Temporary Restraining Order and Preliminary Injunction ["Rosaler Decl."]
~
4 and Composite
Exhibit A attached thereto; Declaration of Stephen M. Gaffigan in Support of Plaintiffs Ex
Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction
["Gaffigan Decl."]
~~
2-5 and Composite Exhibits A, B, and C attached thereto.) Defendants are
not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits,
reproductions, and/or colorable imitations of the Gucci Marks. (Feldman Decl.
3
~
9.)
Plaintiff retained Eric Rosaler ("Rosaler") of AED Investigations, Inc. to investigate
suspected sales of counterfeit Gucci branded products by Defendants. (Feldman Decl.
Rosaler Decl.
~
~
10;
3.) Rosaler accessed the Internet website operating under the domain name
guccireplicastore.com and placed an order for the purchase of a Gucci branded wallet, to be
shipped directly to his address located in A ventura, Florida. (Rosaler Decl.
~
4 and Composite
Exhibit A attached thereto.) Rosaler finalized payment for the wallet via the Western Union
Financial Services, Inc. account of the Defendant GuoDong Zhou and was given a Money
Transfer Control Number ("MTCN") of 873-086-0081. 1 (Rosaler Decl. ~ 6 and Composite
Exhibit C attached thereto.) Thereafter, a representative of Gucci, Stacy Feldman, reviewed and
visually inspected the web page listings of the Gucci branded wallet purchased by Rosaler, and
determined the item was a non-genuine Gucci product. (Feldman Dec!.
~
12.) Additionally,
Feldman reviewed and visually inspected the items bearing the Gucci Marks offered for sale on
the Internet websites operating under the Subject Domain Names and determined the products
were non-genuine Gucci products. (Feldman Decl.
~
13.)
II. Conclusions of Law
The declarations Plaintiff submitted in support of its Ex Parte Application for TRO and
Asset Restraint support the following coneI usions 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, and/or distribution
of handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches bearing counterfeits,
reproductions, and/or colorable imitations of the Gucci Marks, and that the products Defendants
1 Rosaler instructed payment to be made to Guodong Zhou; however, the Western Union
Customer Receipt identifies the Receiver as Guo Dong Zhou. (See Rosaler Decl. ~ 6.)
4
are selling are copies of Plaintiff s products that bear copies of the Gucci Marks on handbags,
wallets, footwear, belts, shirts, hats, sunglasses, and watches.
B.
Because of the infringement of the Gucci 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 Plaintiffs First Amended Complaint, Ex
Parte Application for TRO and Asset Restraint, 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 are operating Internet businesses which advertise, offer for
sale, and sell, at least handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches
bearing counterfeit and infringing trademarks in violation of Plaintiff s rights;
2.
There is good cause to believe that more counterfeit and infringing
handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches s bearing Plaintiffs
trademarks will appear in the marketplace; that consumers may be misled, confused, and
disappointed by the quality of these products; and that Plaintiff may suffer loss of sales for its
genuine products;
3.
There is good cause to believe that if Plaintiff proceeds on notice to
Defendants on this Ex Parte Application for TRO and Asset Restraint, Defendants can easily and
quickly transfer the registrations for many of the Subject Domain Names, or modifY registration
data and content, change hosts, and rcdirect traffic to other web sites, thereby thwarting
Plaintiff s ability to obtain meaningful relief;
5
4.
The balance of potential harm to Defendants in restraining their trade in
counterfeit 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 of
high quality handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches, if such
relief is not issued; and
5.
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 genuine goods of the Plaintiff.
C.
Under 15 U.S.C. § 1117(a), Plaintiff may be entitled to recover, as an equitable
remedy, the illegal profits gained through Defendants distribution and sales of counterfeit and
infringing Gucci branded goods. See Reebok Int'l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552,
559 (9th Cir. 1992) (quoting Fuller Brush Products Co. v. Fuller Brush Co., 299 F.2d 772,777
(7th Cir. 1962) ("An accounting of profits under § lll7(a) is not synonymous with an award of
monetary damages: '[a]n accounting for profits . . . is an equitable remedy subject to the
principles of equity.
D.
"'».
Requesting equitable relief "invokes the district court's inherent equitable powers
to order preliminary relief, including an
~lsset
freeze, in order to assure the availability of
permanent relief." Levi Strauss & Co. v. Sunrise Int'l Trading Inc., 51 F.3d 982, 987 (lIth Cir.
1995) (citing Federal Trade Commission r. United States Oil and Gas Corp., 748 F.2d 1431,
1433-34 (lIth Cir. 1984».
E.
In light of the inherently deceptive nature of the counterfeiting business, and
Defendants' blatant violation of the federal trademark laws, Plaintiff has good reason to believe
6
Defendants will hide or transfer their ill-gotten assets beyond the jurisdiction of this Court unless
those assets are restrained.
Accordingly, after due consideration, it is
ORDERED AND ADJUDGED that Plaintiffs Ex Parte Application For a Temporary
Restraining Order and Order Restraining Transfer of Assets Tied to the Counterfeiting Operation
is hereby GRANTED as follows:
(1)
Each Defendant, their officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with them having notice of this
Order are hereby temporarily restrained:
a. 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
b. 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.
(2)
Each Defendant, their officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with them having notice of this
Order shall immediately discontinue the use of the Gucci Marks or any confusingly similar
trademarks, on or in connection with all Internet websites owned and operated, or controlled by
them including the Internet websites operating under the Subject Domain Names;
(3)
Each Defendant, their officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with them having notice of this
7
Order shall immediately discontinue 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), 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)
The Registrars and VeriSign Global Registry Services, the top-level domain
(TLD) Registries for the Subject Domain Names, within ten (10) days of receipt of this
Temporary Restraining Order shall change the registrar of record for the Subject Domain Names
to a holding account with the United States based Registrar, GoDaddy.com, Inc. Upon transfer
of the Subject Domain Names into the holding account, GoDaddy.com, Inc. will hold the Subject
Domain Names in trust for the Court during the pendency of this action.
Additionally,
GoDaddy.com, Inc. shall immediately update the Domain Name System ("DNS") data it
maintains for the Subject Domain Names, which links the domain names to the IP addresses
where
their
associated
websites
are
hosted,
to
NS I.MEDIA TEMPLE.NET
and
NS2.MEDIATEMPLE.NET, which will cause the domain names to resolve to the website where
8
a copy of the Complaint, First Amended Complaint, Summonses, and Temporary Restraining
Order and other documents on file in this action are displayed. Alternatively, GoDaddy.com,
Inc. may institute a domain name forwarding which will automatically redirect any visitor to the
Subject
Domain
Names
to
the
following
http://servin~notice.com/zhou2/index.html
Uniform
Resource
Locator
("URL")
whereon a copy of the Complaint, First Amended
Complaint, Summonses, and Temporary Restraining Order and other documents on file in this
action are displayed. After GoDaddy.com, Inc. has effected this change the Subject Domain
Names shall be placed on Lock status, preventing the modification or deletion of the domains by
the registrar or Defendants;
(7)
Plaintiff may enter the Subject Domain Names into Google's Webmaster Tools
and cancel any redirection of the domains that have been entered there by Defendants which
redirect traffic to the counterfeit operations to a new domain name and thereby evade the
provisions of this Order;
(8)
Each Defendant shall preserve copies of all their 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)
Upon receipt of this Order, Western Union Financial Services, Inc. ("Western
Union") shall divert all money transfers sent by United States consumers to GuoDong Zhou
and/or Guo Dong Zhou in Guangzhou, China, People's Republic of China, with the date of birth
9
and identification number provided by the recipient of MTCN 873-086-0081, and hold such
transfers until it receives further direction from the Court;2
(10)
In the event any money transfers are diverted in accordance with Paragraph 9 of
this Order, Western Union shall be permitted to inform consumers who may contact Western
Union about the transfers that the transfers are being held pursuant to a Court Order in Gucci
America, Inc. v. Zhou, et al.. Case 1: ll-cv-22734-PAS, entered by the United States District
Court for the Southern District of Florida and that they may contact Plaintiffs counsel for
additional information;
(11)
Western Union shall also, within five business days of receiving this Order,
provide to Plaintiffs counsel records of all money transfers that have been paid to GuoDong
Zhou and/or Guo Dong Zhou in Guangzhou, China, People's Republic of China, with the date of
birth and identification number provided by the recipient of MTCN 873-086-0081, as well as
records of money transfers that have been diverted in accordance with Paragraph 9 of this Order.
For any transfers that have been diverted in accordance with this Order, the Plaintiffs counsel
will respond to any consumer inquiries and will provide notice of the Order and the disposition
of the transfers to any affected consumer. Western Union shall receive and maintain this Order
and its contents as confidential as to GuoDong Zhou, Guo Dong Zhou and any other recipient
associated with the MTCN 873-086-0081, until further order of this Court;
Western Union is licensed to do business in the State of Florida by the Florida Office of
Financial Regulation and is therefore subject to personal jurisdiction in this Court. (See Gaffigan
Decl. ~ 11 and Exhibit F attached thereto.)
2
10
(12)
This Temporary Restraining 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 to by the parties;
(13)
Pursuant to 15 U.S.c. § 1116(d)(5)(D), Plaintiff shall post a bond in the amount
of Thirty Thousand Dollars and Zero Cents ($30,000.00), as payment of damages to which
Defendants may be entitled for a wrongful injunction or restraint. Plaintiff shall post the bond
prior to requesting the Registry to transfer control of the Subject Domain Names;
(14)
A hearing is set before this Court in the United States Courthouse located at 400
North Miami Avenue, Miami, Florida 33128, Courtroom 11-4, on August 26,2011, at 1:30 p.m.,
or at such other time that this Court deems appropriate, at which time Defendants and/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 Ex Parte Application for TRO and Asset
Restraint and this Order on each Defendant via e-mail to the known e-mail addresses provided
by
Defendants
to
the
Registrars
1404966988@qg.com,
responsible
h
h os tma s ter@hu n ~e rfo rurbran d. com,
0
ho s tmas ter@my~ucci-estores. com,
sales@brandba~2wholesale.com,
sales@~ucciba~s2sale.com,
11
Domain Names;
A1416658427@live.cn,
sales@~rabbin~handba~s.com,
sales@~ucci4saleonline.com,
Subject
s t mas t e r @ ~ r a b bin ~ I u x. com,
makemoney.888@hotmail.com,
sales@brandba~save.com,
the
314167794@qq.com,
h 0 s t mas t e r @ ~ i ft s 0 fu r s. com,
imhappy~o@~mail.com,
for
sales@~ucci2handba~s.com,
sales@~ucciba~sestore.com,
sales@euccireplicabae.com, sales@euccireplicabaes.com, sales@euccireplicahandbae·com,
sales@euccireplicastore.com,
sales@euccistyledrops.com,
sales@myguccibaeestore.com,
sales@luxurybaes4sale.com,
sales@myeuccibaeestores.com,
sales@myeuccibaesstore.com, sales@myguccibaestores.com, sales@myeucci-estore.com,
sales@myeucci-store.com,
sales@myworldofwatch.com,
sales@yeseuccieift2u.com,
sales@yeseuccieifts2u.com, sales@yesluxurybaessale.com, sales@yes-myluxurybaes.com,
sales@yeswatcheshop.com,
sales@yeswatchshop.com,
webmaster@emarting.com,
webmaster@tuoxieshop.com, yanuolv@yahoo.com.tw, and zhongjiheibao@email.com.In
addition, Plaintiff shall post a copy of the Ex Parte Application for TRO and Asset Restraint and
this Order on the website located at http://servingnotice.com/zhou2/index.html, upon transfer
of the Subject Domain Names into the holding account with GoDaddy.com, Inc., and such notice
so given shall be deemed good and sufficient service thereof. Any response or opposition to
Plaintiffs Motion for Preliminary Injunction must be filed and served on Plaintiffs counsel
forty-eight (48) hours prior to the hearing set for August 26, 2011, and filed with the Court,
along with Proof of Service, on August 24, 2011. Plaintiff shall file any Reply Memorandum on
or before August 25, 2011. 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)
and Fed. R. Civ. P. 65.
this/~y Of~, 2011. kC'"
~4
-1.~/~
DONE AND ORDERED in chambers in Miami, Florida,
PATRIIAASEtrz
United States District Judge
cc:
All Counsel of Record
12
SCHEDULE "A"
SUBJECT DOMAIN NAMES
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
32.
33.
34.
35.
36.
37.
38.
39.
40.
5 Inike.com
8000bag.com
abercrombiefitch-tp.com
adaxie.com
adaydxie.com
adidas-20 II.com
adidas543.com
adidas668-tw.com
adidas88-tp.com
adidasclot.com
adidashk.com
adidasoutlet-tw.com
adidas-play.com
adidasshoes-tp.com
adidassuperstar-shoes.com
adidas-tshirt.com
adidasy3-tp.com
airmax555.com
alife555.com
alifexie.com
allstar555.com
all star-star. com
asoshoes-tw.com
balenciagatw.com
bape-ape-tw.com
birkenstockdavos.com
blsj II.com
brandbag2wholesale.com
brandbagsave.com
brandhandbags4u.com
btp-shoes.com
burberry2011.com
celine-tw.com
cjbl-shoes.com
ckckbe.com
coalI.com
coatw.com
cons-tp.com
converse998.com
converseonestar-tp.com
13
41.
42.
43.
44.
45.
46.
47.
48.
49.
50.
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.
76.
77.
78.
79.
80.
81.
82.
83.
84.
conversetp.com
converse-tp.com
dcdcdc-tw.com
diesel-fashion. com
doctorj-tw.com
dunhill2010-tw.com
dunk555.com
elle-tw.com
facebook -tp.com
footballclub-tw.com
freestyle-tw.com
g2000-tw.com
giftsofurs.com
grabbinghandbags.com
grabbinglux.com
gucci-1689.com
gucci2handbags.com
gucci4saleonline.com
guccibags2sale.com
guccibagsestore.com
gucci-bb.com
guccireplicabag.com
guccireplicabags.com
guccireplicahandbag.com
guccireplicastore.com
gucci styledrops. com
hermes-tw.com
hungerforurbrand.com
idearock-tw.com
iwc-2011.com
jingpinlb.com
kedsshoes-tp.com
kikstyo-tp.com
lacostepolo 168 .com
lee-tp.com
luxurybags4sale.com
lv-i.eom
melissa-dg.eom
momo20 II.com
montblanc20 1O-tw.com
msprad.com
msriben.com
mssisley.com
mygucci bagestore. com
14
85.
86.
87.
88.
89.
90.
91.
92.
93.
94.
95.
96.
97.
98.
99.
100.
101.
102.
103.
104.
105.
106.
107.
108.
109.
110.
Ill.
112.
113.
114.
115.
116.
117.
118.
119.
120.
121.
122.
123.
124.
125.
126.
127.
128.
myguccibagestores.com
mygucci bagsstore.com
mygucci bagstores.com
mygucci -estore.com
mygucci-estores.com
mygucci-store.com
myworldofwatch.com
nba-nike.com
newbuffalo-tw.com
nike543.com
nike88888.com
nike9a.com
nike-airforce3.com
nikeji.com
nikepro-tp.com
nikesb-taiwan.com
nike-tshirt.com
playboy-taiwan. com
play-timberland. com
polo-polojeans.com
polot-shirt318.com
porter2010.com
porter-tp.com
pradatw.com
pramomo.com
puma66-tp.com
pumatshist.com
ryl-shoes.com
shoes543.com
shoes-tp.com
shoesws.com
stage-polo .com
star-crocs.com
stayreal-tp.com
tbl-shoes.com
tiffany-co 5 .com
timberland5 55.com
timberland-xie.com
tland-tw.com
tommy-tw.com
travelfox-tw.com
tw-allstar.com
valentino-tw.com
vans555.com
15
129.
130.
131.
132.
133.
134.
135.
136.
137.
vans99.com
watchoutlet-online.com
yesguccigift2u.com
yesguccigifts2u.com
yesluxurybagssale.com
yes-myluxurybags.com
yeswatcheshop.com
zara-tw.com
zlxie-tp.com
16
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