Gucci America, Inc. v. Zhou et al

Filing 29

ORDER granting 6 Ex Parte Application for Entry of Preliminary Injunction. Signed by Judge Patricia A. Seitz on 8/26/2011. (ls)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-22734-CIV-SEITZ/SIMONTON

GUCCI AMERICA, INC.,
Plaintiff,

v.
GUODONG ZHOU, et aI.,
Defendants.

_______________________________1
ORDER GRANTING APPLICATION FOR ENTRY OF PRELIMINARY INJUNCTION

THIS MATTER 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 "Application for Preliminary Injunction") [DE6], and upon the Preliminary Injunction Hearing held on August 26, 2011.

The Court has

carefully reviewed said Motion, the entire court file and is otherwise fully advised in the
premIses.
By the instant Application, Plaintiff, Gucci America, Inc. ("Gucci"), moves for entry of a
preliminary injunction against Defendants, Guodong Zhou, Zheng Yueruo, Lin Feng, Wu
Weilong, Shaosong Lin, Wu Jinlong, and Does 1-10 (collectively "Defendants"), doing business
as the domain names identified on Schedule "A" hereto (the "Subject Domain Names"), for
alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a) and (d).
The Court convened the hearing on August 26, 2011, at which only counsel for Plaintiff
was present and available to present evidence supporting the Application for Preliminary
Injunction [DE-6].

Defendants have not responded to the Application for Preliminary

Injunction, nor 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 will grant Plaintiff's Application for Preliminary
Injunction [DE-6].
I. Factual and Procedural BackKround

On August 18, 2011, the Court entered a temporary restraining order on the following
facts from Plaintiff's Complaint [DE-I], First Amended Complaint [DE-5], Ex Parte Application
for Entry of Temporary Restraining Order and Preliminary Injunction and Order Restraining
Transfer of Assets Tied to the Counterfeiting Operation [DE-6], 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 Amend. CompI.

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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 Plaintiff's 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:
Mark

ReKistration No.

ReKistration Date

GUCCI

0,876,292

September 9, 1969

GUCCI

0,959,338

May 22,1973

G9

1,107,311

November 28, 1978

2

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1,122,780

July 24, 1979

GUCCI

1,168,477

September 8, 1981

(S)

3,039,629

January 10,2006

3,072,549

March 28, 2006

3,376,129

January 29, 2008

3,378,755

February 5, 2008

3,391,739

March 4, 2008

(Green Red Green Stripe Design)

00. .00
00,,00:·00

G9

(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.

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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 and Order Restraining Transfer of
Assets Tied to the Counterfeiting Operation ["Rosaler Decl."]

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4 and Composite Exhibit A

attached thereto; Declaration of Stephen M. Gaffigan in Support of Plaintiffs Ex Parte

3

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 Dec!.

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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.

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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 Aventura, Florida. (Rosaler Decl.

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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 Decl.

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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.

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13.)

On July 28, 2011, Plaintiff filed its Complaint [DE-I] and, on August 3, 2011, filed its
First Amended Complaint [DE-5] against Defendants for trademark counterfeiting and
infringement, false designation of origin, and cyberpiracy. On August 3, 2011, Plaintiff filed its

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

Ex Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction and

Order Restraining Transfer of Assets Tied to the Counterfeiting Operation [DE-6]. On August
18, 2011, the Court issued an Order Granting Plaintiffs Ex Parte Application for a Temporary
Restraining Order [DE-12] and temporarily restrained Defendants from infringing the Gucci
Marks at issue and restrained certain assets tied to the counterfeiting operation. Pursuant to the
Court's August 18,2011 Order, Plaintiff properly served each Defendant with a copy of the Ex
Parte Application for Entry of Temporary Restraining Order and Preliminary Injunction and

Order Restraining Transfer of Assets Tied to the Counterfeiting Operation and supporting
papers, the Court's August 18, 2011 Temporary Restraining Order, the Summons, Complaint,
and First Amended Complaint, and all filings in this matter, via e-mail and publication.
Thereafter, Proofs of Service were filed confirming service on each Defendant via e-mail and
pUblication.
II. Conclusions of Law
The declarations and supporting evidentiary submissions 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, 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
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 an

immediate and irreparable injury if a preliminary injunction is not granted. It clearly appears
5

from the following specific facts, as set forth in Plaintiffs Complaint, First Amended 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 appear to be operating Internet businesses to promote,

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 Plaintiffs
rights;
2.

Plaintiff has well-founded fears that more counterfeit and infringing

handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches 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.

Plaintiff has well-founded fears that unless the injunction is granted,

Defendants can easily and quickly transfer the registrations for the Subject Domain Names, or
modify registration data and content, change hosts, and redirect traffic to other websites, thereby
thwarting Plaintiffs ability to obtain meaningful relief;
4.

The balance of potential harm to Defendants in restraining their trading in

counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed
by the potential harm to Plaintiff, its reputation and goodwill as a manufacturer of quality
handbags, wallets, footwear, belts, shirts, hats, sunglasses, and watches, if such relief is not
issued; and

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5.

The public interest favors issuance of the preliminary injunction in order

to protect Plaintiff s trademark interests and the public from being defrauded by the palming off
of counterfeit goods as Plaintiff s genuine goods.
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'!, 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 § 1117(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 asset 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 v. 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 well-founded fears to
believe 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 Application for Preliminary Injunction
[DE-6] is hereby GRANTED as follows:

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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 restrained and enjoined, pending termination of this action:
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, until the conclusion of this action, 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
Order shall, until the conclusion of this action, 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

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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 it is not already done, to transfer to Plaintiff s counsel, for deposit with this Court, domain
name certificates for the Subject Domain Names;
6.

The domain name Registrars and VeriSign Global Registry Services, the top-level

domain (TLD) Registries for the Subject Domain Names, upon receipt of this Preliminary
Injunction shall, to the extent it is not already done, change the registrar of record for the Subject
Domain Names to a holding account with the United States based Registrar GoDaddy.com, Inc.
GoDaddy.com, Inc. shall hold and/or continue to hold the Subject Domain Names in trust for the
Court during the pendency of this action. Additionally, GoDaddy.com, Inc., upon receipt of this
Order, shall, to the extent not already done, immediately update and/or not modify 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,

from

NSl.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which currently causes the
domain names to resolve to the website where a copy of the Complaint, First Amended
Complaint, Summonses and Orders and other documents on file in this action are displayed.
Alternatively, GoDaddy.com, Inc. may, to the extent not already done, institute and/or maintain
a domain name forwarding which will automatically redirect any visitor to the Subject Domain
Names

to

the

following

Uniform

Resource

Locator

("URL")

http://servinenotice.com/zhou2/index.html whereon a copy of the Complaint, First Amended
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Complaint, Summonses and Orders and other documents on file in this action are displayed. The
Subject Domain Names shall be maintained on Lock status, preventing the modification or
deletion of the domains by the registrar or Defendants;
7.

Plaintiff may continue to 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 continue to preserve copies of all their computer files

relating to the use of any of the Subject Domain Names and shall continue to take all steps
necessary to retrieve and preserve computer files relating to the use of any of the Subject
Domain Names and that may have been deleted before the entry of this Order;
9.

Upon receipt of notice of this Order, Western Union shall divert and/or continue

diverting 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 and
identification number provided by the recipient of MTCN 873-086-0081, and continue to hold
such transfers until it receives further direction from the Court;
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: 11-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;

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11.

Western Union shall also, to the extent not already done, within five business

days of receiving this Order, provide to Plaintiffs counsel records of all money transfers that
have been paid to Guo Dong 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

III

accordance with Paragraph 9 of this Order. For any transfers that have been diverted

III

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;
12.

Plaintiff shall maintain its 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, during the pendency of this action, or until further Order of the
Court;
13.

This Preliminary Injunction shall remain in effect during the pendency of this

action, or until such further date as set by the Court or stipulated to by the parties.
fl-o

DONE AND ORDERED in chambers in Miami, Florida, thi~ day of August, 2011.

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United States District Judge

cc: All Counsel of Record

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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.
41.
42.

51 nike.com
8000bag.com
abercrombiefitch-tp.com
adaxie.com
adaydxie.com
adidas-20 l1.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
allstar-star.com
asoshoes-tw.com
balenciagatw.com
bape-ape-tw.com
birkenstockdavos.com
blsj l1.com
brandbag2wholesale.com
brandbagsave.com
brandhandbags4u.com
btp-shoes.com
burberry2011.com
celine-tw.com
cjbl-shoes.com
ckckbe.com
coall.com
coatw.com
cons-tp.com
converse998.com
converseonestar-tp.com
conversetp.com
converse-tp.com
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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.
85.
86.
87.

dedcde-tw.com
diesel-fashion. com
doetorj-tw.eom
dunhill2010-tw.com
dunk555.com
elle-tw.com
faeebook-tp.com
footbaIlc1ub-tw.eom
freestyle-tw.com
g2000-tw.eom
giftsofurs.com
grabbinghandbags.com
grabbinglux.com
gueci-I689.eom
gucci2handbags.com
gucei4saleonline.com
gueeibags2sale.com
guccibagsestore.com
gueci-bb.com
guccireplicabag.com
guecireplicabags. com
guecireplieahandbag.eom
guccireplicastore.eom
guecistyledrops.eom
hermes-tw.com
hungerforurbrand.com
idearock-tw.eom
iwc-201I.com
jingpinlb.com
kedsshoes-tp.eom
kikstyo-tp.com
laeostepolo 168 .eom
lee-tp.eom
luxurybags4sale.com
lv-Leom
melissa-dg.com
momo20 II.com
montblanc20 1O-tw.com
msprad.eom
msriben.eom
mssisley.com
myguecibagestore.eom
myguecibagestores.com
myguccibagsstore.eom
mygueeibagstores.eom
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88.
89.
90.
91.
92.
93.
94.
95.
96.
97.
98.
99.
100.
101.
102.
103.
104.
105.
106.
107.
108.
109.
110.
111.
112.
113.
114.
115.
116.
117.
118.
119.
120.
121.
122.
123.
124.
125.
126.
127.
128.
129.
130.
131.
132.

mygucci -estore.com
mygucci-estores.com
mygucci -store.com
myworldofwatch.com
nba-nike.eom
newbuffalo-tw.com
nike543.eom
nike88888.eom
nike9a.eom
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.eom
pradatw.com
pramomo.eom
puma66-tp.com
pumatshist.com
ryl-shoes.eom
shoes543. com
shoes-tp.com
shoesws.com
stage-polo. com
star-eroes.com
stayreal-tp.com
tbl-shoes.eom
tiffany-co5.com
timberland555.com
timberland-xie.com
tland-tw.com
tommy-tw.eom
travelfox-tw.com
tw-allstar.eom
valentino-tw.com
vans555.eom
vans99.com
watchoutlet-online.com
yesguccigift2u.eom
yesguccigifts2u.com
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133.
134.
135.
136.
137.

yesluxurybagssale.com
yes-myluxurybags.com
yeswatcheshop.com
zara-tw.com
zlxie-tp.com

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