Chanel, Inc. v. The Partnership or Unincorporated Association et al

Filing 1

COMPLAINT for Damages and Injunctive Relief against Does 1-10, The Partnership or Unincorporated Association. Filing fee $ 350.00 receipt number 113C-4089521, filed by Chanel, Inc.. (Attachments: # 1 Civil Cover Sheet, # 2 Summon(s))(Gaffigan, Stephen)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO.
CHANEL, INC.,
a New York corporation,
Plaintiff,
v.
THE PARTNERSHIP OR UNINCORPORATED
ASSOCIATION d/b/a
CHANELCLEARANCE.COM,
AUTHENTICCHANEL.COM,
BAGCHANELCLEARANCE.COM,
BAGCHANELOUTLET.COM,
BAGSCHANELCLEARANCE.COM,
BAGSCHANELOUTLET.COM,
CHANELBAGCLEARANCE.COM,
CHANELBAGOUTLESTSTORE.COM,
CHANELCHANELCLEARANCE.COM,
CHANELCHANELOUTLET.COM,
CHANELCLASSICHANDBAG.COM,
CHANELFORSALE.COM,
CHANELHANDBAGCLEARANCE.COM,
CHANELHANDBAGSCLEARANCE.COM,
CHANELONLINECLEARANCE.COM,
CHANELPURSECLEARANCE.COM,
CHANELPURSESCLEARANCE.COM,
CHANELPURSESHANDBAGS.COM,
CHANELPURSESONSALE.COM,
CHANELSHOPPINGONLINE.COM,
CHANELSUNGLASSESCLEARANCE.COM,
CHANNELBAGFORWOMEN.COM,
CHANNELBAGSOUTLET.COM,
COCOACHANELCLEARANCE.COM,
COCOACHANELOUTLET.COM,
COCOCHANELCLEARANCE.COM,
HANDBAGCHANELCLEARANCE.COM,
HANDBAGCHANELOUTLET.COM,
HANDBAGSCHANELCLEARANCE.COM,
HANDBAGSCHANELOUTLET.COM,
OUTLETCHANELHANDBAGS.COM,
OUTLETCHANELPURSES.COM,
OUTLETCHANELSUNGLASSES.COM,
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WHOLESALEREPLICACHANEL.COM and
DOES 1-10
Defendants.
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
Plaintiff, Chanel, Inc. (“Chanel”), hereby sues Defendants The Partnership or
Unincorporated Association doing business as chanelclearance.com, authenticchanel.com,
bagchanelclearance.com, bagchaneloutlet.com, bagschanelclearance.com, bagschaneloutlet.com,
chanelbagclearance.com, chanelbagoutleststore.com,chanelchanelclearance.com,
chanelchaneloutlet.com, chanelclassichandbag.com, chanelforsale.com,
chanelhandbagclearance.com, chanelhandbagsclearance.com, chanelonlineclearance.com,
chanelpurseclearance.com, chanelpursesclearance.com, chanelpurseshandbags.com,
chanelpursesonsale.com, chanelshoppingonline.com, chanelsunglassesclearance.com,
channelbagforwomen.com, channelbagsoutlet.com, cocoachanelclearance.com,
cocoachaneloutlet.com, cocochanelclearance.com, handbagchanelclearance.com,
handbagchaneloutlet.com, handbagschanelclearance.com, handbagschaneloutlet.com,
outletchanelhandbags.com, outletchanelpurses.com, outletchanelsunglasses.com,
wholesalereplicachanel.com and Does 1-10 (collectively “Defendants”) and alleges as follows:
JURISDICTION AND VENUE
1.

This is an action pursuant to 15 U.S.C. §§ 1114, 1116, 1121, 1125(a) and (d).

Accordingly, this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338.
Venue is proper in this Court pursuant 28 U.S.C. § 1391 since Defendants are, upon information
and belief, aliens which conduct substantial infringing activities and cause harm within this
District. Defendants are subject to personal jurisdiction in this District because they direct

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business activities toward and conduct business with consumers within this District through at
least the fully interactive, commercial Internet websites operating under the domain names
identified on Schedule “A” hereto (the “Subject Domain Names”).
THE PLAINTIFF
2.

Chanel 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 Nine West 57th Street, New
York, New York 10019. Chanel operates boutiques throughout the world, including within this
Judicial District. Chanel is, in part, engaged in the business of manufacturing and distributing
throughout the world, including within this Judicial District, a variety of high quality luxury
goods, including, but not limited to, handbags, shoes, boots, costume jewelry, watches and
sunglasses, under Federally registered trademarks.
THE DEFENDANTS
3.

Defendants are individuals and/or business entities or associations of unknown

makeup who likely reside in the People’s Republic of China. Defendants conduct business
throughout the United States, including within this Judicial District through the operation of the
fully interactive commercial websites existing under the Subject Domain Names. Defendants are
directly and personally contributing to, inducing and engaging in the sale of counterfeit products
as alleged herein, as partners, co-conspirators and/or suppliers. Upon information and belief
Defendants use various aliases including, but not limited to, ai kai, ai quxia, ai shei, Alex
Laverde, an bi, an hui, an pai, an qing, an ribi, Bar Zadikoff, bu shicao, gan ni, gan shi, helen
konczal, kai xu, lai ba, lai hua, lai lai, lai le, lai liang, lai xia, lai zi, li ru, niu bi, niu bian, niu cha,
niu du, niu li, niu yan, niu yin, shi qi, xin shi, and zheng qu to conduct their illegal business.

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Chanel is presently unaware of the true names of Does 1-10. Chanel will amend this Complaint
upon discovery of the identities of such fictitious Defendants.
4.

Defendants are the past and present moving and conscious forces behind the

operation of the commercial Internet websites operating under the Subject Domain Names.
5.

Upon information and belief, Defendants engage in the offering for sale and sale

of counterfeit and infringing Chanel branded products within this Judicial District through
multiple fully interactive commercial websites operating under at least the Subject Domain
Names, which they also use as common names for their business. Defendants, upon information
and belief, also operate additional websites which promote and offer for sale counterfeit and
infringing goods under domain names not yet known to Chanel. Defendants have purposefully
directed their illegal activities towards consumers in the State of Florida through the
advertisement, offer to sell, sale and shipment of counterfeit Chanel branded goods into the
State.
6.

Upon information and belief, Defendants will continue to register new domain

names for the purpose of selling goods bearing counterfeits of Chanel’s trademark unless
preliminarily and permanently enjoined.
7.

Defendants’ entire Internet-based website businesses amount to nothing more

than a massive illegal operation, infringing on the intellectual property rights of Chanel.
8.

Defendants have registered, established or purchased and maintained the Subject

Domain Names. Upon information and belief, Defendants have engaged in fraudulent conduct
with respect to the registration of the Subject Domain Names by providing false and\or
misleading information to their various Registrars during the Registration process.

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9.

Defendants’ Subject Domain Names and any other domain names used in

connection with the sale of counterfeits bearing Chanel’s trademark are essential components of
Defendants’ counterfeiting and infringing activities. The Subject Domain Names themselves are
the means by which Defendants further their counterfeiting scheme and cause harm to Chanel.
Moreover, Defendants are using Chanel’s famous name and trademark to drive Internet
consumer traffic to their websites operating under the Subject Domain Names, thereby creating
and increasing the value of the Subject Domain Names at Chanel’s expense.
COMMON FACTUAL ALLEGATIONS
10.

Chanel is, and at all times relevant hereto has been, the owner of all rights in and

to the following trademarks:
Trademark

Registration No.

Registration Date

CHANEL

0,915,139

June 15, 1971

1,241,264

June 7, 1983

1,241,265

June 7, 1983

1,271,876

March 27, 1984

1,501,898

August 30, 1988

1,510,757

November 1, 1988

1,654,252

August 20, 1991

3,022,708

December 6, 2005

3,025,936

December 13, 2005

CHANEL

3,133,139

August 22, 2006

CHANEL

3,134,695

August 29, 2006

CHANEL

0,626,035

May 1, 1956

CHANEL

CHANEL

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1,314,511

January 15, 1985

CHANEL

1,347,677

July 9, 1985

CHANEL

1,733,051

November 17, 1992

1,734,822

November 24, 1992

3,025,934

December 13, 2005

CHANEL

0,955,074

March 13, 1973

CHANEL

1,571,787

December 19, 1989

J12

2,559,772

April 9, 2002

CHANEL

3,133,139

August 22, 2006

(collectively the “Chanel Marks”) which are registered on the Principal Register of the United
States Patent and Trademark Office in International Classes 9, 14, 18 and 25, and are used in
connection with the manufacture and distribution of, among other things, shoes, boots, handbags,
wallets, costume jewelry, watches and sunglasses.
11.

The Chanel Marks have been used in interstate commerce to identify and

distinguish Chanel's high quality goods for an extended period of time. The Chanel Marks have
never been assigned or licensed to any of the Defendants in this matter.
12.

The Chanel Marks are symbols of Chanel’s quality, reputation and goodwill and

have never been abandoned.
13.

Further, Chanel has expended substantial time, money and other resources

developing, advertising and otherwise promoting the Chanel Marks. The Chanel Marks qualify
as famous marks as that term is used in 15 U.S.C. §1125(c)(1).

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14.

Chanel has extensively used, advertised and promoted the Chanel Marks in the

United States in association with the sale of various high quality luxury goods and has carefully
monitored and policed the use of the Chanel Marks.
15.

As a result of Chanel’s efforts, members of the consuming public readily identify

merchandise bearing or sold under the Chanel Marks as being high quality merchandise
sponsored and approved by Chanel.
16.

Accordingly, the Chanel Marks have achieved secondary meaning as identifiers

of high quality luxury goods.
17.

Upon information and belief, at all times relevant hereto, Defendants in this action

had full knowledge of Chanel’s ownership of the Chanel Marks including its exclusive right to
use and license such intellectual property and the goodwill associated therewith.
18.

Chanel has discovered Defendants are promoting and otherwise advertising,

distributing, selling and/or offering for sale goods, including at least shoes, boots, handbags,
wallets, costume jewelry, watches and sunglasses bearing counterfeit and infringing trademarks
which are exact copies of one or more of the Chanel Marks (the “Counterfeit Goods”).
Specifically, upon information and belief, Defendants are using the Chanel Marks in the same
stylized fashion, for different quality goods
19.

Upon information and belief, Defendants’ Counterfeit Goods are of a quality

substantially different than that of Chanel’s genuine goods. Despite the nature of their
Counterfeit Goods and the knowledge they are without authority to do so, Defendants, upon
information and belief, are actively using, promoting and otherwise advertising, distributing,
selling and/or offering for sale substantial quantities of their Counterfeit Goods with the
knowledge that such goods will be mistaken for the genuine high quality goods offered for sale

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by Chanel. The net effect of Defendants’ actions will be to result in the confusion of consumers
who will believe Defendants’ Counterfeit Goods are genuine goods originating from and
approved by Chanel.
20.

Defendants advertise their Counterfeit Goods for sale to the consuming public via

at least the websites operating under the Subject Domain Names. In so advertising these goods,
Defendants use the Chanel Marks. Indeed, Defendants herein misappropriated Chanel’s
advertising ideas and entire style of doing business with regard to the advertisement and sale of
Chanel’s genuine goods. Upon information and belief, the misappropriation of Chanel’s
advertising ideas in the form of the Chanel Marks has occurred, in part, in the course of
Defendants’ advertising activities and has been the proximate cause of damage to Chanel.
21.

Upon information and belief, Defendants are conducting their counterfeiting and

infringing activities and causing harm at least within this Judicial District and elsewhere
throughout the United States. As a result, Defendants are defrauding Chanel and the consuming
public for Defendants’ own benefit. Defendants’ infringement and disparagement of Chanel and
its marks does not simply amount to the wrong description of their goods or the failure of the
goods to conform to the advertised quality or performance.
22.

Defendants’ use of the Chanel Marks, including the promotion and advertising,

reproduction, distribution, sale and offering for sale of their Counterfeit Goods, is without
Chanel’s consent or authorization.
23.

Further, Defendants are engaging in the above-described illegal counterfeiting and

infringing activities knowing and intentionally or with reckless disregard or willful blindness to
Chanel’s rights for the purpose of trading on the goodwill and reputation of Chanel. If
Defendants’ intentional counterfeiting and infringing activities are not preliminarily and

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permanently enjoined by this Court, Chanel and the consuming public will continue to be
damaged.
24.

Defendants’ above identified infringing activities are likely to cause confusion,

deception and mistake in the minds of consumers, the public and the trade. Moreover,
Defendants’ wrongful conduct is likely to create a false impression and deceive customers, the
public and the trade into believing there is a connection or association between Chanel’s genuine
goods and Defendants’ Counterfeit Goods.
25.

Chanel has no adequate remedy at law.

26.

Chanel is suffering irreparable injury and has suffered substantial damages as a

result of Defendants’ counterfeiting and infringing activities.
27.

The injuries and damages sustained by Chanel have been directly and proximately

caused by Defendants’ wrongful reproduction, use, advertisement, promotion, offering to sell,
and sale of their Counterfeit Goods.
28.

Chanel has retained the undersigned counsel to represent it in this matter and is

obligated to pay said counsel a reasonable fee for such representation.
COUNT I - TRADEMARK COUNTERFEITING AND INFRINGEMENT
29.

Chanel hereby adopts and re-alleges the allegations set forth in Paragraphs 1

through 28 above.
30.

This is an action for trademark counterfeiting and infringement against

Defendants based on their use of counterfeits of the Chanel Marks in commerce in connection
with the promotion, advertisement, distribution, sale and/or offering for sale of the Counterfeit
Goods.

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31.

Specifically, Defendants are promoting and otherwise advertising, selling,

offering for sale and distributing, at least shoes, boots, handbags, wallets, costume jewelry,
watches and sunglasses bearing counterfeits and infringements of one or more of the Chanel
Marks. Defendants are continuously infringing and inducing others to infringe the Chanel Marks
by using them to advertise, promote and sell products bearing the Chanel Marks.
32.

Defendants’ counterfeiting and infringing activities are likely to cause and

actually are causing confusion, mistake and deception among members of the trade and the
general consuming public as to the origin and quality of the Defendants’ Counterfeit Goods
bearing the Chanel Marks.
33.

Defendants’ unlawful actions have caused and are continuing to cause

unquantifiable damages to Chanel.
34.

Defendants’ above-described illegal actions constitute counterfeiting and

infringement of the Chanel Marks in violation of Chanel’s rights under § 32 of the Lanham Act,
15 U.S.C. § 1114.
35.

Chanel has suffered and will continue to suffer irreparable injury due to the above

described activities of Defendants if Defendants are not preliminarily and permanently enjoined.
COUNT II - FALSE DESIGNATION OF ORIGIN
PURSUANT TO § 43(a) OF THE LANHAM ACT
36.

Chanel hereby adopts and re-alleges the allegations set forth in Paragraphs 1

through 28 above.
37.

Defendants’ Counterfeit Goods bearing and sold under the Chanel Marks have

been widely advertised and distributed throughout the United States.
38.

Defendants’ Counterfeit Goods bearing and sold under the Chanel Marks are

virtually identical in appearance to Chanel’s genuine goods. However, the Counterfeit Goods
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are different and likely inferior in quality. Accordingly, Defendants’ activities are likely to cause
confusion in the trade and among the general public as to at least the origin or sponsorship of the
Counterfeit Goods.
39.

Defendants, upon information and belief, have used in connection with their sale

of Counterfeit Goods, false designations of origins and false descriptions and representations,
including words or other symbols and trade dress which tend to falsely describe or represent such
goods and have caused such goods to enter into commerce with full knowledge of the falsity of
such designations of origin and such descriptions and representations, all to the detriment of
Chanel.
40.

Specifically, Defendants have authorized an infringing use of the Chanel Marks in

Defendants’ advertisement and promotion of their Counterfeit Goods. Defendants have
misrepresented to members of the consuming public that the Counterfeit Goods being advertised
and sold by them are genuine, non-infringing goods.
41.

Defendants’ above-described actions are in violation of Section 43(a) of the

Lanham Act, 15 U.S.C. §1125(a).
42.

Chanel has sustained injury and damage caused by Defendants’ conduct, and

absent an entry of an injunction by this Court, Chanel will continue to suffer irreparable injury to
its goodwill and business reputation as well as monetary damages.
COUNT III - CLAIM FOR RELIEF FOR CYBERPIRACY
UNDER §43(d) OF THE LANHAM ACTION (15 U.S.C. §1125(d))
43.

Chanel hereby adopts and re-alleges the allegations set forth in Paragraphs 1

through 28 above.
44.

At all times relevant hereto, Chanel has been and still is the owner of the rights,

title and interest in and to the Chanel Marks.
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45.

Upon information and belief, Defendants have acted with the bad faith intent to

profit from the Chanel Marks and the goodwill associated with the Chanel Marks by registering
multiple domain names which are identical or confusingly similar to or dilutive of the Chanel
Marks.
46.

Defendants have no intellectual property rights in or to the Chanel Marks.

47.

Defendants’ actions constitute cyberpiracy in violation of §43(d) of the Lanham

Act, 15 U.S.C. §1125(d).
48.

Defendants’ conduct is done with knowledge and constitutes a willful violation of

Chanel’s rights in the Marks. At a minimum, Defendants’ conduct constitutes reckless disregard
for and willful blindness to Chanel’s rights.
49.

The aforesaid conduct is causing Chanel damages and immediate and irreparable

injury. Chanel has no adequate remedy at law.
PRAYER FOR RELIEF
50.

WHEREFORE, Chanel demands judgment on all Counts of this Complaint and an

award of equitable relief and monetary relief, jointly and severally, against Defendants as
follows:
a.

Entry of preliminary and permanent injunction enjoining Defendants, their

agents, representatives, servants, employees, and all those acting in concert or participation
therewith, from manufacturing or causing to be manufactured, importing, advertising or
promoting, distributing, selling or offering to sell their Counterfeit Goods; from infringing,
counterfeiting, or diluting the Chanel Marks; from using the Chanel Marks, or any mark or trade
dress similar thereto, in connection with the sale of any unauthorized goods; from using any
logo, trade name or trademark or trade dress which may be calculated to falsely advertise the

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services or goods of Defendants as being sponsored by, authorized by, endorsed by, or in any
way associated with Chanel; from falsely representing themselves as being connected with
Chanel, through sponsorship or association, or engaging in any act which is likely to falsely
cause members of the trade and/or of the purchasing public to believe any goods or services of
Defendants, or in any way endorsed by, approved by, and/or associated with Chanel; from using
any reproduction, counterfeit, copy, or colorable imitation of the Chanel Marks in connection
with the publicity, promotion, sale, or advertising of any goods sold by Defendants, including,
without limitation, shoes, boots, costume jewelry and sunglasses; from affixing, applying,
annexing or using in connection with the sale of any goods, a false description or representation,
including words or other symbols tending to falsely describe or represent Defendants’ goods as
being those of Chanel, or in any way endorsed by Chanel and from offering such goods in
commerce; and from otherwise unfairly competing with Chanel.
b.

Entry of an order requiring the Subject Domain Names, and any other

domain names being used by Defendants to engage in the business of selling counterfeit Chanel
branded goods, to be ordered disabled and/or immediately transferred by Defendants, their
Registrar(s), and/or the Registry to Chanel’s control.
c.

Entry of an Order that, upon Chanel’s request, the top level domain (TLD)

Registry for the Subject Domain Names place the Subject Domain Names on Registry Hold
status, thus removing them from the TLD zone files maintained by the Registries which link the
Subject Domain Name to the IP address where the associated website is hosted.
d.

Entry of an Order that, upon Chanel’s request, those in privity with

Defendants, and those with notice of the injunction, including any Internet search engines, Web
hosts, domain-name registrars and domain-name registries that are provided with notice of the

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injunction, cease facilitating access to any or all websites through which Defendants engage in
the sale of counterfeit and infringing goods using the Chanel Marks.
e.

Entry of an order requiring Defendants to account to and pay Chanel for

all profits and damages resulting from Defendants’ trademark infringing and counterfeiting
activities and that the award to Chanel be trebled, as provided for under 15 U.S.C. §1117, or, at
Chanel’s election with respect to Count I, that Chanel be awarded statutory damages from each
of the Defendants in the amount of two million dollars ($2,000,000.00) per each counterfeit
Chanel Mark used and product sold, as provided by 15 U.S.C. §1117(c)(2) of the Lanham Act.
f.

Entry of an Order requiring Defendants to account to and pay Chanel for

all profits and damages resulting from Defendants’ cyberpiracy activities and that the award to
Chanel be trebled, as provided for under 15 U.S.C. §1117, or, at Chanel’s election with respect to
Count III, that Chanel be awarded statutory damages from Defendants in the amount of one
hundred thousand dollars ($100,000.00) per pirated domain name used as provided by 15 U.S.C.
§1117(d) of the Lanham Act.
g.

Entry of an order awarding Chanel pre-judgment interest on its judgment.

h.

Entry of an order awarding Chanel its costs and reasonable attorneys’ fees

and investigative fees associated with bringing this action.
i.

Entry of an order awarding Chanel such other and further relief as the

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j.

Court may deem just and proper.

Date: September 20, 2011.

Respectfully submitted,
STEPHEN M. GAFFIGAN, P.A.
By: __s:/smgaffigan/________________________
Stephen M. Gaffigan (Fla. Bar No. 025844)
Virgilio Gigante (Fla. Bar No. 082635)
401 East Las Olas Blvd., Suite 130-453
Ft. Lauderdale, Florida 33301
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
E-mail: [e-mail]
Attorneys for Plaintiff CHANEL, INC

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SCHEDULE “A”
SUBJECT DOMAIN NAMES

1. chanelclearance.com
2. authenticchanel.com
3. bagchanelclearance.com
4. bagchaneloutlet.com
5. bagschanelclearance.com
6. bagschaneloutlet.com
7. chanelbagclearance.com
8. chanelbagoutleststore.com
9. chanelchanelclearance.com
10. chanelchaneloutlet.com
11. chanelclassichandbag.com
12. chanelforsale.com
13. chanelhandbagclearance.com
14. chanelhandbagsclearance.com
15. chanelonlineclearance.com
16. chanelpurseclearance.com
17. chanelpursesclearance.com
18. chanelpurseshandbags.com
19. chanelpursesonsale.com
20. chanelshoppingonline.com
21. chanelsunglassesclearance.com
22. channelbagforwomen.com
23. channelbagsoutlet.com
24. cocoachanelclearance.com
25. cocoachaneloutlet.com
26. cocochanelclearance.com
27. handbagchanelclearance.com
28. handbagchaneloutlet.com
29. handbagschanelclearance.com
30. handbagschaneloutlet.com
31. outletchanelhandbags.com
32. outletchanelpurses.com
33. outletchanelsunglasses.com
34. wholesalereplicachanel.com

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