Rolex Watch U.S.A, Inc. v. Colon et al

Filing 1

COMPLAINT against All Defendants. Filing fee $ 350.00 receipt number 113C-4143971, filed by Rolex Watch U.S.A, Inc.. (Attachments: # 1 Exhibit 1 - registrations, # 2 Exhibit 2 - printouts, # 3 Civil Cover Sheet, # 4 Summon(s))(Gaffigan, Stephen)

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA

ROLEX WATCH U.S.A., INC.,

CASE NO.

Plaintiff,
v.

COMPLAINT

LUIS FELIPE COLON; UNKNOWN
WEBSITES 1-10; “JOHN DOES” 1-10; and
UNKNOWN ENTITIES 1-10
Defendants.
Plaintiff Rolex Watch U.S.A., Inc. (“Rolex”), through its attorneys, complaining of
defendants, Luis Felipe Colon; Unknown Websites 1-10; “John Does” 1-10; and Unknown
Entities 1-10 (hereinafter collectively referred to as “Defendants”) hereby alleges as follows:
STATEMENT OF THE CASE
1.

This is a suit by Rolex against Defendants for injunctive relief, statutory damages,

treble damages and/or profits, compensatory damages, pre-judgment interest, attorneys’ fees,
investigators’ fees and costs for trademark counterfeiting, trademark infringement, false
designations of origin and false description and dilution. Defendants are being sued by Rolex as
a result of Defendants’ sale, offers for sale, distribution, promotion and advertisement, over the
Internet of merchandise bearing counterfeits and infringements of Rolex’s federally registered
trademarks.
JURISDICTION AND VENUE
2.

This Court has jurisdiction over the federal trademark claims asserted in this

action under 15 U.S.C. § 1121, and 28 U.S.C. § 1331 and 28 U.S.C. § 1338.

3.

Defendants are subject to the Court’s jurisdiction because they reside and do

business in the Southern District of Florida and have committed the acts complained of herein in
this District.
4.

Defendants are subject to the jurisdiction of this Court pursuant to and in

accordance with Rule 4 of the Federal Rules of Civil Procedure.
5.

Venue is proper in this District pursuant to 28 U.S.C. § 1391(b).
PARTIES

6.

Rolex is a corporation duly organized and existing under the laws of the State of

New York, having an office and principal place of business at 665 Fifth Avenue, New York,
New York, 10022.
7.

Upon information and belief, defendant Luis Felipe Colon (“Colon”) is a resident

of the State of Florida residing at 19721 Northwest 83rd Avenue, Hialeah, FL 33015-5963.
8.

The identities of Unknown Websites 1-10, “John Does” 1-10, and Unknown

Entities 1-10 are not currently known to Rolex, but, upon information and belief, they are
associated with Defendants and contribute to Defendants’ infringements. Rolex will identify
these Unknown Websites, Unknown John Does and Unknown Entities upon further knowledge
and investigation and will amend its pleadings accordingly.
FACTUAL ALLEGATIONS
A. Rolex's Famous Products and Trademarks
9.

Rolex is the exclusive distributor and warrantor in the United States of Rolex

watches, all of which bear one or more of the Rolex Registered Trademarks as defined below.
10.

Rolex watches are identified by the trade name and trademark ROLEX and one or

more of the Rolex Registered Trademarks.

11.

Rolex is responsible for assembling, finishing, marketing and selling in interstate

commerce high quality Rolex watches, watch bracelets and related products for men and women
(hereinafter referred to as “Rolex Watches”).
12.

Rolex is responsible for maintaining control over the quality of Rolex products

and services in this country.
13.

Rolex has developed an outstanding reputation because of the uniform high

quality of Rolex Watches and the Rolex Registered Trademarks are distinctive marks used to
identify these high quality products originating with Rolex.
14.

Rolex owns numerous trademarks, including, but not limited to, the trademarks

and trade names ROLEX, PRESIDENT, CROWN DEVICE (design), DATEJUST, SEADWELLER,

OYSTER,

OYSTER

PERPETUAL,

GMT-MASTER,

YACHT-MASTER,

SUBMARINER, ROLEX DAYTONA, DAYTONA, EXPLORER II, TURN-O-GRAPH and
GMT-MASTER II.
15.

Rolex is the owner of, including but not limited to, the following federal

trademark registrations in the U.S. Patent and Trademark Office:
Trademark
CROWN DEVICE
DATEJUST
DAY-DATE
DAYTONA
EXPLORER
EXPLORER II
GMT-MASTER
GMT-MASTER II
OYSTER
OYSTER
PERPETUAL

Reg. No.
657,756

Reg. Date
1/28/58

Goods
Timepieces of all kinds and parts thereof.

674,177
831,652
2,331,145
2,518,894
2,445,357
683,249
2,985,308
239,383

2/17/59
7/4/67
3/21/00
12/18/01
4/24/01
8/11/59
8/16/05
3/6/28

1,105,602

11/7/78

Timepieces and parts thereof.
Wrist watches.
Watches.
Watches.
Watches.
Watches.
Watches and parts thereof.
Watches, movements, cases, dials, and
other parts of watches.
Watches and parts thereof.

Trademark
PRESIDENT

Reg. No.
520,309

Reg. Date
1/24/50

ROLEX

101,819

1/12/15

ROLEX DAYTONA
ROLEX DEEP SEA
SEA-DWELLER
SUBMARINER
TURN-O-GRAPH
YACHT-MASTER

1,960,768
3,703,603
860,527
1,782,604
2,950,028
1,749,374

3/5/96
10/27/09
11/19/68
7/20/93
5/10/05
1/26/93

Goods
Wristbands and bracelets for watches
made wholly or in part or plated with
precious metals, sold separately from
watches.
Watches, clocks, parts of watches and
clocks, and their cases.
Watches.
Watches.
Watches, clocks and parts thereof.
Watches.
Watches and parts thereof.
Watches.

Correct and true copies of Rolex’s federal trademark registrations (hereinafter collectively
referred to as the “Rolex Registered Trademarks”) are attached hereto as Exhibit 1.
16.

The Rolex Registered Trademarks are arbitrary and fanciful and are entitled to the

highest level of protection afforded by law.
17.

Rolex and its predecessors have used the Rolex Registered Trademarks for many

years on and in connection with Rolex Watches and related products.
18.

Based on Rolex’s extensive advertising, sales and the wide popularity of Rolex

products, the Rolex Registered Trademarks are now famous and have been famous since well
prior to the activities of the Defendants complained of herein. Rolex Registered Trademarks
have acquired secondary meaning so that any product or advertisement bearing such marks is
immediately associated by consumers, the public and the trade as being a product or affiliate of
Rolex.
19.

Rolex has gone to great lengths to protect its name and enforce the Rolex

Registered Trademarks.

20.

The Rolex Registered Trademarks are valid and subsisting and in full force and

effect and have become incontestable pursuant to 15 U.S.C. § 1065, with the exception of
TURN-O-GRAPH and GMT MASTER II.
B.

Defendants’ Counterfeiting and Infringing Activities
21.

Rolex hereby incorporates all prior allegations by reference.

22.

Upon information and belief, long after Rolex’s adoption and use of the Rolex

Registered Trademarks on its products and after Rolex’s federal registration of the Rolex
Registered Trademarks, Defendants began selling, offering for sale, distributing, promoting and
advertising in interstate commerce, through the Internet and through e-mail, merchandise bearing
counterfeits and infringements of the Rolex Registered Trademarks as those marks appear on
Rolex’s products and as shown in the Rolex Registered Trademarks attached hereto as Exhibit 1.
23.

On or about June 2, 2011, Rolex was contacted through its investigator by

Detectives of the Hialeah Police Department Investigation Unit (“HPD”) concerning classified
ads discovered on the website, www.craigslist.org, advertising for sale watches bearing
counterfeits and infringements of the Rolex Registered Trademarks. These watches were
explicitly advertised as “replica”. A representative sample of these listings is attached hereto as
Exhibit 2 and incorporated herein by reference.
24.

HPD made contact with Colon and arranged a time and place to meet him so that

the HPD could purchase a watch. Colon informed HPD through a telephone conversation that
his watches were “replicas” of Rolex Watches.
25.

On June 21, 2011, HPD met with Colon and during this conversation Colon had

in his possession and offered for sale eight (8) watches bearing counterfeits and infringements of
the Rolex Registered Trademarks.

26.

At this time, members of the HPD arrested Colon; Colon had in his possession

eight (8) watches. Prior to arrest, Colon spontaneously stated “I knew I was going to get
arrested.” At this time, Rolex’s investigator was summoned to the HPD Police Station and was
able to identify these watches as bearing counterfeits and infringements of the Rolex Registered
Trademarks and that such watches were not authorized reproductions.
27.

Colon, in connection with his distribution of watches bearing counterfeits and

infringements of the Rolex Registered Trademarks, was charged with the following violation:
forging or counterfeiting private labels [FL Statute § 831.032(3)(A)(1)].
28.

Subsequently, Colon pleaded guilty to the charges asserted against him.

29.

Despite having knowledge that the watches were replicas, Defendants offered for

sale and sold watches bearing counterfeits of the Rolex Registered Trademarks. Defendants’
conduct is clearly willful.
C. Summary of Defendants’ Illegal Activities
30.

Defendants intentionally, maliciously and willfully sold, offered for sale,

distributed, promoted and advertised watches bearing counterfeits of one or more of the Rolex
Registered Trademarks, despite knowledge that such sales were illegal.
31.

Defendants’ acts were calculated to confuse and to deceive the public and are

performed with full knowledge of Rolex’s rights.
32.

Defendants are not now, nor have they ever been, associated, affiliated, connected

with, endorsed or sanctioned by Rolex.
33.

Rolex has never authorized or consented in any way to the use by Defendants of

the Rolex Registered Trademarks or marks confusingly similar thereto.
34.

Defendants’ use of the Rolex Registered Trademarks or marks substantially

indistinguishable and/or confusingly similar thereto in connection with Defendants’ products is

likely to cause consumers, the public and the trade to erroneously believe that the products
provided by Defendants emanate or originate from Rolex, and/or that said products are
authorized, sponsored, or approved by Rolex, even though they are not. This confusion causes
irreparable harm to Rolex and weakens and dilutes the distinctive quality of the Rolex Registered
Trademarks.
35.

By using counterfeits and infringements of the Rolex Registered Trademarks on

their goods, Defendants are trading on the goodwill and reputation of Rolex and creating the
false impression that Defendants’ goods are affiliated with Rolex.
36.

Defendants have been unjustly enriched by illegally using and misappropriating

Rolex’s intellectual property for their own financial gain. Furthermore, Defendants have unfairly
benefited and profited from Rolex’s outstanding reputation for high quality products and its
significant advertising and promotion of Rolex watches and the Rolex Registered Trademarks.
37.

Defendants have disparaged Rolex, its Rolex Registered Trademarks and its

products by creating a false association with Rolex, its genuine goods and its Rolex Registered
Trademarks.
38.

Rolex has no control over the nature and quality of the products sold by

Defendants, which bear counterfeits and infringements of the Rolex Registered Trademarks.
39.

Among other things, Defendants’ promotion, advertisement and provision of its

goods have and will reflect adversely on Rolex as the believed source of origin thereof; hamper
continuing efforts by Rolex to protect its outstanding reputation for high quality, originality and
distinctive goods; and tarnish the goodwill and demand for genuine Rolex watches and products.
40.

Upon information and belief, Defendants have acted with reckless disregard for

Rolex’s rights and/or were willfully blind in connection with unlawful activities.

Upon

information and belief, Defendants have willfully and maliciously engaged in infringing
activities. Therefore, this case constitutes an exceptional case under 15 U.S.C. § 1117(a).
41.

Rolex has suffered irreparable harm and damages as a result of Defendants’

conduct. The injuries and damages sustained by Rolex have been directly and proximately
caused by the Defendants’ wrongful advertisement, promotion, distribution, sale and offers of
sale of their goods bearing counterfeits and/or infringements of the Rolex Registered
Trademarks.
42.

Rolex has no adequate remedy at law.

43.

Defendants’ wrongful acts will continue unless enjoined by the Court.

Accordingly, Defendants must be restrained and enjoined from any further counterfeiting or
infringement of the Rolex Registered Trademarks.
FIRST CLAIM FOR RELIEF
(Trademark Counterfeiting, 15 U.S.C. § 1114)
44.

Rolex hereby incorporates by reference all prior allegations as though fully set

forth herein.
45.

Defendants have used spurious designations that are identical with, or

substantially indistinguishable from, the Rolex Registered Trademarks on goods covered by
registrations for the Rolex Registered Trademarks.
46.

Defendants have intentionally used these spurious designations, knowing they are

counterfeit, in connection with the advertisement, promotion, sale, offering for sale and
distribution of goods.
47.

Defendants’ use of the Rolex Registered Trademarks to advertise, promote, offer

for sale, distribute and sell watches bearing counterfeits was and is without the consent of Rolex.

48.

Defendants’ unauthorized use of the Rolex Registered Trademarks on and in

connection with their advertisement, promotion, sale, offering for sale and distribution of
watches through e-mail and through the Internet constitutes Defendants’ use of the Rolex
Registered Trademarks in commerce.
49.

Defendants’ unauthorized use of the Rolex Registered Trademarks as set forth

above is likely to:
(a)

cause confusion, mistake and deception;

(b)

cause the public to believe that their watches are the same as Rolex’s watches

and/or that they are authorized, sponsored or approved by Rolex or that they are affiliated,
connected or associated with or in some way related to Rolex; and
(c)

result in Defendants unfairly benefiting from Rolex’s advertising and promotion

and profiting from the reputation of Rolex and its Rolex Registered Trademarks all to the
substantial and irreparable injury of the public, Rolex and the Rolex Registered Trademarks and
the substantial goodwill represented thereby.
50.

Defendants’ acts constitute willful trademark counterfeiting in violation of

Section 32 of the Lanham Act, 15 U.S.C. § 1114.
51.

By reason of the foregoing, Defendants are liable to Rolex for: (a) statutory

damages in the amount of up to $2,000,000 for each mark counterfeited as provided by 15
U.S.C. § 1117(c) of the Lanham Act, or, at Rolex’s election, an amount representing three (3)
times Rolex’s damages and/or Defendants’ illicit profits; and (b) reasonable attorneys’ fees,
investigative fees and pre-judgment interest pursuant to 15 U.S.C. § 1117(b).

SECOND CLAIM FOR RELIEF
(Trademark Infringement, 15 U.S.C. § 1114)
52.

Rolex hereby incorporates by reference all prior allegations as though fully set

forth herein.
53.

Based on Rolex’s extensive advertising under the Rolex Registered Trademarks,

its extensive sales and the wide popularity of Rolex Watches, the Rolex Registered Trademarks
have acquired a secondary meaning so that any product and advertisement bearing such
trademarks is immediately associated by purchasers and the public as being a product and
affiliate of Rolex.
54.

Defendants’ activities constitute Defendants’ use in commerce of the Rolex

Registered Trademarks. Defendants use the Rolex Registered Trademarks in connection with
Defendants’ sale, offers of sale, distribution, promotion and advertisement of their goods bearing
infringements and/or counterfeits of the Rolex Registered Trademarks.
55.

Defendants have used the Rolex Registered Trademarks, knowing they are the

exclusive property of Rolex, in connection with their sale, offers for sale, distribution, promotion
and advertisement of their goods bearing counterfeits or infringements of the Rolex Registered
Trademarks.
56.

Defendants’ activities create the false and misleading impression that Defendants

are sanctioned, assigned or authorized by Rolex to use the Rolex Registered Trademarks to
advertise, manufacture, distribute, appraise, offer for sale or sell watches bearing the Rolex
Registered Trademarks when Defendants are not so authorized.
57.

Defendants engage in the aforementioned activity with the intent to confuse and

deceive the public into believing that they and the watches they sell are in some way sponsored,
affiliated or associated with Rolex, when in fact they are not.

58.

Defendants’ use of the Rolex Registered Trademarks has been without the

consent of Rolex, is likely to cause confusion and mistake in the minds of the public and, in
particular, tends to and does falsely create the impression that the goods advertised, promoted,
distributed and sold by Defendants are warranted, authorized, sponsored or approved by Rolex
when, in fact, they are not.
59.

Defendants’ unauthorized use of the Rolex Registered Trademarks has resulted in

Defendants unfairly benefiting from Rolex’s advertising and promotion, and profiting from the
reputation of Rolex and the Rolex Registered Trademarks, to the substantial and irreparable
injury of the public, Rolex and the Rolex Registered Trademarks and the substantial goodwill
represented thereby.
60.

Defendants’ acts constitute willful trademark infringement in violation of Section

32 of the Lanham Act, 15 U.S.C. § 1114.
61.

By reason of the foregoing, Defendants are liable to Rolex for: (a) an amount

representing three (3) times Rolex’s damage and/or their illicit profits; and (b) reasonable
attorney’s fees, investigative fees and pre-judgment interest pursuant to 15 U.S.C. § 1117.
THIRD CLAIM FOR RELIEF
(Federal Trademark Dilution, 15 U.S.C. §1125(c))
62.

Rolex hereby incorporates by reference all prior allegations as though fully set

forth herein.
63.

Defendants’ use of the Rolex Registered Trademarks or marks confusingly similar

thereto in order to sell their products constitutes Defendants’ commercial use in commerce of the
Rolex Registered Trademarks.
64.

The Rolex Registered Trademarks are world famous and distinctive.

65.

Defendants’ use of the Rolex Registered Trademarks to advertise unauthorized

merchandise constitutes tarnishment of the Rolex Registered Trademarks.
66.

Rolex is suffering and will continue to suffer irreparable harm from the

Defendants’ dilutive activities.
67.

Defendants’ acts as aforesaid are diluting the distinctive quality of the Rolex

Registered Trademarks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
68.

Defendants have intentionally and willfully appropriated the Rolex Registered

Trademarks and traded on Rolex’s reputation.
69.

Defendants’ wrongful acts of dilution will continue unless enjoined by this Court.
PRAYER FOR RELIEF

WHEREFORE, Rolex respectfully requests that the Court order the following relief:
I.

That the Court enter an injunction ordering that Defendants, their agents, servants,

employees, and all other persons in privity or acting in concert with them be enjoined and
restrained from:
(a)
using any reproduction, counterfeit, copy, or colorable imitation of
the Rolex Registered Trademarks to identify any goods or the rendering of
any services not authorized by Rolex;
(b)
engaging in any course of conduct likely to cause confusion,
deception or mistake, or injure Rolex’s business reputation or weaken the
distinctive quality of the Rolex Registered Trademarks, Rolex’s name,
reputation or goodwill;
(c)
using a false description or representation including words or other
symbols tending to falsely describe or represent their unauthorized goods
as being those of Rolex or sponsored by or associated with Rolex and
from offering such goods in commerce;
(d)
further infringing or diluting the Rolex Registered Trademarks by
manufacturing, producing, distributing, circulating, selling, marketing,
offering for sale, advertising, promoting, displaying or otherwise
disposing of any products not authorized by Rolex bearing any simulation,

reproduction, counterfeit, copy or colorable imitation of the Rolex
Registered Trademarks;
(e)
using any simulation, reproduction, counterfeit, copy or colorable
imitation of the Rolex Registered Trademarks in connection with the
promotion, advertisement, display, sale, offering for sale, manufacture,
production, circulation or distribution of any unauthorized products in
such fashion as to relate or connect, or tend to relate or connect, such
products in any way to Rolex, or to any goods sold, manufactured,
sponsored or approved by, or connected with Rolex;
(f)
making any statement or representation whatsoever, or using any
false designation of origin or false description, or performing any act,
which can or is likely to lead the trade or public, or individual members
thereof, to believe that any services provided, products manufactured,
distributed, sold or offered for sale, or rented by Defendants are in any
way associated or connected with Rolex, or is provided, sold,
manufactured, licensed, sponsored, approved or authorized by Rolex;
(g)
engaging in any conduct constituting an infringement of any of the
Rolex Registered Trademarks, of Rolex’s rights in, or to use or to exploit,
said trademark, or constituting any weakening of Rolex’s name, reputation
and goodwill;
(h)
using or continuing to use the Rolex Registered Trademarks or
trade names in any variation thereof on the Internet (either in the text of a
website, as a domain name, or as a keyword, search word, metatag, or any
part of the description of the site in any submission for registration of any
Internet site with a search engine or index) in connection with any goods
or services not directly authorized by Rolex;
(i)
hosting or acting as Internet Service Provider for, or operating or
engaging in the business of selling any website or other enterprise that
offers for sale any products bearing the Rolex Registered Trademarks;
(j)
acquiring, registering, maintaining or controlling any domain
names that include the ROLEX trademark or any of the other Rolex
Registered Trademarks or any marks confusingly similar thereto,
activating any website under said domain names, or selling, transferring,
conveying, or assigning any such domain names to any entity other than
Rolex;
(k)
using any e-mail addresses to offer for sale any nongenuine
products bearing counterfeits of the Rolex Registered Trademarks;

(l)
having any connection whatsoever with any websites that offer for
sale any merchandise bearing counterfeits of the Rolex Registered
Trademarks;
(m)
secreting, destroying, altering, removing, or otherwise dealing with
the unauthorized products or any books or records which contain any
information relating to the importing, manufacturing, producing,
distributing, circulating, selling, marketing, offering for sale, advertising,
promoting, or displaying of all unauthorized products which infringe the
Rolex Registered Trademarks; and
(n)
effecting assignments or transfers, forming new entities or
associations or utilizing any other device for the purpose of circumventing
or otherwise avoiding the prohibitions set forth in subparagraphs (a)
through (m).
II.

That Defendants, within ten (10) days of judgment, take all steps necessary to

remove from all websites owned, operated or controlled by the Defendants, all text or other
media offering for sale any merchandise bearing the Rolex Registered Trademarks, or marks
substantially indistinguishable therefrom.
III.

That Defendants, within thirty (30) days of judgment, file and serve Rolex with a

sworn statement setting forth in detail the manner and form in which they have complied with
this injunction pursuant to 15 U.S.C. § 1116(a).
IV.

That Defendants be required to deliver up for destruction to Rolex all

unauthorized materials bearing any of the Rolex Registered Trademarks in association with
unauthorized goods or services and the means for production of same pursuant to 15 U.S.C. §
1118.
V.

That Defendants not operate nor use any websites that offer for sale and/or sell

any merchandise bearing counterfeits of the Rolex Registered Trademarks.
VI.

Requiring Defendants to pay to Rolex such damages Rolex has sustained as a

consequence of their counterfeiting and infringement of the Rolex Registered Trademarks and to
account for all gains, profits and advantages derived by Defendants from the sale of their

infringing merchandise bearing the Rolex Registered Trademarks, and that the award to Rolex be
trebled as provided for under 15 U.S.C. § 1117; alternatively, that Rolex be awarded statutory
damages pursuant to 15 U.S.C. § 1117(c) of up to $2,000,000 for each trademark that Defendants
have willfully counterfeited and infringed.
VII.

Ordering that Rolex recover the costs of this action, together with reasonable

attorneys’ and investigators’ fees and pre-judgment interest in accordance with 15 U.S.C. §
1117.
VIII.

Directing that this Court retain jurisdiction of this action for the purpose of

enabling Rolex to apply to the Court at any time for such further orders and interpretation or
execution of any Order entered in this action, for the modification of any such Order, for the
enforcement or compliance therewith and for the punishment of any violations thereof.
IX.

Ordering that pursuant to 11 U.S.C. § 523(a)(6), Defendants be prohibited from a

discharge under 11 U.S.C. § 727 for malicious, willful and fraudulent injury to Rolex.
X.

Awarding to Rolex such other and further relief as the Court may deem just and

proper, together with the costs and disbursements that Rolex has incurred in connection with this
action.
Dated this 12th day of October, 2011.
Respectfully submitted,
STEPHEN M. GAFFIGAN, P.A.
_______
By:_____s:/smgaffigan/__
Stephen M. Gaffigan (Fla. Bar No. 025844)
401 East Las Olas Boulevard
Suite 130-453
Ft. Lauderdale, Florida 33301
Telephone: [phone]
Facsimile: 954-767-4821
Email: [e-mail]
Attorneys for Plaintiff Rolex Watch U.S.A., Inc.