Chanel, Inc. v. 2012chanelbagsoutletstore.com et al

Filing 1

COMPLAINT for Injunctive Relief against All Defendants. Filing fee $ 350.00 receipt number 113C-4787178, filed by Chanel, Inc.. (Attachments: # 1 Civil Cover Sheet)(Gaffigan, Stephen)

THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
CHANEL, INC., a New York corporation,
Plaintiff,
vs.
THE PARTNERSHIPS and
UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A” and
DOES 1-1000,
Defendants.
/
COMPLAINT FOR INJUNCTIVE RELIEF
Plaintiff CHANEL, INC. (“Chanel”), a New York corporation, (“Plaintiff” or “Chanel”)
hereby sues Defendants, THE PARTNERSHIPS and UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A” and DOES 1-1000 (collectively “Defendants”), and alleges
as follows:
JURISDICTION AND VENUE
1.

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

Accordingly, this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338.
2.

Venue is proper in this Court pursuant 28 U.S.C. § 1391, and this Court may

properly exercise personal jurisdiction over Defendants since all Defendants directly target
business activities towards consumers in Florida and cause harm to Chanel’s business within this
District through, at least, various fully interactive Internet websites, including those operating
under their partnership and/or unincorporated association names (the “Subject Domain Names”).

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THE PLAINTIFF
3.

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 and wallets, under multiple world famous
common law and Federally registered trademarks including those identified in Paragraph 13
below. Chanel offers for sale and sells its trademarked goods within this Judicial District.
Defendants’ sales of counterfeit and infringing Chanel branded products are causing damage to
Chanel within this Jurisdiction. Chanel regularly enforces its intellectual property rights and
authorized that this action be brought in its name.
4.

Like all other famous trademark owners in the field of luxury goods, Chanel

suffers ongoing daily and sustained violations of its trademark rights at the hands of
counterfeiters and infringers, such as the Defendants herein, who wrongfully reproduce and
counterfeit Chanel’s trademarks for the twin purposes of (i) duping and confusing the consuming
public and (ii) earning substantial profits. The natural and intended byproduct of Defendants’
actions is the erosion and destruction of the goodwill associated with the Chanel name and
associated trademarks.
5.

In order to combat the harm caused by the combined actions of Defendants and

others engaging in similar conduct, each year Chanel expends millions of dollars in connection
with trademark enforcement efforts, including legal fees, investigative fees, and support
mechanisms for law enforcement, such as field training guides and seminars. The recent

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explosion of counterfeiting over the Internet has created an environment which requires Chanel
to file a massive number of lawsuits, often it later turns out, against the same individuals and
groups, in order to protect both consumers and itself from the ill effects of confusion and the
erosion of the goodwill connected to the Chanel brand. The financial burden on Chanel and
companies similarly situated is staggering, as is the resulting burden on the Federal court system.
THE DEFENDANTS
6.

Defendants are partnerships or unincorporated business associations which

operate through domain names registered with registrars in multiple countries, including the
United States, the People’s Republic of China, and Germany, and are comprised of individuals
and/or business entities of unknown makeup, many of whom likely reside and/or operate in the
People’s Republic of China or other foreign jurisdictions with lax trademark enforcement
systems. Defendants have the capacity to be sued pursuant to Federal Rule of Civil Procedure
17(b). Defendants target their business activities towards consumers throughout the United
States, including within this Judicial District through the operation of the fully interactive
commercial websites operating under the Subject Domain Names identified on Schedule “A”
hereto. Defendants are directly and personally contributing to, inducing and engaging in the sale
of counterfeit products as alleged herein, often times as partners, co-conspirators and/or
suppliers. The partnership or unincorporated association names used by Defendants are set forth
on Schedule “A” hereto. Chanel is presently unaware of the true names of Does 1-1000. Chanel
will amend this Complaint upon discovery of the identities of such fictitious Defendants.
7.

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

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

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8.

Defendants engage in unfair competition with Chanel and 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. 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 Plaintiff. 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.
9.

Upon information and belief, Defendants will continue to register or acquire new

domain names for the purpose of selling goods bearing counterfeits and infringements of
Chanel’s trademarks unless preliminarily and permanently enjoined.
10.

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

massive illegal operations, infringing on the intellectual property rights of Chanel and others.
11.

Defendants use and 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 or maintenance
process. Upon information and belief, many of the Defendants have anonymously registered and
maintained some of the Subject Domain Names for the sole purpose of engaging in illegal
counterfeiting activities.
12.

Defendants’ business names, i.e., the Subject Domain Names and any other

domain names used in connection with the sale of counterfeits bearing Chanel’s trademarks, are
essential components of Defendants’ counterfeiting and infringing activities. The Subject

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Domain Names themselves are the means by which Defendants further their counterfeiting and
infringing scheme and cause harm to Chanel. Moreover, Defendants are using Chanel’s famous
name and trademarks 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
13.

Chanel 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:

Trademark

Registration
Number

Registration
Date

CHANEL

0,626,035

May 1, 1956

IC 018 – Women’s Handbags

1,314,511

January 15,
1985

IC 018 - Leather Goods-Namely,
Handbags

1,347,677

July 9, 1985

IC 018 - Leather Goods-namely,
Handbags

CHANEL

CHANEL

Class(es)/Goods

1,733,051

IC 018 - Leather Goods; namely,
Handbags, Wallets, Travel Bags,
November 17, Luggage, Business and Credit Card
1992
Cases, Change Purses, Tote Bags,
Cosmetic Bags Sold Empty, and
Garment Bags for Travel

1,734,822

IC 018 - Leather Goods; namely,
Handbags, Wallets, Travel Bags,
November 24,
Luggage, Business Card Cases,
1992
Change Purses, Tote Bags, and
Cosmetic Bags Sold Empty

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(the “Chanel Marks”) and are used in connection with the manufacture and distribution of high
quality goods in the categories identified above.
14.

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

distinguish Chanel's high quality handbags, wallets, and other goods for an extended period of
time.
15.

The Chanel Marks have never been assigned or licensed to any of the Defendants

in this matter.
16.

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

have never been abandoned.
17.

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).
18.

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

United States in association with the sale of high quality handbags, wallets, and other goods and
has carefully monitored and policed the use of the Chanel Marks.
19.

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

merchandise bearing the Chanel Marks, as being high quality luxury goods sponsored and
approved by Chanel.
20.

Accordingly, the Chanel Marks have achieved secondary meaning as identifiers

of high quality handbags, wallets, and other goods.
21.

Genuine Chanel branded goods are widely legitimately advertised and promoted

by Chanel, its authorized distributors and unrelated third parties via the Internet. Over the course
of the past five to seven years, visibility on the Internet, particularly via Internet search engines

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such as Google, Yahoo!, and Bing has become increasingly important to Chanel’s overall
marketing and consumer education efforts. Thus, Chanel expends significant monetary resources
on Internet marketing and consumer education, including search engine optimization (“SEO”)
strategies. Those strategies allow Chanel and its authorized retailers to fairly and legitimately
educate consumers about the value associated with the Chanel brand and the goods sold
thereunder. SEO is a now common marketing process whereby a company or individual designs,
supports, structures and phrases Internet website content in order to enhance a website’s profile
for search engines over a variety of search terms.
22.

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

have 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.
23.

Chanel has discovered Defendants are promoting and otherwise advertising,

distributing, selling and/or offering for sale counterfeit products, including, at least, handbags
and wallets, bearing marks which are exact copies or colorable imitations of the Chanel Marks
(the “Defendants’ Goods”). Specifically, upon information and belief, Defendants are using the
Chanel Marks for different quality goods.
24.

The Defendants’ Goods are of a quality substantially different than that of

Chanel’s genuine goods. Despite the nature of the Defendants’ Goods and the knowledge they
are without authority to do so, Defendants are actively using, promoting and otherwise
advertising, distributing, selling and/or offering for sale substantial quantities of such goods with
the knowledge that such goods will be mistaken for the genuine high quality products offered for
sale by Chanel. The net effect of Defendants’ actions will be to result in the confusion of
consumers at the time of initial interest, sale, and in the post-sale setting, who will believe

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Defendants’ Goods are genuine goods originating from, associated with, and approved by
Chanel.
25.

Defendants advertise their products for sale to the consuming public. In so

advertising these products, Defendants improperly and unlawfully use the Chanel Marks. Upon
information and belief, the misappropriation of the Chanel Marks has been the proximate cause
of harm to Chanel.
26.

As part of their overall infringement and counterfeiting scheme, the Defendants

are, upon information and belief, all employing substantially similar, and often times
coordinated, SEO strategies based, in large measure, upon an illegal use of counterfeits and
infringements of the Chanel Marks. Specifically, the Defendants are using counterfeits of
Chanel’s name and the Chanel Marks in order to make their websites selling illegal goods appear
more relevant and attractive to search engines across an array of search terms. By their actions,
the Defendants are causing concurrent and indivisible harm to Chanel and the consuming public
by (i) depriving Chanel and other third parties of the ability to fairly compete for space within
search engine results, (ii) causing an overall degradation of the value of the goodwill associated
with the Chanel Marks and (iii) increasing Chanel’s overall cost to market its goods and educate
consumers about the brand via the Internet.
27.

Upon information and belief, Defendants are concurrently conducting their

counterfeiting and infringing activities, 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 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.

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28.

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

reproduction, distribution, sale, and offering for sale of Defendants’ Goods, is without Chanel’s
consent or authorization.
29.

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

infringing activities knowingly 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.
30.

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 use of the Chanel Marks 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 and Defendants’ Goods.
31.

Chanel has no adequate remedy at law.

32.

Chanel is suffering irreparable and indivisible injury and damages as a result of

Defendants’ unauthorized and wrongful use of the Chanel Marks. If Defendants’ counterfeiting,
infringing, and unfairly competitive activities are not preliminarily and permanently enjoined by
this Court, Chanel and the consuming public will continue to be harmed.
33.

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 the Defendants’ Goods.
34.

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.

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COUNT I - TRADEMARK COUNTERFEITING AND INFRINGEMENT
35.

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

through 34 above.
36.

This is an action for trademark counterfeiting and infringement against

Defendants based on their use of counterfeits, copies, and/or colorable imitations of the Chanel
Marks in commerce in connection with the promotion, advertisement, distribution, sale and/or
offering for sale of the Defendants’ Goods.
37.

Specifically, Defendants are promoting and otherwise advertising, selling,

offering for sale and distributing, at least, counterfeit and/or infringing handbags and wallets
bearing the Chanel Marks. Defendants are continuously infringing and inducing others to
infringe the Chanel Marks by using them to advertise, promote and sell, at least, counterfeit and
infringing handbags and wallets.
38.

Defendants’ concurrent counterfeiting, infringing, and unfairly competitive

activities are likely to cause and, upon information and belief, actually are causing confusion,
mistake and deception among members of the trade and the general consuming public as to the
origin and quality of Defendants’ Goods bearing or sold using the Chanel Marks.
39.

Defendants’ unlawful actions have caused and are continuing to cause

unquantifiable and irreparable harm to Chanel.
40.

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.
41.

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.

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COUNT II - FALSE DESIGNATION OF ORIGIN
PURSUANT TO § 43(a) OF THE LANHAM ACT
42.

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

through 34 above.
43.

Defendants’ Goods bearing and sold under the Chanel Marks have been widely

advertised and distributed throughout the United States.
44.

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

identical in appearance to each of Chanel’s genuine goods. However, the Defendants’ Goods are
different 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 Defendants’ Goods.
45.

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

advertisement and sale of products, 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.
46.

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

in Defendants’ advertisement and promotion of their counterfeit and infringing handbags and
wallets. Defendants have also misrepresented to members of the consuming public that the
products being advertised and sold by them are genuine, non-infringing products.
47.

Additionally, Defendants are using counterfeits and infringements of the Chanel

Marks in order to unfairly compete with Chanel and others for space within search engine
organic results, thereby jointly depriving Chanel of a valuable marketing and educational tool
which would otherwise be available to Chanel.
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48.

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

Lanham Act, 15 U.S.C. §1125(a).
49.

Chanel has sustained indivisible injury and harm caused by Defendants’

concurrent 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)

50.

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

through 34 above.
51.

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.
52.

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
various domain names which are identical or confusingly similar to or dilutive of the Chanel
Marks.
53.
54.

Defendants have no intellectual property rights in or to the Chanel Marks.
Defendants’ actions constitute cyberpiracy in violation of §43(d) of the Lanham

Act, 15 U.S.C. §1125(d).
55.

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.
56.

The aforesaid conduct is causing Chanel damages and immediate and irreparable

injury. Chanel has no adequate remedy at law.

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COUNT IV - COMMON LAW UNFAIR COMPETITION
57.

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

through 34 above.
58.

This is an action against Defendants based on their manufacture, promotion,

advertisement, distribution, sale and/or offering for sale of goods bearing marks which are
virtually identical, both visually and phonetically, to the Chanel Marks in violation of Florida’s
common law of unfair competition.
59.

Specifically, the Defendants are promoting and otherwise advertising, selling,

offering for sale and distributing infringing and counterfeit handbags and wallets. The
Defendants are also using counterfeits and infringements of the Chanel Marks to unfairly
compete with Chanel and others for space in search engine results across an array of search
terms.
60.

Defendants’ 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 Defendants’ products by their use of the Chanel Marks.
61.

Chanel has no adequate remedy at law and is suffering and irreparable injury as a

result of Defendants' actions.
PRAYER FOR RELIEF
62.

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

entry of an award of equitable relief 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

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promoting, distributing, selling or offering to sell the Defendants’ 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
services or products 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, infringement, 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, handbags or wallets; 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; from
engaging in search engine optimization strategies using colorable imitations of the Chanel name
or Marks; and from otherwise unfairly competing with Chanel.
b.

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 or their administrators that are
provided with notice of the injunction, cease facilitating access to any or all domain names and
websites through which Defendants engage in the sale of counterfeit and infringing goods using
the Chanel Marks.

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c.

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

Registries for the Subject Domain Names and their administrators 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 Names to the IP addresses where the associated
websites are hosted.
d.

Entry of an order canceling or, at Chanel’s election, transferring the

Subject Domain Names and any other domain names used by the Defendants to engage in their
counterfeiting of the Chanel Marks at issue to Chanel’s control so they may no longer be used
for illegal purposes.
e.

Entry of an order that, upon Chanel’s request, the Internet Corporation for

Assigned Names and Numbers (“ICANN”) shall take all actions necessary to ensure that the
Registrars and the top level domain Registries responsible for the Subject Domain Names
transfer, change the Registrar of Record, and/or disable the Subject Domain Names as directed
by the Court.
f.

Entry of an award of Chanel’s costs and reasonable attorneys’ fees and

investigative fees associated with bringing this action.
g.

Entry of further relief as the Court may deem just and proper.

DATED: June 4, 2012.

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., #130-453
Ft. Lauderdale, Florida 33301
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
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E-mail: [e-mail]
Attorneys for Plaintiff
Chanel, Inc.

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SCHEDULE A
DEFENDANTS BY SUBJECT DOMAIN NAMES AND DEFENDANT NUMBER
Defendant No.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22

Domain Name
2012chanelbagsoutletstore.com
2012chanelhandbag.com
2012chanelhandbagoutlet.com
2012chanelhandbags.com
cheapchanelbagsau.com
cheapchanelbagsuk.com
cheap-chaneloutlet.com
cheapchaneloutletstore.com
cheapoutletstore2012.com
cocooutlet.com
newchanelbagsstore.com
official-chanelbags.com
officialchanelbagsau.com
officialchanelbagsca.com
official-chanelhangbags.com
outletchanelstore.com
salechanelbagsuk.com
shop-chanelbags.com
storechanelbag.com
storechaneluk.com
topchanelbagsoutlet.com
ukchanelhandbags.com

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