Adidas AG et al v. adidas2013online.com et al
Filing
7
ORDER granting 4 Motion for Temporary Restraining Order. Signed by Magistrate Judge John J. O'Sullivan on 12/17/2013. (mkr)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 13-24398-CIV-LENARD
ADIDAS AG, et al.,
Plaintiff,
VS.
ADIDAS20130NLINE.COM, et al.,
Defendants.
I
ORDER GRANTING PLAINTIFFS' EX PARTE APPLICATION FOR ENTRY
OF TEMPORARY RESTRAINING ORDER
THIS CAUSE is before the Court on Plaintiffs' Ex Parte Application for Entry of
Temporary Restraining Order and Preliminary Injunction (the "Application for TRO") (D.E. 4).
The Ex Parte Application for TRO asks the Court to issue a temporary restraining order and then
a preliminary injunction against various partnerships and unincorporated associations who
operate websites that infringe Plaintiffs' respective trademarks and that promote and sell
counterfeit versions of Plaintiffs' respective goods. Among other things, Plaintiffs ask that the
Court enjoin Defendants from producing or selling goods which infringe their trademarks, and
that the Court seize control of the domain names of the infringing websites and redirect the web
traffic searching for those domains to another site that displays a copy of the pleadings from this
case. Having considered the Application for TRO and pertinent portions of the record, the Court
finds as follows.
I.
PROCEDURAL BACKGROUND
Plaintiffs, adidas AG, adidas International Marketing B.V., adidas America, Inc. (referred
to herein collectively as "adidas"), Reebok International Limited and Reebok International Ltd.
(referred to herein collectively as "Reebok."), and Sports Licensed Division of the adidas Group,
LLC (referred to herein as "SLD") (collectively referred to herein as "Plaintiffs"), are suing
Defendants, the Partnerships and Unincorporated Associations identified on Schedule "A" hereto
and their various unknown associates for trademark counterfeiting and infringement; false
designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. §1125(a); cybersquatting
under 15 U.S.C. §1125(d); and unfair competition under Florida's common law.
Plaintiffs'
Complaint (D.E. 1) alleges that Defendants are promoting, advertising, distributing, offering for
sale and selling counterfeit and infringing Plaintiffs' products within the Southern District of
Florida through fully interactive commercial Internet websites operating under the domains
names identified on Schedule "A" hereto (the "Subject Domain Names").
Plaintiffs allege Defendants' unlawful activities have ( 1) deprived Plaintiffs of their right
to determine the manner in which their trademarks are presented to the public through
merchandising; (2) defrauded the public into thinking Defendants' goods are Plaintiffs'
authorized goods; (3) deceived the public as to Plaintiffs' sponsorship of and/or association with
Defendants' Goods and the websites through which such goods are marketed and sold; (4)
wrongfully traded and capitalized on Plaintiffs' respective reputations and goodwill and the
commercial value of Plaintiffs' trademarks; (5) wrongfully damaged Plaintiffs' ability to market
their goods and educate consumers about their brands via the Internet in a free and fair
marketplace and (6) participated in the creation and/or maintenance of an illegal marketplace on
the World Wide Web, the purposes of which were to (i) confuse consumers regarding the source
of Defendants' goods for profit, and (ii) expand the marketplace for illegal, counterfeit goods
bearing Plaintiffs' respective trademarks while shrinking the legitimate marketplace for
Plaintiffs' genuine goods.
2
In the Ex Parte Application for TRO, Plaintiffs move for the issuance of a temporary
restraining order, and, upon expiration of the temporary restraining order, a preliminary
injunction against Defendants, pursuant to 15 U.S.C. § 1116 and Fed. R. Civ. P. 65 and The All
Writs Act, 28 U.S.C §1651(a) for alleged violations ofthe Lanham Act, 15 U.S.C. §§ 1114, and
1125(a) and (d).
II.
FACTUAL BACKGROUND 1
Plaintiff adidas manufactures, promotes, distributes, and sells in interstate commerce,
athletic footwear, apparel, and sporting equipment under a number of adidas' trademarks. (See
Declaration of Jeni B. Zuercher in Support of Plaintiffs' Application for TRO ("Zuercher Decl.")
~~
4-6.) Plaintiff adidas is the registered owner of the following trademarks on the Principal
Register of the United States Patent and Trademark Office (the "adidas Marks"):
Trademark
ADIDAS
.....
-·adidas
Registration
Number
0,891,222
Registration
Date
Class I Goods
May 19, 1970
IC25- sportswear namely, suits, shorts,
pants, tights, shirts, gloves, and the like;
jerseys; socks; sport shoes namely,
track and field training shoes,
basketball shoes, and tennis shoes.
IC 13 -tote bags
0,973,161
1,300,627
November 20,
1973
October 16,
1984
1
IC 25 - specific purpose athletic shoes;
general purpose sport shoes, sports
wear-namely, suits, shorts, pants, tights,
shirts, jerseys, socks, and gloves.
IC 025- sportswear namely, suits,
shorts, pants, tights, shirts, jerseys,
socks, gloves, jackets, coats, swimwear,
sweaters, caps, pullovers, warm-up
suits, rain suits, ski suits, jump suits,
boots, shoes, slippers.
The factual background is taken from the Application for TRO, and supporting Declarations
submitted by Plaintiffs.
3
Trademark
.......
-......
Registration
Number
1,310,140
Registration
Date
Class I Goods
December 18,
1984
IC 025- sportswear-namely, suits,
shorts, pants, tights, shirts, jerseys,
socks, gloves, jackets, coats, swimwear,
sweaters, caps, pullovers, warm-up
suits, rain suits, ski suits, jump suits,
boots, shoes, slippers.
IC 018 - all purpose sport bags, athletic
bags, traveling bags, backpacks,
knapsacks, beach bags
6~\.
2,411,802
December 12,
2000
IC 025 - sports and leisure wear,
namely, shorts, pants, shirts, t-shirts,
jerseys, tights, socks, gloves, jackets,
swimwear, caps and hats, pullovers,
sweat-shirts, sweat suits, track suits,
warm-up suits, rain suits; boots,
slippers, sandals, specific purpose
athletic shoes and general all purpose
sports shoes
IC 028 - sports balls and playground
balls; guards for athletic use, namely,
shin guards, knee guards and leg guards
4
Trademark
Registration
Number
Registration
Date
Class I Goods
I C 009 - optical apparatus and
instruments, namely, eyeglasses and
sunglasses
IC 014- horological and chronometric
instruments, namely, watches
...
-·-
~
3,104,117
June 13, 2006
IC 018 - leather and imitations of
leather, and goods made from these
materials in the nature of bags for
general and sport use, namely
handbags, tote bags, waist packs,
overnight bags, backpacks, knapsacks
and beach bags; trunks; traveling bags
for general and sport use; leather and
imitations of leather and goods made
from these materials, namely, wallets,
briefcases, and key cases
IC 025- sports and leisure wear,
namely suits, shorts, pants, sweatpants,
skirts, skorts, dresses, blouses, shirts, tshirts, sleeveless tops, polo shirts, vests,
jerseys, sweaters, sweatshirts,
pullovers, coats, jackets, track suits,
training suits, warm-up suits,
swimwear, underwear, socks, gloves,
scarves, wristbands and belts; headgear,
namely caps, hats, visors, headbands;
athletic footwear and leisure foot wear,
namely boots, sandals, specific purpose
athletic shoes and general purpose
sports shoes
The adidas Marks are used in connection with the manufacture and distribution of high quality
goods in at least the categories identified above. (See Zuercher
Decl.~
5; see also United States
Trademark Registrations of the adidas Marks at issue attached as Exhibit B to the Zuercher
Decl.)
5
Plaintiff Reebok manufactures, promotes, distributes, and sells in interstate commerce,
athletic footwear, apparel, and sporting equipment under a number of Reebok' s trademarks. (See
Zuercher Decl. ,-r,-r 13-15.) Plaintiff Reebok is the registered owner of the following trademarks
on the Principal Register of the United States Patent and Trademark Office (the "Reebok
Marks"):
Trademark
Registration
Number
Registration
Date
Class I Goods
REEBOK
1,133,704
April 22, 1980
IC 25 - shoes for use in athletic sports
IC 018 - all purpose sport bags, duffel
bags, tote bags, knapsacks, and
shoulder bags.
~
1,848,848
August 9, 1994
6
IC 025 - footwear and apparel;
namely, t-shirts, shirts, sweatshirts,
sweaters, jackets, hats, visors, socks,
sweatpants, pants, shorts, skirts,
unitards, and leotards.
Trademark
Registration
Number
Registration
Date
Class I Goods
IC 09- eyewear, namely, eyewear
cases; eyewear cleaning cloths;
sunglasses; protective helmets for
hockey, and skating.
RBK
3,074,802
March 28, 2006
IC 025 - footwear; headwear; apparel,
namely, sweatpants, sweatshirts,
shirts, shorts, sweaters, socks, jackets,
sweat suits, warm-up suits, shooting
shirts, fleece tops, tank tops, polo
shirts, pants, athletic bras, leggings,
skirts, turtlenecks, vests, dresses,
athletic uniforms, gloves, infant wear,
running suits.
IC 028- sports equipment, namely,
basketballs, footballs, rugby balls,
soccer balls, in-line skates, hockey
skates; protective hockey equipment,
namely shin pads, elbow pads,
shoulder pads, and pants; protective
in-line skating equipment, namely
kneepads and elbow pads.
The Reebok Marks are used in connection with the manufacture and distribution of high quality
goods in at least the categories identified above. (See Zuercher Decl.~ 14; see also United States
Trademark Registrations of the Reebok Marks at issue attached as Exhibit B to the Zuercher
Decl.)
Plaintiff SLD manufactures, promotes, distributes, and sells in interstate commerce,
apparel and headwear under a number of SLD's trademarks. (See Zuercher Decl.
~~
22-24.) SLD
is the registered owner of the following trademarks on the Principal Register ofthe United States
Patent and Trademark Office (the "Mitchell & Ness Mark"):
7
Trademark
Registration
Number
Registration
Date
Class I Goods
MITCHELL &
NESS
2,860,283
July 6, 2004
IC 025 - sports jerseys, jackets, shirts,
t-shirts, sweaters, caps, hats, head
bands and wrist bands
The Mitchell & Ness Mark is used in connection with the manufacture and distribution of high
quality goods in at least the categories identified above. (See Zuercher Decl.
~
23; see also
United States Trademark Registration of the Mitchell & Ness Mark at issue attached as Ex. C to
the Zuercher Decl.)
Defendants, via the Subject Domain Names have advertised, promoted, offered for sale,
and/or sold, goods in interstate commerce bearing what Plaintiffs have determined to be
counterfeits, infringements, reproductions, and/or colorable imitations of Plaintiffs' respective
trademarks. Although each Defendants may not copy and infringe each of Plaintiffs' individual
trademarks for each category of goods protected, Plaintiffs have submitted sufficient evidence
showing each Defendant has infringed, at least, one or more of the trademarks at issue. (See
Zuercher Decl.
~~
32-34.) Defendants are not now, nor have they ever been, authorized or
licensed to use, reproduce, or make counterfeits, infringements, reproductions, and/or colorable
imitations of the adidas Marks, Reebok Marks, or Mitchel & Ness Mark (collectively,
"Plaintiffs' Marks."). (See Zuercher Dec I. ~ 31.)
Zuercher reviewed and visually inspected the items bearing Plaintiffs' respective
trademarks offered for sale via the Internet websites operating under the partnership and/or
unincorporated association names identified on Schedule "A" hereto, the Subject Domain
Names, and she determined the products were non-genuine, unauthorized versions of Plaintiffs'
products. (See Zuercher Decl.
~~
32-34; see also Composite Exhibit A attached to the
Declaration of Stephen M. Gaffigan in Support ofPlaintiffs' Application for TRO.)
8
III.
LEGAL STANDARD
Plaintiffs have filed claims pursuant to 15 U.S.C. §§ 1114(1)(a), 1125(a), and 1125(d)
and The All Writs Act, 28 U.S.C §1651(a). Title 15 U.S.C. section 1116(a) provides the Court
"shall have power to grant injunctions, according to the principles of equity and upon such terms
as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark
registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c),
or (d) of section 1125 ofthis title." 15 U.S.C. § 1116. Injunctive relief is also available under
section 1116(a) for a violation of section 1114(1)(a). See 15 U.S.C. § 1116(d)(l)(A).
In order to obtain a temporary restraining order, a party must demonstrate "(1) [there is] a
substantial likelihood of success on the merits; (2) that irreparable injury will be suffered if the
relief is not granted; (3) that the threatened injury outweighs the harm the relief would inflict on
the non- movant; and (4) that the entry of the relief would serve the public interest." Schiavo ex.
rei Schindler v. Schiavo, 403 F.3d 1223, 1225-26 (11th Cir. 2005); see also Levi Strauss & Co.
v. Sunrise Int'l. Trading Inc., 51 F. 3d 982, 985 (11th Cir. 1995) (applying the test to a
preliminary injunction in a Lanham Act case). Additionally, a court may only issue a temporary
restraining order without notice to the adverse party or its attorney only if:
(A) specific facts in an affidavit or a verified complaint clearly show that immediate and
irreparable injury, loss, or damage will result to the movant before the adverse party or
can be heard in opposition; and
(B) the movant's attorney certifies in writing any efforts made to give notice and the
reasons why it should not be required.
FED. R. CIV. P. 65(b). Ex Parte temporary restraining orders "should be restricted to serving their
underlying purpose of preserving the status quo and preventing irreparable harm just so long as
is necessary to hold a hearing and no longer." Granny Goose Foods, Inc. v. Brotherhood of
9
Teamsters & Auto Truck Drivers Local No. 70 of Alameida Cnty, etc., 415 U.S. 423, 439
(1974).
With respect to scope, generally, "persons who are not actual parties to the action or in
privity with any of them may not be brought within the effect of a[ n injunctive] decree merely by
naming them in the order." 11C WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE, §
2956 at 335-36 (2d ed. 1995) (footnote omitted). However, "a decree of injunction not only
binds the parties defendant but also those identified with them in interest, in 'privity' with them,
represented by them or subject to their control." Golden State Bottling Co. v. NLRB, 414 U.S.
168, 180 (1973) (citing Regal Knitwear Co. v. NLRB, 324 U.S. 9, 14 (1945)); see also Fed. R.
Civ. P. 65(d)(2). Specifically relevant to this case, 15 U.S.C. section 1114(2)(D) implicitly
provides the Court with authority to request or order "[a] domain name registrar, domain name
registry, or other domain name registration authority ... [to] deposit[]with a court, in which an
action has been filed regarding the disposition of the domain name, documents sufficient for the
court to establish the court's control and authority regarding the disposition of the registration
and use of the domain name." 15 U.S.C. §§ 1114(2)(D)(i)-(ii).
IV.
DISCUSSION
A.
Probability of Success on the Merits
1.
Counterfeiting and Infringement -15 U.S.C. § 1114
Section 32 of The Lanham Act, 15 U.S.C. § 1114, provides liability for trademark
infringement if, without the consent of the registrant, a defendant uses "in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark: which is likely to
cause confusion, or to cause mistake, or to deceive." To prevail on their trademark infringement
claim, Plaintiffs must demonstrate "(1) that [they] had prior rights to the mark at issue and (2)
10
that the defendants had adopted a mark or name that was the same, or confusingly similar to
[their] mark, such that consumers were likely to confuse the two." Planetary Motion, Inc. v.
Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001) (citing Lone Star Steakhouse &
Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir. 1997) (internal citation
omitted)).
To evaluate likelihood of consumer confusion in a Lanham Act trademark claim, the
Eleventh Circuit has developed a seven factor balancing test. See Dieter v. B & H Indus. of Sw.
Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989). The seven factors are: "(1) type [or strength] of
mark; (2) similarity of mark; (3) similarity of the products the marks represent; (3) similarity of
the parties' retail outlets and customers; (5) similarity of advertising media; (6) defendant's
intent; and (7) actual confusion." Lipscher v. LRP Publ'ns, Inc., 266 F.3d 1305, 1313 (11th Cir.
2001); see also Dieter, 880 F.2d at 326; Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675
F.2d 1160, 1164 (11th Cir. 1982). No single factor is dispositive. Lipscher, 266 F.3d at 1313.
The Court has considered these seven factors in light of the submissions provided by
Plaintiffs and concludes the balance of factors indicates there is a likelihood consumers would
confuse Defendants' Websites and products with Plaintiffs' genuine versions. In particular, the
submissions provided by Plaintiffs support the strength of Plaintiffs' Marks, show that the goods
produced and sold by Defendants are nearly identical to Plaintiffs' respective genuine products,
indicate that both Plaintiffs and Defendants target the same U.S. customers on the Internet,
suggest that Defendants intended to benefit from the use of Plaintiffs' respective brand
reputation, and show that consumers viewing Defendants' counterfeit goods post-sale would
actually confuse them for Plaintiffs' real products. Accordingly, Plaintiffs have shown a
11
probability of success on the merits of their trademark counterfeiting and infringement claim
under section 1114.
2.
False Designation of Origin- 15 U.S.C. § 1125(a)
The test for liability for false designation of origin under 15 U.S.C. § 1125(a) is the same
as for a trademark counterfeiting and infringement claim- i.e., whether the public is likely to
be deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 780 (1992). As just discussed in relation to Plaintiffs' trademark
counterfeiting and infringement claims, Defendants' goods are likely to be confused by
consumers for Plaintiffs' genuine products. Therefore, Plaintiffs have shown a likelihood of
success on Plaintiffs' claim of false designation of origin.
3.
Cybersquatting Claim -15 U.S.C. § 1125(d)
The Anticybersquatting Consumer Protection Act ("ACPA") protects the owner of a
distinctive or famous trademark from another's bad faith intent to profit from the trademark
owner's mark by registering or using a domain name which is identical or confusingly similar to,
or dilutive of, the trademark owner's mark without regard to the goods or services of the parties.
See 15 U.S.C. § 1125(d). "To prevail under the ACPA, a plaintiff must prove that (1) its mark is
distinctive or famous and entitled to protection; (2) the defendant's domain name is identical or
confusingly similar to the plaintiffs mark; and (3) the defendant registered or used the domain
name with a bad faith intent to profit." Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 F. App'x
252, 256 (11th Cir. 2006) (citing Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir. 2001)).
As to the first element, Plaintiffs' Marks are inherently distinctive because they are
arbitrary as applied to the products which they identify -
i.e., they "do[] not suggest or describe
the goods or services offered thereunder." Victoria's Cyber Secret Ltd. P'ship v. V Secret
12
Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (citing Frehling Enters., Inc. v. Int'l
Select Group, Inc., 192 F.3d 1330, 1335-36 (11th Cir. 1999)). Moreover, Plaintiffs' Marks are
indisputably famous because they enjoy widespread recognition by consumers. Regarding the
second element -
use of confusingly similar domain names -
Plaintiffs allege many of the
Defendants at issue have registered domain names allegedly used by Defendants to sell
counterfeit versions of Plaintiffs' products. (See Schedule A attached to Plaintiffs' Application
for TR0.)2 Plaintiffs have provided sufficient evidence in their submissions to support the
conclusion that these domain names are confusingly similar to at least some of Plaintiffs' Marks.
With regard to the third element -
whether Defendants registered the domain names with the
bad faith intent to profit -the Court has considered the nine factors laid out in 15 U.S.C. §
1125(d)(l )(B)(i)(I)-(IX) and concludes the submissions provided by Plaintiffs adequately
demonstrate Defendants registered the Subject Domain Names in bad faith to attract customers
using Plaintiffs' Marks to sell them counterfeit versions of Plaintiffs' products. Consequently,
Plaintiffs have shown a likelihood of success on the merits of their section 1125(d) claim.
4.
Unfair Competition- Florida Common Law
Whether a defendant's use of a plaintiffs trademarks created a likelihood of confusion
between the plaintiffs and the defendant's products is also the determining factor in the analysis
of unfair competition under the common law of Florida. Rolex Watch U.S.A., Inc. v. Forrester,
No. 83-8381-Civ-Paine, 1986 WL 15668, at *3 (S.D. Fla. Dec. 9, 1987) ("The appropriate test
for determining whether there is a likelihood of confusion, and thus trademark infringement,
2
The Court may seize control of the remaining Subject Domain Names which do not themselves
contain any Plaintiffs' Marks because the websites associated with those domain names allegedly
promote and offer for sale goods which infringe Plaintiffs' Marks in violation of sections 1114
and 1125(a). See Tiffany (NJ), LLC v. Zheng, 11-60171-Civ-Altonaga, at 9 (S.D. Fla. Feb. 1,
2011) (D.E. 13).
13
false designation of origin, and unfair competition under the common law of Florida, is set forth
in John H. Harland, Inc. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983.)") As
discussed in relation to Plaintiffs' trademark counterfeiting and infringement claims, Plaintiffs
established there is a likelihood of confusion regarding Defendants' use of Plaintiffs' Marks on
their counterfeit and infringing products. As such, Plaintiffs have also shown a likelihood of
success on the merits of their common law unfair competition claim.
B.
Irreparable Injury
The Eleventh Circuit has acknowledged that "once a plaintiff establishes a likelihood of
success on the merits of a trademark infringement claim," 3 there is a "presumption of irreparable
harm." N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227 (11th Cir. 2008); see
also McDonald's Corp. v. Robertson, 147 F.3d 1301, 1310 (11th Cir. 1998). However, the
strength of this presumption has been called into question by the Supreme Court's decision in
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). SeeN. Am. Medical Corp., 522 F.3d
at 1228. After eBay, a court may grant preliminary injunctive relief "without the benefit of a
presumption of irreparable injury," or may "decide that the particular circumstances of the
instant case bear substantial parallels to previous cases such that a presumption of irreparable
injury is an appropriate exercise of its discretion in light of the historical traditions." Id.
As already discussed, based on Plaintiffs' submissions to this point, there is a
substantial likelihood that consumers will incorrectly believe Defendants' Websites and products
are approved or sponsored by Plaintiffs. Although the Court may be permitted to presume
irreparable harm from the likely consumer confusion in this case, it is not necessary to rely on a
presumption. The operation of Defendants' Websites displaying Plaintiffs' Marks and the sale of
3
As discussed in the legal standard section supra, injunctive relief is available on each of
Plaintiffs' four claims, not only the trademark infringement claim. 15 U.S.C. § 1116(a).
14
Defendants' inferior goods to consumers is likely to cause irreparable damage to Plaintiffs'
respective reputations if it continues because Plaintiffs will not have the ability to control the
quality of what appears to be their products in the marketplace. This damage to Plaintiffs'
respective reputations and goodwill could not be easily quantified nor could it be undone through
an award of money damages. See Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303,
313 (5th Cir. 2008).
C.
The Balance of Hardships
The Court is satisfied after reviewing Plaintiffs' submissions that the risk to the
reputation and goodwill associated with Plaintiffs' Marks should Defendants' infringing
activities continue outweighs any hardship to Defendants caused by enjoining those activities. It
does not appear that Defendants will suffer any legitimate hardship if a temporary restraining
order is issued because they have no legal right to use Plaintiffs' Marks on their websites or to
sell counterfeit versions of Plaintiffs' products.
D.
Public Interest
The public has an interest in not being misled as to the origin, source, or sponsorship of
trademarked products. See Nike, Inc. v. Leslie, 227 U.S.P.Q. 574, 575 (1985) ("[A]n injunction
to enjoin infringing behavior serves the public interest in protecting consumers from such
behavior."); Nailtiques Cosmetic Corp. v. Salon Sciences, Corp., 41 U.S.P.Q.2d 1995, 1999
(1997) (citing Scarves By Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167 (2d Cir. 1976)) ("The
interests of the public in not being victimized and misled are important considerations in
determining the propriety of granting injunctive relief."). Here, Plaintiffs' have demonstrated that
Defendants' Websites and products mislead consumers into believing they are approved or
15
sponsored by Plaintiffs and make it more difficult for a consumer to be sure he or she is
purchasing Plaintiffs' genuine products.
V.
CONCLUSION
Based on Plaintiffs' Complaint, Application for TRO, and evidentiary submissions, the
undersigned concludes that the four-part test for injunctive relief has been satisfied. Moreover,
because providing notice of this suit before granting injunctive relief would allow Defendants to
funnel traffic to their current websites to new domains and allow Defendants to continue selling
counterfeit products, a temporary restraining order should issue.
Accordingly, it is ORDERED AND ADJUDGED that pursuant to 15 U.S.C. § 1116,
Fed. R. Civ. P. 65, The All Writs Act, 28 U.S.C §1651(a) and this Court's inherent authority,
Plaintiffs' Ex Parte Application for TROis GRANTED as follows:
(1)
Each Defendant, its officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with any Defendant
having notice ofthis Order are hereby temporarily restrained:
(a)
From manufacturing, importing, advertising, promoting, offering to sell,
selling, distributing, or transferring any products bearing the adidas Marks,
Reebok Marks and/or Mitchell & Ness Mark, or any confusingly similar
trademarks, other than those actually manufactured or distributed by
Plaintiffs; and
(b)
From secreting, concealing, destroying, selling off, transferring, or
otherwise disposing of: (i) any products, not manufactured or distributed
by Plaintiffs, bearing the adidas Marks, Reebok Marks and/or Mitchell &
Ness Mark, or any confusingly similar trademarks; or (ii) any evidence
16
relating to the manufacture, importation, sale, offer for sale, distribution,
or transfer of any products bearing the adidas Marks, Reebok Marks
and/or Mitchell & Ness Mark, or any confusingly similar trademarks.
(2)
Each Defendant,
its officers,
directors,
employees,
agents,
subsidiaries,
distributors, and all persons in active concert or participation with any Defendant
having notice of this Order shall immediately discontinue the use of the adidas
Marks, Reebok Marks and/or Mitchell & Ness Mark, 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,
its officers,
directors,
employees,
agents,
subsidiaries,
distributors, and all persons in active concert or participation with any Defendant
having notice of this Order shall immediately discontinue the use of the adidas
Marks, Reebok Marks and/or Mitchell & Ness Mark, 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), from any advertising links to other websites, from search engines'
databases or cache memory, and any other form of use of such terms which is
visible to a computer user or serves to direct computer searches to websites
registered by, owned, or operated by each Defendant, including the Internet
websites operating under the Subject Domain Names;
(4)
Each Defendant shall not transfer ownership of the Subject Domain Names during
the pendency of this Action, or until further Order of the Court;
17
(5)
The domain name Registrars for the Subject Domain Names are directed to
transfer to Plaintiffs' counsel, for deposit with this Court, domain name
certificates for the Subject Domain Names;
(6)
Upon Plaintiffs' request, the privacy protection service for any Subject Domain
Names for which the Registrant uses such privacy protection service to conceal
the Registrant's identity and contact information are ordered to disclose to
Plaintiffs the true identities and contact information of those Registrants;
(7)
Upon entry of this Order, Plaintiffs shall provide a copy of the Order by email to
the registrar of record for each of the Subject Domain Names, so that the registrar
of record of each of the Subject Domain Names may, in tum, notify each
registrant of the Order and provide notice of the locking of the domain name to
the registrant of record. After providing such notice to the registrars so the domain
names may be locked, Plaintiffs shall also provide notice and a copy of this Order
to the registrant of each Subject Domain Name via email to the email address
provided as part of the domain registration data for each of the Subject Domain
Names identified in the Application for TRO. If an email address was not
provided as part of the domain registration data for a Subject Domain Name,
Plaintiffs shall provide notice and a copy of this Order to the operators of the
Internet websites via an email address and/or online submission forms provided
on the Internet websites operating under such Subject Domain Names. After
forty-eight (48) hours have elapsed after the emailing of this Order to the
registrars of record and the registrants, Plaintiffs shall provide a copy of this
18
Order to the registrars and the registries for the Subject Domain Names for the
purposes described in Paragraph 8, below.
(8)
The domain name Registrars for the Subject Domain Names shall immediately
assist in changing the Registrar of record for the Subject Domain Names,
excepting any such domain names which such Registrars have been notified in
writing by Plaintiffs have been or will be dismissed from this action, to a holding
account with a Registrar of Plaintiffs' choosing (the "New Registrar"). To the
extent the Registrars do not assist in changing the Registrars of record for the
domains under their respective control within one (1) business day of receipt of
this Order, the top-level domain (TLD) Registries (or their administrators) for the
Subject Domain Names, within five (5) business days of receipt of this Order,
shall, change or assist in changing, the Registrar of record for the Subject Domain
Names, excepting any such domain names which such Registries have been
notified in writing by Plaintiffs have been or will be dismissed from this action, to
the New Registrar. As a matter of law, this Order shall no longer apply to any
Defendant or associated domain name dismissed from this action. Upon the
change of the Registrar of record for the Subject Domain Names, the New
Registrar will maintain access to the Subject Domain Names in trust for the Court
during the pendency of this action. Additionally, the New Registrar shall
immediately institute a temporary 302 domain name redirection which will
automatically redirect any visitor to the Subject Domain Names to the following
Uniform Resource Locator ("URL") http://servingnotice.com/adiserp5/ whereon
copies of the Complaint, and all other documents filed in this action are displayed.
19
Alternatively, the New Registrar may update the Domain Name System ("DNS")
data it maintains for the Subject Domain Names, which link the domain names to
the
IP
addresses
where
their
associated
websites
are
hosted,
to
NSl.MEDIATEMPLE.NET and NS2.MEDIATEMPLE.NET, which will cause
the domain names to resolve to the website where copies of the Complaint,
Orders, and all other documents on file in this action will be displayed. After the
New Registrar has effected this change the Subject Domain Names shall be
placed on Lock status, preventing the modification or deletion of the domains by
the Registrar or Defendants;
(9)
Plaintiffs may enter the Subject Domain Names into Google's Webmaster Tools
and cancel any redirection of the domains that have been entered there by
Defendants which redirect traffic to the counterfeit operations to a new domain
name or website and thereby evade the provisions of this Order;
( 10)
Each Defendant shall preserve copies of all their computer files relating to the use
of any of the Subject Domain Names and shall take all steps necessary to retrieve
computer files relating to the use of the Subject Domain Names and that may have
been deleted before the entry of this Order;
(11)
This Temporary Restraining Order shall remain in effect until the date for the
hearing on the Motion for Preliminary Injunction set forth below, or until such
further dates as set by the Court or stipulated to by the parties;
(12)
This Temporary Restraining Order shall apply to the Subject Domain Names,
associated websites, and any other domain names and websites properly brought
to the Court's attention and verified by sworn affidavit that such new domain
20
names are being used by any Defendant for the purpose of counterfeiting the
adidas Marks, Reebok Marks and/or Mitchell & Ness Mark at issue in this action
and/or unfairly competing with Plaintiffs on the World Wide Web;
(13)
Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), Plaintiffs shall
post a bond in the amount ofTen Thousand Dollars and Zero Cents ($10,000.00),
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;
(14)
A hearing is set before this Court in the United States Courthouse located 400
North
Miami
Avenue,
Miami,
Florida
33128,
Courtroom
12-1,
on
~...!o.ooi!:.....=:..~..,.Lc;____;J=-.~/___, 2013, at '/,/,{1/Aif at which time Defendants and/or any
other affected persons may challenge the appropriateness of this Order and move
to dissolve the same and at which time the Court will hear argument on Plaintiffs'
requested preliminary injunction;
(15)
Plaintiffs shall serve copies of the Complaint, Application for TRO, this Order,
and all other pleadings and documents on file in this action on each Defendant by
email as described above and by posting copies of the Application for TRO and
this Order on the website located at http://servingnoticc.com/adiserp5/ within
forty-eight (48) hours of control of the Subject Domain Names being changed to
the Court via the New Registrar's holding account, and such notice so given shall
be deemed good and sufficient service thereof. Plaintiffs shall continue to provide
notice of these proceedings and copies of the documents on file in this matter to
Defendants
by
regularly
updating
21
the
website
located
at
http://scrvingnotice.com/adiserp5/ or by other means reasonably calculated to
give notice which is permitted by the Court.
(16)
Any response or opposition to Plaintiffs' Motion for Preliminary Injunction must
be filed with the Court and served on Plaintiffs' counsel by //
21._,
2013, which is
9/t{M".J il{,Jt{
,&,~
n~
eight (48)
, 2013
A""1 on Q
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