Chanel, Inc. v. 2012handbagsonline.net et al
Filing
16
PRELIMINARY INJUNCTION GRANTING 2 Ex Parte MOTION for Preliminary Injunction.(Signed by Judge Gray H. Miller) Parties notified.(rkonieczny)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
CHANEL, INC.,
Plaintiff,
V.
THE PARTNERSHIPS & UNINCORPORATED
ASSOCIATIONS IDENTIFIED IN SCHEDULE
“A” AND DOES 1-1000,
Defendants.
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CIVIL ACTION H-12-2085
O RDER G RANTING P LAINTIFF’S A PPLICATION
F OR P RELIMINARY I NJUNCTION
On this day, after conducting a hearing on August 28, 2012, at which only counsel for
plaintiff Chanel, Inc. (“plaintiff’” or “Chanel”) were present, the court considered plaintiff’s
Application for Preliminary Injunction (the “Application for Preliminary Injunction”).1 Plaintiff
moves for a preliminary injunction against defendants, the Partnerships and Unincorporated
Associations identified on Schedule “A” attached hereto (“defendants”), pursuant to 15 U.S.C. §
1116 and FED . R. CIV . P. 65 for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114, & 1125(a)
and (d). Having reviewed the Application for Preliminary Injunction, the accompanying declarations
on file, and other evidence on file submitted in support thereof, and plaintiff’s complaint, the court
makes the following findings of fact and conclusions of law:
1
As of the date of the preliminary injunction hearing conducted on August 28, 2012, the redirection of the Subject
Domain Names to the serving site, http://servingnotice.com/sdh/index.html, has only been finalized for chanels--bags.org
(Defendant 9); chaneloutletsonline.us and chanelreplicasbags.us (Defendant 15); designershandbags.us (Defendant 28);
and fashionlife.us (Defendant 30). However, all defendants have received notice of both the court’s August 14, 2012
order and the August 28, 2012 hearing via the court-authorized electronic notification methods.
1
1.
Plaintiff is, and at all times relevant hereto has been, the owner of all rights in and to
the following trademarks:
Trademark
Registration Number Registration Date
Class(es)/Goods
CHANEL
0,626,035
May 1, 1956
IC 018 – Women’s Handbags
CHANEL
0,902,190
November 10, 1970
IC 014 - Bracelets, Pins, and
Earrings
CHANEL
0,915,139
June 15, 1971
CHANEL
0,955,074
March 13, 1973
CHANEL
June 7, 1983
1,314,511
CHANEL
1,241,265
January 15, 1985
1,347,677
July 9, 1985
IC 025 - Women's Shoes
IC 014 – Watches
IC 025 - Suits, Jackets, Skirts,
Dresses, Pants, Blouses, Tunics,
Sweaters, Cardigans, Coats,
Raincoats, Scarves, Shoes and
Boots
IC 018 - Leather GoodsNamely, Handbags
IC 018 - Leather Goods-namely,
Handbags
IC 006 – Keychains
IC 014 - Costume Jewelry
IC 016 - Gift Wrapping Paper
1,501,898
August 30, 1988
IC 025 -Blouses, Shoes, Belts,
Scarves, Jackets, Men’s Ties
IC 026 – Brooches and Buttons
for Clothing
CHANEL
1,510,757
November 1, 1988
2
IC 009 – Sunglasses
1,654,252
CHANEL
August 20, 1991
November 17, 1992
1,734,822
November 24, 1992
2,559,772
April 9, 2002
3,025,934
J12
1,733,051
December 13, 2005
IC 009 – Sunglasses
IC 018 - Leather Goods;
namely, Handbags, Wallets,
Travel Bags, Luggage, Business
and Credit Card Cases, Change
Purses, Tote Bags, Cosmetic
Bags Sold Empty, and Garment
Bags for Travel
IC 018 - Leather Goods;
namely, Handbags, Wallets,
Travel Bags, Luggage, Business
Card Cases, Change Purses,
Tote Bags, and Cosmetic Bags
Sold Empty
IC 014 -Timepieces; namely,
Watches, and Parts Thereof
IC 018 – Handbags
IC 009 - Eyeglass Frames,
Sunglasses
3,025,936
December 13, 2005
IC 025 - Gloves, Swimwear
IC 026 - Hair Accessories
namely Barrettes
CHANEL
3,133,139
August 22, 2006
IC 014 - Jewelry and Watches
(the “Chanel Marks”) which are registered on the Principal Register of the United States Patent and
Trademark Office and are used in connection with the manufacture and distribution of high quality
goods in the categories identified above.
2.
Defendants, via the Internet websites operating under the domain names identified
on Schedule “A” hereto (the “Subject Domain Names”), have advertised, promoted, offered for sale,
3
and/or sold, at least, handbags, wallets, sunglasses, shoes, dresses, watches, and costume jewelry
including earrings, bearing what plaintiff has determined to be counterfeits, infringements,
reproductions, and/or colorable imitations of the Chanel Marks. Although each of the defendants
may not copy and infringe each Chanel Mark for each category of goods protected, each defendant
has infringed one or more of the Chanel Marks.
3.
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
Chanel Marks.
4.
Plaintiff has a very strong probability of proving at trial that consumers are likely to
be confused by the defendants’ advertisement, promotion, sale, offer for sale, and/or distribution of
handbags, wallets, sunglasses, shoes, dresses, watches, and costume jewelry including earrings,
bearing counterfeits, infringements, reproductions, and/or colorable imitations of the Chanel Marks,
and that the products defendants are selling and promoting are copies of plaintiff’s products that bear
marks which are substantially indistinguishable from and/or colorful imitations of the Chanel Marks
on handbags, wallets, sunglasses, shoes, dresses, watches, and costume jewelry including earrings.
5.
Because of the infringement of the Chanel Marks, plaintiff is likely to suffer
immediate and irreparable injury if a preliminary injunction is not granted. It clearly appears from
the following specific facts, as set forth in plaintiff’s complaint, plaintiff’s Application for
Preliminary Injunction, and accompanying declarations on file, that immediate and irreparable loss,
damage, and injury will result to plaintiff and to consumers unless plaintiff’s request for a
preliminary injunction is granted:
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a.
Defendants own or control Internet business operations which advertise,
promote, offer for sale, and sell, at least, handbags, wallets, sunglasses, shoes, dresses, watches, and
costume jewelry including earrings, bearing counterfeit and infringing trademarks in violation of
plaintiff’s rights;
b.
There is good cause to believe that more counterfeit and infringing handbags,
wallets, sunglasses, shoes, dresses, watches, and costume jewelry including earrings bearing
plaintiff’s trademarks will appear in the marketplace; that consumers may be misled, confused, and
disappointed by the quality of these products; and that plaintiff may suffer loss of sales for its
genuine products;
c.
There is good cause to believe that unless the injunction is granted, defendants
can easily and quickly transfer the registrations for many of the Subject Domain Names, or modify
registration data and content, change hosts, and redirect traffic to other websites, thereby thwarting
plaintiff’s ability to obtain meaningful relief;
d.
The balance of potential harm to defendants in restraining their trade in
counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by
the potential harm to plaintiff, its reputation and goodwill as a manufacturer of high quality
handbags, wallets, sunglasses, shoes, dresses, watches, and costume jewelry including earrings if
such relief is not issued; and
e.
The public interest favors issuance of a preliminary injunction in order to
protect plaintiff’s trademark interests and to protect the public from being defrauded by the palming
off of counterfeit goods as genuine goods of the plaintiff.
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6.
For all of the foregoing reasons, an order other than a preliminary injunction is not
adequate to achieve the purposes of 15 U.S.C. § 1114.
O RDER
Based on the foregoing findings of fact and conclusions of law, plaintiff’s Application for
Preliminary Injunction is hereby granted as follows:
A.
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 are
hereby restrained and enjoined until further order of this court:
1.
From manufacturing, importing, advertising, promoting, offering to sell, selling,
distributing, or transferring any products bearing the Chanel Marks, or any
confusingly similar trademarks, other than those actually manufactured or distributed
by plaintiff; and
2.
From secreting, concealing, destroying, selling off, transferring, or otherwise
disposing of: (i) any products, not manufactured or distributed by plaintiff, bearing
the Chanel Marks, or any confusingly similar trademarks; or (ii) any evidence
relating to the manufacture, importation, sale, offer for sale, distribution, or transfer
of any products bearing the Chanel Marks, or any confusingly similar trademarks.
It is further ORDERED:
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, until the conclusion of the proceeding, discontinue the use of the
Chanel Marks or any confusingly similar trademarks, on or in connection with all
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Internet websites owned and operated, or controlled by them including the Internet
websites operating under the Subject Domain Names;
4.
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, until the conclusion of this proceeding, discontinue the use of the
Chanel Marks, or any confusingly similar trademarks within domain name
extensions, metatags or other markers within website source code, from use on any
webpage (including as the title of any web page), any advertising links to other
websites, from search engines’ databases or cache memory, and any other form of use
of such terms which is visible to a computer user or serves to direct computer
searches to websites registered by, owned, or operated by any defendant, including
the Internet websites operating under the Subject Domain Names;
5.
Defendants shall not transfer ownership of the Subject Domain Names during the
pendency of this action, or until further order of the court;
6.
The domain name Registrars for the Subject Domain Names are directed, to the
extent not already done, to transfer to plaintiff’s counsel, for deposit with this court,
domain name certificates for the Subject Domain Names;
7.
Upon plaintiff’s 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 the extent not already
done, to disclose to plaintiff the true identities and contact information of those
Registrants;
7
8.
The Registrars shall, to the extent not already done, 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 the plaintiff have been or will be
dismissed from this action, to a holding account with a registrar of plaintiff’s
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 and instructions on the change of the
registrars of record, 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 update the registrars of record for the Subject Domain Names, excepting any
such domain names which such registries have been notified in writing by the
plaintiff 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, to the extent not already done, 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/sdh/index.html whereon copies of the complaint and all
other documents on file in this action are displayed. Alternatively, the New Registrar
may update the Domain Name System (“DNS”) data it maintains for the Subject
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Domain Names, which link the domain names to the IP addresses where their
associated
websites
are
hosted,
to
NS1.MEDIATEMPLE.NET
and
NS2.MEDIATEMPLE.NET, which will cause the domain names to resolve to the
website where copies of the complaint, this order, and all other documents on file in
this action are 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.
Plaintiff may enter, and continue to enter, the Subject Domain Names into Google’s
Webmaster Tools and cancel any redirection of the domains that have been entered
there by defendants which redirect traffic to the counterfeit operations to a new
domain name and thereby evade the provisions of this order;
10.
Defendants shall preserve, and continue to 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;
B.
This Preliminary Injunction shall remain in effect during the pendency of this action,
or until such further date as set by the court or stipulated to by the parties;
C.
This order shall apply to the Subject Domain Names, the associated websites, and any
other domain names properly brought to the court’s attention by sworn affidavit verifying such new
domain names are being used by defendants for the purpose of counterfeiting the Chanel Marks at
issue in this action and/or unfairly competing with plaintiff on the World Wide Web or in connection
with search engine results pages;
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D.
Plaintiff shall maintain its bond in the amount of Ten 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.
It is so ORDERED.
Signed at Houston, Texas on August 28, 2012.
________________________________________
Gray H. Miller
United States District Judge
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SCHEDULE A
DEFENDANTS BY SUBJECT DOMAIN NAMES AND DEFENDANT NUMBER
Defendant No.
Domain Name
1
2012handbagsonline.net
2
3chanelhandbag.com
3
airmaxinstore.com
4
ashionpurse.com
5
bagsplat.com
6
blueswisswatches.com
7
caphatshopping.com
8
cchanell.com
9
chanel-bagsbags.com
9
chanels--bags.org
10
chanelbagsebay.com
10
chanelbagshandbags.net
11
chanelbagsoutletonline.com
12
chanelcheaponsale.com
12
thechanelbagssale.com
12
classicchanelbagssale.com
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chanelflapbags.net
13
frchanelhandbags.com
replicachanelhandbagssales.com
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13
chanelhandbagwalletpurse.com
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13
chanelhandbagschanelwallets.com
14
chanelhandbags4sale.com
15
chaneloutletsonline.us
15
chanelreplicasbags.us
16
chanelpursesreplica.com
16
hubags.com
17
chanelsalext.com
18
chanel-slippers.com
19
chanelslippers.com
20
chanelsza.com
21
chanelxt.com
22
cheapbagshandbags.com
22
classichandbagsfr.com
23
cheapbagsoutlet2u.com
24
cheapchanelhandbags2012.com
25
DISMISSED
26
cheapwomensbags.com
26
classicbagsoutlet.com
27
designer-outlet-online.com
28
designershandbags.us
29
fairhandbags1.com
29
fairhandbags2.com
30
fashionlife.us
30
realpricemall.com
30
wholesalesalemall.com
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30
okdesignerhandbags.com
31
goforchanelbags.com
32
handbags-purse-sale.com
33
hermesbagsoutlet.com
34
ipurseshandbags.com
35
isofdc.com
36
onlinechanelbagsales.com
37
onlinetopcheap.com
38
outletchanelbagonline.com
39
outletchanelbagsale.com
40
outletchanelbagssales.com
41
pickcheapbags.com
42
replica4shoes.com
43
DISMISSED
44
sunglassesnewyork.com
45
thechanelwatches.com
45
thechanelwatches2012.com
46
topchanel255.com
46
topchanelflap.com
47
toppursestrade2012.com
48
wahandbags.com
49
wendyoffer.com
50
wholesale100.com
51
DISMISSED
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