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:

4

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.

5

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
8

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

13

chanelflapbags.net

13

frchanelhandbags.com
replicachanelhandbagssales.com

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13

chanelhandbagwalletpurse.com

11

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

12

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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