Chanel, Inc. v. 2012handbagsonline.net et al

Filing 8

TEMPORARY RESTRAINING ORDER and ORDER TO SHOW CAUSE re 2 Ex Parte MOTION for Temporary Restraining Order MOTION for Preliminary Injunction ( Show Cause/Preliminary Injunction Hearing set for 8/28/2012 at 10:00 AM in Courtroom 9D before Judge Gray H. Miller).(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 EX P ARTE A PPLICATION
F OR E NTRY OF T EMPORARY R ESTRAINING O RDER AND O RDER TO S HOW C AUSE W HY
A P RELIMINARY I NJUNCTION S HOULD N OT I SSUE
On this day, the court considered Plaintiff’s Ex Parte Application For Entry of a Temporary
Restraining Order and an Order to Show Cause Why a Preliminary Injunction Should Not Issue (the
“Application for TRO”). Plaintiff, Chanel, Inc. (“Chanel” or “plaintiff”), moves, on an ex parte
basis, for entry of a temporary restraining order, and an order to show cause why a preliminary
injunction should not issue 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, and 1125(a) and (d).
Having reviewed the Application for TRO, the Declarations, 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.

Plaintiff, Chanel, Inc. (“plaintiff” or “Chanel”) 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

CHANEL

0,626,035

May 1, 1956

CHANEL

0,902,190

November 10,
IC 014 - Bracelets, Pins, and Earrings
1970

CHANEL

0,915,139

June 15, 1971 IC 025 - Women's Shoes

CHANEL

0,955,074

Class(es)/Goods

IC 018 – Women’s Handbags

March 13, 1973 IC 014 – Watches

CHANEL

1,241,265

June 7, 1983

1,314,511

CHANEL

IC 025 - Suits, Jackets, Skirts, Dresses,
Pants, Blouses, Tunics, Sweaters,
Cardigans, Coats, Raincoats, Scarves,
Shoes and Boots

January 15,
1985

IC 018 - Leather Goods-Namely,
Handbags

1,347,677

July 9, 1985

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

1,654,252

November 1,
1988

IC 009 – Sunglasses

August 20, 1991 IC 009 – Sunglasses

2

CHANEL

1,733,051

1,734,822

J12

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
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
IC 014 -Timepieces; namely, Watches,
and Parts Thereof

2,559,772

April 9, 2002

3,025,934

December 13,
IC 018 – Handbags
2005
IC 009 - Eyeglass Frames, Sunglasses

3,025,936

CHANEL

3,133,139

December 13, IC 025 - Gloves, Swimwear
2005
IC 026 - Hair Accessories namely
Barrettes
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,
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

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may not copy and infringe each Chanel Mark for each category of goods protected, each defendant
has infringed at least 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 temporary restraining order is not granted. It clearly appears
from the following specific facts, as set forth in plaintiff’s Complaint, plaintiff’s Application for
TRO, and accompanying declarations on file, that immediate and irreparable loss, damage, and
injury will result to plaintiff and to consumers before defendants can be heard in opposition unless
plaintiff’s request for ex parte relief is granted:
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;
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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 if plaintiff proceeds on notice to defendants

on this Application for TRO, 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 temporary restraining order 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 temporary restraining order 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.
6.

For all of the foregoing reasons, an order other than an ex parte temporary restraining

order is not adequate to achieve the purposes of 15 U.S.C. § 1114.

5

ORDER
Based on the foregoing findings of fact and conclusions of law, plaintiff’s Application for
TRO is hereby granted as follows:
I. Temporary Restraining Order
A.

Pending the hearing and determination of plaintiff’s application for preliminary

injunction, referenced below, each defendant, its officers, directors, employees, agents, subsidiaries,
distributors, and all persons in active concert or participation with any defendant having notice of
this Temporary Restraining Order are hereby temporarily restrained:
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 Temporary Restraining Order shall immediately 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 Temporary Restraining Order shall immediately 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 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 disclose to plaintiff the
true identities and contact information of those Registrants;

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8.

Upon entry of this order, plaintiff 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 turn, 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, plaintiff 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, plaintiff 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, plaintiff shall provide a
copy of this order to the registrars and the registries for the Subject Domain Names
for the purposes described in Paragraph 9, infra.

9.

The Registrars 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 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
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receipt of this TRO and instructions on the change of the registrars of record, the toplevel domain (TLD) registries (or their administrators) for the Subject Domain
Names, within five (5) business days of receipt of this TRO, 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
Temporary Restraining 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/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
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, Temporary Restraining Order, and all other
documents on file in this action are displayed. After the New Registrar has effected

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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;
10.

Plaintiff 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 and thereby
evade the provisions of this Temporary Restraining Order;

11.

Defendants 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 Temporary Restraining Order;

B.

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;
C.

This Temporary Restraining Order shall apply to the Subject Domain Names, the

associated websites, and any other domain names properly brought to the court’s attention and
verified by sworn affidavit which verifies 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;
D.

Pursuant to 15 U.S.C. § 1116(d)(5)(D), plaintiff shall post a 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. Plaintiff shall post the bond prior to requesting

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the registries change to the registrar of record for the Subject Domain Names to a holding account
with the New Registrar.
II. Order to Show Cause Why a Preliminary Injunction Should Not Issue and
Order of Notice
A.

Upon the Complaint herein and plaintiff’s Application for Order to Show Cause Why

a Preliminary Injunction Should Not Issue, defendants are hereby ORDERED to show before this
court in the United States Courthouse located at 515 Rusk, Houston, Texas 77002, Courtroom 9D,
on August 28, 2012, at 10:00 a.m. CDT, why a preliminary injunction, pursuant to Federal Rule of
Civil Procedure 65(a) should not restrain and enjoin defendants, their respective officers and agents,
servants, employees, attorneys, and those persons acting in concert with them who receive actual
notice of this injunction by personal service or otherwise from engaging in any of the acts
enumerated in the Temporary Restraining Order in Section I, supra. At this hearing, defendants
and/or any other affected persons may challenge the appropriateness of the Temporary Restraining
Order and move to dissolve the same and at which time the court will hear argument on plaintiff’s
requested preliminary injunction;
B.

Plaintiff shall serve copies of the Complaint, Application for TRO and this Temporary

Restraining Order and all other pleadings and documents on file in this action on defendants by email
as described above and by posting copies of the Application for TRO and this Temporary Restraining
Order on the website located at http://servingnotice.com/sdh/index.html 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. Plaintiff shall
continue to provide notice of these proceedings and copies of the documents on file in this matter

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to defendants by regularly updating the website located at http://servingnotice.com/sdh/index.html
or by other means reasonably calculated to give notice which is permitted by the court. Any response
or opposition to plaintiff’s Motion for Preliminary Injunction must be filed with the court and served
on plaintiff’s counsel no later than Friday, August 24, 2012. Plaintiff shall file and serve any Reply
Memorandum on or before Monday, August 27, 2012. The above dates may be revised upon
stipulation by all parties and approval of this court.
C.

Defendants are hereby on notice that failure to appear at the show cause hearing may

result in the imposition of a preliminary injunction against them pursuant to 15 U.S.C. § 1116(d) and
FED . R. CIV . P. 65.
It is so ORDERED.
Signed at Houston, Texas on August 14, 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

13

replicachanelhandbagssales.com

13

chanelhandbagwalletpurse.com

13

chanelhandbagschanelwallets.com

14

chanelhandbags4sale.com

13

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

cheaphandbagsreplicas.com

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

30

okdesignerhandbags.com

31

goforchanelbags.com

32

handbags-purse-sale.com
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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

shopyop.com

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

wholesalecopystore.com

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