Dama S.P.A v. John Does 1-35

S.D. New York

Dama S.P.A v. John Does 1-35

113 F. Supp. 3d 686, 2015 U.S. Dist. LEXIS 84405, 2015 WL 4111410

CourtDistrict Court, S.D. New York

DecidedJune 24, 2015

DocketNo. 15-cv-4528 (VM)

StatusPublished

This text of 113 F. Supp. 3d 686 (Dama S.P.A v. John Does 1-35) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook

Dama S.P.A v. John Does 1-35, 113 F. Supp. 3d 686, 2015 U.S. Dist. LEXIS 84405, 2015 WL 4111410 (S.D.N.Y. 2015).

Pincite

Opinion

[687]*687 DECISION AND ORDER

VICTOR MARRERO, District Judge.

Plaintiff Dama S.p.A. (“Dama”) commenced this action on June 11, 2015 (see Dkt. No. 1) against John Does 1-35 (“Defendants”), and simultaneously moved ex parte for a Temporary Restraining Order, Seizure Order, Asset Restraining Order, Domain Name Transfer Order, Order Permitting Service by Electronic Mail, and an Order to Show Cause for a Preliminary Injunction. Sitting in Part I, Judge Sullivan, Federal District Judge for the Southern District of New York, issued an Order (“TRO”), granting the request in part and denying the request in part, (Dkt. No. 4.) Pursuant to the TRO, Dama arranged for all the Defendants to be served by electronic mail by June 15, 2015. An affidavit of service demonstrating timely service in compliance with the Court’s Order is on file with the Court. (Dkt. No. 7.)

Defendants, having been served with the Complaint, TRO, and all related papers, have not appeared or opposed Dama’s application for a preliminary injunction. - The Court held a preliminary injunction hearing on June 19, 2015, pursuant to the TRO, at which none of the Defendants appeared.

Now, the Court, having reviewed the Complaint, Memorandum of Law, supporting Declaration and Affidavit, and the exhibits submitted therewith, finds that:

1. As set forth more fully below, Dama has demonstrated that it is entitled to injunctive relief by establishing the following: (a) Dama is likely to succeed on the merits of its claims for trademark counterfeiting and trademark infringement under Sections 32(l)(a) and (b) of the Lanham Act, trade dress infringement and false designation of origin under Section 43(a) of the Lanham Act, and trademark dilution under Section 43(c) of the Lanham Act, its New York state law claims for trademark dilution and deceptive acts and practices, and its claims for common law trademark infringement and unfair competition; (b) Defendants’ unlawful conduct has caused and will continue to cause Dama irreparable harm in the absence of an injunction; (c) remedies at law are inadequate to compensate Dama for that harm; (d) the balance of hardships tips in Dama’s favor; and (e) the public interest favors injunctive relief.

2. The- Plaintiff has offered evidence that it is the registrant and/or owner of the following federally registered trademarks (the “Paul & Shark Trademarks”):

U.S. Registration Number Trademark Registration Date International Classes

4, 553, 480_[symbol below] May 20, 2014_18 and 25

2, 562,396 [symbol below] April 16, 2002_18

1, 421,211_[symbol below] Dec. 16, 1986_25_

[688]*688[[Image here]]

3. Dama has demonstrated that it is likely to succeed in showing that Defendants are entities or individuals operating a network of sophisticated websites (the “Infringing Websites”) in order to sell products bearing counterfeit reproductions of the Paul & Shark Trademarks (“Counterfeit Products”) to consumers in the United States and in this Judicial District.

4. Dama has demonstrated that it is likely to succeed in showing that Defendants’ continued manufacturing, distribu[689]*689tion, offering for sale, and sale of Counterfeit Products has caused and mil continue to cause irreparable injury to the Plaintiff if injunctive relief is not granted.

5. Dama has demonstrated that it is likely to succeed in showing that Defendants registered and are using domain names in connection with Infringing Websites selling and offering for sale Counterfeit Products, including several domain names incorporating in whole or in part one or more of Dama’s trademarks (the “Infringing Domain Names”), in violation of the Anticybersquatting Consumer Protection Act (listed in Exhibit A).

6. - Dama has shown that, absent a preliminary injunction, there is a substantial likelihood that Defendants would hide, secrete, or deplete any assets, thus frustrating the ultimate relief Plaintiff seeks in this action.

7. Dama has demonstrated that it has no adequate remedy at law for the harm caused by Defendants’ operation of the Infringing Website and production and selling of the Counterfeit Products.

8. Dama has demonstrated that entry of an order other than A preliminary injunction would not adequately achieve the purposes of the Lanham Act to preserve Plaintiffs equitable and monetary remedies for trademark counterfeiting, including, among other things: the restraint of Defendants’ domain names and Infringing Websites, which constitute Defendants’ means of distributing, offering for sale, and selling Counterfeit Products; and an award to Dama of lost profits or statutory damages, as well as -attorney’s fees and costs.. . > ■ ■ * ■

9. Dama has demonstrated that the harm to Dama from denial of the requested preliminary injunction would outweigh any harm to any cognizable interest of Defendants from granting such a preliminary injunction, and- thus the' balance of hardships tips in Dama’s favor;

10.Dama has demonstrated that the public interest favors a preliminary injunction in this' case because- Defendants’ unlawful conduct causes consumer confusion and will continue to cause consumer confusion unless enjoined.

ORDER

Accordingly, it is hereby

ORDERED that John Does 1-35 (“Defendants”), and their officers, agents, servants, - employees, and attorneys, and all those in active concert or participation with them, are PRELIMINARY ENJOINED from infringing the Paul .& Shark Trademarks or plaintiff Dama. S.p.A.’s (“Dama”) rights therein, or using or exploiting the. Paul & Shark Trademarks, by:

a. Using any-reproduction, counterfeit, copy, or colorable imitation. of the Paul & Shark Trademarks for or in connection with any goods or their packaging not authorized by Dama;

b. Engaging in any course of conduct likely to cause confusion; deception, • or mistake, or to injure Dama’s busi- ■ -ness reputation, or to dilute the dis- , tinctive quality of the Paul & Shark Trademarks;

c. Using any false description or representation, including words or other symbols tending falsely to. describe or represent Defendants’ unauthorized. goods or their packaging as Dama’s, or as sponsored by or associated with Dama, and from offering - such goods into commerce;

d. Manufacturing, producing, distributing, circulating, selling, marketing, offering for sale, advertising, pro- • moting,'-renting, displaying, or oth- ■ -. erwise disposing of any products or packaging not authorized by Dama [690]*690that bear any simulation, reproduction, counterfeit, copy, or colorable imitation of the Paul & Shark Trademarks;

e. Making any statement or .represen- . tation whatsoever, or using any false designation of origin or false description, or performing any act, which is or may be likely to lead the trade or public, or individual members thereof, to believe that any products manufactured, distributed, or sold by Defendants are in any manner associated or connected with Dama, or are sold, manufactured, licensed, sponsored, approved, or authorized by Dama;

f.

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