December 2011 / January 2012 Issue
Philip Morris USA, Inc. v. Jiang,
No. 11-cv-24049 (S.D. Fla. Dec. 12, 2011)
Defendants used nearly sixty domain names containing plaintiff’s marks for websites selling counterfeit cigarettes bearing those marks. The court granted plaintiff’s ex parte motion for a preliminary injunction. In addition to enjoining defendants from using plaintiff’s marks, the court ordered Western Union to hold any payments made to defendants from U.S. customers and ordered defendants’ domain name registrar to redirect defendants’ domain names to a website displaying copies of the injunction and other documents from the lawsuit.
Zhilin Jiang and other online merchants (collectively “Defendants”) sold counterfeit cigarettes using about sixty domain names containing Philip Morris USA, Inc.’s (“Philip Morris”) marks, including MARLBORO, KOOL, and NEWPORT (e.g., marlborocigarettes.biz). Philip Morris purchased counterfeit goods from Defendants using both the Western Union and PayPal payment services. Philip Morris sued Defendants for trademark counterfeiting and infringement, false designation of origin, and cybersquatting. The court initially issued a temporary restraining order in which it ordered Defendants’ domain name registrar to redirect Defendants’ domain names to “servingnotice.com/jiang/index.html,” a website posting a copy of the complaint and summons. The court also allowed Philip Morris to serve Defendants by e-mail and by posting the court documents on the same website under the assumption that Defendants would attempt to access their domain names and thus see the court documents.
At issue in this decision was Philip Morris’s motion for a preliminary injunction, which the court granted. The court held that “[Philip Morris] has a very strong probability of proving at trial that consumers are likely to be confused by Defendants’ advertisement . . . and distribution of cigarettes bearing counterfeits of [Philip Morris’s] mark.” It also held that if it did not grant a preliminary injunction, Philip Morris would suffer “immediate and irreparable injury” if Defendants continued to operate “nearly sixty commercial Internet websites.”
The court ordered the “locking” of all potentially infringing domain names and enjoined Defendants from, among other things, manufacturing or selling any goods bearing Philip Morris’s marks and using Philip Morris’s marks in any domain names. It also ordered Western Union to hold any money sent from U.S. customers to Defendants and to provide to Philip Morris records of all money transfers to Defendants relating to the counterfeit goods. In addition, it ordered Defendants’ domain registrar to redirect all of the disputed domain names to “servingnotice.com/jiang/index.html,” where Philip Morris posted the court docket along with copies of all documents filed with the court, including the preliminary injunction.
This decision is of interest because it is the latest in a series of recent cases where the court, as one part of an injunction, ordered a domain name registrar to redirect infringing domain names to a website about the lawsuit. The District Court of Nevada issued similar orders in Tiffany (NJ), LLC v. 925LY.COM, No. 2:11-cv-00590 (D. Nev. Sept. 27, 2011), and Chanel, Inc. v. Does, No. 2:11-cv-01508 (D. Nev. Nov. 14, 2011).