1 December 2011Trademarks

US court gives go-ahead to grab domains

The US District Court for the District of Nevada has issued temporary restraining orders and preliminary injunctions to prevent approximately 600 websites dealing in counterfeit goods.

The orders were made between September and November 2011 after luxury brand Chanel conducted an investigation into websites that it believed sold counterfeit versions of its own trademarked goods.

Chanel’s team of investigators identified websites that advertise, promote, offer for sale or sell Chanel products, which include handbags, wallets and shoes.

The investigators then ordered goods from the websites. Once the goods arrived, they identified them as counterfeit if they bore Chanel trademarks but were not genuine Chanel products.

Chanel filed a complaint for injunctive relief based on this evidence in September 2011. It filed the complaint against the unidentified owners of domain names such as handbags4sell.com and luxurychanelgifts.com.

Chanel argued that the unidentified owners could sidestep traditional enforcement efforts by transferring domain registrations and redirecting traffic, leaving it with no adequate legal remedy. In separate September, October and Novemberorders, the Nevada district court issued two temporary restraining orders and two preliminary injunctions.

It prohibited the unidentified domain name owners from using any Chanel trademarks or selling any Chanel goods.

The court also ordered the top-level domain name registry to transfer ownership of the domain names to US-based domain name manager GoDaddy so that it could redirect the domain names to a website that hosts the case’s documents.

It also ordered search engines Google, Bing and Yahoo!, as well as social networks Facebook, Google+ and Twitter, to de-index or remove domain names from any search results pages.

Chanel had to post a $20,000 bond for damages in case the domain name owners prove that the injunctions were wrongfully issued.

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