19 June 2018

The North Face and Vans target 831 domain names

Shoe brand Vans and sportswear company The North Face are seeking to tackle an “explosion” of online counterfeiters in a lawsuit which lists 831 domain names.

The California-based brands, which are both owned by VF Corporation, filed a complaint for trademark infringement, counterfeiting, false designation of origin, cybersquatting, and unfair competition at the US District Court for the Southern District of Florida on Thursday, June 14.

Two more subsidiaries, South Cone and TBL Licensing, are also listed as plaintiffs.

The “explosion of counterfeiting over the internet” has created an environment in which companies have to file a “large number” of complaints to protect themselves and consumers from the “ill effects of confusion”, the VF brands said.

The 831 domain names are registered in multiple countries and backed by unknown individuals and business entities.

They are each “part of an ongoing scheme to create and maintain an illegal marketplace enterprise” and their actions are contributing to the “erosion and destruction” of the VF brands’ famous names and trademarks.

The 831 defendants are distributing goods “using counterfeits and confusingly similar imitations” of the California brands’ trademarks through “fully interactive commercial internet websites and supporting domains”, according to the suit.

Products bearing “exact copies” of the marks owned by the VF companies are being sold to American consumers via the domain names listed, but the products “are of a quality substantially different than that of the genuine goods”, the VF brands said.

They asked the court to award temporary, preliminary, and permanent injunctions against the defendants, as well as enjoining them from participating in their “illegal” marketplaces. The VF brands also want the defendants to assign the rights to their domain names over to the companies.

In addition, the VF brands are seeking all profits arising from the alleged counterfeiting and infringing activities as well as triple damages or statutory damages of $2 million from each defendant for each instance of counterfeiting, as well as damages for cybersquatting and attorneys’ fees.

This article was  first published on TBO.

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