Professional Documents
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Document 1
Filed 04/25/12
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Page ID#: 1
ORIGINAL
NChristensen@perkinscoie.com
PERKINS COIE LLP
Telephone: 503.727.2000
Facsimile: 503.727.2222
FiLO25fiPR'i2i607usBC-0RP
Telephone: 212.688.5151
Facsimile: 212.688.8315
3UkCV- 736COMPLAINT
SI
Plaintiff,
v.
1-
COMPLAINT
79659-0001/LEGAL23475801.1
f^/7
Phone: 503.727.2000
Fax: 503.727.2222
Case 3:12-cv-00736-SI
Document 1
Filed 04/25/12
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Page ID#: 2
Plaintiff, Rolex WatchU.S.A., Inc. ("Rolex"), hereby complains of Defendant, Leland Stanford Hoffman, Jr., individually and doing business as "Antique Time,"
1.
compensatory damages, costs and attorneys' fees of this action for Defendant's intentional acts of
trademark infringement and cybersquatting. Defendant is being sued by Rolex as a result of his
use of Rolex's trademarks in a mannerthat is likely to confuse consumers into believing that
Defendant is authorized, sponsoredby or associated with Rolex, even though he is not.
Defendant'suse of Rolex's federally registered trademarks is likely to create consumer confusion
and a false association between Rolex and Defendant. Similarly, Defendant's registrationand
use of the domain name www.rolexcrown.com has been done in bad faith and with the intent to
divert Rolex's consumers to Defendant's website. As set forth below, Defendant's acts constitute
2.
This Court has subject matter jurisdiction over the federal trademark claims
asserted in this action under 15 U.S.C. 1121, and 28 U.S.C. 1331 and 28 U.S.C. 1338.
3. Defendant is subject to the Court's jurisdiction because he resides and/or does
4.
5.
79659-O001/LEGAL23475801.1
Phone: 503.727.2000
Fax: 503.727.2222
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PARTIES
6.
Rolex is a corporation duly organized and existing under the laws of the State of
New York, having an office and principal place of business at 665 Fifth Avenue, New York,
New York, 10022.
7.
("Hoffman") is a resident of the State of Oregon, residing at 2252 Table Rock Road, SPC 3,
Medford, Oregon 97501.
8.
assumed business name under the laws of the State of Oregon, having a principal place of
business at P.O. Box 938, Medford, Oregon 97501.
9.
Upon information and belief, Hoffman is the registrant, owner, operator and/or
www.horologist.com. Through these domains, websites and the "Antique Time" business name, Hoffman, upon information and belief, markets and sells his goods and services throughout the
State of Oregon and beyond.
FACTUAL ALLEGATIONS
A.
watches, all of which bear the trademark ROLEX, as defined below, and numerous other
trademarks.
11.
Rolex watches are identified by the trade name and trademark ROLEX.
12.
commerce high quality, distinctive Rolex watches, watch bracelets and related products for men
and women (hereinafter referred to as "Rolex Watches").
13.
Rolex is responsible for maintaining control over the quality of Rolex products
79659-0001/LEGAL23475801.1
Phone: 503.727.2000
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14.
quality of Rolex Watches and the ROLEX trademark is a distinctive mark used to identify these
high quality products originating with Rolex.
15.
Rolex is the owner, among others, of the following federal trademark registrations
ROLEX
Reg. Date
1/12/15 1/28/58
Goods
CROWN DEVICE
A true and correct copy of Rolex's federal trademark registrations (hereinafter collectively the "Rolex Registered Trademarks") is attached hereto as Exhibit 1 and is incorporated herein by
reference.
16.
17.
The Rolex Registered Trademarks are famous throughout the United States.
Rolex and its predecessors have used the Rolex Registered Trademarks for many
years on and in connection with watches, related products and in advertisements, posters and
print ads. The Rolex Registered Trademarks identify high quality products originating with
Rolex.
18.
Based upon Rolex's extensive advertising, sales and the wide popularity of Rolex
Watches, the Rolex Registered Trademarks are now famous and have been famous since well prior to the activities of the Defendant complained of herein. Rolex Registered Trademarks have acquired secondary meaning so that any product or advertisement bearing such marks is immediately associated by consumers, the public and the trade as being a product or affiliate of
Rolex.
19.
Rolex has gone to great lengths to protect its name and enforce the Rolex
Registered Trademarks.
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20.
The Rolex Registered Trademarks are valid and subsisting and in full force and
21.
Upon information and belief, long after Rolex's adoption and use of the Rolex
Registered Trademarks on its products and after Rolex's federal registration of the Rolex
Registered Trademarks, Defendant, in bad faith, registered, renewed the registration for and maintains a domain name containing the ROLEX trademark and otherwise infringes the Rolex
Registered Trademarks. 22. In or about September 2005, Rolex discovered Defendant's registration of the
rolexcrown.com domain name (the "Infringing Domain"). The Infringing Domain impermissibly contains a Rolex Registered Trademark without Rolex's consent. A true and correct copy of the Whois report for the Infringing Domain is attached hereto as Exhibit 2 and incorporated herein
by reference.
23. On or about October 7,2005, Rolex's counsel sent a cease and desist letter to
Defendant, via First Class Mail, warning Defendant of the consequences of his cybersquatting.
24. Rolex discovered that the Infringing Domain did not have active content but
directed viewers to the www.horologist.com website (the "Website"). This website contains
extensive and prominent depictions of the Rolex Registered Trademarks used in association with Defendant's sale of Rolex Watches, Rolex Watch parts and other watch services. A representative sample of the content found on the Website is attached hereto as Exhibit 3 and incorporated herein by reference.
25. Defendant refers to himself as the "Exclusive Online Source for Professional
Rolex Service and Repair," and he claims to maintain a large inventory of Rolex "Genuine
Factory Parts."
26.
Rolex-01.
Further, Defendant advertises and uses the vanity contact phone number (888)
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79659-0001/LEGAL23475801.1
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Fax: 503.727.2222
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27.
Enhancements" whereby he, among other things, adds diamonds to Rolex Watch dials and
otherwise customizes Rolex Watches without Rolex's consent.
28.
throughout the Website, even though he is not affiliated with or sponsored by Rolex. 29. In its totality, this unauthorized use of the Rolex Registered Trademarks, as
described above, would lead a prospective purchaser to believe that Defendant and the goods and
services he offers for sale are authorized or endorsed by Rolex.
30.
After not receiving a response to its initial letter, on or about January 26,2006,
Rolex's counsel sent another cease and desist letter to Defendant, via First Class Mail, further
warning Defendant of the consequences of his cybersquatting and his unauthorized use of the
Rolex Registered Trademarks.
31.
refused to transfer the Infringing Domain and refused to remove from the Website any unauthorized reproductions of the Rolex Registered Trademarks.
32. Therefore, on or about April 19,2006, Rolex's counsel sent another letter to
Defendant further warning Defendant of the consequences of his unauthorized activities and reserving Rolex's rights. 33. Rolex's counsel did not receive a reply to the April 19,2006 letter, and
34.
Rolex's objections and with blatant disregard for Rolex's intellectual property rights, Defendant renewed his registration for the Infringing Domain. 35. On or about October 5,2011, Rolex's counsel again wrote to Defendant again
warning Defendant of the consequences of his continued infringement and cybersquatting, and notifying Defendant of his willful behavior. Defendant did not respond to this letter.
o-
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36.
promote and advertise his goods and services using the Rolex Registered Trademarks without the
authorization of Rolex, including in his domain name, vanity telephone number and on the
content of the Website.
C.
Summary of Defendant's Unauthorized Activities 37. Defendant intentionally, maliciously and willfully exploited the Rolex Registered
Trademarks, despite knowing that such actions are unauthorized. 38. Defendant's acts were calculated to confuse and to deceive the public and were
Rolex Registered Trademarks or marks confusingly similar thereto. 41. Defendant's use of the Rolex Registered Trademarks is likely to cause consumers,
the public and the trade to erroneously believe that the Website and domain is authorized, sponsored, or approved by Rolex, even though it is not. This confusion causes irreparable harm to Rolex and weakens and dilutes the distinctive quality of the Rolex Registered Trademarks. 42. Defendant's use of the Rolex Registered Trademarks is likely to cause consumers,
the public and the trade to erroneously believe that Defendant is associated with or endorsed by
Rolex.
43.
and reputation of Rolex and creating the false impression that Defendant is affiliated with Rolex.
44. Defendant has been unjustly enriched by improperly using and misappropriating
Rolex's intellectual property for his own financial gain. Furthermore, Defendant has unfairly benefited and profited from Rolex's outstanding reputation for high quality products and its significant advertising and promotion of Rolex Watches and the Rolex Registered Trademarks.
7 /r>r\\Am a txtt UJJYLr-LAlN 1 Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
79659-0001/LEGAL23475801.1
Phone: 503.727.2000
Fax: 503.727.2222
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45.
Defendant has disparaged Rolex, the Rolex Registered Trademarks and its
products by creatinga false association with Rolex, its genuine goods and the Rolex Registered
Trademarks.
46.
47.
Rolex has no control over the nature and quality of Defendant's goods or services.
Among other things, Defendant's promotion and advertisement of the Rolex
Registered Trademarks have and will reflect adversely on Rolex as the believed sourceor origin thereof; hampercontinuing effortsby Rolex to protect its outstanding reputation for high quality,
originality and distinctive goods; and tarnish the goodwill and demand for genuine Rolex
watches and products.
48.
Upon information and belief, Defendant has acted with reckless disregard for
Rolex's rights and/or was willfully blind in connection with unlawful activities. Upon
information and belief, Defendant has willfully and maliciously engaged in infringing activities. Therefore, this case constitutes an exceptional case under 15 U.S.C. 1117(a).
49. Rolex has suffered irreparable harm and damages as a result of Defendant's
conduct. The injuries and damages sustained by Rolex have been directly and proximately
caused by the Defendant's wrongful actions. 50. Rolex has no adequate remedy at law.
51.
Accordingly, Defendant must be restrained and enjoined from any further infringement of the
Rolex Registered Trademarks.
FIRST CLAIM FOR RELIEF
52.
forth herein.
Rolex hereby incorporates by reference all prior allegations as though fully set
53.
its extensive sales and the wide popularity of Rolex watches, the Rolex Registered Trademarks
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Phone: 503.727.2000
Fax: 503.727.2222
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have acquired a secondary meaning so that any product and advertisement bearing such
trademarks is immediately associated by purchasers and the public as being a product and
affiliate of Rolex. 54. Defendant's activities constitute Defendant's use in commerce of the Rolex
Registered Trademarks. Defendant's use of the Rolex Registered Trademarks in connection with Defendant's sale, offers of sale, distribution, promotion and advertisement of his goods and services bearing infringements of the Rolex Registered Trademarks. 55. Defendant has used the Rolex Registered Trademarks, knowing they are the
exclusive property of Rolex, in connection with the sale, offers for sale, distribution, promotion and advertisement of his goods and services bearing infringements of the Rolex Registered
Trademarks.
56.
Defendant's activities create the false and misleading impression that Defendant is
sanctioned, assigned or authorized by Rolex to use the Rolex Registered Trademarks to advertise, manufacture, distribute, appraise, offer for sale or sell merchandise and/or services bearing the Rolex Registered Trademarks when Defendant is not so authorized. 57. Defendant engages in the aforementioned activity with the intent to confuse and
deceive the public into believing that he and the items and/or services that he sells and the items and products contained in his advertisements and posters are in some way sponsored, affiliated
or associated with Rolex, when, in fact, they are not. 58. Defendant's use of the Rolex Registered Trademarks has been without the consent
of Rolex, is likely to cause confusion and mistake in the minds of the public and, in particular, tends to and does falsely create the impression that the goods and/or services advertised, promoted, distributed, offered for sale and sold by Defendant are warranted, authorized,
sponsored or approved by Rolex when, in fact, they are not.
59.
Defendant unfairly benefiting from Rolex's advertising and promotion, and profiting from the
Q ynrw/mi atxtt UUJVLrLAlIN 1 Perkins Coie llp j120n.W. Couch Street, Tenth Floor
Portland, OR 97209-4128
79659-0001/LEGAL23475801.1
Phone: 503.727.2000
Fax: 503.727.2222
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reputation of Rolex and the Rolex Registered Trademarks, to the substantial and irreparable
injury of the public, Rolex and the Rolex Registered Trademarks and the substantial goodwill represented thereby. 60. Defendant's acts constitute willful trademark infringement in violation of Section
61.
representing three (3) times Rolex's damage and/or Defendant's illicit profits; and (b) reasonable
attorney's fees, investigative fees and pre-judgment interest pursuant to 15 U.S.C. 1117.
SECOND CLAIM FOR RELIEF
Rolex hereby incorporates by reference all prior allegations as though fully set
63.
bad faith the domain name rolexcrown.com. which incorporates a mark confusingly similar to
the ROLEX trademark.
64.
65.
sponsored or authorized by Rolex. 66. Defendant has no trademark or other intellectual property rights in the Infringing
Domain, and Defendant has acted in bad faith with the intent to profit from the goodwill of the
ROLEX trademark.
67.
Defendant has no bona fide commercial use of the Infringing Domain as the
iu- CUMFLA1JN 1
79659-0001/LEGAL23475801.1
Phone: 503.727.2000
Fax: 503.727.2222
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68.
Defendant re-registered the Infringing Domain after receiving several cease and
desist letters notifying him of his unauthorized activity, thus exhibiting his bad faith registration
Website and leads potential customers to think he is associated with Rolex, thus exhibiting his bad faith registration and use of the Infringing Domain. 70. Defendant's aforementioned acts constitute Cybersquatting (Cyberpiracy) in
violation of 15 U.S.C. 1125(d)(1)(A). 71. By reason of the foregoing, Defendant is liable to Rolex for: (a) Rolex's actual
damages and Defendant's profits; or (b) statutory damages in an amount up to $100,000 per
domain, as provided by 17 U.S.C. 1117(d).
THIRD CLAIM FOR RELIEF
(Unfair Competition, False Designation of Origin & False Description, 15 U.S.C. 1125(a)) 72.
forth herein.
Rolex hereby incorporates by reference all prior allegations as though fully set
73.
sale and sale of his goods and services, Defendant has used the Rolex Registered Trademarks in
commerce.
74.
sales and sales of his goods and services, Defendant has used false designations of origin and false and misleading descriptions and representations, including the ROLEX trademark and other Rolex Registered Trademarks, which tend falsely to describe the origin, sponsorship, association or approval by Rolex of the goods and services Defendant sells. 75. Defendant has used the Rolex Registered Trademarks with full knowledge of the
falsity of such designations of origin, descriptions and representations, all to the detriment of
Rolex.
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76.
and representations tending falsely to describe or represent Defendant, his products and services
as being authorized, sponsored, affiliated or associated with Rolex. 77. Defendant has used the Rolex Registered Trademarks on the Website with the
express intent to cause confusion and mistake, to deceive and mislead the public, to trade upon the reputation of Rolex and to improperly appropriate to himself the valuable trademark rights of Rolex. Defendant's acts constitute unfair competition under federal law.
78. Defendant's acts constitute the use in commerce of false designations of origin
and false and/or misleading descriptions or representations, tending to falsely or misleadingly describe and/or represent his products as those of Rolex in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. 1125(a). These acts constitute unfair competition.
PRAYER FOR RELIEF
WHEREFORE, Rolex respectfully requests that the Court order the following relief:
1.
That the Court enter an injunction ordering that Defendant, his agents, servants,
employees, and all other persons in privity or acting in concert with him be permanently enjoined
and restrained from:
(a) using any reproduction, copy, or colorable imitation of the Rolex Registered Trademarks to identify any goods or the rendering of any services not authorized by Rolex;
(b) engaging in any course of conduct likely to cause confusion, deception or mistake, or injure Rolex's business reputation or weaken the distinctive quality of the Rolex Registered Trademarks, Rolex's name, reputation or goodwill; (c) using a false description or representation, including words or other symbols, tending to falsely describe or represent Defendant's unauthorized goods or services as being those of Rolex or sponsored by or associated with Rolex and from offering such goods or services in
commerce;
(d)
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(h) secreting, destroying, altering, removing, or otherwise dealing with the unauthorized products or any books or records which contain any information relating to the importing, manufacturing, producing, distributing, circulating, selling, marketing, offering for sale, advertising, promoting, or displaying of all unauthorized products which infringe the Rolex Registered Trademarks; and (i) effecting assignments or transfers, forming new entities or associations or utilizing any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in subparagraphs (a) through (h).
2.
That Defendant, within ten (10) days ofjudgment, takes all steps necessary to
remove from all domains and/or websites owned, operated or controlled by Defendant, all
Phone: 503.727.2000
Fax: 503.727.2222
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3.
That Defendant, within thirty (30) days ofjudgment, files and serves Rolex with a
sworn statement setting forth in detail the manner and form in which he has complied with the
injunctive relief ordered by the Court pursuant to 15 U.S.C. 1116(a); 4. That Defendant and/or his Internet Service Provider and/or Registrar be ordered
to transfer to Rolex the Infringing Domain and any domain names and websites usedby
Defendant to engage in his unauthorized activities concerning the Rolex Registered Trademarks; 5. That Defendant be required to pay to Rolex such damages that Rolex has
sustained as a consequence of Defendant's cybersquatting of the ROLEX trademark and to account for all gains, profits and advantages therefrom derived; alternatively, that Rolex be awarded statutory damages pursuant to 15 U.S.C. 1117(d) of up to $100,000; 6. That Defendant be required to pay to Rolex such damages that Rolex has
reasonable attorneys' fees and pre-judgment interest in accordance with 15 U.S.C. 1117; 8. That this Court retain jurisdiction of this action for the purpose of enabling Rolex
to apply to the Court at any time for such further orders and interpretation or execution of any Order entered in this action, for the modification of any such Order, for the enforcement or compliance therewith and for the punishment of any violations thereof; 9. That, pursuant to 11 U.S.C. 523(a)(6), Defendant be prohibited from a discharge
under 11 U.S.C. 727 for intentional, malicious, willful and fraudulent injury to Rolex.; and
14 r>r\\/tot a txtt
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10.
and proper, together with the costs and disbursements that Rolex has incurred in connection with
this action.
^0>wn^^^9^^^
Stephen^!. Feldman, OSB No. 932674 SFeldman@perkinscoie.com Nathan R. Christensen, OSB No. 093129 NChristensen@perkinscoie.com
1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128
Telephone: 503.727.2000
Facsimile: 503.727.2222
Telephone: 212.688.5151
Facsimile: 212.688.8315 Of Counsel for Plaintiff
15- COMPLAINT
79659-0001/LEGAL23475801.1