because they are both domiciled in and conduct substantial
business within this District. (Comp. § 13.)
2. Swiss Click, Inc. is subject to the jurisdiction of this
Court because it is incorporated under the laws of this state.
(Comp. § 16.)
3. This Court has subject matter jurisdiction over the claims
in this action which relate to trademark counterfeiting and
infringement and false designations of origin, false
descriptions and cybersquatting (cyberpiracy) pursuant to the
provisions of 15 U.S.C. § 1121 and 1125(d)(1)(A) and
28 U.S.C. § 1331 and 1338(a). (Comp. § 2.)
4. This Court has supplemental jurisdiction over the claims in
this Complaint which arise under the statutory and common law of
the State of Pennsylvania pursuant to 28 U.S.C. § 1367(a),
because the state law claims are so related to the federal
claims that they form part of the same case or controversy and
derive from a common nucleus of operative fact. (Comp. § 3.)
5. Venue is proper in this Court pursuant to
28 U.S.C. § 1391(b). (Comp. § 4.)
6. Federal trademark infringement,
15 U.S.C. § 1114(1)(a),*fn3 and a false designation of origin claim,
known more broadly as federal unfair competition,
15 U.S.C. § 1125(a)(1)(A), are measured by identical standards. See A & H
Sportswear, Inc. v. Victoria's Secret Stores, Inc.,
237 F.3d 198, 210 (3d Cir. 2000). To prove either form of the Lanham Act
violation, the record must demonstrate that (1) plaintiff has a
valid and legally protectable mark; (2) it owns the mark; and
(3) the defendant's use of the mark to identify goods or
services causes a likelihood of confusion. See id. The first
two requirements are satisfied when a federally registered mark
has become incontestable.*fn4 See Playboy Enter., Inc. v.
Universal Tel-A-Talk, Inc., No. Civ.A. 96-6961, 1998 WL 288423,
at *3 (E.D.Pa. June 3, 1998) (citing Fisons Horticulture, Inc.
v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994)).
To establish federal trademark counterfeiting, the record must
show that (1) the defendants infringed a registered trademark in
violation of the Lanham Act, 15 U.S.C. § 1114(1)(a), and (2)
intentionally used the trademark knowing that is was counterfeit
or was willfully blind to such use. See Playboy Enter., Inc.
Universal Tel-A-Talk, Inc., No. Civ.A. 96-6961, 1998 WL
767440, at *7 (E.D.Pa. Nov. 3, 1998).
8. Pursuant to the Lanham Act, the term counterfeit mark means
"a mark that is registered on the Principal Register in the
United States Patent and Trademark Office for such goods or
services sold, offered for sale, or distributed and that is in
use, whether or not the person against whom relief is sought
knew such mark was so registered." 15 U.S.C. § 1116(d)(1)(B)(i).
A "counterfeit" is defined as "a spurious mark which is
identical with, or substantially indistinguishable from, a
registered mark." 15 U.S.C. § 1127. In a more general sense,
counterfeiting has been defined as "`the act of producing or
selling a product with a sham trademark that is an intentional
and calculated reproduction of the genuine trademark.'"
Playboy, 1998 WL 767440, at *7 (quoting Thomas McCarthy,
McCarthy on Trademarks § 25:10 (3d ed. 1997)).
9. The only material distinction between the standard for
federal trademark counterfeiting and the standard for showing
trademark infringement is that in order to obtain treble or
statutory damages for a counterfeiting claim, as discussed in
greater detail below, a plaintiff must show that the defendant
intentionally used the plaintiffs trademark, knowing it was a
counterfeit. See Playboy Enter., Inc. v. Universal Tel-A-Talk,
Inc., No. Civ.A. 96-6961, 1998 WL 288423, at *2 (E.D.Pa. June
3, 1998); 15 U.S.C. § 1117.
10. A prima facie claim of trademark dilution under §
1125(c)*fn5 includes a showing that (1) the plaintiff owns a
"famous" mark; (2) the defendant is making commercial use in
interstate commerce of a mark or trade name; (3) the Defendant's
use began after the plaintiffs mark became famous; and (4) the
Defendant's use causes dilution by lessening the capacity of the
plaintiffs mark to identify and distinguish goods or services.
See Times Mirror Magazines, Inc. v. Las Vegas Sports News,
L.L.C., 212 F.3d 157, 163 (3d Cir. 2000).
11. Many of the Louis Vuitton Registered Trademarks have
become incontestable pursuant to 15 U.S.C. § 1065. (Comp. ¶ 28.)
12. Several of the Oakley Registered Trademarks have become
incontestable pursuant to 15 U.S.C. § 1065. (Comp. ¶ 35.)
13. Defendants' acts as aforesaid constitute:
A. Trademark counterfeiting in violation of Section
32 of the Lanham Act, 15 U.S.C. § 1114;
B. Trademark infringement in violation of Section 32
of the Lanham Act, 15 U.S.C. § 1114;
C. 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 Defendants' products as
those of Plaintiffs in violation of Section 43(a) of
the Lanham Act, 15 U.S.C. § 1125(a); and
D. Trademark dilution of the distinctive quality of
Registered Trademarks in violation of Section 43(c)
of the Lanham Act, 15 U.S.C. § 1125(c).
(See Findings of Fact ¶¶ 17-21, 30-31, 34-41, 43-62, 72-74,
14. The Federal Anti-Cybersquatting Act, 15 U.S.C. § 1125(d),
is intended to prevent "cybersquatting," which refers to the
"bad faith, abusive registration and use of the distinctive
trademarks of others as Internet domain names, with the intent
to profit from the goodwill associated with those trademarks."
Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001)
(citation omitted). A successful claim is premised upon a
showing that (1) the plaintiffs mark is distinctive or famous;
(2) the defendant's domain names are identical to confusingly
similar to plaintiffs marks; and (3) the defendant registered
his domain name with the bad faith intent to profit from it.
See id. at 482.
15. The Defendants registration and/or use of the
louisvuitton-replicas.com domain name constitutes trademark
dilution. (Comp. ¶ 119.)
16. Defendant's aforementioned acts constitute Cybersquatting
(Cyberpiracy) pursuant to 15 U.S.C. § 1125(d)(1)(A). (See
Findings of Fact ¶¶ 17-21, 24, 32, 63-74.)
17. The common law cause of action for unfair competition in
Pennsylvania mirrors the Lanham Act's section 43(a) cause of
action for unfair competition, except that under state law there
is no requirement that the goods traveled through interstate
commerce. See Haymond v. Lundy, No. Civ.A. 99-5048, 2001 WL
15956, at *2 (E.D.Pa. Jan. 5, 2001); Gideons Int'l Inc. v.
Gideon 300 Ministries, Inc., 94 F. Supp.2d 566, 580 (E.D.Pa.
18. Having concluded that Defendants actions constitute unfair
competition under the Lanham Act, (see Conclusion of law ¶
13), I likewise conclude that Defendants actions constitute
unfair competition under Pennsylvania common law.
19. Under Pennsylvania statutory law regarding trademark
dilution: "The owner of a mark which is famous in this
Commonwealth shall be entitled . . . to an injunction against
another person's commercial use of a mark or trade name if such
use begins after the mark has become famous and causes dilution
of the distinctive quality of the mark." 54 Pa.C.S.A. § 1124.
Thus, the standard for establishing trademark dilution under
Pennsylvania law is the same as under federal law.
20. Having concluded that Defendants' actions constitute
trademark dilution under the Lanham Act, (see Conclusion of
law ¶ 13), I likewise conclude that Defendants actions
constitute trademark dilution pursuant to 54 Pa.C.S.A. § 1124.
Damages and Equitable Relief
21. The statutory damages provision of the Trademark Act
In a case involving the use of a counterfeit mark (as
defined in § 34(d), 15 U.S.C. § 1116(d)) in
connection with the sale, offering for sale, or
distribution of goods or services, the Plaintiff may
elect, at any time before final judgment is rendered
by the trial court, to recover, instead of actual
damages and profits under subsection (a) an award of
statutory damages for any such use in connection
with the sale, offering for sale or distribution of
goods or services in the amount of
(1) not less than $500 or more than $100,000 per
counterfeit mark per type of goods or services sold,
offered for sale, or distributed as the court
considers just; or
(2) If the court finds that the use of the
counterfeit mark was willful, not more
than $1,000,000 per counterfeit mark pe? type of
goods or services sold, offered for sale, or
distributed, as the court considers just.
15 U.S.C. § 1117(c) (emphasis added), Thus, in cases involving
the use of a counterfeit mark, the plain language of the statute
affords plaintiffs the right to pursue statutory damages without
proving actual damages; however, the statute does not provide
guidelines for courts to use in determining an appropriate