A federal judge rewarded fragrance and accessories maker Chanel Inc.’s perseverance in a trademark case by giving the company 16 of the defendants’ domain names—more than five years after awarding a judgment and permanent injunction to Chanel.
Senior U.S. District Judge Michael Ponsor of Springfield, Mass., issued the sanctions order on Thursday in Chanel Inc. v. Yao.
The order transfers domain names including yesreplica.com and bagtrends.net, where Jian Yao and several of his companies sold knockoff Chanel products. It also bars Yao from registering or controlling an Internet business in any way for five years.
Ponsor directed Yao and anyone who works for him to stop using eight Chanel trademarks and “any confusingly similar trademarks.”
Moreover, he ordered the entity that registered each domain name to turn over their certificates to Chanel’s lawyers. Finally, he ordered the registries of the top-level domains like .com and .bz to put the Internet addresses on hold within seven days.
Chanel filed its case in March 2007. Less than a year later, in February 2008, it secured the permanent injunction and judgment including $3.8 million in statutory damages, plus attorney’s fees and costs and investigative fees.
But the counterfeit sales, and the court dispute, dragged on.
Yao, who represented himself, lived in Amherst, Mass., at the time the case was filed. He could not be reached for comment.
Chanel lawyer Stephen Gaffigan, a Fort Lauderdale, Fla., solo practitioner, did not respond to a request for comment. Local counsel in the Boston office of Robins, Kaplan, Miller & Ciresi of Minneapolis referred questions to Gaffigan.
Courts have been ordering the seizure of domain names to combat counterfeiters, said Mark Schonfeld, a partner at Boston-based Burns & Levinson who helps brand fight counterfeiting. He isn’t involved in this case.
“Courts have become more receptive. It’s the only way to prevent [counterfeiters] from doing illegal activities,” Schonfeld said.
Sheri Qualters can be contacted at email@example.com.