“The recent explosion of counterfeiting over the Internet has created an environment that requires companies to file a large number of lawsuits … in order to protect both consumers and themselves,” Vans and the North Face argue in a recent lawsuit. The two brands – which fall under the umbrella of American apparel and footwear giant, VF Corporation – filed suit in federal court in Florida this week. Their goal: To stop the individuals behind 831 different websites, which are actively selling low quality sneakers and outerwear bearing the Vans and North Face trademarks.
The domain names at issue – which “are registered in multiple countries and backed by unknown individuals and business entities” – range from the straightforward, such as northfaceus.com and vansoff-white.com, to the nonsensical, i.e., organisemyprom.com, 4usedtrailers.com, budapesthotelstoday.com, fishingpartnerhookups.com, and antwerpisthenewparis.com.
One thing they all have in common? They are part of a larger “scheme to create and maintain an illegal marketplace enterprise on the web for the purpose of diverting business from [Vans and the North Face’s] legitimate marketplace for their genuine goods.” While “some of the defendants may be acting independently,” the complaint states, they appear to be connected due to the similarity of their actions, including their SEO activities.” And “they may properly be deemed to be acting in concert because they are combining the force of their actions to multiply the harm caused to [Van and North Face.” Moreover,
In an attempt to escape liability for “directly and personally contributing to, inducing and engaging in the sale of counterfeit branded products,” Vans and North Face allege that the defendants “have provided false and/or misleading contact information when applying for the registration of the Cybersquatted Subject Domain Names, or have intentionally failed to maintain accurate contact information with respect to the registration of the Cybersquatted Subject Domain Names.”
The companies are seeking “temporary, preliminary and permanent injunctions,” which would serve to force the defendants to immediately and permanently cease the advertisement and sale of counterfeits. In addition to seeking all rights in the domain names, the brands have made a claim for statutory damages of up to $100,000 for each cybersquatted domain (or in other words, each domain that makes use of their trademark-protected names), a total that could amount to roughly $300 million if we also consider the Timberland and Reef trademark-bearing domain names; VF Corporation also owns those brands and their intellectual property.
As for that $300 million damages amount, the brands will not see even a fraction of that in large part because the sites are registered and maintained with fictitious contact information. Moreover, even though U.S. law enables U.S. Immigration and Customs Enforcement to work with PayPal to seize funds in the accounts associated with the individuals and the websites selling counterfeit goods. However, it is increasingly common for the individuals to remove any large sums of money from their accounts to avoid having it seized by the court.
* The case is The North Face Apparel Corp., Vans, Inc., TBL Licensing, LLC, and South Cone, Inc., v. 4usedtrailers.com, achterhoekvoetbal.com, adresavucunda.com, ahorn-grundschule.de, airportgotaxillc.com, airtony.com, et al, 0:18-cv-61329-UU (S.D. Fla.).