After a number of ex parte hearings (where the other side is not present), luxury goods maker Chanel has won recent court orders against hundreds of websites distributing and selling counterfeit merchandise. A federal judge in Nevada issued an order that allows Chanel to seize the domain names in question and transfer them all to GoDaddy.com. After the seizure, when the alleged counterfeiter’s url is entered, it forwards to a page that contains notice of the seizure and nothing more. The judge also ordered “all Internet search engines” and “all social media websites”—specifically naming Facebook, Twitter, Google+, Bing, Yahoo, and Google—to “de-index” the domain names and to remove them from any search results. In effect, he’s allowing Chanel to waive a magic wand and remove the counterfeiters from cyberspace.
Like many other owners of famous marks that are prime candidates for counterfeiting, Chanel filed a lawsuit naming “Does 1-1000,” individuals, entities, and websites it believes to be illegally knocking off its merchandise. Whenever it finds a new site that it believes is counterfeiting, it adds that site to the lawsuit. Once it identifies a defendant, it then moves quickly for ex parte relief to obtain an injunction prohibiting the counterfeiting and, in this case, obtaining the offending domain names, and removing them from the search results of all the major search engines.
The power given to the mark holder in this situation is quite extraordinary. I’ve been involved in matters where the mark holder obtains the ex parte injunction, with all the papers under seal, and walks unannounced into the alleged counterfeiter’s place of business with the US Marshall and confiscates computers, documents, merchandise, and files, all without the counterfeiter being able to tell its side of the story till long after the dust has settled. I have never been involved in a matter where the alleged counterfeiters weren’t actually counterfeiting so it really wasn’t a problem. However, one can easily imagine the situation where mistakes could be made, especially on the facts described in the Wired article. The moral of this story is do not sell knockoff Chanel merchandise, or even merchandise that could perceived to be Chanel merchandise, unless you aren’t particularly attached to your domain name.