Better technology and more accommodating courts are helping brands punch back harder against online counterfeiters.
This story first appeared in the April 9, 2013 issue of WWD. Subscribe Today.
Manhattan federal judge William Pauley signed off on a request from Compagnie Financière Richemont SA to disable more than 2,700 “rogue” Web sites selling counterfeit goods, according to a court order on March 1, which was unsealed Monday and obtained by WWD. The sites sold counterfeit watches, jewelry, sunglasses and handbags bearing a number of Richemont’s brands, including Cartier, A. Lange & Söhne, Officine Panerai, Roger Dubuis and Alfred Dunhill.
This isn’t Richemont’s first run-in with the counterfeiters, who previously ran Cartierreplicawatch.us, Replicawatchshop.us and Fakeswatches.com and, according to court papers, had moved their business onto other sites. The luxe firm sued defendants Tony Chen and Fan Bao Dian last year, winning a $100 million default judgment and permanent injunction in January. The defendants never showed up for the case and a host of Web sites named in the case were taken down.
It’s only in recent years that courts have allowed brands to move against counterfeit Web sites in such a manner, although there is little hope that fashion companies will ever see anything near the full damages awarded.
Richemont has kept after the defendants in the case, using technology to track down associated Web sites and payment accounts with the most-recent court action. All together, 4,900 domain names linked to the case have been shut down.
“The number of sites we’ve identified and successfully locked down in this case is unprecedented in terms of the number in so short a period of time,” said Roxanne Elings of Davis Wright Tremaine LLP, who worked with Richemont on the case. “And the injunction we have secured against the defendants applies to all additional domains registered by defendants, as we identify them.”
While the order was under seal, Richemont gave notice to the Web site domain registries, shutting down over 1,400 payment processing accounts, such as those on PayPal, seizing assets in the hundreds of thousands of dollars.
“It’s really about, ‘How can you disrupt their business?’” Elings said. “You want to make it tough on them to counterfeit these products.”
Elings helped The North Face and Ralph Lauren Corp. carry out similar legal battles against online counterfeiters in 2010.
Richemont used MarkMonitor, which is a service of Thomson Reuters and helps companies identify rogue sites and link them to defendants.
“MarkMonitor technology can identify patterns that escape human analysis,” said Frederick Felman, chief marketing officer for MarkMonitor. “As the defendants in this case continued to create additional sites, and change the way they did business, we were able to track their activities and effortlessly scale enforcement, leading to a higher return on investment for the litigation.”