Valentino Rockstud Jelly Thong Sandle

MILAN — Marking a first, Valentino and Amazon are teaming in a lawsuit.

The Italian couture house and the Seattle-based e-tail giant said Thursday they were jointly suing the Buffalo, N.Y.-based Kaitlyn Pan Group LLC and New York resident Hao Pan for counterfeiting the Valentino Garavani Rockstud shoes, and offering the infringing products for sale on and in violation of Amazon’s policies and Valentino’s intellectual property rights.

This is Amazon’s first joint litigation with a luxury fashion brand and it is Valentino’s first joint litigation with an online retailer.

“The Maison Valentino is one of the main protagonists of international fashion and plays a major role in the luxury division by sustaining Made in Italy,” said the Rome-based fashion house in a statement with Inc. “The brand represents in the global market one of the Italian excellences in the execution of the industrial process in Italy and of the artisanal and handmade workmanship that are entirely produced in the historic atelier of Piazza Mignanelli in Rome. We consider Made in Italy to be a fundamental value to be fully endorsed, respected and at the forefront of our business and creations. Valentino is an Italian brand operating globally and is a mirror of society. One of our core missions is to safeguard our brand and protect the Valentino community by celebrating inclusivity and with creativity at the heart of everything we do. We feel this connection with Amazon will highlight the importance also in fashion for greater awareness, knowledge and understanding by shielding the brand online and its resources.”

Dharmesh Mehta, vice president, customer trust and partner support at Amazon, stated: “The vast majority of sellers in our store are honest entrepreneurs, but we do not hesitate to take aggressive action to protect customers, brands and our store from counterfeiters. Amazon and Valentino are holding this company accountable in a court of law and we appreciate Valentino’s collaboration throughout this investigation.”

Amazon shut down Kaitlyn Pan’s seller account in September 2019. “Despite multiple notices of infringement and a cease-and-desist order, Kaitlyn Pan continues to import, distribute, sell and offer infringing products” on its own web site, continued the statement. In addition, Kaitlyn Pan allegedly further attempted to apply for a U.S. trademark for its infringing Valentino Garavani Rockstud shoes, “flagrantly and willfully disregarding Valentino’s intellectual property. Valentino implemented a Customs Surveillance System and enforced its intellectual property rights specifically in the U.S.”

With the support of U.S. Customs authorities, Valentino over the past three years seized more than 2,000 counterfeit products.

Valentino has been actively fighting the distribution of counterfeit products in the U.S. through a surveillance system and it has taken legal action against several companies selling both online and off-line products bearing without authorization trademarks and industrial designs owned by the company.

Online, to protect its brand, Valentino succeeded in removing more than 7,000 listings on several marketplaces, more than 360 web sites and more than 1,000 social media accounts selling counterfeit products.

“This joint lawsuit builds on Amazon’s history of collaborating with brands to hold counterfeiters accountable. In line with Amazon’s past joint litigation, Valentino will receive any proceeds from this suit. Amazon strictly prohibits counterfeit products and, in 2019 alone, invested more than $500 million and had more than 8,000 employees protecting its store from fraud and abuse, including counterfeiting and IP infringing products. As a result of its efforts, 99.9 percent of all products viewed by customers on Amazon have not received a valid counterfeit complaint. Amazon also works closely with law enforcement agencies and reports all confirmed counterfeiters to U.S. and European authorities to help them build stronger criminal cases,” the statement said.

Fashion brands have increasingly and more aggressively been fighting counterfeiters on and off-line.

A few examples include Salvatore Ferragamo, which in 2018 was awarded compensation of $60 million by the New York Southern District Court, delivering an injunction against 60 unidentified holders of illegal online profiles that were selling counterfeit Ferragamo products. The court transferred to Ferragamo around 150 domain names that were infringing upon the brand’s rights. The amount is identified as exemplary since the defendants are hard to locate and thus the compensation is unlikely to ever be collected, as in most counterfeit cases of this type. A year earlier, Ferragamo succeeded in having more than 35,000 items and illegal profiles removed from major social networks, as well as the interception, blocking and deletion of nearly 69,000 counterfeit products from online auctions.

Last year, Gucci sued more than three dozen web sites it accused of selling knock-off shoes, accessories and clothes, and of appropriating its brand name. The web sites siphon off customer traffic from Gucci and essentially operate as part of a black market network for fake designer products, according to the brand’s complaint filed in a Florida federal court. Gucci said in the suit that it spends “significant monetary resources” to ward off counterfeiters, and asked for millions in statutory damages at a rate of $2 million for each counterfeit item the web sites sold.

“The exponential growth of counterfeiting over the Internet has created an environment that requires companies, such as Gucci, to file a large number of lawsuits, often it later turns out, against the same individuals and groups, in order to protect both consumers and itself from the ill effects of confusion and the erosion of the goodwill associated with the Gucci brand,” the company said in the suit at the time.

In 2017, Kering decided to drop its long-standing legal battle against Alibaba Group and join forces with the Chinese web giant to stamp out the sale of fake goods as more and more luxury brands moved to sell their goods online in the world’s most advanced digital market.