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Case 3:12-cv-00736-SI

Document 1

Filed 04/25/12

Page 1 of 15

Page ID#: 1

Stephen M. Feldman, OSB No. 932674 SFeldman@perkinscoie.com


Nathan R. Christensen, OSB No. 093129

ORIGINAL

NChristensen@perkinscoie.com
PERKINS COIE LLP

1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128

Telephone: 503.727.2000
Facsimile: 503.727.2222

FiLO25fiPR'i2i607usBC-0RP

Attorneys for Plaintiff

Brian W. Brokate, bwbrokate@gibney.com John Macaluso, jmacaluso@gibney.com Walter-Michael Lee, wmlee@gibney.com


GIBNEY, ANTHONY & FLAHERTY, LLP
665 Fifth Avenue

New York, NY 10022

Telephone: 212.688.5151
Facsimile: 212.688.8315

Of Counsel for Plaintiff

UNITED STATES DISTRICT COURT DISTRICT OF OREGON PORTLAND DIVISION

ROLEX WATCH U.S.A., INC.,

3UkCV- 736COMPLAINT

SI

Plaintiff,
v.

(Trademark Infringement, Cybersquatting, and Unfair Competition)

LELAND STANFORD HOFFMAN, JR.,

individually and doing business as "ANTIQUE TIME,"


WWW.ROLEXCROWN.COM, and WWW.HOROLOGIST.COM,
Defendant.

1-

COMPLAINT

Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

f^/7

Phone: 503.727.2000
Fax: 503.727.2222

Case 3:12-cv-00736-SI

Document 1

Filed 04/25/12

Page 2 of 15

Page ID#: 2

Plaintiff, Rolex WatchU.S.A., Inc. ("Rolex"), hereby complains of Defendant, Leland Stanford Hoffman, Jr., individually and doing business as "Antique Time,"

www.rolexcrown.com. and www.horologist.com (hereinafter collectively "Defendant"), as


follows:

STATEMENT OF THE CASE

1.

This is a suit by Rolex against Defendant seekinginjunctive relief, profits,

compensatory damages, costs and attorneys' fees of this action for Defendant's intentional acts of

trademark infringement and cybersquatting. Defendant is being sued by Rolex as a result of his

use of Rolex's trademarks in a mannerthat is likely to confuse consumers into believing that
Defendant is authorized, sponsoredby or associated with Rolex, even though he is not.
Defendant'suse of Rolex's federally registered trademarks is likely to create consumer confusion

and a false association between Rolex and Defendant. Similarly, Defendant's registrationand
use of the domain name www.rolexcrown.com has been done in bad faith and with the intent to

divert Rolex's consumers to Defendant's website. As set forth below, Defendant's acts constitute

federal trademark infringement, cybersquatting and unfair competition.


JURISDICTION AND VENUE

2.

This Court has subject matter jurisdiction over the federal trademark claims

asserted in this action under 15 U.S.C. 1121, and 28 U.S.C. 1331 and 28 U.S.C. 1338.
3. Defendant is subject to the Court's jurisdiction because he resides and/or does

business and has committed the acts complained of in this District.

4.

Defendant is subject to the jurisdiction of this Court pursuant to and in accordance

with Rule 4 of the Federal Rules of Civil Procedure.

5.

. Venue is proper in this District pursuant to 28 U.S.C. 1391(b).

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Perkins Street> Tentn j120 N w Couch Coie llp Floor


Portland, OR 97209-4128

79659-O001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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PARTIES

6.

Rolex is a corporation duly organized and existing under the laws of the State of

New York, having an office and principal place of business at 665 Fifth Avenue, New York,
New York, 10022.

7.

Upon information and belief, Defendant Leland Stanford Hoffman, Jr.

("Hoffman") is a resident of the State of Oregon, residing at 2252 Table Rock Road, SPC 3,
Medford, Oregon 97501.

8.

Upon information and belief, Hoffman is doing business as "Antique Time," an

assumed business name under the laws of the State of Oregon, having a principal place of
business at P.O. Box 938, Medford, Oregon 97501.

9.

Upon information and belief, Hoffman is the registrant, owner, operator and/or

controlling force behind the domains and websites www.rolexcrown.com and

www.horologist.com. Through these domains, websites and the "Antique Time" business name, Hoffman, upon information and belief, markets and sells his goods and services throughout the
State of Oregon and beyond.
FACTUAL ALLEGATIONS

A.

Rolex's Famous Products and Trademarks


10. Rolex is the exclusive distributor and warrantor in the United States of Rolex

watches, all of which bear the trademark ROLEX, as defined below, and numerous other
trademarks.

11.

Rolex watches are identified by the trade name and trademark ROLEX.

12.

Rolex is responsible for assembling, finishing, marketing and selling in interstate

commerce high quality, distinctive Rolex watches, watch bracelets and related products for men
and women (hereinafter referred to as "Rolex Watches").

13.

Rolex is responsible for maintaining control over the quality of Rolex products

and services in this country.


T >-. nr\\/tot a nvrr UUMrXAUN 1 Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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14.

Rolex has developed an outstanding reputation because of the uniform high

quality of Rolex Watches and the ROLEX trademark is a distinctive mark used to identify these
high quality products originating with Rolex.

15.

Rolex is the owner, among others, of the following federal trademark registrations

in the U.S. Patent and Trademark Office:


Trademark

ROLEX

Reg. No. 101,819


657,756

Reg. Date
1/12/15 1/28/58

Goods

Watches, clocks, parts of watches and


clocks, and their cases.

Timepieces of all kinds and parts thereof.

CROWN DEVICE

A true and correct copy of Rolex's federal trademark registrations (hereinafter collectively the "Rolex Registered Trademarks") is attached hereto as Exhibit 1 and is incorporated herein by
reference.

16.
17.

The Rolex Registered Trademarks are famous throughout the United States.
Rolex and its predecessors have used the Rolex Registered Trademarks for many

years on and in connection with watches, related products and in advertisements, posters and
print ads. The Rolex Registered Trademarks identify high quality products originating with
Rolex.

18.

Based upon Rolex's extensive advertising, sales and the wide popularity of Rolex

Watches, the Rolex Registered Trademarks are now famous and have been famous since well prior to the activities of the Defendant complained of herein. Rolex Registered Trademarks have acquired secondary meaning so that any product or advertisement bearing such marks is immediately associated by consumers, the public and the trade as being a product or affiliate of
Rolex.

19.

Rolex has gone to great lengths to protect its name and enforce the Rolex

Registered Trademarks.

4-

COMPLAINT

Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128


Phone: 503.727.2000 Fax: 503.727.2222

79659-0001/LEGAL23475801.1

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20.

The Rolex Registered Trademarks are valid and subsisting and in full force and

effect and have become incontestable pursuant to 15 U.S.C. 1065.


B. Defendant's Infringing and Diluting Activities

21.

Upon information and belief, long after Rolex's adoption and use of the Rolex

Registered Trademarks on its products and after Rolex's federal registration of the Rolex

Registered Trademarks, Defendant, in bad faith, registered, renewed the registration for and maintains a domain name containing the ROLEX trademark and otherwise infringes the Rolex
Registered Trademarks. 22. In or about September 2005, Rolex discovered Defendant's registration of the

rolexcrown.com domain name (the "Infringing Domain"). The Infringing Domain impermissibly contains a Rolex Registered Trademark without Rolex's consent. A true and correct copy of the Whois report for the Infringing Domain is attached hereto as Exhibit 2 and incorporated herein
by reference.
23. On or about October 7,2005, Rolex's counsel sent a cease and desist letter to

Defendant, via First Class Mail, warning Defendant of the consequences of his cybersquatting.
24. Rolex discovered that the Infringing Domain did not have active content but

directed viewers to the www.horologist.com website (the "Website"). This website contains

extensive and prominent depictions of the Rolex Registered Trademarks used in association with Defendant's sale of Rolex Watches, Rolex Watch parts and other watch services. A representative sample of the content found on the Website is attached hereto as Exhibit 3 and incorporated herein by reference.
25. Defendant refers to himself as the "Exclusive Online Source for Professional

Rolex Service and Repair," and he claims to maintain a large inventory of Rolex "Genuine
Factory Parts."

26.
Rolex-01.

Further, Defendant advertises and uses the vanity contact phone number (888)

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Perkins Coie llp j 120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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27.

Further, Defendant offers "Professional Dial Refinishing and Custom Dial

Enhancements" whereby he, among other things, adds diamonds to Rolex Watch dials and
otherwise customizes Rolex Watches without Rolex's consent.

28.

Further, Defendant prominently uses the Rolex Registered Trademarks

throughout the Website, even though he is not affiliated with or sponsored by Rolex. 29. In its totality, this unauthorized use of the Rolex Registered Trademarks, as

described above, would lead a prospective purchaser to believe that Defendant and the goods and
services he offers for sale are authorized or endorsed by Rolex.

30.

After not receiving a response to its initial letter, on or about January 26,2006,

Rolex's counsel sent another cease and desist letter to Defendant, via First Class Mail, further

warning Defendant of the consequences of his cybersquatting and his unauthorized use of the
Rolex Registered Trademarks.

31.

On or about April 4,2006, Rolex received a letter from Defendant whereby he

refused to transfer the Infringing Domain and refused to remove from the Website any unauthorized reproductions of the Rolex Registered Trademarks.
32. Therefore, on or about April 19,2006, Rolex's counsel sent another letter to

Defendant further warning Defendant of the consequences of his unauthorized activities and reserving Rolex's rights. 33. Rolex's counsel did not receive a reply to the April 19,2006 letter, and

Defendant's unauthorized activities continued.

34.

Upon information and belief, on or about September 20,2011, with knowledge of

Rolex's objections and with blatant disregard for Rolex's intellectual property rights, Defendant renewed his registration for the Infringing Domain. 35. On or about October 5,2011, Rolex's counsel again wrote to Defendant again

warning Defendant of the consequences of his continued infringement and cybersquatting, and notifying Defendant of his willful behavior. Defendant did not respond to this letter.

o-

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LUMaAIM 1

1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

Perkins Coie llp

79659-0001/LEGAL23475801.1

" Pn<>ne: 503.727.2000


Fax: 503.727.2222

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36.

To date, despite repeated notice of Rolex's objections, Defendant continues to

promote and advertise his goods and services using the Rolex Registered Trademarks without the
authorization of Rolex, including in his domain name, vanity telephone number and on the
content of the Website.

C.

Summary of Defendant's Unauthorized Activities 37. Defendant intentionally, maliciously and willfully exploited the Rolex Registered

Trademarks, despite knowing that such actions are unauthorized. 38. Defendant's acts were calculated to confuse and to deceive the public and were

performed with full knowledge of Rolex's rights.


39. Defendant is not now, nor has he ever been, associated, affiliated, connected with,

endorsed or sanctioned by Rolex.


40. Rolex has never authorized or consented in any way to Defendant's use of the

Rolex Registered Trademarks or marks confusingly similar thereto. 41. Defendant's use of the Rolex Registered Trademarks is likely to cause consumers,

the public and the trade to erroneously believe that the Website and domain is authorized, sponsored, or approved by Rolex, even though it is not. This confusion causes irreparable harm to Rolex and weakens and dilutes the distinctive quality of the Rolex Registered Trademarks. 42. Defendant's use of the Rolex Registered Trademarks is likely to cause consumers,

the public and the trade to erroneously believe that Defendant is associated with or endorsed by
Rolex.

43.

By using the Rolex Registered Trademarks, Defendant is trading on the goodwill

and reputation of Rolex and creating the false impression that Defendant is affiliated with Rolex.
44. Defendant has been unjustly enriched by improperly using and misappropriating

Rolex's intellectual property for his own financial gain. Furthermore, Defendant has unfairly benefited and profited from Rolex's outstanding reputation for high quality products and its significant advertising and promotion of Rolex Watches and the Rolex Registered Trademarks.
7 /r>r\\Am a txtt UJJYLr-LAlN 1 Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor
Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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45.

Defendant has disparaged Rolex, the Rolex Registered Trademarks and its

products by creatinga false association with Rolex, its genuine goods and the Rolex Registered
Trademarks.

46.
47.

Rolex has no control over the nature and quality of Defendant's goods or services.
Among other things, Defendant's promotion and advertisement of the Rolex

Registered Trademarks have and will reflect adversely on Rolex as the believed sourceor origin thereof; hampercontinuing effortsby Rolex to protect its outstanding reputation for high quality,
originality and distinctive goods; and tarnish the goodwill and demand for genuine Rolex
watches and products.

48.

Upon information and belief, Defendant has acted with reckless disregard for

Rolex's rights and/or was willfully blind in connection with unlawful activities. Upon
information and belief, Defendant has willfully and maliciously engaged in infringing activities. Therefore, this case constitutes an exceptional case under 15 U.S.C. 1117(a).
49. Rolex has suffered irreparable harm and damages as a result of Defendant's

conduct. The injuries and damages sustained by Rolex have been directly and proximately
caused by the Defendant's wrongful actions. 50. Rolex has no adequate remedy at law.

51.

Defendant's wrongful acts will continue unless enjoined by this Court.

Accordingly, Defendant must be restrained and enjoined from any further infringement of the
Rolex Registered Trademarks.
FIRST CLAIM FOR RELIEF

(Trademark Infringement, 15 U.S.C. 1114)

52.
forth herein.

Rolex hereby incorporates by reference all prior allegations as though fully set

53.

Based on Rolex's extensive advertising under the Rolex Registered Trademarks,

its extensive sales and the wide popularity of Rolex watches, the Rolex Registered Trademarks

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Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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have acquired a secondary meaning so that any product and advertisement bearing such

trademarks is immediately associated by purchasers and the public as being a product and
affiliate of Rolex. 54. Defendant's activities constitute Defendant's use in commerce of the Rolex

Registered Trademarks. Defendant's use of the Rolex Registered Trademarks in connection with Defendant's sale, offers of sale, distribution, promotion and advertisement of his goods and services bearing infringements of the Rolex Registered Trademarks. 55. Defendant has used the Rolex Registered Trademarks, knowing they are the

exclusive property of Rolex, in connection with the sale, offers for sale, distribution, promotion and advertisement of his goods and services bearing infringements of the Rolex Registered
Trademarks.

56.

Defendant's activities create the false and misleading impression that Defendant is

sanctioned, assigned or authorized by Rolex to use the Rolex Registered Trademarks to advertise, manufacture, distribute, appraise, offer for sale or sell merchandise and/or services bearing the Rolex Registered Trademarks when Defendant is not so authorized. 57. Defendant engages in the aforementioned activity with the intent to confuse and

deceive the public into believing that he and the items and/or services that he sells and the items and products contained in his advertisements and posters are in some way sponsored, affiliated
or associated with Rolex, when, in fact, they are not. 58. Defendant's use of the Rolex Registered Trademarks has been without the consent

of Rolex, is likely to cause confusion and mistake in the minds of the public and, in particular, tends to and does falsely create the impression that the goods and/or services advertised, promoted, distributed, offered for sale and sold by Defendant are warranted, authorized,
sponsored or approved by Rolex when, in fact, they are not.

59.

Defendant's unauthorized use of the Rolex Registered Trademarks has resulted in

Defendant unfairly benefiting from Rolex's advertising and promotion, and profiting from the
Q ynrw/mi atxtt UUJVLrLAlIN 1 Perkins Coie llp j120n.W. Couch Street, Tenth Floor
Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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reputation of Rolex and the Rolex Registered Trademarks, to the substantial and irreparable
injury of the public, Rolex and the Rolex Registered Trademarks and the substantial goodwill represented thereby. 60. Defendant's acts constitute willful trademark infringement in violation of Section

32 of the Lanham Act, 15 U.S.C. 1114.

61.

By reason of the foregoing, Defendant is liable to Rolex for: (a) an amount

representing three (3) times Rolex's damage and/or Defendant's illicit profits; and (b) reasonable
attorney's fees, investigative fees and pre-judgment interest pursuant to 15 U.S.C. 1117.
SECOND CLAIM FOR RELIEF

(Federal Anti-Cybersquatting (Anti Cyberpiracy), 15 U.S.C. 1125(d)(1)(A)) 62.


forth herein.

Rolex hereby incorporates by reference all prior allegations as though fully set

63.

Upon information and belief, Defendant registered, re-registered and/or uses in

bad faith the domain name rolexcrown.com. which incorporates a mark confusingly similar to
the ROLEX trademark.

64.

The Infringing Domain is substantially indistinguishable from, confusingly

similar to and/or dilutive of the ROLEX trademark in violation of the Anti-Cybersquatting


Consumer Act, 15 U.S.C. 1125(d)(l)(A)(ii)(II).

65.

Defendant's registration, re-registration and/or use of the Infringing Domain is not

sponsored or authorized by Rolex. 66. Defendant has no trademark or other intellectual property rights in the Infringing

Domain, and Defendant has acted in bad faith with the intent to profit from the goodwill of the
ROLEX trademark.

67.

Defendant has no bona fide commercial use of the Infringing Domain as the

domain has no separate website.

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iu- CUMFLA1JN 1

1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

Perkins Coie llp

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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68.

Defendant re-registered the Infringing Domain after receiving several cease and

desist letters notifying him of his unauthorized activity, thus exhibiting his bad faith registration

and use of the Infringing Domain.


69. Defendant solely uses the Rolex Registered Trademarks to attract users to his

Website and leads potential customers to think he is associated with Rolex, thus exhibiting his bad faith registration and use of the Infringing Domain. 70. Defendant's aforementioned acts constitute Cybersquatting (Cyberpiracy) in

violation of 15 U.S.C. 1125(d)(1)(A). 71. By reason of the foregoing, Defendant is liable to Rolex for: (a) Rolex's actual

damages and Defendant's profits; or (b) statutory damages in an amount up to $100,000 per
domain, as provided by 17 U.S.C. 1117(d).
THIRD CLAIM FOR RELIEF

(Unfair Competition, False Designation of Origin & False Description, 15 U.S.C. 1125(a)) 72.
forth herein.

Rolex hereby incorporates by reference all prior allegations as though fully set

73.

In connection with Defendant's advertisement, promotion, distribution, offers of

sale and sale of his goods and services, Defendant has used the Rolex Registered Trademarks in
commerce.

74.

In connection with Defendant's advertisement, promotion, distribution, offers of

sales and sales of his goods and services, Defendant has used false designations of origin and false and misleading descriptions and representations, including the ROLEX trademark and other Rolex Registered Trademarks, which tend falsely to describe the origin, sponsorship, association or approval by Rolex of the goods and services Defendant sells. 75. Defendant has used the Rolex Registered Trademarks with full knowledge of the

falsity of such designations of origin, descriptions and representations, all to the detriment of
Rolex.

11 nr\\AT>i a tktx 11- UUJVLr-LAUN 1


79659-0001/LEGAL23475801.1

Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

Phone: 503.727.2000
Fax: 503.727.2222

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76.

Defendant's use of the Rolex Registered Trademarks constitutes false descriptions

and representations tending falsely to describe or represent Defendant, his products and services
as being authorized, sponsored, affiliated or associated with Rolex. 77. Defendant has used the Rolex Registered Trademarks on the Website with the

express intent to cause confusion and mistake, to deceive and mislead the public, to trade upon the reputation of Rolex and to improperly appropriate to himself the valuable trademark rights of Rolex. Defendant's acts constitute unfair competition under federal law.
78. Defendant's acts constitute the use in commerce of false designations of origin

and false and/or misleading descriptions or representations, tending to falsely or misleadingly describe and/or represent his products as those of Rolex in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. 1125(a). These acts constitute unfair competition.
PRAYER FOR RELIEF

WHEREFORE, Rolex respectfully requests that the Court order the following relief:

1.

That the Court enter an injunction ordering that Defendant, his agents, servants,

employees, and all other persons in privity or acting in concert with him be permanently enjoined
and restrained from:

(a) using any reproduction, copy, or colorable imitation of the Rolex Registered Trademarks to identify any goods or the rendering of any services not authorized by Rolex;
(b) engaging in any course of conduct likely to cause confusion, deception or mistake, or injure Rolex's business reputation or weaken the distinctive quality of the Rolex Registered Trademarks, Rolex's name, reputation or goodwill; (c) using a false description or representation, including words or other symbols, tending to falsely describe or represent Defendant's unauthorized goods or services as being those of Rolex or sponsored by or associated with Rolex and from offering such goods or services in
commerce;

(d)

further infringing or diluting the Rolex Registered Trademarks by


Perkins Coie llp

manufacturing, producing, distributing, circulating, selling, marketing,


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1Z" t-UMi'L-AlN 1

1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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offeringfor sale, advertising, promoting, displayingor otherwise


disposing of any products or services not authorized by Rolex bearing any simulation, reproduction, counterfeit, copy or colorable imitation of the Rolex Registered Trademarks; (e) using any simulation, reproduction, copy or colorable imitation of the Rolex Registered Trademarks in connection with the promotion, advertisement, display, sale, offering for sale, manufacture, production, circulation or distribution of any unauthorized products or services in such fashion as to relate or connect, or tend to relate or connect, such products or services in any way to Rolex, or to any goods or services sold, manufactured, sponsored or approved by, or connected with Rolex; (f) making any statement or representation whatsoever, or using any false designation of origin or false description, or performing any act, which can or is likely to lead the trade or public, or individual members thereof, to believe that any services provided, products manufactured, distributed, sold or offered for sale, or rented by Defendant are in any way associated or connected with Rolex, or are provided, sold, manufactured, licensed, sponsored, approved or authorized by Rolex; (g) acquiring, registering, maintaining or controlling any domain names that include the ROLEX trademark or any of the other Rolex Registered Trademarks or any marks confusingly similar thereto, activating any website under said domain names, or selling, transferring, conveying, or assigning any such domain names to any entity other than
Rolex;

(h) secreting, destroying, altering, removing, or otherwise dealing with the unauthorized products or any books or records which contain any information relating to the importing, manufacturing, producing, distributing, circulating, selling, marketing, offering for sale, advertising, promoting, or displaying of all unauthorized products which infringe the Rolex Registered Trademarks; and (i) effecting assignments or transfers, forming new entities or associations or utilizing any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in subparagraphs (a) through (h).

2.

That Defendant, within ten (10) days ofjudgment, takes all steps necessary to

remove from all domains and/or websites owned, operated or controlled by Defendant, all

impermissible use of the Rolex Registered Trademarks;


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79659-0001/LEGAL2347580U

Perkins Coie llp 1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

Phone: 503.727.2000
Fax: 503.727.2222

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3.

That Defendant, within thirty (30) days ofjudgment, files and serves Rolex with a

sworn statement setting forth in detail the manner and form in which he has complied with the
injunctive relief ordered by the Court pursuant to 15 U.S.C. 1116(a); 4. That Defendant and/or his Internet Service Provider and/or Registrar be ordered

to transfer to Rolex the Infringing Domain and any domain names and websites usedby
Defendant to engage in his unauthorized activities concerning the Rolex Registered Trademarks; 5. That Defendant be required to pay to Rolex such damages that Rolex has

sustained as a consequence of Defendant's cybersquatting of the ROLEX trademark and to account for all gains, profits and advantages therefrom derived; alternatively, that Rolex be awarded statutory damages pursuant to 15 U.S.C. 1117(d) of up to $100,000; 6. That Defendant be required to pay to Rolex such damages that Rolex has

sustained as a consequence of Defendant's infringement of the Rolex Registered Trademarks and


to account for all gains, profits and advantages derived by Defendant's unauthorized activities, and that the award to Rolex be trebled as provided for under 15 U.S.C. 1117; 7. That Rolex recover from Defendant the costs of this action, together with

reasonable attorneys' fees and pre-judgment interest in accordance with 15 U.S.C. 1117; 8. That this Court retain jurisdiction of this action for the purpose of enabling Rolex

to apply to the Court at any time for such further orders and interpretation or execution of any Order entered in this action, for the modification of any such Order, for the enforcement or compliance therewith and for the punishment of any violations thereof; 9. That, pursuant to 11 U.S.C. 523(a)(6), Defendant be prohibited from a discharge

under 11 U.S.C. 727 for intentional, malicious, willful and fraudulent injury to Rolex.; and

14 r>r\\/tot a txtt

14- COMPLAIN 1

1120 N.W. Couch Street, Tenth Floor


Portland, OR 97209-4128

Perkins Coie llp

79659-0001/LEGAL23475801.1

Phone: 503.727.2000
Fax: 503.727.2222

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10.

ThatRolex be awarded suchotherand further reliefas the Courtmay deem just

and proper, together with the costs and disbursements that Rolex has incurred in connection with
this action.

DATED: April 25,2012

PERKINS COIE llp


By:

^0>wn^^^9^^^

Stephen^!. Feldman, OSB No. 932674 SFeldman@perkinscoie.com Nathan R. Christensen, OSB No. 093129 NChristensen@perkinscoie.com
1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128

Telephone: 503.727.2000
Facsimile: 503.727.2222

Attorneys for Plaintiff


Brian W. Brokate John Macaluso Walter-Michael Lee

GIBNEY, ANTHONY & FLAHERTY, LLP


665 Fifth Avenue

New York, NY 10022

Telephone: 212.688.5151
Facsimile: 212.688.8315 Of Counsel for Plaintiff

15- COMPLAINT
79659-0001/LEGAL23475801.1

Perkins Coie llp

1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128


Phone: 503.727.2000
Fax: 503.727.2222