Arent Fox Wins Lawsuit Protecting Diesel From Websites Selling Counterfeit Products

Washington, DC — Earlier this month, Arent Fox LLP secured a victory for Diesel S.p.A. after a federal court granted default judgement in a lawsuit the Italian clothing company filed against nine John Doe defendants operating 83 cybersquatting websites that sold counterfeit products appearing to carry the internationally recognized label. In granting the default judgment, the US District Court for the Southern District of New York awarded $2 million in damages and ruled that by using Diesel’s trademark in the domain name, the websites created the false impression they were authorized to sell genuine Diesel goods.
“This decision stops the unlawful use of Diesel trademarks and protects the company’s loyal customers from being targeted by counterfeit artists,” said Fashion Law leader Anthony V. Lupo. “These websites sought to profit off of Diesel’s reputation, while making goods available that lack the company’s trademark quality and craftsmanship. This ruling is a warning to all counterfeiters.” Mr. Lupo led a litigation team from Arent Fox that included Complex Litigation partners David N. Wynn and Randall A. Brater and associates Katie R. Heilman and Emily Baver Slavin.
In the default judgment, the court prohibited the defendants from continuing infringing activities, including using any Diesel trademark in connection with the unauthorized advertising and sale of goods; ordered defendants to transfer to Diesel or cancel the domain names of the infringing websites, and ordered defendants to deliver to Diesel for destruction all counterfeit goods in their possession. To read the decision, click here.
Diesel has previously taken strong steps to fight against cybersquatting as part of a global initiative that combats counterfeit products. In 2013, the company started an online brand protection program that has resulted in roughly 120 infringing sites being taken down, with more than 1,000 sellers blocked and a total of about 400,000 items removed.
Arent Fox routinely advises fashion and retail clients on advertising, promotions, and data protection. Mr. Lupo serves as general counsel for a number of high-end European fashion and luxury goods companies handling corporate, real estate, employment, class action, national and global distribution, fulfillment, and California-specific litigation (Prop 65, wage and hour, and false claims and unfair competition). The firm’s fashion and retail clients include Diane von Furstenberg, Lacoste, Benetton, Marni, Louboutin, Fila, and Hugo Boss.

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