rolex watch u.s.a. v. leland stanford hoffman trademark complaint

8/2/2019 Rolex Watch U.S.A. v. Leland Stanford Hoffman Trademark Complaint

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Stephen M. Feldman, OSB No. [email protected] R. Christensen, OSB No. [email protected] COIE LLP1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Telephone: 503.727.2000Facs imi le : 503.727 .2222Attorneys for PlaintiffBrianW. Brokate, [email protected], [email protected], [email protected], ANTHONY & FLAHERTY, LLP665 Fi ft h AvenueNew York, NY 10022Telephone: 212.688.5151Facsimile: 212.688.8315O f Counsel fo r P l a in t if f

ORIGINAL

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UNITED STATES DISTRICT COURTDISTRICT OF OREGONPORTLAND DIVIS ION

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

v.

LELAND STANFORD HOFFMAN, JR.,individually and doing business as"ANTIQUE TIME,"WWW.ROLEXCROWN.COM, andWWW.HOROLOGIST.COM,

Defendant.

1- COMPLAINT79659-0001/LEGAL23475801.1 f^/7

3UkCV- 736- SCOMPLAINT(Trademark Infringement, Cybersquatting,and Unfair Competition)

Perk ins Coie llp1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

Phone : 503.727 .2000Fax: 503 .727 .2222

Case 3:12-cv-00736-SI Document 1 Filed 04/25/12 Page 1 of 15 Page ID#: 1


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Plaintiff, RolexWatchU.S.A., Inc. ("Rolex"), herebycomplains of Defendant, LelandStanfordHoffman, Jr., individually anddoingbusiness as "Antique Time,"www.rolexcrown.com. andwww.horologist.com (hereinafter collectively "Defendant"), asfollows:

STATEMENT OF THE CAS E1. Thisis a suitbyRolex againstDefendant seekinginjunctive relief, profits,

compensatory damages, costs and attorneys' fees of this action for Defendant's intentional acts oftrademark infringement and cybersquatting. Defendantis being sued by Rolex as a resultof hisuse ofRolex's trademarks in a mannerthat is likelyto confuse consumers into believing thatDefendant is authorized, sponsoredby or associatedwith Rolex,even thoughhe is not.Defendant'suseofRolex's federally registered trademarks is likely to create consumer confusionanda falseassociation betweenRolex andDefendant. Similarly, Defendant's registrationanduse of the domain name www.rolexcrown.com has been done in bad faith and with the intent todivert Rolex's consumers to Defendant's website. As set forth below, Defendant's acts constitutefederal trademark infringement, cybersquattingand unfair competition.

JURISDICTION AND VENUE

2. This Court has subject matter jurisdiction over the federal trademark claimsassertedin this actionunder 15U.S.C. 1121, and 28 U.S.C. 1331 and 28U.S.C. 1338.

3. Defendant is subject to the Court's jurisdiction because he resides and/or doesbusiness and has committed the acts complained of in this District.

4. Defendant is subject to the jurisdiction of this Court pursuant to and in accordancewi th Ru le 4 o f the Federal Rules of Civil Procedure.

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

? rniUDT ATWT Perkins Coie llpcuMrLAiiN i j120Nw Couch Street> Tentn FloorPortland, OR 97209-4128

79659-O001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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PART IES

6. Rolex is a corporation duly organized and existing under the laws of the State ofNew 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 ofOregon, residing at 2252 Table Rock Road, SPC 3,Medford, Oregon 97501.

8. Upon information and belief, Hoffman is doing business as "Antique Time," anassumed business name under the laws of the State ofOregon, having a principal place ofbusiness at P.O. Box 938, Medford, Oregon 97501.

9. Upon information and belief, Hoffman is the registrant, owner, operator and/orcontrolling force behind the domains and websites www.rolexcrown.com andwww.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 theState ofOregon and beyond.

FACTUAL ALLEGAT IONS

A . Rolex ' s Famous Products and Trademarks10. Rolex is the exclus ive distributor and warr anto r in the United States o f Rolex

watches, all ofwhich bear the trademark ROLEX, as defined below, and numerous othert rademarks.

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 menand women (hereinafter referred to as "Rolex Watches").

13. Rolex is responsible for maintaining control over the quality ofRolex productsand services in this country.T nr\\/tot anvrr Perkins Coie llp>-. UUMrXAUN 1 1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-412879659-0001/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 highquality ofRolex Watches and the ROLEX trademark is a distinctive mark used to identify thesehigh quality products originating with Rolex.

15. Rolex is the owner, among others, of the following federal trademark registrationsin th e U.S. Patent and Trademark Office:T rad ema r k Reg. No. Reg. Date GoodsROLEX 101,819 1/12/15 Watches, clocks, parts of watches andclocks, and their cases.CROWN DEVICE

657,756 1/28/58 Timepieces of all kinds and parts thereof.

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

16. The Rolex Registered Trademarks are famous throughout the United States.17. Rolex and its predecessors have used the Rolex Registered Trademarks for many

years on and in connectionwith watches, related products and in advertisements, posters andprint ads. The Rolex Registered Trademarks identify high quality products originating withRolex.

18. Based upon Rolex's extensive advertising, sales and the wide popularity ofRolexWatches, the Rolex Registered Trademarks are now famous and have been famous since wellprior to the activities of the Defendant complained of herein. Rolex Registered Trademarks haveacquired secondary meaning so that any product or advertisement bearing suchmarks isimmediately associated by consumers, the public and the trade as being a product or affiliate ofRolex.

19. Rolex has gone to great lengths to protect its name and enforce the RolexRegistered Trademarks.

4- COMPLAINT

79659-0001/LEGAL23475801.1

Pe r k i n s Co i e llp1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128Phone : 503.727 .2000Fax: 503.727.2222



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20. The Rolex Registered Trademarks are valid and subsisting and in full force andeffect and have become incontestable pursuant to 15U.S.C. 1065.B. Defendant's Infringing and Diluting Activities

21. Upon information and belief, long after Rolex's adoption and use of the RolexRegistered Trademarks on its products and after Rolex's federal registration of the RolexRegistered Trademarks, Defendant, in bad faith, registered, renewed the registration for andmaintains a domain name containing the ROLEX trademark and otherwise infringes the RolexRegistered Trademarks.

22. In or about September 2005, Rolex discovered Defendant's registration of therolexcrown.com domain name (the "Infringing Domain"). The Infringing Domain impermissiblycontains a Rolex Registered Trademark without Rolex's consent. A true and correct copy of theWhois report for the Infringing Domain is attached hereto as Exhibit 2 and incorporated hereinby reference.

23. On or about October 7,2005, Rolex's counsel sent a cease and desist letter toDefendant, via First Class Mail, warning Defendant of the consequences ofhis cybersquatting.

24. Rolex discovered that the Infringing Domain did not have active content butdirected viewers to the www.horologist.com website (the "Website"). This website containsextensive and prominent depictions of the Rolex Registered Trademarks used in association withDefendant's sale ofRolex Watches, Rolex Watch parts and other watch services. Arepresentative sample of the content found on the Website is attached hereto as Exhibit 3 andincorporated herein by reference.

25. Defendant refers to himselfas t he "Exc lus ive Online Source fo r ProfessionalRolex Service and Repair," and he claims to maintain a large inventory ofRolex "GenuineFactory Parts."

26. Further, Defendant advertises and uses the vanity contact phone number (888)Rolex-01.

r rvwrfm atxtt Perkins Coie llpJ- UUJVLr-LAlN 1 j120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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27. Further, Defendant offers "Professional Dial Refinishing and Custom DialEnhancements" whereby he, among other things, adds diamonds to Rolex Watch dials andotherwise customizes Rolex Watches wi thout Ro lex' s consent.

28. Further, Defendant prominently uses the Rolex Registered Trademarksthroughout 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, asdescribed above, would lead a prospective purchaser to believe that Defendant and the goods andservices 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, furtherwarning Defendant of the consequences ofhis cybersquatting and his unauthorized use of theRolex Registered Trademarks.

31. On or about April 4,2006, Rolex received a letter from Defendant whereby herefused to transfer the Infringing Domain and refused to remove from the Website anyunauthorized reproductions of the Rolex Registered Trademarks.

32. Therefore, on or about April 19,2006, Rolex's counsel sent another letter toDefendant further warning Defendant of the consequences of his unauthorized activities andreserving Rolex's rights.

33. Rolex's counsel did not receive a reply to the April 19,2006 letter, andDefendan t 's unau thor ized act iv i ties con tinued .

34. Upon information and belief, on or about September 20,2011, with knowledge ofRolex's objections and with blatant disregard for Rolex's intellectual property rights, Defendantrenewed his registration for the Infringing Domain.

35. On or about October 5,2011, Rolex's counsel again wrote to Defendant againwarning Defendant of the consequences of his continued infringement and cybersquatting, andnotifying Defendant of his willful behavior. Defendant did not respond to this letter.* nriKjrDT ATXTT Perkins Coie llpo- LUMaAIM 1 1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-412879659-0001/LEGAL23475801.1 " Pnne: 503.727.2000

F ax : 5 03. 727 .2 222



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36. To date, despite repeated notice ofRolex's objections, Defendant continues topromote and advertise his goods and services using the Rolex Registered Trademarks without theauthorization ofRolex, including in his domain name, vanity telephone number and on thecontent o f the Website.C. Summary ofDefendant's Unauthorized Activities

37. Defendant intentionally, maliciously and willfully exploited the Rolex RegisteredTrademarks, despite knowing that such actions are unauthorized.

38. Defendant's acts were calculated to confuse and to deceive the public and wereperformed with full knowledge ofRolex'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 theRolex 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 harmto 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 byRolex.

43. By using the Rolex Registered Trademarks, Defendant is trading on the goodwilland reputation ofRolex and creating the false impression that Defendant is affiliated with Rolex.

44. Defendant has been unjustly enriched by improperly using and misappropriatingRolex's intellectual property for his own financial gain. Furthermore, Defendant has unfairlybenefited and profited from Rolex's outstanding reputation for high quality products and itssignificant advertising and promotion ofRolex Watches and the Rolex Registered Trademarks.7 r>r\\Am a txtt Perkins Coie llp/- UJJYLr-LAlN 1 1120 N.W. Couch Street, Tenth Floor


Fax: 503.727.2222



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45. Defendanthas disparagedRolex, the RolexRegistered Trademarksand itsproducts by creatinga false association withRolex, its genuine goodsand theRolexRegisteredTrademarks.

46. Rolex has no control over the nature and quality ofDefendant's goods or services.47. Among other things, Defendant's promotion and advertisement of the Rolex

Registered Trademarks haveandwill reflectadversely onRolex as the believed sourceor originthereof; hampercontinuing effortsby Rolex to protectits outstanding reputation for highquality,originalityand distinctive goods; and tarnish the goodwill and demand for genuine Rolexwatches and products.

48. Upon information and belief, Defendanthas acted with reckless disregard forRolex's rights and/orwas willfully blind in connectionwith unlawful activities. Uponinformation and belief, Defendant has willfully andmaliciously engaged in infringing activities.Therefore, this case constitutes an exceptional case under 15U.S.C. 1117(a).

49. Rolex has suffered irreparable harm and damages as a result ofDefendant'sconduct. The injuries and damages sustained by Rolex have been directly and proximatelycaused 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 theRolex Registered Trademarks.

FIRST CLAIM FOR RELIEF(Trademark Infringement, 15 U.S.C. 1114)52. Rolex hereby incorporates by reference all prior allegations as though fully set

forth herein.53. Based on Rolex's extensive advertising under the Rolex Registered Trademarks,

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

8 rrnvyrm atmt Perkins Coie llpo- UUJVU'L.AIIN 1 1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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have acquired a secondary meaning so that any product and advertisement bearing suchtrademarks is immediately associated by purchasers and the public as being a product andaffiliate o f Rolex.

54. Defendant's act ivi ties const itute Defendant 's use in commerce o f the RolexRegistered Trademarks. Defendant's use of the Rolex Registered Trademarks in connection withDefendant's sale, offers of sale, distribution, promotion and advertisement ofhis goods andservices bearing infringements of the Rolex Registered Trademarks.

55. Defendant has used the Rolex Registered Trademarks, knowing they are theexclusive property ofRolex, in connection with the sale, offers for sale, distribution, promotionand advertisement of his goods and services bearing infringements of the Rolex RegisteredTrademarks.

56. Defendant's activities create the false and misleading impression that Defendant issanctioned, assigned or authorized by Rolex to use the Rolex Registered Trademarks toadvertise, manufacture, distribute, appraise, offer for sale or sell merchandise and/or servicesbearing the Rolex Registered Trademarks when Defendant is not so authorized.

57. Defendant engages in the aforementioned activity with the intent to confuse anddeceive the public into believing that he and the items and/or services that he sells and the itemsand products contained in his advertisements and posters are in some way sponsored, affiliatedor associated with Rolex, when, in fact, they are not.

58. Defendant's use of the Rolex Registered Trademarks has been without the consentofRolex, 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 inDefendant unfairly benefiting from Rolex's advertising and promotion, and profiting from theQ nrw/mi atxtt Perkins Coie llpy- UUJVLrLAlIN 1 j120n.W. Couch Street, Tenth Floor


F ax : 5 03. 727 .2 222



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reputation ofRolex and the Rolex Registered Trademarks, to the substantial and irreparableinjury of the public, Rolex and the Rolex Registered Trademarks and the substantial goodwillrepresented thereby.

60. Defendant's acts constitute willful trademark infringement in violation of Section32 of the Lanham Act, 15 U.S.C. 1114.

61. By reason of the foregoing, Defendant is liable to Rolex for: (a) an amountrepresenting three (3) times Rolex's damage and/or Defendant's illicit profits; and (b) reasonableattorney's fees, investigative fees and pre-judgment interest pursuant to 15 U.S.C. 1117.

SECOND CLA IM FOR RELI EF(Federal Anti-Cybersquatting (Anti Cyberpiracy), 15 U.S.C. 1125(d)(1)(A))62. Rolex hereby incorporates by reference all prior allegations as though fully set

forth herein.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 tothe ROLEX trademark.

64. The Infringing Domain is substantially indistinguishable from, confusinglysimilar to and/or dilutive of the ROLEX trademark in violation of the Anti-CybersquattingConsumer 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 notsponsored or authorized by Rolex.

66. Defendant has no trademark or other intellectual property rights in the InfringingDomain, and Defendant has acted in bad faith with the intent to profit from the goodwill of theROLEX t rademark.

67. Defendant has no bona fide commercial use of the Infringing Domain as thedomain has no separate website.

^(\ pm/DT atxtt Perkins Coie llpiu- CUMFLA1JN 1 1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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68. Defendant re-registered the Infringing Domain after receiving several cease anddesist letters notifying him of his unauthorized activity, thus exhibiting his bad faith registrationand use of the Infringing Domain.

69. Defendant solely uses the Rolex Registered Trademarks to attract users to hisWebsite and leads potential customers to think he is associated with Rolex, thus exhibiting hisbad faith registration and use of the Infringing Domain.

70. Defendant's aforementioned acts constitute Cybersquatting (Cyberpiracy) inviolation of 15U.S.C. 1125(d)(1)(A).

71. By reason of the foregoing, Defendant is liable to Rolex for: (a) Rolex's actualdamages and Defendant's profits; or (b) statutory damages in an amount up to $100,000 perdomain, as provided by 17 U.S.C. 1117(d).

TH IRD CLA IM FOR REL IEF(Unfair Competition, False Designation ofOrigin & False Description, 15 U.S.C. 1125(a))

72. Rolex hereby incorporates by reference all prior allegations as though fully setfo r th here in .

73. In connection with Defendant's advertisement, promotion, distribution, offers ofsale and sale ofhis goods and services, Defendant has used the Rolex Registered Trademarks incommerce.

74. In connection with Defendant's advertisement, promotion, distribution, offers ofsales and sales ofhis goods and services, Defendant has used false designations of origin andfalse and misleading descriptions and representations, including the ROLEX trademark and otherRolex Registered Trademarks, which tend falsely to describe the origin, sponsorship, associationor approval by Rolex of the goods and services Defendant sells.

75. Defendant has used the Rolex Registered Trademarks with full knowledge of thefalsityof such designationsoforigin, descriptionsand representations, all to the detrimentofRolex.

11 nr\\AT>i a tktx Perkins Coie llp11- UUJVLr-LAUN 1 1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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76. Defendant's use of the Rolex Registered Trademarks constitutes false descriptionsand representations tending falsely to describe or represent Defendant, his products and servicesas being authorized, sponsored, affiliated or associated with Rolex.

77. Defendant has used the Rolex Registered Trademarks on the Website with theexpress intent to cause confusion and mistake, to deceive and mislead the public, to trade uponthe reputation ofRolex and to improperly appropriate to himselfthe valuable trademark rights ofRolex. Defendant's acts constitute unfair competition under federal law.

78. Defendant's acts constitute the use in commerce of false designations of originand false and/or misleading descriptions or representations, tending to falsely or misleadinglydescribe and/or represent his products as those ofRolex in violation ofSection 43(a) of theLanhamAct, 15 U.S.C. 1125(a). These acts constitute unfair competition.

PRAYER FOR REL IEF

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 enjoinedand restrained from:

(a) using any reproduction, copy, or colorable imitation of the RolexRegistered Trademarks to identify any goods or the rendering ofanyservices 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 thedistinctive quality of the Rolex Registered Trademarks, Rolex's name,reputation or goodwill;(c) using a false description or representation, including words orother symbols, tending to falsely describe or represent Defendant'sunauthorized goods or services as being those ofRolex or sponsored by orassociated with Rolex and from offering such goods or services incommerce ;

(d) further infringing or diluting theRolex Registered Trademarks bymanufacturing, producing, distributing, circulating, selling, marketing,10 nrw/mx ATxrr Perkins Coie llp1Z" t-UMi'L-AlN 1 1120 N.W. Couch Street, Tenth Floor


Fax: 503.727.2222



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offeringfor sale,advertising, promoting, displayingor otherwisedisposing ofany products or services not authorized by Rolex bearing anysimulation, reproduction, counterfeit, copy or colorable imitation of theRolex Registered Trademarks;(e) using any simulation, reproduction, copy or colorable imitation ofthe Rolex Registered Trademarks in connection with the promotion,advertisement, display, sale, offering for sale, manufacture, production,circulation or distribution ofany unauthorized products or services in suchfashion as to relate or connect, or tend to relate or connect, such productsor 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 anyfalse designation oforigin or false description, or performing any act,which can or is likely to lead the trade or public, or individual membersthereof, to believe that any services provided, products manufactured,distributed, sold or offered for sale, or rented by Defendant are in any wayassociated or connected with Rolex, or are provided, sold, manufactured,licensed, sponsored, approved or authorized by Rolex;(g) acquiring, registering, maintaining or controlling any domainnames that include the ROLEX trademark or any of the other RolexRegistered 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 thanRolex;(h) secreting, destroying, altering, removing, or otherwise dealing withthe unauthorized products or any books or records which contain anyinformation relating to the importing, manufacturing, producing,distributing, circulating, selling, marketing, offering for sale, advertising,promoting, or displaying ofall unauthorized products which infringe theRolex Registered Trademarks; and(i) effecting assignments or transfers, forming new entities orassociations or utilizing any other device for the purpose of circumventingor 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, allimpermissible use of the Rolex Registered Trademarks;

n rr\/fDT a tmt Perkins Coie llpiJ - UUJYLrXAlIN 1 1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL2347580U Phone: 503.727.2000Fax: 503.727.2222



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3. That Defendant, within thirty (30) days ofjudgment, files and serves Rolex with asworn statement setting forth in detail the manner and form inwhich he has compliedwith theinjunctive reliefordered by the Court pursuant to 15U.S.C. 1116(a);

4. That Defendant and/or his Internet Service Provider and/or Registrar be orderedto transfer toRolex the Infringing Domain andanydomain names andwebsites usedbyDefendant to engage in his unauthorized activities concerning the Rolex Registered Trademarks;

5. That Defendant be required to pay to Rolex such damages that Rolex hassustained as a consequence ofDefendant's cybersquatting of the ROLEX trademark and toaccount for all gains, profits and advantages therefrom derived; alternatively, that Rolex beawarded statutory damages pursuant to 15U.S.C. 1117(d) ofup to $100,000;

6. That Defendant be required to pay to Rolex such damages that Rolex hassustainedas a consequenceofDefendant's infringement of the Rolex Registered Trademarks andto 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 withreasonable 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 Rolexto apply to the Court at any time for such further orders and interpretation or execution of anyOrder entered in this action, for the modification of any such Order, for the enforcement orcompliance 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 dischargeunder 11U.S.C. 727 for intentional, malicious, willful and fraudulent injury to Rolex.; and

14 r>r\\/tot a txtt Perkins Coie llp14- COMPLAIN 1 1120 N.W. Couch Street, Tenth FloorPortland, OR 97209-4128

79659-0001/LEGAL23475801.1 Phone: 503.727.2000Fax: 503.727.2222



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10. ThatRolex be awarded suchotherand further reliefas theCourtmaydeem justand proper, together with the costs and disbursements that Rolex has incurred in connection withthis action.

DATED: April 25,2012 PERKINS COIE l lp

15- COMPLAINT

By: ^0>wn^^^9^^^Stephen^!. Feldman, OSB No. [email protected] R. Christensen, OSB No. [email protected] N.W. Couch Street, Tenth FloorPortland, OR 97209-4128Telephone: 503.727.2000Facsimile: 503.727.2222Attorneys for PlaintiffBrian W. B rokat eJohn MacalusoWalter-Michael LeeGIBNEY, ANTHONY & FLAHERTY, LLP665 Fifth AvenueNew York, NY 10022Telephone: 212.688.5151Facsimile : 212.688.8315Of Counsel for Plaintiff

P e r ki ns C o ie llp1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128


rolex watch u.s.a. v. leland stanford hoffman trademark complaint

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