NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

 FOR THE NINTH CIRCUIT

BMW OF NORTH AMERICA, LLC;

BAYERISCHE MOTOREN WERKE AG,

 Plaintiffs - Appellees,

 v.

VICTOR BARREIRA,

 Defendant - Appellant,

 And

MINI WORKS, LLC; POLE POSITION

PARTNERS GROUP, LLC; POLE

POSITION USA, LLC; LINDA

SHARABY,

 Defendants.

No. 14-15215

D.C. No. 2:07-cv-01936-SMM

MEMORANDUM*

Appeal from the United States District Court

for the District of Arizona

Stephen M. McNamee, Senior District Judge, Presiding

FILED

DEC 15 2015

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

 * This disposition is not appropriate for publication and is not precedent

except as provided by 9th Cir. R. 36-3.
Submitted December 11, 2015** 

San Francisco, California

Before: BYBEE and CHRISTEN, Circuit Judges and CHEN,*** District Judge.

 

The facts are known to the parties, and we repeat them here only as

necessary to explain our decision. 

Appellant Victor Barreira appeals on two grounds: First, he argues that the

district court incorrectly determined that he was in violation of its 2010 order

enjoining him from specific uses of Appellees’ (collectively “BMW”) “MINI”

trademarks; and second, he argues that the district court improperly modified its

injunction by forcing him to turn over control of the <miniworks.com> domain

name to BMW. We have jurisdiction under 28 U.S.C. § 1291, and for the reasons

outlined below, we affirm.

1. The district court’s finding that Barreira was in violation of its 2010

injunction was not clearly erroneous. See ACF Indus. Inc. v. Cal. State Bd. of

Equalization, 42 F.3d 1286, 1289 (9th Cir. 1994). Despite the injunction’s clear

prohibition, Barreira continued to feature BMW’s “MINI” mark on his

<miniworks.com> website, and continued to accept online orders for “Mini

 ** The panel unanimously concludes this case is suitable for decision

without oral argument. See Fed. R. App. P. 34(a)(2).

 *** The Honorable Edward M. Chen, District Judge for the U.S. District

Court for the Northern District of California, sitting by designation.
Works”-branded apparel. Barreira responds that he did not actually complete any

sales of the enjoined merchandise. But even an offer to sell goods with an

infringing trademark establishes liability under the Lanham Act. See 15 U.S.C.

§ 1114(1)(a); see also Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1312 (9th Cir.

1997) (“The [Lanham Act] does not require that the defendant . . . make an actual

sale. An offer to sell without more will suffice to establish liability.”). 

Barreira’s assertion that he owns a French trademark registration for BMW’s

marks does not excuse compliance with the district court’s order enjoining their

use on a United States-hosted website. See Grupo Gigante SA De CV v. Dallo &

Co., Inc., 391 F.3d 1088, 1097–98 (9th Cir. 2004). Additionally, assuming without

deciding that Barreira’s “reverse domain name hijacking” claim is valid in the

Ninth Circuit,1it fails because he cannot show that his “registration or use of the

domain name is not unlawful under the Lanham Act.” Hawes v. Network

Solutions, Inc., 337 F.3d 377, 383–85 (4th Cir. 2003) (quotation marks omitted).

2. The district court’s modification of its 2010 injunction was not an abuse

of discretion. See ACF Indus. Inc., 42 F.3d at 1289. A district court is authorized

to modify an injunction in consideration of new facts, see A&M Records v.

Napster, Inc., 284 F.3d 1091, 1098 (9th Cir. 2002), and courts are specifically

1

 This Court has never passed on the existence of a “reverse domain name

hijacking” claim under the Anticybersquatting Consumer Protection Act, and we

need not do so here.
empowered to “order . . . the transfer of [a] domain name to the owner of the

mark,” 15 U.S.C. 1125(d)(1)(C). In light of Barreira’s continued non-compliance

with the 2010 injunction, the district court did not abuse its discretion by ordering

Barreira to transfer ownership of the <miniworks.com> domain name to BMW.

2

AFFIRMED. 

2

 Barreira's assertion that the district court could not order transfer of the

website because it was registered to MiniWorks, LDA (a Portuguese company) and

his father, neither of whom is a party to this litigation, lacks merit. The district

court found Barreira had control over the website, a fact proven by his ability to

effect transfer of the website. Moreover, neither MiniWorks, LDA nor Barreira's

father made any attempt to intervene and prevent the transfer despite their

knowledge of the district court’s order.