IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

DECKERS OUTDOOR CORPORATION, 

 Plaintiff, 

 v. 

DOES 1-100 and DOES 101-500, 

 Defendants. 

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Case No. 12-cv-00377 

 Honorable Ronald A. Guzman 

 Magistrate Sheila M. Finnegan

PLAINTIFF’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR CONTEMPT

AND TO DISABLE NEWLY DISCOVERED WEBSITES

 Plaintiff Deckers Outdoor Corporation (“Deckers”) submits the following memorandum 

in support of its Motion for Contempt against the defendants DOES 1-100 d/b/a the aliases 

identified on Schedule “A” to Deckers’ Complaint (collectively “the Defendants”) based on 

Deckers’ action for trademark infringement and counterfeiting. 

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STATEMENT OF FACTS

 Deckers filed this action on January 18, 2012, alleging federal trademark infringement 

and counterfeiting (Count I), false designation of origin (Count II), cyberpiracy (Count III) and 

violation of the Illinois Uniform Trade Practices Act (Count IV) based on sales counterfeit UGG 

products over Internet websites. (Docket Entry 5). On January 27, 2012, the Court granted 

Deckers’ ex parte Application for Entry of a temporary restraining order and subsequently 

converted it into a preliminary injunction. (Docket Entries 14, 20, 30, 34 and 36). On April 11, 

2012, this Court entered default judgment awarding damages and a permanent injunction (the 

“Order”) against Defendants enjoining them from further sales of counterfeit UGG products. 

(Docket Entry 51). The Order, among other things, also transferred permanent control of the 

Defendant Domain Names to Deckers and awarded Deckers all funds in frozen PayPal accounts 

as partial payment of damages awarded by this Court. Id. 

 Deckers has since identified additional Defendant Domain Names attached hereto 

as Schedule A1 (the “New Defendant Domain Names”) which Defendants are using to continue 

their sale of counterfeit UGG products in defiance of this Court’s Order. See Declaration of 

Justin R. Gaudio (the “Gaudio Declaration”), at ¶ 2. Deckers respectfully requests that this Court 

enter an Order transferring control of the New Defendant Domain Names to Deckers so that they 

can be disabled. Identical relief against other domain names operated by Defendants and linked 

to websites selling counterfeit UGG products has already been granted by this Court. In 

addition, it is clear the each of the New Defendant Domain Names is owned and operated by one 

of the Defendants because the unique registration email address for each of the newly discovered 

infringing domain names is identical to a registrant email address listed in Schedule A to the 

Complaint. A chart linking each of the New Defendant Domain Names with a registrant email 

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address listed in Schedule A is attached to the Gaudio Declaration as Exhibit 3. Gaudio 

Declaration at ¶ 3. As such, Deckers respectfully requests that this Court enter an order 

transferring the New Defendant Domain Names to Deckers control so they can be shut down to 

prevent further counterfeit UGG sales. 

 

ARGUMENT

 Civil contempt proceedings arise under 18 U.S.C. § 401(3), which states in pertinent part: 

“[a] court of the United States shall have power to punish by fine or imprisonment, or both, at its 

discretion, such contempt of its authority, and none other, as ... [d]isobedience or resistance to its 

lawful writ, process, order, rule, decree, or command.” “The purpose of a civil contempt 

proceeding is either enforcement of a prior court order or compensation for losses suffered as a 

result of non-compliance with that order.” TMT N. Am., Inc., v. Magic Touch GmbH, 57 

F.Supp.2d 586, 589 (N.D.Ill.1999) (quoting *883 Miller v. LeSea Broad., Inc., 927 F.Supp. 

1148, 1149–50 (E.D.Wis.1996)). The complaining party must prove by clear and convincing 

evidence that the opposing party violated a court order. Stotler & Co. v. Able, 870 F.2d 1158, 

1163 (7th Cir.1989). To hold a party in contempt, this Court “must be able to point to a decree 

from the court which sets forth in specific detail an unequivocal command which the party 

in contempt violated.” Ferrell v. Pierce, 785 F.2d 1372, 1378 (7th Cir.1986). The court need not 

find that the violation was “willful” to find civil contempt. Commodity Futures Trading Comm'n 

v. Premex, Inc., 655 F.2d 779, 784 n. 9 (7th Cir.1981). Rather, the court may find a party in 

contempt if it has not been “reasonably diligent and energetic in attempting to accomplish what 

was ordered.” Am. Fletcher Mortgage Co. v. Bass, 688 F.2d 513, 517 (7th 

Cir.1982) (quoting Powell v. Ward, 643 F.2d 924, 931 (2d Cir.1981)). 

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 Despite entry a permanent injunction in the Order, Defendants continue promoting, 

advertising, distributing, offering for sale and selling counterfeit products, including boots 

bearing counterfeit versions of Deckers’ UGG Trademark, through various fully interactive 

commercial Internet websites operating under the New Defendant Domain Names listed in 

Schedule A1. Gaudio Declaration at ¶ 4. Like the original Defendant Domain Names, 

Defendants continue to facilitate sales by operating websites at the New Defendant Domain 

Names so that they appear to unknowing consumers to be authorized online retailers selling 

genuine UGG products. Id. at ¶¶ 2 and 4. The websites are sophisticated-looking and most are 

written in English and accept U.S. dollars. Id. Many of the New Defendant Domain Names also 

incorporate Deckers’ UGG trademark and include Deckers’ copyright-protected images and 

product descriptions, making it very difficult for a consumer to distinguish such sites from an 

authorized retailer. Id. Deckers has not licensed or authorized Defendants to use its UGG mark 

and none of the Defendants are authorized resellers of UGG products. Id. In similar cases, 

courts have entered injunctions against online counterfeiters that continued to operate websites 

selling counterfeit products after a permanent injunction has been issued. See Tory Burch, LLC., 

et al. v. Yong Sheng Int’l Trade Co., LTD, No. 10-Civ-9336 (S.D.N.Y. December 14, 2011, 

January 1, 2012 and April 11, 2012); The National Football League and NFL Properties LLC v. 

Chen Cheng, et al., No. 11-Civ-0344 (S.D.N.Y. March 24, 2011); The North Face Apparel 

Corp. and PRL USA Holdings, Inc. v. Fujian Sharing, No. 10-Civ-1630 (S.D.N.Y. March 2, 

2010). In each of these cases, the court granted relief allowing plaintiffs to shut down newly 

discovered domain names and recover assets linked to counterfeit websites. 

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CONCLUSION

 Deckers respectfully requests that the Court enter the proposed Order transferring control 

of the New Defendant Domain Names to Deckers so that they can be disabled to prevent further 

counterfeit UGG sales. 

Dated this 17th day of May 2012. Respectfully submitted, 

__/s/ Justin R. Gaudio_______________

Kevin W. Guynn 

Amy Ziegler 

Justin R. Gaudio 

Greer, Burns & Crain, Ltd. 

300 South Wacker Drive 

Suite 2500 

Chicago, Illinois 60606 

312.360.0080 

312.360.9315 (facsimile) 

jgaudio@gbclaw.net 

kguynn@gbclaw.net 

aziegler@gbclaw.net 

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CERTIFICATE OF SERVICE

 I hereby certify that on the 17th day of May, 2012, I will electronically file the foregoing 

with the Clerk of the Court, using the CM/ECF system and that I will e-mail the documents to all 

Defendants at the e-mail addresses identified in Schedule A to Deckers’ Complaint. 

 

Greer, Burns & Crain Ltd. 

Attorneys for Plaintiff Deckers, 

__/s/ Justin R. Gaudio_______________

Kevin W. Guynn 

Amy Ziegler 

Justin R. Gaudio 

Greer, Burns & Crain, Ltd. 

300 South Wacker Drive 

Suite 2500 

Chicago, Illinois 60606 

312.360.0080 

312.360.9315 (facsimile) 

jgaudio@gbclaw.net 

kguynn@gbclaw.net 

aziegler@gbclaw.net 

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