IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

DECKERS OUTDOOR CORPORATION, 

 Plaintiff, 

 v. 

DOES 1-1,281 d/b/a the aliases identified on 

Schedule “A”, 

 

 Defendants. 

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Case No. 12-cv-01973 

 Judge Sharon Johnson Coleman

 Magistrate Susan E. Cox

MEMORANDUM IN SUPPORT OF PLAINTIFF DECKERS OUTDOOR 

CORPORATION’S EX PARTE APPLICATION FOR ENTRY OF A (1) TEMPORARY 

RESTRAINING ORDER, (2) DOMAIN NAME TRANSFER ORDER, (3) ASSET 

RESTRAINING ORDER, (4) EXPEDITED DISCOVERY ORDER AND 

(5) SERVICE OF PROCESS BY EMAIL AND ELECTRONIC PUBLICATION ORDER

 Plaintiff Deckers Outdoor Corporation (“Deckers”) submits this Memorandum in 

support of its Ex Parte Application for Entry of Temporary Restraining Order, Domain Name 

Transfer Order, Asset Restraining Order, Expedited Discovery Order and Service of Process by 

Email and Electronic Publication Order (the “Ex Parte Application”). This action is 

substantially similar to Deckers Outdoor Corporation v. Does 1-100, No. 12 Civ. 377, Docket 

Nos. 20, 30 and 35 (N.D. Ill. 2012); Deckers Outdoor Corporation v. Liyanghua et al., No.11 

Civ. 7970, Docket Nos. 18, 37 and 42 (N.D. Ill. 2011) and Deckers Outdoor Corporation v. Does 

1-55, No. 11 Civ. 10, Docket Nos. 26, 38 and 69 (N.D. Ill. 2011) where virtually identical relief 

was granted against defendants selling counterfeit UGG products on the Internet. See unreported 

decisions attached as Exhibit 6 to the Declaration of Justin R. Gaudio. 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 1 of 42 PageID #:26
ii

TABLE OF CONTENTS

I. INTRODUCTION ................................................................................................................... 1 

II. STATEMENT OF FACTS ....................................................................................................... 2 

A. Deckers’ Trademarks and Products ..................................................................................... 2 

B. Defendants’ Illegal Activities .............................................................................................. 4 

III. ARGUMENT ........................................................................................................................... 6 

A. Standard for Temporary Restraining Order and Preliminary Injunction ............................. 9 

B. Deckers will Likely Succeed on the Merits ....................................................................... 10 

i. Deckers Will Likely Succeed on its Trademark Infringement and Counterfeiting Claim.

 .......................................................................................................10 

ii. Deckers is Likely to Succeed on its False Designation of Origin Claim ....................... 14 

iii. Deckers is Likely to Succeed on its Cyberpiracy Claim ................................................ 14 

1. Deckers’ UGG Trademark is Distinctive and Famous .............................................. 15 

2. Defendants Have a Bad Faith Intent to Profit from Deckers’ UGG Trademark ....... 15 

3. The Domain Names are Identical or Confusingly Similar to or Dilutive to Deckers’ 

UGG Tra.demark ....................................................................................................... 17 

iv. Deckers is Likely to Succeed on its Illinois Uniform Deceptive Trade Practice Act 

Claim ................................................................................................................................. 18 

C. There is No Adequate Remedy at Law and Deckers is Likely to Suffer Irreparable Harm 

in the Absence of Preliminary Relief ................................................................................. 18 

D. The Balancing of Harms Tips in Deckers’ Favor ............................................................. 19 

E. This Injunction is in the Public Interest ............................................................................. 20 

VI. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE ............................................ 21 

A. A Temporary Restraining Order Immediately Enjoining Defendants’ Unauthorized and 

Illegal Use of the Deckers Marks is Appropriate ............................................................... 21 

B. An Order Transferring the Defendant Domain Names to Deckers’ Control is 

Appropriate.......... ........................................................................................................... 23 

C. An Order Preventing the Fraudulent Transfer of Assets is Appropriate ........................... 24 

D. Deckers is Entitled to Expedited Discovery ...................................................................... 27 

E. Service of Process by E-mail and Electronic Publication is Warranted in this Case ........ 28 

V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF ............................................... 32 

VI. CONCLUSION...................................................................................................................... 33

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iii

TABLE OF AUTHORITIES

Federal Cases 

Abbot Laboratories v. Mead Johnson & Company, 

971 F.2d 6, 11 (7th Cir. 1992) 

Albert Furst von Thurn und Taxis v. Karl Prince von Thurn und Taxis, 

2006 WL 2289847, *13 (S.D.N.Y. Aug. 8, 2006) 

American Broadcasting Company v. Maljack Productions, Inc., 

34 F. Supp. 2d 665, 681 (N.D. Ill. 1998). 

Anti-Defamation League of B'Nai B'Rith v. National Mexican-American Anti-Defamation 

Committee., Inc., 

510 F.2d 1246, 1247 (D.C.Cir.1975) 

Board of Directors of Sapphire Bay Condominiums West v. Simpson, 

77 U.S.P.Q. 2d (BNA) 1629, 129 Fed. Appx. 711 (3rd Cir. 2005) 

Bliss Salon Day Spa v. Bliss World LLC, 

268 F.3d 494, 496-97 (7th Cir.2001) 

Brockmeyer v. May, 

383 F.3d 798, 800 (9th Cir., 2004) 

Builder's World, Inc v. Marvin Lumber & Cedar, Inc., 

482 F.Supp.2d 1065, 1078 (E.D.Wisc.2007) 

Burger King Corp. v. Majeed, 

805 F. Supp. 994, 1006 (S.D. Fla. 1992) 

CAE, Inc. v. Clean Air Engineering, Inc., 

267 F.3d 660, 681 (7th Cir. 2001) 

Chanel, Inc. v. Does 7-172, et al., 

No. 2:10-cv-02684-BBD-dkv (W. D. Tenn. Nov. 1, 2010) 

Chanel, Inc. v. Paley, 

No. 09-cv-04979-MHP (N.D. Cal. Oct. 26, 2009) 

Chanel, Inc. v. Zhixian, 

No. 10-cv-60585-JIC (S.D. Fla. May 5, 2010) 

Charter National Bank and Trust v. Charter One Financial, Inc., 

2001 WL 527404, *1 (N.D.Ill. May 15, 2001)

Columbia Pictures Industries, Inc. v. Jasso, 927 F.Supp 1075, 1077 (N.D. Ill. 1996) 

Deckers Outdoor Corporation v. Does, 1-55, et al., 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 3 of 42 PageID #:28
iv

No. 10 Civ. 11 (N.D. Ill. October 18, 2011) 

Deckers Outdoor Corporation v. Liyanghua et al., 

No.11 Civ. 7970 (N.D. Ill. 2011) 

Deckers Outdoor Corporation v. Does 1-100, 

No. 12 Civ. 377 (N.D. Ill. 2012) 

Diarama Trading Company, Inc. v. J. Walter Thompson U.S.A., Inc., 

2005 WL 2148925, *12 (S.D.N.Y. Sept. 6, 2005) 

Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 381 (7th Cir.1996) 

Doty v. Illinois Central Railroad Co., 162 F.3d 460, 461 (7th Cir.1998) 

Dunkin Donuts Franchised Restaurants LLC v. Elkhatib, 

2009 WL 2192753, *4 (N.D. Ill. July 17, 2009) 

Eli Lilly & Co. v. Natural Answers, Inc., 

233 F.3d 456, 468 (7th Cir. 2000) 

Farouk Systems, Inc. v. Eyou Int’l Trading Co., Ltd., et al 

No. 4:10 CV 2672 (S.D. Tex. Aug. 2, 2010) 

Ford Motor Company v. Lapertosa, 

126 F. Supp. 2d 463 (E.D. Mich. 2000) 

Ford Motor Co. v. Summit Motor Products, Inc., 

930 F.2d 277, 293 (3rd Cir. 1991) 

Frederick Atkins, Inc. v. Carson Pirie Scott & Co., Inc., 

1999 WL 1249342, *1 (N.D. Ill. Dec. 13, 1999) 

G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 

873 F.2d 985, 999 (7th Cir.1989) 

Gause v. Perkins, 

56 N.C. (3 Jones Eq.) 177 (1857) 

General Baking Company v. Gorman, 

3 F.2d 891, 893 (1st Cir. 1925) 

Gillespie v. Civiletti, 

629 F.2d 637, 642 (9th Cir. 1980) 

Goldwyn Pictures Corp. v. Goldwyn, 

296 F. 391, 401 (2d Cir. 1924) 

Graham v. Medical Mutual of Ohio, 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 4 of 42 PageID #:29
v

130 F.3d 293, 296 (7th Cir. 1997) 

Gucci Am., Inc. v. Curveal Fashion, 

No. 09 Civ. 8458 (S.D.N.Y. Jan. 20, 2010) 

Gucci America, Inc. v. Does 1-10, 

No. 10-cv-60328-JAL (S.D. Fla. Mar. 22, 2010) 

Gucci America, Inc. and Louis Vuitton Malletier, S.A. v. Yan, 

No. 10-cv-61512-WPD (S.D. Fla. Aug. 20, 2010) 

Habitat Educ. Ctr. v. U.S. Forest Serv., 

607 F.3d 453, 456 (7th Cir. 2010) 

Harrods Ltd. v. Sixty Internet Domain Names, 

302 F.3d 214, 234 (4th Cir. 2002) 

Harrods Ltd. v. Sixty Internet Domain Names, 

157 F. Supp. 2d 658, 677-78 (E.D. Va. 2001) 

Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 

174 F.3d 411 (4th Cir. 1999) 

Iconix v. Tokuda, 

457 F. Supp. 2d 969, 999 (N.D. Cal. 2006) 

Ideal Industries, Inc. v. Gardner Bender, Inc., 

612 F.2d 1018, 1026 (7th Cir. 1979) 

James Burrough Ltd. v. Sign of Beefeater, Inc., 

540 F.2d 266, 274 (7th Cir. 1976) 

Juniper Networks, Inc. v. Bahattab, 2008 WL 250584, *1-2, (D.D.C. Jan. 30, 2008) 

Kentucky Fried Chicken Corp. v. Smith, 351 F. Supp. 1311, 1313 (E.D.Mich.1972) 

Kraft Food Holdings, Inc. v. Helm, 

205 F. Supp. 2d 942, 956 (N.D. Ill. 2002) 

Krause International Inc. v. Reed Elsevier, Inc., 

866 F. Supp. 585, 587-88 (D.D.C. 1994) 

Lamparello v. Falwell, 

420 F.3d 309, 316 (4th Cir. 2005) 

Levi Strauss & Co. v. Sunrise International Trading Inc., 

51 F.3d 982, 987 (11th Cir. 1995) 

Libman Co. v. Vining Industries, Inc., 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 5 of 42 PageID #:30
vi

69 F.3d 1360, 1363 (7th Cir.1995) 

Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., 

2005 WL 3115892 (N.D. Ill. Nov. 8, 2005) 

Louis Vuitton Malletier & Oakley, Inc. v. Veit, 

211 F. Supp. 2d 567, 584-585 (D. Pa. 2002) 

Lucas Nursery v. Grosse, 

359 F.3d 806, 809 (6th Cir. 2004) 

MacLean-Fogg Company v. Ningbo Fastlink Equipment Company Ltd., 

2008 WL 5100414, *2 (N.D. Ill. Dec. 1, 2008) 

Malarkey-Taylor Assocs., Inc. v. Cellular Telecommunications Industry Association,

929 F. Supp. 473, 478 (D.D.C. 1996). 

Mascio v. Public Employment Retirement System of Ohio, 

160 F. 3d 310, 313 (6th Cir. 1998) 

Nanya Technology Corp. v. Fujitsu Ltd., No. 

2007 WL 269087, *6 (D. Guam Jan. 26, 2007) 

Nat’l Football League v. Chen Cheng, No. 11 Civ. 0344 (S.D.N.Y. Jan. 31, 2011) 

Neopost Industries B.V. v. PFE International Inc., 

 403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) 

The North Face Apparel Corp., et al. v. Fujian Sharing Import & Export Ltd. Co., et al., 

No. 10 CIV 1630 (S.D.N.Y. Mar. 16, 2010) 

Oppenheimer Fund, Inc. v. Sanders, 

437 U.S. 340, 351 (1978) 

Philip Morris USA, Inc. v. Veles Ltd., 

 2007 WL 725412, *1 (S.D.N.Y. Mar. 12, 2007) 

Popular Enterprises, LLC v. Webcom Media Group, Inc., 

225 F.R.D. 560, 563 (E.D. Tenn. 2004) 

Rathman Group v. Tanenbaum, 

889 F.2d 787, 789 (8th Cir. 1987) 

Reebok Int'l Ltd. v. Marnatech Enters., 

970 F.2d 552, 559 (9th Cir. 1992). 

Re/Max North Cent., Inc. v. Cook, 

272 F.3d 424, 432 (7th Cir. 2001) 

Rio Props, Inc. v. Rio Int’l Interlink, 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 6 of 42 PageID #:31
vii

284 F.3d 1007, 1014 (9th Cir. 2002) 

Rosenberg Bros. & Co. v. Elliott, 

7 F.2d 962, 965-66 (3rd Cir. 1925) 

Shashi, Inc. v. Ramada Worldwide, Inc., 

2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005) 

Smith Fiberglass Productss., Inc. v. Ameron, Inc., 

 7 F.3d 1327, 1329 (7th Cir.1993) 

Spex, Inc. v. The Joy of Spex, Inc., 

847 F. Supp. 567, 579 (N.D. Ill. 1994) 

Sporty’s Farm, LLC v. Sportsman’s Market, Inc., 

202 F.3d 489, 498 (2d Cir. 2000) 

Stahly, Inc. v. M.H. Jacobs Co., 

183 F.2d 914, 917 (7th Cir. 1950) 

Stork Restaurant, Inc., v. Sahati, 

166 F.2d 348, 354 (9th Cir. 1948) 

Thompson v. Spring-Green Lawn Care Corp., 

126 Ill. App. 3d 99, 104-105 (Ill. App. Ct. 1984) 

Time Warner Enterprises Co. v. Does #1-2, et al. 

876 F. Supp. 407. 410-11 (E.D.N.Y. 1994) 

Tory Burch, LLC., et al. v. Yong Sheng Int’l Trade Co., LTD, 

No. 10 Civ. 9336 (S.D.N.Y. May 13, 2011) 

Trans Union LLC v. Credit Research, Inc., 

142 F. Supp. 2d 1029 (N.D. Ill. 2001) 

True Religion Apparel, Inc. et al. v. Xiaokang Lee et al., 

No. 11 Civ. 8242 (S.D.N.Y. Dec. 12, 2011) 

TY, Inc. v. The Jones Group, Inc., 

 237 F.3d 891 at 895 (7th Cir. 2001). 

Vance v. Rumsfeld 

2007 WL 4557812, *6 (N.D.Ill. Dec. 21, 2007) 

Virtual Works, Inc. v. Volkswagen of America, Inc., 

238 F.3d 264, 267 (4th Cir. 2001) 

In re Vuitton et Fils, S.A., 

606 F.2d 1 (2d Cir. 1979) 

Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 

906 F.2d 1202, 1204 (7th Cir. 1990). 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 7 of 42 PageID #:32
viii

Williams v. Advertising Sex LLC, 2 

31 F.R.D. 483, 488 (N.D. West Va. 2005) 

Williams-Sonoma, Inc. v. FriendFinder, Inc., 2007 WL 4973848, *4 (N.D. Cal. Dec. 6, 2007) 

Federal Statutes 

Fed. R. Civ. P. 4(f)(2) 

Fed. R. Civ. P. 4(f)(3) 

Fed. R. Civ. P. 26(b)(2) 

Fed. R. Civ. P. 30(b) 

Fed. R. Civ. P. 34(b)

Fed. R. civ. P. 64 

Fed. R. Civ. P. 65 

Fed. R. Civ. P. 65(b) 

15 U.S.C. § 1114 

15 U.S.C. § 1114(1) 

15 U.S.C. § 1116(a) 

15 U.S.C. § 1117 

15 U.S.C. § 1125(d) 

15 U.S.C. § 1125(d)(1)(A) 

15 U.S.C. § 1125 (d)(1)(B)(i) 

Other Authorities 

Copyright Act § 501 

4 Callman, Unfair Competition, Trademarks and Monopolies s 88.3(b) at 205 (3d ed. 1970) 

20 U.S.T. 361 (U.S.T. 1969) 

Case: 1:12-cv-01973 Document #: 8 Filed: 03/20/12 Page 8 of 42 PageID #:33
1 

MEMORANDUM OF LAW 

I. INTRODUCTION 

 Plaintiff Deckers Outdoor Corporation (“Deckers”) brings this action against Defendants 

Does 1-101 d/b/a/ the aliases identified in “Schedule A” and Does 102-500 (collectively the 

“Defendants”), for 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). As alleged in Deckers’ Complaint, the Defendants are 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 at least the Defendant Domain Names and Marketplace Accounts listed 

in Schedule A attached to the Complaint (collectively the “Defendant Internet Stores”). 

 Defendants directly target unlawful business activities toward consumers in Illinois and 

cause harm to Deckers’ business within this Judicial District and have caused and will continue 

to cause irreparable injury to Deckers. Defendants deceive the public by trading upon Deckers’ 

reputation and goodwill by using interactive websites to sell and/or offer for sale unlicensed and 

counterfeit products featuring Deckers’ trademarks. Defendants should not be permitted to 

continue their unlawful activities and Deckers respectfully requests that this Court issue ex parte: 

(1) a temporary restraining order against Defendants enjoining the manufacture, importation, 

distribution, offer for sale, and sale of counterfeit UGG products; (2) an order temporarily 

transferring Defendants’ Domain Names to Deckers; (3) an order temporarily restricting transfer 

of Defendants’ assets to preserve Deckers’ rights to an equitable accounting; (4) an order for 

expedited discovery allowing Deckers to inspect, and copy Defendants’ records relating to the 

manufacture, distribution, offer for sale and sale of counterfeit UGG products and Defendants’ 

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2

financial accounts; and (5) an order allowing service by electronic mail and electronic 

publication. 

II. STATEMENT OF FACTS 

A. Deckers’ Trademarks and Products 

Deckers holds registrations for the trademark UGG® (and stylized variations) in more 

than 100 countries around the world including, in the United States, Reg. No. 3,050,925 (the 

“UGG Trademark”). See Exhibit 1 and Declaration of Leah Evert-Burks Declaration, hereinafter 

“Evert-Burks Declaration,” at ¶ 3. Deckers’ UGG Trademark is used on footwear and other 

products and is famous with consumers worldwide, particularly with sheepskin footwear 

consumers. Deckers extensively markets the UGG brand in the United States and other countries 

and (together with predecessors) has spent tens of millions of dollars since 1979 to build the 

UGG brand. Evert-Burks Declaration at ¶ 5. 

 Deckers’ innovative marketing and product design have earned the UGG brand numerous 

awards and accolades including 2003 and 2011 Brand of the Year honors in Footwear News and

2004, 2007, 2008, 2009 and 2010 Brand or Boot of the Year honors in Footwear Plus, two 

leading industry publications. Id. at ¶ 7. Deckers was also selected as one of Forbes Best 200 

Small Companies for multiple consecutive years. Id. at ¶ 7. 

 Moreover, Deckers’ extensive marketing and innovative footwear designs have led to 

unprecedented growth in UGG brand sales. In 2011, the brand experienced its 14th straight year 

of double digit sales growth and Deckers’ UGG brand annual sales have increased from $18.3 

million in 1995 to $1.37 billion in 2011. Id. at ¶ 8. The October 27, 2008 article in Footwear 

News Magazine entitled “UGG Gives Footwear Retailers a Big Boost,” details the strength of 

UGG brand sales in an otherwise flat footwear market. Id. at ¶ 9. A 2010 Wall Street Journal

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Magazine article entitled “The Golden Fleece” further discusses the popularity of the UGG 

brand. Id. at ¶ 9. 

 UGG brand marketing and online sales represents a significant portion of Deckers’ 

business. Since at least 1999, Deckers has operated a website at <www.uggaustralia.com> 

where it promotes and sells genuine UGG brand footwear and other UGG products. Id. at ¶ 10. 

Deckers also uses other domain names which redirect to this location. Id. at ¶ 10. Deckers’ 

<www.uggaustralia.com> website is extraordinarily successful, with 2011 e-commerce UGG 

sales totaling over $98 million. Id. at ¶ 10. 

 Numerous magazines and newspapers have written stories about the widespread 

popularity of the UGG brand including Entertainment Weekly and Forbes. Id. at ¶ 11. The 

continual success and popularity of the UGG brand as a highly sought-after item (including 

through Internet sales) is reflected in search term results on popular online search engines and 

auction sites. The Wall Street Journal reported that “UGG boots” was the most searched-for 

apparel item for the four week period ending December 3, 2011. Id. at ¶ 11. According to Time

Magazine, the three most searched fashion terms on the Internet over the 2007 holiday season 

were UGG, UGGS, and UGG BOOTS. Id. at ¶ 11. 

 The UGG brand has also become well-known as being a favorite of internationally 

known celebrities, many of which are featured in photographs published on the Internet, 

including Kate Moss, Sienna Miller, Hilary Duff, Jennifer Aniston, Eva Longoria, and Teri 

Hatcher. Id. at ¶ 12. Widespread and international media coverage for the UGG brand in 

multiple fashion and celebrity-oriented magazines has occurred in the U.S. and elsewhere, 

including articles in Elle and Vogue Australia. Id. at ¶ 12. Deckers augments this unsolicited 

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media coverage with extensive paid advertising in upscale luxury magazines worldwide such as 

Elle, Glamour and Vogue. Id. at ¶ 12. 

Media exposure of the UGG brand is not limited to print periodicals. UGG boots have 

also been featured on many television shows seen around the world, including Sex and the City 

and the popular game show Jeopardy!. Id. at ¶ 13. UGG boots have also been on the Oprah 

Winfrey Show where Ms. Winfrey has named a Deckers boot as one of her favorite things in her 

annual “Holiday Favorite Things” segment five times including 2000, 2003, 2005, 2007 and 

2010. Id. at ¶ 13. The widespread fame of the UGG brand for footwear has allowed Deckers to 

successfully extend the brand into clothing and accessories. Id. at ¶ 14. 

B. Defendants’ Illegal Activities 

 Deckers’ widespread fame and reputation has resulted in significant counterfeiting of the 

UGG Brand. As part of Deckers’ ongoing enforcement activities regarding the sale of 

counterfeit products, Deckers regularly investigates suspicious websites and marketplace listings 

identified in Internet sweeps and reported by consumers. See Declaration of Justin R. Gaudio, 

hereinafter “Gaudio Declaration” at ¶ 2. Since 2011, Deckers identified over 17,000 domain 

names linked to fully interactive websites and 125,000 marketplace listings on platforms such as 

iOffer, including the Defendant Internet Stores, which were offering for sale, selling and 

importing counterfeit UGG products to consumers in this Judicial District and throughout the 

United States. Id. The Defendants are falsely representing to consumers that their counterfeit 

goods are genuine, authentic, endorsed, and authorized by Deckers. Id at ¶¶ 2-3. Ultimately, the 

Defendant Internet Stores collectively amount to a massive illegal operation infringing on the 

intellectual property rights of Deckers and others. Id. 

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 Deckers’ investigation indicates Defendants are an interrelated group of counterfeiters 

acting in active concert or copying from each other and are knowingly and willfully 

manufacturing, importing, distributing, offering for sale and selling products bearing counterfeit 

versions of the UGG Trademark to Illinois residents. Id. at ¶ 4. Defendants are directly and 

personally contributing to, inducing and engaging in the sale of counterfeit UGG products as 

alleged herein, and on information and belief, often times as partners, coconspirators and/or 

suppliers in the same transaction, occurrence, or series of transactions or occurrences. Id. The 

counterfeit products for sale on the Defendant Internet Stores bear similar irregularities and 

indicia of being counterfeit to one another, indicating that the counterfeit products were 

manufactured by and come from a common source and that Defendants are interrelated. Id. In 

addition, the Defendant Internet Stores include multiple similarities, such as layout, text and 

copyright protected images copied from Deckers’ uggaustralia.com website. Id. at ¶¶ 3-4. 

 Defendants use multiple fictitious names and addresses to register domain names. Id. at 

¶¶ 3 and 5. Many of Defendants’ names and addresses used to register the Defendant Domain 

Names are incomplete, randomly typed letters, contain street addresses with no cities or states 

listed or use a privacy service. Id. Deckers’ investigation also suggests that many of the aliases 

used to register the Defendant Domain Names are used by the same individual or entity. Id. 

Deckers’ investigation has been unable to identify a legitimate address for any of the Defendants. 

Id. 

 Defendants facilitate sales by designing their websites and marketplace listings so that 

they appear to unknowing consumers to be authorized online retailers selling genuine UGG 

products. Id. at ¶¶ 3 and 6. The websites and marketplace listings are sophisticated-looking, 

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

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6

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. The Defendant 

Internet Stores accept payment via credit card or PayPal and ship the counterfeit products in 

small quantities Protection via the U.S. postal service to minimize detection by U.S. Customs 

and Border Protection. Id. Defendants further perpetuate the illusion of legitimacy by offering 

“live 24/7” customer service and using indicia of authenticity and security that consumers have 

come to associate with authorized retailers, including the McAfee® Security, VeriSign®, Visa®, 

MasterCard® and PayPal® logos. Id. 

 Defendants also attempt to deceive unknowing consumers by using Deckers’ trademarks 

without authorization within the content, text and/or meta tags of their websites in order to attract 

various search engines crawling the Internet looking for websites relevant to consumer searches 

for UGG products. Id. at ¶ 7. As a result, links to Defendants’ websites show up at top of 

popular search results and misdirect consumers searching for genuine UGG products. Id. 

 Even if Deckers were to challenge and manage to force the inactivation of one or more of 

the websites at the Defendant Domain Names or Marketplace Accounts by a cease-and-desist 

letter, it is typical that Defendants lose no inventory, retain all of their profits, and simply move 

the website associated with the domain name to another server. (Id. at ¶ 8). 

III. ARGUMENT 

 Defendants’ purposeful, intentional, and unlawful conduct is causing, and will continue 

to cause, irreparable harm to Deckers’ reputation and the goodwill symbolized by its trademarks. 

To freeze Defendants’ activities, Deckers respectfully requests that this Court issue a temporary 

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7

restraining order ordering, inter alia, the transfer of the Defendant Domain Names to Deckers to 

redirect to a website providing notice of these proceedings and the freezing of Defendants’ 

assets. Without the relief requested by Deckers’ instant Motion, Defendants’ illegal activity will 

continue unabated and Deckers and consumers will suffer enormous irreparable harm. 

In light of the covert nature of offshore counterfeiting activities and the vital need to 

establish an economic disincentive for trademark counterfeiting, courts now regularly issue such

orders. See, e.g., Deckers Outdoor Corporation v. Does 1-100, No. 12 Civ. 377, Docket No. 20 

(N.D. Ill. 2012); Deckers Outdoor Corporation v. Liyanghua et al., No.11 Civ. 7970, Docket 

Nos. 18 and 25 (N.D. Ill. 2011); Deckers Outdoor Corporation v. Does 1-55, No. 11 Civ. 10, 

Docket Nos. 26, 38 and 69 (N.D. Ill. 2011); Tory Burch, LLC., et al. v. Yong Sheng Int’l Trade 

Co., LTD, No. 10 Civ. 9336 (S.D.N.Y. May 13, 2011); Farouk Systems, Inc. v. Eyou Int’l 

Trading Co., Ltd., et al., 10 Civ. 2672 (S.D. Tex. Aug. 2, 2010); The North Face Apparel Corp., 

et al. v. Fujian Sharing Import & Export Ltd. Co., et al., No. 10 CIV 1630 (S.D.N.Y. Mar. 16, 

2010); see also, Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463, 62 U.S.P.Q. 2d 1789 (E.D. 

Mich. 2000); Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029 (N.D. Ill. 2001); 

and In re Vuitton et Fils, S.A., 606 F.2d 1 (2d Cir. 1979) (holding that ex parte temporary 

restraining orders are indispensable to the commencement of an action when they are the sole 

method of preserving a state of affairs in which the court can provide effective final relief). 

 Rule 65(b) of the Federal Rules of Civil Procedure provides that that the Court may issue 

a temporary restraining order without written or oral notice to the adverse party or its attorney 

where “immediate and irreparable injury, loss, or damage will result to the applicant before the 

adverse party or that party's attorney can be heard in opposition.” Fed.R.Civ.P. 65(b). This is 

such a case. The Defendants here fraudulently promote, advertise, offer to sell and sell 

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substantial quantities of goods bearing counterfeits of the UGG Trademark via the Defendant 

Internet Stores. Defendants are creating a false association in the minds of consumers between 

the Defendants and Deckers by deceiving consumers into believing that the goods for sale on 

Defendants are sponsored or endorsed by Deckers. The entry of a temporary restraining order is 

appropriate because it would immediately stop the Defendants from benefiting from their 

wrongful use of the UGG Trademark and preserve the status quo until such time as a hearing can 

be held. Thus, a temporary restraining order is appropriate. 

 In the absence of a temporary restraining order without notice, the Defendants can and 

likely will modify registration data and content, change hosts, redirect traffic to other websites 

they control, and move any assets from any U.S.-based bank accounts, including PayPal 

accounts. Moreover, federal courts have long recognized that civil actions against counterfeiters 

– whose very business is built around the deliberate misappropriation of rights and property 

belonging to others – present special challenges that justify proceeding on an ex parte basis. See 

Columbia Pictures Indus., Inc. v. Jasso, 927 F.Supp 1075, 1077 (N.D. Ill. 1996) (observing that 

“proceedings against those who deliberately traffic in infringing merchandise are often useless if 

notice is given to the infringers”); Time Warner Enter. Co. v. Does #1-2, 876 F. Supp. 407. 410-

11 (E.D.N.Y. 1994). This Court should prevent an injustice from occurring by issuing the 

requested ex parte temporary restraining order. 

 This Court has original subject matter jurisdiction over the claims in this action pursuant 

to the provisions of the Lanham Act, 15 U.S.C. § 1051 et seq., 28 U.S.C. § 1338(a), (b), and 28 

U.S.C. § 1331. This Court has jurisdiction over the claims in this action that arise under the laws 

of the State of Illinois pursuant to 28 U.S.C. § 1367(a), because the state law claims are so 

related to the federal claims that they form part of the same case or controversy and derive from 

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a common nucleus of operative facts. Venue is proper in this Court pursuant 28 U.S.C. § 1391. 

Furthermore, this Court may properly exercise personal jurisdiction over Defendants since 

Defendants directly target business activities toward consumers in Illinois and cause harm to 

Deckers’ business within this Judicial District. See Complaint at ¶¶ 2, 4, 8, 9 and 11 – 17. 

Through at least the fully interactive commercial Internet websites operating under the 

Defendant Domain Names and the marketplace listings operated using the Marketplace 

Accounts, each of the Defendants has targeted and solicited sales from Illinois residents by 

operating English language websites and/or listings that offer shipping to Illinois, accept 

payment in U.S. dollars and, on information and belief, have sold counterfeit UGG products to 

residents of Illinois. Each of the Defendants is committing tortious acts in Illinois, is engaging in 

interstate commerce and has wrongfully caused Deckers substantial injury in the State of Illinois. 

A. Standard for Temporary Restraining Order and Preliminary Injunction 

 District Courts within this Circuit hold that the standard for granting a temporary 

restraining order and the standard for granting a preliminary injunction are identical. See, e.g.

Charter Nat'l Bank and Trust v. Charter One Fin., Inc., 2001 WL 527404, *1 (N.D.Ill. May 15, 

2001) (citing Frederick Atkins, Inc. v. Carson Pirie Scott & Co., Inc., 1999 WL 1249342, *1 

(N.D. Ill. Dec. 13, 1999)). A party seeking to obtain a preliminary injunction must demonstrate: 

(1) that its case has some likelihood of success on the merits; (2) that no adequate remedy at law 

exists; and (3) that it will suffer irreparable harm if the injunction is not granted. See TY, Inc. v. 

The Jones Group, Inc., 237 F.3d 891 at 895 (7th Cir. 2001). 

 If the Court is satisfied that these three conditions have been met, then it must consider 

the irreparable harm that the nonmoving party will suffer if preliminary relief is granted, 

balancing such harm against the irreparable harm the moving party will suffer if relief is denied. 

Id. Finally, the Court must consider the public interest (non-parties) in denying or granting the 

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injunction. Id. The Court then weighs all of these factors, “sitting as would a chancellor in 

equity,” when it decides whether to grant the injunction. Id. quoting Abbot Labs. v. Mead 

Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992). This process involves engaging in what the Court 

has deemed “the sliding scale approach,” the more likely the plaintiff will succeed on the merits, 

the less the balance of irreparable harms need favor the plaintiff's position. Id. The sliding scale 

approach is not mathematical in nature, rather “it is more properly characterized as subjective 

and intuitive, one which permits district courts to weigh the competing considerations and mold 

appropriate relief.” Id. at 896.

B. Deckers will Likely Succeed on the Merits 

i. Deckers Will Likely Succeed on its Trademark Infringement and 

Counterfeiting Claim.

 The greater the movant's likelihood of succeeding on the merits, the less the balance of 

harms need be in his favor. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 461 (7th 

Cir. 2000). A defendant is liable for trademark infringement and counterfeiting under the 

Lanham Act if it, “without the consent of the registrant, uses in commerce, any reproduction, 

copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, 

distribution, or advertising of any goods....which such use is likely to cause confusion, or to 

cause mistake or to deceive.” 15 U.S.C. § 1114(1). To prove a prima facie case of infringement, 

Deckers must show (1) it mark is distinctive enough to be worthy of protection, (2) Defendant 

was not authorized to use Deckers’ Trademark and (3) Defendants’ use of Deckers’ Trademark 

causes a likelihood of confusion as to the origin or sponsorship of Defendants’ products. See 

Neopost Indus. B.V. v. PFE Int’l Inc., 403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) (citing Bliss 

Salon Day Spa v. Bliss World LLC, 268 F.3d 494, 496-97 (7th Cir.2001)). Deckers satisfies the 

three requirements of the Lanham Act to successfully bring a trademark infringement case. 

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Deckers unarguably meets the first two elements for its trademark infringement claim. 

Deckers has a trademark on its UGG mark registered with the United States Patent and 

Trademark Office. The UGG Trademark is registered as U.S. Trademark Registration No. 

3,050,925 and has been used continuously since at least as early as 1979 by Deckers and its 

predecessors in interest. Evert-Burks Declaration at ¶ 3. Furthermore, Deckers has never 

licensed or given Defendants the right to use its UGG Trademark. Gaudio Declaration at ¶ 9. 

Deckers satisfies the third factor as well. The Seventh Circuit has enumerated seven 

factors to determine whether there is a likelihood of confusion: (1) similarity between the marks 

in appearance and suggestion; (2) similarity of the products; (3) area and manner of concurrent 

use; (4) degree of care likely to be exercised by consumers; (5) strength of complainant's mark; 

(6) actual confusion; and, (7) intent of defendants to palm off his product as that of another. Eli 

Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 461 (7th Cir. 2000) citing Smith Fiberglass 

Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir.1993). These factors are not a 

mechanical checklist, and “[t]he proper weight given to each ... will vary from case to 

case.” Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 381 (7th Cir.1996). At the same time, 

although no one factor is decisive, the similarity of the marks, the intent of the defendant, and 

evidence of actual confusion are the most important considerations. G. Heileman Brewing Co., 

Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 999 (7th Cir.1989). 

Here, Deckers plainly satisfies the likelihood of confusion test. The Defendants are 

selling counterfeit versions of products that are virtually identical to Deckers’ products and use 

counterfeit marks identical to Deckers’ UGG Trademark. As such, the first and second factors 

weigh heavily in favor of Deckers. 

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Deckers also satisfies the third factor, area and manner of concurrent use. When 

considering the third factor, a court looks at “whether there is a relationship between the use, 

promotion, distribution or sales between the goods or services of the parties.” CAE, Inc. v. Clean 

Air Eng'g, Inc., 267 F.3d 660, 681 (7th Cir. 2001). A court also looks to whether the parties used 

the same channels of commerce, targeted the same general audience, and/or used similar 

marketing procedures. Id. Here, both Deckers and Defendants advertise and sell their products 

to consumers over the Internet. Both parties use the same means and the same channels of 

commerce to target the same Internet consumers looking for genuine UGG products. The 

Defendant Internet Stores advertise and sell counterfeit UGG products online just as Deckers 

advertises and sells its genuine UGG products at uggaustralia.com. Thus, because Defendants 

target the same Internet consumers by the same means Deckers does, this factor weighs heavily 

in favor of Deckers. 

Regarding the fourth factor, degree of consumer care, consumers purchasing UGG 

products are not a certain specialized, sophisticated group of people. Rather, the consumer base 

here is a diverse group of people including children, adults, men, and women. “[W]hen a buyer 

class is mixed, the standard of care to be exercised by the reasonably prudent purchaser will be 

equal to that of the least sophisticated consumer in the class.” Trans Union LLC, 142 F.Supp.2d 

at 1043 citing Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 293 (3rd Cir. 1991), 

cert. denied, 502 U.S. 939, 112 S.Ct. 373, 116 L.Ed.2d 324 (1991). In addition, genuine UGG 

products are routinely priced from approximately $100 - $200. The counterfeit UGG products 

offered for sale on Defendants websites are typically priced slightly below standard retail prices, 

making it very difficult for consumers to determine the products are counterfeit. Taking into 

account the diverse group of UGG consumers and the closely related pricing schemes between 

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the counterfeit products and the genuine UGG products, UGG consumers are very likely to be 

confused, so this factor favors Deckers.

Deckers’ UGG Trademark has been used for more than 30 years and has become famous 

and associated with sheepskin products and is distinctive when applied to the high quality 

apparel, footwear and related merchandise. It signifies to consumers that the products come 

from Deckers and are manufactured to the highest quality standard. Consumers have come to 

recognize the UGG brand as a source of premium sheepskin footwear. Thus, the fifth factor, the 

strength of the mark, also weighs heavily in favor of Deckers. 

As for the sixth factor, Deckers does not need to prove likelihood of confusion with 

evidence of actual confusion, all it needs is some evidence showing confusion. See Libman Co. 

v. Vining Indus., Inc., 69 F.3d 1360, 1363 (7th Cir.1995). In this case, actual confusion can be 

inferred because Defendants are selling counterfeit versions of Deckers’ products and use the 

same UGG Trademark. Because the goods look almost identical, consumers will be confused 

and think that Defendants’ products are genuine UGG products or are sponsored or endorsed by 

Deckers. This factor weighs in favor of Deckers. 

Here, Defendants are intentionally using Deckers’ UGG Trademark to confuse and 

deceive the consuming public into thinking that Defendants’ counterfeit products are 

manufactured by Deckers. Defendants are purposely attempting to benefit and trade off of 

Deckers’ goodwill and reputation. Therefore, the final factor, intent of defendant, also weighs 

heavily in Deckers’ favor. 

It is manifestly clear that each of the seven factors weighs heavily in favor of Deckers, 

and therefore Deckers has proved it has a reasonable likelihood of success on the merits for its 

trademark infringement and counterfeiting claim. 

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ii. Deckers is Likely to Succeed on its False Designation of Origin Claim

 A plaintiff bringing a false designation of origin claim under 15 U.S.C. § 1125(a) must 

show: (1) defendant used a false designation of origin, (2) defendant’s use of the products was in 

interstate commerce, and (3) the likelihood that consumers will be confused by defendant’s false 

designation of origin. Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 906 F.2d 1202, 1204 

(7th Cir. 1990). The test to be used in determining whether a violation has occurred is whether 

“the evidence indicates a likelihood of confusion, deception or mistake on the part of the 

consuming public.” Id. at 1205. This is the same test that is used for bringing a trademark 

infringement claim under the Lanham Act. See Neopost Indus. B.V. v. PFE Int’l Inc., 403 F. 

Supp. 2d 669, 684 (N.D. Ill. 2005). Because UGG is a registered mark and Deckers has 

established the merits of likelihood of confusion in its trademark infringement and counterfeiting 

claim against Defendants, a likelihood of success on the merits for Deckers’ false designation of 

origin claim is also established. 

iii. Deckers is Likely to Succeed on its Cyberpiracy Claim

 Pursuant to the Anticybersquatting Consumer Protection Act of 1996 (ACPA), a person 

alleged to be a cybersquatter is liable to the owner of a protected mark if that person: (i) has a 

bad faith intent to profit from that mark and (ii) registers, traffics in, or uses a domain name 

that...is identical or confusingly similar to or dilutive of a mark that is “distinctive” or “famous.” 

15 U.S.C. § 1125(d)(1)(A). In such cases, in addition to other damages, “a court may order the 

forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of 

the mark.” 15 U.S.C. § 1125(d). 

 Courts have often noted that one focus of the ACPA is to address counterfeit sellers who 

“register well-known marks to prey on consumer confusion by misusing the domain name to 

divert customers from the mark owner’s site to the cybersquatter’s own site, and target 

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distinctive marks to defraud consumers.” Lucas Nursery v. Grosse, 359 F.3d 806, 809 (6th Cir. 

2004); see also, Diarama Trading Co., Inc. v. J. Walter Thompson U.S.A., Inc., 2005 WL 

2148925, *12 (S.D.N.Y. Sept. 6, 2005); Albert Furst von Thurn und Taxis v. Karl Prince von 

Thurn und Taxis, 2006 WL 2289847, *13 (S.D.N.Y. Aug. 8, 2006). 

1. Deckers’ UGG Trademark is Distinctive and Famous 

 Deckers’ UGG Trademark is famous with footwear consumers worldwide, particularly 

with sheepskin footwear consumers. As noted above, Deckers has invested many millions of 

dollars advertising and promoting its trademarks in the United States and throughout the world. 

Celebrities and consumers alike identify the UGG Trademark with Deckers’ high quality 

products. As a result, Deckers’ UGG Trademark has a high degree of acquired distinctiveness, 

and in turn, Deckers is likely to succeed in showing that its UGG Trademark is distinctive or 

famous. 

2. Defendants Have a Bad Faith Intent to Profit from Deckers’ UGG 

Trademark 

 Pursuant to the ACPA, a court may consider myriad factors when determining whether a 

person has a bad faith intent to profit from a mark, nine of which are enumerated in the law and 

include: (1) the trademark or other intellectual property rights of the person, if any, in the domain 

name; (2) the extent to which the domain name consists of the legal name of the person or a 

name that is otherwise commonly used to identify that person; (3) the person’s prior use, if any, 

of the domain name in connection with the bona fide offering of any goods or services; (4) the 

person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain 

name; (5) the person’s intent to divert consumers from the mark owner’s online location to a 

site....that could harm the goodwill represented by the mark, either for commercial gain or with 

the intent to tarnish or disparage the mark; (6) the person’s offer to transfer, sell, or otherwise 

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assign the domain name to the mark owner or any third party for financial gain without having 

used...the domain name in the bona fide offering of any goods or services; (7) the person’s 

provision of material and misleading false contact information when applying for the registration 

of the domain name; (8) the person’s registration or acquisition of multiple domain names which 

the person knows are identical or confusingly similar to marks of others; and (9) the extent to 

which the mark incorporated in the person’s domain name registration is or is not distinctive and 

famous. 15 U.S.C. § 1125 (d)(1)(B)(i). 

 Federal courts recognize that “there is no simple formula for evaluating and weighing 

these factors.” Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 234 (4th Cir. 2002). 

To the contrary, the factors enumerated in the ACPA are given to the courts “as a guide, not as a 

substitute for careful thinking about whether the conduct at issue is motivated by a bad faith 

intent to profit.” Lucas Nursery & Landscaping, Inc., 359 F.3d at 810. A court is not limited, 

however, to considering the nine enumerated factors when determining the presence or absence 

of bad faith. 15 U.S.C. § 1125 (d)(1)(B)(i). Indeed, the factors are “expressly described as 

indicia that ‘may’ be considered along with other facts.” Virtual Works, Inc. v. Volkswagen of 

Am., Inc., 238 F.3d 264, 267 (4th Cir. 2001) (quoting Sporty’s Farm, LLC v. Sportsman’s 

Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000)). The ACPA allows a court to view the totality of 

the circumstances in making the bad faith determination. Id. at 270. 

 Courts have held that the registration of a trademark owner’s mark as part of a domain 

name used to sell counterfeit versions of the trademark owner’s goods is a particularly egregious 

form of bad faith. See, e.g. Louis Vuitton Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 

584-585 (D. Pa. 2002). In the instant case, it is manifestly clear that the Defendants have acted 

with a bad faith intent to profit from Deckers’ famous UGG Trademark. Many of the Defendant 

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Domain Names incorporate the UGG Trademark in its entirety and use Deckers’ UGG 

Trademark and copyrighted photographs without authorization to sell counterfeit UGG boots. 

This is a clear violation of United States law, including Section 1125 of the Trademark Act 

(Section 43 of the Lanham Act) and Section 501 of the Copyright Act. 

3. The Domain Names are Identical or Confusingly Similar to or 

Dilutive to Deckers’ UGG Trademark 

 When dealing with domain names, a court must evaluate an allegedly infringing domain 

name in conjunction with the content of the website identified by the domain name. Lamparello 

v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005). Here, there can be no question that many of the 

Defendant Domain Names are identical or confusingly similar to Deckers’ UGG Trademark. 

Deckers UGG Trademark appears without alteration in many of the Defendant Domain Names, 

clearly referring to Deckers’ brand. Moreover, as noted above, Defendants design their websites 

so that they look like authorized online retailers selling Deckers’ genuine products. Defendants 

perpetuate this illusion by using domain names incorporating Deckers’ registered trademarks and 

using Deckers’ copyrighted photos and other images showing genuine products with detailed 

product descriptions (often copied-and-pasted directly from Deckers’ own website at 

uggaustralia.com). 

 In addition, courts have found that the addition of generic or geographic terms, such as 

“shop,” “online” and “store” are not sufficient to distinguish the domain name from a protected 

mark that it contains. Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 677-

78 (E.D. Va. 2001) citing Anti-Defamation League of B'Nai B'Rith v. Nat’l Mex. Am. AntiDefamation Comm., Inc., 510 F.2d 1246, 1247 (D.C.Cir.1975); Kentucky Fried Chicken Corp. v. 

Smith, 351 F. Supp. 1311, 1313 (E.D.Mich.1972)), aff’d in part, rev’d in part, 302 F.3d 214 (4th 

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Cir. 2002). As such, the Defendant Domain Names that incorporate Deckers’ UGG Trademark 

are identical and/or confusingly similar to Deckers’ UGG Trademark. 

iv. Deckers is Likely to Succeed on its Illinois Uniform Deceptive Trade Practice 

Act Claim

 In Illinois, courts resolve unfair competition and deceptive trade practices claims 

“according to the principles set forth in the Lanham Act.” Spex, Inc. v. The Joy of Spex, Inc., 847 

F. Supp. 567, 579 (N.D. Ill. 1994). Illinois courts look to federal case law and apply the same 

analysis to state infringement claims. Spex, 847 F. Supp. at 579 (citing Thompson v. SpringGreen Lawn Care Corp., 126 Ill. App. 3d 99, 104-105 (Ill. App. Ct. 1984)). The determination 

as to whether there is a likelihood of confusion is similar under both the Lanham Act and the 

Illinois Uniform Deceptive Trade Practice Act statute. Am. Broad. Co. v. Maljack Prod., Inc., 34 

F. Supp. 2d 665, 681 (N.D. Ill. 1998). Because Deckers has established the merits of likelihood 

of confusion in its trademark infringement and counterfeiting claim against Defendants and the 

standard is the same under Illinois law, Deckers has established a likelihood of success on the 

merits for its Illinois Uniform Deceptive Trade Practices Act claim. 

C. There is No Adequate Remedy at Law and Deckers is Likely to Suffer 

Irreparable Harm in the Absence of Preliminary Relief 

The Seventh Circuit has “clearly and repeatedly held that damage to a trademark holder's 

goodwill can constitute irreparable injury for which the trademark owner has no adequate legal 

remedy.” Re/Max North Cent., Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001). See also Eli 

Lilly, 233 F.3d at 468 (7th Cir. 2000) (citing Abbot Labs., 971 F.2d at 16) (acknowledging that 

“irreparable harm is generally presumed in cases of trademark infringement and dilution”); 

Dunkin Donuts Franchised Rest. LLC v. Elkhatib, 2009 WL 2192753, *4 (N.D. Ill. July 17, 

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2009) (recognizing that irreparable harm and inadequate remedy at law are presumed in 

trademark and trade dress infringement cases). 

This presumption arises, “in part, from the realization ‘that the most corrosive and 

irreparable harm attributable to trademark infringement is the inability of the victim to control 

the nature and quality of the defendant's goods.’” Ideal Indus., Inc. v. Gardner Bender, Inc., 612 

F.2d 1018, 1026 (7th Cir. 1979) (quoting 4 Callman, Unfair Competition, Trademarks and 

Monopolies s 88.3(b) at 205 (3d ed. 1970)). As such, monetary damages are likely to be 

inadequate compensation for such harm. Ideal Indus., 612 F.2d at 1026. 

 “Irreparable harm is harm ‘which cannot be repaired, retrieved, put down again, atoned 

for.... [T]he injury must be of a particular nature, so that compensation in money cannot atone for 

it.’” Graham v. Medical Mut. of Ohio, 130 F.3d 293, 296 (7th Cir. 1997) (quoting Gause v. 

Perkins, 56 N.C. (3 Jones Eq.) 177 (1857)). The irreparable harm that Deckers is suffering, and 

will continue to suffer, is not only a matter of legal presumption but of plain and simple fact. 

Defendants’ continued use of Deckers’ UGG Trademark threatens to irreparably harm Deckers’ 

name and marks and the goodwill associated with it. No amount of money could adequately 

compensate Deckers for this threat to the reputation and goodwill of its wide range of highquality products. Such harms are irreparable. As such, the injunctive relief sought by Deckers 

should be granted. 

D. The Balancing of Harms Tips in Deckers’ Favor 

As noted above, if the Court is satisfied that Deckers has demonstrated (1) a likelihood of 

success of merits, (2) no adequate remedy at law and (3) the threat of irreparable harm if 

preliminary relief is not granted, then it must next consider the irreparable harm that Defendants 

will suffer if preliminary relief is granted, balancing such harm against the irreparable harm 

Deckers will suffer if relief is denied. TY, Inc., 237 F.3d at 895. As willful infringers, 

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Defendants are entitled to little equitable consideration. “When considering the balance of 

hardships between the parties in infringement cases, courts generally favor the trademark 

owner.” Krause Int’l, Inc. v. Reed Elsevier, Inc., 866 F. Supp. 585, 587-88 (D.D.C. 1994). 

Plainly, that is because “[o]ne who adopts the marks of another for similar goods acts at his own 

peril since he has no claim to the profits or advantages derived thereby.” Burger King Corp. v. 

Majeed, 805 F. Supp. 994, 1006 (S.D. Fla. 1992) (internal quotation marks omitted). The balance 

of harms, as such, “cannot favor a defendant whose injury results from the knowing infringement 

of the plaintiff's trademark.” Malarkey-Taylor Assocs., Inc. v. Cellular Telecomm. Indus. Ass’n, 

929 F. Supp. 473, 478 (D.D.C. 1996). 

 As Deckers has demonstrated, Defendants have been profiting from the sale of 

counterfeit UGG products, thus proving that the balance of equities tips decisively in its favor. 

As such, equity requires that Defendants be ordered to cease their unlawful conduct. 

 E. This Injunction is in the Public Interest 

 An injunction in these circumstances is in the public interest because it will prevent 

consumer confusion and stop defendants from violating federal trademark law. The public is 

currently under the false impression that defendants are operating their websites with Deckers’ 

approval and endorsement. An injunction serves the public interest in this case “because 

enforcement of the trademark laws prevents consumer confusion.” Eli Lilly, 233 F.3d at 469. 

Federal courts have long-held that “the trade-mark laws . . . are concerned not alone with 

the protection of a property right existing in an individual, but also with the protection of the 

public from fraud and deceit.” Stahly, Inc. v. M.H. Jacobs Co., 183 F.2d 914, 917 (7th Cir. 

1950) (citing Stork Restaurant, Inc., v. Sahati, 166 F.2d 348, 354 (9th Cir. 1948); Rosenberg 

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Bros. & Co. v. Elliott, 7 F.2d 962, 965-66 (3rd Cir. 1925); Gen. Baking Co. v. Gorman, 3 F.2d 

891, 893 (1st Cir. 1925); Goldwyn Pictures Corp. v. Goldwyn, 296 F. 391, 401 (2d Cir. 1924)). 

 The public interest is further served by protecting “the synonymous right of a trademark 

owner to control his product's reputation.” James Burrough Ltd. v. Sign of Beefeater, Inc., 540 

F.2d 266, 274 (7th Cir. 1976).; see also Shashi, Inc. v. Ramada Worldwide, Inc., 2005 WL 

552593, *4 (W.D. Va. Mar. 1, 2005) (“It is in the best interest of the public for the court to 

defend the integrity of the intellectual property system and to prevent consumer confusion”). 

In this case, the injury to the public is patent, and the injunctive relief which Deckers 

seeks is specifically intended to remedy that injury by dispelling the public confusion created by 

Defendants’ actions. The public has the right not to be confused or defrauded as to the source of 

the goods and services offered by Defendants, or as to the identity of the owner of trademarks 

and service marks used in connection with those goods and services. Unless Defendants’ 

continuing misuse of the Deckers UGG Trademark is enjoined, the public will continue to be 

confused and misled by defendants’ conduct. 

 As such, Deckers’ Application for entry of Temporary Restraining Order is in the public 

interest. 

VI. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE 

The Lanham Act authorizes courts to issue injunctive relief “according to principles of 

equity and upon such terms as the court may deem reasonable, to prevent the violation of any 

right of the registrant of a mark ...” 15 U.S.C. § 1116(a). 

A. A Temporary Restraining Order Immediately Enjoining Defendants’ 

Unauthorized and Illegal Use of the Deckers Marks is Appropriate 

Deckers’ requests an order requiring the Defendants to immediately cease all use of the 

Deckers UGG Trademarks, or substantially similar marks, on or in connection with all Internet 

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websites owned and operated, or controlled by them and any market place listings. Such relief is 

necessary to stop the ongoing harm to Deckers’ Trademark and goodwill and to prevent the 

Defendants from continuing to benefit from the increased traffic to their operations created by 

their illegal use of the Deckers Trademark. The need for ex parte relief is magnified in today’s 

global economy where counterfeiters can operate over the Internet in an anonymous fashion. 

Deckers is currently unaware of the true identities and locations of the Defendants or the location 

of Defendants’ other websites and counterfeit products that are being readily distributed. Many 

courts have authorized immediate injunctive relief in cases involving the unauthorized use of 

trademarks. See, e.g. Deckers Outdoor Corporation v. Does 1-100, No. 12 Civ. 377, Docket No. 

20 (N.D. Ill. January 27, 2012) (Order granting Ex Parte Application for Temporary Restraining 

Order); Deckers Outdoor Corporation v. Liyanghua et al., No.11 Civ. 7970, Doc. No. 18 (N.D. 

Ill. Nov. 15, 2011); Deckers Outdoor Corporation v. Does 1-55, No. 11 Civ. 10, Doc. No. 26 

(N.D. Ill. February 3, 2011) (same); Tory Burch, LLC., et al. v. Yong Sheng Int’l Trade Co., 

LTD, No. 10 Civ. 9336 (S.D.N.Y. January 4, 2011) (same); Farouk Systems, Inc. v. Eyou Int’l 

Trading Co., Ltd., et al., No. 4:10 CV 2672 (S.D. Tex. Aug. 2, 2010) (same); The North Face 

Apparel Corp., et al. v. Fujian Sharing Import & Export Ltd. Co., et al., No. 10 CIV 1630 

(S.D.N.Y. Mar. 16, 2010) (same); Chanel, Inc. v. Does 7-172, et al., No. 2:10-cv-02684-BBDdkv (W. D. Tenn. Nov. 1, 2010) (same); Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 

(E.D. Mich. 2001) (enjoining Defendant from “using in any way the Internet domain name 

‘fordrecalls.com’”); Kraft Food Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 956 (N.D. Ill. 

2002) (granting preliminary injunction requiring defendant “immediately” to remove all 

references to version of plaintiff’s mark, including removing all references “from metatags, 

metanames, or any other keywords on his websites”). 

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B. An Order Transferring the Defendant Domain Names to Deckers’ 

Control is Appropriate 

To preserve the status quo and prevent further infringement during the important winter 

sales months, Deckers seeks an order transferring the Defendant Domain Names to Deckers to 

disable and electronically publish notice of this case to Defendants. Defendants involved in 

domain name litigation easily can, and often will, change the ownership of a domain name and 

thereby frustrate the court’s ability to provide relief to the plaintiff. Moreover, defendants can 

and often do modify website content to thwart discovery and redirect traffic to thwart effective 

injunctive relief. Accordingly, to preserve the status quo and ensure the possibility of eventual 

effective relief, courts in trademark cases involving domain names regularly grant such relief. 

See, e.g., Deckers Outdoor Corporation v. Does 1-100, No. 12 Civ. 377, Docket No. 20 (N.D. 

Ill. January 27, 2012) (Order granting Ex Parte Application for Temporary Restraining Order 

including the transfer of domain names); Deckers Outdoor Corporation v. Liyanghua et al., 

No.11 Civ. 7970, Docket No. 18 (N.D. Ill. Dec. 15, 2011) (same); Deckers Outdoor Corporation 

v. Does 1-55, No. 10 Civ. 11, Docket No. 26 (N.D. Ill. February 3, 2011) (same); Tory Burch, 

LLC., et al. v. Yong Sheng Int’l Trade Co., LTD, No. 10 Civ. 9336 (S.D.N.Y. January 4, 2011) 

(same); Farouk Systems, Inc. v. Eyou Int’l Trading Co., Ltd., et al., No. 4:10 CV 2672 (S.D. Tex. 

Aug. 2, 2010) (same); The North Face Apparel Corp., et al. v. Fujian Sharing Import & Export 

Ltd. Co., et al., No. 10 CIV 1630 (S.D.N.Y. Mar. 16, 2010) (same); Chanel, Inc. v. Does 7-172, 

et al., No. 2:10-cv-02684-BBD-dkv (W. D. Tenn. Nov. 1, 2010) (same); Chanel, Inc. v. Zhixian, 

No. 10-cv-60585-JIC (S.D. Fla. May 5, 2010) (same); Gucci America, Inc. and Louis Vuitton 

Malletier, S.A. v. Yan, No. 10-cv-61512-WPD (S.D. Fla. Aug. 20, 2010) (same); Gucci America, 

Inc. v. Does 1-10, No. 10-cv-60328-JAL (S.D. Fla. Mar. 22, 2010) (same); see also Bd. of Dir. of 

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Sapphire Bay Condominiums West v. Simpson, 77 U.S.P.Q. 2d (BNA) 1629, 129 Fed. Appx. 711 

(3rd Cir. 2005) (affirming District Court’s granting of the preliminary injunction ordering 

defendant to “cancel his registration of the domain name and refrain from using the name, or any 

derivative thereof, for any Web site under his ownership or substantial control”); Chanel, Inc. v. 

Paley, No. 09-cv-04979-MHP (N.D. Cal. Oct. 26, 2009) (granting temporary restraining order 

and disabling domain names at issue). Iconix v. Tokuda, 457 F. Supp. 2d 969, 999 (N.D. Cal. 

2006) (prohibiting defendants “from using, selling, licensing, or transferring the domain name”); 

Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d at 467 (granting Plaintiff’s preliminary injunction 

because, among other things, “Defendant's misappropriation of the goodwill [Plaintiff] has 

developed in the mark by registering the [infringing] Internet domain name . . . significantly 

tarnishes [Plaintiff’s] reputation”). 

As such, Deckers respectfully contends that its request for an order requiring the relevant 

registries and/or registrars for the Defendant Domain Names to transfer the domain names to 

Deckers during the pendency of this case should be granted. 

C. An Order Preventing the Fraudulent Transfer of Assets is 

Appropriate 

Deckers requests an ex parte order restraining Defendants’ assets so that Deckers’ right 

to an equitable accounting of Defendants’ profits from sales of counterfeit UGG products is not 

impaired. Issuing an ex parte order will ensure Defendants’ compliance. If such an order is not 

issued in this case, Defendants will disregard their responsibilities and fraudulently transfer 

financial assets to overseas accounts before an order is issued. Specifically, upon information 

and belief, in this case, it is believed that Defendants hold most of their assets in China making it 

easy to hide or dispose of assets, which will render an accounting by Deckers meaningless. 

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In addition, the amount of damages to which Deckers is entitled as set forth in the 

Complaint far exceeds any amount likely contained in any of the Defendants’ PayPal accounts or 

other U.S. financial accounts on the day the accounts are frozen. For example, Deckers’ prayer 

for relief requests damages in excess of $2 million, minimum, from each defendant. As in 

collecting such a judgment Deckers would be entitled to any monies of the Defendants — not 

just those attributable to sales of Deckers’ products. 

Deckers has shown a strong likelihood of succeeding on the merits of its trademark 

infringement and counterfeiting claim, so according to the Lanham Act 15 U.S.C. § 1117, 

Deckers is entitled to an accounting and recovery of profits, damages, and costs from 

Defendants’ infringing actions and sales of counterfeit UGG products. Furthermore, several 

circuits, including this Circuit, have found the Lanham Act grants the District Court authority to 

issue a restraining order freezing Defendants’ assets in cases where a plaintiff seeks an equitable 

remedy. 

In the seminal Reebok v. Marnatech case, the 9th Circuit affirmed the district court’s 

ruling limiting the transfer of assets and explicitly stated that “because the Lanham Act 

authorizes the district court to grant [plaintiff] an accounting of [defendant's] profits as a form of 

final equitable relief, the district court had the inherent power to freeze [defendant's] assets in 

order to ensure the availability of that final relief.” Reebok Int'l Ltd. v. Marnatech Enters., 970 

F.2d 552, 559 (9th Cir. 1992). 

Since Reebok, many Federal Courts, including the Northern District of Illinois, have 

granted orders preventing the fraudulent transfer of assets. See, e.g., Deckers Outdoor 

Corporation v. Does 1-100, No. 12 Civ. 377, Docket No. 20 (N.D. Ill. January 27, 2012) (Order 

granting Ex Parte Application for Temporary Restraining Order including the freezing of 

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Defendants’ financial accounts); Deckers Outdoor Corporation v. Liyanghua et al., No.11 Civ. 

7970, Docket No. 20 (N.D. Ill. Dec. 15, 2011) (same); Deckers Outdoor Corporation v. Does 1-

55, No. 11 Civ. 10, Docket No. 26 (N.D. Ill. February 3, 2011) (same); Lorillard Tobacco Co. v. 

Montrose Wholesale Candies & Sundries, Inc., 2005 WL 3115892 (N.D. Ill. Nov. 8, 2005); Tory 

Burch, LLC., et al. v. Yong Sheng Int’l Trade Co., LTD, No. 10 Civ. 9336 (S.D.N.Y. January 4, 

2011); Farouk Systems, Inc. v. Eyou Int’l Trading Co., Ltd., et al., No. 4:10 CV 2672 (S.D. Tex. 

Aug. 2, 2010); The North Face Apparel Corp., et al. v. Fujian Sharing Import & Export Ltd. Co., 

et al., No. 10 CIV 1630 (S.D.N.Y. Mar. 16, 2010); Levi Strauss & Co. v. Sunrise Int’l Trading 

Inc., 51 F.3d 982, 987 (11th Cir. 1995). The Northern District in Lorillard followed the Reebok

decision when it held that a court has “the authority to enter an order freezing assets in cases 

where the plaintiff seeks an equitable remedy generally, and specifically in Lanham Act cases.” 

Lorillard, 2005 WL 3115892 at *13. Furthermore, Federal Rules of Civil Procedure 64 and 65 

provide authority for preliminary injunctions and the freezing of assets, and the Lanham Act 

provides for Plaintiff’s an accounting and recovery of profits, costs, and damages. Fed.R.Civ.P. 

64-65; 15 U.S.C. § 1117. Since Deckers seeks recovery of Defendants’ profits, an order freezing 

the Defendants' assets is within the court's authority should be granted. Lorillard, 2005 WL 

3115892 at *13. 

Deckers has shown a likelihood of success on the merits, the immediate and irreparable 

harm suffered as a result of Defendants’ activities, and that unless Defendants’ assets are frozen, 

Defendants will likely hide or move their ill-gotten funds to offshore bank accounts. See

Reebok, 737 F. Supp. at 1527. Accordingly, the granting of an injunction preventing the transfer 

of Defendants’ assets is proper. 

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D. Deckers is Entitled to Expedited Discovery 

The United States Supreme Court has held that “federal courts have the power to order, at 

their discretion, the discovery of facts necessary to ascertain their competency to entertain the 

merits.” Vance v. Rumsfeld 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) (citing

Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). A district court has wide 

latitude in determining whether to grant a party's request for discovery. Id. (citing Doty v. 

Illinois Cent. R.R. Co., 162 F.3d 460, 461 (7th Cir.1998)). Furthermore, courts have broad 

power over discovery and may permit discovery in order to aid in the identification of unknown 

defendants. See Fed.R.Civ.P. 26(b)(2) and Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 

1980). 

As demonstrated above, Deckers is being irreparably harmed by the manufacture, 

importation, offering for sale, distribution, and sale of counterfeit UGG products. Defendants 

have gone to great lengths to conceal their true identities and/or move outside of this Court’s 

reach by, among other things, excluding any identifiable information from Defendants’ websites 

and using false and incomplete information in their registrations for the Defendant Domain 

Names. Defendants are using third-party payment processors such as Visa, PayPal and Western 

Union to help increase their anonymity, since there is a third party interposed between the 

consumer and Defendants. Without being able to discover Defendants’ bank and payment 

system accounts, any asset restraint would be of limited value because Deckers would not know 

the entities upon whom to serve the order. 

Deckers respectfully requests an ex parte Order allowing expedited discovery to discover 

bank and payment system accounts Defendants use for their counterfeit sales operations. The 

discovery requested on an expedited basis in Deckers’ Proposed Temporary Restraining Order 

has been precisely defined and carefully limited to include only what is essential to prevent 

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further irreparable harm. Discovery of these financial accounts in addition to Defendants’ 

identities and information related to Defendants’ websites and other operations will permit 

Deckers to gain a full and accurate picture of Defendants’ counterfeiting activities and ensure 

that these activities will be contained. 

Deckers is unaware of any reason that Defendants or third parties cannot comply with 

these expedited discovery requests without undue burden and all relevant third parties have in 

fact complied in previous cases. More importantly, Defendants have engaged in so many 

deceptive practices in hiding their identities and accounts that Deckers’ seizure Order and asset 

restraint may have little meaningful effect without the requested relief. Accordingly, the request 

for expedited discovery should be granted. 

E. Service of Process by E-mail and Electronic Publication is Warranted 

in this Case 

 Pursuant to Federal Rule of Civil Procedure 4(f)(3), Deckers requests an order allowing 

service of process on Defendants via electronic mail (“e-mail”) to the registrant of each of the 

Defendant Domain Names at the e-mail address provided by the registrant to the registrar and by 

electronically publishing notice of this action at the Defendant Domain Names. Electronic 

service is appropriate and necessary in this case because the Defendants on information and 

belief (1) have provided false physical address information in their registrations for the 

Defendant Domain Names in order to conceal their locations and avoid liability for their 

unlawful conduct and (2) rely primarily on electronic communications to communicate with their 

registrars and customers, demonstrating the reliability of this method of communication by 

which the registrants of the Defendant Domain Names may be apprised on the pendency of this 

action. Deckers respectfully submits that an order allowing service of process solely via email 

and electronic publication in this case will benefit all parties and the Court by ensuring the 

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registrants of the Defendant Domain Names receive immediate notice of the pendency of this 

action and allowing this action to move forward expeditiously. Absent the ability to serve the 

Defendants in this manner, Deckers will almost certainly be left without the ability to pursue a 

remedy. 

 According to regulations established by the Internet Corporation for Assigned Names and 

Numbers (“ICANN”), an individual or entity that registers a domain name is required to provide 

accurate contact information for the domain name. See Gaudio Declaration at ¶ 10. As 

demonstrated, the registrants for the Defendant Domain Names have ignored the applicable 

ICANN regulations and provided false physical address information to the domain name 

registrars in order to avoid liability for their criminal conduct. However, as a practical matter, 

the registrants of the Defendant Domain Names generally must maintain an accurate email 

address where their registrars may communicate with them regarding issues related to the 

purchase, transfer, and maintenance of the various accounts. Moreover, it is necessary for 

merchants, such as the registrants of the Defendant Domain Names, who operate entirely online, 

to provide customers with accurate email addresses by which the customer can contact the 

merchant to ask questions about the merchant’s products, place orders from the merchant’s 

Internet websites, and receive information from the merchant regarding the shipment of an order. 

 Deckers conducted searches of the public WhoIs information regarding the Defendant 

Domain Names identifying the e-mail addresses the registrants provided the Registrars. Id. at ¶ 

3. Many of Defendants’ names and addresses used to register the Defendant Domain Names are 

incomplete, randomly typed letters, contain street addresses with no cities or states listed or use a 

privacy service. Overlapping contact information also suggests that many of the aliases used to 

register the Defendant Domain Names are used by the same individual or entity. Thus, based on 

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the provision of invalid postal addresses and likely fictitious name(s), Deckers cannot serve the 

Defendants by traditional means. 

 Federal Rule of Civil Procedure 4(f)(3) allows this Court to authorize service of process 

by any means not prohibited by international agreement as the Court directs. Rio Props, Inc. v. 

Rio Int’l Interlink, 284 F.3d 1007, 1014 (9th Cir. 2002). Rule 4 does not require that a party 

attempt service of process by those methods enumerated in Rule 4(f)(2) before petitioning the 

court for alternative relief under Rule 4(f)(3). Id. at 1114-15. The Ninth Circuit in Rio 

Properties held, “without hesitation,” that email service of an online business defendant “was 

constitutionally acceptable.” Rio Props., 284 F.3d at 1017. The Court reached this conclusion in 

part because the defendant conducted its business over the Internet, used email regularly in its 

business, and encouraged parties to contact it via email. 

 Similarly, a number of Courts, including the Northern District of Illinois, have held that 

alternate forms of service pursuant to Rule 4(f)(3), including email service, are appropriate and 

may be the only means of effecting service of process “when faced with an international ebusiness scofflaw.” See, e.g., Deckers Outdoor Corporation v. Does 1-100, No. 12 Civ. 377, 

Docket No. 44 (N.D. Ill. February 28, 2012); Deckers Outdoor Corporation v. Liyanghua et al., 

No.11 Civ. 7970, Docket No. 57 (N.D. Ill. February 28, 2012); Deckers Outdoor Corporation v. 

Does 1-55, No. 11 Civ. 10, Docket No. 26 (N.D. Ill. February 3, 2011); MacLean-Fogg Co. v. 

Ningbo Fastlink Equip. Co. Ltd., 2008 WL 5100414, *2 (N.D. Ill. Dec. 1, 2008) (holding email 

and facsimile service appropriate); Farouk Systems, Inc. v. Eyou Int’l Trading Co., Ltd., et al., 

No. 4:10 CV 2672 (S.D. Tex. Aug. 2, 2010); The North Face Apparel Corp., et al. v. Fujian 

Sharing Import & Export Ltd. Co., et al., No. 10 CIV 1630 (S.D.N.Y. Mar. 16, 2010); Popular 

Enter., LLC v. Webcom Media Group, Inc., 225 F.R.D. 560, 563 (E.D. Tenn. 2004) (quoting Rio 

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Properties, 284 F.3d at 1018) (allowing email service); see also Williams-Sonoma, Inc. v. 

FriendFinder, Inc., 2007 WL 4973848, *4 (N.D. Cal. Dec. 6, 2007) (allowing email service); 

Philip Morris USA, Inc. v. Veles Ltd., 2007 WL 725412, *1, (S.D.N.Y. Mar. 12, 2007) (same); 

Williams v. Advertising Sex LLC, 231 F.R.D. 483, 488 (N.D. West Va. 2005) (same); Juniper 

Networks, Inc. v. Bahattab, 2008 WL 250584, *1-2 (D.D.C. Jan. 30, 2008) (citing Rio and other 

cases in holding that “in certain circumstances ...service of process via electronic mail ... is 

appropriate and may be authorized by the Court under Rule 4(f)(3) of the Federal Rules of Civil 

Procedure”). Deckers submits that allowing service solely by email and electronic publication in 

the present case is appropriate and comports with constitutional notions of due process, 

particularly given the decision by the registrants of the Defendant Domain Names to conduct 

their illegal Internet-based activities anonymously.

 Deckers is unable to determine the exact physical whereabouts or identity of the 

registrants of the Defendant Domain Names. However, Deckers has good cause to suspect the 

registrants of the respective Defendant Domain Names are all residents of China. The United 

States and the People’s Republic of China are both signatories to the Hague Convention on the 

Service Abroad of Judicial and Extra-Judicial Documents in Civil and Commercial Matters (the 

“Convention”). Gaudio Declaration at ¶ 11. 

 U.S. Courts have routinely authorized international mail and email service 

notwithstanding the applicability of the Hague Convention. See e.g., Brockmeyer v. May, 383 

F.3d 798, 800 (9th Cir. 2004) (“[W]e join the Second Circuit in holding that the Hague 

Convention allows service of process by international mail”); Nanya Tech. Corp. v. Fujitsu Ltd., 

2007 WL 269087, *6, (D. Guam, Jan. 26, 2007) (Hague Convention, to which Japan is a 

signatory, did not prohibit email service upon Japanese defendant); Popular Enters., 225 F.R.D. 

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at 562 (recognizing that, while “communication via e-mail and over the internet is comparatively 

new, such communication has been zealously embraced within the business community”). In 

addition, the law of the People’s Republic of China does not appear to prohibit the service of 

process by email and allows for alternate service means in certain circumstances. Gaudio 

Declaration at ¶ 12. As such, this Court should grant Deckers permission to serve Defendants 

via email. 

V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF 

The posting of security upon issuance of a temporary or permanent injunction is vested in 

the Court’s sound discretion. Mascio v. Public Emp. Retirement Sys. of Ohio, 160 F. 3d 310, 313 

(6th Cir. 1998); Rathman Group v. Tanenbaum, 889 F.2d 787, 789 (8th Cir. 1987); Hoechst 

Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411 (4th Cir. 1999). 

 Because of the strong and unequivocal nature of Deckers’ evidence of counterfeiting and 

infringement and unfair competition, Deckers respectfully requests this Court require Deckers to 

post a bond of no more than Ten Thousand dollars ($10,000.00). See, e.g., Deckers Outdoor 

Corporation v. Does 1-100, No. 12 Civ. 377, Docket Nos. 20, 30 and 35 (N.D. Ill. 2012) 

($10,000 bond); Builder's World, Inc v. Marvin Lumber & Cedar, Inc. 482 F.Supp.2d 1065, 

1078 (E.D.Wisc.2007) ($1,000 bond); Habitat Educ. Ctr. v. U.S. Forest Serv., 607 F.3d 453, 456 

(7th Cir. 2010) ($10,000 bond); True Religion Apparel, Inc. et al. v. Xiaokang Lee et al., No. 11 

Civ. 8242 (S.D.N.Y. Dec. 12, 2011) ($10,000 bond); Nat’l Football League v. 

Chen Cheng, No. 11 Civ. 0344 (S.D.N.Y. Jan. 31, 2011) ($10,000 bond); Farouk Systems, Inc. 

v. Eyou Int’l Trading Company, Ltd., et al., No. 10 Civ. 2672 (S.D. Tex. Aug. 16, 2010) 

($10,000 bond); Chanel, Inc. v. Zhixian, No. 10-cv-60585-JIC (S.D. Fla. April 21, 2010) 

($10,000 bond); Chanel, Inc. v. Paley, No. 09-cv-04979-MHP (N.D. Cal. Nov. 13, 2009) 

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($10,000 bond); Gucci Am., Inc. v. Curveal Fashion, No. 09 Civ. 8458 (S.D.N.Y. Oct. 15, 2009) 

($10,000 bond).

VI. CONCLUSION 

Defendants’ counterfeiting operations are irreparably harming Deckers’ business, its 

UGG brand and consumers. Without entry of the requested relief, Defendants’ sale of the 

counterfeit products will continue to lead prospective purchasers and others to believe 

Defendants’ counterfeit products have been manufactured by Deckers, when in fact, they have 

not. Further, such deception will occur during the critical winter months which represents the 

peak sales season for Deckers’ UGG products. Therefore, entry of an ex parte order is necessary 

to protect Deckers’ UGG Trademark rights, to prevent further harm to Deckers and the 

consuming public, and to preserve the status quo. In view of the foregoing, Deckers respectfully 

requests this Court enter a temporary restraining order in the form submitted herewith and set a 

hearing regarding Deckers’ preliminary injunction before the expiration of the temporary 

restraining order. 

 

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Dated this 20th day of March 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) 

kguynn@gbclaw.net 

aziegler@gbclaw.net 

jgaudio@gbclaw.net 

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