Chanel, Inc. v. Matos
133 F. Supp. 3d 678
D.N.J.2015Background
- Chanel (plaintiff) owns federally registered trademarks for CHANEL and related marks used on luxury clothing and monitors and polices unauthorized uses.
- In January 2014 a private investigator ordered shirts from defendant Rafael Matos’s online stores (fandangotees.com, jess‑mar, @nenemott); the investigator alleges Matos admitted the shirts “aren’t the real Chanel shirts.”
- The investigator and Chanel’s IP director inspected the received shirts and concluded they were non‑genuine counterfeits bearing exact replicas of Chanel’s registered marks.
- Chanel sued for trademark infringement, counterfeiting, and false designation under the Lanham Act; Matos was personally served in New Jersey but did not respond and default was entered.
- The court found personal jurisdiction (defendant domiciled/served in New Jersey), concluded the unchallenged facts established infringement and willful counterfeiting, and considered statutory damages and injunctive relief.
- The court granted default judgment in favor of Chanel: $180,400 (includes $180,000 statutory damages + $400 filing fee) and a permanent injunction barring Matos (and related persons/entities) from using or selling goods bearing Chanel marks.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction | Matos is domiciled and was served in New Jersey so the court has jurisdiction | No response / no contest | Court exercised general/specific jurisdiction based on domicile and in‑forum service; jurisdiction proper |
| Trademark infringement (likelihood of confusion) | Chanel’s registrations are valid; defendant used identical marks on competing goods sold online, causing inevitable confusion | No response | Court found registrations prima facie valid and defendant used exact replicas; infringement established |
| Trademark counterfeiting / willfulness | Defendant knowingly sold counterfeit Chanel goods and admitted non‑genuineness; willful/culpable conduct justifies counterfeiting finding | No response | Court found deliberate disregard/willfulness (satisfying counterfeiting standard) |
| Remedies: statutory damages, costs, injunction | Seeks statutory damages under 15 U.S.C. §1117(c) ($360,000 requested), costs ($400), and permanent injunction | No response | Court awarded $180,000 statutory damages (30× minimum per infringement), $400 filing fee, denied prejudgment interest, and entered a permanent injunction prohibiting infringing/counterfeit use and related acts |
Key Cases Cited
- Hritz v. Woma Corp., 732 F.2d 1178 (3d Cir. 1984) (district court discretion on default judgment and preference to decide cases on the merits)
- Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) (likelihood‑of‑confusion framework and analysis when parties sell competing goods)
- S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371 (3d Cir. 1992) (use of identical mark creates strong presumption of likelihood of confusion)
- Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187 (3d Cir. 1990) (identity of marks supports finding of likelihood of confusion)
- Daimler AG v. Bauman, 134 S. Ct. 746 (U.S. 2014) (individual’s domicile as paradigm forum for general jurisdiction)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (U.S. 2006) (four‑factor test for permanent injunction)
- Comdyne I, Inc. v. Corbin, 908 F.2d 1142 (3d Cir. 1990) (well‑pled allegations of complaint accepted as true in default judgment context)