Bulgari, S.P.A. V. Zou Xiaohong, No. 15 C 5148, Slip Op. (N.D. Ill. Oct. 15, 2015) (Coleman, J.).
Judge Coleman granted in part plaintiff Bulgari’s motion for summary judgment of trademark infringement, a permanent injunction and its attorney’s fees and costs regarding Bulgari’s BVLGARI marks used in relation to counterfeit rings.
It was undisputed that Bulgari owned the BVLGARI marks and that defendant sold rings using the marks without license or other right to use the marks. The Court was not persuaded by defendant’s argument that there was no likelihood of confusion because defendant’s counterfeit rings were so much cheaper than Bulgari’s that no one would be confused. The Court inferred that defendant’s infringement was willful because defendant’s internet business was fairly substantial, defendant acknowledged some familiarity with IP rights and defendant’s product descriptions omitted the BVLGARI mark that was prominent on its counterfeit products.
In light of defendant’s willfulness and the difficulty Bulgari would have in proving damages, the Court awarded Bulgari’s requested $100,000 in statutory damages pursuant to 15 U.S.C. § 1117 (c)(2).
The Court also entered a permanent injunction preventing defendant from selling or advertising counterfeit Bulgari products. The Court granted Bulgari’s request for attorney’s fees and costs as the prevailing party. Finally, the Court ordered that the funds in defendant’s PayPal account be transferred to Bulgari because of the Court’s concerns as to whether Bulgari would be able to collect from defendant.