Gillette Sues Store Operators, Asks Court to Compel Delisting from Online Marketplaces

The Gillette Company LLC (Gillette) has filed a trademark infringement action in  the Northern District of Illinois against “store operators” who allegedly “trade upon Plaintiff’s reputation and goodwill by offering for sale/and or selling unauthorized and unlicensed products, including Oral-B electric toothbrush replacement heads, which use infringing and counterfeit versions of Plaintiff’s registered trade marks (the ‘Counterfeit Plaintiff Products’).”

The defendants in the caption are individuals and entities “identified in Schedule A” to the complaint, but Schedule A is not public. In a Motion for Leave to File Under Seal filed contemporaneously with the complaint, Gillette explains its need for confidentiality and provides more information about the defendants.  Schedule A “… identifies numerous domain names linked to interactive websites and marketplace listings on internet platforms, including the commercial Internet [sic] stores operating under the Defendants [sic] Domain Names and/or the Online Marketplace Accounts ( collectively, the ‘Defendants’ Internet Stores’)…”

The motion further exlpains that “In this action, Gillette is requesting temporary ex parte relief based on an action for trade infringement, counterfeiting, false designation of origin and copyright infringement. Sealing these limited portions of the file [Schedule A and certain other documents] is necessary to prevent the Defendants from learning of these proceedings prior to the execution of the temporary restraining order. If Defendants were to learn of these proceedings prematurely, the likely result would be the destruction of relevant documentary evidence and the hiding ore transferring of assets to foreign jurisdictions…”  Gillette also filed a motion for a temporary restraining order.

Gillette alleges numerous ways in which the “Defendants Internet Stores” confuse consumers into thinking they are buying authentic Gillette Oral-B products but instead are receiving inferior, sometimes dangerous counterfeits. Gillette seeks relief under three causes of action: trademark infringement, false designation of origin, and violation of Illinois’ Deceptive Trade Practices Act.

Gillette seeks exhaustive monetary and injunctive relief, essentially shutting down the defendants’ businesses and payment of trebled or statutory damages.  Of particular interest, Gillette seeks, “Entry of an Order, that upon Plaintiff’s request, those in privity with Defendants and those with notice of the injunction, including any online marketplaces … and social media platforms … web hosts, sponsored search engines or ad-word providers …, payment processing providers and Internet [sic] search engines …” cease servicing accounts “through which Defendants engage in the sale of counterfeit products using Plaintiff’s Trademarks… cease displaying any advertisements used by or associated with Defendants in connection with the sale of counterfeit products and infringing goods using Plaintiff’s Trademarks; and … take all steps necessary to prevent links to the Defendants’ Domain Names and Defendants’ Internet Stores identified in Schedule A from displaying in search results…”

Gillette is represented by Ulmer & Berne LLP.