December 2, 2014

Online Investigation Leads to Successful Raid for WWE

Informed Counsel

As part of Tilleke & Gibbins’ one-stop intellectual property service in Thailand, our in-house investigation team periodically conducts market surveys in key areas in Bangkok and upcountry. The team also performs online sightings to evaluate the situation of counterfeit goods as it relates to our clients’ brands and to obtain leads on individuals and businesses involved in trading fake products in the country.

Several months ago, Tilleke & Gibbins’ investigators discovered a number of local websites and Facebook pages advertising and selling counterfeit World Wrestling Entertainment (WWE) T-shirts and merchandise. In all likelihood, these local websites and Facebook pages would not have been found by global watch services, as they are predominantly written in the Thai language.

Photographs of WWE’s Superstars and events and images of counterfeit T-shirts and merchandise bearing pictures of WWE’s Superstars and trademarks were among the counterfeit goods being offered for sale on these local websites and Facebook pages. On behalf of our client, WWE, the Tilleke & Gibbins investigation team conducted a preliminary investigation into the infringers to gather information about the websites’ operators, business addresses, value of the counterfeit goods, and payment methods, among other things. Thereafter, we reported the findings to our client and issued recommendations that the client authorize a more in-depth investigation into the infringement and pursue enforcement actions suitable to the infringement.

The client agreed with the course of action set out by our recommendations. Acting on the client’s authorization, our investigation team immediately launched an in-depth investigation into the owners of the local websites and Facebook pages and obtained additional information relevant to their illegal activities, including samples and sources of the counterfeit goods and other entities involved in the operation such as shipping companies, etc.

Subsequent to the completion of the investigation, our client made the decision to perform a raid on one of the more egregious infringers. This infringer operated its business through the <hereshirt.com> website, as well as via a Facebook page, which had amassed more than 20,000 “Likes” within the past two years. Based on the Facebook page’s popularity, and the results of our sample purchases made through our investigator, the assumption was made that this infringer had received significant profits from selling counterfeit WWE T-shirts and merchandise. In addition, our investigation had revealed that this infringer was linked to a number of suppliers of counterfeit goods in China.

On August 20, 2014, the Tilleke & Gibbins raid team, together with the Economic Crime Division (ECD) of the Royal Thai Police, obtained a Search Warrant from the Central Intellectual Property & International Trade Court (IP&IT Court) to raid the residence of the infringer, who was located in a suburb of Bangkok.

The raid began with every room in the residence being subject to a search. Our raid team found that the infringer was indeed stocking counterfeit WWE T-shirts. The infringer admitted to looking for suppliers in China, ordering the counterfeit goods through a well-known Chinese sourcing website, and then contacting a shipping company in Bangkok to facilitate the import of the counterfeit goods. The infringer also mentioned that the aforementioned method is, nowadays, a typical means through which to trade counterfeit goods, owing to the following factors: the business model is simple, it requires a lower investment, and it is less risky than vending counterfeit goods in a shop or on the street.

As a result of this successful raid action, almost 300 counterfeit WWE T-shirts and other merchandise were seized, and the infringer’s Facebook page was terminated. The infringer was arrested, and will be prosecuted at the IP&IT Court for criminal offenses in violation of the Trademark Act. In this case, the ECD police also confiscated several folders containing business documents, such as purchase orders, shipping documents, and lists of customers, all of which will help to track down the sources providing the counterfeit goods from overseas. Our lawyer was also able to negotiate with the infringer to disclose information about other traders in Thailand who advertise and sell counterfeit WWE T-shirts and merchandise on the Internet, which will assist in further suppressing such counterfeiting activities.

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