Opinion
1:21-cv-09352
12-17-2021
TANGLE, INC., Plaintiffs, v. THE INDIVIDUALS, CORPORATIONS, LIMITED LIABILITY COMPANIES, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A HERETO, Defendants.
PRELIMINARY INJUNCTION ORDER
LORNA G. SCHOFIELD, UNITED STATES DISTRICT JUDGE
THIS MATTER comes before the Court on Plaintiff TANGLE, INC.'s application, brought by way of Order to Show Cause, for entry of a Preliminary Injunction (the “Application”) against the Defendants identified on Amended Schedule A to the Complaint (collectively, the “Defendants”), which is attached here as Exhibit A, and using at least the domain names identified in the Amended Schedule A (the “Defendant Domain Names”) and the online marketplace accounts identified in the Amended Schedule A (the “Online Marketplace Accounts”); and
THE COURT having reviewed the papers in support of and in opposition to the Application (if any); and the Court having found that Plaintiff meets the criteria for entry of preliminary injunctive relief; and
This Court further finds that it has personal jurisdiction over the Defendants because the Defendants directly target their business activities toward consumers in the United States, including New York, offering to sell and ship products into this Judicial District. Specifically, Defendants are reaching out to do business with New York residents by operating one or more commercial, interactive Internet Stores through which New York residents can purchase products bearing counterfeit versions of the TANGLE products incorporating the TANGLE Trademark, U.S. Trademark Registration No. 1779055 and/or the TANGLE copyrights, being at least U.S. Copyright Office Registration Nos. VA 120-368, VA 1-232-933, VA 1-271-045, VAu35-392, VAu 35-391, VAu 35-390, VAu 35-389, VAu 35-388, VAu 35-387 (collectively, “the TANGLE Copyright Registrations”); and
THIS COURT having determined that the evidence submitted in support of the Application establishes Plaintiff has a likelihood of success on the merits; that no remedy at law exists; and that Plaintiff will suffer irreparable harm if the injunction is not granted including for example
1. Through the Declarations of Michael Yellin and Richard Zawitz and accompanying evidence, Plaintiff has proved a prima facie case of trademark infringement because (1) the TANGLE Trademark is a distinctive mark and registered with the U.S. Patent and Trademark Office on the Principal Register, (2) Defendants are not licensed or authorized to use the TANGLE Trademark, and (3) Defendants' use of the TANGLE Trademark is causing a likelihood of confusion as to the origin or sponsorship of Defendants' products with Plaintiff; and
2. Plaintiff has also proved a prima face case of copyright infringement because Defendants have copied Plaintiff's copyrights for the TANGLE products without Plaintiff's consent; and
3. Defendants' continued and unauthorized use of the TANGLE Trademark and copyrights irreparably harms Plaintiff through diminished goodwill and brand
confidence, damage to Plaintiff's reputation, loss of exclusivity, and loss of future sales.
4. Monetary damages fail to address such damage and, therefore, Plaintiff has an inadequate remedy at law; and
5. The public interest is served by entry of this Preliminary Injunction to dispel the public confusion created by Defendants' actions; and
THIS COURT having determined, therefore, that injunctive relief previously granted in the Temporary Restraining Order (“ TRO ”) on November 15, 2021 [Dkt. No. 14] should remain in place through the pendency of this litigation and that issuing this Preliminary Injunction is warranted under the Federal Rule of Civil Procedure 65;
NOW THEREFORE, on this Seventeenth day of December, 2021, this Court ORDERS that:
1. Defendants, their affiliates, officers, agents, servants, employees, attorneys, confederates, and all persons acting for, with, by, through, under or in active concert with them be temporarily enjoined and restrained from:
a. Using Plaintiff's TANGLE Trademark, copyrights, or any reproductions, counterfeit copies, or colorable imitations thereof in any manner in connection with the distribution, marketing, advertising, offering for sale, or sale of any product that is not a genuine TANGLE product or not authorized by Plaintiff to be sold in connection with Plaintiff's TANGLE Trademark and/or copyrights;
b. Passing off, inducing, or enabling others to sell or pass off any product as a genuine TANGLE product or any other product produced by Plaintiff, that is not Plaintiff's or not produced under the authorization, control, or supervision of Plaintiff and approved by Plaintiff for sale under the Plaintiff's TANGLE Trademark and/or copyrights;
c. Committing any acts calculated to cause consumers to believe that Defendants' products are those sold under the authorization, control or supervision of Plaintiff, or are sponsored by, approved by, or otherwise connected with Plaintiff;
d. Further infringing the Plaintiff's TANGLE Trademark and/or copyrights and damaging Plaintiff's goodwill;
e. Shipping, delivering, holding for sale, transferring or otherwise moving, storing, distributing, returning, or otherwise disposing of, in any manner, products or inventory not manufactured by or for Plaintiff, nor authorized by Plaintiff to be sold or offered for sale, and which bear any of Plaintiff's TANGLE Trademark and/or copyrights or any reproductions, counterfeit copies, or colorable imitations thereof;
f. Using, linking to, transferring, selling, exercising control over, or otherwise owning the Online Marketplace Accounts, the Defendant Domain Names, or any other domain name or online marketplace account that is being used to sell or is the means by which Defendants could continue to sell counterfeit TANGLE products; and
g. Operating and/or hosting websites at the Defendant Domain Names and any other domain names registered or operated by Defendants that are involved with the distribution, marketing, advertising, offering for sale, or sale of any product bearing the Plaintiff's TANGLE Trademark and/or copyrights or any reproductions, counterfeit copies, or colorable imitations thereof that is not a genuine TANGLE product or not authorized by Plaintiff to be sold in connection with the Plaintiff's TANGLE Trademark and/or copyrights.
2. Each Defendant, within fourteen (14) days after receiving notice of this Order, shall serve upon Plaintiff a written report under oath providing: (a) their true name and physical address, (b) all websites and online marketplace accounts on any platform that they own and/or operate (c) their financial accounts, including all Amazon, PayPal, Payoneer, LianLian, AllPay, Ping Pong, Coinbase, Union Mobile, and eBay accounts, and (d) the steps taken by each Defendant to comply with paragraph 1, a through h, above.
3. The domain name registries for the Defendant Domain Names, including, but not Limited to, VeriSign, Inc., Neustar, Inc., Afilias Limited, CentralNic, Nominet, and the Public Interest Registry, within three (3) business days of receipt of this Order or prior to expiration of this Order, whichever date shall occur first, shall disable the Defendant Domain Names and make them inactive and untransferable until further ordered by this Court.
4. Those in privity with Defendants and with actual notice of this Order, including any online marketplaces such as Amazon, Wish, DHGate, AliExpress, and eBay, social media platforms, Facebook, YouTube, LinkedIn, Twitter, Internet search engines such as Google, Bing, and Yahoo, web hosts for the Defendant Domain Names, and domain name registrars, shall within three (3) business days of receipt of this Order:
a. disable and cease providing services for any accounts through which Defendants engage in the sale of counterfeit and infringing goods using the TANGLE Trademark and/or copyrights, including any accounts associated with the Defendants listed on the Amend Schedule A;
b. disable and cease displaying any advertisements used by or associated with Defendants in connection with the sale of counterfeit and infringing goods using the TANGLE Trademark and/or copyrights; and
c. take all steps necessary to prevent links to the Defendant Domain Names identified on the Amended Schedule A from displaying in search results, including, but not limited to, removing links to the Defendant Domain Names from any search index.
5. Defendants and any third party with actual notice of this Order who is providing services for any of the Defendants, or in connection with any of Defendants' websites at the Defendant Domain Names or other websites operated by Defendants, including, without limitation, any online marketplace platforms such as Amazon, Wish, DHGate, AliExpress, and eBay, Facebook, Internet Service Providers (“ISP”), web hosts, back-end service providers, web designers, sponsored search engine or ad-word providers, banks, merchant account providers, including Amazon, PayPal, Payoneer, LianLian, AllPay, Ping Pong, Coinbase, Union Mobile, and eBay, third party processors and other payment processing service providers, shippers, and domain name registrars (collectively, the “Third Party Providers”) shall, within ten (10) business days after receipt of such notice, provide to Plaintiff expedited discovery, including copies of all documents and records in such person's or entity's possession or control relating to:
a. The identities and locations of Defendants, their agents, servants, employees, confederates, attorneys, and any persons acting in concert or participation with them, including all known contact information;
b. The nature of Defendants' operations and all associated sales and financial information, including, without limitation, identifying information associated with the Online Marketplace Accounts, the Defendant Domain Names, and Defendants' financial accounts, as well as providing a full accounting of Defendants' sales and listing history related to their respective Online Marketplace Accounts and Defendant Domain Names;
c. Defendants' websites and/or any Online Marketplace Accounts;
d. The Defendant Domain Names or any domain name registered by Defendants; and
e. Any financial accounts owned or controlled by Defendants, including their agents, servants, employees, confederates, attorneys, and any persons acting in concert or participation with them, including such accounts residing with or under the control of any banks, savings and loan associations, payment processors or other financial institutions, including, without limitation, Amazon, PayPal, Payoneer, LianLian, AllPay, Ping Pong, Coinbase, Union Mobile, and eBay, or other merchant account providers, payment providers, third party processors, and credit card associations (e.g., MasterCard and VISA).
6. Defendants and any persons in active concert or participation with them who have actual notice of this Order shall be temporarily restrained and enjoined from transferring or disposing of any money or other of Defendants' assets until further ordered by this Court.
7. Western Union shall, within five (5) business days of receipt of this Order, block any Western Union money transfers and funds from being received by the Defendants identified in Amended Schedule A until further ordered by this Court.
8. Amazon, Wish, DHGate, AliExpress, and eBay shall, within five (5) business days of receipt of this Order, for any Defendant or any of Defendants' Online Marketplace Accounts or websites:
a. Locate all accounts and funds connected to and related to Defendants, Defendants' Online Marketplace Accounts or Defendants' websites, including, but not limited to, any Amazon, PayPal, Payoneer, LianLian, AllPay, Ping Pong, Coinbase, Union Mobile, and eBay accounts connected to and related to the information listed in Amended Schedule A to the Complaint; and
b. Restrain and enjoin any such accounts or funds from transferring or disposing of any money or other of Defendants' assets until further ordered by this Court.
9. Any banks, savings and loan associations, payment processors, or other financial institutions, for any Defendant or any of Defendants' Online Marketplace Accounts or websites, shall within five (5) business days of receipt of this Order:
a. Locate all accounts and funds connected to Defendants, Defendants' Online Marketplace Accounts or Defendants' websites, including, but not limited to, any accounts connected to the information listed in the Amended Schedule A to the Complaint; and
b. Restrain and enjoin such accounts from receiving, transferring or disposing of any money or other of Defendants' assets until further ordered by this Court.
10. Plaintiff may provide notice of these proceedings to Defendants by electronically publishing a link to the Complaint, this Order and other relevant documents on a website or by sending an e-mail to all e-mail addresses identified by Plaintiff and any e-mail addresses provided for Defendants by third parties that includes a link to said website. The combination of providing notice via electronic publication or e-mail, along with any notice that Defendants receive from domain name registrars and payment processors, shall constitute notice reasonably calculated under all circumstances to apprise Defendants of the pendency of the action and afford them the opportunity to present their objections.
11. Plaintiffs' Amended Schedule A to the Complaint, Exhibit 2 to the Declaration of Richard Zawitz and the TRO shall become unsealed.
12. Any Defendants that are subject t modify the Order on two days' notice to Plaintiff or on shorter notice as set by this Court.
13. The fifteen-thousand dollars ($15,000.00) bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Preliminary Injunction is terminated.
EXHIBIT A
1:21-cv-09352-LGS
Amended
SCHEDULE A TO COMPLAINT - PROVISIONALLY FILE UNDER SEAL
No.
Defendants
Defendants Online Marketplace(s)
1.
DZ Official Store
http://www.aliexpress.com/store/1005002797588535
2.
AEXWJ TOY
https://www.aliexpress.com/store/910353356
3.
Bestwin
https://www.aliexpress.com/store/4653013
4.
BiAiBiYi
https://www.aliexpress.com/store/912174985
5.
cataleya
https://www.aliexpress.com/store/4434001
6.
Ct-Children's
https://www.aliexpress.com/store/900239321
7.
DGFC TOY
https://www.aliexpress.com/store/5870652
8.
DL 3Cfactory
https://www.aliexpress.com/store/5711030
9.
Genvue
https://www.aliexpress.com/store/912059651
10.
Goldtoy
https://www.aliexpress.com/store/911935648
11.
Grapefruit flavour
https://www.aliexpress.com/store/911040008
12.
GULU
https://www.aliexpress.com/store/911300089
13.
INTENTIONALLY OMITTED
INTENTIONALLY OMITTED
14.
Huang Neeky
https://www.aliexpress.com/store/4289045
15.
Jane Loving
https://www.aliexpress.com/store/2962179
16.
Kayla Purplegrape
https://www.aliexpress.com/store/5109078
17.
Kidsmoon
https://www.aliexpress.com/store/5593413
18.
Leconi Toy
https://www.aliexpress.com/store/4450028
19.
Light up the childhood
https://www.aliexpress.com/store/912020136
20.
Lovelybabymoon Factory
https://www.aliexpress.com/store/911602293
21.
MadeInChinaYGF
https://www.aliexpress.com/store/911142139
22.
Maloo Toy
https://www.aliexpress.com/store/3455001
23.
Mommy's Flavour Mother and Baby
https://www.aliexpress.com/store/911771290
24.
motherbaby buyer
https://www.aliexpress.com/store/5039285
25.
Muxin ToyBox
https://www.aliexpress.com/store/911603778
26.
Outplay
https://www.aliexpress.com/store/911870076
27.
RZC kids Toy
https://www.aliexpress.com/store/5741031
28.
sahdjfghj
https://www.aliexpress.com/store/912225166
29.
Shop4046058
https://www.aliexpress.com/store/4046058
30.
Shop4873033
https://www.aliexpress.com/store/4873033
31.
Shop911257425
https://www.aliexpress.com/store/911257425
32.
Shop911391083
https://www.aliexpress.com/store/911391083
33.
Shop911416625
https://www.aliexpress.com/store/911416625
34.
Shop911418068
https://www.aliexpress.com/store/911418068
35.
Shop911464053
https://www.aliexpress.com/store/911464053
36.
Shop911536135
https://www.aliexpress.com/store/911536135
37.
Shop911573018
https://www.aliexpress.com/store/911573018
38.
Tasteful Party
https://www.aliexpress.com/store/5079237
39.
The first Children Toy
https://www.aliexpress.com/store/910640057
40.
TOBEFU
https://www.aliexpress.com/store/4836210
41.
wild kid
https://www.aliexpress.com/store/2664036
42.
wuzun
https://www.aliexpress.com/store/911931028
43.
Coffee-time
https://www.amazon.com/sp?encoding=UTF8&asin= &isAmazonFulfilled=1&isCBA=&marketplaceID=A TVPDKIKX0DER&orderID=&protocol=current&sell er=ABTJH59DSJ4AE&sshmPath=
44.
Longtous
https://www.amazon.com/sp?encoding=UTF8&asin= &isAmazonFulfilled=&isCBA=&marketplaceID=AT VPDKIKX0DER&orderID=&protocol=current&seller =A1Y96VML4RNQ3&sshmPath=
45.
Overvloedi
https://www.amazon.com/sp?encoding=UTF8&asin= &isAmazonFulfilled=1&isCBA=&marketplaceID=A TVPDKIKX0DER&orderID=&protocol=current&sell er=A1782YPG2VFHDC&sshmPath=
46.
Qozearv
https://www.amazon.com/sp?encoding=UTF8&asin= &isAmazonFulfilled=&isCBA=&marketplaceID=AT
VPDKIKX0DER&orderID=&protocol=current&seller =A6FTVQBWGJZD8&sshmPath=
47.
Yangerfu
https://www.amazon.de/-/en/sp?marketplaceID=A1PA6795UKMFR9&seller= A3GPV032VWS4DV&isAmazonFulfilled=1&ref=dp merchant link
48.
andrewho
https://www.dhgate.com/store/20945342
49.
aner0712
https://www.dhgate.com/store/21670259
50.
Cinderelladress
https://www.dhgate.com/store/14772863
51.
cwmsports
https://www.dhgate.com/store/21531208
52.
dribehance
https://www.dhgate.com/store/20674395
53.
hirohome
https://www.dhgate.com/store/21620785
54.
hy dance
https://www.dhgate.com/store/21566332
55.
Janner
https://www.dhgate.com/store/21641952
56.
jubaopen08
https://www.dhgate.com/store/21703935
57.
jubaopen09
https://www.dhgate.com/store/21703939
58.
kidstoys wholesale
https://www.dhgate.com/store/21554226
59.
newtoywholesale
https://www.dhgate.com/store/21645273
60.
octopus_wholesale
https://www.dhgate.com/store/21650392
61.
one-stopos Wedding Dress manufacturer
https://www.dhgate.com/store/14499063
62.
onlystore101
https://www.dhgate.com/product/tiktok-colorful-tangle-fidget-toys-globbles/723686828.html
63.
tangchao11
https://www.dhgate.com/product/snap-autism-wacky-puzzles-and-click-fidget/725494580.html
64.
topbriliant2020
https://www.dhgate.com/store/21212538
65.
topkmall
https://www.dhgate.com/store/21633236
66.
toys wholesales
https://www.dhgate.com/store/21700964
67.
toyspro
https://www.dhgate.com/store/21582391
68.
wf245347
https://www.dhgate.com/store/20997200
69.
wholesalestores2021
https://www.dhgate.com/product/pop-tube-tangle-fidget-sensory-squeeze-toy/725673523.html
70.
yunhai wholesale toy
https://www.dhgate.com/store/21713760
71.
cmltdbartz71 2
https://www.ebay.com/usr/cmltdbartz71_2
72.
Dibibi
https://www.wish.com/merchant/5b30ca34eae8b454d e3db60b
73.
eThrif
https://www.wish.com/merchant/608aa03eb4cbfc5a93 cc1c40
74.
FYMZ
https://www.wish.com/merchant/5927c9afad8927644 46f23f2
75.
JiangJiang0
https://www.wish.com/merchant/5dfddccc535597128 0f784ee
76.
jiquanchengmmla
https://www.wish.com/merchant/5f9a64a3590483a31 5f85628
77.
Kevin cat
https://www.wish.com/merchant/5d40380172b0c92ff9 75349b
78.
LifestyleDepartment
https://www.wish.com/merchant/5f0b503bb84da0faf2 aaa1a1
79.
liushihang73734
https://www.wish.com/merchant/6057029af01af49a71 db7c62
80.
Mustay
https://www.wish.com/merchant/5f8d25f0db0534da0a 59bb96
81.
the spray is all washed out
https://www.wish.com/merchant/608296c9a59109d73 e4bac6d
82.
Weirongyu
https://www.wish.com/merchant/60502508c5b9290e0 531ac40
83.
Yolie
https://www.wish.com/merchant/5b696381aa1d27144 0989972
84.
Young world of Kailin
https://www.wish.com/merchant/5eead826059bf518da 5e6e2f
85.
zhanghuarongpoos
https://www.wish.com/merchant/5f8c0b8b19a61a5b0 2f6c577