Opinion
23-CV-10967 (DEH)
12-27-2023
THE PINKFONG COMPANY, INC., Plaintiff(s), v. ALIBABA.COM SINGAPORE E-COMMERCE PTE LTD., et al., Defendant(s).
MEMORANDUM OPINION AND ORDER
DALE E. HO, UNITED STATES DISTRICT JUDGE
On December 19, 2023, Plaintiff The Pinkfong Company, Inc. (“Plaintiff”) initiated this action, under seal, against twenty-three (23) Defendants, alleging that Defendants are infringing Plaintiff's Baby Shark Marks and/or Baby Shark Works. See generally Complaint (“Compl.”). That same day, Plaintiff also requested that the Court grant Plaintiff's omnibus ex parte application for (1) a temporary restraining order, (2) an order restraining merchant storefronts and Defendants' assets with the relevant financial institutions, (3) an order to show cause why a preliminary injunction should not issue, (4) an order authorizing bifurcated and alternative service, and (5) an order authorizing expedited discovery (the “Application”). As set forth below, the Court grants the Application in part, authorizing bifurcated and alternative service as to certain Defendants only-namely, Easy Fabric Show (china) Co., Ltd. and Yiwu Fuxin Trade Co., Ltd.
DISCUSSION
Plaintiff requests permission to serve Defendants, whom Plaintiff believes are located in China, by email and online publication pursuant to Federal Rule of Civil Procedure (“Rule”) 4(f)(3). See Plaintiff's Memorandum of Law (“Br.”) at 18-35. Rule 4(f) provides three methods of service on a defendant in a foreign country: “(1) by any internationally agreed means of service that is reasonably calculated to give notice, such as those authorized by the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents; (2) if there is no internationally agreed means, or if an international agreement allows but does not specify other means, by a method that is reasonably calculated to give notice . . . [;] or (3) by other means not prohibited by international agreement, as the court orders.” Fed.R.Civ.P. 4(f). “The decision whether to allow alternative methods of serving process under Rule 4(f)(3) is committed to the sound discretion of the district court.” Vega v. Hastens Beds, Inc., 342 F.R.D. 61, 64 (S.D.N.Y. 2022).
Unless otherwise noted, when quoting judicial decisions, this order accepts all alterations and omits all citations, footnotes, and internal quotation marks.
China is a signatory to the Hague Convention. See Smart Study Co. v. Acuteye-US, 620 F.Supp.3d 1382, 1389 (S.D.N.Y. 2022). Thus, to be permissible under Rule 4(f)(3), Plaintiff's proposed alternative service must not be prohibited by the Hague Convention. See id. “The Hague Convention does not apply ‘where the address of the person to be served with the document is not known.'” Smart Study Co., 620 F.Supp.3d at 1390 (quoting Advanced Access Content Sys. Licensing Adm'r, LLC v. Shen, No. 14-cv-01112 (VSB), 2018 WL 4757939, at *4 (S.D.N.Y. Sept. 30, 2018)). “[A]n address is not known if the plaintiff exercised reasonable diligence in attempting to discover a physical address for service of process and was unsuccessful in doing so.” Advanced Access Content Sys. Licensing Adm'r, LLC, 2018 WL 4757939, at *4. “[P]laintiffs have been found to have exercised reasonable diligence to discover a physical address . . . where the plaintiff researched defendant's websites associated with defendant's domain names, completed multiple Internet-based searches, called known phone numbers, and conducted in-person visits, where the plaintiff performed extensive investigation and issued subpoenas to the relevant domain registrars and email providers, and where a plaintiff has attempted to obtain the defendant's address in a variety of ways.” Smart Study Co., 620 F.Supp.3d at 1391. Thus, courts have “consistently held that multiple modes of attempted contact typically are required to satisfy the ‘reasonable diligence' standard.” Kyjen Co., LLC v. Individuals, Corps., Ltd. Liab. Cos., P'ships, & Unincorporated Ass'ns Identified on Schedule A to Compl., No. 23-cv-00612 (JHR), 2023 WL 2330429, at *3 (S.D.N.Y. Mar. 2, 2023); see, e.g., Kelly Toys Holdings, LLC v. Top Dep't Store, No. 22-cv-00558 (PAE), 2022 WL 3701216, at *6 (S.D.N.Y. Aug. 26, 2022) (finding reasonable diligence where the plaintiff utilized web searches and dispatched investigator and local counsel to discover and confirm the defendants' physical addresses); Zuru (Sing.) Pte., Ltd. v. Individuals Identified on Schedule A Hereto, No. 22-cv-02483 (LGS), 2022 WL 14872617, at *2 (S.D.N.Y. Oct. 26, 2022) (same where the plaintiffs and local counsel conducted “further online research, sent mail to the addresses, and conducted in-person visits” to determine the accuracy of the defendants' physical addresses).
Plaintiff principally asserts that its proposed alternative service is permissible because (1) Defendants' addresses are unknown and, therefore, the Hague Convention does not apply; and (2) even if the Hague Convention applies, it does not prohibit Plaintiff's proposed alternative service by email and online publication, given the circumstances. See Br. at 19-35. The Court considers these arguments in turn.
Whether Defendants' Addresses are Unknown
Plaintiff states that its local counsel in China compiled a list of addresses attributed to Defendants from their online storefronts, searched for information about those addresses on three Chinese search engines, and attempted to retrieve phone numbers connected with those addresses. See Br. at 22; Gabriela N. Natasi Declaration (“Natasi Decl.”) ¶¶ 29-34. For any Merchant Defendant for which Plaintiff's local counsel determined it had a potentially accurate address, said counsel mailed test documents (“Test Mailings”) via a courier service, Yunda Express, to the respective Merchant Defendants to test the veracity of the addresses. Br. at 22; Natasi Decl. ¶¶ 35-37.
From this inquiry, Plaintiff determined that Defendants fall into four categories:
1. two (2) Defendants display addresses that cannot be connected to the respective Merchant Defendants in any way (the “No Address Defendants”);
2. three (3) Defendants display addresses that appear to be accurate, but ultimately do not have enough identifying information to send Test Mailings to the addresses (the “No Test Mailing Defendants);
3. fifteen (15) Merchant Defendants display addresses that appear to be accurate and had enough additional identifying information to send Test Mailings to the addresses (i.e., a phone number connected to the addresses), all of which were successfully delivered (the “Successful Test Mailing Defendants”; and
4. three (3) Merchant Defendants display addresses that appear to be accurate and had enough additional identifying information to send Test Mailings to the addresses (i.e., a phone number connected to the addresses), all of which were unsuccessfully delivered (the “Unsuccessful Test Mailing Defendants”).
The following two (2) Merchant Defendants display addresses that could not be connected to the respective Merchant Defendants in any way: Easy Fabric Show (china) Co., Ltd. and Yiwu Fuxin Trade Co., Ltd. Br. at 23 n.15.
The following three (3) Merchant Defendants display addresses that appear to be accurate, but Plaintiff could not find enough identifying information to send them Test Mailings: Baby One Store, WJP Party Store and Yiwu Yelu E-commerce Co., Ltd. Br. at 23 n.16.
The following fifteen (15) Merchant Defendants had enough identifying information available for Plaintiff to successfully send Test Mailings to: Baoding Baigou New Town Yan Xiannv Plush Doll Sales Department, CK-baby Store, Dongyang Walrus Commodity Co., Ltd., Hangzhou Happy Hi Crafts Co., Ltd., Hangzhou Shuangxin International Trade Co., Ltd., Jiangxi Tongda Candle Co., Ltd., Kokoer Store, Nantong Shensu Textile Co., Ltd., Shenzhen Y-Star Technology Co., Ltd., Shop1102751084 Store, Yangzhou Alijia Plush Toys Co., Ltd., Yangzhou New Sunrise Arts&Crafts Co., Ltd., Yiwu Bunida Garment Co., Ltd., Yiwu Youteng Paper Crafts Co., Ltd., and Zhangzhou Qixian Trading Co., Ltd. Br. at 23 n.17.
The following three (3) Merchant Defendants had enough identifying information available for Plaintiff to attempt to send Test Mailings to, but the Test Mailings were unsuccessfully delivered: Jieyang Rongcheng Freedom Home Commodity Store, Yiwu Party Paper Product Co., Ltd. and Yiwu Senya E-Commerce Co., Ltd. Br. at 23 n.18.
Br. at 22-23.
Plaintiff asserts that the addresses for all Defendants are unknown and seeks permission to serve all twenty-three (23) Defendants by alternative means. See Br. at 19. With respect to the two No Address Defendants (i.e., Easy Fabric Show (china) Co., Ltd. and Yiwu Fuxin Trade Co., Ltd.), the Court finds that Plaintiff provides details as to the reasonable diligence efforts taken to discover the true addresses of each No Address Defendant. Br. at 22. Accordingly, for the No Address Defendants only, Plaintiff has adequately explained that their addresses are “not known” for purposes of exemption from the Hague Convention, and the motion for alternative service by email is GRANTED as set forth in the associated Temporary Restraining Order. As explained below, however, Plaintiff's motion for alternative service by email as to all other Defendants is DENIED.
With respect to the three No Test Mailing Defendants, Plaintiff does not explain why the addresses, which it concedes may be accurate, are “not known.” See Smart Study Co., 620 F.Supp.3d at 1390. “[T]he fact that Yunda Express cannot send mail to an address without [additional identifying information] does not establish that the addresses are unknown for purposes of the exception to the Hague Convention.” Pinkfong Co., Inc. v. Avensy Store, No. 1:23-CV-09238 (JLR), 2023 WL 8530159, at *2 (S.D.N.Y. Nov. 30, 2023). Again, an address is not known if the plaintiff “exercised reasonable diligence in attempting to discover a physical address for service of process and was unsuccessful in doing so.” Advanced Access Content Sys. Licensing Adm'r, LLC, 2018 WL 4757939, at *4; see Smart Study Co., 620 F.Supp.3d at 1391 (“Cases in which plaintiffs have been found to have exercised reasonable diligence to discover a physical address include where the plaintiff researched defendant's websites associated with defendant's domain names, completed multiple Internet-based searche[s], called known phone numbers, and conducted in-person visits, where the plaintiff performed extensive investigation and issued subpoenas to the relevant domain registrars and email providers, and where a plaintiff has attempted to obtain the defendant's address in a variety of ways.”). Plaintiff has not, as of this time, satisfied that burden here with respect to these defendants.
With respect to the fifteen Successful Test Mailing Defendants, Plaintiff acknowledges that mailings were “successfully delivered” to the addresses connected with these defendants, but argues that “even sending and/or successfully delivering Test Mailings does not guarantee with any certainty that the person and/or entity who may have received the mail service is the Merchant Defendant given the motivation and propensity for counterfeiters, like Merchant Defendants, to conceal their true identities and whereabouts.” Br. at 23. But the absence of such a “guarantee” does not establish, as Plaintiff must, that the Defendants' addresses are “not known.” See Smart Study Co., 620 F.Supp.3d at 1390; Pinkfong Co., Inc., 2023 WL 8530159, at *2.
With respect to the three Unsuccessful Test Mailing Defendants, Plaintiff fails to explain whether it attempted to use any other delivery services or methods of delivery. As to these Defendants, Plaintiff has not shown that their addresses are “not known” for purposes of the exception to the Hague Convention. See Smart Study Co., 620 F.Supp.3d at 1390; Pinkfong Co., Inc., 2023 WL 8530159, at *2.
In sum, as to all but the No Address Defendants, Plaintiff has not met its burden to show that Plaintiff “exercised reasonable diligence in attempting to discover a physical address for service of process and was unsuccessful in doing so.” Advanced Access Content Sys. Licensing Adm'r, 2018 WL 4757939, at *4. Thus, those twenty-one (21) Defendants must be served in accordance with the Hague Convention, which does not permit service by email to those Defendants located in China. See Pinkfong Co., Inc., 2023 WL 8530159, at *3.
Whether the Hague Convention Prohibits Plaintiff's Proposed Alternative Service
The Court has considered Plaintiff's arguments that regardless of the applicability of the Hague Convention, alternative service is proper based on the exigent circumstances surrounding Plaintiff's Application. Br. at 25. China, however, “prohibits service by email on defendants located in China,” and “service by a method that is prohibited by international agreement is impermissible under Rule 4(f)(3).” Smart Study, 620 F.Supp.3d at 1392. Exigent circumstances-such as the need for urgent relief cited by Plaintiff-simply do not create an exception to this rule that is available here. See Smart Study, 620 F.Supp.3d at 1397.
CONCLUSION
For the foregoing reasons, the Court holds that, pursuant to Rule 4(f)(3), the Hague Convention does not apply to the two (2) No Address Defendants, and service by alternative means is permitted as to those defendants. For all other Defendants, the Hague Convention applies and service must be made accordingly.
SO ORDERED.