Opinion
1:23-cv-09238 (JLR)
11-08-2023
THE PINKFONG COMPANY, INC., Plaintiff, v. AVENSY STORE, et al., Defendants.
MEMORANDUM OPINION AND ORDER
JENNIFER L. ROCHON, United States District Judge:
On October 20, 2023, Plaintiff The Pinkfong Company, Inc. (“Plaintiff”) initiated this action, under seal, against 33 defendants (collectively, “Defendants”), alleging that Defendants are infringing Plaintiff's Baby Shark Marks and Baby Shark Works. See ECF No. 2. That same day, Plaintiff also requested, without notice of motion, 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 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”). See id. For purposes of the request for alternative service, the Court requested a supplemental submission to determine whether the addresses of the Defendsants were “not known and whether Plaintiff has undertaken reasonable diligence to discover the address of each Defendant.” October 24, 2023 Memorandum Opinion and Order (the “Oct. 24, 2023 Order”) at 6. Plaintiff provided the requested supplemental submission on October 31, 2023 (“Supp. Decl.”).
Defendants are: Avensy store, BeGiol TTC, BOLMQHTS, chengmaichao, chenyaoyu (Image Omitted) a/k/a chenyaoyu candy, CTNUOBEE, dsfdsfhOO, FangRuJiuHenWangLuoKeJi, hahpee, Hefei Xuedao Trading Co., Ltd, HEZIWEI, HuiHongQi, jichangzhouxiansui, kuijidianzishangwuSHOP, liuzliuzhixiaoixiao, luyubeimeidianpu, Meow-meow-meow, PULI-US-US, Ronghang US, SHARK U.S. DZ-27, sharkalaka, summer story, TANGCHUN, TengYi Direct, XiaoShuWeiXiaoDian, YangPengFei123, yuanhsaoming, Zhangbaodebeimeidianpu, ZhangJinChengAnQingShouKong, Zhenka Shop, Zhouqigongsi, ZUZU BOOM, (Image Omitted) a/k/a Shengxuan Wood Industry Co., Ltd.
Among other documents, Plaintiff filed under seal its Complaint with accompanying exhibits A, B, C, and D, its memorandum of law in support of its motion for a temporary restraining order and other relief (“Br.”), a Declaration of Gabriela N. Nastasi and accompanying exhibits (“Nastasi Decl.”), a Declaration of Su Jeong Yang (“Yang Decl.”), and a proposed order.
DISCUSSION
As explained in the Court's October 24, 2023 Order, Federal Rule of Civil Procedure (“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 Extra judicial 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.” “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) (citation omitted).
China is a signatory to the Hague Convention on the Service Abroad of Judicial and Extra judicial Documents (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. at 1392. “The Hague Convention does not apply ‘where the address of the person to be served with the document is not known.'” Id. 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)).
Plaintiff had asserted 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. See Br. at 18-35. The Court denied Plaintiff's second argument in the Oct. 24, 2023 Order. The Court will now address Plaintiff's first argument in light of Plaintiff's supplemental submission.
Plaintiff asserts that the addresses for Defendants are unknown and seeks permission to serve all 33 Defendants by alternative means. With respect to six Defendants, Plaintiff acknowledges that it possesses complete address and phone information and successfully delivered test documents to their addresses. Supp. Decl. § 7. Plaintiff states that “this does not confirm with any certainty that the recipient [of the test documents] was in fact the intended Defendant,” but fails to explain further. Id. As to these Defendants, Plaintiff has not shown that their addresses are “not known.” See Smart Study Co., 620 F.Supp.3d at 1390.
These Defendants are: Avensy store, BOLMQHTS, CTNUOBEE, TengYi Direct,(Image Omitted) a/k/a Shengxuan Wood Industry Co., Ltd, and Zhouqigongsi. Supp. Decl. § 7.
Plaintiff further states that it possesses “accurate” addresses and phone information for three other Defendants for whom test mailings via Yunda Express were unsuccessful and for whom phone calls were unsuccessful. Supp. Decl. § 10. Plaintiff does not 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.” See Smart Study Co., 620 F.Supp.3d at 1390.
These Defendants are: HuiHongQi, SHARK U.S. DZ-27, and ZhangJinChengAnQingShouKong. Id. at 2.
Plaintiff further states that for seven Defendants, the addresses displayed on their Merchant Storefronts “may be accurate[]” but that it “could not locate a phone number associated with such addresses,” and that Yunda Express “requires a valid phone number.” Supp. Decl. § 11. 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. Moreover, the fact that Yunda Express cannot send mail to an address without a telephone number does not establish that the addresses are unknown for purposes of the exception to the Hague Convention. 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.'” (alterations adopted and citations omitted)).
These Defendants are: BeGiol TTC, hahpee, HEZIWEI, liuzliuzhixiaoixiao, sharkalaka, Yuanhsaoming, and Zhenka Shop. Supp. Decl. at 3.
Plaintiff's supplemental submission states that Plaintiff determined that 17 Defendants(the “Unknown Address Defendants”) display false addresses on their Merchant Storefront, and it provides details as to the reasonable diligence efforts taken to discover the true addresses of each Unknown Address Defendant. See Supp. Decl. § 13. For the Unknown Address Defendants only, Plaintiff adequately explained that their addresses are “not known” for purposes of exemption from the Hague Convention. Thus, as to the Unknown Address Defendants only, the Hague Convention does not apply and the motion for alternative service by email is granted as set forth in the associated Temporary Restraining Order.
These Defendants are: chengmaichao, chenyaoyu(Image Omitted) a/k/a chenyaoyu candy, dsfdsfhOO, FangRuJiuHenWangLuoKeJi, Hefei Xuedao Trading Co., Ltd, jichangzhouxiansui, kuijidianzishangwuSHOP, luyubeimeidianpu, Meow-meow-meow, PULI-US-US, Ronghang US, summer story, TANGCHUN, XiaoShuWeiXiaoDian, YangPengFei123, Zhangbaodebeimeidianpu, and ZUZU BOOM.
As to all other 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 Defendants must be served in accordance with the Hague Convention, which does not permit service by email to those Defendants located in China. See Oct. 24, 2023 Order at 5-6 (citing Smart Study Co., 620 F.Supp.3d at 1392-97).
CONCLUSION
For the foregoing reasons, the Court holds that, pursuant to Rule 4(f)(3), the Hague Convention does not apply to the 17 Unknown Address Defendants and service by alternative means is permitted. For all other Defendants, the Hague Convention applies and service must be made accordingly.
These Defendants are: chengmaichao, chenyaoyu (Image Omitted) a/k/a chenyaoyu candy, dsfdsfhOO, FangRuJiuHenWangLuoKeJi, Hefei Xuedao Trading Co., Ltd, jichangzhouxiansui, kuijidianzishangwuSHOP, luyubeimeidianpu, Meow-meow-meow, PULI-US-US, Ronghang US, summer story, TANGCHUN, XiaoShuWeiXiaoDian, YangPengFei123, Zhangbaodebeimeidianpu and ZUZU BOOM.
SO ORDERED.