Opinion
21-cv-8435 (LJL)
03-15-2022
KELLY TOYS HOLDINGS, LLC, Plaintiff v. AIRPODS PRO STORE a/k/a MYGHD, AK2019JERSEY STORE, B2BBESTSELLER STORE, B2BLIFE STORE, B2BSELLERS STORE, BABYCLOTHONLINE STORE, BABYMISSFASHION STORE, BABYONLINE STORE, BABYONLINEDRESSES STORE, BEIJING2020 STORE, BESTKITCHENHOME STORE, BESTDEALS! CHOOSE U.S. CHOOSE TO W STORE a/k/a BESTDEALS, BESTHAIR2021 STORE, BESTHOME0816 STORE, BESTHOT2020 STORE, BESTSTORE2021 STORE, BIGFAMILYHOME STORE, CHICLOTH STORE, CHICMISSDAY STORE, CHILDRENDM5 STORE, CWMSPORTS STORE, DEARDRESSES STORE, DRESSAVE STORE, EARLYBIRDNO1 STORE, ENJOYSHOPPINGMART STORE a/k/a ENJOYWEDDINGLIFE, FASHIONHOMEBEST STORE, FASHIONWITHYOU STORE, FASHIONTRENDSVIP1 STORE, GDF333DM STORE, GOODSUNGLASSES STORE, GUOQING003 STORE, HAT SCARF FACTORY STORE a/k/a SHUAIJINJINCHINA, HEALTHLIFES STORE, HIROHOME STORE, HOME NECESSITIES STORE a/k/a DHAMAZON, HOMEFORYOU STORE, HONESTSELLER2020 STORE, HOPE201812 STORE, HOPE201816 STORE, HOT WIND PROFESSIONAL WEDDING STORE, HOTITEMSHOME STORE, KAVIPJERSEYS STORE, KAWS5 STORE, KEEPONSPORTS STORE, KITCHENFORYOU STORE, LETSPORTS STORE, LOUIS BAGS STORE a/k/a SHANGHAI2008, LOVEFASHIONHOME STORE, LSPORTSTAR STORE, MISSHOWDRESS STORE, MOZHE STORE, MYSHOP6 STORE, NEWITEMSHOME STORE, NICHIORVE STORE, OFFICESUPPLY STORE, ONE-STOPOS CHINA WEDDING DRESS MANUFACTURER STORE, ONLYSTORE101 STORE, PROMOTIONSPACE STORE, PSG ANDD1Y TOP STORE a/k/a AMZBOOK, PUSH BUBBLE STORE a/k/a PARK888, SHESSHOW STORE, SIHUAI08 STORE, SONICE7788 STORE, SPINNERTOYS STORE, SPRINGWEDDING STORE, SPRITEHUANG119 STORE, SUPERSTAR009 STORE, TANGCHAO11 STORE, TOPBRILIANT2020 STORE, TOYSMALL666 STORE, TOYWHOLESALESTORE STORE, TRENDOFF2 STORE, WHOLESALEFACTORY PROFESSIONAL STORE, WHOLESALESTORE2021 STORE, WIFEHOME STORE, WINBAR STORE, WIRELESS EARPHONES STORE a/k/a ARMY, WUYIFAN93 STORE, XYLOVEHOME STORE and ZHEBAN STORE, Defendants
Jason M. Drangel (JD 7204) Ashly E. Sands (AS 7715) Danielle S. Futterman (DY 4228) EPSTEIN DRANGEL LLP Attorneys for Plaintiff Kelly Toys Holdings, LLC
Jason M. Drangel (JD 7204)
Ashly E. Sands (AS 7715)
Danielle S. Futterman (DY 4228) EPSTEIN DRANGEL LLP
Attorneys for Plaintiff Kelly Toys Holdings, LLC
[PROPOSED]
PRELIMINARY
INJUNCTION ORDER
HON. LEWIS J. LIMAN UNITED STATES DISTRICT JUDGE
GLOSSARY
| Term | Definition |
| Plaintiff or Kelly Toys | Kelly Toys Holdings, LLC |
| Defendants | AirPods Pro Store a/k/a myghd, ak2019jersey Store, b2b_best_seller Store, b2b_life Store, b2b_sellers Store, babyclothonline Store, babymissfashion Store, babyonline Store, babyonlinedresses Store, beijing2020 Store, best_kitchen_home Store, Bestdeals! Choose us choose to w Store a/k/a bestdeals, besthair2021 Store, besthome0816 Store, besthot2020 Store, beststore2021 Store, big_family_home Store, chicloth Store, chicmissday Store, childrendm5 Store, cwmsports Store, deardresses Store, dressave Store, Earlybirdno1 Store, enjoyshoppingmart Store a/k/a enjoyweddinglife, fashion_home_best Store, fashion_with_you Store, fashiontrendsvip1 Store, gdf333dm Store, good_sunglasses Store, guoqing003 Store, Hat Scarf Factory Store a/k/a shuaijinjin_china, healthlifes Store, hirohome Store, Home Necessities Store a/k/a dhamazon, home_for_you Store, honest_seller_2020 Store, hope201812 Store, hope201816 Store, Hot Wind Professional Wedding Store, hot_items_home Store, kavipjerseys Store, kaws5 Store, keeponsports Store, kitchen_for_you Store, letsports Store, louis bags Store a/k/a shanghai2008, love_fashion_home Store, lsportstar Store, misshowdress Store, mozhe Store, myshop6 Store, new_items_home Store, nichiorve Store, officesupply Store, one-stopos china Wedding Dress manufacturer Store, onlystore101 Store, promotionspace Store, psg Andd1y top Store a/k/a amzbook, Push bubble Store a/k/a park888, shes_show Store, sihuai08 Store, sonice7788 Store, spinnertoys Store, springwedding Store, spritehuang119 Store, superstar009 Store, tangchao11 Store, topbriliant2020 Store, toysmall666 Store, toywholesale_store Store, trendoff2 Store, wholesalefactory Professional Store, wholesalestore2021 Store, wifehome Store, winbar Store, Wireless earphones Store a/k/a Army, wuyifan93 Store, xylovehome Store and zheban Store |
| DHgate | Dunhuang Group d/b/a DHgate.com, an online marketplace and e-commerce platform which allows manufacturers, wholesalers and other third-party merchants, like Defendants, to advertise, distribute, |
| offer for sale, sell and ship their wholesale and retail products originating from China directly to consumers worldwide and specifically to consumers residing in the U.S., including New York. | |
| Epstein Drangel | Epstein Drangel LLP, counsel for Plaintiff |
| New York Address | 244 Madison Ave, Suite 411, New York, NY 10016 |
| Complaint | Plaintiff's Complaint |
| Application | Plaintiff's ex parte application for: 1) a temporary restraining order; 2) an order restraining Merchant Storefronts (as defined infra) and Defendants' Assets (as defined infra) with the Financial Institutions (as defined infra); 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 |
| Kelly Dec. | Declaration of Jonathan Kelly in Support of Plaintiff's Application |
| Futterman Dec. | Declaration of Danielle S. Futterman in Support of Plaintiff's Application |
| Squishmallows Applications | U.S. Trademark Serial Application Nos.: 88/471, 796 for “SQUISHMALLOWS HUGMEES” for goods in Class 28 and 90/676, 140 for “ORIGINAL SQUISHMALLOWS, ” for goods in Class 28 |
| Squishmallows Registrations | U.S. Trademark Registration Nos.: 5, 454, 574 for “SQUISHMALLOW” for goods in Class 28; 6, 137, 521 for “FLIP A MALLOWS” for goods in Class 28; 5, 962, 289 for “MYSTERY SQUAD” for goods in Class 28; and 2, 029, 047 for “KELLYTOY” for goods in Class 28 |
| Squishmallows Marks | The marks covered by the Squishmallows Registrations and Squishmallows Applications |
| Squishmallows Works | The works covered by the U.S. copyright registrations listed in Exhibit C to the Complaint |
| Squishmallows Products | A line of loveable buddies made with a super soft, marshmallow-like texture that come in a variety of sizes from 3.5-inch clip-ons to extra-large 24 inch plush toys, and have expanded to other styles including Hug Mees, Stackables, Mystery Squad and Flip-A-Mallows. |
| Counterfeit Products | Products bearing or used in connection with the Squishmallows Marks and/or Squishmallows Works, and/or products in packaging and/or containing labels and/or hang tags bearing the Squishmallows Marks and/or Squishmallows Works, and/or bearing or used in connection with marks and/or artwork that are confusingly or substantially similar to the Squishmallows Marks and/or Squishmallows Works |
| and/or products that are identical or confusingly or substantially similar to the Squishmallows Products | |
| Infringing Listings | Defendants' listings for Counterfeit Products |
| User Accounts | Any and all websites and any and all accounts with online marketplace platforms such as DHgate, as well as any and all as yet undiscovered accounts with additional online marketplace platforms held by or associated with Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them |
| Merchant Storefronts | Any and all User Accounts through which Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them operate storefronts to manufacture, import, export, advertise, market, promote, distribute, display, offer for sale, sell and/or otherwise deal in Counterfeit Products, which are held by or associated with Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them |
| Defendants' Assets | Any and all money, securities or other property or assets of Defendants (whether said assets are located in the U.S. or abroad) |
| Defendants' Financial Accounts | Any and all financial accounts associated with or utilized by any Defendants or any Defendants' User Accounts or Merchant Storefront(s) (whether said accounts are located in the U.S. or abroad) |
| Financial Institutions | Any and all banks, financial institutions, credit card companies and payment processing agencies, such as DHgate (e.g., DHpay.com), PayPal Inc. (“PayPal”), Payoneer Inc. (“Payoneer”) and PingPong Global Solutions, Inc. (“PingPong”) and other companies or agencies that engage in the processing or transfer of money and/or real or personal property of Defendants |
| Third Party Service Providers | Online platforms, including, without limitation, those owned and operated, directly or indirectly by DHgate, as well as any and all as yet undiscovered online marketplace platforms and/or entities through which Defendants, their respective officers, employees, agents, servants and all persons in active concert or participation with any of them manufacture, import, export, advertise, market, promote, distribute, offer for sale, sell and/or otherwise deal in Counterfeit Products which are hereinafter identified as a result of any order entered in this action, or otherwise |
WHERAS, Plaintiff having moved ex parte on October 13, 2021 against Defendants for the following: 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;
WHEREAS, the Court entered an Order granting Plaintiff's Application on October 21, 2021 (“TRO”);
WHEREAS, on November 4, 2021, the Court entered an order extending the TRO (“November 4, 2021 Order”);
WHEREAS, on November 10, 2021, pursuant to the alternative methods of service authorized by the TRO, Plaintiff served the Summons, Complaint, TRO, all papers filed in support of the Application and the November 4, 2021 Order on each and every Defendant;
WHEREAS, on February 22, 2022, the Court entered an order (“February 22, 2022 Order”) scheduling a show cause hearing for March 2, 2022 at 10:00 a.m. (“Show Cause Hearing”);
WHEREAS, on February 22, 2022, pursuant to the alternative methods of service authorized by the TRO, Plaintiff served the February 22, 2022 Order on each and every Defendant;
WHEREAS, on March 7, 2022 at 10:00 a.m., Plaintiff appeared at the Show Cause Hearing, however, no Defendants appeared.
ORDER
1. The injunctive relief previously granted in the TRO shall remain in place through the pendency of this action, and issuing this Order is warranted under Federal Rule of Civil Procedure 65 and Section 34 of the Lanham Act. a) Accordingly, Defendants are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, selling and/or otherwise dealing in Counterfeit Products or any other products bearing the Squishmallows Marks and/or Squishmallows Works and/or marks or artwork that are confusingly or substantially similar to, identical to and constitute a counterfeiting and/or infringement of the Squishmallows Marks and/or Squishmallows Works;
ii. directly or indirectly infringing in any manner Plaintiff's Squishmallows Marks and/or Squishmallows Works;
iii. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff's Squishmallows Marks and/or Squishmallows Works, to identify any goods or services not authorized by Plaintiff;
iv. using Plaintiff's Squishmallows Marks and/or Squishmallows Works or any other marks and/or artwork that are confusingly or substantially similar to the Squishmallows Marks and/or Squishmallows Works on or in connection with Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, selling and/or otherwise dealing in Counterfeit Products;
v. using any false designation of origin or false description, or engaging in any action which is likely to cause confusion, cause mistake and/or to deceive members of the trade and/or the public as to the affiliation, connection or association of any product manufactured, imported, exported, advertised,
marketed, promoted, distributed, displayed, offered for sale or sold by Defendants with Plaintiff, and/or as to the origin, sponsorship or approval of any product manufactured, imported, exported, advertised, marketed, promoted, distributed, displayed, offered for sale or sold by Defendants and Defendants' commercial activities and Plaintiff;
vi. secreting, concealing, destroying, altering, selling off, transferring or otherwise disposing of: (i) Counterfeit Products and/or (ii) any computer files, data, business records, documents or any other records or evidence relating to their User Accounts, Merchant Storefronts or Defendants' Assets and the manufacture, importation, exportation, advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit Products;
effecting assignments or transfers, forming new entities or associations, or creating and/or utilizing any other platform, User Account, Merchant Storefront or any other means of importation, exportation, advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit Products for the purposes of circumventing or otherwise avoiding the prohibitions set forth in this Order; and vii. knowingly instructing any other person or business entity to engage in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vi) above and 1(b)(i) through I(b)(ii) and I(c)(i) below.
b) Accordingly, all persons in active concert and participation with Defendants, who receive actual notice of this Order, including Third Party Service Providers and Financial Institutions who satisfy those requirements are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. secreting, concealing, transferring, disposing of, withdrawing, encumbering or paying Defendants' Assets from or to Defendants' Financial Accounts until further ordered by this Court;
ii. secreting, concealing, destroying, altering, selling off, transferring or otherwise disposing of and/or dealing with any computer files, data, business records, documents or any other records or evidence relating to Defendants' Assets and Defendants' Financial Accounts; and
iii. knowingly instructing, aiding or abetting any person or business entity in engaging in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vi) and 1(b)(i) through 1(b)(ii) above and 1(c)(i) below.
c) Accordingly, all persons in active concert and participation with Defendants who receive actual notice of this Order, including Third Party Service Providers who satisfy those requirements are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the final hearing and determination of this action or until further order of the Court:
i. providing services to Defendants, Defendants' User Accounts and Defendants' Merchant Storefronts insofar as they relate to the Defendants' Infringing Listings and offering for sale and/or sale of Counterfeit Products;
ii. knowingly instructing, aiding, or abetting any other person or business entity in engaging in any of the activities referred to in subparagraphs 1(a)(i) through 1(a)(vii), 1(b)(i) through 1(b)(ii) and 1(c)(i) above.
2. As sufficient cause has been shown, the asset restraint granted in the TRO shall remain in place through the pendency of this action, including that:
a) within seven (7) days of receipt of notice of this Order, any newly discovered Financial Institutions who are served with this Order shall locate and attach Defendants' Financial Accounts and shall provide written confirmation of such attachment to Plaintiff's counsel.
3. As sufficient cause has been shown, the expedited discovery previously granted in the TRO shall remain in place through the pendency of this action, including that:
a) Plaintiff may serve interrogatories pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure as well as Local Civil Rule 33.3 of the Local Rules for the Southern and Eastern Districts of New York and Defendants who are served with this Order shall provide written responses under oath to such interrogatories within fourteen (14) days of service to Plaintiff's counsel.
b) Plaintiff may serve requests for the production of documents pursuant to Fed.R.Civ.P. 26 and 34, and Defendants who are served with this Order and the requests for the production of documents shall produce all documents responsive to such requests within fourteen (14) days of service to Plaintiff's counsel.
c) Plaintiff may serve subpoenas on the Financial Institutions to identify any and all of Defendants' Financial Accounts, and provide Plaintiff's counsel with a summary report containing account details for any and all such accounts, which shall include, at a minimum, identifying information for Defendants, including contact information for Defendants (including, but not limited to, mailing addresses and e-mail addresses), account numbers and account balances for any and all of Defendants' FinancialAccounts and confirm compliance with this Order, which subpoenas may be made returnable fourteen (14) days after service.
d) Plaintiff may serve subpoenas on the Third Party Service Providers to identify any and all of Defendants' User Accounts and Merchant Storefronts, and provide Plaintiff's counsel with a summary report containing account details for any and all User Accounts and Merchant Storefronts, which shall include, at a minimum, identifying information for Defendants and Defendants' User Accounts and Defendants' Merchant Storefronts, contact information for Defendants (including, but not limited to, mailing addresses and e-mail addresses) and confirm compliance with this Order, which subpoenas may be made returnable fourteen (14) days after service.
e) IT IS FURTHER ORDERED that the subpoenas served on the Financial Institutions may require production within fourteen (14) days after receipt, of all documents and records in their possession, custody and control (whether located in the U.S. or abroad) relating to any and all of Defendants' Financial Accounts, including, but not limited to, documents and records relating to:
i. account numbers;
ii. current account balances;
iii. any and all identifying information for Defendants and Defendants' User Accounts, including, but not limited to, names, addresses and contact information;
iv. any and all account opening documents and records, including, but not limited to, account applications, signature cards, identification documents, and if a business entity, any and all business documents provided for the opening of
each and every of Defendants' Financial Accounts;
v. any and all deposits and withdrawals during the previous year from each and every one of Defendants' Financial Accounts and any and all supporting documentation, including, but not limited to, deposit slips, withdrawal slips, cancelled checks and account statements; and
vi. any and all wire transfers into each and every of Defendants' Financial Accounts during the previous year, including, but not limited to, documents sufficient to show the identity of the destination of the transferred funds, the identity of the beneficiary's bank and the beneficiary's account number.
f. IT IS FURTHER ORDERED that the subpoenas served on the Third Party Service Providers may require production within fourteen (14) days after receipt, of all documents and records in its possession, custody and control (whether located in the U.S. or abroad) relating to Defendants' User Accounts and Defendants' Merchant Storefronts, including, but not limited to, documents and records relating to:
i. any and all User Accounts and Defendants' Merchant Storefronts and account details, including, without limitation, identifying information and account numbers for any and all User Accounts and Defendants' Merchant Storefronts that Defendants have ever had and/or currently maintain with the Third Party Service Providers that were not previously provided pursuant to Paragraph V(C) of the TRO;
ii. the identities, location and contact information, including any and all e-mail addresses of Defendants that were not previously provided pursuant to Paragraph V(C) of the TRO;
iii. the nature of Defendants' businesses and operations, methods of payment, methods for accepting payment and any and all financial information, including, but not limited to, information associated with Defendants' User Accounts and Defendants' Merchant Storefronts, a full accounting of Defendants' sales history and listing history under such accounts and Defendants' Financial Accounts with any and all Financial Institutions associated with Defendants' User Accounts and Defendants' Merchant Storefronts; and
iv. Defendants' manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale and/or selling of Counterfeit Products, or any other products bearing the Squishmallows Marks and/or Squishmallows Works and/or marks or artwork that are confusingly or substantially similar to, identical to and constitute an infringement of the Squishmallows Marks and/or Squishmallows Works.
4. As sufficient cause has been shown, and pursuant to FRCP 4(f)(3), service may be made on, and shall be deemed effective as to Defendants if it is completed by one of the following means:
a) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website (including NutStore, a large mail link created through Rmail.com and via website publication through a specific page dedicated to this Lawsuit accessible through ipcounselorslawsuit.com) where each Defendant will be able to download a PDF copy of this Order to Defendants' e-mail addresses as identified by DHgate pursuant to Paragraph V(C) of the TRO or may otherwise be determined; or
b) delivery of a message to Defendants through the same means that Plaintiff's agents have previously communicated with Defendants, namely the system for communications established by the Third Party Service Providers on their respective platforms, providing a link to a secure website (such as NutStore or a large mail link created through Rmail.com) where each Defendant will be able to download a PDF copy of this Order.
5. As sufficient cause has been shown, that such alternative service by electronic means ordered in the TRO and herein shall be deemed effective as to Defendants, Third Party Service Providers and Financial Institutions through the pendency of this action.
6. As sufficient cause has been shown, service of this Order shall be made on and deemed effective as to the Third Party Service Providers and Financial Institutions if it is completed by the following means:
a) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where DHgate (including DHPay.com) will be able to download a PDF copy of this Order via electronic mail to Ms. Emily Zhou, Intellectual Property Management, Trust and Safety Department, DHgate at zhouxu@dhgate.com;
b) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where PayPal Inc. will be able to download a PDF copy of this Order via electronic mail to PayPal Legal Specialist at EEOMALegalSpecialist@paypal.com;
c) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where Payoneer Inc. will be able to download a PDF copy of this Order via electronic mail to Payoneer Inc.'s Customer Service Management at customerservicemanager@payoneer.com and Edward Tulin, counsel for
Payoneer Inc., at Edward.Tulin@skadden.com; and d) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where PingPong Global Solutions Inc. will be able to download a PDF copy of this Order via electronic mail to PingPong Global Solutions Inc.'s Legal Department legal@pingpongx.com.
7. Defendants are hereby given notice that they may be deemed to have actual notice of the terms of this Order and any act by them or anyone of them in violation of this Order may be considered and prosecuted as in contempt of this Court.
8. The $5,000.00 bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Order is terminated.
9. This Order shall remain in effect during the pendency of this action, or until further order of the Court.
10. Any Defendants that are subject to this Order may appear and move to dissolve or modify the Order on two (2) days' notice to Plaintiff or on shorter notice as set by the Court.
SO ORDERED.