Opinion
1:22-cv-02749
05-10-2022
TOLIFE TECHNOLOGIES PTY LTD and MOSHE MAOR, Plaintiffs, v. THE INDIVIDUALS, CORPORATIONS, LIMITED LIABILITY COMPANIES, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A HERETO, Defendants.
[PROPOSED] PRELIMINARY INJUNCTION ORDER
HONORABLE PAUL A. CROTTY UNITED STATES DISTRICT JUDGE
THIS MATTER comes before the Court on Plaintiffs' TOLIFE TECHNOLOGIES PTY LTD and MOSHE MAOR (“Plaintiffs”) application, brought by way of Order to Show Cause, for entry of a Preliminary Injunction (the “Application”) against the Defendants identified on Schedule A to the [Proposed] Preliminary Injunction Order attached hereto (collectively, the “Defendants”) and using at least the domain names and the online marketplace accounts identified in such Schedule A (the “Defendant Internet Stores”); 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 infringing Plaintiffs' patented design for a lice comb, U.S. Patent No. D858, 877 S (the “V-COMB Patent”); and
THIS COURT having determined that the evidence submitted in support of the Application establishes Plaintiffs have a likelihood of success on the merits; that no remedy at law exists; and that Plaintiffs will suffer irreparable harm if the injunction is not granted including for example
1. Through the Declarations of Michael Yellin and Moshe Maor and accompanying evidence, Plaintiffs have proved a prima facie case of patent infringement because (1) the V-COMB Patent is registered with the U.S. Patent and Trademark Office on the Principal Register and Plaintiffs hold all right, title and interest in and to the V-COMB Patent, (2) Plaintiffs develop, market, and sell products using the design claimed in the V-COMB Patent (the “V-COMB Products”), (3) Defendants make, use, offer for sale, sell, and/or import into the United States for subsequent sale or use products that infringe directly and/or indirectly the design claimed in the V-COMB Patent (the “Infringing Products”) through accounts with AliExpress.com, (“AliExpress”), Amazon.com (“Amazon”), eBay.com (“eBay”), Walmart.com (“Walmart”), and Wish.com (“Wish”) (the “Marketplace Platforms”) held by Defendants (the “User Accounts”), (4) an ordinary observer would be deceived into thinking that the Infringing Products are the same as Plaintiffs' V-COMB Products utilizing the V-COMB Patent, and (5) Defendants are not licensed or authorized to use the V-COMB Patent and none of the Defendants are authorized retailers of genuine V-COMB Products; and
2. Defendants' continued and unauthorized use of the design claimed in and infringement of the V-COMB Patent irreparably harm Plaintiffs through diminished goodwill and brand confidence, damage to Plaintiffs' reputation, loss of exclusivity, and loss of future sales.
3. Monetary damages fail to address such damage and, therefore, Plaintiffs have an inadequate remedy at law; and
4. 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 April 6, 2022 [Dkt. No. 18] 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 10th day of May, 2022, 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 the design embodied in the V-COMB Patent or any 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 V-COMB Product or not authorized by Plaintiffs to be sold;
b. Passing off, inducing, or enabling others to sell or pass off any product as a genuine V-COMB Product that is not, in fact, Plaintiffs' V-COMB Product and/or not produced
under the authorization, control, or supervision of Plaintiffs and approved by Plaintiffs for sale using the V-COMB Patent,
c. Committing any acts calculated to cause consumers to believe that Defendants' Infringing Products are those sold under the authorization, control or supervision of Plaintiffs, or are sponsored by, approved by, or otherwise connected with Plaintiffs;
d. Further infringing the V-COMB Patent and damaging Plaintiffs' 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 Plaintiffs, nor authorized by Plaintiffs to be sold or offered for sale, and which uses the design embodied in the V-COMB Patent or any colorable imitations thereof;
f. Using, linking to, transferring, selling, exercising control over, or otherwise owning the User Accounts, the Defendant Internet Stores, 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 Infringing Products; and
g. Operating and/or hosting websites and/or any other web presence registered or operated by Defendants that are involved with the distribution, marketing, advertising, offering for sale, or sale of any product using the design embodied in the V-COMB Patent or any colorable imitations thereof.
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 by way of example all bank, AliPay, AllPay/GoAllPay, Amazon, Bank of China, Coinbase, DHgate, eBay, HyperWallet, JD.com, Joom, Lakala, LianLian, OFX, Paxful, PayEco, Payoneer, PayPal, PingPong, Sellers Funding, Shopify, Stripe, Union Mobile/UmPay/UmPay2, Walmart, Wise/TransferWise, Wish, and World First accounts, and (d) the steps taken by each Defendant to comply with paragraph 1, a through g, above.
3. The domain name registries for the Defendant Internet Stores, 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 Internet Stores 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 AliExpress, Amazon, eBay, Walmart, and Wish, social media platforms, Facebook, YouTube, Linkedln, Twitter, Internet search engines such as Google, Bing, and Yahoo, web hosts for the Defendant Internet Stores, 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 Infringing Products, including any accounts associated with the Defendants;
b. disable and cease displaying any advertisements used by or associated with Defendants in connection with the sale of Infringing Products; and
c. take all steps necessary to prevent links to the Defendant Internet Stores identified on Schedule A from displaying in search results, including, but not limited to, removing links to the Defendant Internet Stores 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 Internet Stores or other websites or web presence operated by Defendants, including, without limitation, any online marketplace platforms such as AliExpress, Amazon, eBay, Walmart, and Wish, Facebook, Internet Service Providers, web hosts, back-end service providers, web designers, sponsored search engine or ad-word providers, banks, merchant account providers, including AliPay, AllPay/GoAllPay, Amazon, Bank of China, Coinbase, DHgate, eBay, HyperWallet, JD.com, Joom, Lakala, LianLian, OFX, Paxful, PayEco, Payoneer, PayPal, PingPong, Sellers Funding, Shopify, Stripe, Union Mobile/UmPay/UmPay2, Walmart, Wise/TransferWise, Wish, and World First, third party processors and other payment processing service providers, shippers, and domain name registrars (collectively, the “Third Party Providers”) shall, within five (5) 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 Defendant Internet Stores, and Defendants' financial accounts, as well as providing a full accounting of Defendants' sales and listing history related to their respective User Accounts and Defendant Internet Stores;
c. Defendants' User Accounts and/or online marketplace websites and/or other web presence affiliated with Defendants, including any that are not listed on Schedule A;
d. The Defendant Internet Stores 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, AliPay, AllPay/GoAllPay, Amazon, Bank of China, Coinbase, DHgate, eBay, HyperWallet, JD.com, Joom, Lakala, LianLian, OFX, Paxful, PayEco, Payoneer, PayPal, PingPong, SellersFunding, Shopify, Stripe, Union Mobile/UmPay/UmPay2, Walmart, Wise/TransferWise, Wish, World First, 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 Defendants until further ordered by this Court.
8. AliExpress, Amazon, eBay, Walmart, and Wish 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 and/or related to Defendants, the Defendant Internet Stores, and Defendants' other websites, including, but not limited to, any AliPay, AllPay/GoAllPay, Amazon, Bank of China, Coinbase, DHgate, eBay, HyperWallet,
JD.com, Joom, Lakala, LianLian, OFX, Paxful, PayEco, Payoneer, PayPal, PingPong, SellersFunding, Shopify, Stripe, Union Mobile/UmPay/UmPay2, Walmart, Wise/TransferWise, Wish, and World First accounts connected and/or related to the information listed in Schedule A;
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 the Defendant Internet Stores or Defendants' other websites, shall within five (5) business days of receipt of this Order:
a. Locate all accounts and funds connected and/or related to Defendants, the Defendant Internet Stores, and Defendants' other websites, including, but not limited to, any accounts connected and/or related to the information listed in Schedule A; 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.
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 and e-mail, along with any notice that Defendants receive from marketplace platforms, 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' Schedule A to the Complaint and Exhibit 2 to the Declaration of Moshe Maor shall become unsealed.
12. Any Defendants that are subject to this Order may appear and move to dissolve or modify the Order on two days' notice to Plaintiff or on shorter notice as set by this Court.
13. The five thousand dollars ($5, 000.00) bond posted by Plaintiffs shall remain with the Court until a final disposition of this case or until this Preliminary Injunction is terminated, This Preliminary Injunction is entered at
SO ORDERED.
TABLE OMITTED.