Case Information
*1 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ROKU INC.
Plaintiff, ORDER -against- 22 Civ. 202 (PGG) THE INDIVIDUALS, CORPORATIONS, LIMITED LIABILITY COMPANIES, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A HERETO,
Defendants,
PAUL G. GARDEPHE, U.S.D.J.: Proceeding by Order to Show Cause, Plaintiff Roku Inc. seeks a preliminary injunction against the Defendants identified in Schedule A to the Complaint (Dkt. No. 13), except Defendants Parts Outlet, vtinva, Auteey, Carbonline, CØLIPSØ, JEM&JULES, USonline911, Buy & Delight, Melody Store, Sourcing Remote, Value Foremost, and Chunghop Store. (See Dkt. Nos. 26, 30-31, 33-34, 36-38, 39) The Defendants against whom Plaintiff seeks a preliminary injunction will be referred to as the “Remaining Defendants.” The Remaining Defendants use at least the Domain Names and the Online Marketplace accounts identified in Schedule A to the Complaint and Schedule A to the Preliminary Injunction Order (attached hereto). Plaintiff alleges that the Remaining Defendants operate one or more commercial, interactive Internet stores through which New York residents can purchase counterfeit products bearing, using, or infringing on Plaintiff’s trademarks, which are covered by U.S. Trademark Registration Nos. 6464718, 6076830, 5886527, 5886526, 5151588, 4937515, 4937514, 4937513, 4843920, 4839473, 4618984, 4286059, 4286058, and 3177666 (the “Roku Trademarks”); and
The Court has reviewed the papers submitted in support of Plaintiff’s application *2 for a preliminary injunction, and finds that it has personal jurisdiction over all of the Remaining Defendants, except for Defendants akadaddy; EleLink Shop; and YJY Shop. The Defendants over whom this Court may exercise personal jurisdiction will be referred to as the “PI Defendants.” This Court has personal jurisdiction over the PI Defendants because they directly target their business activities toward consumers in the United States, including in New York, and have each consummated a sale with a New York customer. (Levitian Decl., Ex. 2 (Dkt. Nos. 14-19)
The Court further finds that Plaintiff meets the criteria for entry of preliminary injunctive relief against the PI Defendants, in that the evidence establishes that 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. In this regard, this court finds that:
1 . Through the Declarations of Michael Yellin and Karina Levitian and accompanying evidence, Plaintiff has proved a prima facie case of trademark infringement because the Roku Trademarks are distinctive marks and registered with the U.S. Patent and Trademark Office on the Principal Register and Supplemental Register, (2) through the substantial time, money, and other resources expended by Plaintiff to promote the Roku Trademarks, the Roku Trademarks are widely recognized and exclusively associated as being products sourced from Roku and thus are sufficiently distinctive to distinguish Roku’s goods from the goods of others; (3) the PI Defendants are not licensed or authorized to use the Roku Trademarks, and (4) the PI Defendants’ use of the Roku Trademarks is causing a likelihood of confusion as to the origin or sponsorship of PI Defendants’ products with Plaintiff; and
2 . The PI Defendants’ continued and unauthorized use of the Roku Trademarks irreparably harms Plaintiff through diminished goodwill and brand confidence, damage to *3 Plaintiff’s reputation, loss of exclusivity, and loss of future sales;
3 . Monetary damages are not adequate to address such damage and, therefore, Plaintiff has 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 PI Defendants’ actions. The Court therefore determines that a preliminary injunction is warranted under Federal Rule of Civil Procedure 65; NOW THEREFORE , on this tenth day of February, 2022, this Court ORDERS that: 1. The PI 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 Roku Trademarks 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 authorized by Plaintiff to be sold in connection with Plaintiff’s Roku Trademarks;
b. passing off, inducing, or enabling others to sell or pass off any product as a genuine Roku 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 Roku Trademarks;
c. committing any acts calculated to cause consumers to believe that the PI Defendants’ products are those sold under the authorization, control or supervision of Plaintiff, or are sponsored by, approved by, or otherwise connected with Plaintiff;
*4 d. further infringing Plaintiff’s Roku Trademarks and damaging Plaintiff’s goodwill; e. otherwise competing unfairly with Plaintiff in any manner; f. 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 Roku Trademarks and/or any reproductions, counterfeit copies, or colorable imitations thereof;
g. using, linking to, transferring, selling, exercising control over, or otherwise owning the Online Marketplace Accounts, the PI Defendant Domain Names, or any other domain name or online marketplace account that is being used to sell or is the means by which the PI Defendants could continue to sell counterfeit products bearing, using, or infringing on the Roku Trademarks; and
h. operating and/or hosting websites at the PI Defendant Domain Names and any other domain names registered or operated by the PI Defendants that are involved with the distribution, marketing, advertising, offering for sale, or sale of any product bearing the Plaintiff’s Roku Trademarks and/or any reproductions, counterfeit copies, or colorable imitations thereof that is not authorized by Plaintiff to be sold in connection with the Plaintiff’s Roku Trademarks.
2. Each of the PI Defendants, 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 *5 Defendant to comply with paragraph 1, a through h, above.
3. The domain name registries for the PI 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 PI Defendant Domain Names and make them inactive and untransferable until further ordered by this Court.
4. Those in privity with the PI Defendants and with actual notice of this Order, including any online marketplaces such as Amazon and Wish, social media platforms, Facebook, YouTube, LinkedIn, Twitter, Internet search engines such as Google, Bing, and Yahoo, web hosts for the PI 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 PI Defendants engage in the sale of counterfeit and infringing goods using the Roku Trademarks, including any accounts associated with the PI Defendants;
b. disable and cease displaying any advertisements used by or associated with the PI Defendants in connection with the sale of counterfeit and infringing goods using the Roku Trademarks; and
c. take all steps necessary to prevent links to the PI Defendant Domain Names from displaying in search results, including, but not limited to, removing links to the PI Defendant Domain Names from any search index.
5. The PI Defendants and any third party with actual notice of this Order who is providing services for any of the PI Defendants, or in connection with any of PI Defendants’ websites at the PI Defendant Domain Names or other websites operated by PI Defendants, *6 including, without limitation, any online marketplace platforms such as Amazon and Wish, 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 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 the PI 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 the PI Defendants’ operations and all associated sales and financial information, including, without limitation, identifying information associated with the Online Marketplace Accounts, the PI Defendant Domain Names, and the PI Defendants’ financial accounts, as well as providing a full accounting of the PI Defendants’ sales and listing history related to their respective Online Marketplace Accounts and the PI Defendant Domain Names;
c. the PI Defendants’ websites and/or any Online Marketplace Accounts; d. the PI Defendant Domain Names or any domain name registered by PI
Defendants; and e. any financial accounts owned or controlled by the PI 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 *7 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. The PI Defendants and any persons in active concert or participation with them who have actual notice of this Order shall be restrained and enjoined from transferring or disposing of any money or other of the PI Defendants’ assets until further order of 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 PI Defendants until further order of this Court.
8. Amazon and Wish shall, within five (5) business days of receipt of this Order, for any PI Defendant or any of the PI Defendants’ Online Marketplace Accounts or websites: a. locate all accounts and funds connected to and related to the PI Defendants, the PI Defendants’ Online Marketplace Accounts or the PI 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 the attached Schedule A to the Preliminary Injunction Order; and
b. restrain and enjoin any such accounts or funds from transferring or disposing of any money or other of the PI Defendants’ assets until further order of this Court. 9. Any banks, savings and loan associations, payment processors, or other financial institutions, for any PI Defendant or any of the PI 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 the PI Defendants, the PI *8 Defendants’ Online Marketplace Accounts or the PI Defendants’ websites, including, but not limited to, any accounts connected to the information listed in the attached Schedule A to the Preliminary Injunction Order; and
b. restrain and enjoin such accounts from receiving, transferring or disposing of any money or other of the PI Defendants’ assets until further order of this Court. 10. Plaintiff may provide notice of these proceedings to the PI Defendants by delivering, via e-mail, (1) PDF copies of this Order and other relevant documents or (2) a link to a website where PDF copies of this Order and other relevant documents can be downloaded. Such alternative service by electronic means shall constitute notice reasonably calculated under all circumstances to apprise the PI Defendants of the pendency of the action and afford them the opportunity to present their objections. Such alternative service by electronic means shall be made within five days of this Order.
11. Any Defendant that is subject to this Order may appear and move to dissolve or modify this Order on two days’ notice to Plaintiff or on shorter notice as set by this Court. 12. The five thousand dollars ($5,000.00) bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Preliminary Injunction is terminated. Dated: New York, New York February 10, 2022
*9 Schedule A to the Preliminary Injunction Order Defendant Seller Defendant Online Marketplace Auriver https://www.amazon.co.uk/sp?seller=A1MS8VLVWO1JTO Feitian shop https://www.amazon.com/sp?seller=A2BK5CBS2FY994 Flying’s Shop https://www.amazon.com/sp?seller=A2NU4BCWRI3E3S Gaudi https://www.amazon.com/sp?seller=A3SXZVKR9JCQKK Hojay Store https://www.amazon.com/sp?seller=A3PPY64DX3IRCS HzgangDirect https://www.amazon.com/sp?seller=A3E8ZAQLE3WB1O JIANSHE https://www.amazon.co.uk/sp?seller=A1UC9L6K2VZ1RH JustFine https://www.amazon.com/sp?seller=A23SYZU9KXD386
https://www.amazon.co.uk/sp?seller=AKZ77D6L5UUJM Lazmin112 https://www.amazon.es/sp?seller=AKZ77D6L5UUJM Littlefishlittlecat https://www.amazon.com/sp?seller=A3FLNV2TDV00UC Luokeli https://www.amazon.com/sp?seller=A1HXIVM39MVE9S Outlet-Express Store https://www.amazon.com/sp?seller=A3C72VOFBASADK Paialu https://www.amazon.com/sp?seller=A2Y74PRXV2P6SN PARTS XPRESS STORE https://www.amazon.com/sp?seller=A18943SGD7X6KS Pottnar Store https://www.amazon.com/sp?seller=A3UT223SO7JDA Rankao-EU https://www.amazon.co.uk/sp?seller=a16j79djhha579 Rimous https://www.amazon.com/sp?seller=A3HD80JAJMOZ8U SB Components Ltd https://www.amazon.co.uk/sp?seller=A2717MKXZVZ1ZW SofaBaton https://www.amazon.com/sp?seller=A1N3NJ1ATIMDAK WINBOUS https://www.amazon.com/sp?seller=A1KS4HXHOAA99V
https://www.amazon.es/sp?seller=A39V3CUVEQP3GO https://www.amazon.co.uk/sp?seller=A39V3CUVEQP3GO Xinyu UK Xuuyuu https://www.amazon.ca/sp?seller=A3UOH6UFKYX3BS Yaotieci SHOP https://www.amazon.com/sp?seller=A2Q4LXGRPVHZRA 15983070819@163.co m https://www.wish.com/merchant/590d869a2da1ba196e0ad586 AgileDragon https://www.wish.com/merchant/547f0ba5653d51314ac44285 Amargaret https://www.wish.com/merchant/5831c4f7ef56284f7534b824 ann-yanguang88 https://www.wish.com/merchant/578b7bad095367532883d5d6 AuntbingluuX https://www.wish.com/merchant/5f4f6120fedbc502820a2e6b Baihe https://www.wish.com/merchant/57860a5294bcf1439be28066 BeadDreamShop https://www.wish.com/merchant/58af02739dc860521d2eb68d blinbling001 https://www.wish.com/merchant/578e386e6a303a0eec755c70 Caeiore https://www.wish.com/merchant/5832fd9c42abfb1b8455b5e4 CartoonsDibujos https://www.wish.com/merchant/57dba6428bc4e8109ad5ca11 *10 Chanvincy https://www.wish.com/merchant/57149f2b853cde590cd98882 Chenliliang https://www.wish.com/merchant/5931494f20e1bf316477f32c Cherish https://www.wish.com/merchant/55bad358ec31eb41e4cf7a2d CONTROL INN https://www.wish.com/merchant/5ecf4675fdf5965bbcd3bf4f Crazy Gai https://www.wish.com/merchant/582af230ae08867481e38edd Cynthia Yoder https://www.wish.com/merchant/58af04c315241652046542a9 Dongfangfang https://www.wish.com/merchant/584233ed1341994f72a70639 Electronic_outlet https://www.wish.com/merchant/607e381db20cf82213520cfc EveryDayLifeStore https://www.wish.com/merchant/565415b43608bc201c65acfc f-cloths https://www.wish.com/merchant/578e2eba2343010efaa2610b Francisco Lima https://www.wish.com/merchant/5859f51ed800734d59a0392c Fuyangfamen https://www.wish.com/merchant/56e3d8ee8582fb5e366be8d3 Gogofast https://www.wish.com/merchant/55166b0574c021216213583d Graduator https://www.wish.com/merchant/5645970eda9e8612a5403377 Heibaipei https://www.wish.com/merchant/5795cb70cb38dd21922fe825 Herofun https://www.wish.com/merchant/56fcc7067415f96ea3a29a76 hexueqing0926 https://www.wish.com/merchant/589983fa76209a4ffb3eac57 hi_lee https://www.wish.com/merchant/57838f17f1ab1f1131beacf6 highest&coolman https://www.wish.com/merchant/58501a992bf2c96a06a99de6 hmx881800 https://www.wish.com/merchant/584b9a54159145262176185b Houguofang https://www.wish.com/merchant/58a7fbd1a7a80b6f64ec95f9 huangchen123 https://www.wish.com/merchant/58410459a81dba0befad0921 huangwenyuan1 https://www.wish.com/merchant/5931110ca126a33883978c7a jdjhru5478 https://www.wish.com/merchant/59047ec61fb1dc1d00e138d1 jiayunpeng12 https://www.wish.com/merchant/584188cc8108912edcde366a Jinyuzhir https://www.wish.com/merchant/603379a313006b0dc16faa2d jocelyn07 https://www.wish.com/merchant/57de433ecc8b99102168403c KamShun Fashion https://www.wish.com/merchant/5846cc7acd7c006932f24fbb Kappdo https://www.wish.com/merchant/5e062a89a57753146b033050 keyofsuccess2016 https://www.wish.com/merchant/57b315d226c88d18eee94a0c Laceskong https://www.wish.com/merchant/56f8cb2d796b2f58ad96a139 li yunyun https://www.wish.com/merchant/58da0b45b7bb136efa0b8269 lianghaiyan32 https://www.wish.com/merchant/5844fc8e5291914d4adeaba9 Lifefit https://www.wish.com/merchant/565955e58f5f027e130604e5 lili zhang https://www.wish.com/merchant/584c17eb81089121f88b8aa3 Liujinyang https://www.wish.com/merchant/58dd14026067365f5d1dec08 Longzhifanny https://www.wish.com/merchant/5978471feea5c55998b8beea Loverhart https://www.wish.com/merchant/5a1e5e65ffccf24b61ca68e1 *11 Lujinling https://www.wish.com/merchant/58f02c9a441fb82c7dd0c6e6 Mazaolin https://www.wish.com/merchant/58a9709396f1bb6f151155a6 Mccmyy https://www.wish.com/merchant/5b79265a559dbd25b255974e MEFCreationsBoutique https://www.wish.com/merchant/58b0219ef7f54a50a10aa5f2 Merci smith https://www.wish.com/merchant/582f229218183f424ca09af7 Ming hing bully clothing https://www.wish.com/merchant/5899c3197c0f924fed454c0e Monsterlady https://www.wish.com/merchant/5344c1a25aefb06607e48bcd Moshanhua https://www.wish.com/merchant/58e8bf86259689339ae07e80 Mykshop https://www.wish.com/merchant/5fd48a297885467e6b3935f6 nice2seu https://www.wish.com/merchant/56f501667b19c65ed788a3fe Noral https://www.wish.com/merchant/5a0956a00ec30f6ea1d5e36f Orchidfarm https://www.wish.com/merchant/571488554f5e5759357da868 Owes https://www.wish.com/merchant/5656793b86004b08b2d0f765 Paomo https://www.wish.com/merchant/57875849090d400af5f1e0bf Phonemol https://www.wish.com/merchant/58bd1f1f48f3a0527d18d535 Principles https://www.wish.com/merchant/57ecc9068bde84103e1f9cf4 Richapex2016 https://www.wish.com/merchant/5856abd0913e184c9c72c0bf Rocknfemme https://www.wish.com/merchant/5851e60479b45e6aeaf9dfb9 Runandianli https://www.wish.com/merchant/56a70cc41b8c5a3f1b1b8034 Schaef https://www.wish.com/merchant/5f42cc5ce84e07db8539ae63 smart4u https://www.wish.com/merchant/5645763c70337932d501afd2 Smilebreath https://www.wish.com/merchant/57d64383bc23d5101cd76c30 Songguifang https://www.wish.com/merchant/58df907d7f36b352ca3e6394 SOPHWI-LP https://www.wish.com/merchant/584c1b4b334bb04d51503d88 Sunny https://www.wish.com/merchant/584534057f6c0d4ca53569ae Thumbup https://www.wish.com/merchant/56fb6b2dc1bed17394d51c21 Tiancong https://www.wish.com/merchant/5840f04134599a698571b66b Timesq https://www.wish.com/merchant/56efa671a9f07f5860ee6311 Wangguoqin https://www.wish.com/merchant/5848e583d23c144d2c3b8781 wangjing120803 https://www.wish.com/merchant/589b0e4bbe0fe74ff78f76a9 Wanglixia https://www.wish.com/merchant/584139e6e88f6367d6ddc795 Wasiteasy https://www.wish.com/merchant/57e0ef2f3a02477561528254 WJANU https://www.wish.com/merchant/583c49150884751b85e98cef Wudile https://www.wish.com/merchant/57a2e9ebb2ea3e659e379098 wumei150329 https://www.wish.com/merchant/584a46fba55ed20948d5d9f9 Xiaoxiaodedian https://www.wish.com/merchant/5837f1032f5e53046e9cdeb2 Xindong https://www.wish.com/merchant/57aec069d25a4018b733a48b xinglongzhuanqian https://www.wish.com/merchant/582ec9368108914211fa2079 *12 Xingstars https://www.wish.com/merchant/570367598b7f1058f43e3363 Xuenvzhuang https://www.wish.com/merchant/5848d9b068eb840a4ffe9905 Xutao https://www.wish.com/merchant/5819d4354199ad024c4f3eb3 Yangfanlsy https://www.wish.com/merchant/5899bf818333d24fe970ff84 Zhanghongyue https://www.wish.com/merchant/58e635492d91301f043a9bf0 Zhengzhi https://www.wish.com/merchant/5784a8800d06001a7f062dfd