BMW of North America, LLC et al v. Dinodirect Corp et al

Filing 108

CONSENT JUDGMENT AND PERMANENT INJUNCTION by Hon. William Alsup granting 107 Stipulation.(whalc1, COURT STAFF) (Filed on 7/2/2013)

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Jane L. Froyd (State Bar No. 220776)
JONES DAY
1755 Embarcadero Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]
John G. Froemming (Admitted pro hac vice)
JONES DAY
51 Louisiana Avenue, NW
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiffs
BMW OF NORTH AMERICA, LLC,
ROLLS-ROYCE MOTOR CARS NA, LLC,
ROLLS-ROYCE MOTOR CARS LIMITED,
and
BAYERISCHE MOTOREN WERKE AG
Mark B. Frazier (State Bar No. 107221)
Damon Mircheff (State Bar No. 216257)
RUTAN & TUCKER, LLP
611 Anton Blvd., Suite 1400
Costa Mesa, California 92626-1931
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Defendants
DINODIRECT CORP.; DINODIRECT
CHINA LTD.; B2FORCE INT’L CORP.;
AND JIANFENG FENG aka KEVIN FENG
aka KEVIN FENN
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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BMW OF NORTH AMERICA, LLC,
ROLLS-ROYCE MOTOR CARS NA,
LLC, ROLLS-ROYCE MOTOR CARS
LIMITED, and
BAYERISCHE MOTOREN WERKE
AG,

Case No. 3:11-cv-04598-WHA
CONSENT JUDGMENT AND
PERMANENT INJUNCTION
Judge: Hon. William Alsup

Plaintiffs,
[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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v.
DINODIRECT CORP.,
DINODIRECT CHINA LTD.,
B2CFORCE INT’L CORP., and
JIANFENG FENG a/k/a KEVIN FENN
a/k/a KEVIN FENG,
Defendants.
This action, having come on for consideration on the Amended Complaint of
the Plaintiffs for direct trademark infringement and counterfeiting and unfair
competition against the Defendants with regard to Plaintiffs’ proprietary rights in
their trademarks;
The Defendants, having stipulated to the facts referenced herein, and the
parties having otherwise waived the entry of findings of fact and conclusions of law
pursuant to Rule 52 of the Federal Rules of Civil Procedure, and without trial,
argument or adjudication of any issue of fact or law, having consented and
stipulated to the entry of this Consent Judgment and Permanent Injunction under
the terms provided herein:
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that:
This Court has jurisdiction over the subject matter of this action under the
laws of the United States, 15 U.S.C. § 1121 et seq., and supplemental jurisdiction
over Plaintiffs’ state law claims under 28 U.S.C. § 1367(a), and has jurisdiction
over each of the Defendants. The claims arising under the laws of the State of
California are joined with substantial and related claims under the trademark laws
of the United States.
The Defendants acknowledge the existence and validity of the trademarks
described in Paragraphs 14-22 of Plaintiffs’ Amended Complaint, attached as
Exhibit A. Specifically, BMW is the exclusive owner of valid and subsisting federal
trademark registrations, including trademark registrations for its Roundel logo,
“BMW” mark, Rolls-Royce Badge (“RR Badge”), “BMW Group” mark, Flying

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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Lady Device, “Z8” mark, and M-Stripes logo, attached hereto as Exhibit B, as well
as common law rights to the trademark BMW MOTORSPORT (collectively, the
“BMW Marks”), and BMW’s Roundel logo, “BMW” word mark, and RR Badge
are famous. In addition, BMW has extensively used and advertised the BMW
Marks in connection with its business of designing, manufacturing, distributing,
offering for sale and selling motor vehicles, vehicles parts, and lifestyle items
throughout the United States.
IT IS FURTHER ORDERED that:
1.

Defendants, their parents, affiliates, subsidiaries, and their respective

officers, agents, servants, employees, independent contractors and attorneys, or any
other person or entity acting in concert or participating with anyone described
above, and any successor in interest or future owners of the Defendants, agree to be
and are immediately and permanently enjoined from:
A.

designing, creating, manufacturing, advertising, marketing,

promoting, offering for sale, ordering, accepting orders for, providing the means to
order, brokering, selling, warehousing, delivering, shipping, importing, exporting,
distributing, or accepting shipment or delivery of, any products that are not made or
authorized by BMW that depict or bear any of the BMW Marks or any other
trademark or logo of BMW or colorable imitations thereof, including any Chinese
version thereof, or facilitating, inducing, or assisting any of the activity set forth
above;
B.

operating or hosting any website that sells or offers to sell goods

using counterfeit reproductions of the BMW Marks or any colorable imitations
thereof or any other trademark of BMW’s; or permitting, facilitating or allowing
suppliers, customers, users or members of or to www.dinodirect.com or any other
website or business now or in the future owned, operated or controlled wholly or in
part by, or affiliated with any of the Defendants, to post or display listings or offers

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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to sell, buy, manufacture or distribute goods bearing a BMW Mark or advertised
with a BMW logo, which are not genuine BMW goods.
C.

displaying BMW’s logos or colorable imitations thereof,

including but not limited to BMW’s Roundel logo, RR Badge, M-Stripes logo, and
MINI Wings logo (attached hereto as Exhibit C), on any website, in promotional or
marketing materials, or otherwise in connection with their business or on any
website where such use is not authorized by BMW;
D.

advertising or describing products that are not by BMW, Rolls-

Royce, or MINI as “BMW,” “Rolls-Royce,” or “MINI” products, or otherwise
using BMW’s trademarks or colorable imitations thereof as or in the names, titles,
and listings of products not made or authorized by BMW, such as using the term
“BMW Accessories” to sell non-genuine accessories for BMWs, or making any
other false or misleading description of fact in connection with products for BMWs;
E.

assisting,

advising,

allowing,

encouraging,

inducing

or

instructing any supplier or source of or to any Defendant’s website or business in
creating or posting listings that Defendants know or have reason to know are for
products that infringe Plaintiffs’ marks or for counterfeit or replica products bearing
Plaintiffs’ marks;
F.

failing to immediately remove or disable access to any listing (1)

identified by Plaintiffs as allegedly infringing Plaintiffs’ marks, or (2) that
otherwise comes to the attention of the Defendants and that they know or have
reason to know are for counterfeit or replica products bearing Plaintiffs’ marks;
G.

failing to immediately cancel a source’s or supplier’s access to

any Defendant’s website, staging area or business (1) identified by Plaintiffs as a
seller, buyer, manufacturer, distributor of, or offering such services in connection
with, goods allegedly infringing or counterfeiting Plaintiffs’ marks, or (2) that
otherwise comes to the attention of the Defendants where they know or have reason

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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to know the member is a seller or buyer of counterfeit or replica products bearing
Plaintiffs’ marks;
H.

doing any other act or thing likely to confuse, mislead, or

deceive others into believing that Defendants emanate from, are connected with,
sponsored by, licensed by, or approved by, BMW, or that Defendants’ products and
services are sponsored, licensed or approved by BMW or aiding and abetting others
to do so;
I.

otherwise engaging in activity likely to dilute BMW’s Roundel

logo, “BMW” word mark, RR Badge or any other famous trademark of BMW’s;
J.

utilizing or registering any domain names or sub-domain names

that use or incorporate any of BMW’s trademarks;
K.

making any other trademark use of the “BMW” mark, “BMW

Group,” or “Z8” mark, or any other BMW trademarks or colorable imitations
thereof, including use of BMW’s trademarks in metatags or any visible use of
BMW’s trademarks in Google Adwords or other keyword advertising; and
L.

facilitating, inducing, assisting, aiding, abetting, or supplying

the means for any other person or business entity to engage in or perform any of the
activities referred to in the above subparagraphs (A) through (H), or effecting any
assignments or transfers, forming new entities or associations or utilizing any other
device for the purpose of circumventing or otherwise avoiding the prohibitions set
forth in subparagraphs (A) through (K).
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that
Defendants are directed to:
2.

permanently delete and remove and recall from all websites, blogs,

online auctions, stores, shops, markets, outlets, catalogues, or other channels of
commerce any listings for goods bearing counterfeits of the BMW Marks, or any
other non-genuine product confusingly similar to Plaintiffs’ products, or that

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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otherwise bear, contain, display or utilize the BMW Marks, any derivation or
colorable imitations thereof, or any other BMW trademark or colorable imitation
thereof;
3.

in accordance with § 36 of the Federal Trademark Act, 15 U.S.C. §

1118, deliver up for destruction all counterfeit goods that bear Plaintiffs’ marks,
and/or any other products confusingly similar to Plaintiffs’ products, or that
otherwise bear, contain, display, or utilize the BMW Marks or any other BMW
trademark or colorable imitation thereof, that are in Defendants’ possession,
custody, or control and all means of making the same;
4.

in accordance with § 36 of the Federal Trademark Act, 15 U.S.C. §

1118, deliver up for destruction any and all guarantees, circulars, price lists, labels,
signs, prints, packages, wrappers, pouches, receptacles, advertising and promotional
matter, electronic files, and other materials in the possession or control of
Defendants bearing the BMW Marks, any derivation or colorable imitations thereof,
or any other BMW trademark or colorable imitation thereof; and
5.

file with the Court and serve on counsel for Plaintiffs within thirty (30)

days after entry of this Order, a sworn written statement pursuant to § 34(a) of the
Federal Trademark Act, 15 U.S.C. § 1116(a), setting forth in detail the manner and
form in which the Defendants have complied with this Consent Judgment and
Permanent Injunction.
6.

provide, without limitation, any information to the Plaintiffs

concerning and/or provided by source of goods to any of the Defendants that could
identify buyers, sellers, manufacturers or distributors of counterfeit goods bearing
Plaintiffs’ marks. This information can include, but is not limited to, names,
addresses, telephone, email, credit card and bank account information.
IT IS FURTHER HEREBY ORDERED, ADJUDGED AND DECREED
that:

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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7.

DinoDirect China Ltd. shall pay via wire transfer to BMW AG a total

of USD $50,000 (fifty thousand dollars) by no later than June 15, 2013;
8.

In the event of a breach of the Consent Judgment and Permanent

Injunction, Defendants will be given 5 days following notice of the breach by
Plaintiffs in order to cure the breach. If the breach is not cured within 3 business
days, DinoDirect China Ltd. agrees to and shall immediately pay to Plaintiff BMW
AG liquidated damages in the amount of USD $200,000.
9.

For any repeat failure to cure following the notice provided for in

paragraph 8 above, DinoDirect China Ltd. agrees to and shall immediately pay to
Plaintiff BMW AG additional liquidated damages in the amount of USD $500,000.
10.

The Defendants acknowledge that a breach of this Consent Judgment

and Permanent Injunction by the Defendants would result in irreparable injury to
Plaintiffs, and that in the event of a breach, Plaintiffs would be entitled to
immediate injunctive relief to enforce this Consent Judgment and Permanent
Injunction, liquidated damages for past and any ongoing trademark infringement,
counterfeiting, or unfair competition, and to reimbursement of their reasonable
attorneys’ fees and costs arising from bringing an action against Defendants and
enforcement of this Consent Judgment and Permanent Injunction.
11.

This Consent Judgment and Permanent Injunction is binding upon the

Defendants, subsidiaries, affiliates, and their respective officers, agents, servants,
employees, independent contractors and attorneys, or any other person or entity
acting in concert or participating with the Defendants, and on any successor in
interest of future owners of the Defendants’ websites or the customer data
associated with the defendants’ websites.
12.

This Court shall retain jurisdiction of this matter and over the parties

thereto for the purpose of enforcing the terms of this Consent Judgment and
Permanent Injunction and the separate Settlement Agreement entered into between

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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14.

There being no just reason for delay, the Clerk of this Court is hereby

directed to enter this Final Judgment forthwith, which supersedes the Judgment
previously entered in this action in favor or Plaintiffs and against Defendants.
IT IS SO ORDERED.
Dated: July 2,__, 2013
June 2013.

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William Alsup ge William Alsup
Jud
United States District Judge
ER
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The parties hereby consent to the entry of the foregoing Consent Judgment and
D IS T IC T O
R
Permanent Injunction and waive any and all rights of appeal.
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ERED
O ORD D
IT IS S
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of the United States Patent and Trademark Office.

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Trademarks of the entry of this Final Judgment who shall enter it upon the records

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1116, the Clerk of the Court shall notify the Commissioner of Patents and

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In accordance with § 34 of the Federal Trademark Act, 15 U.S.C. §

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13.

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plaintiffs and defendants with respect to the subject matter of this action for two (2) years from
from the date of the Defendants with respect to the subject matter of this action.
Plaintiffs and entry of this order.

UNIT
ED

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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BMW of North America, LLC

DinoDirect Corp.

By:______________________

By:______________________

Dated:____________________

Dated:____________________

Rolls-Royce Motor Cars NA, LLC

DinoDirect China Ltd.

By:______________________

By:______________________

Dated:____________________

Dated:____________________

Rolls-Royce Motor Cars Limited

B2CForce International Corp.

By:______________________

By:______________________

Dated:____________________

Dated:____________________

Bayerische Motoren Werke AG

JianFeng Feng a/k/a Kevin Fenn a/k/a
Kevin Feng

By:______________________

_________________________

Dated:____________________

I.D. No.: 310110197305073634
Dated:____________________

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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION