Specialized Bicycle Components, Inc. v. 17 No.1-Own et al

Filing 24

Order Granting Application For Preliminary Injunction. Signed by Judge Robert N. Scola, Jr on 7/14/2017. (kpe)

United States District Court
for the
Southern District of Florida
Specialized Bicycle Components,
Inc., Plaintiff,
v.
17 No.1-Own, and others,
Defendants.

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Case No. 17-61201-CIV-SCOLA

Order Granting Application For Preliminary Injunction
This matter is before the Court on the Plaintiff’s Application for Entry of
Preliminary Injunction (ECF No. 6) and upon the Preliminary Injunction
Hearing held on July 14, 2017. By the instant Application, Plaintiff Specialized
Bicycle Components, Inc. moves for entry of a preliminary injunction against
Defendants, the Individuals, Partnerships and Unincorporated Associations
identified on Schedule “A” hereto (collectively “Defendants”), pursuant to 15
U.S.C. § 1116 and Fed. R. Civ. P. 65, and The All Writs Act, 28 U.S.C. §
1651(a), for alleged violations of the Lanham Act, 15 U.S.C. §§ 1114 and
1125(a). The Court has carefully reviewed the Motion and the entire court file
and is otherwise fully advised in the premises.
The Court convened a hearing on July 14, 2017, at which only counsel
for the Plaintiff was present and available to present evidence supporting the
Application for Preliminary Injunction. The Defendants have not formally
responded to the Application for Preliminary Injunction, nor made any filing in
this case, nor have the Defendants appeared in this matter either individually
or through counsel. Because the Plaintiff has satisfied the requirements for the
issuance of a preliminary injunction, the Court grants the Plaintiff’s
Application for Preliminary Injunction (ECF No. 6).
1. Factual Background1
The Plaintiff is the registered owner of the following trademarks on the
Principal Register of the United States Patent and Trademark Office
(collectively, the “Specialized Marks”).

The factual background is taken from Plaintiff’s Complaint, Application for Preliminary
Injunction, and supporting evidentiary submissions.
1

Trademark

Registration
Number

1,515,498

3,942,515

Registration
Date

Class / Goods

IC 025; Bicyclists’ Shoes and
December 6,
Clothings, Namely Shorts, Socks,
1988
and Jerseys.
IC 025; Bicyclists’ shoes and
April 12, 2011 clothing, namely, shorts, socks
and jerseys.
IC 009; Protective body armor.

3,989,153

4,019,602

IC 025; Clothing, namely, shirts,
t-shirts, tops, base layers, jackets,
July 5, 2011 jerseys, shorts, padded shorts,
pants, sweat pants, tights, vests,
socks, arm warmers, knee
warmers, headwear, and footwear.

August 30,
2011

IC 025; Clothing, namely,
footwear, shirts, t-shirts, tops,
socks, jackets, base layers, shorts,
padded shorts, pants, sweat
pants, tights, vests, arm warmers,
knee warmers, headwear, gloves,
namely, cycling gloves and
outdoor gloves.

The Specialized Marks are used in connection with the design, marketing, and
distribution of high quality goods in the categories identified above. (See
Declaration of Andrew Love in Support of Plaintiff’s Application for Preliminary
Injunction (“Love Decl.”) ¶ 4.)
The Defendants, through the Internet based e-commerce stores operated
via, at least, one Internet marketplace website, using their seller identification
names identified on Schedule “A” hereto (the “Seller IDs”), have advertised,
promoted, offered for sale, or sold goods bearing what the Plaintiff has
determined to be counterfeits, infringements, reproductions or colorable
imitations of the Specialized Marks. (See Love Decl. ¶¶ 11-15; Declaration of
Virgilio Gigante in Support of Plaintiff’s Application for Preliminary Injunction
(“Gigante Decl.”) ¶ 2; Declaration of Kathleen Burns in Support of Plaintiff’s
Application for Preliminary Injunction (“Burns Decl.”) ¶ 4; see also relevant web

page captures from the Defendants’ e-commerce stores operating under the
Seller IDs attached as Composite Exhibit 1 to the Burns Decl.)
Although each of the Defendants may not copy and infringe the Plaintiff’s
trademarks for each category of goods protected, the Plaintiff has submitted
sufficient evidence showing each of the Defendants has infringed, at least, one
or more of the trademarks at issue. (See Love Decl. ¶¶ 11-15.) The Defendants
are not now, nor have they ever been, authorized or licensed to use, reproduce,
or make counterfeits, reproductions, or colorable imitations of the Specialized
Marks. (See id. ¶¶ 11, 14.)
The Plaintiff retained Kathleen Burns (“Burns”), an officer of Invisible Inc,
a licensed private investigative firm, to investigate the suspected sale of
counterfeit and infringing versions of the Plaintiff’s branded products by the
Defendants. (See Love Decl. ¶ 12; Burns Decl. ¶ 3; Gigante Decl. ¶ 2.) Through
Amazon.com, Ms. Burns accessed all of the Defendants’ e-commerce stores
operating under their respective Seller IDs, and finalized the purchase of a
product bearing counterfeits of, at least, one of the Specialized Marks at issue
in this action, via each Seller ID, and requested each product to be shipped to
her firm’s address in the Southern District of Florida. (See Burns Decl. ¶ 4.)
Each purchase was processed entirely online, and at the conclusion of the
process, the detailed web page captures reflecting the Plaintiff’s branded
products Ms. Burns purchased via each Defendant’s Seller ID were sent to the
Plaintiff’s representative for inspection. (See Burns Decl. ¶ 4; Love Decl. ¶ 13;
Gigante Decl. ¶ 2.)
The Plaintiff's representative reviewed and visually inspected the detailed
web page captures and images reflecting various products bearing the
Specialized Marks offered for sale by the Defendants via the Sellers IDs,
identified and captured by Ms. Burns, and provided to the Plaintiff thereafter,
and determined the products offered for sale were non-genuine versions of the
Plaintiff’s products. (See Love Decl. ¶ 14.)
On June 15, 2017, Plaintiff filed its Complaint (ECF No. 1) against the
Defendants for trademark counterfeiting and infringement, false designation of
origin, common law unfair competition, and common law trademark
infringement. On June 19, 2017, Plaintiff filed its Ex Parte Application for Entry
of Temporary Restraining Order, Preliminary Injunction, and Order Restraining
Transfer of Assets (ECF No. 6). On June 20, 2017, the Court issued a Sealed
Order Granting Ex Parte Temporary Restraining Order and Setting Hearing
(ECF No. 9). The Plaintiff also moved for, and the Court authorized, alternate
service of process on the Defendants (ECF Nos. 8, 11). The Plaintiff provided
the Defendants with notice of the Plaintiff’s Ex Parte Application for Entry of
Temporary Restraining Order, Preliminary Injunction, and Order Restraining

Transfer of Assets and copies of the Court’s June 20, 2017 Order via electronic
mail (“e-mail”) to each Defendant’s corresponding e-mail address(es) and/or via
publication (ECF Nos. 10-12, 18-20)
2. Legal Standard
To obtain a preliminary injunction, a party must demonstrate “(1) a
substantial likelihood of success on the merits; (2) that irreparable injury will
be suffered if the relief is not granted; (3) that the threatened injury outweighs
the harm the relief would inflict on the non-movant; and (4) that the entry of
the relief would serve the public interest.” Schiavo ex. rel Schindler v. Schiavo,
403 F.3d 1223, 1225–26 (11th Cir. 2005) (per curiam); see also Levi Strauss &
Co. v. Sunrise Int’l. Trading Inc., 51 F. 3d 982, 985 (11th Cir. 1995) (applying
the test to a preliminary injunction in a Lanham Act case).
3. Analysis
The declarations that the Plaintiff submitted in support of its Application
for Preliminary Injunction support the following conclusions of law:
A.
The Plaintiff has a very strong probability of proving at trial that
consumers are likely to be confused by the Defendants’ advertisement,
promotion, sale, offer for sale, or distribution of products bearing counterfeits,
reproductions, or colorable imitations of the Specialized Marks, and that the
products the Defendants are selling and promoting are copies of the Plaintiff's
products that bear copies of the Specialized Marks.
B.
Because of the infringement of the Specialized Marks, the Plaintiff
is likely to suffer immediate and irreparable injury if a preliminary injunction is
not granted. It clearly appears from the following specific facts, as set forth in
the Plaintiff’s Complaint, Application for Preliminary Injunction, and
accompanying declarations on file, demonstrate that immediate and irreparable
loss, damage, and injury will result to the Plaintiff and to consumers because it
is more likely true than not that:
1.
The Defendants own or control e-commerce stores via an
Internet marketplace website operating under their seller identification names
which advertise, promote, offer for sale, and sell products bearing counterfeit
and infringing trademarks in violation of the Plaintiff's rights;
2.
There is good cause to believe that more counterfeit and
infringing products bearing the Plaintiff’s trademarks will appear in the
marketplace; that consumers are likely to be misled, confused, and
disappointed by the quality of these products; and that the Plaintiff may suffer
loss of sales for its genuine products.

C.
The balance of potential harm to the Defendants in restraining
their trade in counterfeit and infringing branded products if a preliminary
injunction is issued is far outweighed by the potential harm to the Plaintiff, its
reputation, and its goodwill as a manufacturer and distributor of quality
products if such relief is not issued.
D.
The public interest favors issuance of the preliminary injunction to
protect the Plaintiff’s trademark interests and protect the public from being
defrauded by the palming off of counterfeit products as the Plaintiff’s genuine
products.
E.
Under 15 U.S.C. § 1117(a), the Plaintiff may be entitled to recover,
as an equitable remedy, the illegal profits gained through the Defendants’
distribution and sales of goods bearing counterfeits and infringements of the
Specialized Marks. See Reebok Int’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d
552, 559 (9th Cir. 1992) (quoting Fuller Brush Products Co. v. Fuller Brush Co.,
299 F.2d 772, 777 (7th Cir. 1962) (“An accounting of profits under § 1117(a) is
not synonymous with an award of monetary damages: ‘[a]n accounting for
profits . . . is an equitable remedy subject to the principles of equity.’”)).
F.
Requesting equitable relief “invokes the district court’s inherent
equitable powers to order preliminary relief, including an asset freeze, in order
to assure the availability of permanent relief.” Levi Strauss & Co., 51 F.3d at
987 (11th Cir. 1995) (citing Federal Trade Commission v. United States Oil and
Gas Corp., 748 F.2d 1431, 1433-34 (11th Cir. 1984)).
G.
In light of the inherently deceptive nature of the counterfeiting
business, and the likelihood that the Defendants have violated federal
trademark laws, the Plaintiff has good reason to believe the Defendants will
hide or transfer their ill-gotten assets beyond the jurisdiction of this Court
unless those assets are restrained.
4. Conclusion
For the foregoing reasons, it is ordered and adjudged that the Plaintiff’s
Application for Preliminary Injunction (ECF No. 6) is hereby granted as
follows:
(1)
Each Defendant, its officers, directors, employees, agents,
subsidiaries, distributors, and all persons in active concert or participation
with any Defendant having notice of this Order are hereby restrained and
enjoined until further Order of this Court:
a. From manufacturing, importing, advertising, promoting,
offering to sell, selling, distributing, or transferring any
products bearing the Specialized Marks, or any confusingly

similar trademarks, other than those actually manufactured or
distributed by the Plaintiff; and
b. From secreting, concealing, destroying, selling off, transferring,
or otherwise disposing of: (i) any products, not manufactured or
distributed by the Plaintiff, bearing the Specialized Marks, or
any confusingly similar trademarks; or (ii) any evidence relating
to the manufacture, importation, sale, offer for sale,
distribution, or transfer of any products bearing the Specialized
Marks, or any confusingly similar trademarks.
(2)
Each Defendant, its officers, directors, employees, agents,
subsidiaries, distributors, and all persons in active concert or participation
with any Defendant having notice of this Order shall immediately discontinue,
until further Order of this Court, the use of the Specialized Marks or any
confusingly similar trademarks, on or in connection with all Internet based ecommerce stores owned and operated, or controlled by them including the
Internet based e-commerce stores operating under the Seller IDs;
(3)
Each Defendant, its officers, directors, employees, agents,
subsidiaries, distributors, and all persons in active concert or participation
with any Defendant having notice of this Order shall immediately discontinue,
until further Order of this Court, the use of the Specialized Marks, or any
confusingly similar trademarks within metatags or other markers within
website source code, from use on any webpage (including as the title of any
web page), from any advertising links to other websites, from search engines’
databases or cache memory, and any other form of use of such terms that are
visible to a computer user or serves to direct computer searches to Internet
based e-commerce stores registered, owned, or operated by any Defendant,
including the Internet based e-commerce stores operating under their Seller
IDs;
(4)
Each Defendant shall not transfer ownership of the Internet based
e-commerce stores under their Seller IDs during the pendency of this action, or
until further order of the Court;
(5)
Each Defendant shall continue to preserve copies of all computer
files relating to the use of any of the Internet based e-commerce stores under
their Seller IDs and shall take all steps necessary to retrieve computer files
relating to the use of the Internet based e-commerce stores under their Seller
IDs that may have been deleted before the entry of this Order;
(6)
Upon receipt of notice of this Order, Amazon Payments, Inc.
2 and its related companies and affiliates shall, to the extent not
(“Amazon”),
2

Amazon is licensed to do business in the State of Florida by the Florida Office of the

already done, immediately identify and restrain all funds, as opposed to
ongoing account activity, in the Amazon accounts related to the Defendants as
identified on Schedule “A” hereto, as well as all funds in or which are
transmitted into (i) any other accounts of the same customer(s), (ii) any other
accounts which transfer funds into the same financial institution account(s),
and/or any of the other Amazon accounts subject to this Order; and (iii) any
other Amazon accounts tied to or used by any of the Seller IDs identified on
Schedule “A” hereto;
(7)
Amazon shall also, to the extent not already done, immediately
divert to a holding account for the trust of the Court all funds in all Amazon
accounts related to the Defendants identified on Schedule “A” hereto, and
associated payment accounts, and any other accounts of the same customer(s)
as well as any other accounts which transfer funds into the same financial
institution account(s) as any of the other Amazon accounts subject to this
Order;
(8)
Amazon shall further, to the extent not already done, provide the
Plaintiff’s counsel with all data which details (i) an accounting of the total
funds restrained and identifies the financial account(s) which the restrained
funds are related to, and (ii) the account transactions related to all funds
transmitted into the financial account(s) which have been restrained. No funds
restrained by this Order shall be transferred or surrendered by Amazon for any
purpose (other than pursuant to a chargeback made pursuant to Amazon’s
security interest in the funds) without the express authorization of this Court;
(9)
This Order shall apply to the Seller IDs, associated e-commerce
stores, and any other seller identification names, e-commerce stores, or
Amazon accounts which are being used by the Defendants for the purpose of
counterfeiting the Specialized Marks at issue in this action and/or unfairly
competing with the Plaintiff;
(10) Amazon or any Defendant or financial institution account holder
subject to this Order may petition the Court to modify the asset restraint set
out in this Order;
(11) Pursuant to 15 U.S.C. § 1116(d)(5)(D) and Fed. R. Civ. P. 65(c), the
Plaintiff shall maintain its previously posted bond in the amount of Ten
Thousand Dollars and Zero Cents ($10,000.00), as payment of damages to
which the Defendants may be entitled for a wrongful injunction or restraint,
during the pendency of this action, or until further Order of the Court. In the

Controller and is therefore subject to personal jurisdiction in this Court. (See Gigante Decl. ¶
5.)

Court’s discretion, the bond may be subject to increase should an application
be made in the interest of justice;
(12) Additionally, for the purpose of providing additional notice of this
proceeding, and all other pleadings, orders, and documents filed herein, the
owners, operators and/or administrators of the Internet marketplace website,
including but not limited to Amazon.com, Inc., shall, to the extent not already
done, at the Plaintiff’s request, provide the Plaintiff’s counsel with any e-mail
address known to be associated with the Defendants’ respective Seller IDs; and
(13) This preliminary injunction shall remain in effect during the
pendency of this action, or until further Order of this Court.
Done and ordered in chambers at Miami, Florida, on July 14, 2017.

________________________________
Robert N. Scola, Jr.
United States District Judge

SCHEDULE “A”
DEFENDANTS BY NUMBER, SELLER ID, AND ASSOCIATED ASIN
Defendant
Number

Seller ID

Amazon Seller ID

1

17 No.1-Own

A2M8QWPMHSF7Z1

2

2KS96jkx0

A3EQ3KO4RB68YB

3

8jdsa7qiw

A1Z6BL9SCC50J0

4

9ish45DH

A1CLEYDU4NWO7P

5

A KissMe

A2SI6DOPZGUZFT

6

Albert French TCSP

A11C8X45OUH6T4

7

Andres Hanson
Escabias

A2NH4KB152RD6Q

8

Andy Wordsworth

A1KGABAJZY7J3I

9

brosin

A16KAGTKU3GK1G

10

Butler LUW

A281DXQZQEP5IH

11

CALL ME J

A3HBS9Y50RTYE6

12

Cannot Help

A25ND5CWAR6S50

13

CHELLE GRE

A2U2JM8D6WEC5A

14

cooperatomlggwau

A3AX8W1NUGGI8I

15

crutchleanrxmno

AFG1873D7HM7F

16

da Ar

AQR1FJ7FSDRDK

17

DaviRichardson

A1E6P5XGO0OU3B

18

Dong Hui Store

A3SVESG4LDBTXK

19

DONGLE RENKESON

AAM6ZFZ44EK36

Infringing
Item's ASIN
B01M5CT2VC
B01M2YO8OB
B01FJDZEK8
B01LLBSUXU
B01LLBT0L6
B01LW6GX84
B01LW6HOD0
B01M27H9LG
B01M8L93SA
B01GQYN5R8
B01GQYN9KQ
B01N4GS83J
B01N0TMXE6
B01M1J1VU7
B01M0WG5YH
B00QPO3CG4
B01M5CT2VC
B01MCV3CQS
B01LSSEP9E
B01LSSEQGQ
B01LSSEP9E
B01LSSEQGQ
B01M5CT2VC
B01M3RCSGJ
B01GQYN5R8
B01GQYNANC
B01FJDZECG
B01LXPAGMC
B01LYOGLEW
B01JTS3IVQ
B01JTS3RNA
B01M5CT2VC
B01MCV3CQS
B01FJDZEK8

20

duroseaumfkrjbn

AT7IDX0VP1LC4

21

Edwin ROBERSON

A13E432VB4S00B

22

FASHION PARK

A3COS0QPG7I5WY

23

Forda Zarva

A1SBYT3EEC4T8C

24

GinaSoninc

AGSK4JIF2G6V3

25

GTILO

A3DF42A5HOQ9NN

B01JTS3WMQ
B01JTS3XZC
B00QPO3A34
B00QPO3B6K
B01JTS3IVQ
B01JTS3Q5E
B01KNKYM8C
B01KNKYN6I
B01FJDZEEY
B01FJDZEK8
B01FJDZEK8

26

huanyuanda

A3IYTV56EIOZY3

B01JTS3IVQ

27

IAN & ADAM

A30DRT6QG4QJPE

B00QPO3A34

28

IdealLife
Ideal Life(10-15 Days
Delivery)

33

jun yu luo

34

kalbaugh halen

35

KEKEHOT

36

KERRWL

37

KHarrisn

38

KT365-CD

39

Laterwwr

40

Leigh E Pickens

B00QPO3A34
A12SNQ85RNL7BP
B00QPO3B6K
B00QPO3DJU
B01GP6II7Y
ADC963TU18BGZ
B01GP6IN2E
A1BC6SM5DFP5P8
B00QPO3B6K
B01KNKYM8C
A32ATZTIEB857R
B01KNKYN6I
B00QPO3A34
A37WZCRNGM3DF6
B00QPO3DJU
B01M1J1VU7
AEP31PZBI0J7F
B01M0WG5YH
B01FJDZEEY
AOI4LM4N70MHM
B01FJDZEK8
B01FJDZEEY
A3DLIA19PDFVJ0
B01FJDZECG
B01M1EJI36
A136IM4T2NDARV
B01M133BMS
B01LZLJDRJ
A12SDQPCXKESY4
B01LWO1K5L
B01LPEW5JS
A3W3XLMOWC1RZQ
B01LPEU6J4
A5HVPRKLYQJ2H
B01FJDZEK8

41

lili liu

A1QU9M2QRI0AB6

28
29

James Parrish

30

JANICE WILSON
Jorden Smither
Happyshopping

31

B01FJDZECG

42

linqingquan

A1JEIJ6SA6KILP

43

Lorena Martinezas

A1PB7CEJLWBZXR

44

M&SDTing

A156ACA5RSP5FL

45

Maisie Tighe

A8PPIFU8KOGOS

46

michale mcgee

ARX8WPQ8WW7GM

47

Mike DavisAS

A1V5PTEXL02SEN

48

Miki Minami

A2360FOU2ZYST4

49

NANSMBIR

A3UQC2X2TQW3JE

50

NICOlE MUNFORD

A149B7A3CT8Y1O

51

OOPLSMS

A1R17GKEKIV5SM

B00QPO3A34
B01J2OM2T6
B01J2OM5B6
B01J2OM5B6
B01J2OM76O
B01J2OM91W
B01J2OMAS4
B01J2OMCH8
B01J2OME1W
B01J2OMFW0
B01J2OMHX2
B01J2ON7L8
B01J2ON9JS
B01J2ONBS2
B01J2ONEDO
B01J5A0JY2
B01J5A0KTG
B01J5A0M6W
B01J5A0NES
B01J5A0P78
B01J5A0R4O
B01J5A0SYI
B01FJDZEK8
B01FJDZEEY
B01FJDZECG
B00QPO3A34
B00QPO3B6K
B01GP6II7Y
B01GP6IL3A
B01M1J1VU7
B01LWZRMYC
B01GQYN5R8
B01GQYN9KQ
B01FJDZEEY
B01FJDZEK8
B01JTS3IVQ
B01JTS3M8U
B01M5CT2VC
B01M3RCSGJ

52

Patricia Bierley

53

patti Kiser

54

Pippa Reeve

55

QIWUEYR

56

renceburg

57

renjijuanndhnp

58

RIZIXUANG

59

sam717

60

Sarah Hamilton a

61

Slate GXKL

62

Super Spowerful

63

Susueky

64

Tankoo

65

TEVEN&ORTI

66

Tran GO

67

typewriter to

68

Verescha

69

Wayne Webber

70

Yinsoa Y

71

YOU-SKTI

B01GP6II7Y
B01GP6ILXK
B01LSSEP9E
A2JAVCRFPAWEPJ
B01LSSEQGQ
B00QPO3A34
A2HHFXOH679ESL
B00QPO3B6K
B01M5CT2VC
AXQ0LOK0AOAZM
B01MCV3CQS
B01KNKYM8C
AQWFBMQOS0I7B
B01KNKYN6I
B01KNKYM8C
A2JGFUFUHZ3A9N
B01KNKYN6I
B01GP6II7Y
A2EOEOJSHNUW8L
B01GP6ILXK
B01GP6II7Y
A3MDCHCMPYX4JA
B01GP6ILXK
B01M5CT2VC
A3VW0LX286SH27
B01M2YO8OB
B01GP6II7Y
A3559O4181KPQ5
B01GP6IMFW
B01JTS3IVQ
A241NEIS2LXPNM
B01JTS3N0W
B01GP6II7Y
AQ058GPK2Z673
B01GP6IL3A
A31HLWAD0EYJPF
B011DQZH66
B00QPO3A34
A3NAQTD3Z8AS3E
B00QPO3B6K
B01M5CT2VC
A3DQOMCMFOJRD2
B01M2YO8OB
A1YXFLSJC8W07U
B00QPO3B6K
B01GP6II7Y
A9XUSQ4XGPNGQ
B01GP6IMFW
B01GWGHJZO
A3JJ7VWSA2U3SG
B01GWGHLN4
B01JTS3IVQ
A3JOI7BKFBLQQG
B01JTS3RNA
B01JTS3IVQ
A1CKDKKM4S69AG
B01JTS3Q5E
A2Z5YPCO6CRN95

72

zenicham

A1HA8BRA1GYQSU

73

ZHJDLKS ZZ

A2SZ8EPRQ0JU3

74

ZMYOPI

A2ZSKUMMH7K9B5

B01IB5TCOA
B01IB5TEG6
B01KNKYM8C
B01KNKYN6I
B01GP6II7Y
B01GP6ILXK