Whirlpool Properties, Inc. et al v. Unknown Party #1 et al

Filing 92

CONSENT JUDGMENT and PERMANENT INJUNCTION as to defendants Elite Fulfillment Center LLC, Empire Savings LLC, Number 1 Online Deals LLC, Top Notch Appliance Store LLC, and Direct Source Filters LLC; signed by District Judge Paul L. Maloney (Judge Paul L. Maloney, acr)

EXHIBIT 1
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
WHIRLPOOL PROPERTIES, INC.
(a Michigan corporation), and

)
)
)
WHIRLPOOL CORPORATION,
)
(a Delaware corporation),
)
Plaintiffs,
)
)
v.
)
)
)
ELITE FULFILLMENT CENTER LLC,
)
a New Jersey limited liability company;
)
MICHAEL MAKRILOS, an individual;
)
EMPIRE SAVINGS LIMITED LIABILITY )
COMPANY, a New Jersey limited liability )
company; XIJIN WU, an individual;
)
OMER DEMIRCAN, an individual;
)
FEVZI ARIF, an individual; NUMBER 1 )
ONLINE DEALS LIMITED LIABILITY )
COMPANY, a New Jersey limited liability )
company; TOP NOTCH APPLIANCE
)
STORE LIMITED LIABILITY
)
COMPANY, a New Jersey limited
)
liability company; DIRECT SOURCE
)
FILTERS LIMITED LIABILITY
)
COMPANY, a New Jersey limited
)
liability company,
)
Defendants. )

Civil Action No. 1:16-cv-00480-PLM-RSK

HON. PAUL L. MALONEY

CONSENT JUDGMENT AND PERMANENT INJUNCTION
This matter comes before the Court on the joint Motion of Plaintiffs Whirlpool
Properties, Inc. and Whirlpool Corporation (hereinafter collectively “Whirlpool”) and certain of
the Defendants in this action, namely, Elite Fulfillment Center LLC, Empire Savings Limited
Liability Company, Number 1 Online Deals Limited Liability Company, Top Notch Appliance

Store Limited Liability Company, and Direct Source Filters Limited Liability Company
(hereinafter collectively “Defendants”).
WHEREAS, this Consent Judgment and Permanent Injunction concerns Whirlpool’s
claims of trademark counterfeiting, trademark infringement, false designation of origin, and
unfair competition against the Defendants in this Civil Action No. 1:16-cv-00480 (hereinafter the
“Litigation”); and
WHEREAS, Whirlpool and Defendants request this Consent Judgment and Permanent
Injunction be entered in the above-captioned case against Defendants; and
WHEREAS, Whirlpool owns United States trademark registrations for the trademark
WHIRLPOOL covering “domestic water filtration units and parts therefor (Reg. No. 1837512),
“home water filtration devices” (Reg. No. 2955751), “refrigerators and freezer chests” (Reg. No.
0626550) and “refrigerators, freezers, and combination refrigerator-freezers” (Reg. No.
0937550); as well as registrations for the following trademark covering “ domestic water
filtration units and parts therefor” (Reg. No. 1832111) and “refrigerators, combination
refrigerator-freezers” (Reg. No. 1251511):

and Whirlpool owns a registration for EVERYDROP for “refrigerator water filters; water
filtration pitchers sold empty and portable water filter bottles sold empty” (Reg. No. 5232741)
and for the following trademark covering “refrigerator water filters; water filtration pitchers sold
empty, and portable water filter bottles sold empty” (Reg. No. 4679632):

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All the foregoing trademarks are collectively referred to herein as “the WHIRLPOOL Marks”.
WHEREAS, in the Litigation, Whirlpool alleged that Defendants were using the
WHIRLPOOL Marks in U.S. commerce on counterfeit and infringing refrigerator ice and water
filters and in connection with the advertising, promotion, sale, and distribution of such filters to
consumers nationwide, and Defendants filed an Answer denying the salient allegations of those
claims;
WHEREAS, in the Litigation, Whirlpool alleged it would be irreparably harmed if
Defendants were not enjoined from continuing such counterfeiting and infringing activities;
WHEREAS, in the Litigation, Whirlpool requested that this Court enter a permanent
injunction enjoining Defendants from infringing the WHIRLPOOL Marks or any other marks
confusingly similar thereto, and from otherwise competing unfairly with Whirlpool in any
manner;
WHEREAS, Whirlpool and Defendants have reached an agreement to finally settle the
Litigation as set forth in this Consent Judgment and Permanent Injunction and a separate
Settlement Agreement which has already been executed;
WHEREAS, the parties’ agreement extends to Whirlpool’s other primary trademarks
that are also currently registered, namely, MAYTAG, JENN-AIR, AMANA, KITCHENAID,
and AFFRESH, in addition to the WHIRLPOOL Marks;
WHEREAS, Whirlpool and Defendants each acknowledge this Court has subject matter

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jurisdiction and, further, consent to personal jurisdiction in the U.S. District Court for the
Western District of Michigan for purposes of entering as well as enforcing both this Consent
Judgment and Permanent Injunction as well as the parties’ Settlement Agreement in the future;
IT IS HEREBY ORDERED, DECREED and ADJUDGED as follows:
1.

This Court has personal jurisdiction over Whirlpool, and over Defendants for

purposes of this Consent Judgment and Permanent Injunction and for future enforcement of the
parties’ Settlement Agreement, and this Court has subject matter jurisdiction over the claims in
this Litigation.
2.

Whirlpool represents, and Defendants do not challenge, that Whirlpool has

ownership and standing to bring this Litigation concerning infringement of the WHIRLPOOL
Marks.
3.

The WHIRLPOOL Marks are, with respect to this Litigation, enforceable and not

invalid, and Defendants shall not challenge their validity, with respect any alleged enforcement
of this Consent Judgment and Permanent Injunction, and with respect to any alleged enforcement
of the parties’ Settlement Agreement, to the extent Whirlpool has not transferred the same to
non-affiliated third parties or abandoned the registrations.
4.

Whirlpool owns trademarks in addition to the WHIRLPOOL Marks, namely,

MAYTAG, JENN-AIR, AMANA, KITCHENAID, and AFFRESH, and corresponding U.S.
trademark registrations for those marks.
5.

Defendants’ importation, offer for sale, sale, and/or distribution of water filters

bearing the WHIRLPOOL Marks constitutes trademark counterfeiting, infringement, false
designation of origin, and unfair competition in violation of the Lanham Act and state law.

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6.

Defendants, and their respective officers, agents, servants, employees, attorneys,

and other persons or entities in active concert or participation therewith, deny the allegations in
this Litigation, but consent to be, and hereby are, permanently enjoined as of the date hereof
from manufacturing, offering to sell, selling, importing, exporting, distributing, and/or profiting
in any way from water filters bearing any of the WHIRLPOOL Marks, and from otherwise
competing unfairly with Whirlpool by selling products, product parts, and/or product accessories
bearing the WHIRLPOOL Marks or the following other registered marks currently owned by
Whirlpool: MAYTAG, JENN-AIR, AMANA, KITCHENAID, and AFFRESH.
7.

Each party shall bear its own costs and attorneys’ fees.

8.

This Court shall retain jurisdiction over Whirlpool and Defendants for the purpose

of enforcing the terms of this Consent Judgment and Permanent Injunction and over any matters
related to or arising from the interpretation or enforcement of the parties’ Settlement Agreement.

13th
So ORDERED and SIGNED this ____ day of __________________, 2018.
February

/s/ Paul L. Maloney
HON. PAUL L. MALONEY
UNITED STATES DISTRICT JUDGE

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