OFF-WHITE LLC v. ANOGAR-32 et al.

Filing 42

PRELIMINARY INJUNCTION ORDER: This injunctive relief shall not apply to Defendants styleyourlifel, broshopping, niall_malik and jconejita19851. The injunctive relief previously granted in the TRO shall remain in place through the pendency of this lit igation, and issuing this Order is warranted under Federal Rule of Civil Procedure 65 and Section 34 of the Lanham Act. Accordingly, Defendants are hereby restrained and enjoined from engaging in any of the following acts or omissions pending the fin al hearing and determination of this action or until further order of the Court: as set forth herein. The 10,000.00 bond posted by Plaintiff shall remain with the Court until a final disposition of this case or until this Order is terminated. This Or der shall remain in effect during the pendency of this action, or until further order of the Court. Any Defendant that are subject to this Order may appear and move to dissolve or modify the Order on two (2) days' notice to Plaintiff or on shorter notice as set by the Court. SO ORDERED. (Signed by Judge Laura Taylor Swain on 11/13/2020) (ama) Modified on 11/16/2020 (ama).

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 3 of 18
42
11/15/20
1 16
Jason M. Drangel (JD 7204)
[e-mail]
Ashly E. Sands (AS 7715)
[e-mail]
Brieanne Scully (BS 3711)
[e-mail]
Danielle S. Yamali (DY 4228)
[e-mail]
EPSTEIN DRANGEL LLP
60 East 42nd Street, Suite 2520
New York, NY 10165
Telephone: [phone]
Facsimile:
[phone]
Brian Igel (BI 4574)
[e-mail]
BELLIZIO + IGEL PLLC
One Grand Central Place
305 Madison Avenue, 40th Floor
New York, New York 10165
Telephone: [phone]
Facsimile:
[phone]
Attorneys for Plaintiff
Off-White LLC
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
OFF-WHITE LLC,

20-cv-7892 (LTS)

Plaintiff
v.
ANOGAR-32,
ARYYUD0,
BCSE_PHONE_ACCESSORIES,
BINTANRAHARJ_0,
BORTOLO_DOMINGO,
BUDIAWASALI_0,
CHUANGSHOU-STORE,
DANYANG6 ,
DENGXIAOBIN1857,
DIMAPRAYOG_83,
EVITA.ESKELA,
FANGGE06302 ,
FUNTHINK,
GIFTSFROMPORTO ,
HASBER-13,
HENRYLUCKMORGAN, HUOJIN4, ILISO07,
ITAPAR_51,
JANECHE-87,
JASET-3745,
JCONEJITA19851,
KEANU._1,
KELAL-11,
LAUJOHN_16,
LIGHTYNIGHT,
LIZA.MARCHETTI,
MILLIE-665,
PRMARKETING9305, RUSAN7376, SG8450048-3,

PRELIMINARY
INJUNCTION ORDER

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 4 of 18
42
11/15/20
2 16
SPENCER1870, SUMAK-75, TOMMY95118, TY2324,
VACAH_96,
XELZ88436,
XINCHENGXIONGDI0727,
YAUNER88,
ZCLA63802
and
ZHANGYONG1991,
Defendants

Case 1:20-cv-07892-LTS Document 42 Filed 11/15/20 Page 3 of 16

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 6 of 18
42
11/15/20
4 16
Off-White
Registrations

U.S. Trademark Registration Nos.: 5,119,602 for “OFF
WHITE” for a variety of goods in Class 25 with a
constructive date of first use of January 25, 2012,
5,713,397 for “OFF-WHITE” for a variety of goods in
Class 25, 5,710,328 for “OFF-WHITE C/O VIRGIL
ABLOH” for a variety of goods in Class 9, 5,572,836 for
“OFF-WHITE C/O VIRGIL ABLOH” for a variety of
goods in Class 25, 5, 710,287 for “OFF-WHITE C/O
VIRGIL ABLOH” for a variety of goods in Class 14,
5,150,712 for

for a variety of goods in Class 18

and 25, 5, 710,288 for

for a variety of goods in

Class 14, 5,307,806 for

for a variety of goods in Class

18 and 25, 5,835,552 for

for a variety of goods in

Class 9, 5,387,983 for

for a variety of goods in

Class 25, 5,445,222 for

for a variety of goods in

Class 25, 5,800414 for

for a variety of goods in

Class 9 and 25, 5,681,805 for

for a variety of goods

in Class 9 and 5,663,133 for
goods in Class 25

for a variety of

Off-White Applications U.S. Trademark Serial Application Nos.: 88/080,002 for
, for a variety of goods in Class 25 and 88/041,456

Off-White Marks
Counterfeit Products

for
, for a variety of goods in Class 18 and Class
25
The marks covered by the Off-White Registrations and
the Off-White Applications
Products bearing or used in connection with the OffWhite Marks, and/or products in packaging and/or
containing labels bearing the Off-White Marks, and/or
bearing or used in connection with marks that are
ii

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 7 of 18
42
11/15/20
5 16

Infringing Listings
User Accounts

Merchant Storefronts

Defendants’ Assets
Defendants’ Financial
Accounts
Financial Institutions

Third Party Service
Providers

confusingly similar to the Off-White Marks and/or
products that are identical or confusingly similar to the
Off-White Products
Defendants’ listings for Counterfeit Products
Any and all websites and any and all accounts with online
marketplace platforms such as eBay, as well as any and
all as yet undiscovered accounts with additional online
marketplace platforms held by or associated with
Defendants, their respective officers, employees, agents,
servants and all persons in active concert or participation
with any of them
Any and all User Accounts through which Defendants,
their respective officers, employees, agents, servants and
all persons in active concert or participation with any of
them operate storefronts to manufacture, import, export,
advertise, market, promote, distribute, display, offer for
sale, sell and/or otherwise deal in Counterfeit Products,
which are held by or associated with Defendants, their
respective officers, employees, agents, servants and all
persons in active concert or participation with any of
them
Any and all money, securities or other property or assets
of Defendants (whether said assets are located in the U.S.
or abroad)
Any and all financial accounts associated with or utilized
by any Defendants or any Defendants’ User Accounts or
Merchant Storefront(s) (whether said account is located
in the U.S. or abroad)
Any banks, financial institutions, credit card companies
and payment processing agencies, such as PayPal Inc.
(“PayPal”), Payoneer Inc. (“Payoneer”), PingPong
Global Solutions, Inc. (“PingPong”) and other
companies or agencies that engage in the processing or
transfer of money and/or real or personal property of
Defendants
Online marketplace platforms, including, without
limitation, those owned and operated, directly or
indirectly by eBay, as well as any and all as yet
undiscovered online marketplace platforms and/or
entities through which Defendants, their respective
officers, employees, agents, servants and all persons in
active concert or participation with any of them
manufacture, import, export, advertise, market, promote,
distribute, offer for sale, sell and/or otherwise deal in
Counterfeit Products which are hereinafter identified as
a result of any order entered in this action, or otherwise

iii

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 8 of 18
42
11/15/20
6 16

WHERAS, Plaintiff having moved ex parte on September 24, 2020 against Defendants for
the following: 1) a temporary restraining order; 2) an order restraining Merchant Storefronts and
Defendants’ Assets with the Financial Institutions; 3) an order to show cause why a preliminary
injunction should not issue; 4) an order authorizing bifurcated and alternative service and 5) an
order authorizing expedited discovery;
WHEREAS, the Court entered an Order granting Plaintiff’s Application on September 29,
2020 (Docket Entry No. 20, the “TRO”), which ordered Defendants to appear on October 30, 2020
at 3:30 p.m. to show cause why a preliminary injunction should not issue (“Show Cause Hearing”);
WHEREAS, on October 14, 2020, pursuant to the alternative methods of service authorized
by the TRO, Plaintiff served the Summons, Complaint, TRO and all papers filed in support of the
Application on each and every Defendant;
WHEREAS, on October 27, 2020, the Court issued an Order extending the TRO pending
the resolution of Plaintiff’s motion for a preliminary injunction (Docket Entry No. 26, the “October
27, 2020 Order”);
WHEREAS, on the same day, October 27, 2020, pursuant to the alternative methods of
service authorized by the TRO, Plaintiff served the October 27, 2020 Order on each and every
Defendant;
WHEREAS, on October 30, 2020 at 3:30 p.m., Plaintiff appeared at the Show Cause
Hearing, however, no Defendants opposed the entrance of the injunctive relief.
ORDER
1. This injunctive relief shall not apply to Defendants styleyourlife1, broshopping,
niall_malik and jconejita19851.1
Defendants styleyourlife1, broshopping, niall_malik and jconejita19851 were voluntarily dismissed from the
action. (Dkts. 33, 37.)
1

1

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 9 of 18
42
11/15/20
7 16

2. The injunctive relief previously granted in the TRO shall remain in place through the
pendency of this litigation, and issuing this Order is warranted under Federal Rule of Civil
Procedure 65 and Section 34 of the Lanham Act. Based on the factual showings made by
Plaintiff, it appears that Defendants have been selling Counterfeit Products in violation of
the Lanham Act. Therefore, the Court finds that the requirements for the issuance of a
preliminary injunction are met: (1) there is a likelihood that Plaintiff will be successful on
the merits of its claims; (2) there is a likelihood of irreparable harm to Plaintiff if the
injunctive relief does not issue; (3) the balance of the equities favors Plaintiff, whose
business, goodwill, and reputation associated with the Off-White Marks are harmed by the
continued sale of Counterfeit Products, whereas there would appear to be little harm to
Defendants if the injunctive relief is granted, since Defendants are only ordered to do that
which they are required to do under the Lanham Act; and (4) the public interest would be
furthered by the granting of injunctive relief, as such would protect Plaintiff’s interest in
its trademarks and protect consumers from being deceived by the Counterfeit Products and
defrauded by Defendants.
a) Accordingly, Defendants are hereby restrained and enjoined from engaging in any of
the following acts or omissions pending the final hearing and determination of this
action or until further order of the Court:
i. manufacturing, importing, exporting, advertising, marketing, promoting,
distributing, displaying, offering for sale, selling and/or otherwise dealing in
Counterfeit Products or any other products bearing one or more of the OffWhite Marks and/or marks that are confusingly similar to, identical to and
constitute a counterfeiting and/or infringement of the Off-White Marks;

2

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 10of 16
Case 1:20-cv-07892-LTS Document 42 Filed 11/15/20 Page 8 of 18

ii. directly or indirectly infringing in any manner any of Plaintiff’s Off-White
Marks;
iii. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff’s
Off-White Marks to identify any goods or services not authorized by Plaintiff;
iv. using any of Plaintiff’s Off-White Marks or any other marks that are
confusingly similar to the Off-White Marks on or in connection with
Defendants’ manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying, offering for sale, selling and/or otherwise
dealing in Counterfeit Products;
v. using any false designation of origin or false description, or engaging in any
action which is likely to cause confusion, cause mistake and/or to deceive
members of the trade and/or the public as to the affiliation, connection or
association of any product manufactured, imported, exported, advertised,
marketed, promoted, distributed, displayed, offered for sale or sold by
Defendants with Plaintiff, and/or as to the origin, sponsorship or approval of
any product manufactured, imported, exported, advertised, marketed,
promoted, distributed, displayed, offered for sale or sold by Defendants and
Defendants’ commercial activities and Plaintiff;
vi. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with: (i) Counterfeit Products and/or (ii) any
computer files, data, business records, documents or any other records or
evidence relating to their User Accounts, Merchant Storefronts or Defendants’
Assets and the manufacture, importation, exportation, advertising, marketing,

3

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 11of 16
Case 1:20-cv-07892-LTS Document 42 Filed 11/15/20 Page 9 of 18

promotion, distribution, display, offering for sale and/or sale of Counterfeit
Products;
vii. effecting assignments or transfers, forming new entities or associations, or
creating and/or utilizing any other platform, User Account, Merchant Storefront
or any other means of importation, exportation, advertising, marketing,
promotion, distribution, display, offering for sale and/or sale of Counterfeit
Products for the purposes of circumventing or otherwise avoiding the
prohibitions set forth in this Order; and
viii. knowingly instructing, aiding or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs 2(a)(i) through
2(a)(vii) above and 2(b)(i) through 2(b)(ii) and 2(c)(i) below.
b) Accordingly, the Third Party Service Providers and Financial Institutions are hereby
restrained and enjoined from engaging in any of the following acts or omissions
pending the final hearing and determination of this action or until further order of the
Court:
i. secreting, concealing, transferring, disposing of, withdrawing, encumbering or
paying Defendants’ Assets from or to Defendants’ Financial Accounts until
further ordered by this Court;
ii. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with any computer files, data, business records,
documents or any other records or evidence relating to the Defendants’ User
Accounts, Merchant Storefronts, Defendants’ Assets and the manufacture,
importation, exportation, advertising, marketing, promotion, distribution,

4

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 12 of 18
42
11/15/20
10 16

display, offering for sale and/or sale of Counterfeit Products; and
iii. knowingly instructing, aiding, or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs 2(a)(i) through
2(a)(vii) and 2(b)(i) through 2(b)(ii) above.
c) Accordingly, the Third Party Service Providers are hereby restrained and enjoined from
engaging in any of the following acts or omissions pending the final hearing and
determination of this action or until further order of the Court:
i. providing services to Defendants, Defendants’ User Accounts and Defendants’
Merchant Storefronts, including, without limitation, continued operation of
Defendants’ User Accounts and Merchant Storefronts insofar as they are
connected to the Counterfeit Products;
ii. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with any computer files, data, business records,
documents or any other records or evidence relating to the Defendants’ User
Accounts, Merchant Storefronts, Defendants’ Assets and the manufacture,
importation, exportation, advertising, marketing, promotion, distribution,
display, offering for sale and/or sale of Counterfeit Products; and
iii. knowingly instructing, aiding, or abetting any other person or business entity in
engaging in any of the activities referred to in subparagraphs 2(a)(i) through
2(a)(vii), 2(b)(i) through 2(b)(ii) and 2(c)(i) through 2(c)(ii) above.
3. As sufficient cause has been shown, the asset restraint granted in the TRO shall remain in
place through the pendency of this litigation, including that:
a) within seven (7) days of receipt of notice of this Order, any newly discovered Financial

5

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 13 of 18
42
11/15/20
11 16

Institutions who are served with this Order shall locate and attach Defendants’
Financial Accounts, shall provide written confirmation of such attachment to Plaintiff’s
counsel and provide Plaintiff’s counsel with a summary report containing account
details for any and all such accounts, which shall include, at a minimum, identifying
information for Defendants and Defendants’ User Accounts, contact information for
Defendants (including mailing addresses and e-mail addresses), account numbers and
account balances for any and all of Defendants’ Financial Accounts.
4. As sufficient cause has been shown, the expedited discovery previously granted in the TRO
shall remain in place through the pendency of this litigation, including that:
a) Plaintiff may serve interrogatories pursuant to Rules 26 and 33 of the Federal Rules of
Civil Procedure as well as Local Civil Rule 33.3 of the Local Rules for the Southern
and Eastern Districts of New York and Defendants who are served with this Order shall
provide written responses under oath to such interrogatories within fourteen (14) days
of service to Plaintiff’s counsel.
b) Plaintiff may serve requests for the production of documents pursuant to Rules 26 and
34 of the Federal Rules of Civil Procedure and Defendants who are served with this
Order shall produce all documents responsive to such requests that are in their control,
including such documents as are in the custody of their respective officers, employees,
agents, servants and attorneys and all persons in active concert or participation with
any of them, within fourteen (14) days of service to Plaintiff’s counsel.
c) Within fourteen (14) days after receiving notice of this Order, all Financial Institutions
who receive service of this Order shall provide Plaintiff’s counsel with all documents
and records in their possession, custody or control (whether located in the U.S. or

6

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 14 of 18
42
11/15/20
12 16

abroad), relating to any and all of Defendants’ Financial Accounts, User Accounts and
Merchant Storefronts, including, but not limited to, documents and records relating to:
i.

account numbers;

ii.

current account balances;

iii.

any and all identifying information for Defendants and Defendants' User Accounts,
including names, addresses and contact information;

iv.

any and all account opening documents and records, including, but not limited to,
account applications, signature cards, identification documents, and if a business
entity, any and all business documents provided for the opening of each and every
of Defendants’ Financial Accounts;

v.

any and all deposits and withdrawal during the previous year from each and every
of Defendants’ Financial Accounts and any and all supporting documentation,
including, but not limited to, deposit slips, withdrawal slips, cancelled checks and
account statements;

vi.

any and all wire transfers into each and every of Defendants’ Financial Accounts
during the previous year, including, but not limited to, documents sufficient to show
the identity of the destination of the transferred funds, the identity of the
beneficiary’s bank and the beneficiary’s account number;

vii.

any and all User Accounts and account details, including, without limitation,
identifying information and account numbers for any and all User Accounts that
Defendants have ever had and/or currently maintain;

viii.

the identities, location and contact information, including any and all e-mail
addresses, of Defendants, their respective officers, employees, agents, servants and

7

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 15 of 18
42
11/15/20
13 16

all persons in active concert or participation with any of them;
ix.

the nature of Defendants’ businesses and operations, methods of payment, methods
for accepting payment and any and all financial information, including, but not
limited to, information associated with Defendants’ User Accounts, a full
accounting of Defendants’ sales history and listing history under such accounts,
and Defendants’ Financial Accounts associated with Defendants’ User Accounts;
and

x.

Defendants’ manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying, offering for sale and/or selling of Counterfeit
Products, or any other products bearing the Off-White Marks and/or marks that are
confusingly similar to, identical to and constitute a counterfeiting and/or
infringement of the Off-White Marks.

d) Within fourteen (14) days of receipt of service of this Order, the Third Party Service Providers
shall provide to Plaintiff’s counsel all documents and records in its possession, custody or
control (whether located in the U.S. or abroad) relating to Defendants’ User Accounts and
Defendants’ Merchant Storefronts, including, but not limited to, documents and records
relating to:
i.

any and all User Accounts and Defendants’ Merchant Storefronts and account
details, including, without limitation, identifying information and account numbers
for any and all User Accounts and Defendants’ Merchant Storefronts that
Defendants have ever had and/or currently maintain with the Third Party Service
Providers;

8

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 16 of 18
42
11/15/20
14 16

ii.

the identities, location and contact information, including any and all e-mail
addresses of Defendants;

iii.

the nature of Defendants’ businesses and operations, methods of payment, methods
for accepting payment and any and all financial information, including, but not
limited to, information associated with Defendants’ User Accounts and
Defendants’ Merchant Storefronts, a full accounting of Defendants’ sales history
and listing history under such accounts and Defendants’ Financial Accounts with
any and all Financial Institutions associated with Defendants’ User Accounts and
Defendants’ Merchant Storefronts; and

iv.

Defendants’ manufacturing, importing, exporting, advertising, marketing,
promoting, distributing, displaying, offering for sale and/or selling of Counterfeit
Products, or any other products bearing one or more of the Off-White Marks and/or
marks that are confusingly similar to, identical to and constitute an infringement of
the Off-White Marks.

5. As sufficient cause has been shown, and pursuant to FRCP 4(f)(3), service may be made
on, and shall be deemed effective as to Defendants if it is completed by one of the following
means:
a) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website (including
NutStore, a large mail link created through Rmail.com or via website publication
through

a

specific

page

dedicated

to

this

Lawsuit

accessible

through

ipcounselorslawsuit.com) where each Defendant will be able to download a PDF copy
of this Order, to Defendants’ e-mail addresses to be determined after having been
identified by eBay pursuant to Paragraph V(C) of the TRO.

9

Case 1:20-cv-07892-LTS Document 38 Filed 11/06/20 Page 17 of 18
42
11/15/20
15 16

6. As sufficient cause has been shown, that such alternative service by electronic means
ordered in the TRO and herein shall be deemed effective as to Defendants, Third Party
Service Providers and Financial Institutions through the pendency of this action.
7. As sufficient cause has been shown, service of this Order shall be made on and deemed
effective as to the Third Party Service Providers and Financial Institutions if it is completed
by the following means:
a) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
PayPal will be able to download a PDF copy of this Order via electronic mail to EE
Omaha Legal Specialist at [e-mail];
b) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
where eBay, via eBay’s Registered Agent, will be able to download a PDF copy of
this Order via electronic mail at [e-mail], to Bryce Baker at
[e-mail] and to Joanna Lahtinen at [e-mail];
c) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
Payoneer Inc. will be able to download a PDF copy of this Order via electronic mail
to

Payoneer

Inc.’s

Customer

Service

Management

at

[e-mail] and Edward Tulin, counsel for Payoneer
Inc., at [e-mail]; and
d) delivery of: (i) a PDF copy of this Order, or (ii) a link to a secure website where
PingPong Global Solutions Inc. will be able to download a PDF copy of this Order
via electronic mail to Zeng Ni of PingPong Global Solutions Inc.’s Legal
Department at [e-mail] and [e-mail].

10

Case 1:20-cv-07892-LTS Document 42 Filed 11/15/20 Page 16 of 16