Off-White LLC v. Abbyfashion Store et al

Filing 32

PRELIMINARY INJUNCTION: 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 . 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: as further set forth herein. Acco rdingly, 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. 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: as further set forth herein. Defendants are hereby given notice that they may be deemed to have a ctual notice of the terms of this Order and any act by them or anyone of them in violation of this Order may be considered and prosecuted as in contempt of this Court. The $5,000.00 bond posted by Plaintiff shall remain with the Court until a fi nal disposition of this case or until this Order is terminated. This Order shall remain in effect during the pendency of this action, or until further order of the Court. Any Defendants 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 Analisa Torres on 4/1/2021 at 2:00pm.) (kv) Transmission to Finance Unit (Cashiers) for processing. Modified on 4/1/2021 (kv).

LTD., GUANGZHOU U-MEKING TRADING CO.,
LTD., GUANGZHOU WEIJIE RIBBON CO., LTD.,
GUANGZHOU XIN HO YI CRAFTS LIMITED,
HAINING LONGNA TEXTILE CO., LTD.,
HANGZHOU LIN'AN ORIGIN TRADING CO.,
LTD., HUI52028 STORE, LOVE HEALTH LOVE
YOURSELF, NANJING RARLON PET PRODUCTS
CO., LTD., OLIVIA'S ACCESSORIES , SHENZHEN
CHUANGXINGMING TECHNOLOGY LIMITED,
SHENZHEN DEFAN TECHNOLOGY CO., LTD.,
SHENZHEN
DINGTU
ELECTRONIC
TECHNOLOGY CO., LTD., SHENZHEN MANHUI
TECHNOLOGY CO., LTD., SHENZHEN SHANEN
ELECTRONIC
COMMERCE
CO.,
LTD.,
SHENZHEN SHENGYUAN TECHNOLOGY CO.,
LTD., SHENZHEN SHENGZERONGXIN TRADING
CO., LTD., SHENZHEN SPEED TREND
TECHNOLOGY CO., LTD., SHENZHEN YINO
INFORMATION TECHNOLOGY CO., LTD.,
SHOP5056237 STORE, SHOP5066383 STORE,
SHOP5134031 STORE, SHOP5361044 STORE,
SHOP5781767 STORE, SHOP5795644 STORE,
SHOP5831326 STORE, SHOP5870398 STORE,
SHOP910331278 STORE, SHOP910605011 STORE,
SHOP910926020 STORE, SHOP911100018 STORE,
SHOP911115068 STORE, SHOP911167001 STORE,
SHOP911188155 STORE, SHOP911192222 STORE,
SHOP911195003 STORE, SHOP911234034 STORE,
SHOP911258359 STORE, SHOP911259388 STORE,
SHOP911264193 STORE, SHOP911267085 STORE,
SHOP911300207 STORE, SHOP911342022 STORE,
SHOP911375214 STORE, SHOP911422093 STORE,
SHOP911425145 STORE, TAOTAOKU STORE,
TOLLER BAG STORE, WOZIK STORE, XT02
STORE, YANG R STORE, YIWU CUDA IMPORT
AND EXPORT CO., LTD., YIWU MAY STAR
INTERNATIONAL TRADING CO., LTD., YIWU
MIANYU E-COMMERCE FIRM, YIWU WU TAI
BELT CO., LTD., YIWU YINGYU IMPORT &
EXPORT CO., LTD., YUNFOOK OFFICIAL,
YUYAO NICO ELECTRONICS FACTORY AND
ZHENGZHOU YMEI PET PRODUCTS CO., LTD.,
Defendants

Alibaba

AliExpress

Epstein Drangel
New York Address
Complaint
Application

Abloh Dec.
Drangel Dec.
Off-White Products

Off-White
Registrations

Electronics Factory and Zhengzhou Ymei Pet Products
Co., Ltd.
Alibaba.com, an online marketplace platform that
allows manufacturers, wholesalers and other thirdparty merchants, like Defendants, to advertise, offer for
sale, sell, distribute and ship their wholesale and retail
products originating from China directly to consumers
across the world and specifically to consumers residing
in the U.S., including New York
Aliexpress.com, an online marketplace platform that
allows manufacturers, wholesalers and other thirdparty merchants, like Defendants, to advertise, offer for
sale, sell, distribute and ship their wholesale and retail
products originating from China directly to consumers
across the world and specifically to consumers residing
in the U.S., including New York
Epstein Drangel LLP, counsel for Plaintiff
244 Madison Ave, Suite 411, New York, New York
10016
Plaintiff’s Complaint filed on March 2, 2021
Plaintiff’s Ex Parte Application for: 1) a temporary
restraining order; 2) an order restraining Merchant
Storefronts (as defined infra) and Defendants’ Assets
(as defined infra) with the Financial Institutions (as
defined infra); 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 filed on March
2, 2021
Declaration of Virgil Abloh in Support of Plaintiff’s
Application
Declaration of Jason M. Drangel in Support of
Plaintiff’s Application
A young, successful luxury fashion label founded by
American creative designer Virgil Abloh, specializing
in men's and women's lifestyle and high-end streetwear,
as well as shoes, accessories, jewelry, homeware and
other ready-made goods
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
ii

for a variety of goods in Class 18

and 25; 5,710,288 for

Class 14; 5,307,806 for

for a variety of goods in

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; 6,054,044 for
for a
variety of goods in Class 25; and 5,663,133 for

Off-White Application

Off-White Marks
Counterfeit Products

Infringing Listings
User Accounts

Merchant Storefronts

for a variety of goods in Class 25
U.S. Trademark Serial Application No. 88/041,456 for

, for a variety of goods in Class 18 and Class 25
The Marks covered by the Off-White Registrations and
Off-White Application
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
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 Alibaba and/or
AliExpress, 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,
iii

Defendants’ Assets

Defendants’ Financial
Accounts

Financial Institutions

Third Party Service
Providers

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”), the Alibaba
Group d/b/a Alibaba.com payment services (e.g.,
Alipay.com Co., Ltd., Ant Financial Services Group),
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 Alibaba and/or AliExpress, 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

iv

WHEREAS, Plaintiff having moved ex parte on March 2, 2021 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 March 2, 2021
(“TRO”) which ordered Defendants to appear on March 9, 2021 at 3:00 p.m. to show cause why a
preliminary injunction should not issue (“Show Cause Hearing”);
WHEREAS, on March 5, 2021, Plaintiff filed a request for modification and extension of
the TRO;
WHEREAS, the Court granted Plaintiff’s request and entered an Order on March 5, 2021
(“March 5, 2021 Order”) extending the TRO until March 23, 2021 and rescheduling the Show
Cause Hearing to March 23, 2021 at 3:00 p.m.;
WHEREAS, the Court entered an Order on March 19, 2021 extending the TRO until April
1, 2021 and rescheduling the Show Cause Hearing to April 1, 2021 at 1:00 p.m.;
WHEREAS, on March 15, 2021, pursuant to the alternative methods of service authorized
by the TRO, Plaintiff served the Summons, Complaint, TRO, all papers filed in support of the
Application and the March 5, 2021 Order on each and every Defendant;
WHEREAS, on April 1, 2021 at 1:00 p.m.., Plaintiff appeared at the Show Cause Hearing,
however, no Defendants appeared.
ORDER
1. 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

1

Procedure 65 and Section 34 of the Lanham Act.
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;
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

2

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,
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 1(a)(i) through
1(a)(vii) above and 1(b)(i) through 1(b)(ii) and 1(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

3

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,
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 1(a)(i) through
1(a)(vii) and 1(b)(i) through 1(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;
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,

4

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 1(a)(i) through
1(a)(vii), 1(b)(i) through 1(b)(ii) and 1(c)(i) through 1(c)(ii) above.
2. 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
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.
3. 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

5

34 of the Federal Rules of Civil Procedure and Defendants who are served with this
Order, their respective officers, employees, agents, servants and attorneys and all
persons in active concert or participation with any of them who receive actual notice of
this Order shall produce all documents responsive to such requests 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
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

6

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
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

7

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;

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.

4. 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

8

means:
a)

delivery of: (i) PDF copy of this Order, or (ii) a link to a secure website (including
NutStore, a large mail link created through Rmail.com and 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 Alibaba and/or AliExpress pursuant to Paragraph V(C) of the TRO; or
b)

delivery of a message to Defendants through the system for communications
established by the Third Party Service Providers on their respective platforms,
providing a link to a secure website (such as NutStore or a large mail link created
through Rmail.com) where each Defendant will be able to download a PDF copy of
this Order.

5. 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 through the
pendency of this action.
6. Defendants are hereby given notice that they may be deemed to have actual notice of the
terms of this Order and any act by them or anyone of them in violation of this Order may
be considered and prosecuted as in contempt of this Court.
7. The $5,000.00 bond posted by Plaintiff shall remain with the Court until a final disposition
of this case or until this Order is terminated.
8. This Order shall remain in effect during the pendency of this action, or until further order
of the Court.

9

9. Any Defendants 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.
Dated: April 1, 2021, at 2:00 p.m.
New York, New York

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