Philip Morris v. Jiang

8/3/2019 Philip Morris v. Jiang

1/12

IN THE UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF FLORIDACase No. 1:1 1-cv-24049-KM M

PHILIP M ORRIS USA INC,Plaintiff,

VS.ZHILIN JIANG, et al.,

Defendants. /

THIS CAUSE came before the Court upon Plaintiffs Ex Parte Application for Entry ofTemporary Restraining Order, Preliminary Injunction, and Order Restraining Transfer of AssetsTied to the Counterfeiting Operation (tplaintifrs Application for Preliminary Injunction'') (ECFNo. 7). n e Court convened the hearing on December 12, 201 1, at which only counsel forPlaintiff was present and available to present evidence supporting the Application forPreliminary Injtmction. Defendants have not responded to Plaintifps Application for PreliminaryInjtmction, nor made any tiling in this case, nor have Defendants appeared in this matter eitherindividually or through cotmsel. UPON CONSIDERATION of the M otion, the pertinent portionsof the Record, and being otherwise fully advised in the premises, the Court enters the followingOrder.

1. BACKGROUNDPlaintiff Philip M orris USA is the registered owner of numerous trademarks used in

connection with the manufacture and distribution of cigarettes. Among these trademarks are

1 The facts herein are taken from Plaintiffs Complaint (ECF No. 1) and Plaintiff s Applicationfor Preliminary Injunction (ECF No. 7).

Case 1:11-cv-24049-KMM Document 29 Entered on FLSD Docket 12/12/2011 Page 1 of 12


2/12

trademarks associated with United States Patent and Trademark Offke (GIUSPTO'') No. 68,502,registered on April 14, 1908, and USPTO No. 938,510, registered on July 25, l 972 (collectively,ttphilip Morris USA Marks'). Defendants are unknown individuals, residing in the People'sRepublic of China CTRC''), who are believed to use, or assist others in using, the aliases tinW enqlllm,'' tti Xiaodonp'' ixiao Zhanp'' tAsdf Asd '' tW sdfaasd Dfsh '' EW sdfaasd Dsh ''5 'ttAsdfaasd Ja,'' and tlW ang Guobing.''

Recently Plaintiff becnme aware of the potential sale of colmterfeit versions of Plaintiffsproducts by Defendants. This is alleged to have been accomplished by Defendants through the

operation com mercial Internet websites operating under domain names such as2marlborocigarette.biz, marlboro-gold.biz, and marlborowholesale.com. ln response to

Defendants' alleged trademark infringement, Plaintiff retained Investigative Consultants, alicensed private investigative firm, to investigate the sale of cotmterfeit versions of Plaintiff sproducts by Defendants.

From September 201 1 through October 20l 1, Brandon Tanori, an employee ofInvestigative Consultants, ptzrchased a number of cigarettes bearing the Philip M orris USAM arks at issue via the various lnternet websites operated by Defendants. See Decl. of BrandonTanori (ECF No. 7-12), at !! 4-16.Tanori was able to purchase these cigarettes using eitherWestern Union (with a Money Transfer Control Nllmber provided by Defendants), or Paypal. Ld.,zUpon his receipt of the purchased goods, M r. Tanori forwarded the products to Philip M orrisUSA 'S representative, Sissy S.Sawyer, for physical inspection. 1d. M s. Sawyer personallyexamined each carton- and at least one pack of cigarettes from each carton- and determinedthat the cartons and packs of what appeared to be M arlboro cigarettes were in fact cotmterfeit.

2 Th m lete list of websites includes nearly sixty domain nnm es. For a com plete list, seeco pSchedule A of this Order.



3/12

See Decl. of Sissy S. Sawyer (ECF No. 7-2), at !! 16-1 7. Additionally, Ms. Sawyer reviewedand visually inspected the Intemet websites operating lmder each of the Subject Domain Names,as well as pictures of items bearing the Philip M orris USA M arks offered for sale on the lntemetwebsites, and determined that the products were not genuine and/or authorized Philip M onisUSA products. Ld..a

On September 9, 201 1, Plaintiff filed its Complaint (ECF No. 1) against Defendants fortrademark cotmterfeiting and infringement, false designation of origin, and cybersquatting. OnSeptember 9, 201 1, Plaintiff also filed its Ex Parte Application for Entry of Temporary

Restraining Order, Preliminary lnjunction and Order Restraining Transfer of Assets Tied to theCounterfeiting Operation (ECF No. 7.) On November 16, 201 1, this Court g'ranted in partPlaintiff s Motion for a Temporary Restraining Order. The Order enjoined Defendants from,among other actions, continuing to manufacture, promote, and/or sell any product bearing theallegedly infringed trademark of Plaintiff Philip M orris. On Novem ber 18, 201 1, Plaintiff filedits M otion to Add Domain Name to Plaintiff s Ex Parte Application, requesting the Court add thedomain name newport-cigarettes.net to the Court's November 16, 201 1 Temporary RestrainingOrder (ECF No. 16).

On November 21, 201 1, at 10:30am, this Court conducted a hearing regarding Plaintiff sMotion for a Preliminary lnjtmction. At the hearing, this Court determined (1) the initialTemporary Restraining Order (''TR0'') should be extended and the preliminary injunctionhearing be continued to a later date to allow for additional tim e for the Defendants to receivenotice of this action via all m eans provided in the initial Order Granting Plaintiffs Applicationfor a Temporary Restraining Order, and (2) for the same remsons set forth in this Court's Order



4/12

Granting Plaintiffs M otion for a Temporary Restraining Order, tGschedule A'' of that Ordershould be amended to retlect the addition of the subject domain Gnewport-cigarettes.net.''0n December 5, 201 1, Plaintiff filed its Ex Parte Application for Entry of an Order AuthorizingAlternate Service of Processon Defendant (ECF No.21). On December 6, 201 1, the Courtissued an Order Granting Ex Parte Relief for Alternative Service (ECF No. 22), authorizingPlaintiff to serve the Summons, Complaint, all other current and future filings in this matter,upon Defendants via e-mail, and via publication bySummons on the Internet website

posting a copy of the Complaint andappearing at the URI,

hlp://seainrotice.coe jirFindex.html. Ptlrsuant to the Court's Orders, Plaintiff properlyserved each Defendant with a copy of the Ex Parte Application for Entry of TemporaryRestraining Order, Preliminary Injtmction and Order Restraining Transfer of Assets Tied to theCounterfeiting Operation and supporting papers, the Court's Orders, the Summons andComplaint, and a11 filings in this matter via e-mail and publication. Thereafter, proofs of servicewere filed confirming service on each Defendant (ECF Nos. 13-15, 19-20, 23-2 6).II. LEGAL STANDARD

Plaintiff has filed claims ptlrsuant to 15 U.S.C. jj 1 1 14(1)(a), 1 125(a), and 1 125(d). Title15 U.S.C. section 1 1 16(a) provides the Court shall have power to grant injtmctions, accordingto the principles of equity and upon such terms as the court may deem reasonable, to prevent theviolation of any right of the registrant of a mark registered in the Patent and Tradem ark Office or

to prevent a violation tmder subsection (a), (c), or (d) of section 1 125 of this title.'' 15 U.S.C. j1 1 16. Injunctive relief is also available under section 1 1 16(a) for a violation of section1114(1)(a). See 15 U.S.C. j 1 1 16(d)(1)(A).

4



5/12

In order to obtain a preliminary injunction, Plaintiff must demonstrate 1(l) a substnntiallikelihood of success on the merits; (2) a substantial threat of irreparable injury if the injunctionwere not granted; (3) that the threatened injury to the plaintiffs outweighs the harm an injunctionnaay cause the defendant;and (4) that granting the injunction would not disserve the publicinterest.'' Levi Strauss & Co. v. Sunrise lnt'l. Trading lnc., 51 F. 3d 982, 985 (1 1th Cir. 1995).111. ANALYSIS

The declarations Plaintiff submitted in support of its Application for a prelim inaryinjunction support the following conclusions of law:

Plaintiff hms a very strong probability of proving at trial that conslzmers are likely to beconfused by Defendants' advertisement, promotion, sale, offer for sale, and/ordistribution of cigarettes bearing counterfeits, reproductions, and/or colorable imitationsof the Philip M onis USA M arks, and that the cigarettes Defendants are selling are copiesof Plaintiff s cigarettes that bear copies of the Philip M orris USA M arks.

2. Because of the infringement of the Philip M orris USA M arks, Plaintiff is likely to sufferimmediate and irreparable injury if a preliminary injunction is not granted.

a. Through the operation of nearly sixty commercial Internet websites Defendantsare operating Internet businesses which advertise, promote, offer for sale, and sell,cigarettes bearing cotmterfeit and infringing trademarks in violation of Plaintiff srights;

b. There is good cause to believe that more cotmterfeit and infringing cigarettesbearing Plaintiffs tradem arks will appear in the marketplace; that consumers maybe m isled, confused, and disappointed by the quality of these cigarettes; and thatPlaintiff may suffer loss of sales for its genuine cigarettes;



6/12


7/12

IV. CONCLUSIONFor the foregoing reasons, it is ORDERED AND ADJUDGED that Plaintiffs

Application for Preliminary lnjunction (ECF No. 7) is GRANTED. lt is furtherORDERED AND ADJUDGED that

1. Each Defendant, their officers, directors, employees, agents, subsidiaries, distributors,and all persons in active concert or participation with them having notice of this Orderare hereby restrained and enjoined, pending termination of this action'a. From m anufacturing, importing, advertising, prom oting, offering to sell, selling,

distributing, or transferring any products bearing the Philip M orris U SA M arks, orany confusingly similar tradem arks, other than those actually manufactured ordistributed by Plaintiff; and

b. From secreting, concealing, destroying, selling off, transferring, or otherwisedisposing of: (i) any products, not manufactured or distributed by Plaintiftlbearing the Philip M orris USA M arks, or any confusingly similar trademarks; or(ii) any evidence relating to the manufacture, importation, sale, offer for sale,distribution, or t'ransfer of any products bearing the Philip M onis USA M arks, orany confusingly sim ilar trademarks.

2. Each Defendant, their oftkers, directors, employees, agents, subsidiaries, distributors,and all persons in active concert or participation with them having notice of this Order

shall, until the conclusion of this action, discontinue the use of the Philip M orris USAM arks or any confusingly similar tradem arks, on or in connection with a1l lntemet



8/12

websites owned and operated, or controlled by them including the Internet websites3operating under the Subject Domain Nnmes;

3. Each Defendant, their oftkers, directors, employees, agents, subsidialies, distributors,and a1l persons in active concert or participation with them having notice of this Ordershall, until the conclusion of this action, discontinue the use of the Philip M onis USAM arks, or any confusingly similar trademarks within domain nnme extensions,metatags or other markers within website source code, gonn use on any webpage(including as the title of any web page), any advertising links to other websites, fromsearch engines' databases or cache m emory, and any other form of use of such termswhich is visible to a computer user or serves to direct computer searches to websitesregistered by, owned, or operated by each Defendant, including the lnternet websitesoperating tmder the Subject Domain Names;

4. Each Defendant shall not transfer ownership of the Subject Domain Nnmes during thependency of this Action, or until further Order of the Court;The domain name Registrars for the Subject Domain Names are directed, to the extentit is not already done, to transfer to Plaintiffs colmsel, for deposit with this Court,domain name certificates for the Subject Domain Nnmes;

6. The Registrars and the top-level domain (TLD) Registries for the SubjectDomain Names, upon receipt of this Preliminary Injunction shall, to the extent it is notalready done, cause to be changed or change the registrar of record for the SubjectDomain Names, excepting any such domain names which such Registries have beennotified in m iting by Plaintiff have been or will be dism issed from this action, to a

3 See Schedule A of this Order8



9/12

holding account with the United States based Registrar, GoDaddy.com, Inc.GoDaddy.com, Inc. shall hold and/or continue to hold the registrations for the SubjectDomain Names in trust for the Court during the pendency of this action. Additionally,GoDaddy.com , lnc., upon receipt of this Order, shall, to the extent not already done,immediately update and/or not modify theDomain Nnme System (tDNS'') data itmaintains for the Subject Domain Names, which links the domain names to the IPaddresses where their % sociated websites are hosted,from N SI.M EDIATEMPLE.NETand NSZ.M EDIATEM PLE.NET, which will cause and/or causes the domain names toresolve to the w ebsite where a copy of the Complaint, Sum monses, Orders, and otherdomlments on file in this action are displayed. Altem atively,GoD addy.com , Inc. may,to the extent not already done, instimte and/or maintain a domain name forwardingwhich will automaticallyfollowing Uniform

Subject Domain Nnmes to theLocator (URT,''),

hlp://seaingnotice.coe jir#index.html, whereon a copy of the Complaint,Summonses, Orders, and other docum ents on file in this action are displayed. TheSubject Domain Names shall be placed and/or maintained on Lock stams, preventing

redirect any visitor to theResource

the moditkation or deletion of the domains by the registrar or Defendants;7. Plaintiff may continue to enter the Subject Domain Names into Google's Webmaster

Tools and cancel any redirection of the domains that have been entered there byDefendants which redirect traf;c to the counterfeit operations to a new domain nnmeand thereby evade the provisions of this Order;

8. Each Defendant shall continue to preserve copies of all their computer files relating tothe use of any of the Subject Domain Names and shall continue to take a1l steps

9



10/12

necessary toSubject Domain Nnmes and that may have been deleted before the entry of this Order;

retrieve and preserve computer files relating to the use of any of the

9. Upon receipt of notice of this Order, W estem Union Financial Senices, Inc. CtWesternUnion''l shall divert and/or continue diverting a11 money transfers sent by United Statesconsllmers to: (1) Zhilin Jiang in Putian, China, with the date of birth and identiticationnumber provided by the recipient of MTCN 455-906-9491; (2) Haidong Huang inPutian, China, with the date of birth and identification mlmber provided by therecipient of MTCN 853-673-9729; and (3) Haidong Huang in Putian, China, withthe date of birth and identification num ber provided by the recipient of M TCN9464580813, and continue to hold such transfers until it receives further direction from

4he Court;10. '1n the event any money transfers are diverted in accordance with Paragraph 9 of this

Order, W estern Union shall be perm itted to inform consllm ers who m ay contactW estern Union about the transfers that the transfers are being held pursuant to a CourtOrder in Philip Morris USA lnc. v. Jiang, entered by the United States District Courtfor the Southern District of Florida and that they may contact Plaintiffs counsel foradditional information;

1 1. W estern Union shall also, to the extent not already done, witllin five business days ofreceiving this Order, provide to Plaintiff s cotmsel records of all money transfers that

have been paid to: (1) Zhilin Jiang in Putian, China, with the date of birth andidentification nlzmber provided by the recipient of MTCN 455-906-9491; (2) HaidongHuang in Putian, China, with the date of birth and identification num ber provided by

4 w estern Union is licensed to do business in the State of Florida by the Florida Oftke ofFinancial Regulation and is therefore subject to personal jurisdiction in this Court10



11/12

the recipient of MTCN 853-673-9729; and (3) Haidong Huang in Putian, China, withthe date of birth and identification number provided by the recipient of MTCN94645808 13, as well as records of money transfers that have been diverted inaccordance with Paragraph 9 of this Order. For any transfers that have been diverted inaccordance with this Order, Plaintiff s counsel will respond to any consumer inquiriesand will provide notice of the Order and the disposition of the transfers to any affectedconsum er;

12. Plaintiff shall m aintain its bond in the nmotmt of One Hundred Thousand Dollars and

Zero Cents ($100,000.00), as payment of damages to which Defendants may be entitledfor a wrongful injunction or restraint, during the pendency of this action, or until furtherOrder of the Court;

13. This Preliminary lnjunction shall remain in effect dudng the pendency of this action, ortmtil such further date as set by the Court or stipulated to by the parties.

DONE AND ORDERED in chambers in Miami, Florida, thi/- ay of December, 2011./K. M ICHAEL M OOREUNITED STATES DISTRICT JUDGE

cc: A11 Counsel of Record



12/12

SCHEDULE GA''SUBJECT DOM M N NAM EScheapcigarettes-online.netcheapmarlborocigarettes.orgcheappricecigarettes.comcigarettesnewport.comcigarettes-online.orgcigarettesonline.usdiscountcnmelcigarettes.comdiscountscigarette.comkoolcigarettes.usmarlborocigarette.bizmarlborocigarettes.bizmarlboro-cigarettes.usm arlborocigarettescoupons.commarlborocigarettesus.commarlborogold.bizmarlboro-gold.bizmarlboro-gold.netmarlboro-gold.orgmarlborogold.usmarlborogoldcigarettes.commarlborolights.bizmarlboro-lights.bizm arlboro-lights.netm arlborolights.usm arlboro-lights.usmarlborored.orgmarlbororedcigarettes.bizmarlbororedcigarettes.commarlbororedcigarettes.netmarlbororedcigarettes.org

marlbororedcigarettes.usmarlborosale.commarlboroskyline.bizmarlborowholesale.comnewportloos.biznewportloos.comnewportloos.usnewportboxloos.biznewportboxloos.comnewportboxloos.netnewportboxloos.orgnewportboxloos.usnewportcigarette.netnewportcigaretteswebsite.biznewportcigaretteswebsite.orgnewportcigaretteswebsite.usnewportcigaretteswholesale.biznewportcigaretteswholesale.comnewportcigaretteswholesale.usnewportmentholbox.biznewportm entholbox.comnewportm entholbox.netnewportm entholbox.usnewportm entholcigarettes.comnewportregular.comnewportscigarettes.netnewportshort.comuppennarlborocigarettes.comnewport-cigarettes.net


Philip Morris v. Jiang

Documents

Transcript of Philip Morris v. Jiang