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Balenciaga America, Inc. v. Dollinger

October 8, 2010

BALENCIAGA AMERICA, INC. ET AL., PLAINTIFFS,
v.
SEAN DOLLINGER ET AL., DEFENDANTS.



MEMORANDUM OPINION AND ORDER

Plaintiffs Balenciaga America, Inc., Balenciaga S.A. (together with Balenciaga America, Inc., "Balenciaga"), Bottega Veneta, Inc. ("Bottega Veneta"), Gucci America, Inc. ("Gucci"), and Yves Saint Laurent America, Inc. ("YSL" and, collectively, "Plaintiffs") bring this action against Sean Dollinger ("Dollinger") and Tamara Simon*fn1 ("Simon," and together with Dollinger, the "Individual Defendants"), as well as Koodley.com, Inc. ("Koodley"), SpeedSmart Holdings, Ltd., d/b/a MyPurseWorld.com, and Fashion Store, d/b/a MyPurseWorld.net, PhoenixLuxury.net, Phoenix-Luxury.net, Phoenix-Luxury.com (collectively, "Defendants"), asserting claims for trademark infringement, trademark counterfeiting, false designation of origin, and trademark dilution pursuant to the Lanham Act, 15 U.S.C. § 1051, et seq., and claims for trademark infringement, trademark dilution, unfair competition, and deceptive acts and practices pursuant to New York state law.

On April 6, 2010, the Court issued a temporary restraining order ("TRO") and order to show cause ("OSC") directing Defendants to appear on April 20, 2010, in connection with Plaintiffs' motion for a preliminary injunction. No Defendants appeared at the April 20, 2010, hearing and the Court adjourned the matter to May 4, 2010. No Defendants appeared at the May 4, 2010, hearing and the Court heard argument on Plaintiffs' motion. On May 7, 2010, Todd Wengrovsky, Esq., filed a notice of appearance on behalf of the Individual Defendants but did not indicate any position on the application for a TRO or preliminary injunction, and made no response to the OSC. On May 17, 2010, satisfied that Plaintiffs had demonstrated their entitlement to the preliminary injunction sought and having still received no submission from Defendants, the Court granted Plaintiffs' motion. (See docket entry no. 15.) On May 19, 2010, the Individual Defendants filed three motions seeking a modification of the preliminary injunction so as to remove any restriction on transfers of their assets, dismissal of the Complaint for lack of personal jurisdiction, and dismissal of the Complaint for failure to state a claim. The Court has reviewed thoroughly the parties' submissions and, for the following reasons, denies the Individual Defendants' motions in their entirety.

BACKGROUND

The following facts alleged in the complaint are taken as true for the purposes of analysis of the Individual Defendants' motions to dismiss the Complaint. Plaintiffs manufacture and sell luxury products on which they display their various trademarks, which "are among the most widely-recognized trademarks in the United States." (Compl. ¶ 1; see also id. ¶¶ 21-37.) Bottega Veneta, Gucci, and YSL are New York corporations, and Balenciaga America, Inc., has a New York office. (Id. ¶¶ 6-9.) Defendants manufacture and sell "counterfeit versions" of Plaintiffs' products by "copy[ing] the designs, patterns, and color schemes associated with the Plaintiffs, [and] expressly identify[ing] the [c]ounterfeit [p]roducts as 'Balenciaga', 'Bottega Veneta', 'Gucci', or 'YSL' products" in order to "confuse consumers into believing that Defendants['] products are genuine versions of Plaintiffs' [p]roducts or to otherwise compete with Plaintiffs' [p]roducts." (Id. ¶¶ 2-3.) Plaintiffs have not authorized, or otherwise affiliated themselves with Defendants in connection with, the manufacture and sale of the counterfeit products. (Id. ¶¶ 2, 4.)

Defendants offered counterfeit versions of a number of Plaintiffs' handbags for sale through the internet sites MyPurseWorld.com, MyPurseWorld.net, and PhoenixLuxury.net (the "Infringing Websites"). (Id. ¶¶ 40, 42, 44, 46, 49, 52-54, 57-64.) "Defendants boast [on the Infringing Websites] that their products are 'virtually indistinguishable from the designer originals in every way'" (id. ¶ 49), and the Infringing Websites identify the counterfeit products by reference to Plaintiffs' brand names (id. ¶¶ 52-54), allegedly demonstrating Defendants' purposeful attempts to confuse the public as to the source of the products sold on the Infringing Websites and to compete with Plaintiffs' genuine products. Plaintiffs have catalogued numerous instances of infringement of their marks in connection with the merchandising of various counterfeit goods on the Infringing Websites. (Id. ¶¶ 57-64.) The Individual Defendants control Koodley and, together with Koodley, are the "owners, operators, marketing agents, and/or payment processors for" MyPurseWorld.com and MyPurseWorld.net. (Id. ¶ 13.) Koodley "supported and powered" the MyPurseWorld.com internet site. (Id. ¶ 66.)

In connection with their opposition to Defendants' motions, Plaintiffs proffer, inter alia, that they hired a private investigator, Michael Falsone, to "supervise an investigation into sales over the [i]nternet to customers in the United States of various goods that make use of the [Plaintiffs'] trademarks." (Decl. of Michael F. Falsone ("Falsone Decl.") ¶ 2.) Falsone and his staff visited the Infringing Websites, captured numerous "screen shots" showing the Infringing Websites' merchandising of counterfeit products nearly identical to those sold by Plaintiffs and bearing Plaintiffs' trademarks and containing descriptions of the products on offer characterizing them as "replicas" that were "indistinguishable" from Plaintiffs' genuine products (id. ¶¶ 4-60), and purchased four counterfeit handbags, each one a replica of a different Plaintiff's product, from the MyPurseWorld.com internet site using a credit card account (id. ¶¶ 61-84). Falsone received an email from info@mypurseworld.com advising him that the charge would appear on his credit card statement as "SpeedSmart Holdings." (Id. ¶¶ 64, 69, 75, 81; id. Ex. 10.)*fn2 The page confirming successful processing of Falsone's order states that "[t]his purchase will appear on your [c]redit [c]ard under the name BagStyle Online." (Id. Ex. 9.) In fact, the credit card statement indicates that the "Transaction Description" was "Koodley.com 888-2321884" which is "[d]oing [b]usiness [a]s . . . mypurseworld.com" and lists a Miami, Florida, "Merchant Address." (Id. ¶¶ 65, 70, 76, 82; id. Ex. 11.) The four bags were shipped, apparently from an address in China, to Falsone at an address in New York City. (Id. Exs. 9, 10, 12, 13.) Falsone also purchased one handbag from MyPurseWorld.net. (Id. ¶¶ 85-92.) The "confirmation page" identified the seller as Fashion Store, located at "17 Triggs Lane, Surrey GU22 0EL, GB." (Id. ¶ 85; id. Ex. 13.) Falsone received an email from jack@mypurseworld.net advising him, correctly, that the charge would appear on his credit card statement as "phoenixluxury.net." (Id. 88, 92; id. Ex. 15.) The "contact us" section of the Phoenix-Luxury.net internet site lists the same U.K. address as that provided for Fashion Store on MyPurseWorld.net. (Id. ¶ 91.) Falsone also determined that "Defendants' websites sell to customers in New York" on the basis of a section on MyPurseWorld.com entitled "Testimonials" which contains at least one comment from a New York customer. (Id. ¶ 8.)

Plaintiffs further proffer that the allegedly counterfeit products offered for sale on MyPurseWorld.net appear identical to those offered on MyPurseWorld.com, suggesting that they share a common origin. (See Decl. of Stacy Feldman ¶¶ 40-55.) The Koodley internet site contains a section entitled "About Us" which describes Sean Dollinger as "the mastermind behind Koodley.com" who "developed" Koodley and "works on a daily basis at making Koodley.com the number one online destination for website creation and online advertising options." (Falsone Decl. Ex. 18 (bearing a time-stamp dated January 4, 2010).) The same section of the Koodley internet site describes Tamara Simon as "the chief owner and operator of Koodley.com" who "works along with the Koodley.com team at constantly updating and perfecting the services offered." (Id.)

Plaintiffs also proffer information regarding the involvement of Koodley and the Individual Defendants in prior trademark and counterfeiting litigation. In 2009 Chanel, Inc., and Louis Vuitton Malltier, S.A. (the "Florida Plaintiffs"), brought an action for trademark infringement and counterfeiting in the United States District Court for the Southern District of Florida against, among others, Dollinger and Koodley. (See Decl. of Anne M. Coyle ("Coyle Decl.").) On June 8, 2009, Judge Ursula Ungaro issued a "Default Final Judgment" against Koodley, ordering it to pay statutory damages totaling $2,496,000 and permanently enjoining it, its officers, and "all persons in active concert and participation with it" from, inter alia, using the Florida Plaintiffs' marks, including in connection with the sale of counterfeit goods, and falsely representing themselves and a number of internet sites, including MyPurseWorld.com, as being associated with the Florida Plaintiffs. (Coyle. Decl. Ex. 2.) On February 1, 2010, Judge Ungaro endorsed a "Stipulated Consent Final Judgment and Permanent Injunction" against Dollinger including stipulations that Dollinger had infringed and diluted the Florida Plaintiffs' trademarks by using "names or marks which are identical to, or substantially indistinguishable from each of the [Florida] Plaintiffs' [r]espective [m]arks," and permanently enjoined Dollinger and Simon, who was not a party to that action, from, inter alia, "selling or offering to sell counterfeit and infringing goods bearing the [Florida] Plaintiffs' [r]espective [m]arks," using those marks "in connection with the sale of any unauthorized goods," and falsely representing that they, their services, or their products were in any way associated with the Florida Plaintiffs. (Coyle Decl. Ex. 1.)

The Individual Defendants have made factual proffers in support of their motions, including the following. Koodley was dissolved on September 25, 2009. (Affidavit of Sean Dollinger ("Dollinger Aff.") ¶ 5.) The Individual Defendants are Canadian citizens who reside in the Bahamas. (See Dollinger Aff. ¶ 3.) The Individual Defendants deny having "ever been owners, officer[s], directors, employees, or agents of any of the websites mentioned in the Complaint." (Second Aff. of Sean Dollinger ("2d Dollinger Aff.") ¶ 5; Simon Aff. ¶ 13.)*fn3 They deny having been "involved in the sale of counterfeit merchandise" (Simon Aff. ¶ 4), having "engaged in the manufacture, distribution, and/or sale of handbags or similar goods" (2d Dollinger Aff. ¶ 3; Simon Aff. ¶ 3), having "r[u]n the day-to-day operations of Mypurseworld.com, Mypurseworld.net, Phoenixluxury.com, or Koodley.com" (2d Dollinger Aff. ¶ 8; Simon Aff. ¶ 14), and, in Simon's case, having "performed marketing services, or anything else of that nature, for any party" (Simon Aff. ¶ 11). Dollinger maintains that "[t]he full extent of [his] involvement with any of the websites mentioned in the Complaint was that [he] performed [i]nternet marketing services for Mypurseworld.com as an outside contractor . . . ." (2d Dollinger Aff. ¶ 11.) Simon avers that "business of any nature was carried out by Koodley Canada," a "different entity" from Koodley "which [Simon's] partners handled while [she] was abroad" and with which Koodley "had a processing account" (Simon Aff. ¶ 6), and that "[n]either Koodley.com (US) nor [Simon] ever did any type of work for the websites listed in the Complaint" (Simon Aff. ¶ 8).

DISCUSSION

Rule 12(b)(2) Motion

In an action arising under a federal statute that does not expressly provide for personal jurisdiction, a federal court may exercise personal jurisdiction over a defendant to the same extent as courts of general jurisdiction in the state in which it sits. See Penguin Group (USA) Inc. v. American Buddha, 609 F.3d 30, 35 (2d Cir. 2010). In New York, federal courts first consider whether jurisdiction is authorized by a New York statute. Best Van Lines, Inc. v. Walker, 490 F.3d 239, 242 (2d Cir. 2007). "If, but only if, [the] answer is in the affirmative, [courts] must then determine whether asserting jurisdiction under that provision would be compatible with the requirements of due process established under the Fourteenth Amendment to the United States Constitution." Id. While the plaintiff bears the burden of establishing that the court may exercise personal jurisdiction over a defendant, when a district court relies "solely on the pleadings and supporting affidavits" to determine personal jurisdiction, "the plaintiff need only make a prima facie showing of jurisdiction." Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994). "Such a showing entails making 'legally sufficient allegations of jurisdiction,' including 'an averment of facts that, if credited[,] would suffice to establish jurisdiction over the defendant.'" Penguin Group, 609 F.3d at 35 (alteration in original) (quoting In re Magnetic Audiotape Antitrust Litig., 334 F.3d 204, 206 (2d Cir. 2003)).

The Individual Defendants do not contend that service of process was insufficient but, rather, argue that there is no lawful factual basis for this Court's exercise of personal jurisdiction over them. Plaintiffs argue that personal jurisdiction may properly be exercised pursuant to any of first three specific jurisdiction provisions under N.Y. C.P.L.R. § 302(a). The Court agrees that, at minimum, Plaintiffs' proffers are sufficient to demonstrate Section 302(a)(3)(ii) jurisdiction over the Individual Defendants.

Jurisdiction pursuant to ยง 302(a)(3)(ii) is predicated on five elements: '(1) [t]he defendant committed a tortious act outside the state; (2) the cause of action arose from that act; (3) the act caused injury to a person or property within the state; (4) the defendant expected or should reasonably have expected the act to have consequences in the ...


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