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The Vantone Group Limited Liability Co. v. Yangpu Ngt Industrial Co., Ltd.

United States District Court, S.D. New York

March 11, 2015

YANGPU NGT INDUSTRIAL CO., LTD., et al., Defendants.



Defendants/Counterclaimants/Third-Party Plaintiffs Vantone Holdings Company, Ltd., China Center New York LLC ("China Center"), Vantone Property NY LLC, Vantone Residences LLC, Vamerica Fund LLC, Vantone U.S. LLC, Vantone U.S. Inc., Beijing Vantone Real Estate Co., Ltd. and Feng Lun (collectively, "Defendants" or the "Moving Parties") move for a preliminarily injunction against Third-Party Defendant Leonardo Gianella ("Gianella") and Plaintiff/Counter-Defendant The Vantone Group LLC (the "Vantone Group, " and collectively, the "Nonmoving Parties"). The Moving Parties seek an injunction preventing both Gianella and the Vantone Group from using, promoting, advertising or asserting claims to the right to use the "Vantone" mark during the pendency of this litigation, and affirmatively permitting the Moving Parties to continue using the "Vantone" marks that are the subject of this litigation in business transactions and promotions, among other uses. The Court has jurisdiction of this case under 28 U.S.C. § 1331. The Court has carefully considered the parties' submissions and, for the reasons stated below, denies the Moving Parties' motion for a preliminary injunction in its entirety.[1]

This Memorandum Opinion and Order constitutes the Court's findings of fact and conclusions of law for the purposes of Federal Rules of Civil Procedure 52 and 65. In light of the Moving Parties' failure to provide any evidence in support of their irreparable harm claim, however, the Court finds it unnecessary to make specific findings of fact.[2] Accordingly, the following section briefly summarizes the parties' claims and principal contentions. It is drawn primarily from the Second Amended Complaint ("SAC, " Docket Entry Number 123) and declarations filed in connection with the instant motion practice.


Plaintiff Vantone Group LLC is a real estate company operating in New York, which was founded by Third-Party Defendant Leonardo Gianella. (SAC ¶ 37.) Gianella allegedly began preparations to use the name "The Vantone Group" for his company in April 2006, when he registered two internet domain names: and (Id.) The Vantone Group was formed as New York State limited liability company on April 18, 2007, the date on which the "Vantone" name was allegedly first used in commerce. (SAC ¶ 37.) The Vantone Group has been a licensed real estate brokerage in New York since at least January 8, 2008 (id.), and is the record owner of the federally registered trademark "The Vantone Group" for real estate brokerage services. (Id. ¶ 39.) The mark was registered on October 5, 2010. (Id.) The Vantone Group also owns the rights to the federally registered trademark "The Vantone Group" for financial and investment services, which was registered on November 6, 2012. (SAC ¶ 40.) The Vantone Group also owns the New York State service mark "The Vantone Group" for real estate brokerage services. (Id. ¶ 4, Ex. 4.) Because a large portion of The Vantone Group's clients are Chinese nationals, Plaintiff began offering a Chinese version of its website in 2012, which included a Chinese character transliteration of "The Vantone Group" mark. (Id. ¶ 38.)

The Moving Parties are members of a China-based "conglomeration" of companies engaged primarily in real estate and business development. (See generally Declaration of Li Xu in Support of Motion for a Preliminary Injunction ("Xu Dec.").) According to the Moving Parties, several of these entities have operated in the United States under the "Vantone" mark since the early 1990s. (See Declaration of Kerry Kaltenbach in Support of Motion for a Preliminary Injunction ("Kaltenbach Dec.") ¶ 3, Exs. B and C.) These entities allegedly include, or have at times included, Vantone USA, Inc. d/b/a Vantone International Group, Vantone Corp., Vatone Residences LLC, Vantone Property NY LLC and Vantone US, Inc. (Xu Dec. ¶ 5.) The Vantone conglomeration also includes The China Center, which is described as "a business and cultural center which will open at the recently completed One World Trade Center in New York City and will occupy six floors." (Id. ¶ 1.) The China Center is intended to serve as "a gateway for Chinese and other foreign companies interested in doing business in and investing in the United States, " and will purportedly "provide a venue for business, social and cultural exchange... particularly, for business leaders from China and the United States to meet, interact and do business." (Xu Dec. ¶ 2.) The China Center has allegedly signed a 21-year lease worth hundreds of millions of dollars, and the interior is supposedly being planned by renowned designer Kengo Kuma at the cost of tens of millions of dollars. (Id. ¶ 3.) According to the Moving Parties, the China Center has several prospective clients, many of whom became interested in the China Center due to its association with the "Vantone" name, which has "tremendous good will and prestige" in the United States. (Xu Dec. ¶ 4.)

The parties have been engaged in a dispute regarding use of the "Vantone" mark for several years. This lawsuit, in which Plaintiff alleges that Defendants' use of Vantone and related marks infringes on his registered marks, was filed on October 29, 2013. (See generally SAC and Docket Entry No. 1.) Defendants have filed counterclaims and a third party complaint asserting, inter alia, that their rights in the Vantone mark are superior, that they are entitled to cancellation of Plaintiffs' marks, and that Plaintiff is engaging in unfair competition and unlawful dilution of their marks. (See generally Answer, Third-Party Complaint and Counterclaim, Docket Entry No. 21.) On November 22, 2014, the Moving Parties filed the instant motion seeking a preliminary injunction, claiming that the impending opening of the China Center increases the likelihood that the Nonmoving Parties' use of the Vantone mark will harm their interests. (See Xu Dec. ¶ 8.)


Preliminary Injunction Standard

A preliminary injunction is "one of the most drastic tools in the arsenal of judicial remedies." Hanson Trust PLC v. SCM Corp., 774 F.2d 47, 60 (2d Cir. 1985). Indeed, the Supreme Court has characterized injunctive relief as "an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief." Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 22 (2008); see also Sussman v. Crawford, 488 F.3d 136, 139 (2d Cir. 2007) ("[A] preliminary injunction is an extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear showing, carries the burden of persuasion") (internal quotation marks and citation omitted). A preliminary injunction is "never awarded as of right, " and in each case "courts must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief.'" Winter, 555 U.S. at 24 (quoting Amoco Production Co. v. Village of Gambell, AK, 480 U.S. 531, 542 (1987)).

"To obtain a preliminary injunction, the moving party must demonstrate (1) irreparable harm absent injunctive relief; (2) either a likelihood of success on the merits, or a serious question going to the merits to make them a fair ground for trial, with a balance of hardships tipping decidedly in the plaintiff's favor; and (3) that the public's interest weighs in favor of granting an injunction." Red Earth LLC v. U.S., 657 F.3d 138, 143 (2d Cir. 2011) (internal quotation marks and citation omitted). The Second Circuit has stated that "[a] showing of irreparable harm is the single most important prerequisite for the issuance of a preliminary injunction.'" Faiveley Transport Malmo AB v. Wabtec Corp., 559 F.3d 110, 118 (2d Cir. 2009) (quoting Rodriguez v. DeBuono, 175 F.3d 227, 234 (2d Cir. 1999)). "To satisfy the irreparable harm requirement, Plaintiffs must demonstrate that absent a preliminary injunction they will suffer an injury that is neither remote nor speculative, but actual and imminent, and one that cannot be remedied if a court waits until the end of trial to resolve the harm." See Grand River Enterprise Six Nations Ltd. v. Pryor, 481 F.3d 60, 66 (2d Cir. 2007) (internal quotation marks and citations omitted). Furthermore, "it has always been true that irreparable injury means injury for which a monetary award cannot be adequate compensation and that where money damages is adequate compensation a preliminary injunction will not issue." Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979).

The Moving Parties Have Not Demonstrated Irreparable Harm

The Moving Parties have not proffered facts sufficient to carry their burden of demonstrating that they will suffer irreparable harm in the absence of an injunction. Accordingly, their motion must be denied. See e.g., Ringling Brothers-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows, Corp., 937 F.Supp. 204 (S.D.N.Y. 1996) (finding that, in the absence of a showing of dilution, plaintiff had failed to demonstrate irreparable harm, therefore preliminary injunction must be denied). The Moving Parties' proffer with respect to the element of irreparable harm is wholly conclusory, and is unsupported by even a single specific allegation of fact.[3] The Moving Parties cite only the Declaration of Vantone Holdings Vice Chairman Li Xu for the proposition that "as the China Center is planning its grand opening and its efforts to attract clients intensify, should potential clients associate or continue to associate Mr. Gianella and his business with the Vantone' name, irreparable harm to this prestigious, multi-billion name will undoubtedly result." (See Memorandum of Law in Support of Defendants' Motion for a Preliminary Injunction ("Moving Parties' Memo"), p. 26; see also Xu Dec. ¶ 8.) They do not elaborate on the nature of the anticipated harm. The Moving Parties do not explain how the anticipated harm is "actual and imminent" rather than speculative, nor do they offer any argument as to why a monetary award would be insufficient to compensate them for any injury actually suffered. Furthermore, although they argue that they are likely to succeed on, inter alia, their New York State law dilution claim, they offer only conclusory assertions as to the fame of their marks, their goodwill and the likelihood of dilution. No facts are proffered concerning the quality of Plaintiff's goods or services, nor the likelihood of dilution by blurring or tarnishment.[4]

Moreover, as the Nonmoving Parties note, the Moving Parties have had notice of the Vantone Group's claim to ownership of the Vantone mark since at least late 2010, when the Vantone Group first sent "cease and desist" letters to several of the Chinese Vantone entities. (See Declaration of Leonardo Gianella in Support of Plaintiff's Opposition to Defendants' Motion for Preliminary Injunction ("Gianella Dec.") ¶ 16.) "[C]ourts typically decline to grant preliminary injunctions in the face of unexplained delays of more than two months." Gidatex, S.r.L. v. Campaniello Imports, Ltd., 13 F.Supp.2d 417, 419 (S.D.N.Y.1998). A "failure to act sooner undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury" on the horizon. Citibank, N.A. v. Citytrust, 756 F.2d 273, 277 (2d Cir. 1985) (finding that a nine month delay in requesting a preliminary injunction negated presumption of irreparable harm) (internal quotation marks and citation omitted). Although the ...

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