Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 1 of 27
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`DENNIS L. WILSON (Bar No. 155407)
`DWilson@kilpatricktownsend.com
`CAROLINE Y. BARBEE (Bar No. 239343)
`CBarbee@kilpatricktownsend.com
`1801 Century Park East, Suite 2300
`Los Angeles CA 90067
`Telephone: 310-248-3830
`Facsimile: 310-860-0363
`
`Attorneys for Plaintiffs
`FACEBOOK, INC. and GUCCI AMERICA, INC.
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`JOHN P. MARGIOTTA (pro hac vice application to be filed)
`jmargiotta@fzlz.com
`NICOLE LIEBERMAN (pro hac vice application to be filed)
`nlieberman@fzlz.com
`151 W. 42nd Street, 17th Floor
`New York, NY 10036
`Telephone: 212-813-5900
`Fax: 212-813-5901
`
`Attorneys for Plaintiff
`GUCCI AMERICA, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`FACEBOOK, INC., a Delaware corporation,
`CASE NO. 3:21-cv-3036
`and GUCCI AMERICA, INC., a New York
`corporation
`
`COMPLAINT; DEMAND FOR JURY TRIAL
`
`Plaintiffs,
`
`v.
`
`Natalia Kokhtenko,
`
`Defendant.
`
`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036:
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 2 of 27
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`Plaintiffs Facebook, Inc. (“Facebook”) and Gucci America, Inc. (“Gucci”) assert the following:
`INTRODUCTION
`Facebook and Gucci jointly bring this action in response to Defendant’s unlawful use
`1.
`of Facebook and Instagram to perpetuate an online counterfeiting business that sells, among other
`imitated brands, fake Gucci products. Since at least April 2020 and continuing until at least April 26,
`2021, Defendant Natalia Kokhtenko has operated an international online business, trafficking in
`illegal counterfeit goods. Defendant used Facebook and Instagram to promote her websites selling
`counterfeit products, including counterfeit Gucci-branded handbags, shoes, clothing, and
`accessories, in violation of Facebook and Instagram’s terms and policies. Facebook has previously
`disabled Defendant’s accounts and removed posts for promoting the sale of counterfeit goods in
`violation of Facebook’s and Instagram’s terms and policies, which prohibit violating the intellectual
`property rights of others. Despite Facebook’s enforcement efforts, Defendant continued to use
`Facebook and Instagram to promote the sale of Gucci-branded counterfeit goods and the
`unauthorized use of several of Gucci’s registered trademarks, including its house mark GUCCI, a
`number of Gucci’s stylized Gucci and GG marks, and Gucci’s Green/Red/Green Signature Webbing.
`2.
`Facebook brings this action to stop Defendant’s ongoing violation of Facebook’s and
`Instagram’s terms and policies. Gucci brings this action to stop Defendant’s continuing trademark
`infringement and counterfeiting under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); unfair
`competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); unfair competition under
`California State Law, Cal. Bus. & Prof. Code §§ 17200 et seq; and unfair competition under
`California common law.
`
`PARTIES
`Plaintiff Facebook, Inc. is a Delaware corporation with its principal place of business
`3.
`in Menlo Park, California. Facebook products include the Facebook and Instagram apps.
`4.
`Plaintiff Gucci America, Inc. is a New York corporation with its principal place of
`business in New York, New York.
`5.
`Defendant Natalia Kokhtenko is a citizen and resident of Moscow, Russia. Defendant
`used multiple aliases and online monikers, including “AgentRomanova,” “Brends-MSK,”
`
`COMPLAINT; DEMAND FOR JURY TRIAL
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 3 of 27
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`“gucci_sumo4kina_,” “Luxprime,” “Luxprimer,” “Luxprimes,” “luxprime_gucci,” “Natalia
`Sumochkina,” “Natalya Romanova,” “Romanova,” “Sumo4kina,” and “sumo4kina_shop1.”
`6.
`Defendant used multiple Facebook and Instagram accounts to promote her online
`stores available at brends-msk.ru, luxprimer.ru1, and agentromanova.ru (collectively, “Defendant
`Websites”), where she operated an international business that sold counterfeit goods, including
`counterfeit Gucci-branded products, in violation of Facebook and Instagram’s terms and policies.
`Defendant’s Websites specifically promoted “luxury copies,” “fashion from pirates,” “high-precision
`copies of branded clothing,” and copies that are “difficult . . . to distinguish [Defendant’s] copies
`from the originals” for various brands, including Gucci. Exhibit 1. The Defendant Website brends-
`msk.ru referred to Defendant as the “founder, ideological inspirer, and director” of her counterfeit
`business. Exhibit 2.
`
`JURISDICTION AND VENUE
`The Court has federal question jurisdiction over the federal causes of action alleged in
`7.
`this Complaint pursuant to 15 U.S.C. § 1121, 28 U.S.C. § 1331, and 28 U.S.C. § 1338(a).
`8.
`The Court has supplemental jurisdiction over the state law causes of action alleged in
`this Complaint pursuant to 28 U.S.C. § 1367 because these claims arise out of the same nucleus of
`operative fact as the federal claims.
`9.
`The Court also has jurisdiction over all the causes of action alleged in this Complaint
`pursuant to 28 U.S.C. § 1332 because complete diversity between the Plaintiffs and Defendant
`exists, and because the amount in controversy exceeds $75,000.
`10.
`Defendant had multiple Facebook accounts and thereby agreed to Facebook’s Terms
`of Service (“TOS”) and Commercial Terms. The Court has personal jurisdiction over Defendant
`because Facebook’s TOS and Commercial Terms both contain a forum selection clause that requires
`this complaint be resolved by this Court, and that Defendant submit to the personal jurisdiction of
`this Court.
`/ / /
`
`1 As of April 14, 2021, each of the domains luxprime.ru, lux-prime.ru, luxprimes.ru, and lux-
`prime.ru re-direct to the domain luxprimer.ru.
`COMPLAINT; DEMAND FOR JURY TRIAL
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 4 of 27
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`Defendant also agreed to the Instagram Terms of Use (“TOU”) (collectively with the
`11.
`Facebook TOS, the “Terms”). The Instagram TOU contain a forum selection clause that requires this
`complaint be resolved by this Court, and that Defendant submit to the personal jurisdiction of this
`Court.
`
`In addition, the Court has personal jurisdiction over Defendant because she
`12.
`knowingly directed and targeted her actions at California and at Facebook, which has its principal
`place of business in California. Defendant transacted business and engaged in commerce in
`California by, among other things, accepting payment via a California-based payment service and
`hosting the Defendant Websites on a California-based hosting provider. Defendant promoted her
`ability to ship counterfeit goods to the United States and shipped counterfeit goods to California.
`Venue is proper in this Judicial District pursuant to 28 U.S.C. § 1391(b)(2) because a substantial part
`of the events giving rise to the claims alleged occurred in this District. Venue is proper pursuant to
`28 U.S.C. § 1391(b)(3) because Defendant is subject to the Court’s personal jurisdiction. Venue is
`also proper with respect to Defendant pursuant to 28 U.S.C. §1391(c)(3) because no defendant
`resides in the United States.
`13.
`Pursuant to Civil L.R. 3-2(c), this case may be assigned to either the San Francisco or
`Oakland division because Facebook is located in San Mateo County.
`FACTUAL ALLEGATIONS
`Background on Facebook and Instagram
`A.
`Facebook offers a social networking website and mobile application that enables its
`14.
`users to create their own personal profiles and connect with each other on their personal computers
`and mobile devices. As of December 2020, Facebook daily active users averaged 1.84 billion and
`monthly active users averaged 2.80 billion, worldwide. Facebook has several products, including
`Instagram.
`Instagram is a photo and video sharing service, mobile application, and social
`15.
`network. Instagram is owned and operated by Facebook, Inc. Since April 2018, the Instagram TOU
`have stated that Instagram is a Facebook product and that the TOU constitute an agreement between
`Instagram users and Facebook.
`
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 5 of 27
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`Instagram users can post photos and videos to their profile. They can also view,
`16.
`comment on, and like posts shared by others on Instagram. As of 2020, Instagram had over one
`billion active accounts worldwide.
`B.
`Facebook’s and Instagram’s Terms and Policies (the “Terms”)
`17.
`All Facebook users agree to Facebook’s TOS (available at
`https://www.facebook.com/terms/php) and other rules that govern access to and use of Facebook,
`which also include the Facebook Commercial Terms. Facebook Commercial Terms apply to access
`and use of Facebook, Instagram, and other Facebook Products for any business or commercial
`purpose.
`All Instagram users agree to Instagram’s TOU (available at
`18.
`https://help.instagram.com/478745558852511/?helpref=hc_fnav) and to other rules that govern
`access to and use of Instagram.
`19.
`Section 3.1 of the Facebook TOS requires users to “[c]reate only one account ([their]
`own)” and use that account “for personal purposes,” and prohibits users from using Facebook if
`Facebook “previously disabled [a user’s] account for violations of [the TOS] or [Facebook]
`Policies.”
`Section 3.2.1 of the Facebook TOS prohibits users from: (a) doing anything
`20.
`“unlawful, misleading, [] or fraudulent”; (b) doing anything that “infringes or violates someone
`else’s rights, including their intellectual property rights”; and (c) “breach[ing] [the Facebook TOS],
`[Facebook] Community Standards, and other Terms and Policies that apply to [a user’s] use of
`Facebook.”
`Section 3.2.3 of the Facebook TOS prohibits users from “access[ing] or collect[ing]
`21.
`data from [Facebook] Products using automated means (without [Facebook’s] prior permission).”
`22.
`Section 3.2 of the Facebook TOS authorizes Facebook to remove content of users
`who “seriously or repeatedly violate the[] [TOS]” without giving the user an opportunity to “request
`[] review.”
`/ / /
`/ / /
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 6 of 27
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`Section 2 of the Facebook Commercial Terms requires users to “represent and
`23.
`warrant” that “access or use of Facebook Products for business or commercial purposes complies
`with all applicable laws, rules, and regulations.”
`24.
`Instagram’s TOU also prohibit users from (a) “do[ing] anything unlawful, misleading,
`or fraudulent or for an illegal or unauthorized purpose”; (b) “do[ing] anything that violates someone
`else’s rights, including intellectual property”; (c) “attempt[ing] to create accounts or access or collect
`information in unauthorized ways,” “includ[ing] creating accounts or collecting information in an
`automated way without our express permission”; (d) “violat[ing] . . . [Instagram] Terms or
`[Instagram] policies”; and (e) using Instagram if Facebook “previously disabled your account for
`violation of law or any of [Instagram’s] policies.”
`C.
`Facebook’s Measures to Protect Intellectual Property Rights
`25.
`Facebook prohibits Facebook and Instagram users from posting content that infringes
`third parties’ intellectual property rights, including copyright infringement, trademark infringement,
`and the promotion, sale, or advertisement of counterfeit goods. Facebook TOS, Section 3.2.1;
`Instagram TOU (“How You Can’t Use Instagram”). Facebook has a variety of measures and tools in
`place to help people and organizations protect their intellectual property rights across its products
`and services and to combat infringements, including counterfeits, on its products and services.
`26.
`Facebook operates a global notice-and-takedown program that provides dedicated
`communication channels for rights holders to report posts or other user-generated content they
`believe to be infringing, including content on Facebook and Instagram that promotes, advertises, or
`sells counterfeit goods. Facebook makes available publicly-accessible reporting forms to streamline
`and expedite the reporting of intellectual property violations, including a form for reporting
`counterfeits specifically (available at https://www.facebook.com/help/contact/628238764025713).
`27.
`Facebook employs a global team to review these reports. If a report is complete and
`valid, Facebook promptly removes the reported content (e.g., disables a violating account or
`removes a violating post). In addition, Facebook notifies both the rights holder and the violating user
`of the fact of and reason for the removal. In the first half of 2020, Facebook and Instagram removed
`more than one million posts or other user-generated content based on reports of counterfeit goods.
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`Even where a report identifies a single post (for example, a photograph on a
`28.
`Facebook or Instagram account), typically Facebook reviews the entire account. If there is evidence
`of widespread infringement, rather than remove only the reported post, Facebook disables the
`account. Likewise, Facebook disables the accounts of Facebook and Instagram users who repeatedly
`violate the Terms prohibiting violations of the intellectual property rights of others. This “repeat
`infringer” policy applies to numerous surfaces, including Facebook accounts, Pages, groups, ad
`accounts, and Instagram accounts. When a repeat infringer’s account is disabled, Facebook informs
`the user that they are no longer permitted to use its service.
`D.
`Gucci’s Rights and Anti-Counterfeiting Efforts
`29.
`The Gucci brand, originally founded in 1921 in Florence, Italy, is one of the best-
`known and most valuable global brands.
`30.
`The Gucci brand, which is celebrating its 100th anniversary this year, is one of the
`most renowned and influential fashion and luxury brands in the world, a genuine global reference
`for fashion and accessories, sustainability, and inclusion and a benchmark for a modern, innovative
`business.
`Gucci is renowned for eclectic and contemporary creations that represent the pinnacle
`31.
`of Italian craftsmanship and are unsurpassed in quality, attention to detail, and imaginative design.
`32.
`Gucci first used the GUCCI name and mark in the United States in 1953, when it
`introduced Americans to Italian fashions by opening its pioneering New York City flagship store.
`Today, Gucci distributes leather goods, clothing, accessories, eyewear, footwear, home decor,
`lifestyle products, jewelry, and watches, among many other products, in the United States under the
`GUCCI mark and related iconic design marks, including the stylized GUCCI marks, Gucci’s stylized
`GG designs and Green/Red/Green Signature Webbing shown below (collective with the mark
`GUCCI, the “Gucci Marks”):
`/ / /
`/ / /
`/ / /
`/ / /
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 8 of 27
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`Today, Gucci owns/operates nearly 100 GUCCI-branded retail boutiques throughout
`33.
`the United States where it sells its products branded with the Gucci Marks. Gucci also sells its
`products through its official website, www.gucci.com/us/, and through select high end department
`stores, such as Saks Fifth Avenue, Nordstrom, and Bloomingdale’s.
`34.
`Each year, Gucci spends millions of dollars on advertising to promote the goods and
`services offered under the Gucci Marks in the United States. As a result of Gucci’s efforts and the
`appeal of the GUCCI brand, Gucci sells high quantities of consumer goods annually in the United
`States.
`By virtue of extensive sales, advertising, and promotion, the Gucci Marks have
`35.
`become instantly recognizable to the public as exclusively denoting Gucci as the source of products
`bearing, and sold under, the Gucci Marks and signaling the high quality of such products. Having
`acquired substantial goodwill and strong secondary meaning, the world-famous Gucci Marks are
`enormously valuable assets of Gucci.
`36.
`Along with its robust common law rights in the famous Gucci Marks, Gucci also
`owns numerous federal registrations for the Gucci Marks, including:
`/ / /
`/ / /
`/ / /
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 9 of 27
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`Mark
`GUCCI
`
`Reg’n No.
`876,292
`
`Reg’n Date
`09/09/1969
`
`GUCCI
`
`1,168,477
`
`09/08/1981
`
`GUCCI
`
`4,563,132
`
`07/08/2014
`
`GUCCI
`GUCCI
`
`4,407,149
`5,535,081
`
`09/24/2013
`08/07/2018
`
`5,921,104
`
`11/26/2019
`
`5,921,105
`
`11/26/2019
`
`6,073,427
`
`06/09/2020
`
`Class and Goods/Services
`IC 6: Vacuum bottles, vanity cases sold empty
`IC 18: Pocketbooks, wallets, travel and duffel bags,
`attache cases, toilet cases sold empty and shoe bags
`IC 25: Shoes and boots
`IC 25: Neckties; scarves; belts; footwear; shirts;
`sweaters; coats; suits; dressing gowns; hats; socks;
`dresses and bathing Suits
`IC 18: Handbags, shoulder bags, clutch bags, tote
`bags, briefcases, business card cases, credit card
`cases, backpacks, key cases, passport cases,
`cosmetic cases sold empty, valises, suitcases,
`luggage, all the foregoing being made in whole or in
`part of leather; pet accessories, namely, carriers,
`collars and leashes; pet collar accessories, namely,
`charms
`IC 9: Sunglasses and cases for sunglasses
`IC 3: Incense sticks
`IC 4 : Candles
`IC 20: Throw pillows, cushions, chairs, armchairs,
`folding floor screens and tables
`IC 21: Incense burners, mugs, cups, trays for
`household purposes
`IC 27: Wallpaper
`IC 9: Cases and covers for mobile phones
`IC 18: Handbags; shoulder bags; messenger bags;
`tote bags; clutch bags; backpacks; duffle bags;
`wallets; business card cases; leather credit card cases
`and holders; pouches of leather
`IC 25: Clothing, namely, tops as clothing, scarves,
`footwear, headwear; children's and infants' cloth
`bibs
`IC 9: Cases and covers for mobile phones
`IC 14: Keyrings
`IC 18: Handbags; shoulder bags; messenger bags;
`tote bags; clutch bags; backpacks; duffle bags;
`wallets; business card cases; leather credit card cases
`and holders; pouches of leather
`IC 25: Clothing, namely, tops as clothing, scarves,
`footwear, headwear; children's and infants' cloth
`bibs
`IC 3: Fragrances, incense, cosmetics, nail polish
`IC 4: Candles
`
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 10 of 27
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`Mark
`
`Reg’n No.
`
`Reg’n Date
`
`1,158,170
`
`06/23/1981
`
`Class and Goods/Services
`IC 9: Sunglasses, eyeglasses, cases for sunglasses,
`cases for eyeglasses, mobile phone cases, cases for
`computers, cases for tablet computers, computer
`application software for all mobile devices, namely,
`downloadable software for providing information in
`the field of fashion, the arts and lifestyle
`IC 14: Jewelry, watches, key rings, cuff links, tie
`bars
`IC 18: Pocketbooks, handbags, shoulder bags,
`clutches, wristlet bags, coin purses, wallets, credit
`card cases, business card cases, tote bags,
`backpacks, diaper bags, cosmetic bags sold empty,
`luggage
`IC 20: Throw pillows, cushions, chairs, armchairs,
`folding floor screens and tables
`IC 21: Incense burners, mugs, cups, trays for
`household purposes, porcelain pots and vases,
`dishes, sugar bowls, creamer pitchers, chargers
`being dinnerware, non-electric coffee pots, non-
`electric tea pots
`IC 25: Tops as clothing, bottoms as clothing, coats,
`jackets, suits, dresses, jumpsuits, bathing suits,
`scarves, ties as clothing, belts, gloves, headwear,
`footwear, tights, socks, stockings
`IC 27: Wallpaper
`IC 35: Retail store services for clothing, footwear,
`fashion accessories, jewelry, watches, handbags,
`sunglasses, fragrances, home furnishings and
`accessories; online retail store services for clothing,
`footwear, fashion accessories, jewelry, watches,
`handbags, sunglasses, fragrances, home furnishings
`and accessories
`IC 41: Providing entertainment news and
`information in the fields of fine art, film, music,
`theater, and dance through an Internet website portal
`and social media sites entertainment services,
`namely, organizing sporting and cultural events
`IC 45: Providing news and information in the fields
`of fashion and personal lifestyles through an Internet
`website
`IC 25: Clothing-Namely, Neckties, Scarves, Belts,
`Footwear, Shirts, Coats, Hats, Dresses, and Bathing
`Suits
`
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 11 of 27
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`Mark
`
`Reg’n No.
`1,464,522
`
`Reg’n Date
`11/10/1987
`
`3,376,129
`
`01/29/2008
`
`4,567,107
`
`07/15/2014
`
`3,470,140
`
`07/22/2008
`
`3,039,629
`
`01/10/2006
`
`Class and Goods/Services
`IC 14: watches, cufflinks, made or coated with
`precious metal, bracelets, pendants, earrings, made
`or coated with precious metals, rings, and necklaces
`IC 18: Wallets, purses, handbags, shoulder bags, tote
`bags, business card cases, credit card cases, partly
`and wholly of leather, suitcases and duffles
`
`IC 9: Protective covers and cases for mobile
`electronic communications devices and computers;
`cell phone straps
`IC 18: Shoulder bags, clutch bags, backpacks,
`document cases, cosmetic cases sold empty,
`briefcases, suitcases, general purpose trolley bags,
`laptop carrying cases, luggage, duffle bags, tote
`bags, all of the foregoing being made in whole or in
`part of leather
`IC 6: metal key rings
`IC 14: Jewelry, namely, earrings, pendants, rings,
`necklaces and watches; key rings of precious metal
`IC 25: Apparel, namely, neckties, scarves, shirts,
`sweaters, coats, hats, dresses, bathing suits, and
`gloves
`IC 25: footwear and belts
`
`5,073,022
`
`11/01/2016
`
`IC 18: handbags and wallets
`IC 25: belts and footwear
`
`4,220,947
`
`4,583,258
`
`Oct. 09, 2012 Class 14: Jewelry
`Class 18: Wallets, purses, handbags, shoulder bags,
`clutch bags, tote bags, business card cases, credit
`card cases partly and wholly of leather, key cases,
`cosmetic cases sold empty, briefcases, attaché cases,
`valises, suitcases and duffel bags
`Class 25: Neckties, scarves, belts, footwear and
`gloves
`IC 9: Protective covers and cases for mobile
`electronic communications devices and computers;
`computer cases made of leather
`IC 14: Watches
`IC 18: Backpacks, general purpose trolley bags;
`baby bags, namely, bags for carrying babies'
`accessories
`IC 25: Clothing, namely, shirts and jackets
`
`08/12/2014
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`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 12 of 27
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`Mark
`
`Reg’n No.
`4,229,081
`
`Reg’n Date
`10/23/2012
`
`3,072,549
`
`03/28/2006
`
`3,072,547
`
`03/28/2006
`
`Class and Goods/Services
`IC 14: Jewelry
`IC 18: Wallets, purses, handbags, shoulder bags,
`clutch bags, tote bags, business card cases, credit
`card cases partly and wholly of leather, key cases,
`cosmetic cases sold empty, briefcases, attaché cases,
`valises, suitcases and duffel bags
`IC 25: Neckties, scarves, belts, footwear and gloves
`IC 18: Wallets, purses, handbags, shoulder bags,
`clutch bags, tote bags, business card cases, credit
`card cases, partly and wholly of leather, key cases,
`cosmetic cases sold empty, briefcases, attaché cases,
`valises, suitcases and duffles
`IC 25: neckties, scarves, belts, footwear and gloves
`
`5,421,749
`
`03/18/2013
`
`IC 18: Backpacks; briefcases and messenger bags
`
`4,567,112
`
`07/16/2015
`
`4,379,039
`
`08/06/2013
`
`IC 9: Eyeglasses and sunglasses; protective covers
`and cases for mobile electronic communication
`devices and computers; cell phone straps; computer
`carrying cases
`IC 14: Jewelry and key rings of precious metal
`IC 18: Cosmetic cases sold empty, luggage, duffle
`bags
`IC 25: Shorts, pants, jeans, leggings, t-shirts, polo
`shirts, shirts, sweaters, sweatshirts, dresses, skirts,
`swimwear, one piece garments for infants and
`toddlers, cloth bibs, scarves, ties, hats, gloves, belts
`
`Printouts detailing the registration information for the above marks are attached
`37.
`hereto as Exhibit 3. The above-referenced registrations are valid, well-known, subsisting, and in full
`force, and serve as prima facie evidence of Gucci’s exclusive rights in and to the Gucci Marks.
`Additionally, several of the registrations referenced have become incontestable under Section 15 of
`the Lanham Act, 15 U.S.C. § 1065, and thus constitute conclusive evidence of Gucci’s exclusive
`right to use these marks on the goods specified in the registrations pursuant to Sections 7 and 33 of
`the Lanham Act, 15 U.S.C. §§ 1057, 1115(b).
`
`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 13 of 27
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`Gucci is committed to protecting and safeguarding its intellectual property rights and
`38.
`assets in order to ensure that Gucci’s unique and valuable creativity and heritage is preserved,
`safeguarded, and enforced. Gucci invests substantial time and resources to intellectual property
`enforcement programs and strategies that protect consumers and clients from counterfeit and
`infringing products sold online and offline.
`39.
`Gucci values intellectual property rights and maintains a strong and consistent
`approach which combats counterfeiting at the manufacturing, distribution, promotion, and selling
`levels and across channels and platforms. Gucci actively cooperates and collaborates with Customs
`and other law enforcement agencies in the US and around the world to identify and combat
`counterfeiting and it routinely pursues legal action to stop online counterfeiting operations,
`networks, and clusters.
`40.
`Gucci regularly monitors websites, including social media, online marketplaces, and
`physical stores to detect and stop infringements. Among its many enforcement partnerships, Gucci
`works cooperatively with platforms such as Facebook and Instagram, as well as retailers, to identify
`and remove counterfeit goods.
`41.
`Through the efforts of a dedicated and skilled in-house team and through significant
`investments, Gucci has implemented a best-in-class approach to its trademark enforcement, and
`continues to innovate in this field.
`42.
`Gucci, along with its affiliates, successfully seizes millions of units’ worth of
`counterfeit products each year, and disables countless online accounts and infringing online listings
`as part of its enforcement efforts.
`43.
`Partnering with Facebook, Gucci is bringing this action to deter the repeated
`counterfeiting of Defendant, who is running a sophisticated counterfeiting scheme to sell replica
`GUCCI goods at high price points for counterfeits.
`E.
`Overview of Defendant’s Counterfeiting Business
`44.
`Since at least April 2020, Defendant has used a web of Facebook and Instagram
`accounts to promote her business and direct traffic to her Websites in violation of the Terms. On her
`/ / /
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`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 14 of 27
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`Websites, Defendant sold “high-precision copies of branded clothing . . . at mass market prices,”
`“luxury copies,” and “pirate[d]” fashions. Exhibit 1.
`45.
`As of October 2020, the Defendant Websites listed dozens of counterfeit products for
`sale organized by designer brand name, including Gucci. Exhibit 4. On her Websites, as well as on
`Facebook and Instagram, Defendant has used spurious marks that are identical to, or substantially
`indistinguishable from, or are otherwise confusingly similar to the Gucci Marks, without Gucci’s
`authorization. Defendant has used these spurious marks in connection with a wide array of products,
`including jackets, shirts, sweaters, sweatshirts, skirts, scarves, belts, footwear, hats, face masks,
`handbags, backpacks, watches, sunglasses and bedding.
`46.
`Defendant offered and sold Gucci-branded goods that were not genuine products of
`Gucci and that were materially different from Gucci’s genuine products.
`Further, Defendant was not an authorized reseller of authentic Gucci goods. Defendant’s actions
`were not approved by Gucci.
`F.
`Defendant Accepted the Facebook and Instagram Terms
`47.
`Between at least April 2011 and April 26, 2021, Defendant accepted and was bound
`by the Terms. Defendant created and used multiple Facebook accounts, Facebook Pages, and
`Instagram accounts and agreed to the Facebook TOS and Commercial Terms, and the Instagram
`TOU. In total, Defendant operated more than five Facebook accounts and more than 150 Instagram
`accounts across multiple devices. Several of these Instagram accounts included the word “Gucci” in
`the username, including “luxprime_gucci” and “gucci_sumo4kina_.”
`G.
`Defendant Promoted the Sale of Counterfeit Goods in Violation of the Terms
`48.
`Between at least April 2020 and April 26, 2021, Defendant used her web of Facebook
`and Instagram accounts to advance her counterfeit business and publish posts promoting counterfeit
`goods offered for sale on the Defendant Websites. Defendant used Gucci-branded products in these
`promotional posts.
`49.
`For example, on December 7, 2018, Defendant and her counterfeit business created
`an Instagram account with the username “luxprime_gucci,” which Defendant used to promote the
`Defendant Website www.lux-prime.ru. Figure 1 is a screenshot of the account bio including a link
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`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 15 of 27
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`to Defendant’s Website, contact information for the Defendant, and a Gucci-branded handbag in the
`profile picture. On April 21, 2021, Facebook disabled the “luxprime_gucci” account for violating
`Instagram’s TOU against violating third parties’ intellectual property rights.
`Figure 1: Defendant’s Counterfeit Gucci Handbag and Instagram Account Bio2
`
`On November 6, 2019, Defendant and her counterfeit business created an Instagram
`50.
`account with the username “gucci_sumo4kina_.” Between May 21, 2020 and September 5, 2020,
`this account published posts promoting Gucci-branded bedding, t-shirts, and sneakers offered for
`sale on Defendant’s Website www.brends-msk.ru. Figure 2 is a screenshot of a May 21, 2020 post
`including a link to the Defendant Website, contact information for the Defendant, and Gucci-
`branded bedding. On January 26, 2021, Facebook disabled the “gucci_sumo4kina_” account for
`violating Instagram’s TOU against violating third parties’ intellectual property rights based on a
`report.
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`2 Exhibit Nos. 1-2, 4, and 5 and Figures 1-2 reflect machine translations using open source tooling to
`convert Russian text to English. Telephone numbers have been redacted from Figure 2.
`COMPLAINT; DEMAND FOR JURY TRIAL
`CASE NO. 3:21-cv-3036
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`Case 3:21-cv-03036 Document 1 Filed 04/26/21 Page 16 of 27
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`Figure 2: Defendant’s Counterfeit Gucci Bedding
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`In December 2020, Gucci purchased a counterfeit handbag from Defendant’s Website
`51.
`brends-msk.ru. Specifically, on December 11, 2020, Defendant sold Gucci’s agent a counterfeit
`Gucci handbag through the Defendant Website brends-msk.ru and which had been promoted on
`Instagram. Exhibits 5-6. On January 6, 2021, Gucci’s agent received the handbag from Defendant in
`San Francisco, California. Gucci examined t