Case: 1:20-cv-05233 Document #: 2 Filed: 09/03/20 Page 1 of 11 PageID #:2
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Shenzhen Qianhai Phoenix
`Networks Co., Ltd.,
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`Amazon.com Services, LLC
`and Amazon.com, Inc.,
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`Plaintiff,
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`v.
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`Defendants.
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`Case No. 1:20-cv-05233
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`Judge
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`Mag. Judge
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`Complaint
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`NOW COMES Shenzhen Qianhai Phoenix Networks Co., Ltd. (“Plaintiff”), by and through its
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`counsel at AU LLC and hereby brings this action against Amazon.com Services, LLC and
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`Amazon.com, Inc. (collectively, “Defendants”) and alleges as follows:
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`Introduction
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`1. This action is filed to combat Defendants’ trademark infringement and unfair trade practices
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`against a boutique company producing surgical-type face masks under its own registered
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`trademark HONRANE.
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`Parties
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`2. Plaintiff is a private company organized under the laws of China with an office and principal
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`place of Rm 201, Bldg. A, No.1, 1st Qianwan Road, Qianhai Shengang Cooperation Zone,
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`Shenzhen, China.
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`3. Defendant Amazon.com Services, LLC is a Delaware limited liability company that conducts
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`business throughout the United States including within the State of Illinois and this Judicial
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`District, through its retail sales operation on the Amazon.com marketplace. Defendant
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`Amazon.com Services, LLC targets the United States, including Illinois and this Judicial District,
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`and has sold, and on information and belief, will continue to sell HONRANE branded face
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`masks (“Infringing Products”) to consumers within the United States, including the State of
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`Illinois and this Judicial District.
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`4. Defendant Amazon.com, Inc. is a Delaware Corporation that conducts business throughout the
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`United States including within the State of Illinois and this Judicial District, through the
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`operation of its ubiquitous Amazon.com marketplace. Defendant Amazon.com, Inc. targets the
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`United States, including Illinois and this Judicial District, and has sold and/or shipped, and on
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`information and belief, will continue to sell and/or ship the Infringing Products to consumers
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`within the United States, including the State of Illinois and this Judicial District. Amazon.com,
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`Inc. and Amazon.com Services LLC are united in interest and shall be referred to, individually
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`and collectively, as “Defendants.”
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`Jurisdiction and Venue
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`5. This Court has original subject matter jurisdiction over the claims in this action pursuant to 15
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`U.S.C. § 1051, et seq., and 28 U.S.C. §§ 1331, 1338(a)-(b).
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`6. This Court has jurisdiction over the claims herein arising under the laws of the State of Illinois
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`pursuant to 28 U.S.C. § 1367(a), because the state law claims are so related to the federal claims
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`that they form part of the same case or controversy and derive from a common nucleus of
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`operative facts.
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`7. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may properly exercise
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`personal jurisdiction over Defendants because each Defendant directly targets its business
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`activities toward consumers in Illinois and this Judicial District. Specifically, Defendants shipped
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`at least one Infringing Product to residents of Illinois and on information and belief, have
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`shipped numerous Infringing Products to this State and Judicial District. Further, Defendants
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`operate a commercial, fully-interactive online marketplace through which residents of Illinois
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`and this Judicial District can purchase products being offered and sold under spurious versions
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`of Plaintiff’s trademark. Defendants have targeted sales from residents of Illinois and this
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`Judicial District by selling the Infringing Product directly on its marketplace and offers shipping
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`to addresses within Illinois and this Judicial District. Defendants have committed tortious acts
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`in Illinois and this Judicial District, is engaging in interstate commerce, and has wrongfully
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`caused Plaintiff substantial injury in the State of Illinois
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`Plaintiff’s Business
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`8. Since 2017, Plaintiff has been engaged in the design, distribution, and sale of various personal
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`care products (collectively, the “Plaintiff Products”) on an international basis, including within
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`the United States, under its registered trademark HONRANE (the “Mark”). The Plaintiff
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`Products are popular on the market and its trademark is recognized by consumers.
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`9. Plaintiff has spent considerable resources growing and protecting its brand.
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`10. Plaintiff is the owner of all rights, title and interest in and to the Mark.
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`11. Plaintiff uses its Mark in connection with the marketing of its products and has obtained a U.S.
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`trademark registration, as set forth below:
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`Reg. No.
`5,077,644
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`Mark
`HONRANE
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`Goods and Services
`Condoms; Love dolls; Massage apparatus;
`Pessaries; Sex toys; Surgical instruments and
`apparatus; Vibromassage apparatus; Electric
`massage apparatus for household use. in IC
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`12. A true and correct copy of the U.S. trademark certificate covering the Mark and its 2017 to
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`Plaintiff assignment is attached hereto as Exhibit A
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`13. Plaintiff has built substantial goodwill in and to the Mark which is a recognized and valuable
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`asset of Plaintiff.
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`14. Plaintiff has continuously used the Mark in U.S. interstate commerce in connection with the sale,
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`distribution, promotion, and advertising of genuine Plaintiff Products since as early as May 2017.
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`15. Genuine Plaintiff Products have become popular, driven by Plaintiff’s elevated quality standards
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`and innovative designs. Genuine Plaintiff Products are recognizable among the consuming
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`public and the Mark identifies, in the United States and around the world, high-quality personal
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`care products offered by Plaintiff.
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`16. Genuine Plaintiff Products have been distributed, promoted and sold on Amazon through select
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`licensed dealers. Plaintiff’s sales of Plaintiff Products have been significant.
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`17. As a result of Plaintiff’s longstanding use of its Mark in association with its high-quality
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`products, extensive sales, and significant marketing activities, the Mark has achieved recognition
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`among the consuming public and throughout U.S. interstate commerce.
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`18. The Mark is exclusive to Plaintiff and appears clearly on all Plaintiff Product packaging and
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`related advertisements. Plaintiff has expended substantial time, money, and other resources to
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`develop, advertise, promote, and protect the Mark. Accordingly, products bearing the Mark are
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`widely recognized and exclusively associated by the consuming public and the industry as being
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`high-quality personal products sourced from Plaintiff.
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`19. The Mark is distinctive when used in association with the sale of Plaintiff’s products, signifying
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`to the purchaser that the products come exclusively from Plaintiff and are made to Plaintiff’s
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`material specification.
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`The Problem of Counterfeit Masks
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`20. The coronavirus pandemic, in light of recommendations (if not outright orders) from federal,
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`state, and local government officials, has resulted in the explosion in the demand and sales of
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`surgical-type face masks.1
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`1 https://www.nytimes.com/2020/02/06/business/coronavirus-face-masks.html, last accessed September 3,
`2020
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`21. Unfortunately, certain commercial enterprises has attempted to capitalize on the rush to obtain
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`these products, and counterfeit surgical-type mask products have become a serious problem,2
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`prompting official guidance from the U.S. Centers for Disease Control (CDC)3 and other private
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`agencies.4
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`22. These counterfeit surgical-type masks are dangerous, insofar as they are being misrepresented as
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`having characteristics of the genuine product for which they are being confused; instead, their
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`provenance is questionable if not completely unknown, and thus whatever performance or
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`functional purpose the user presumes them to have is in-fact unknown.
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`Defendant’s Unlawful Conduct
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`23. Defendants frequently offered to sell surgical-type face masks under listings created by Plaintiff’s
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`authorized distributors on Amazon.com for the sale of HONRANE-branded surgical-type face
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`masks. The practice, often called “tag-along,” is a special mechanism on Amazon.com under
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`which sellers tag along another’s listing when the products offered are identical.
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`24. An example of Defendants’ “tag along” listings for Plaintiff’s Products using Plaintiff’s Mark
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`and Plaintiffs imagery are attached hereto as Exhibit B.
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`25. Amazon’s tag-along practice occurred in an intermittent manner presumably to avoid detection.
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`26. Plaintiff observed multiple incidents of Amazon tagging along listings with HONRANE-
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`branded face masks, and Plaintiff was able to conduct two (2) test purchases.
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`27. Each of the test purchases, which were made through Defendants’ “tag along” listings using
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`Plaintiff’s Mark, revealed that the products in-fact sold and shipped by Defendants are not
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`Plaintiff’s products.
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`2 https://www.businessinsider.com/coronavirus-china-confiscated-over-31-million-counterfeit-face-masks-
`report-2020-2
`3 https://www.cdc.gov/niosh/npptl/usernotices/counterfeitResp.html, last accessed September 3, 2020
`4 https://success.ada.org/~/media/CPS/Files/COVID/ADA_TipsToAvoidCounterfeitMasks.pdf
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`28. Specifically, on July 12, 2020, Plaintiff placed an order from Defendants’ tag-along buying
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`option, and received the order shipped by Defendants on or about July 23, 2020. The order ID
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`for the purchase is 112-3630535-2148226. The product received was determined to be not-
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`genuine as, inter alia, it did not arrive in HONRANE-branded packaging and contained a
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`“product qualified certificate” showing the product was made by a manufacturer that Plaintiff
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`does not utilize. True and correct copies of photographs of the first test purchase are attached
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`hereto as Exhibit C.
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`29. Further, on August 12, 2020, Plaintiff placed another order from Defendants’ tag-along buying
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`option, and received the order shipped to Illinois by Defendants on or about August 15, 2020.
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`The order ID for the second test purchase is 11-4835745-3876206. The product received was
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`determined to be not-genuine as, inter alia, it did not arrive in HONRANE-branded packaging
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`and was otherwise bereft of any source markings. True and correct copies of photographs of
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`the second test purchase are attached hereto as Exhibit D.
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`30. Plaintiff has not licensed or authorized the Defendants to use the Mark to offer and sell
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`HONRANE-branded products which are not manufactured or sold by Plaintiff, and Plaintiff
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`not licensed or authorized the Defendants to use the Mark to sell products made by third-
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`parties.
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`31. Defendants were using the Mark, without authorization, within its product listings’ titles and
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`prominently on a brand page for the Mark which also is not authorized by the Plaintiff.
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`32. Defendants, without any authorization or license from Plaintiff, have knowingly and willfully
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`used and will likely continue to use the Mark in connection with the advertisement, distribution,
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`offering for sale, and sale of Infringing Products.
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`33. As is shown in Exhibit B, the Defendants offer shipping to Illinois. On information and belief,
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`Defendants have sold and shipped numerous Infringing Products into Illinois and this Judicial
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`District.
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`34. Defendants’ unauthorized use of the Mark in connection with the advertising, distribution,
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`offering for sale, and sale of Infringing Products, including with respect to the sale of such
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`products into the United States, including specifically Illinois and this Judicial District, is likely to
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`cause and has caused confusion, mistake, and deception by and among consumers and is
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`harming Plaintiff.
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`Count I - Trademark Infringement and Counterfeiting (15 U.S.C. § 1114)
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`35. Plaintiff repeats, re-alleges, and incorporates by reference the allegations set forth in Paragraphs
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`1 through 34.
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`36. Plaintiff’s trademark infringement claims against Defendants are based on their unauthorized use
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`in commerce of counterfeit imitations of the federally-registered Mark in connection with the
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`advertising, distribution, offering for sale, and sale of Infringing Products, namely, surgical-type
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`mask of the type covered under Plaintiff’s Mark registration in IC 10.
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`37. The Mark is a distinctive mark, and consumers have come to expect superior quality from
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`Plaintiff Products advertised, distributed, offered, or sold under the Mark.
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`38. Defendants have advertised, distributed, offered to sell, sold, and will likely continue advertising,
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`distributing, offering to sell, and selling products using counterfeit reproductions of the Mark
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`without Plaintiff’s permission.
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`39. Plaintiff is the exclusive owner of the Mark.
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`40. Plaintiff’s registration for the Mark is in full force and effect.
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`41. Upon information and belief, Defendants are aware and have knowledge of Plaintiff’s rights in
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`the Mark and are willfully infringing it and intentionally using counterfeit reproductions thereof.
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`42. Defendants’ willful, intentional, and unauthorized use of the Mark is likely to cause and is
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`causing confusion, mistake, and deception as to the origin and quality of the Infringing Products
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`among the general public.
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`43. Defendants’ activities constitute willful trademark infringement and counterfeiting under 15
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`U.S.C. § 1114, 1116(d)(1)(B)(i).
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`44. Plaintiff has no adequate remedy at all and will suffer irreparable harm to its reputation and
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`goodwill of its well-known Mark if Defendants’ actions are not enjoined.
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`45. Defendants’ wrongful advertisement, offering to sell, and sale of Infringing Products have
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`directly and proximately caused injuries and damage to Plaintiff.
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`Count II - False Designation of Origin, Passing Off, and
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`Unfair Competition (15 U.S.C. § 1125(a))
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`46. Plaintiff repeats, re-alleges, and incorporates by reference the allegations set forth in Paragraphs
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`1 through 45.
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`47. The Mark is a distinctive trademark.
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`48. Defendants’ advertising, distribution, offering for sale, and sale of Infringing Products has
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`created and is creating a likelihood of confusion, mistake, and deception among the general
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`public as to the affiliation, connection, and/or association with Plaintiff or the origin,
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`sponsorship, or approval of Defendants’ Infringing Products by Plaintiff.
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`49. By using the Mark in association with the advertising, distribution, offering for sale, and sale of
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`the Infringing Products, Defendants create a false designation of origin and a misleading
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`representation of fact as to the true origin and sponsorship of the Infringing Products.
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`50. Defendants’ false designation of origin and misrepresentation of fact as to the origin and/or
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`sponsorship of the Infringing Products to the general public involves the willful use of spurious
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`marks and is a willful violation of 15 U.S.C. § 1125.
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`51. Plaintiff has no adequate remedy at all and will suffer irreparable harm to its reputation and
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`goodwill of its well-known Mark if Defendants’ actions are not enjoined.
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`Count III - Violation of the Uniform Deceptive Trade Practices Act (815 ILCS § 510, et seq.)
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`52. Plaintiff repeats, re-alleges, and incorporates by reference the allegations set forth in Paragraphs
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`1 through 51.
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`53. Defendants have engaged in acts which violate Illinois law including, without limitation: passing
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`off their Infringing Products as those of Plaintiff; cause a likelihood of confusion and/or
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`misunderstanding as to the source of their goods; causing a likelihood of confusion and/or
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`misunderstanding as to the affiliation, connection, or association with genuine Plaintiff Products;
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`representing that their products have Plaintiff’s approval when they do not; and engaging in
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`other conduct as described herein which creates a likelihood of confusion or misunderstanding
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`among the public.
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`54. Defendants’ foregoing acts constitute willful violations of the Illinois Uniform Deceptive
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`Trademark Practices Act, 815 ILCS § 510, et seq.
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`55. Plaintiff has no adequate remedy at all and will suffer irreparable harm to its reputation and
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`goodwill of its well-known Mark if Defendants’ actions are not enjoined.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff, Shenzhen Qianhai Phoenix Networks Co., Ltd., prays for judgment
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`against Defendants as follows:
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`1) That Defendants, their affiliates, officers, agents, servants, employees, attorneys, confederates,
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`and all persons acting for, with, by, through, under, or in concert with them be enjoined and
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`restrained from:
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`a. using the Mark or any reproductions, counterfeit copies, or colorable imitations thereof
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`in any manner in connection with the distribution, marketing, advertising, offering for
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`sale, or sale of any product that is not a genuine Plaintiff Product or is not authorized by
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`Plaintiff to be sold in connection with the Mark;
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`b. passing off, inducing, or enabling others to sell or pass off any product as a genuine
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`Plaintiff Product or any other product produced by Plaintiff that is not Plaintiff’s or is
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`not produced under the authorization, control, or supervision of Plaintiff and approved
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`by Plaintiff for sale under the Mark;
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`c. committing any acts calculated to cause consumers to believe that Defendants’
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`Infringing Products are those sold under the authorization, control, or supervision of
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`Plaintiff, or are sponsored by, approved by, or otherwise connected with Plaintiff;
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`d. further infringing the Mark and damaging Plaintiff’s goodwill; and
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`e. manufacturing, shipping, delivering, holding for sale, transferring or otherwise moving,
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`storing, distributing, returning, or otherwise disposing of, in any manner, products or
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`inventory not manufactured by or for Plaintiff, nor authorized by Plaintiff to be sold or
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`offered for sale, and which bear any of Plaintiff’s trademarks, including the Mark, or any
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`reproductions, counterfeit copies, or colorable imitations thereof;
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`f. operating and/or hosting websites which are involved with the distribution, marketing,
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`advertising, offering for sale, or sale products or inventory not authorized by Plaintiff
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`which bear the Mark;
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`2) That Defendants account for and pay to Plaintiff all profits realized by Defendants by reason of
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`Defendants’ unlawful acts herein alleged, and that the amount of damages for infringement of
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`the Mark be increased by a sum not exceeding three times the amount thereof as provided by 15
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`U.S.C. § 1117;
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`3) In the alternative, that Plaintiff be awarded statutory damages for willful trademark
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`counterfeiting pursuant to 15 U.S.C. § 1117(c)(2) of $2,000,000 for each and every unauthorized
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`use of the Mark;
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`4) That Plaintiff be awarded its reasonable attorneys’ fees and costs as available under 15 U.S.C. §
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`1117, 815 ILCS § 510/3, and other applicable law; and
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`5) The Plaintiff be awarded any and all other relief that this Court deems just and proper.
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`Dated September 3, 2020
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`Respectfully Submitted
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`/s/Adam E. Urbanczyk
`Adam E. Urbanczyk
`AU LLC
`564 W. Randolph St. 2nd Floor
`Chicago, IL 60661
`(312) 715-7312
`(312) 646-2501 (fax)
`adamu@au-llc.com
`ARDC No. 6301067
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`Counsel for Plaintiff Shenzhen Qianhai
`Phoenix Networks Co., Ltd.
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