Case: 1:22-cv-05504 Document #: 1 Filed: 10/07/22 Page 1 of 25 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`THE GILLETTE COMPANY LLC,
`
`Plaintiff,
`
`v.
`
`THE INDIVIDUALS, CORPORATIONS,
`LIMITED LIABILITY COMPANIES,
`PARTNERSHIPS, UNINCORPORATED
`ASSOCIATIONS AND OTHERS IDENTIFIED
`IN SCHEDULE “A” HERETO,
`
`Defendants.
`
`Case No.: 22-cv-05504
`
`Judge:
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`COMPLAINT
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`Plaintiff, THE GILLETTE COMPANY LLC (“Plaintiff”), by and through its undersigned
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`counsel, Ulmer & Berne LLP, hereby brings the present action against the individuals,
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`corporations, limited liability companies, partnerships, unincorporated associations and others
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`identified in Schedule A attached hereto (collectively, “Defendants”), and hereby alleges as
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`follows:
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`JURISDICTION AND VENUE
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`1.
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`This Court, the United States District Court for the Northern District of Illinois,
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`Eastern Division (hereinafter, the “Judicial District”), has original subject matter jurisdiction over
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`the claims contained in this Complaint pursuant to the provisions of the Lanham Act, 15 U.S.C. §
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`1051 et seq.; 28 U.S.C. § 1338(a) - (b) and 28 U.S.C. § 1331. This Court also has jurisdiction over
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`the claims contained in this Complaint that arise under the laws of the State of Illinois pursuant to
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`28 U.S.C. § 1367(a), because the state law claims are so related to the federal claims that they form
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`

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`part of the same case or controversy and derive from a common nucleus of operative facts. This is
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`an action brought by Plaintiff, the owner of the Oral-B trademark, against several online sellers of
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`counterfeit Oral-B branded products, specifically counterfeit Oral-B electric toothbrush
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`replacement heads.
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`2.
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`Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may
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`properly exercise personal jurisdiction over Defendants since each of the Defendants directly
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`targets business activities towards consumers within the United States, including Illinois,
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`through at least the fully interactive commercial Internet stores operating under the Defendants’
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`Domain Names and/or the Online Marketplace Accounts identified in Schedule A attached
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`hereto (collectively, the “Defendants’ Internet Stores”). Specifically, Defendants are reaching
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`out to do business with Illinois residents by operating one or more commercial, interactive
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`Internet Stores through which Illinois residents can purchase products, including electric
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`toothbrushes, manual toothbrushes, toothbrush heads and oral hygiene apparatus, and other
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`goods bearing counterfeit versions of Plaintiff’s federally registered trademarks. Each of the
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`Defendants has targeted sales from Illinois residents by setting up and operating online stores
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`that offer shipping to the United States, including Illinois, accepting payment in U.S. dollars and,
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`on information and belief, has sold unauthorized products bearing counterfeit versions of
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`Plaintiff’s federally registered trademarks to residents of Illinois. Each of the Defendants is
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`committing tortious acts in Illinois, engaging in interstate commerce, and has wrongfully caused
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`Plaintiff substantial injury in the State of Illinois.
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`INTRODUCTION
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`3.
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`This action has been filed by Plaintiff to combat e-commerce store operators who
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`trade upon Plaintiff’s reputation and goodwill by offering for sale and/or selling unauthorized and
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`2
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`unlicensed products, including Oral-B electric toothbrush replacement heads which use infringing
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`and counterfeit versions of Plaintiff’s federally registered trademarks (the “Counterfeit Plaintiff
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`Products”).
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`4.
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`Defendants created numerous Defendants’ Internet Stores that are designed to
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`appear to be selling genuine Oral-B products, but in actuality they are selling inferior imitations
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`of products bearing Plaintiff’s federally registered trademarks to unknowing consumers. The
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`Defendants’ Internet Stores share unique identifiers, such as design elements and similarities of
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`the unauthorized counterfeit products offered for sale, establishing a logical relationship between
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`them and suggesting that Defendants’ illegal operations arise out of the same transaction,
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`occurrence, or series of transactions or occurrences. Defendants attempt to avoid liability by going
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`to great lengths to conceal both their identities and the full scope and interworking of their illegal
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`counterfeiting operation. Plaintiff is forced to file this action to combat Defendants’ counterfeiting
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`of Plaintiff’s registered trademarks as well as to protect unknowing consumers from purchasing
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`unauthorized counterfeit products over the Internet. Plaintiff has been and continues to be
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`irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable
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`trademarks as a result of Defendants’ actions and seek injunctive and monetary relief.
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`5.
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`This Court has personal jurisdiction over each Defendant, in that each Defendant
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`conducts significant business in Illinois and in this Judicial District, and the acts and events giving
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`rise to this lawsuit, of which each Defendant stands accused, were undertaken in Illinois and within
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`this Judicial District. In addition, each Defendant has offered to sell and ship infringing products
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`into this Judicial District.
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`3
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`THE PLAINTIFF
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`6.
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`Plaintiff, The Gillette Company LLC, is a limited liability company organized and
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`existing under the laws of Delaware with its principal place of business in the state of
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`Massachusetts. The Procter & Gamble Company, a corporation with its principal place of business
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`in the state of Ohio, is the sole member of Plaintiff. Plaintiff supplies its trademarked goods
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`through a distributor, The Procter & Gamble Distributing LLC (the “Distributor”), and the written
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`agreement specifically grants the Distributor the right to use Plaintiff’s trademarks, including the
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`trademarks identified in paragraphs 14 and 15 below. Plaintiff, therefore, is the proper plaintiff to
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`bring this action.
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`7.
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`The Oral-B electric toothbrushes and toothbrush heads, which prominently display
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`the internationally recognized and federally registered Plaintiff’s trademarks (collectively, the
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`“Genuine Oral-B Products”), are enormously popular and sold throughout the United States.
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`Genuine Oral-B Products are made with exacting and high quality standards and employ a
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`distinctive design. In the United States, Plaintiff’s brands have come to symbolize high-quality
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`and Genuine Oral-B Products are well recognized.
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`8.
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`The exacting and high quality standards used in the manufacture of Genuine Oral-
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`B Products are also required by law. Genuine Oral-B Products are regulated medical devices in
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`the United States under the U.S. Food and Drug Administration. Counterfeit electric toothbrush
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`replacement heads pose a significant health and safety concerns to Americans around the country
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`and residents of Illinois within the Judicial District. Genuine Oral-B branded electric toothbrushes
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`have received a seal of approval from the American Dental Association (“ADA”) and fully comply
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`with Food, Drug and Cosmetic (“FD&C”) Act regulatory requirements, including consumer
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`warnings. Oral-B models were the first electric toothbrush brand accepted by the ADA.
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`4
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`9.
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`Oral-B was first used in commerce in 1949 and became a registered trademark for
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`toothbrushes in 1951. Oral-B is common household names in American households across the
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`country and are synonymous with quality, hygienic safety, reliability and value.
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`10.
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`Oral-B produces a well-known line of trademarked products including Oral-B
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`ProfessionalCare, Oral-B Vitality, Oral-B Healthy Clean, Oral-B Complete Advantage, Oral-B
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`Crossaction, Oral-B Flossaction, Oral-B Precision Clean, Oral-B, Genius, Oral-B Clic, Splash
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`Oral-B, Oral-B Guide, Oral-B IO, Oral-B Radiant White and Oral-B Pro-Expert, amongst others.
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`11.
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`Oral-B products have become enormously popular in the decades they have been
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`sold, driven by the brand’s arduous quality standards and innovative designs. The Oral-B brands
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`resonate with both adults and children, and Oral-B products are among the most recognizable in
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`the United States. Oral-B products are distributed and sold to consumers through retailers
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`throughout the United States, including through authorized retailers in Illinois such as Target, Wal-
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`Mart, CVS, Walgreens, Bed Bath & Beyond, and many others.
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`12.
`
`Long before Defendants’ acts described herein, Plaintiff launched its Oral-B
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`products bearing its famous logos and registered trademarks. For generations, Plaintiff’s brand has
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`been a world leader in the field of toothbrushes.
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`13.
`
`The Oral-B trademarks have been in use for many years and electric toothbrush and
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`toothbrush heads products have been continuously sold under the Oral-B trademarks. As a result
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`of this long-standing use, strong common law trademark rights have amassed in the Oral-B
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`trademarks. The consistent use of the marks has also built substantial goodwill in and to the Oral-
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`B Trademarks. The Oral-B trademarks are famous marks and valuable assets of Plaintiff. Oral-B
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`products typically include at least one of the registered Oral-B trademarks or brand logos.
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`5
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`14.
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`Plaintiff incorporates a variety of distinctive marks in the promotion and sale of its
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`various products. As a result of its long-standing use, Plaintiff owns common law trademark rights.
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`15.
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`Several of the Plaintiff’s trademarks are registered with the United States Patent
`
`and Trademark Office (collectively referred to as “Plaintiff’s Trademarks”), a non-exclusive list
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`of which is included below:
`
`Registration
`Number
`547,130
`
`Trademark
`
`ORAL B
`
`Registration
`Date
`Aug. 28, 1951
`Incontestable
`
`Goods and Services
`
`CL 21 toothbrushes
`
`1,197,304
`
`ORAL-B
`
`Jun. 8, 1982
`Incontestable
`
`CL 21 toothbrushes
`
`2,298,879
`
`CROSSACTION
`
`2,910,847
`
`2,944,920
`
`ORAL-B
`
`ORAL-B
`PROFESSIONALCARE
`
`Dec. 7, 1999
`Incontestable
`Dec. 14, 2004
`Incontestable
`Apr. 26, 2005
`Incontestable
`
`CL 21 toothbrushes
`
`CL 21 toothbrushes, dental floss,
`and denture brushes
`CL 21 electric toothbrushes and
`replacement parts therefor
`
`3,018,380
`
`FLOSSACTION
`
`3,262,448
`
`ORAL-B VITALITY
`
`3,573,034
`
`DUAL CLEAN
`
`3,355,080
`
`VITALITY
`
`3,409,807
`
`PRECISION CLEAN
`
`3,423,453
`
`FLOSS ACTION
`
`3,797,005
`
`ORAL-B COMPLETE
`ADVANTAGE
`
`CL 21 toothbrushes
`
`CL 21 toothbrushes
`
`CL 21 Replacement heads for
`toothbrushes
`CL 21 toothbrushes
`
`CL 21 Replacement heads for
`toothbrushes
`CL 21 Replacement heads for
`toothbrushes
`CL 21 toothbrushes
`
`Nov. 22, 2005
`Incontestable
`Jul. 10, 2007
`Incontestable
`Feb. 10, 2009
`Incontestable
`December 18,
`2007
`Incontestable
`Apr. 8, 2008
`Incontestable
`May 6, 2008
`Incontestable
`Jun. 1, 2010
`Incontestable
`
`6
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`3,935,316
`
`SENSITIVE CLEAN
`
`3,967,424
`
`4,056,470
`
`ORAL-B HEALTHY
`CLEAN
`ORAL-B
`
`March 22,
`2011
`Incontestable
`May 24, 2011
`Incontestable
`Nov. 15, 2011
`Incontestable
`
`CL 21 Replacement heads for
`toothbrushes and rechargeable
`handles for toothbrushes
`CL 21 Manual toothbrushes
`
`CL 3 mouthwash and mouth rinse;
`anti-cavity dental rinse;
`
`CL 5 medicated topical fluoride
`gels for application to the teeth;
`anti-cavity dental coating
`preparations containing fluoride;
`
`CL 10 disposable trays for topical
`applications of dental medications;
`
`5,161,903
`5,869,073
`
`6,030,048
`
`ORAL-B GENIUS
`PRECISION CLEAN
`
`ORAL-B CLIC
`
`6,149,246
`
`SPLASH ORAL-B
`
`CL 21 toothbrushes, denture
`brushes, interdental brushes,
`replacement heads for
`toothbrushes; dental floss
`Mar. 14, 2017 CL 21 power toothbrushes
`Sep. 24, 2019 CL 21 Replacement heads for
`toothbrushes
`Apr. 7, 2020 CL 21 Tooth brushes;
`Electric toothbrush replacement
`heads
`Sep. 8, 2020 CL 21 Tooth brushes
`
`6,171,425
`
`ORAL-B GUIDE
`
`Oct. 6, 2020 CL 9 Smart audio speakers with
`virtual personal assistant
`capabilities; video screens;
`
`CL 21 Toothbrushes;
`manual toothbrushes;
`electric toothbrushes; heads for
`electric toothbrushes
`
`7
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`16.
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`Plaintiff also has three relevant pending applications for trademarks with the United
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`States Patent and Trademark Office (“USPTO”), including for Oral-B Radiant White (Serial #:
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`90348051) and Oral-B Pro-Expert (Serial #: 90604862).
`
`17.
`
`The above U.S. registrations for Plaintiff’s Trademarks are valid, subsisting, in full
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`force and effect and incontestable (where noted as such) pursuant to 15 U.S.C. § 1065. The
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`registrations for Plaintiff’s Trademarks constitute prima facie evidence of their validity and of
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`Plaintiff’s exclusive right to use Plaintiff’s Trademarks pursuant to 15 U.S.C. § 1057(b). Plaintiff’s
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`Trademarks have been used exclusively and continuously by Plaintiff for many years and have
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`never been abandoned. Plaintiff has also registered its trademarks with the USPTO for which true
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`and correct copies of the United States Registration certificates for the above-listed trademarks are
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`included in Exhibit 1 attached hereto.
`
`18.
`
`Plaintiff’s Trademarks are exclusive to Plaintiff and are displayed extensively on
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`Genuine Oral-B Products and in marketing and promotional materials. Plaintiff’s Trademarks have
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`been the subject of substantial and continuous marketing and promotion at great expense. In fact,
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`significant resources are spent annually in advertising, promoting and marketing featuring
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`Plaintiff’s Trademarks. These promotional efforts include — by way of example, but not limitation
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`— substantial print media, websites, social media sites, and point of sale materials. Because of
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`these and other factors, Plaintiff’s Trademarks have become famous throughout the United States.
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`19.
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`Plaintiff’s Trademarks are distinctive when applied to Genuine Oral-B Products,
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`signifying to the purchaser that the products come from Plaintiff and are manufactured to Plaintiff’s
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`quality standards. Genuine Oral-B Products are manufactured to the highest quality standards.
`
`20.
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`Plaintiff’s Trademarks qualify as famous marks, as that term is used in 15 U.S.C.
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`§1125 (c)(1) and have been continuously used and never abandoned. The innovative marketing
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`8
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`and product designs of the Genuine Oral-B Products have enabled the Oral-B brand to achieve
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`widespread recognition and fame and have made Plaintiff’s Trademarks some of the most well-
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`known marks in the electric toothbrush and electric toothbrush head industry. The widespread
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`fame, outstanding reputation, and significant goodwill associated with the Oral-B brands have
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`made the Plaintiff’s Trademarks valuable assets to Plaintiff.
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`21.
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`Genuine Oral-B Products have also been extensively promoted on
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`the
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`www.ORALB.com website. Sales of Genuine Oral-B Products are significant, and consumers can
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`purchase authentic Oral-B branded products on this website. The website features proprietary
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`content, images and designs exclusive to Plaintiff’s brand and trademarks.
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`22.
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`Genuine Oral-B Products and Plaintiff’s Trademarks have received significant
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`unsolicited media coverage for many years, including in national publications as well as in
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`numerous national television programs, online publications and websites.
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`23.
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`Sales of Genuine Oral-B Products have, over the years, well exceeded one billion
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`dollars. Since the initial launch of the Genuine Oral-B Products, Plaintiff’s Trademarks have been
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`the subject of substantial and continuous marketing and promotion. Plaintiff’s Trademarks are
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`consistently marketed and promoted in the industry and to consumers through traditional print
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`media, television and radio commercials, billboard advertising, websites, social media platforms,
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`product packaging and point of sale materials.
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`24.
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`Substantial time, money, and other resources have been spent in developing,
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`advertising, and otherwise promoting Plaintiff’s Trademarks. In fact, millions of dollars have been
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`spent in advertising, promoting and marketing featuring the Plaintiff’s Trademarks. Genuine Oral-
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`B Products have also been the subject of extensive unsolicited publicity resulting from their high-
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`quality, innovative designs. As a result, products bearing the Plaintiff’s Trademarks are widely
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`recognized and exclusively associated by consumers, the public, and the industry as being high-
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`quality products sourced from Plaintiff. Genuine Oral-B Products have become among the most
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`popular of their kind in the U.S.
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`25.
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`Plaintiff’s Trademarks have achieved tremendous fame and recognition which has
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`only added to the inherent distinctiveness of the marks. Oral-B’s products are consistently ranked
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`among the best, highest quality electric and manual toothbrushes. Indeed, Oral-B is one of the
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`United States’ most popular toothbrush brands. As such, the goodwill associated with the
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`Plaintiff’s Trademarks is of incalculable and inestimable value to Plaintiff.
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`THE DEFENDANTS
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`26.
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`Defendants are individuals and business entities of unknown makeup who, upon
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`information and belief, understand they are selling counterfeit Oral-B products. Defendants
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`conduct business throughout the United States, including Illinois and within this Judicial District,
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`through the operation of the fully interactive commercial websites and online marketplaces
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`operating under the Defendants’ Internet Stores. Each Defendant targets the United States,
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`including Illinois, and has offered to sell and, on information and belief, has sold and continues
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`to sell unauthorized, Counterfeit Plaintiff’s Products to consumers within the United States,
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`including the State of Illinois and this Judicial District. Defendants have the capacity to be sued
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`pursuant to Federal Rule of Civil Procedure 17(b).
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`27.
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`Upon information and belief, Defendants are an interrelated group of
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`counterfeiters working in active concert to knowingly and willfully manufacture, import,
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`distribute, offer for sale, and sell products using unauthorized counterfeit versions of the
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`Plaintiff’s Trademarks in the same transaction, occurrence, or series of transactions or
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`occurrences. Tactics used by Defendants to conceal their identities and the full scope of their
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`10
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`operation make it virtually impossible for Plaintiff to learn Defendants’ true identities and the
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`exact interworking of their network. In the event that Defendants provide additional credible
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`information regarding their identities, Plaintiff will take appropriate steps to amend its
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`Complaint.
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`28.
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`Because the Defendants are selling counterfeit products that are regulated
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`medical devices under U.S. law, the severity of this counterfeiting activity is even more
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`pronounced than usual. A counterfeit Oral-B electric toothbrush or replacement head having just
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`a little extra plastic material on a moving part can cause significant product failure and harm to
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`the user. Indeed, purchasers of counterfeit Oral-B product have complained of choking, split
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`gums, distress, and swallowing scares.
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`THE DEFENDANTS’ UNLAWFUL CONDUCT
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`29.
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`The success of Plaintiff’s brand has resulted in its counterfeiting. Consequently,
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`Plaintiff has a worldwide brand protection program and regularly investigates suspicious online
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`marketplace listings identified in proactive Internet sweeps and reported by consumers. Plaintiff
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`has identified numerous domain names linked to fully interactive websites and marketplace
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`listings on platforms such as Amazon.com, Inc., eBay Inc., Joom.com and Walmart.com
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`including the Defendants’ Internet Stores, which were offering for sale, selling, and importing
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`Counterfeit Plaintiff’s Products to consumers in this Judicial District and throughout the United
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`States. Despite Plaintiff’s enforcement efforts, Defendants have persisted in creating the
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`Defendants’ Internet Stores.
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`30.
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`The combined traffic to 48 websites selling counterfeit goods was more than
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`240,000 visits per day on average, or more than 87 million visits per year. See Exhibit 2, a
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`January 2011 Mark Monitor report entitled “Traffic Report: Online Piracy and Counterfeiting.”
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`11
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`Internet websites like the Defendants’ Internet Stores are estimated to receive tens of millions of
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`visits per year and generate over $135 billion in annual online sales. See Exhibit 3, a 2012 Mark
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`Monitor article entitled "White Paper: Seven Best Practices for Fighting Counterfeit Sales
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`Online." According to an Intellectual Property Rights (IPR) Seizures Statistics Report issued by
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`the Department of Homeland Security, the manufacturer’s suggested retail price (MSRP) of
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`goods seized by the U.S. government in fiscal year 2020 was over $1.3 billion. See Exhibit 4,
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`“Intellectual Property Rights: Fiscal Year 2020 Seizure Statistics” prepared by the U.S. Customs
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`and Border Protection Office of Trade. E-commerce sales, including those through third-party
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`platforms, resulted in a sharp increase in small packages into the U.S. annually. It is estimated
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`that 260 million packages are shipped through the mail and 89% of all intellectual property rights
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`seizures take place in the international mail and express mail environments. Counterfeiters also
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`ship products in small quantities via international mail to minimize detection by U.S. Customs
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`and Border Protection (“CBP”). Over 90% of all CBP intellectual property seizures were smaller
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`international mail and express shipments (as opposed to large shipping containers). See Exhibit
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`5, “Intellectual Property Rights: Fiscal Year 2017 Seizure Statistics” prepared by the U.S.
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`Customs and Border Protection Office of Trade.
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`31.
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`Internet websites like the Defendants’ Internet Stores are also estimated to
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`contribute to tens of thousands of lost jobs for legitimate businesses and broader economic
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`damages such as lost tax revenue every year. See Exhibit 6, a Frontier Economics report prepared
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`for BASCAP (Business Action to Stop Counterfeiting and Piracy) and INTA (The International
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`Trademark Association) entitled “The Economic Impacts of Counterfeiting and Piracy.” In 2013
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`the estimated value of international and domestic trade in counterfeit and pirated goods was a
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`staggering 1.13 trillion and by 2022 is be estimated to be between $1.90 and 2.81 trillion, and
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`12
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`broader economic losses of more than $125 billion every year. Global employment losses due to
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`counterfeit goods were between 2 million and 2.6 million jobs in 2013, with job displacement
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`expected to double by 2022.
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`32.
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`Upon information and belief, Defendants facilitate sales by designing the
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`Defendants’ Internet Stores so that they appear to unknowing consumers to be authorized
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`retailers, outlet stores, or wholesalers selling genuine products. Defendants’ Internet Stores often
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`include content, images and design elements that make it very difficult for consumers to
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`distinguish such counterfeit sites from an authorized website. Defendants further perpetuate the
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`illusion of legitimacy by offering “live 24/7” customer service and using indicia of authenticity
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`and security that consumers have come to associate with authorized retailers, including the
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`McAfee® Security, VeriSign®, Visa®, MasterCard®, and PayPal® logos.
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`33.
`
`Plaintiff has not licensed nor authorized Defendants to use Plaintiff’s
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`Trademarks and none of the Defendants are authorized retailers of Genuine Oral-B Products.
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`34.
`
`Upon information and belief, Defendants deceive unknowing consumers by
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`using Plaintiff’s Trademarks without authorization within the content, text, and/or meta tags of
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`websites in order to attract various search engines looking for websites relevant to consumer
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`searches for Genuine Oral-B Products. Additionally, upon information and belief, Defendants use
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`other unauthorized search engine optimization (SEO) tactics and social media spamming so the
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`Defendants’ Internet Stores listings show up at or near the top of relevant search results and
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`misdirect consumers searching for Genuine Oral-B Products. Defendants only show Plaintiff’s
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`Trademarks in product images while using strategic item titles and descriptions that will trigger
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`their listings when consumers are searching for Genuine Oral-B Products. Further, Defendants
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`utilize similar illegitimate SEO tactics to propel new domain names to the top of search results
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`after others are shut down. As such, Plaintiff seeks to disable the Domain Names owned by
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`Defendants through which their counterfeit products are sold.
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`35.
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`On information and belief, Defendants have engaged in fraudulent conduct when
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`registering Defendants’ Domain Names by providing false, misleading and/or incomplete
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`information to e-commerce platforms. On information and belief, certain Defendants have
`
`anonymously registered and maintained Defendants’ Domain Names to prevent discovery of
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`their true identities and the scope of their e-commerce operation.
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`36.
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`Defendants go to great lengths to conceal their identities and often use multiple
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`fictitious names and addresses to register and operate their massive network of Defendants’ Internet
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`Stores. For example, many of Defendants’ names and physical addresses used to register their
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`Domain Names are incomplete, contain randomly typed letters, or fail to include cities or states.
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`Other Defendants’ Domain Names use privacy services that conceal the owners’ identity and contact
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`information. Upon information and belief, some of the tactics used by the Defendants to conceal
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`their identities and the scope and interworking of their counterfeit operations to avoid being shut
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`down include regularly creating new websites and online marketplace accounts on various platforms
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`using the identities listed in Schedule A to the Complaint, as well as other fictitious names and
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`addresses. Such Defendants’ Internet Store registration patterns are sophisticated and regularly
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`confuse consumers residing in the Judicial District.
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`37.
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`Defendants concurrently employ and benefit from substantially similar
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`advertising and marketing strategies. Even though Defendants operate under multiple fictitious
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`names, there are numerous similarities among the Defendants’ Internet Stores. For example, some of
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`the Defendants’ websites have identical layouts, even though different aliases were used to register
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`their respective domain names. In addition, the counterfeit products for sale in the Defendants’
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`Internet Stores bear similarities and indicia of being related to one another, suggesting that the
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`counterfeit products were manufactured by a common source and that Defendants are
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`interrelated. The Defendants’ Internet Stores also include other notable common features,
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`including use of the same domain name registration patterns, accepted payment methods,
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`checkout methods, meta data, shopping cart platforms, illegitimate SEO tactics, lack of contact
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`information, HTML user-defined variables, domain redirection, identically or similarly priced
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`items, volume sales discounts, similar hosting services, similar name servers, the same incorrect
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`grammar and misspellings and the use of the same text and images, including content copied
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`from Plaintiff’s official websites.
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`38.
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`In addition to operating under multiple fictitious names, Defendants in this case
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`and defendants in other similar cases against online counterfeiters use a variety of other common
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`tactics to evade enforcement efforts. For example, when counterfeiters like Defendants receive
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`notice of a lawsuit they will often register new domain names or online marketplace accounts
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`under new aliases and move website hosting to rogue servers located outside the United States
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`once notice of a lawsuit is received. Rogue servers are notorious for ignoring take down demands
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`sent by brand owners. Counterfeiters will also ship products in small quantities via international
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`mail to minimize detection by U.S. Customs and Border Protection (“CBP”). Over 90% of all
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`CBP intellectual property seizures were smaller international mail and express shipments (as
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`opposed to large shipping containers. A 2020 CBP media release on seizures of illicit goods from
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`China reports “the explosive growth of e-commerce has generated a substantial increase in
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`international mail and express consignment shipments. Foreign sellers are exploiting this trend
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`to ship counterfeit and other illicit goods into the United States and to commit other trade
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`violations.” See Exhibit 7, a September 2020 U.S. Customs and Border Protection Press Release
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`regarding Operation Mega Flex. For example, on average CBP processes more than 420,000
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`parcels of mail and 180,000 express consignment shipments from China each day. CBP has found
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`that approximately 12.5% of targeted parcels contain counterfeit goods or contraband.
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`39.
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`Third party service providers like those used by Defendants do not adequately
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`subject new sellers to verification and confirmation of their identities, allowing counterfeiters to
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`“routinely use false or inaccurate names and addresses when registering with these e-commerce
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`platforms.” See Exhibit 8, Daniel C.K. Chow, Alibaba, Amazon, and Counterfeiting in the Age
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`of the Internet, 40 NW. J. INT’L L. & BUS. 157, 186 (2020); See also, a report on “Combating
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`Trafficking in Counterfeit and Pirated Goods” prepared by the U.S. Department of Homeland
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`Security’s Office of Strategy, Policy, and Plans (Jan. 24, 2020) attached as Exhibit 9, which
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`found that on “at least some e-commerce platforms, little identifying information is necessary
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`for a counterfeiter to begin selling” and recommending that “significantly enhanced vetting of
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`third-party sellers” is necessary. Counterfeiters hedge against the risk of being caught and
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`having their websites taken down from an e-commerce platform by preemptively establishing
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`multiple virtual store-fronts. See Exhibit 9 at p. 22. Since platforms generally do not require a
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`seller on a third-party marketplace to identify the underlying business entity, counterfeiters can
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`have many different profiles that can appear unrelated even though they are commonly owned
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`and operated. See Exhibit 9 at p. 39. Further, “E-commerce platforms create bureaucratic or
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`technical hurdles in helping brand owners to locate or identify sources of counterfeits and
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`counterfeiters.” See Exhibit 8 at 186-187.
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`40.
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`In the summer of 2019, the USPTO partnered with the Federal Research
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`Division within the Library of Congress for research and analytical support examining various
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`aspects of domestic and international counterfeit trade, including the overall magnitude of the
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`markets, the impacts on the U.S. economy, the role of the private sector in limiting exploitations,
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`trends in trade via small parcels, risks to public health and safety, consumer attitudes toward such
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`products, and the use of social media to facilitate the sale of counterfeit. The resulting February
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`2020 report entitled U.S. Intellectual Property and Counterfeit Goods – Landscape Review of
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`Existing/Emerging Research found that as of 2018, counterfeiting is the largest criminal
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`enterprise in the world, with domestic and international sales of counterfeit and pirated goods
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`totaling between an estimated $1.7 trillion and $4.5 trillion a year—a higher amount than either
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`drug