Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 1 of 27
`
`Jason M. Drangel (JD 7204)
`jdrangel@ipcounselors.com
`Ashly E. Sands (AS 7715)
`asands@ipcounselors.com
`Kerry B. Brownlee (KB 0823)
`kbrownlee@ipcounselors.com
`Danielle S. Futterman (DY 4228)
`dfutterman@ipcounselors.com
`EPSTEIN DRANGEL LLP
`60 East 42nd Street, Suite 2520
`New York, NY 10165
`Telephone: (212) 292-5390
`Facsimile: (212) 292-5391
`Attorneys for Plaintiff
`Mattel, Inc.
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`
`
`
`MATTEL, INC.,
`
`Plaintiff
`
`v.
`
`WWW.POWER-WHEELS-OUTLET.COM,
`WWW.POWERWHEELS-SALE.COM and
`WWW.POWERWHEEL-US.SHOP,
`
`Defendants
`
`
`
`
`
`
`CIVIL ACTION NO. ___
`
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Jury Trial Requested
`
`FILED UNDER SEAL
`
`
`
`
`
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 2 of 27
`
`GLOSSARY
`
`Term
`Plaintiff or Mattel
`
`Definition
`Mattel, Inc.
`
`Defendants
`
`
`Cloudflare
`
`Dynadot
`
`Epstein Drangel
`New York Address
`Complaint
`Application
`
`Moore Dec.
`
`Futterman Dec.
`
`Mattel Products
`
`Power Wheels
`Products
`
`Power Wheels Marks
`
`www.power-wheels-outlet.com, www.powerwheels-
`sale.com and www.powerwheel-us.shop
`
`Cloudflare, Inc., with an address of 101 Townsend Street,
`San Francisco, California 94107, and any and all
`affiliated companies, which operate a cloud-based web
`infrastructure
`platform,
`available
`at
`www.cloudflare.com, that enables capabilities to host
`static websites on a content delivery network
`Dynadot, LLC, with an address of 210 S Ellsworth Ave
`#345 San Mateo, California 94401, and any and all
`affiliated companies, which operate an
`ICANN
`accredited domain name registrar and web hosting
`company, available at www.dynadot.com, that allows
`consumers to register domain names and create websites
`Epstein Drangel LLP, counsel for Plaintiff
`244 Madison Ave, Suite 411, New York, NY 10016
`Plaintiff’s instant Complaint
`Plaintiff’s ex parte application for: 1) a temporary
`restraining order; 2) an order restraining Defendants’
`Websites (as defined infra) and Defendants’ Assets (as
`defined infra) with the Financial Institutions (as defined
`infra); 3) an order to show cause why a preliminary
`injunction should not issue; 4) an order authorizing
`bifurcated and alternative service; and 5) an order
`authorizing expedited discovery
`Declaration of Michael Moore in Support of Plaintiff’s
`Application
`Declaration of Danielle S. Futterman in Support of
`Plaintiff’s Application
`Plaintiff’s children’s toys, games, playthings, and other
`products, and/or its iconic sub-brands, including, but not
`limited to: Barbie, UNO, Thomas & Friends, Hot
`Wheels, Power Wheels, American Girl and Fisher-Price
`Battery-powered ride-on vehicles for toddlers and
`preschoolers, that come in a variety of models including
`cars, trucks and ATVs
`U.S. Trademark Registration Nos.: 1,374,017 for
`“POWER WHEELS” for goods in Class 28; 1,671,657
`for “POWER WHEELS” for goods in Class 9; 5,504, 969
`
`for
`
`for goods in Classes 9 and 28; and
`
`iii
`
`
`
`
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 3 of 27
`
`Term
`
`Definition
`
`Plaintiff’s Website
`
`Defendants’ Websites
`
`Infringing Domain
`Names
`Defendants’ Assets
`
`Defendants’ Financial
`Accounts
`
`Financial Institutions
`
`for goods in Class 9
`5,763,877 for
`Plaintiff’s wholly owned subsidiary, Fisher Price’s fully
`interactive website,
`located at https://www.fisher-
`price.com
`Counterfeit Products Defendants’ products advertised, offered for sale and/or
`sold by Defendants via Defendants’ Websites (as defined
`infra), which use the Power Wheels Marks or at the very
`least, marks that are confusingly similar thereto
`Any and all fully interactive websites held by or
`associated with Defendants, their respective officers,
`employees, agents, servants and all persons in active
`concert or participation with any of them, that use the
`Power Wheels Marks, that they operate to communicate
`with consumers regarding their Counterfeit Products
`and/or through which consumers purchase Counterfeit
`Products for delivery in the U.S., including, without
`limitation, Defendants’ websites located at www.power-
`wheels-outlet.com and www.powerwheels-sale.com/;
`along with any and all of the domain names associated
`therewith, including the Infringing Domain Names
`www.power-wheels-outlet.com,
`www.powerwheels-
`sale.com and www.powerwheel-us.shop
`Any and all money, securities or other property or assets
`of Defendants (whether said assets are located in the U.S.
`or abroad)
`Any and all financial accounts associated with or utilized
`by any Defendants or any of Defendants’ Websites
`(whether said accounts are located in the U.S. or abroad)
`Any banks, financial institutions, credit card companies
`and payment processing agencies, such as PayPal Inc.
`(“PayPal”), Payoneer Inc., the Alibaba Group d/b/a
`Alibaba.com payment services (e.g., Alipay.com Co.,
`Ltd., Ant Financial Services Group), PingPong Global
`Solutions, Inc. and other companies or agencies that
`engage in the processing or transfer of money and/or real
`or personal property of Defendants
`Any third party providing services in connection with
`Defendants’ Counterfeit Products and/or Defendants’
`Websites, including, without limitation, Shopify, Internet
`Service Providers (“ISP”), back-end service providers,
`web designers, merchant account providers, any
`providing shipping and/or fulfillment services, website
`hosts (such as Cloudflare), domain name registrars (such
`as Dynadot) and domain name registries
`
`Third Party Service
`Providers
`
`
`
`iv
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 4 of 27
`
`Plaintiff, a corporation organized and existing under the laws of the State of Delaware, by and
`
`through its undersigned counsel, alleges as follows:1
`
`
`
`NATURE OF THE ACTION
`
`1.
`
`This action involves claims for counterfeiting of Plaintiff’s federally registered
`
`trademarks in violation of 15 U.S.C. §§ 1114(1)(a)-(b), 1116(d) and 1117(b)-(c); trademark
`
`infringement of Plaintiff’s federally registered trademarks in violation of § 32 of the Federal Trademark
`
`(Lanham) Act, 15 U.S.C. §§ 1051 et seq.; false designation of origin, passing off and unfair competition
`
`in violation of Section 43(a) of the Trademark Act of 1946, as amended (15 U.S.C. § 1125(a)); and
`
`cybersquatting in violation of the Anticybersquatting Consumer Protection Act (15 U.S.C. §1125(d))
`
`(the “Action”), arising from Defendants’ willful infringement of the Power Wheels Marks, including,
`
`without limitation, through Defendants’ prominent use of Plaintiff’s Power Wheels Marks on
`
`Defendants’ Websites and/or in connection with their advertisement, marketing, promotion, offering
`
`for sale and/or sale of their Counterfeit Products.
`
`
`
`2.
`
`This Court has federal subject matter jurisdiction over the claims asserted in this
`
`JURISDICTION AND VENUE
`
`Action pursuant to 28 U.S.C. §§ 1331 and 1338(a), as well as pursuant to 15 U.S.C. § 1121 as an action
`
`arising out of violations of the Lanham Act, 15 U.S.C. §§ 1051 et seq.; pursuant to 28 U.S.C. § 1338(b)
`
`as an action arising out of claims for false designation of origin and unfair competition; and pursuant to
`
`28 U.S.C. § 1332, as there is diversity between the parties and the matter in controversy exceeds,
`
`exclusive of interests and costs, the sum of seventy-five thousand dollars.
`
`
`
`
`1 Where a defined term is referenced, but not defined herein, it should be understood as it is defined in the Glossary.
`
`
`
`
`1
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 5 of 27
`
`3.
`
`Personal jurisdiction exists over Defendants in New York pursuant to N.Y.C.P.L.R. §
`
`302(a)(1) and/or N.Y.C.P.L.R. § 302(a)(3), or in the alternative, Federal Rule of Civil Procedure 4(k),
`
`because, upon information and belief, Defendants regularly conduct, transact and/or solicit business in
`
`New York; contract to supply goods (including Counterfeit Products) within New York; derive
`
`substantial revenue from their business transactions in New York; otherwise avail themselves of the
`
`privileges and protections of the laws of the State of New York such that this Court’s assertion of
`
`jurisdiction over Defendants does not offend traditional notions of fair play and due process; and/or
`
`Defendants’ illegal counterfeiting and infringing actions caused injury to Plaintiff in New York such
`
`that Defendants should reasonably expect such actions to have consequences in New York, for example:
`
`a. Upon information and belief, Defendants were and/or are systematically directing and/or
`
`targeting their business activities at consumers in the U.S., including New York, through
`
`Defendants’ Websites through which consumers in the U.S., including New York, can place
`
`orders for, receive invoices for, and purchase Counterfeit Products for delivery in the U.S.,
`
`including New York, as a means of establishing regular business with the U.S., including
`
`New York.
`
`b. Upon information and belief, Defendants are sophisticated sellers, operating commercial
`
`businesses through Defendants’ Websites, offering for sale and/or selling Counterfeit
`
`Products to consumers worldwide, including to consumers in the U.S., and specifically in
`
`New York.
`
`c. Upon information and belief, Defendants accept payment in U.S. Dollars and offer shipping
`
`to the U.S., including to New York.
`
`d. Upon information and belief, Defendants have transacted business with consumers located
`
`in the U.S., including New York, for the sale and shipment of Counterfeit Products.
`
`
`
`2
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 6 of 27
`
`e. Upon information and belief, Defendants are aware of Plaintiff, Plaintiff’s Power Wheels
`
`Marks, and Power Wheels Products, and are aware that their infringing actions, alleged
`
`herein, are likely to cause injury to Plaintiff in the U.S., and in New York.
`
`4.
`
`Venue is proper, inter alia, pursuant to 28 U.S.C. § 1391 because, upon information
`
`and belief, Defendants conduct, transact, and/or solicit business in this judicial district, are subject to
`
`personal jurisdiction in this judicial district, a substantial part of the events or omissions giving rise to
`
`the asserted counts occurred in this judicial district, and/or harm to Plaintiff has occurred in this district.
`
`
`
`THE PARTIES
`
`5.
`
`Plaintiff is a corporation organized and existing under the laws of the State of
`
`Delaware, with its principal place of business located at 333 Continental Boulevard, TWR 15-1, El
`
`Segundo, CA 90245.
`
`6.
`
`Upon information and belief, www.power-wheels-outlet.com is an individual or
`
`entity, believed to be located in China, that owns and/or operates Defendants’ Website available at
`
`www.power-wheels-outlet.com.
`
`7.
`
`Upon information and belief, www.powerwheels-sale.com is an individual or entity,
`
`believed to be located in China, that owns and/or operates Defendants’ Website available at
`
`www.powerwheels-sale.com.
`
`8.
`
`Upon information and belief, www.powerwheel-us.shop is an individual or entity,
`
`believed to be located in China, that owns and/or operates Defendants’ Website available at
`
`www.powerwheel-us.shop.
`
`9.
`
`Upon information and belief, Defendants are related and/or affiliated individuals or
`
`companies that have collectively engaged in the illegal conduct alleged herein, and have enriched
`
`themselves, while Plaintiff has suffered enormous financial injury.
`
`
`
`3
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 7 of 27
`
`10.
`
`Upon information and belief since the time of their creation, now, and all times
`
`relevant to this Action, such a unity of interest and ownership existed between Defendants, such that
`
`separate personalities do not in reality exist, based on the fact that Defendants’ Websites contain nearly
`
`identical features, functions, product descriptions, product listings and product prices.
`
`GENERAL ALLEGATIONS
`
`Plaintiff and Its Well-Known Power Wheels Products
`
`Mattel, through its family of companies, is a leading designer, developer, marketer,
`
`11.
`
`manufacturer and distributor of its well-known Mattel Products, including children’s toys and games
`
`offered under some of America’s most iconic and influential sub-brands, such as Barbie, UNO, Thomas
`
`& Friends, Hot Wheels, Power Wheels, American Girl and Fisher-Price.
`
`12.
`
`Since its founding in 1945, Mattel has been known for creating innovative Mattel
`
`Products and experiences that inspire, entertain, and empower children to develop through the world of
`
`play.
`
`13.
`
`Mattel sells its Mattel Products worldwide through major retailers, quality toy stores and
`
`online marketplaces, including, but not limited to: Wal-Mart, Target Stores, Walgreens, Amazon and many
`
`others.
`
`14.
`
`Mattel and its Mattel Products have been consistently recognized as leaders in the toy
`
`and entertainment categories. For example, in 2020 alone, Mattel was recognized with a total of
`
`four prestigious Toy of the Year Awards at the 2020 Toy Association’s annual Toy of the Year
`
`Awards: Action Figure of the Year (for Disney and Pixar Toy Story Basic Figures), Game of the
`
`Year (for Pictionary Air®), Infant/Toddler Toy of the Year (for Fisher-Price Linkimals®), and
`
`Vehicle of the Year (for Hot Wheels® Mario Kart™ Assorted Vehicle).
`
`15.
`
`In addition, in 2021, Mattel was identified as one of TIME’s 100 Most Influential
`
`
`
`4
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 8 of 27
`
`Companies.
`
`16.
`
`One of the most popular Mattel Brands is Power Wheels, battery-powered ride-on
`
`vehicles for toddlers and preschoolers that come in a variety of models including cars, trucks and ATVs.
`
`Mattel advertises, offers for sale and/or sells its Power Wheels Products through Plaintiff’s Website,
`
`available at https://www.fisher-price.com. True and correct screenshots of Plaintiff’s Website are
`
`attached hereto as Exhibit A and incorporated herein by reference.
`
`17.
`
`The Power Wheels Products are sold by major U.S. retailers and e-commerce sites, such
`
`as Amazon, Target and Walmart.
`
`18.
`
`19.
`
`The Power Wheels Products typically retail for between $49.99-499.99.
`
`While Plaintiff has gained significant common law trademark and other rights in its
`
`Power Wheels Marks and Power Wheels Products through its and/or its predecessor’s use, advertising and
`
`promotion, Plaintiff has also protected its valuable trademark rights by both acquiring and obtaining federal
`
`trademark registrations.
`
`20.
`
`For example, Plaintiff is the owner of the Power Wheels Marks (U.S. Trademark
`
`Registration Nos.: 1,374,017 for “POWER WHEELS” for goods in Class 28; 1,671,657 for “POWER
`
`WHEELS” for goods in Class 9; 5,504, 969 for
`
`for goods in Classes 9 and 28; and
`
`5,763,877 for
`
`for goods in Class 9). True and correct copies of the registrations for the
`
`Power Wheels Marks are attached hereto as Exhibit B and incorporated herein by reference.2
`
`21.
`
`The Power Wheels Marks are currently in use in commerce in connection with the
`
`Power Wheels Products. The Power Wheels Marks were first used in commerce on or before the dates
`
`
`2 Although two of the Power Wheels Marks list Plaintiff’s predecessor, Kransco, on the certificates of registration, the
`assignments on file with the United States Patent and Trademark Office (the “USPTO”) unequivocally evidence that Plaintiff
`is in fact the current true and correct owner of all of the Power Wheels Marks. True and correct copies of the trademark
`assignments, as filed with the USPTO, are included as part of Exhibit B.
`
`
`
`5
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 9 of 27
`
`of first use as reflected on the registrations, attached hereto as Exhibit B.
`
`22.
`
`Plaintiff has spent substantial time, money and effort in building up and developing
`
`consumer recognition, awareness and goodwill in its Power Wheels Marks and Power Wheels Products.
`
`23.
`
`The success of the Power Wheels Products is due in part to Plaintiff’s marketing and
`
`promotional efforts, and high-quality Power Wheels Products. These efforts include advertising and
`
`promotion through television, print, Plaintiff’s Website, among other efforts domestically and abroad,
`
`including in New York.
`
`24.
`
`Plaintiff’s success is also due to its use of the highest quality materials and processes
`
`in making the Power Wheels Products, which meet or exceed U.S. standards.
`
`25.
`
`Additionally, Plaintiff owes a substantial amount of the success of the Power Wheels
`
`Products to their consumers and word-of-mouth buzz that its consumers have generated.
`
`26.
`
`As a result of Plaintiff and its predecessor’s efforts, the quality of the Power Wheels
`
`Products and the word-of-mouth buzz generated by Plaintiff’s consumers, the Power Wheels Marks
`
`have become prominently placed in the minds of the public. Members of the public have become
`
`familiar with the Power Wheels Marks and Power Wheels Products and have come to associate them
`
`exclusively with Plaintiff. Plaintiff has acquired a valuable reputation and goodwill among the public
`
`as a result of such associations.
`
`27.
`
`Plaintiff has gone to great lengths to protect its interests in the Power Wheels Marks
`
`and Power Wheels Products. No one other than Plaintiff is authorized to manufacture, import, export,
`
`advertise, offer for sale or sell any goods utilizing the Power Wheels Marks, or otherwise use the Power
`
`Wheels Marks, without the express permission of Plaintiff.
`
`Defendants’ Wrongful and Infringing Conduct
`
`Particularly in light of Plaintiff’s success with its Power Wheels Products, as well as
`
`28.
`
`
`
`6
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 10 of 27
`
`the reputation they have gained, Plaintiff and its Power Wheels Products have become targets for
`
`unscrupulous individuals and entities, who wish to capitalize on the goodwill, reputation and fame that
`
`Plaintiff has amassed in its Power Wheels Marks and Power Wheels Products, and Plaintiff investigates
`
`and enforces against such activities.
`
`29.
`
`Through Plaintiff’s investigative and enforcement efforts, Plaintiff learned of
`
`Defendants’ actions which vary and include, but are not limited to, manufacturing, importing,
`
`exporting, advertising, marketing, promoting, distributing, displaying, offering for sale and/or selling
`
`Counterfeit Products bearing or used in connection with one or more of the Power Wheels Marks and/or
`
`in packaging and/or containing labels and/or hang tabs bearing the Power Wheels Marks and/or bearing
`
`or used in connection with marks that are confusingly similar to the Power Wheels Marks and/or that
`
`are identical or confusingly similar to the Power Wheels Products to U.S. consumers, including those
`
`located in the State of New York, through Defendants’ Websites and/or using one or more of the Power
`
`Wheels Marks or marks that are confusingly similar thereto on Defendants’ Websites, including in the
`
`Infringing Domain Names. True and correct screenshots of some pages of Defendants’ Websites are
`
`attached hereto as Exhibit C and incorporated herein by reference.
`
`30.
`
`As reflected by Exhibit C, the homepages for Defendants’ Websites are nearly
`
`identical — all feature a stylized version of the Power Wheels Marks in the top center of the page; the
`
`same large image on each homepage; similar, if not identical, layouts, product offerings, and product
`
`images; advertise limited time offer sale countdowns on identical product listing using the same black
`
`font and all three of Defendants’ Websites list the same method of contacting the company using fillable
`
`forms located on the Contact Us page.
`
`31.
`
`Through Defendants’ Websites, which indicate prices in U.S. dollars and accept
`
`payment via PayPal or credit card, Defendants offer for sale and/or sell consumer products, including
`
`
`
`7
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 11 of 27
`
`Counterfeit Products, and target and ship the same to customers located in the U.S., including New
`
`York, and throughout the world.
`
`32.
`
`Defendants’ Counterfeit Products listed on Defendants’ Websites are nearly identical
`
`to Plaintiff’s Power Wheels Products, only with minor variations that no ordinary consumer would
`
`recognize.
`
`33.
`
`Defendants’ Counterfeit Products listed on Defendants’ Websites are nearly
`
`indistinguishable from Plaintiff’s Power Wheels Products. For example, side-by-side comparisons of
`
`examples of images of the Counterfeit Products available on Defendants’ Websites to images of
`
`Plaintiff’s Power Wheels Products from Plaintiff’s Website are illustrated below:
`
`Defendants’ Website
`
`Counterfeit Product
`Image on Defendants’
`Website, Title & Price
`
`
`
`www.power-wheels-outlet.com
`
`
`
`
`
`
`
`
`
`
`
`Power Wheels Barbie®
`Dream Camper, $99.99
`
`Image of Plaintiff’s
`Authentic Power Wheel
`Product on Plaintiff’s
`Website, Title & Price
`
`
`
`
`
`
`
`
`
`
`
`Power Wheels Barbie®
`Dream Camper, $499.99
`
`
`
`
`8
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 12 of 27
`
`Defendants’ Website
`
`Counterfeit Product
`Image on Defendants’
`Website, Title & Price
`
`
`
`www.powerwheels-sale.com
`
`
`
`
`
`
`
`www.powerwheel-us.shop
`
`
`
`
`
`
`
`
`
`Power Wheels Disney/Pixar
`Toy Story Jeep Wrangler,
`$75.99
`
`
`
`
`
`
`
`
`
`
`
`
`Power Wheels® Barbie™
`Jeep® Wrangler, $93.99
`
`
`
`See also Exhibit C.
`
`Image of Plaintiff’s
`Authentic Power Wheel
`Product on Plaintiff’s
`Website, Title & Price
`
`
`
`
`
`
`
`
`
`
`Power Wheels® Disney
`Pixar Toy Story Jeep®
`Wrangler, $314.99
`
`
`
`
`
`
`
`
`
`
`
`Power Wheels® Barbie™
`Jeep® Wrangler, $314.99
`
`34.
`
`As made plain by the above and Exhibit C, Defendants, upon information and belief,
`
`have used Plaintiff’s own images, which, upon information and belief, Defendants sourced from
`
`Plaintiff’s Website, and have deliberately intended to mimic or resemble Plaintiff’s Website through
`
`their prominent use of one or more of the Power Wheels Marks, in the same stylized format, in the
`
`header of each of Defendants’ Websites, in an obvious intent to deliberately mislead consumers into
`
`believing that they are purchasing Plaintiff’s Power Wheels Products, or that Defendants’ Websites
`
`
`
`9
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 13 of 27
`
`and/or Defendants’ Counterfeit Products are otherwise approved by Plaintiff.
`
`35.
`
`In fact, Plaintiff has been contacted by numerous consumers expressing confusion
`
`stemming from Defendants’ Websites. For example, Plaintiff’s wholly owned subsidiary, Fisher Price,
`
`received the following message from one of its consumers on Twitter relating to one of Defendants’
`
`Websites:
`
`
`
`36.
`
`Upon information and belief, Defendants have registered and are using the Infringing
`
`Domain Names in a further bad faith attempt to profit from the Power Wheels Marks, thereby deceiving
`
`consumers into wrongly believing that Defendants’ Websites are selling authentic Power Wheels
`
`Products and/or that Defendants’ Websites and/or Defendants’ Counterfeit Products are otherwise
`
`approved by Plaintiff.
`
`37.
`
`In order to further investigate Defendants’ infringing and illegal activities, Epstein
`
`Drangel purchased Counterfeit Products from each of Defendants’ Websites, and specified the New
`
`York Address as the shipping address. True and correct redacted copies of Epstein Drangel’s order
`
`
`
`10
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 14 of 27
`
`confirmations and PayPal receipts for its test purchases, evidencing that these transactions were in U.S.
`
`dollars, and that Defendants agreed to ship Counterfeit Products to New York, are attached hereto as
`
`Exhibit D and incorporated herein by reference.
`
`38.
`
`Epstein Drangel received a shipping confirmation for only one (1) of its test purchases
`
`(i.e., from www.power-wheels-outlet.com). Upon receiving the shipment from this test purchase,
`
`Epstein Drangel discovered the counterfeit product, feigning to be one of Plaintiff’s Power Wheels
`
`Products, nefariously was not shipped by Defendants, but rather, a 4-inch blue fidget device was
`
`received instead.3 A true and correct copy of the shipping confirmation that Epstein Drangel received
`
`from www.power-wheels-outlet.com, along with images of the product received, are attached hereto as
`
`Exhibit E and incorporated herein by reference.
`
`39.
`
`Defendants are not, and have never been, authorized by Plaintiff or any of its
`
`authorized agents, authorized licensees or authorized distributors to copy, manufacture, import, export,
`
`advertise, distribute, offer for sale or sell the Power Wheels Products or to use the Power Wheels Marks,
`
`or any marks that are confusingly similar to the Power Wheels Marks.
`
`40.
`
`By their actions, as outlined herein, Defendants have violated Plaintiff’s exclusive
`
`rights in the Power Wheels Marks, and have used marks that are confusingly similar to, identical to
`
`and/or constitute counterfeiting and/or infringement of the Power Wheels Marks in order to confuse
`
`consumers into believing that Defendants’ Websites are associated with Plaintiff and/or Defendants’
`
`Counterfeit Products are Plaintiff’s Power Wheels Products and aid in the promotion and sales of
`
`Defendants’ Counterfeit Products.
`
`41.
`
`Defendants’ conduct began long after Plaintiff’s adoption and use of the Power
`
`Wheels Marks, after Plaintiff filed for and obtained federal registrations in the Power Wheels Marks,
`
`
`3 Epstein Drangel has not received any other shipping confirmations for its other test purchases (i.e., from
`www.powerwheels-sale.com and www.powerwheel-us.shop), nor has it received the Counterfeit Products.
`
`
`
`11
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 15 of 27
`
`as alleged above, and after Plaintiff’s Power Wheels Marks and Power Wheels Products became well-
`
`known to the purchasing public.
`
`42.
`
`Prior to and contemporaneous with their actions alleged herein, Defendants had
`
`knowledge of Plaintiff’s ownership of the Power Wheels Marks, of the fame and incalculable goodwill
`
`associated therewith and of the popularity and success of the Power Wheels Products, and in bad faith
`
`adopted the Power Wheels Marks.
`
`43.
`
`In fact, as noted above, Defendants have used Plaintiff’s own images of the Power
`
`Wheels Products, which upon information and belief, Defendants sourced from Plaintiff’s Website, and
`
`have used such images in connection with the Power Wheels Marks in an effort to impersonate Plaintiff,
`
`and thus, the intentional nature of Defendants’ conduct is unquestionable.
`
`44.
`
`Defendants have been engaging in the illegal counterfeiting and infringing actions, as
`
`alleged herein, knowingly and intentionally, or with reckless disregard or willful blindness to Plaintiff’s
`
`rights, or in bad faith, for the purpose of trading on the goodwill and reputation of Plaintiff, the Power
`
`Wheels Marks and Power Wheels Products.
`
`45.
`
`Defendants’ actions, as alleged herein, have caused, and will continue to cause
`
`confusion, mistake, economic loss, and have deceived, and will continue to deceive, consumers, the
`
`public and the trade with respect to the source or origin of Defendants’ Websites and Defendants’
`
`Counterfeit Products, thereby causing consumers to erroneously believe that Defendants’ Websites
`
`and/or Counterfeit Products are licensed by or otherwise associated with Plaintiff, thereby damaging
`
`Plaintiff.
`
`46.
`
`By engaging in these actions, Defendants have, jointly and severally, among other
`
`things, willfully and in bad faith committed the following, all of which have and will continue to cause
`
`irreparable harm to Plaintiff: counterfeited and infringed the Power Wheels Marks, committed unfair
`
`
`
`12
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 16 of 27
`
`competition and unfairly profited from such activities at Plaintiff’s expense, and engaged in
`
`cybersquatting.
`
`47.
`
`Unless enjoined, Defendants will continue to cause irreparable harm to Plaintiff.
`
`
`
`CAUSES OF ACTION
`
`FIRST CAUSE OF ACTION
`(Trademark Counterfeiting)
`[15 U.S.C. § 1114(1)(b)/Lanham Act § 32; 15 U.S.C. § 1116(d)/Lanham Act § 34;
`15 U.S.C. § 1117(b)-(c)/Lanham Act § 35]
`
`Plaintiff repleads and incorporates by reference each and every allegation set forth in the
`
`48.
`
`preceding paragraphs as if fully set forth herein.
`
`49.
`
`50.
`
`Plaintiff is the exclusive owner of all right and title to the Power Wheels Marks.
`
`Plaintiff has continuously used the Power Wheels Marks in interstate commerce since
`
`on or before the dates of first use as reflected in the Power Wheels Marks attached hereto as Exhibit B.
`
`51. Without Plaintiff’s authorization or consent, with knowledge of Plaintiff’s well-known
`
`and prior rights in its Power Wheels Marks, Defendants intentionally reproduced, copied, and/or
`
`colorably imitated the Power Wheels Marks and/or used spurious designations that are identical with,
`
`or substantially indistinguishable from, the Power Wheels Marks, on or in connection with the
`
`manufacturing, import, export, advertising, marketing, promotion, distribution, display, offering for
`
`sale and/or sale of Counterfeit Products.
`
`52.
`
`Defendants have manufactured, imported, exported, advertised, marketed, promoted,
`
`distributed, displayed, offered for sale and/or sold their Counterfeit Products to the purchasing public
`
`in direct competition with Plaintiff, in or affecting interstate commerce, and/or have acted with reckless
`
`disregard of Plaintiff’s rights in and to the Power Wheels Marks through their participation in such
`
`activities.
`
`
`
`13
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 17 of 27
`
`53.
`
`Defendants have applied their reproductions, counterfeits, copies and colorable
`
`imitations of the Power Wheels Marks to packaging, point-of-purchase materials, promotions and/or
`
`advertisements intended to be used in commerce upon, or in connection with the manufacturing,
`
`importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale
`
`and/or selling of Defendants’ Counterfeit Products, which is likely to cause confusion, mistake, and
`
`deception among the general purchasing public as to the origin of the Counterfeit Products, and is likely
`
`to deceive consumers, the public and the trade into believing that the Counterfeit Products sold by
`
`Defendants originate from, are associated with or are otherwise authorized by Plaintiff, thereby making
`
`substantial profits and gains to which they are not entitled in law or equity.
`
`54.
`
`Defendants’ unauthorized use of the Power Wheels Marks in connection with
`
`Defendants’ Websites and Defendants’ Counterfeit Products was done with notice and full knowledge
`
`that such use was not authorized or licensed by Plaintiff or its authorized agents and with deliberate
`
`intent to unfairly benefit from the incalculable goodwill inherent in the Power Wheels Marks.
`
`55.
`
`Defendants’ actions constitute willful counterfeiting of the Power Wheels Marks in
`
`violation of 15 U.S.C. §§ 1114(1)(a)-(b), 1116(d) and 1117(b)-(c).
`
`56.
`
`As a direct and proximate result of Defendants’ illegal actions alleged herein,
`
`Defendants have caused substantial monetary loss and irreparable injury and damage to Plaintiff, its
`
`business, its reputation and its valuable rights in and to the Power Wheels Marks and the goodwill
`
`associated therewith, in an amount as yet unknown, but to be determined at trial, for which Plaintiff has
`
`no adequate remedy at law, and unless immediately enjoined, Defendants will continue to cause such
`
`substantial and irreparable injury, loss and damage to Plaintiff and its valuable Power Wheels Marks.
`
`57.
`
`Based on Defendants’ actions as alleged herein, Plaintiff is entitled to injunctive relief,
`
`damages for the irreparable harm that Plaintiff has sustained, and will sustain, as a result of Defendants’
`
`
`
`14
`
`

`

`Case 1:21-cv-08108-PAE Document 7 Filed 10/15/21 Page 18 of 27
`
`unlawful and infringing actions, as alleged herein, and all gains, profits and advantages obtained by
`
`Defendants as a result thereof, enhanced discretionary damages, treble damages and/or statutory
`
`damages of up to $2,000,000 per counterfeit mark per type of goods sold, offered for sale or distributed
`
`and reasonable attorneys’ fees and costs.
`
`SECOND CAUSE OF ACTION
`(Infringement of Registered Trademarks)
`[15 U.S.C. § 1114/Lanham Act § 32(a)]
`
`
`
`58.
`