Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 1 of 26
`
`Jason M. Drangel (JD 7204)
`jdrangel@ipcounselors.com
`Ashly E. Sands (AS 7715)
`asands@ipcounselors.com
`Danielle S. Futterman (DY 4228)
`dfutterman@ipcounselors.com
`Nabeela M. Hanif
`nhanif@ipcounselors.com
`Gabriela N. Nastasi
`gnastasi@ipcounselors.com
`Karena K. Ioannou
`kioannou@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.FISHER-PRICE.ONLINE,
`
`Defendant
`
`
`
`
`
`
`CIVIL ACTION NO. ___
`
`
`
`
`
`
`COMPLAINT
`
`
`
`
`Jury Trial Requested
`
`FILED UNDER SEAL
`
`
`
`
`
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 2 of 26
`
`GLOSSARY
`
`Term
`Plaintiff or Mattel
`
`Definition
`Mattel, Inc.
`
`Defendant
`
`
`Mattel
`
`Fisher-Price
`
`Cloudflare
`
`Dynadot
`
`Epstein Drangel
`New York Address
`Complaint
`Application
`
`Moore Dec.
`
`Futterman Dec.
`
`www.fisher-price.online
`
`A leading designer, developer, marketer, manufacturer
`and distributor of its well-known Mattel Products
`(defined infra), including children’s toys and games
`offered under some of America’s most iconic and
`influential sub-brands, such as Fisher Price, Barbie,
`UNO, Thomas & Friends, Hot Wheels and American
`Girl
`Plaintiff’s wholly owned subsidiary that produces
`educational toys for infants, toddlers and preschoolers,
`along with developing character-based
`toys
`for
`children’s programming such as Thomas & Friends.
`Some of Fisher-Price’s most popular brands include
`Power Wheels, Laugh & Learn, Little People and
`Imaginext
`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 Defendant’s
`Website (as defined infra) and Defendant’s 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
`
`iii
`
`
`
`
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 3 of 26
`
`Term
`
`Mattel Products
`
`Power Wheels
`Products
`
`Power Wheels Marks
`
`Fisher-Price Marks
`
`Mattel Marks
`Plaintiff’s Website
`
`Counterfeit Products
`
`Defendant’s Website
`
`Infringing Domain
`Name
`Defendant’s Assets
`
`Definition
`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
`
`for goods in Class 9
`5,763,877 for
`for
`U.S. Trademark Registration Nos.: 3,279,454
`“FISHER-PRICE” for goods in Class 28 and 4,115,688
`for “FISHER-PRICE” for “computerized online ordering
`services in the field of toys, games and playthings,
`electronic commerce services, namely, providing
`information about products via
`telecommunication
`networks for advertising and sales purposes” in Class 35
`The Power Wheels Marks and Fisher-Price Marks
`Plaintiff’s wholly owned subsidiary, Fisher-Price’s fully
`interactive website,
`located at https://www.fisher-
`price.com
`Defendant’s products advertised, offered for sale and/or
`sold by Defendant via Defendant’s Website (as defined
`infra), which use the Mattel Marks, or at the very least,
`marks that are confusingly similar thereto
`Any and all fully interactive websites held by or
`associated with Defendant, its respective officers,
`employees, agents, servants and all persons in active
`concert or participation with any of them, that use the
`Mattel 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,
`Defendant’s website located at www.fisher-price.online;
`along with any and all of the domain names associated
`therewith, including the Infringing Domain Name
`www.fisher-price.online
`
`Any and all money, securities or other property or assets
`of Defendant (whether said assets are located in the U.S.
`
`
`
`iv
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 4 of 26
`
`Term
`
`Defendant’s Financial
`Accounts
`
`Financial Institutions
`
`Third Party Service
`Providers
`
`Definition
`or abroad)
`Any and all financial accounts associated with or utilized
`by Defendant or any of Defendant’s Website (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”) and other companies or agencies that engage
`in the processing or transfer of money and/or real or
`personal property of Defendant
`Any third party providing services in connection with
`Defendant’s Counterfeit Products and/or Defendant’s
`Website, 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
`
`
`
`v
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 5 of 26
`
`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 Defendant’s willful infringement of the Mattel Marks, including, without
`
`limitation, through Defendant’s prominent use of Plaintiff’s Mattel Marks on Defendant’s Website
`
`and/or in connection with its advertisement, marketing, promotion, offering for sale and/or sale of its
`
`Counterfeit Products.
`
`
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has federal subject matter jurisdiction over the claims asserted in this 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-09608-LJL Document 6 Filed 12/06/21 Page 6 of 26
`
`3.
`
`Personal jurisdiction exists over the Defendant 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, Defendant regularly conducts, transacts and/or solicits business
`
`in New York; contracts to supply goods (including Counterfeit Products) within New York; derives
`
`substantial revenue from its business transactions in New York; otherwise avails itself of the privileges
`
`and protections of the laws of the State of New York such that this Court’s assertion of jurisdiction over
`
`Defendant does not offend traditional notions of fair play and due process; and/or Defendant’s illegal
`
`counterfeiting and infringing actions caused injury to Plaintiff in New York such that Defendant should
`
`reasonably expect such actions to have consequences in New York, for example:
`
`a. Upon information and belief, Defendant was and/or is systematically directing and/or
`
`targeting its business activities at consumers in the U.S., including New York, through
`
`Defendant’s Website, 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, Defendant is a sophisticated seller, operating a commercial
`
`business through Defendant’s Website, 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, Defendant accepts payment in U.S. Dollars and offers shipping
`
`to the U.S., including to New York.
`
`d. Upon information and belief, Defendant has transacted business with consumers located in
`
`the U.S., including New York, for the sale and shipment of Counterfeit Products.
`
`e. Upon information and belief, Defendant is aware of Plaintiff, Plaintiff’s Mattel Marks and
`
`
`
`2
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 7 of 26
`
`Power Wheels Products, and is aware that its 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, Defendant conducts, transacts, and/or solicits business in this judicial district, is 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.fisher-price.online is an individual or entity, believed
`
`to be located in China, that owns and/or operates Defendant’s Website available at www.fisher-
`
`price.online.
`
`GENERAL ALLEGATIONS
`
`Plaintiff and Its Well-Known Power Wheels Products
`
`Mattel, through its family of companies, is a leading designer, developer, marketer,
`
`7.
`
`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.
`
`8.
`
`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.
`
`9.
`
`Mattel sells its Mattel Products worldwide through major retailers, quality toy stores and
`
`
`
`3
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 8 of 26
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`online marketplaces, including, but not limited to: Wal-Mart, Target Stores, Walgreens, Amazon and
`
`many others.
`
`10. 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).
`
`11.
`
`In addition, in 2021, Mattel was identified as one of TIME’s 100 Most Influential
`
`Companies.
`
`12.
`
`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 wholly
`
`owned subsidiary, Fisher-Price.
`
`13.
`
`Fisher-Price produces educational toys for infants, toddlers and preschoolers and is a
`
`leading developer of character-based toys for children’s programming such as Thomas & Friends. Some
`
`of Fisher-Price’s most popular brands include Power Wheels, Laugh & Learn, Little People and
`
`Imaginext.
`
`14.
`
`Plaintiff’s Fisher-Price website is available at https://www.fisher-price.com. True and
`
`correct screenshots of the homepage of Plaintiff’s Website are attached hereto as Exhibit A and
`
`incorporated herein by reference.
`
`15.
`
`The Power Wheels Products are sold by major U.S. retailers and e-commerce sites, such
`
`as Amazon, Target and Walmart.
`
`
`
`4
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 9 of 26
`
`16.
`
`The Power Wheels Products typically retail for between $49.99-499.99.
`
`17. 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.
`
`18.
`
`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). Plaintiff is also the owner of the Fisher-Price Marks
`
`(U.S. Trademark Registration Nos.: 3,279,454 for “FISHER-PRICE” for goods in Class 28 and
`
`4,115,688 for “FISHER-PRICE” for “computerized online ordering services in the field of toys, games
`
`and playthings, electronic commerce services, namely, providing information about products via
`
`telecommunication networks for advertising and sales purposes” in Class 35), collectively referred to as
`
`the Mattel Marks. True and correct copies of the registrations for the Mattel Marks are attached hereto
`
`as Exhibit B and incorporated herein by reference.
`
`19.
`
`The Mattel Marks are currently in use in commerce in connection with the sale of Power
`
`Wheels Products. The Mattel Marks were first used in commerce on or before the dates of first use as
`
`reflected on the registrations, attached hereto as Exhibit B.
`
`20.
`
`Plaintiff has spent substantial time, money and effort in building up and developing
`
`consumer recognition, awareness and goodwill resulting in prominent fame in its Mattel Marks and
`
`Power Wheels Products.
`
`21.
`
`The success of the Power Wheels Products is due in part to Plaintiff’s marketing and
`
`
`
`5
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 10 of 26
`
`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.
`
`22.
`
`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.
`
`23.
`
`Additionally, Plaintiff owes a substantial amount of the success of the Power Wheels
`
`Products to its consumers and word-of-mouth buzz that its consumers have generated.
`
`24.
`
`As a result of Plaintiff and its predecessor’s efforts, the quality of its Power Wheels
`
`Products and the word-of-mouth buzz generated by Plaintiff’s consumers, the Mattel Marks have
`
`become prominently placed in the minds of the public. Members of the public have become familiar
`
`with the Mattel Marks 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.
`
`25.
`
`Plaintiff has gone to great lengths to protect its interests in the Mattel 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 Mattel Marks, or otherwise use the Mattel Marks, without
`
`the express permission of Plaintiff.
`
`Defendant’s Wrongful and Infringing Conduct
`
`Particularly in light of Plaintiff’s success with its Power Wheels Products, as well as the
`
`26.
`
`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 Mattel Marks and Power Wheels Products, and Plaintiff investigates and
`
`enforces against such activities.
`
`27.
`
`Through Plaintiff’s investigative and enforcement efforts, Plaintiff learned of
`
`
`
`6
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 11 of 26
`
`Defendant’s 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 Mattel Marks and/or in
`
`packaging and/or containing labels and/or hang tags bearing the Mattel Marks and/or bearing or used
`
`in connection with marks that are confusingly similar to the Mattel 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 Defendant’s Website and/or using one or more of the Mattel Marks or
`
`marks that are confusingly similar thereto on Defendant’s Website, including in the Infringing Domain
`
`Name. True and correct screenshots of some pages of Defendant’s Website are attached hereto as
`
`Exhibit C and incorporated herein by reference.
`
`28.
`
`As reflected by Exhibit C, the homepage for Defendant’s Website features a stylized
`
`version of one of the Mattel Marks in the top center of the page that appears on each and every page of
`
`Defendant’s Website.
`
`29.
`
`Through Defendant’s Website, which indicates prices in U.S. dollars and accepts
`
`payment via PayPal or credit card, Defendant offers for sale and/or sells consumer products, including
`
`Counterfeit Products, and targets and ships the same to customers located in the U.S., including New
`
`York, and throughout the world.
`
`30.
`
`Defendant’s Counterfeit Products listed on Defendant’s Website are nearly identical to
`
`Plaintiff’s Power Wheels Products, only with minor variations that no ordinary consumer would
`
`recognize. For example, Defendant’s Website features an exact replica of Plaintiff’s Website “Product
`
`Features” language.
`
`31.
`
`Defendant’s Counterfeit Products
`
`listed on Defendant’s Website are nearly
`
`indistinguishable from Plaintiff’s Power Wheels Products. For example, side-by-side comparisons of
`
`
`
`7
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 12 of 26
`
`examples of images of the Counterfeit Products available on Defendant’s Website to images of
`
`Plaintiff’s Power Wheels Products from Plaintiff’s Website are illustrated below:
`
`Counterfeit Product Image on
`Defendant’s Website, Title & Price
`
`
`
`
`
`
`
`
`
`
`Power Wheels Barbie® Dream
`Camper, $99.99
`
`
`
`
`
`
`
`
`
`Power Wheels Disney/Pixar Toy
`Story Jeep Wrangler, $92.99
`
`Image of Plaintiff’s Authentic
`Power Wheel Product on
`Plaintiff’s Website, Title & Price
`
`
`
`
`
`
`
`
`
`
`Power Wheels Barbie® Dream
`Camper, $499.99
`
`
`
`
`
`
`
`
`
`Power Wheels® Disney Pixar Toy
`Story Jeep® Wrangler, $314.99
`
`
`
` See also Exhibit C.
`
`32.
`
`As made plain by the above and Exhibit C, Defendant, upon information and belief, has
`
`used Plaintiff’s own images, which, upon information and belief, Defendant sourced from Plaintiff’s
`
`Website, and has deliberately intended to mimic or resemble Plaintiff’s Website through its prominent
`
`use of one or more of the Mattel Marks, in an obvious intent to deliberately mislead consumers into
`
`believing that they are purchasing Plaintiff’s Power Wheels Products, or that Defendant’s Website
`
`and/or Defendant’s Counterfeit Products are otherwise approved by Plaintiff.
`
`
`
`8
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 13 of 26
`
`33.
`
`In fact, Plaintiff has been contacted by numerous consumers expressing confusion
`
`stemming from Defendant’s Website.
`
`34.
`
`Upon information and belief, Defendant has registered and is using the Infringing
`
`Domain Name in a further bad faith attempt to profit from the Mattel Marks, thereby deceiving
`
`consumers into wrongly believing that Defendant’s Website is selling authentic Power Wheels Products
`
`and/or that Defendant’s Website and/or Defendant’s Counterfeit Products are otherwise approved by
`
`Plaintiff.
`
`35.
`
`In order to further investigate Defendant’s infringing and illegal activities, Epstein
`
`Drangel purchased a Counterfeit Product from Defendant’s Website, and specified the New York
`
`Address as the shipping address. A true and redacted copy of Epstein Drangel’s order confirmation and
`
`PayPal receipt for its test purchase, evidencing that this transaction was in U.S. dollars, and that
`
`Defendant agreed to ship Counterfeit Products to New York, is attached hereto as Exhibit D and
`
`incorporated herein by reference.
`
`36.
`
`Defendant is not, and has 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 Mattel Marks, or any marks
`
`that are confusingly similar to the Mattel Marks.
`
`37.
`
`By its actions, as outlined herein, Defendant has violated Plaintiff’s exclusive rights in
`
`the Mattel Marks, and has used marks that are confusingly similar to, identical to and/or constitute
`
`counterfeiting and/or infringement of the Mattel Marks in order to confuse consumers into believing
`
`that Defendant’s Website is associated with Plaintiff and/or Defendant’s Counterfeit Products are
`
`Plaintiff’s Power Wheels Products and aid in the promotion and sales of Defendant’s Counterfeit
`
`Products.
`
`
`
`9
`
`

`

`Case 1:21-cv-09608-LJL Document 6 Filed 12/06/21 Page 14 of 26
`
`38.
`
`Defendant’s conduct began long after Plaintiff’s adoption and use of the Mattel Marks,
`
`after Plaintiff filed for and obtained federal registrations in the Mattel Marks, as alleged above, and
`
`after Plaintiff’s Mattel Marks and Power Wheels Products became well-known to the purchasing public.
`
`39.
`
`Prior to and contemporaneous with its actions alleged herein, Defendant had knowledge
`
`of Plaintiff’s ownership of the Mattel 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 Mattel
`
`Marks.
`
`40.
`
`In fact, as noted above, Defendant has used Plaintiff’s own images of the Power Wheels
`
`Products, which upon information and belief, Defendant sourced from Plaintiff’s Website, in
`
`connection with the Mattel Marks in an effort to impersonate Plaintiff, and thus, the intentional nature
`
`of Defendant’s conduct is unquestionable.
`
`41.
`
`Defendant has 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
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`rights, or in bad faith, for the purpose of trading on the goodwill and reputation of Plaintiff, the Mattel
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`Marks and Power Wheels Products.
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`42.
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`Defendant’s actions, as alleged herein, have caused, and will continue to cause
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`confusion, mistake, economic loss, and have deceived, and will continue to deceive, consumers, the
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`public and the trade with respect to the source or origin of Defendant’s Website and Defendant’s
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`Counterfeit Products, thereby causing consumers to erroneously believe that Defendant’s Website
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`and/or Counterfeit Products are licensed by or otherwise associated with Plaintiff, thereby damaging
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`Plaintiff.
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`43.
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`By engaging in these actions, Defendant has, jointly and severally, among other things,
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`willfully and in bad faith committed the following, all of which have and will continue to cause
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`irreparable harm to Plaintiff: counterfeited and infringed the Mattel Marks, committed unfair
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`competition and unfairly profited from such activities at Plaintiff’s expense, and engaged in
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`cybersquatting.
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`44.
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`Unless enjoined, Defendant will continue to cause irreparable harm to Plaintiff.
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`
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`CAUSES OF ACTION
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`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]
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`Plaintiff repleads and incorporates by reference each and every allegation set forth in the
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`45.
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`preceding paragraphs as if fully set forth herein.
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`46.
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`47.
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`Plaintiff is the exclusive owner of all right and title to the Mattel Marks.
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`Plaintiff has continuously used the Mattel Marks in interstate commerce since on or
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`before the dates of first use as reflected in the Mattel Marks attached hereto as Exhibit B.
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`48. Without Plaintiff’s authorization or consent, with knowledge of Plaintiff’s well-known
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`and prior rights in its Mattel Marks, Defendant intentionally reproduced, copied, and/or colorably
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`imitated the Mattel Marks and/or used spurious designations that are identical with, or substantially
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`indistinguishable from, the Mattel Marks, on or in connection with the manufacturing, import, export,
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`advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit
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`Products.
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`49.
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`Defendant has manufactured, imported, exported, advertised, marketed, promoted,
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`distributed, displayed, offered for sale and/or sold its Counterfeit Products to the purchasing public in
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`direct competition with Plaintiff, in or affecting interstate commerce, and/or has acted with reckless
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`disregard of Plaintiff’s rights in and to the Mattel Marks through its participation in such activities.
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`50.
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`Defendant has applied its reproductions, counterfeits, copies and colorable imitations of
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`the Mattel Marks to packaging, point-of-purchase materials, promotions and/or advertisements intended
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`to be used in commerce upon, or in connection with the manufacturing, importing, exporting,
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`advertising, marketing, promoting, distributing, displaying, offering for sale and/or selling of
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`Defendant’s Counterfeit Products, which is likely to cause confusion, mistake, and deception among
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`the general purchasing public as to the origin of the Counterfeit Products, and is likely to deceive
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`consumers, the public and the trade into believing that the Counterfeit Products sold by Defendant
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`originate from, are associated with or are otherwise authorized by Plaintiff, thereby making substantial
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`profits and gains to which they are not entitled in law or equity.
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`51.
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`Defendant’s unauthorized use of the Mattel Marks in connection with Defendant’s
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`Website and Defendant’s Counterfeit Products was done with notice and full knowledge that such use
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`was not authorized or licensed by Plaintiff or its authorized agents and with deliberate intent to unfairly
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`benefit from the incalculable goodwill inherent in the Mattel Marks.
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`52.
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`Defendant’s actions constitute willful counterfeiting of the Mattel Marks in violation of
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`15 U.S.C. §§ 1114(1)(a)-(b), 1116(d) and 1117(b)-(c).
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`53.
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`As a direct and proximate result of Defendant’s illegal actions alleged herein, Defendant
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`has caused substantial monetary loss and irreparable injury and damage to Plaintiff, its business, its
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`reputation and its valuable rights in and to the Mattel Marks and the goodwill associated therewith, in
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`an amount as yet unknown, but to be determined at trial, for which Plaintiff has no adequate remedy at
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`law, and unless immediately enjoined, Defendant will continue to cause such substantial and irreparable
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`injury, loss and damage to Plaintiff and its valuable Mattel Marks.
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`54.
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`Based on Defendant’s actions as alleged herein, Plaintiff is entitled to injunctive relief,
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`damages for the irreparable harm that Plaintiff has sustained, and will sustain, as a result of Defendant’s
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`unlawful and infringing actions, as alleged herein, and all gains, profits and advantages obtained by
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`Defendant as a result thereof, enhanced discretionary damages, treble damages and/or statutory
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`damages of up to $2,000,000 per counterfeit mark per type of goods sold, offered for sale or distributed
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`and reasonable attorneys’ fees and costs.
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`SECOND CAUSE OF ACTION
`(Infringement of Registered Trademarks)
`[15 U.S.C. § 1114/Lanham Act § 32(a)]
`
`
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`55.
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`Plaintiff repleads and incorporates by reference each and every allegation set forth in the
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`preceding paragraphs as if fully set forth herein.
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`56.
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`Plaintiff and its predecessor have continuously used the Mattel Marks in interstate
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`commerce since on or before the dates of first use as reflected in the registration certificates attached
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`hereto as Exhibit B.
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`57.
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`Plaintiff, as the owner of all right, title and interest in and to the Mattel Marks, has
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`standing to maintain an action for trademark infringement under 15 U.S.C. § 1114.
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`58.
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`Defendant was, at the time it engaged in its actions as alleged herein, actually aware that
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`Plaintiff is the owner of the federal trademark registrations for the Mattel Marks.
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`59.
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`Defendant did not seek and thus inherently failed to obtain consent or authorization from
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`Plaintiff, as the registered trademark owner of the Mattel Marks, to deal in and commercially
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`manufacture, import, export, advertise, market, promote, distribute, display, retail, offer for sale and/or
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`sell the Power Wheels Products and/or related products bearing the Mattel Marks into the stream of
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`commerce.
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`60.
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`Defendant knowingly and intentionally manufactured, imported, exported, advertised,
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`marketed, promoted, distributed, displayed, offered for sale and/or sold Counterfeit Products, bearing
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`and/or utilizing marks that are reproductions, counterfeits, copies and/or colorable imitations of the
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`Mattel Marks and/or which are identical or confusingly similar to the Mattel Marks.
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`61.
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`Defendant’s egregious and intentional use of the Mattel Marks or marks that are identical
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`or confusingly similar thereto, in commerce on or in connection with Defendant’s Website and/or
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`Defendant’s Counterfeit Products has caused, and is likely to continue to cause, actual confusion and
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`mistake, and has deceived, and is likely to continue to deceive, the general purchasing public as to the
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`source or origin of the same, and is likely to deceive the public into believi