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Bmw of North America, LLC v. Dinodirect Corp.

United States District Court, Ninth Circuit

July 2, 2013

BMW OF NORTH AMERICA, LLC, ROLLS-ROYCE MOTOR CARS NA, LLC, ROLLS-ROYCE MOTOR CARS LIMITED, and BAYERISCHE MOTOREN WERKE AG, Plaintiffs,
v.
DINODIRECT CORP., DINODIRECT CHINA LTD., B2CFORCE INT'L CORP., and JIANFENG FENG a/k/a KEVIN FENN a/k/a KEVIN FENG, Defendants.

Jane L. Froyd (State Bar No. 220776) JONES DAY, Palo Alto, CA, John G. Froemming (Admitted pro hac vice) JONES DAY, Washington, DC, Attorney for Plaintiffs BMW OF NORTH AMERICA, LLC, ROLLS-ROYCE MOTOR CARS NA, LLC, ROLLS-ROYCE MOTOR CARS LIMITED, and BAYERISCHE MOTOREN WERKE AG.

Mark B. Frazier (State Bar No. 107221) Damon Mircheff (State Bar No. 216257) RUTAN & TUCKER, LLP, Costa Mesa, California, Attorneys for Defendants DINODIRECT CORP.; DINODIRECT CHINA LTD.; B2FORCE INT'L CORP.; AND JIANFENG FENG aka KEVIN FENG aka KEVIN FENN.

CONSENT JUDGMENT AND PERMANENT INJUNCTION

WILLIAM ALSUP, District Judge.

This action, having come on for consideration on the Amended Complaint of the Plaintiffs for direct trademark infringement and counterfeiting and unfair competition against the Defendants with regard to Plaintiffs' proprietary rights in their trademarks;

The Defendants, having stipulated to the facts referenced herein, and the parties having otherwise waived the entry of findings of fact and conclusions of law pursuant to Rule 52 of the Federal Rules of Civil Procedure, and without trial, argument or adjudication of any issue of fact or law, having consented and stipulated to the entry of this Consent Judgment and Permanent Injunction under the terms provided herein:

IT IS HEREBY ORDERED, ADJUDGED AND DECREED that:

This Court has jurisdiction over the subject matter of this action under the laws of the United States, 15 U.S.C. § 1121 et seq., and supplemental jurisdiction over Plaintiffs' state law claims under 28 U.S.C. § 1367(a), and has jurisdiction over each of the Defendants. The claims arising under the laws of the State of California are joined with substantial and related claims under the trademark laws of the United States.

The Defendants acknowledge the existence and validity of the trademarks described in Paragraphs 14-22 of Plaintiffs' Amended Complaint, attached as Exhibit A. Specifically, BMW is the exclusive owner of valid and subsisting federal trademark registrations, including trademark registrations for its Roundel logo, "BMW" mark, Rolls-Royce Badge ("RR Badge"), "BMW Group" mark, Flying Lady Device, "Z8" mark, and M-Stripes logo, attached hereto as Exhibit B, as well as common law rights to the trademark BMW MOTORSPORT (collectively, the "BMW Marks"), and BMW's Roundel logo, "BMW" word mark, and RR Badge are famous. In addition, BMW has extensively used and advertised the BMW Marks in connection with its business of designing, manufacturing, distributing, offering for sale and selling motor vehicles, vehicles parts, and lifestyle items throughout the United States.

IT IS FURTHER ORDERED that:

1. Defendants, their parents, affiliates, subsidiaries, and their respective officers, agents, servants, employees, independent contractors and attorneys, or any other person or entity acting in concert or participating with anyone described above, and any successor in interest or future owners of the Defendants, agree to be and are immediately and permanently enjoined from:

A. designing, creating, manufacturing, advertising, marketing, promoting, offering for sale, ordering, accepting orders for, providing the means to order, brokering, selling, warehousing, delivering, shipping, importing, exporting, distributing, or accepting shipment or delivery of, any products that are not made or authorized by BMW that depict or bear any of the BMW Marks or any other trademark or logo of BMW or colorable imitations thereof, including any Chinese version thereof, or facilitating, inducing, or assisting any of the activity set forth above;

B. operating or hosting any website that sells or offers to sell goods using counterfeit reproductions of the BMW Marks or any colorable imitations thereof or any other trademark of BMW's; or permitting, facilitating or allowing suppliers, customers, users or members of or to www.dinodirect.com or any other website or business now or in the future owned, operated or controlled wholly or in part by, or affiliated with any of the Defendants, to post or display listings or offers to sell, buy, manufacture or distribute goods bearing a BMW Mark or advertised with a BMW logo, which are not genuine BMW goods.

C. displaying BMW's logos or colorable imitations thereof, including but not limited to BMW's Roundel logo, RR Badge, M-Stripes logo, and MINI Wings logo (attached hereto as Exhibit C), on any website, in promotional or marketing materials, or otherwise in connection with their business or on any website where such use is not authorized by BMW;

D. advertising or describing products that are not by BMW, Rolls-Royce, or MINI as "BMW, " "Rolls-Royce, " or "MINI" products, or otherwise using BMW's trademarks or colorable imitations thereof as or in the names, titles, and listings of products not made or authorized by BMW, such as using the term "BMW Accessories" to sell non-genuine accessories for BMWs, or making any other false or misleading description of fact in connection with products for BMWs;

E. assisting, advising, allowing, encouraging, inducing or instructing any supplier or source of or to any Defendant's website or business in creating or posting listings that Defendants know or have reason to know are for products that infringe Plaintiffs' marks or for counterfeit or replica products bearing Plaintiffs' marks;

F. failing to immediately remove or disable access to any listing (1) identified by Plaintiffs as allegedly infringing Plaintiffs' marks, or (2) that otherwise comes to the attention of the Defendants and that they know or have reason to know are for counterfeit or replica products bearing Plaintiffs' marks;

G. failing to immediately cancel a source's or supplier's access to any Defendant's website, staging area or business (1) identified by Plaintiffs as a seller, buyer, manufacturer, distributor of, or offering such services in connection with, goods allegedly infringing or counterfeiting Plaintiffs' marks, or (2) that otherwise comes to the attention of the Defendants where they know or have reason to know the member is a seller or buyer of counterfeit or replica products bearing Plaintiffs' marks;

H. doing any other act or thing likely to confuse, mislead, or deceive others into believing that Defendants emanate from, are connected with, sponsored by, licensed by, or approved by, BMW, or that Defendants' products and services are sponsored, licensed or approved by BMW or aiding and abetting others to do so;

I. otherwise engaging in activity likely to dilute BMW's Roundel logo, "BMW" word mark, RR Badge or any other famous trademark of BMW's;

J. utilizing or registering any domain names or sub-domain names that use or incorporate any of BMW's trademarks;

K. making any other trademark use of the "BMW" mark, "BMW Group, " or "Z8" mark, or any other BMW trademarks or colorable imitations thereof, including use of BMW's trademarks in metatags or any visible use of BMW's trademarks in Google Adwords or other keyword advertising; and

L. facilitating, inducing, assisting, aiding, abetting, or supplying the means for any other person or business entity to engage in or perform any of the activities referred to in the above subparagraphs (A) through (H), or effecting any assignments or transfers, forming new entities or associations or utilizing any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in subparagraphs (A) through (K).

IT IS FURTHER ORDERED, ADJUDGED AND DECREED that Defendants are directed to:

2. permanently delete and remove and recall from all websites, blogs, online auctions, stores, shops, markets, outlets, catalogues, or other channels of commerce any listings for goods bearing counterfeits of the BMW Marks, or any other non-genuine product confusingly similar to Plaintiffs' products, or that otherwise bear, contain, display or utilize the BMW Marks, any derivation or colorable imitations thereof, or any other BMW trademark or colorable imitation thereof;

3. in accordance with § 36 of the Federal Trademark Act, 15 U.S.C. § 1118, deliver up for destruction all counterfeit goods that bear Plaintiffs' marks, and/or any other products confusingly similar to Plaintiffs' products, or that otherwise bear, contain, display, or utilize the BMW Marks or any other BMW trademark or colorable imitation thereof, that are in Defendants' possession, custody, or control and all means of making the same;

4. in accordance with § 36 of the Federal Trademark Act, 15 U.S.C. § 1118, deliver up for destruction any and all guarantees, circulars, price lists, labels, signs, prints, packages, wrappers, pouches, receptacles, advertising and promotional matter, electronic files, and other materials in the possession or control of Defendants bearing the BMW Marks, any derivation or colorable imitations thereof, or any other BMW trademark or colorable imitation thereof; and

5. file with the Court and serve on counsel for Plaintiffs within thirty (30) days after entry of this Order, a sworn written statement pursuant to § 34(a) of the Federal Trademark Act, 15 U.S.C. § 1116(a), setting forth in detail the manner and form in which the Defendants have complied with this Consent Judgment and Permanent Injunction.

6. provide, without limitation, any information to the Plaintiffs concerning and/or provided by source of goods to any of the Defendants that could identify buyers, sellers, manufacturers or distributors of counterfeit goods bearing Plaintiffs' marks. This information can include, but is not limited to, names, addresses, telephone, email, credit card and bank account information.

IT IS FURTHER HEREBY ORDERED, ADJUDGED AND DECREED that:

7. DinoDirect China Ltd. shall pay via wire transfer to BMW AG a total of USD $50, 000 (fifty thousand dollars) by no later than June 15, 2013;

8. In the event of a breach of the Consent Judgment and Permanent Injunction, Defendants will be given 5 days following notice of the breach by Plaintiffs in order to cure the breach. If the breach is not cured within 3 business days, DinoDirect China Ltd. agrees to and shall immediately pay to Plaintiff BMW AG liquidated damages in the amount of USD $200, 000.

9. For any repeat failure to cure following the notice provided for in paragraph 8 above, DinoDirect China Ltd. agrees to and shall immediately pay to Plaintiff BMW AG additional liquidated damages in the amount of USD $500, 000.

10. The Defendants acknowledge that a breach of this Consent Judgment and Permanent Injunction by the Defendants would result in irreparable injury to Plaintiffs, and that in the event of a breach, Plaintiffs would be entitled to immediate injunctive relief to enforce this Consent Judgment and Permanent Injunction, liquidated damages for past and any ongoing trademark infringement, counterfeiting, or unfair competition, and to reimbursement of their reasonable attorneys' fees and costs arising from bringing an action against Defendants and enforcement of this Consent Judgment and Permanent Injunction.

11. This Consent Judgment and Permanent Injunction is binding upon the Defendants, subsidiaries, affiliates, and their respective officers, agents, servants, employees, independent contractors and attorneys, or any other person or entity acting in concert or participating with the Defendants, and on any successor in interest of future owners of the Defendants' websites or the customer data associated with the defendants' websites.

12. This Court shall retain jurisdiction of this matter and over the parties thereto for the purpose of enforcing the terms of this Consent Judgment and Permanent Injunction and the separate Settlement Agreement entered into between Plaintiffs and the Defendants with respect to the subject matter of this action.

13. In accordance with § 34 of the Federal Trademark Act, 15 U.S.C. § 1116, the Clerk of the Court shall notify the Commissioner of Patents and Trademarks of the entry of this Final Judgment who shall enter it upon the records of the United States Patent and Trademark Office.

14. There being no just reason for delay, the Clerk of this Court is hereby directed to enter this Final Judgment forthwith, which supersedes the Judgment previously entered in this action in favor or Plaintiffs and against Defendants.

IT IS SO ORDERED.


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