IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

VALENTINO ROSSI, )

) Case No. 20-cv-4746

Plaintiff, )

v. ) Judge Mary M. Rowland

)

THE INDIVIDUALS, CORPORATIONS, )

LIMITED LIABILITY COMPANIES, )

PARTNERSHIPS AND UNINCORPORATED )

ASSOCIATIONS IDENTIFIED ON SCHEDULE )

A HERETO, )

)

Defendants. )

MEMORANDUM IN SUPPORT OF PLAINTIFF’S EX PARTE MOTION FOR 

ENTRY OF A TEMPORARY RESTRAINING ORDER, INCLUDING A TEMPORARY 

INJUNCTION, A TEMPORARY TRANSFER OF THE DEFENDANT DOMAIN 

NAMES, A TEMPORARY ASSET RESTRAINT, EXPEDITED DISCOVERY, AND 

SERVICE OF PROCESS BY E-MAIL AND/OR ELECTRONIC PUBLICATION

Plaintiff VALENTINO ROSSI submits this Memorandum in support of his Ex Parte Motion

for Entry of a Temporary Restraining Order, including a temporary injunction, a temporary transfer 

of the Defendant Domain Names, a temporary asset restraint, expedited discovery, and service of 

process by email and/or electronic publication (the “Ex Parte Motion”). 

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TABLE OF CONTENTS

I. INTRODUCTION AND SUMMARY OF ARGUMENT........................................................1

II. STATEMENT OF FACTS..........................................................................................................5

A. PLAINTIFF’S TRADEMARK AND PRODUCTS ..............................................................................5

B. DEFENDANTS’ UNLAWFUL ACTIVITIES....................................................................................6

i. Defendants Operate Legitimate-Looking Internet Stores.................................................6

ii. Defendants Illegitimately Optimize the Defendants' Internet Stores for Search Engines 7

iii. Defendants Use Fictitious Aliases and Common Tactics to Evade Shut Down ..............7

III. ARGUMENT..............................................................................................................................10

A. THIS COURT MAY EXERCISE PERSONAL JURISDICTION OVER DEFENDANTS..........................11

B. STANDARD FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION ............12

C. PLAINTIFF WILL LIKELY SUCCEED ON THE MERITS...............................................................13

i. Plaintiff Will Likely Succeed on His Trademark Infringement and Counterfeiting Claim13

ii. Plaintiff Is Likely to Succeed on His False Designation of Origin Claim......................17

 iii. Plaintiff Is Likely to Succeed on His Illinois Uniform Deceptive Trade Practices Act 

Claim...................................................................................................................18

D. THERE IS NO ADEQUATE REMEDY AT LAW AND PLAINTIFF WILL SUFFER IRREPARABLE 

HARM IN THE ABSENCE OF PRELIMINARY RELIEF..................................................................18

E. THE BALANCING OF HARMS TIPS IN PLAINTIFF’S FAVOR ......................................................19

F. ISSUANCE OF THE INJUNCTION IS IN THE PUBLIC INTEREST....................................................20

IV. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE................................................21

A. A TEMPORARY RESTRAINING ORDER IMMEDIATELY ENJOINING DEFENDANTS’ 

UNAUTHORIZED AND UNLAWFUL USE OF PLAINTIFF’S MARKS IS APPROPRIATE ..................22

B. TRANSFERRING THE DEFENDANT DOMAIN NAMES TO PLAINTIFF’S CONTROL IS 

APPROPRIATE.........................................................................................................................23

C. PREVENTING THE FRAUDULENT TRANSFER OF ASSETS IS APPROPRIATE ...............................24

D. PLAINTIFF IS ENTITLED TO EXPEDITED DISCOVERY ..............................................................26

V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF................................................27

VI. CONCLUSION ..........................................................................................................................28

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TABLE OF AUTHORITIES

Cases

Abbott Labs. v. Mead Johnson & Co., 

971 F.2d 6, 11 (7th Cir. 1992) ........................................................................................................ 13

Abercrombie & Fitch Trading Co. v. 4cheapbags.com, 

No. 1:12-cv-21088 (S. D. Fla. April 4, 2012) (unpublished).................................................3, 23, 28

All Star Championship Racing, Inc. v. O’Reilly Auto. Stores, Inc., 

2013 WL 1701871, *10 (C.D. Ill. Apr. 18, 2013) .......................................................................... 17

Am. Broad. Co. v. Maljack Prods., Inc., 

34 F. Supp. 2d 665, 681 (N.D. Ill. 1998)........................................................................................ 18

Animale Grp. Inc. v. Sunny’s Perfume Inc., 

256 F. App’x 707, 709 (5th Cir. 2007)........................................................................................... 25

Beats Electronics, LLC v. The Partnerships, et al., 

No. 13-cv-6724 (N.D. Ill. Sept. 25, 2014) (unpublished)........................................................... 3, 22

Board of Directors of Sapphire Bay Condos. W. v. Simpson, 

129 F. App’x 711 (3d Cir. 2005) .................................................................................................... 24

Burger King Corp. v. Majeed, 

805 F. Supp. 994, 1006 (S.D. Fla. 1992) ........................................................................................ 20

CAE, Inc. v. Clean Air Eng’g Inc.,

267 F.3d 660, 681 (7th Cir. 2001) .................................................................................................. 15

Calvin Klein Trademark Trust, et al. v. The Partnerships, et al., 

No. 13-cv-8186 (N.D. Ill. Nov. 19, 2013) (unpublished)........................................................... 3, 22

Chanel, Inc. v. Paley, 

No. 3:09-cv04979-MHP (N.D. Cal. Nov. 13, 2009) (unpublished) ............................................... 24

Charter Nat’l Bank & Trust v. Charter One Fin., Inc., 

No. 1:01-cv-00905, 2001 WL 527404, *1 (N.D. Ill. May 15, 2001)......................................... 12-13

Christian Dior Couture, S.A. v. Liu, 

2015 U.S. Dist. LEXIS 158225 (N.D. Ill. Nov. 17, 2015).............................................................. 12

Chrome Hearts LLC v. The Partnerships, et al., 

No. 13-cv-4784 (N.D. Ill. July 10, 2013) (unpublished) ....................................................... 3, 22-23

Chrome Hearts LLC v. P'ships & Unincorporated Assns. Identified on Schedule "A", 

Case: 1:20-cv-04746 Document #: 9 Filed: 08/13/20 Page 3 of 38 PageID #:54
iii

2015 U.S. Dist. LEXIS 120232 (N.D. Ill. Sept. 9, 2015) ............................................................... 12

Coach, Inc., et al. v. Does 1-100, 

No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished).................................................. 3, 23, 28

Columbia Pictures Indus., Inc. v. Jasso, 

927 F. Supp. 1075, 1077 (N.D. Ill. 1996)....................................................................................... 11

CSC Holdings, Inc. v. Redisi, 

309 F.3d 988 (7th Cir. 2002) .......................................................................................................... 25

Deckers Outdoor Corp. v. Does 1-1,281,

No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)................................................... 3, 23, 28

Deckert v. Independence Shares Corp., 

311 U.S. 282 (1940)........................................................................................................................ 25

Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 

94 F.3d 376, 381 (7th Cir. 1996) .................................................................................................... 15

Eli Lilly & Co. v. Natural Answers, Inc.,

233 F.3d 456, 461, 462, 469 (7th Cir. 2000) ................................................................ 13, 15, 18, 20

Ford Motor Co. v. Lapertosa, 

126 F. Supp. 2d 463, 467 (E.D. Mich. 2001)............................................................................ 23, 24

G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 

873 F.2d 985, 999 (7th Cir. 1989) .................................................................................................. 15

Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis,

35 F.3d 1134, 1140 (7th Cir. 1994) ............................................................................................... 19

Gillespie v. Civiletti, 

629 F.2d 637, 642 (9th Cir. 1980) .................................................................................................. 26

Grupo Mexicano de Desarollo, S.A. v. Alliance Bond Fund,

527 U.S. at 308 (1999).................................................................................................................... 25

Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc.,

560 F.2d 1325, 1332 (7th Cir. 1977) .............................................................................................. 18

Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 

174 F.3d 411, 421 (4th Cir. 1999); Fed. R. Civ. P. 65(c) ............................................................... 27

Ideal Indus., Inc. v. Gardner Bender, Inc., 

612 F.2d 1018, 1026 (7th Cir. 1979)..................................................................19

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iv

In re Vuitton et Fils, S.A.,

606 F.2d 1 (2d Cir. 1979)............................................................................................................... 3-4

Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 

846 F.2d 1079, 1092 (7th Cir. 1988) .............................................................................................. 18

James Burrough Ltd. v. Sign of the Beefeater, Inc., 

540 F.2d 266, 274 (7th Cir. 1976) .................................................................................................. 20

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 

188 F. 3d 427, 436 (7th Cir. 1999) ................................................................................................. 17

Kraft Food Holdings, Inc. v. Helm, 

205 F. Supp. 2d 942, 956 (N.D. Ill. 2002)...................................................................................... 23

Krause Int’l Inc. v. Reed Elsevier, Inc., 

866 F. Supp. 585, 587-88 (D.D.C. 1994)........................................................................................ 20

Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 

51 F.3d 982, 987 (11th Cir. 1995) ................................................................................................. 25

Libman Co. v. Vining Indus., Inc., 

69 F.3d 1360, 1363 (7th Cir.1995) ................................................................................................. 16

Lorillard Tobacco Co. v. Montrose Wholesale Candies, 

2005 WL 3115892, at *13 (N.D. Ill. Nov. 8, 2005)........................................................................ 25

Lululemon Athletica Canada Inc. v. The Partnerships, et al.,

No. 13-cv-6297 (N.D. Ill. Sept. 10, 2013) (unpublished)........................................................... 3, 22

Luxottica USA LLC v. The Partnerships, et al., 

No. 13-cv-4429 (N.D. Ill. June 20, 2013) (unpublished)............................................................ 3, 23

Malarkey-Taylor Assocs., Inc. v. Cellular Telecomms. Indus. Ass’n,

929 F. Supp. 473, 478 (D.D.C. 1996)............................................................................................. 20

Manolo Blahnik Int’l Ltd. v. The Partnerships, et al.,

No. 13-cv-7810 (N.D. Ill. Nov. 12, 2013) (unpublished)........................................................... 3, 22

Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 

128 F.3d 1111, 1114 (7th Cir. 1997) .............................................................................................. 18

Michael Kors, L.L.C. v. The Partnerships and Unincorporated Associations Identified on Schedule 

“A”, 

No. 13-cv-8612 (N.D. Ill. Dec. 5, 2013) (unpublished).............................................................. 3, 22

Monster Energy Co. v. Chen Wensheng, 

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v

2015 U.S. Dist. LEXIS 132283 (N.D. Ill. Sept. 29, 2015) ............................................................. 12

NBA Properties, Inc., et al. v. The Partnerships, et al., 

No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) (unpublished) .............................................................. 3, 22

Neopost Industrie B.V. v. PFE Int’l Inc., 

403 F. Supp. 2d 669, 684 (N.D. Ill. 2005)................................................................................ 14, 17

Oakley, Inc. v. Does 1-100, 

No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012) (unpublished)...................................................... 3, 23, 28

Oppenheimer Fund, Inc. v. Sanders, 

437 U.S. 340, 351, 98 S.Ct. 2380 (1978)........................................................................................ 26

Philip Morris U.S.A., Inc. v. Otamedia Ltd., 

331 F. Supp. 2d 228, 246 (S.D.N.Y. 2004)..................................................................................... 24

Polaroid Corp. v. Polarad Electronics Corp., 

287 F.2d 492, 495 (2d Cir. 1961).................................................................................................... 14

Polo Fashions, Inc. v. Craftex, Inc., 

816 F.2d 145, 148 (4th Cir.1987) .............................................................................................. 14-15

Promatek Industries, Ltd. v. Equitrac Corp., 

300 F.3d 808, 813 (7th Cir. 2002) .................................................................................................. 19

Purdue Research Found. v. Sanofi-Sythelabo, S.A.,

338 F.3d 773, 782 (7th Cir. 2003) .................................................................................................. 12

Rathmann Grp. v. Tanenbaum, 

889 F.2d 787, 789 (8th Cir. 1989) .................................................................................................. 27

Re/Max N. Cent., Inc. v. Cook, 

272 F.3d 424, 432 (7th Cir. 2001) .................................................................................................. 18

Reebok Int'l Ltd. v. Marnatech Enters., Inc., 

970 F.2d 552, 559 (9th Cir. 1992) ................................................................................................. 25

Sands, Taylor & Wood Co. v. Quaker Oats Co., 

978 F.2d 947, 960 (7th Cir. 1992) .................................................................................................. 16

Shashi, Inc. v. Ramada Worldwide, Inc., 

No. 7:05-cv-00016-JGW-mfu, 2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005)............................ 21

Spex, Inc. v. Joy of Spex, Inc.,

847 F. Supp. 567, 579 (N.D. Ill. 1994)........................................................................................... 18

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vi

Stahly, Inc. v. M.H. Jacobs Co., 

183 F.2d 914, 917 (7th Cir. 1950) .................................................................................................. 20

Topps Co., Inc. v. Gerrit J. Verburg Co., 

41 U.S.P.Q.2d 1412, 1417 (S.D.N.Y.1996).................................................................................... 14

Tory Burch LLC v. Zhong Feng, et al.,

No. 1:12-cv-09066 (N.D. Ill. Nov. 15, 2012) (unpublished)................................................ 3, 23, 28

Tory Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., 

No. 1:10-cv-09336-DAB (S.D.N.Y. Jan. 4, 2011) (unpublished) .............................................. 3, 23

Trans Union LLC v. Credit Research, Inc., 

142 F. Supp. 2d 1029, 1043 (N.D. Ill. 2001).................................................................................. 16

True Religion Apparel, Inc. v. Does 1-100,

No. 12-cv-9894 (N.D. Ill. Dec. 20, 2012) (unpublished)..................................................... 3, 23, 28

Ty, Inc. v. The Jones Group, Inc., 

237 F.3d 891, 895 (7th Cir. 2001) ............................................................................................ 13, 19

uBID, Inc. v. GoDaddy Group, Inc. 

623 F.3d 421, 423 (7th Cir. 2010) .................................................................................................. 12

Vance v. Rumsfeld, 

No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) ........................................... 26

Wesley–Jessen Division of Schering Corp. v. Bausch & Lomb Inc., 

698 F.2d 862, 867 (7th Cir.1983) ................................................................................................... 18

Statutes

15 U.S.C. § 1051 et seq....................................................................................................................... 11

15 U.S.C. § 1057(b)........................................................................................................................ 5, 14

15 U.S.C. § 1114(1)....................................................................................................................... 13-14

15 U.S.C. § 1116(a) ........................................................................................................................ 4, 21

15 U.S.C. § 1117(a) .............................................................................................................................. 4

15 U.S.C. § 1117(a)(1)........................................................................................................................ 25

15 U.S.C. § 1125(a)..............................................................................................17

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15 U.S.C. § 1125(c)(1).......................................................................................................................... 5

17 U.S.C. § 101...................................................................................................11

28 U.S.C. § 1331................................................................................................................................. 11

28 U.S.C. § 1367(a) ............................................................................................................................ 11

28 U.S.C. § 1391................................................................................................................................. 11

28 U.S.C. §§ 1338(a)-(b) .................................................................................................................... 11

735 ILCS 5/2-209(c)(2)..........................................................................................12

Fed. R. Civ. P. 26(b)(2)....................................................................................................................... 26

Fed. R. Civ. P. 65................................................................................................................................ 22

Fed. R. Civ. P. 65(c).............................................................................................27

Fed. R. Civ. P. 65(b) ..................................................................................................................... 10, 21

Fed. R. Civ. P. 65(d)(2)(C) ....................................................................................................... 4, 21, 27

Fed. R. Civ. P.65(b)(1)........................................................................................................................ 19

Other Authorities

4 Callmann on Unfair Competition, Trademark and Monopolies

§ 88.3(b) at 205 (3d ed. 1970)..........................................................................................................19

J. Thomas McCarthy, McCarthy on Trademark and Unfair Competition

§ 30:40 (4th ed. 2013)......................................................................................................................26

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MEMORANDUM OF LAW

I. INTRODUCTION AND SUMMARY OF ARGUMENT 

 Plaintiff brings this action against the defendants identified in Schedule A to the 

Complaint (collectively, the “Defendants”) for federal trademark infringement and counterfeiting 

(Count I), false designation of origin (Count II) and violation of the Illinois Uniform Deceptive 

Trade Practices Act (Count IIII). As alleged in the Complaint, Defendants are promoting,

advertising, marketing, distributing, offering for sale, and selling counterfeit products in 

connection with Plaintiff’s Federally Registered Trademark -- No. 3,499,157 (“Counterfeit 

VRǀ46 Products”), through various fully interactive commercial Internet websites operating 

under at least the Defendant Domain Names and Online Marketplace Accounts listed in 

Schedule A to the Complaint (collectively, the “Defendant Internet Stores”). In short, Defendants 

run a counterfeiting operation with disregard for anything except generating profits.

The Defendants create numerous Defendant Internet Stores with an intent to have them 

appear to be selling genuine products, while actually selling unauthorized and unlicensed 

Counterfeit VRǀ46 Products to unknowing consumers. The Defendants Internet Stores share 

unique identifiers, such as design elements and similarities of the counterfeit products offered for 

sale, establishing a logical relationship between them and suggesting that Defendants’ 

counterfeiting operation arises out of the same transaction, occurrence, or series of transactions 

or occurrences. Defendants attempt to avoid liability by concealing both their identities and the 

full scope and interworking of their counterfeiting operation. Plaintiff has filed this action to 

combat Defendants’ infringement and counterfeiting of Plaintiff’s registered trademark as well 

as to protect unknowing consumers from purchasing Counterfeit VRǀ46 Products over the 

internet.

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This Court has personal jurisdiction over Defendants because each Defendant targets 

Illinois residents and has offered to sell and, on information and belief, has sold and continues to 

sell Counterfeit VRǀ46 Products to consumers within the United States, including the State of

Illinois. Specifically, Defendants are reaching out to do business with Illinois residents by 

operating one or more commercial, interactive Internet Stores through which Illinois residents

can purchase products being sold in connection with Plaintiff’s VRǀ46 Trademark. Defendants 

directly target unlawful business activities toward consumers in Illinois, cause harm to Plaintiff’s

business within this judicial district, and have caused and will continue to cause irreparable 

injury to Plaintiff. Defendants deceive the public by trading upon Plaintiff’s reputation and 

goodwill by using their commercial, interactive Internet Stores to sell and/or offer for sale 

unlicensed Counterfeit VRǀ46 Products in connection with Plaintiff’s Trademark. 

Defendants’ ongoing unlawful activities should be restrained, and Plaintiff respectfully 

request that this Court issue an ex parte a Temporary Restraining Order. Specifically, Plaintiff

seeks an order: (1) temporarily restraining Defendants’ continued manufacture, importation, 

distribution, offering for sale, and sale of Counterfeit VRǀ46 Products; (2) temporarily 

transferring the Defendant Domain Names to Plaintiff so that the continued use of the domains in 

carrying out acts of infringement can be temporarily disabled; and (3) temporarily restraining 

Defendants’ assets to preserve Plaintiff’s right to an equitable accounting. Ancillary to and as 

part of the TRO, Plaintiff respectfully requests that this Court (4) authorize expedited discovery 

allowing Plaintiff to inspect and copy Defendants’ records relating to the manufacture, 

distribution, offering for sale, and sale of Counterfeit VRǀ46 Products and Defendants’ financial 

accounts; and (5) authorize service by electronic mail and/or electronic publication at the 

Defendant Domain Names.

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In light of the covert nature of offshore counterfeiting activities and the vital need to 

establish an economic disincentive for trademark infringement, courts regularly issue such

orders. See, e.g., Michael Kors, L.L.C. v. The Partnerships, et al., No. 13-cv-8612 (N.D. Ill. Dec. 

5, 2013) (unpublished) (Granting ex parte Temporary Restraining Order); Calvin Klein 

Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv-8186 (N.D. Ill. Nov. 19, 2013) 

(unpublished) (same); Manolo Blahnik Int’l Ltd. v. The Partnerships, et al., No. 13-cv-7810 

(N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA Properties, Inc., et al. v. The Partnerships, 

et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) (unpublished) (same); Beats Electronics, LLC v. 

The Partnerships, et al., No. 13-cv-6724 (N.D. Ill. Sept. 25, 2014) (unpublished) (same); 

Lululemon Athletica Canada Inc. v. The Partnerships, et al., No. 13-cv-6297 (N.D. Ill. Sept. 10, 

2013) (unpublished) (same); Chrome Hearts LLC v. The Partnerships, et al., No. 13-cv-4784 

(N.D. Ill. July 10, 2013) (unpublished) (same); Luxottica USA LLC v. The Partnerships, et al., 

No. 13-cv-4429 (N.D. Ill. June 20, 2013) (unpublished) (same); Oakley, Inc. v. Does 1-100, No. 

12-cv-9864 (N.D. Ill. Dec. 14, 2012) (unpublished) (same); True Religion Apparel, Inc. v. Does 

1-100, No. 12-cv-9894 (N.D. Ill. Dec. 20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong 

Feng, et al., No. 1:12-cv09066 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al. 

v. Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers 

Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)

(same); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla. 

June 6, 2012) (unpublished) (same); Tory Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No. 

1:10-cv-09336-DAB (S.D.N.Y. Jan. 4, 2011) (unpublished) (same); see also, In re Vuitton et

Fils, S.A., 606 F.2d 1 (2d Cir. 1979) (holding that ex parte temporary restraining orders are 

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indispensable to the commencement of an action when they are the sole method of preserving a 

state of affairs in which the court can provide effective final relief). 

Plaintiff’s well-pleaded factual allegations, which must be accepted as true, and evidence 

submitted through declarations, establishes that issuing a temporary restraining order against 

Defendants is necessary and proper. Plaintiff can demonstrate a strong likelihood of success on 

the merits. Plaintiff is the owner of Trademark Registration No. 3,499,157. Defendants’ use of

Plaintiff’s Trademark to sell Counterfeit VRǀ46 Products is causing consumer confusion. 

In addition, Defendants have and continue to irreparably harm Plaintiff through 

diminished goodwill and damage to Plaintiff’s reputation. Monetary damages are inadequate to 

Plaintiff for these damages. This makes injunctive relief particularly appropriate in this matter.

Issuance of an injunction is also in the public interest because it will prevent confusion 

among the public and prevent unknowing consumers from being deceived into purchasing 

Counterfeit VRǀ46 Products. 

In addition, an order authorizing the transfer of the Defendant domain names to 

Plaintiff’s control so that the continued use of the domains in carrying out acts of infringement 

can be temporarily disabled is warranted pursuant to 15 U.S.C. § 1116(a) which authorizes this 

Court “to grant injunctions ... to prevent the violation of any right of the registrant of a mark....” 

Moreover, under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power to bind 

any third parties, such as domain name registries and financial institutions, who are in active 

concert with the Defendants or who aid and abet Defendants and are given actual notice of the 

order. Similarly, a prejudgment asset freeze is also proper since Plaintiff seeks an equitable 

remedy in the accounting of Defendants’ profits pursuant to 15 U.S.C. § 1117(a). Finally, an 

order authorizing service of process by email and/or electronic publication is proper since as a

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5

result of Defendants’ intentional efforts to conceal their identities and operate their business 

online. Serving Defendants electronically is the best method for notifying them of this action and 

providing them the opportunity to defend and present their objections.

II. STATEMENT OF FACTS

A. Plaintiff’s Trademark and Products

Plaintiff is in the business of developing, marketing, selling and distributing the VRǀ46

brand of products that relate to one of the greatest professional motorcycle racers of all time who 

has ridden with the number 46 his entire career. See Declaration of Christian Zierhut (the “Zierhut

Declaration”) at ¶¶ 4-5. Plaintiff has expended substantial time, money and other resources 

promoting the VRǀ46 brand products. Id. at ¶10.

Plaintiff ais the owner of the VRǀ46 Trademark. Id. at ⁋6. The U.S. Registration for the 

VRǀ46 Trademark is valid, subsisting, and in full force and effect. Id. at ¶ 7. A true and correct copy

of the federal trademark registration certificate for the VRǀ46 Trademark is attached to the Zierhut

Declaration as Exhibit 1.

The VRǀ46 Trademark is distinctive and identifies the merchandise as goods from 

Plaintiff. Id. at ¶ 8. The registration for the VRǀ46 Trademark constitutes prima facie evidence of

their validity and of Plaintiff’s exclusive right to use the VRǀ46 Trademark pursuant to 15 U.S.C. §

1057(b). The VRǀ46 Trademark qualifies as a famous mark, as that term is used in 15 U.S.C. § 

1125(c)(1), and have been continuously used and never abandoned. Id. at ¶ 9. Plaintiff has

expended substantial time, money, and other resources in developing, advertising, and otherwise 

promoting the VRǀ46 Trademark. Id. at ¶ 10. As a result, products bearing the VRǀ46 Trademark

are widely recognized and exclusively associated by consumers, the public, and the trade as being 

products sourced from Plaintiff. Id. 

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B. Defendants’ Unlawful Activities

The success of the VRǀ46 brand has resulted in those products being counterfeited. Id. at 

¶ 11. Plaintiff has identified numerous domain names linked to fully interactive websites and 

marketplace listings on platforms such as eCrater, eBay and PayPal, including the Defendants

Internet Stores, which were offering for sale, selling, and importing Counterfeit VRǀ46 Products 

to consumers in this judicial district and throughout the United States. Id. Internet websites like 

the Defendants’ Internet Stores are estimated to receive tens of millions of visits per year and to 

generate over $135 billion in annual online sales. Declaration of Michael A. Hierl (the “Hierl” 

Declaration) at ¶ 2. According to an intellectual property rights seizures statistics report issued 

by Homeland Security, the manufacturer’s suggested retail price (MSRP) of goods seized by the 

U.S. government during 2017 exceeded $1.2 billion. Id. at ¶ 3. Internet websites like the 

Defendants’ Internet Stores are also estimated to contribute to tens of thousands of lost jobs for 

legitimate businesses and broader economic damages such as lost tax revenue every year. Id. at ¶ 

4.

i. Defendants Operate Legitimate-Looking Internet Stores 

Upon information and belief, Defendants facilitate sales by designing the Defendants’

Internet Stores so that they appear to unknowing consumers to be authorized online retailers, 

outlet stores, or wholesalers selling genuine VRǀ46 Products. Zierhut Declaration at ¶ 13. Many 

of the Defendants’ Internet Stores look sophisticated and accept payment in U.S. dollars via 

credit cards, Western Union, eCrater, eBay and PayPal. Id. Defendants’ Internet Stores often 

include images and design elements that make it very difficult for consumers to distinguish such 

counterfeit sites from an authorized website. Id. Defendants further perpetuate the illusion of 

legitimacy by offering “live 24/7” customer service and using indicia of authenticity and security 

that consumers have come to associate with authorized retailers, including the McAfee® 

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Security, VeriSign®, Visa®, MasterCard®, eCrater, eBay and PayPal logos. Id. Plaintiff has not 

licensed or authorized Defendants to use its VRǀ46 Trademark and none of the Defendants are 

authorized retailers of genuine VRǀ46 Products. Id.

ii. Defendants Illegitimately Optimize the Defendants’ Internet Stores for Search Engines

Upon information and belief, Defendants also deceive unknowing consumers by using 

the VRǀ46 Trademark without authorization within the content, text, and/or meta tags of their 

websites in order to attract various search engines crawling the Internet looking for websites 

relevant to consumer searches for VRǀ46 Products. Id. at ¶ 14. Additionally, upon information 

and belief, Defendants use other unauthorized search engine optimization (SEO) tactics and 

social media spamming so that the Defendants’ Internet Stores listings show up at or near the top 

of relevant search results and misdirect consumers searching for genuine VRǀ46 Products. Id. 

Further, Defendants utilize similar illegitimate SEO tactics to propel new domain names to the 

top of search results after others are shut down. Id. As such, Plaintiff also seeks to disable

Defendants’ Domain Names owned by Defendants that are the means by which the Defendants 

could continue to sell Counterfeit VRǀ46 Products.

iii. Defendants Use Fictitious Aliases and Common Tactics to Evade Shut Down

Defendants go to great lengths to conceal their identities and often use multiple fictitious 

names and addresses to register and operate their network of Defendants’ Internet Stores. Id. at ¶ 

15. For example, many of Defendants’ names and physical addresses used to register the 

Defendants’ Domain Names are incomplete, contain randomly typed letters, or fail to include

cities or states. Other Defendants’ Domain Names use privacy services that conceal the owners’ 

identity and contact information. Id. at ¶ 16. Upon information and belief, Defendants regularly 

create new websites and online marketplace accounts on various platforms using the identities 

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listed in Schedule A to the Complaint, as well as other unknown fictitious names and addresses. 

Id at ¶ 17. Such Defendants’ Internet Store registration patterns are one of many common tactics 

used by the Defendants to conceal their identities, the full scope and interworking of their 

counterfeiting operation, and to avoid being shut down. Id at ¶ 15. 

Even though Defendants operate under multiple fictitious names, there are numerous 

similarities among the Defendants’ Internet Stores. Id. at ¶ 16. For example, many of the 

Defendants’ websites have virtually identical layouts, even though different aliases were used to

register the respective domain names. In addition, Counterfeit VRǀ46 Products for sale in the 

Defendants’ Internet Stores bear similar indicia of being counterfeit to one another, suggesting 

that the Counterfeit VRǀ46 Products were manufactured by and come from a common source and 

that, upon information and belief, Defendants are interrelated. Id. The Defendants’ Internet 

Stores also include other notable common features, including use of the same domain name 

registration patterns, unique shopping cart platforms, accepted payment methods, check-out 

methods, meta data, illegitimate SEO tactics, HTML user-defined variables, domain redirection, 

lack of contact information, identically or similarly priced items and volume sales discounts, the 

same incorrect grammar and misspellings, similar hosting services, similar name servers, and the

use of the same text and images. Id. 

In addition to operating under multiple fictitious names, Defendants in this case and 

defendants in other similar cases against online counterfeiters use a variety of other common 

tactics to evade enforcement efforts. Id. at ¶ 17. For example, counterfeiters like Defendants will 

often register new domain names or online marketplace accounts under new aliases once they 

receive notice of a lawsuit. Id. Counterfeiters also often move website hosting to rogue servers 

located outside the United States once notice of a lawsuit is received. Rogue servers are 

notorious for ignoring take down demands sent by brand owners. Id. Counterfeiters also

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typically ship products in small quantities via international mail to minimize detection by U.S. 

Customs and Border Protection. Id. A 2017 Homeland Security report on seizure statistics

indicated that the Internet has fueled a “sharp increase” in the number of small packages of 

counterfeit goods shipped through the mail and express carriers. Hierl Declaration at ¶ 3. 

Further, counterfeiters such as Defendants typically operate multiple credit card merchant

accounts, eCrater, eBay and PayPal accounts behind layers of payment gateways so that they can 

continue operation. Zierhut Declaration at ¶ 18. Upon information and belief, Defendants 

maintain off-shore bank accounts and regularly move funds from their accounts to off-shore 

bank accounts outside the jurisdiction of this Court. Id. See also, Hierl Declaration at ¶ 7. Indeed, 

analysis of transaction logs from similar cases brought by other trademark owners indicates that 

off-shore counterfeiters regularly move funds from their U.S. accounts to China-based bank

accounts outside the jurisdiction of this Court. Hierl Declaration at ¶ 9.

Plaintiff’s well-pleaded allegations regarding registration patterns, similarities among the 

Defendants’ Internet Stores and the Counterfeit VRǀ46 Products for sale thereon, and common

tactics employed to evade enforcement establish a logical relationship among the Defendants 

suggesting that Defendants are an interrelated group of counterfeiters. Upon information and 

belief, Defendants are working in active concert to knowingly and willfully manufacture, import, 

distribute, offer for sale, and sell products in connection with counterfeit versions of the VRǀ46

Trademark in the same transaction, occurrence, or series of transactions or occurrences. As 

indicated above, the tactics used by Defendants to conceal their identities and the full scope of 

their counterfeiting operation make it virtually impossible for Plaintiff to discover the true 

identities of the Defendants, the exact interworking of the Defendants’ counterfeit network, and 

the relationship among Defendants. In the event that Defendants provide additional credible 

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information regarding their identities, Plaintiff will take appropriate steps to amend the 

Complaint.

III. ARGUMENT

Defendants’ purposeful, intentional, and unlawful conduct is causing and will continue to 

cause irreparable harm to Plaintiff’s reputation and the goodwill associated with the VRǀ46

Trademark. To stop Defendants’ sale of Counterfeit VRǀ46 Products, Plaintiff respectfully 

requests that this Court issue a temporary restraining order ordering, among other things, the

transfer of the Defendants’ Domain Names to Plaintiff to redirect to a website providing notice 

of these proceedings and the freezing of Defendants’ assets. Without the relief requested by

Plaintiff’s instant Motion, Defendants’ unlawful activity will continue unabated, and Plaintiff

and consumers will suffer irreparable harm. 

Rule 65(b) of the Federal Rules of Civil Procedure provides that the Court may issue an 

ex parte temporary restraining order where immediate and irreparable injury, loss, or damage 

will result to the applicant before the adverse party or that party's attorney can be heard in 

opposition. Fed. R. Civ. P. 65(b). The Defendants here fraudulently promote, advertise, offer to 

sell, and sell goods in connection with counterfeits of the VRǀ46 Trademark via the Defendants’

Internet Stores. Defendants are creating a false association in the minds of consumers between

the Defendants and Plaintiff by deceiving consumers into believing that the Counterfeit VRǀ46

Products for sale on Defendants’ websites are sponsored or endorsed by Plaintiff. The entry of a 

temporary restraining order is appropriate because it would immediately stop the Defendants 

from benefiting from their wrongful use of the VRǀ46 Trademark and preserve the status quo 

until such time as a hearing can be held. 

In the absence of a temporary restraining order without notice, the Defendants can and 

likely will modify registration data and content, change hosts, redirect traffic to other websites in 

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their control, and move any assets from U.S.-based bank accounts, including eCrater, eBay and 

PayPal accounts. Courts have recognized that civil actions against counterfeiters present special 

challenges that justify proceeding on an ex parte basis. See Columbia Pictures Indus., Inc. v. 

Jasso, 927 F. Supp. 1075, 1077 (N.D. Ill. 1996) (observing that “proceedings against those who 

deliberately traffic in infringing merchandise are often useless if notice is given to the 

infringers”). As such, Plaintiff respectfully requests that this Court issue the requested ex parte

temporary restraining order. This Court has original subject matter jurisdiction over the claims in

this action pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051 et seq., 28 U.S.C. §§

1338(a)-(b), and 28 U.S.C. § 1331 and the Copyright Act, 17 U.S.C. § 101 et seq. This Court has 

jurisdiction over the claims in this action that arise under the laws of the State of Illinois pursuant 

to 28 U.S.C. § 1367(a), because the state law claims are so related to the federal claims that they 

form part of the same case or controversy and derive from a common nucleus of operative facts. 

Venue is proper in this Court pursuant to 28 U.S.C. § 1391.

A. This Court May Exercise Personal Jurisdiction over Defendants

This Court may properly exercise personal jurisdiction over Defendants since Defendants 

directly target business activities toward consumers in the United States, including Illinois, by 

directly offering for sale products into this Judicial District as well as through at least the fully 

interactive, commercial Defendant Internet Stores. Specifically, Defendants are reaching out to 

do business with Illinois residents by operating one or more commercial, interactive Defendants’

Internet Stores through which Illinois residents can purchase products bearing counterfeit 

versions of the VRǀ46 Trademark. Each Defendant has targeted sales from Illinois residents by 

operating online stores that offer shipping to the United States, including Illinois, and has offered 

to sell, and on information and belief, has sold and continues to sell Counterfeit VRǀ46 Products

to consumers within the United States, including the State of Illinois. See Complaint at ¶¶ 2, 21

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and 22. Without the benefit of an evidentiary hearing, Plaintiff bears only the burden of making a 

prima facie case for personal jurisdiction; all of Plaintiff’s asserted facts should be accepted as 

true and any factual determinations should be resolved in its favor. See uBID, Inc. v. GoDaddy 

Group, Inc. 623 F.3d 421, 423 (7th Cir. 2010); see also, Purdue Research Found. v. SanofiSythelabo, S.A., 338 F.3d 773, 782 (7th Cir. 2003) (“When determining whether a plaintiff has 

met his burden, jurisdictional allegations pleaded in the complaint are accepted as true unless 

proved otherwise by defendants' affidavits or exhibits.”). 

Illinois courts regularly exercise personal jurisdiction over websites using registered 

trademark without authorization in connection with the offering for sale and selling of infringing 

and counterfeit merchandise to Illinois residents over the Internet. 735 ILCS 5/2-209(a)(2). See, 

e.g., Christian Dior Couture, S.A. v. Liu, 2015 U.S. Dist. LEXIS 158225 (N.D. Ill. Nov. 17, 

2015); Monster Energy Co. v. Chen Wensheng, 2015 U.S. Dist. LEXIS 132283 (N.D. Ill. Sept. 

29, 2015); Chrome Hearts LLC v. P'ships & Unincorporated Assns. Identified on Schedule "A", 

2015 U.S. Dist. LEXIS 120232 (N.D. Ill. Sept. 9, 2015).

Through at least the fully interactive commercial Internet websites operating under the

Defendant Domain Names and the marketplace listings operated using the Online Marketplace 

Accounts, each of the Defendants has targeted sales from Illinois residents by offering shipping 

to the United States, including Illinois, and, on information and belief, has sold or offered to sell 

Counterfeit VRǀ46 Products to residents of the United States, including Illinois. Each of the

Defendants is committing tortious acts in Illinois, engaging in interstate commerce, and has

wrongfully caused Plaintiff substantial injuries in the State of Illinois.

B. Standard for Temporary Restraining Order and Preliminary Injunction

District Courts within this Circuit hold that the standard for granting a temporary

restraining order and the standard for granting a preliminary injunction are identical. See, e.g.

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Charter Nat’l Bank & Trust v. Charter One Fin., Inc., No. 1:01-cv-00905, 2001 WL 527404, *1 

(N.D. Ill. May 15, 2001) (citation omitted). A party seeking to obtain a preliminary injunction 

must demonstrate: (1) that its case has some likelihood of success on the merits; (2) that no 

adequate remedy at law exists; and (3) that it will suffer irreparable harm if the injunction is not 

granted. See Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891, 895 (7th Cir. 2001). 

If the Court is satisfied that these three conditions have been met, then it must consider 

the harm that the nonmoving party will suffer if preliminary relief is granted, balancing such 

harm against the irreparable harm the moving party will suffer if relief is denied. Id. Finally, the 

Court must consider the potential effect on the public interest (non-parties) in denying or 

granting the injunction. Id. The Court then weighs all of these factors, “sitting as would a 

chancellor in equity,” when it decides whether to grant the injunction. Id. (quoting Abbott Labs. 

v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992)). This process involves engaging in what 

the Court has deemed “the sliding scale approach” – the more likely the plaintiff will succeed on 

the merits, the less the balance of harms need favor the Plaintiff’s position. Id. The sliding scale 

approach is not mathematical in nature, rather “it is more properly characterized as subjective 

and intuitive, one which permits district courts to weigh the competing considerations and mold 

appropriate relief.” Id. at 895-896. The greater the movant's likelihood of succeeding on the

merits, the less the balancing of harms need be in his favor. See Eli Lilly & Co. v. Natural 

Answers, Inc., 233 F.3d 456, 461 (7th Cir. 2000).

C. Plaintiff Will Likely Succeed on the Merits 

i. Plaintiff Will Likely Succeed on His Trademark Infringement and Counterfeiting Claim

A defendant is liable for trademark infringement and counterfeiting under the Lanham 

Act if it, “without the consent of the registrant, uses in commerce any reproduction, copy, or 

colorable imitation of a registered mark in connection with the sale, offering for sale, 

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distribution, or advertising of any goods ... which such use[s] is likely to cause confusion, or to

cause mistake, or to deceive.” 15 U.S.C. § 1114(1). To prove a prima facie case of infringement, 

a plaintiff must show (1) its mark is distinctive enough to be worthy of protection; (2)

Defendants are not authorized to use the trademark; and (3) Defendants’ use of the trademark

causes a likelihood of confusion as to the origin or sponsorship of Defendants’ products. See 

Neopost Industrie B.V. v. PFE Int’l Inc., 403 F. Supp. 2d 669, 684 (N.D. Ill. 2005) (citation 

omitted). Plaintiff satisfies all three requirements of the Lanham Act to successfully bring a 

trademark infringement and counterfeiting claim.

Regarding the first two elements, Plaintiff’s VRǀ46 Trademark is inherently distinctive 

and is registered with the United States Patent and Trademark Office on the Principal Register. 

The VRǀ46 Trademark have been continuously used. Zierhut Declaration at ¶¶ 8-9. The 

registrations for the VRǀ46 Trademark is valid, subsisting, and in full force and effect. Id. at ⁋ 7. 

The registrations for the VRǀ46 Trademark constitutes prima facie evidence of their validity and 

of Plaintiff’s exclusive right to use the VRǀ46 Trademark pursuant to 15 U.S.C. § 1057(b). 

Furthermore, Plaintiff have not licensed or authorized Defendants to use either of the VRǀ46

Trademark, and none of the Defendants is an authorized retailer of genuine VRǀ46 Products. Id.

at ¶ 13. 

Plaintiff satisfies the third factor, as well. Some courts do not undertake a factor-by-factor

analysis under Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)

because counterfeits, by their very nature, cause confusion. See Topps Co., Inc. v. Gerrit J. 

Verburg Co., 41 U.S.P.Q.2d 1412, 1417 (S.D.N.Y.1996) ("Where the marks are identical, and 

the goods are also identical and directly competitive, the decision can be made directly without a 

more formal and complete discussion of all of the Polaroid factors."); Polo Fashions, Inc. v. 

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Craftex, Inc., 816 F.2d 145, 148 (4th Cir.1987) ("Where, as here, one produces counterfeit goods 

in an apparent attempt to capitalize upon the popularity of, and demand for, another's product,

there is a presumption of a likelihood of confusion."). 

The Seventh Circuit, however, has enumerated seven factors to determine whether there 

is a likelihood of confusion: (1) similarity between the marks in appearance and suggestion; (2) 

similarity of the products; (3) area and manner of concurrent use; (4) degree of care likely to be

exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and, (7) intent

of the defendants to palm off their products as that of another. Eli Lilly, 233 F.3d at 461-462

(citation omitted). These factors are not a mechanical checklist, and “[t]he proper weight given to 

each of [the] factors will vary from case to case.” Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 

376, 381 (7th Cir. 1996). At the same time, although no one factor is decisive, the similarity of 

the marks, the intent of the defendant, and evidence of actual confusion are the most important 

considerations. G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 999 (7th 

Cir. 1989). 

In this case, Plaintiff plainly satisfies the likelihood of confusion test. The Defendants are 

selling Counterfeit VRǀ46 Products using counterfeit marks identical to the VRǀ46 Trademark. 

As such, the first and second likelihood of confusion factors weigh heavily in favor of Plaintiff. 

Plaintiff also satisfies the third factor, namely, the area and manner of concurrent use.

When considering the third factor, a court looks at “whether there is a relationship in use, 

promotion, distribution or sales between the goods or services of the parties.” CAE, Inc. v. Clean 

Air Eng’g Inc., 267 F.3d 660, 681 (7th Cir. 2001). A court also looks to whether the parties used 

the same channels of commerce, targeted the same general audience, and/or used similar 

marketing procedures. Id. Here, both Plaintiff and Defendants show the same products using the 

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VRǀ46 Trademark to the same consumers. See Exhibit 1 to the Zierhut Declaration. Thus, 

because Defendants target the same consumers as Plaintiff, this factor also weighs in favor of 

Plaintiff. 

Regarding the fourth factor, degree of consumer care, potential consumers purchasing 

VRǀ46 Products are not restricted to a certain specialized, sophisticated group of people. Rather, 

the consumer base is a diverse group of people. “[W]hen a buyer class is mixed, the standard of

care to be exercised by the reasonably prudent purchaser will be equal to that of the least 

sophisticated consumer in the class.” Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 

1029, 1043 (N.D. Ill. 2001) (citation omitted). As such, VRǀ46 brand consumers are very likely 

to be confused, so this factor favors Plaintiff.

Due to their long-standing use and wide acceptance by the public, the VRǀ46 Trademark

has become famous and associated with high quality VRǀ46 Products. The VRǀ46 Trademark is

distinctive when applied to the VRǀ46 Products. The mark signifies to consumers that the 

products come from Plaintiff and are manufactured to the highest quality standards. Thus, the

fifth factor, the strength of the mark, also weighs heavily in favor of Plaintiff. 

As for the sixth factor, Plaintiff do not need to prove likelihood of confusion with 

evidence of actual confusion; instead, it merely needs to show some evidence of potential 

confusion. See Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1363 (7th Cir.1995); see also

Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 960 (7th Cir. 1992) (the Seventh 

Circuit has consistently found that “plaintiff need not show actual confusion in order to establish 

likelihood of confusion.”). In this case, actual confusion can be inferred because Defendants are 

selling counterfeit VRǀ46 Products in connection with the VRǀ46 Trademark. Because the goods 

are similar and have identical and similar uses, consumers will be confused and think that 

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Defendants’ products are genuine VRǀ46 Products or are sponsored or endorsed by Plaintiff. This 

factor weighs in favor of Plaintiff. 

Regarding the seventh and final factor, Defendants are intentionally using the VRǀ46

Trademark to confuse and deceive the consuming public into thinking that Defendants’ 

Counterfeit VRǀ46 Products are manufactured by or emanate from Plaintiff. Defendants are 

purposefully attempting to benefit and trade off Plaintiff’s goodwill and reputation. Therefore, 

the final factor regarding Defendants’ intent also weighs heavily in Plaintiff’s favor.

In sum, each of the seven likelihood of confusion factors weighs heavily in favor of 

Plaintiff, and, therefore, Plaintiff has demonstrated that it has a reasonable likelihood of success 

on the merits for its trademark infringement and counterfeiting claim.

ii. Plaintiff Is Likely to Succeed on His False Designation of Origin Claim

Plaintiff is bringing a false designation of origin claim under 15 U.S.C. § 1125(a) must 

show that: (1) the plaintiff has a protectable trademark; and (2) a likelihood of confusion will 

exist as to the origin of Plaintiff’s products. All Star Championship Racing, Inc. v. O’Reilly Auto. 

Stores, Inc., 2013 WL 1701871, *10 (C.D. Ill. Apr. 18, 2013) (citing Johnny Blastoff, Inc. v. Los 

Angeles Rams Football Co., 188 F. 3d 427, 436 (7th Cir. 1999)). This is the same test that is used 

for determining whether trademark infringement has occurred under the Lanham Act. See 

Neopost, 403 F. Supp. 2d at 684. Because the VRǀ46 Trademark is a registered mark, and 

Plaintiff has established a likelihood of success on the merits of its trademark infringement and 

counterfeiting claim against Defendants (supra), a likelihood of success on the merits for 

Plaintiff’s false designation of origin claim is also established.

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iii. Plaintiff Is Likely to Succeed on His Illinois Uniform Deceptive Trade 

Practices Act Claim

In Illinois, courts resolve unfair competition and deceptive trade practices claims 

“according to the principles set forth under the Lanham Act.” Spex, Inc. v. Joy of Spex, Inc., 847 

F. Supp. 567, 579 (N.D. Ill. 1994). Illinois courts look to federal case law and apply the same 

analysis to state infringement claims. Id. at 579 (citation omitted). The determination as to 

whether there is a likelihood of confusion is similar under both the Lanham Act and the Illinois

Uniform Deceptive Trade Practices Act. Am. Broad. Co. v. Maljack Prods., Inc., 34 F. Supp. 2d 

665, 681 (N.D. Ill. 1998). Because Plaintiff has established a likelihood of success on the merits 

of its trademark infringement and counterfeiting claims against Defendants (supra), and the 

standard is the same under Illinois law, Plaintiff has established a likelihood of success on the 

merits for its Illinois Uniform Deceptive Trade Practices Act claim.

D. There Is No Adequate Remedy at Law and Plaintiff Will Suffer Irreparable

Harm in the Absence of Preliminary Relief

The Seventh Circuit has “clearly and repeatedly held that damage to a trademark holder's 

goodwill can constitute irreparable injury for which the trademark owner has no adequate legal 

remedy.” Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001) (citing Eli Lilly & Co. 

v. Natural Answers, Inc., 233 F.3d 456, 469 (7th Cir. 2000)); Meridian Mut. Ins. Co. v. Meridian 

Ins. Group, Inc., 128 F.3d 1111, 1114 (7th Cir. 1997); Wesley–Jessen Division of Schering Corp. 

v. Bausch & Lomb Inc., 698 F.2d 862, 867 (7th Cir.1983). Irreparable injury “almost inevitably 

follows” when there is a high probability of confusion because such injury “may not be fully 

compensable in damages.” Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc., 560 F.2d

1325, 1332 (7th Cir. 1977) (citation omitted). “The most corrosive and irreparable harm 

attributable to trademark infringement is the inability of the victim to control the nature and

quality of the defendants’ goods.” Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 

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F.2d 1079, 1092 (7th Cir. 1988); see also 4 Callmann on Unfair Competition, Trademark and 

Monopolies § 88.3(b) at 205 (3d ed. 1970). As such, monetary damages are likely to be 

inadequate compensation for such harm. Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d

1018, 1026 (7th Cir. 1979). 

Defendants’ unauthorized use of the VRǀ46 Trademark has and continues to irreparably 

harm Plaintiff through diminished goodwill and brand confidence, damage to Plaintiff’s

reputation, loss of exclusivity, and loss of future sales. Zierhut Declaration at ¶¶ 19-22. 

The extent of the harm to Plaintiff’s reputation and goodwill and the possible diversion of 

customers due to loss in brand confidence are both irreparable and incalculable, thus warranting 

an immediate halt to Defendants’ infringing activities through injunctive relief. See Promatek

Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002) (Finding that damage to 

Plaintiff’s goodwill was irreparable harm for which plaintiff had no adequate remedy at law); 

Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis, 35 F.3d 1134, 1140 (7th 

Cir. 1994) (“[S]howing injury to goodwill can constitute irreparable harm that is not 

compensable by an award of money damages.”). Plaintiff will suffer immediate and irreparable 

injury, loss, or damage if an ex parte Temporary Restraining Order is not issued in accordance 

with Federal Rule of Civil Procedure 65(b)(1). Zierhut Declaration at ¶ 22,23. As such, Plaintiff

should be granted preliminary relief.

E. The Balancing of Harms Tips in Plaintiff’s Favor

As noted above, if the Court is satisfied that Plaintiff has demonstrated (1) a likelihood of 

success on the merits, (2) no adequate remedy at law, and (3) the threat of irreparable harm if 

preliminary relief is not granted, then it must next consider the harm that Defendants will suffer 

if preliminary relief is granted, balancing such harm against the irreparable harm Plaintiff will 

suffer if relief is denied. Ty, Inc., 237 F.3d at 895. 

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As willful infringers, Defendants are entitled to little equitable consideration. “When 

considering the balance of hardships between the parties in infringement cases, courts generally 

favor the trademark owner.” Krause Int’l Inc. v. Reed Elsevier, Inc., 866 F. Supp. 585, 587-88 

(D.D.C. 1994). This is because “[o]ne who adopts the marks of another for similar goods acts at 

his own peril since he has no claim to the profits or advantages thereby derived.” Burger King 

Corp. v. Majeed, 805 F. Supp. 994, 1006 (S.D. Fla. 1992) (internal quotation marks omitted). 

Therefore, the balance of harms “cannot favor a defendant whose injury results from the 

knowing infringement of the Plaintiff’s trademark.” Malarkey-Taylor Assocs., Inc. v. Cellular 

Telecomms. Indus. Ass’n, 929 F. Supp. 473, 478 (D.D.C. 1996).

As Plaintiff has demonstrated, Defendants have been profiting from the sale of 

counterfeit VRǀ46 Products. Thus, the balance of equities tips decisively in Plaintiff’s favor. As 

such, equity requires that Defendants be ordered to cease their unlawful conduct. 

F. Issuance of the Injunction Is in the Public Interest 

An injunction in these circumstances is in the public interest because it will prevent 

consumer confusion and stop Defendants from violating federal trademark law. The public is

currently under the false impression that Defendants are operating their Defendants’ Internet

Stores with Plaintiff’s approval and endorsement. An injunction serves the public interest in this

case “because enforcement of the trademark laws prevents consumer confusion.” Eli Lilly, 233

F.3d at 469.

Federal courts have long held that “the trademark laws ... are concerned not alone with 

the protection of a property right existing in an individual, but also with the protection of the 

public from fraud and deceit.” Stahly, Inc. v. M.H. Jacobs Co., 183 F.2d 914, 917 (7th Cir. 1950)

(citations omitted). The public interest is further served by protecting “the synonymous right of a 

trademark owner to control his product's reputation.” James Burrough Ltd. v. Sign of the 

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Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976); see also Shashi, Inc. v. Ramada Worldwide, 

Inc., No. 7:05-cv-00016-JGW-mfu, 2005 WL 552593, *4 (W.D. Va. Mar. 1, 2005) (“It is in the 

best interest of the public for the court to defend the integrity of the intellectual property system 

and to prevent consumer confusion”). 

In this case, the injury to the public is significant, and the injunctive relief that Plaintiff

seeks is specifically intended to remedy that injury by dispelling the public confusion created by 

Defendants’ actions. The public has the right not to be confused and defrauded as to the source 

of the goods and services offered by Defendants, or as to the identity of the owner of trademark

used in connection with those goods and services. Unless Defendants’ unauthorized use of the 

VRǀ46 Trademark is enjoined, the public will continue to be confused and misled by Defendants’

conduct.

For these reasons, it is respectfully submitted that granting Plaintiff’s Motion for Entry of

a Temporary Restraining Order is in the public interest.

IV. THE EQUITABLE RELIEF SOUGHT IS APPROPRIATE 

In addition to this Court’s inherent authority to issue injunctive relief, the Lanham Act 

authorizes courts to issue injunctive relief “according to the principles of equity and upon such 

terms as the court may deem reasonable, to prevent the violation of any right of the registrant of 

a mark ....” 15 U.S.C. § 1116(a). Furthermore, Rule 65(b) of the Federal Rules of Civil 

Procedure provides that a court may issue a temporary restraining order without notice where 

facts show that the movant will suffer immediate and irreparable injury, loss, or damage before

the adverse party can be heard in opposition. Moreover, under Federal Rule of Civil Procedure 

65(d)(2)(C), this Court has the power to bind any third parties, such as domain name registries 

and financial institutions, who are in active concert with the Defendants or who aid and abet 

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Defendants and are given actual notice of the order. Fed. R. Civ. P. 65. The facts in this case 

warrant such relief.

A. A Temporary Restraining Order Immediately Enjoining Defendants’

Unauthorized and Unlawful Use of Plaintiff’s Marks Is Appropriate

Plaintiff requests a temporary injunction requiring the Defendants to immediately cease 

all use of the VRǀ46 Trademark or substantially similar mark on or in connection with all 

Defendants Internet Stores. Such relief is necessary to stop the ongoing harm to the VRǀ46

Trademark and associated goodwill, as well as harm to consumers, and to prevent the Defendants 

from continuing to benefit from their unauthorized use of the Trademark.

The need for ex parte relief is magnified in today’s global economy where counterfeiters 

can operate over the Internet in an anonymous fashion. Plaintiff is currently unaware of both the 

true identities and locations of the Defendants, as well as other Defendant Internet Stores used to

distribute Counterfeit VRǀ46 Products.

Many courts have authorized immediate injunctive relief in similar cases involving the 

unauthorized use of trademark and counterfeiting. See, e.g. Michael Kors, L.L.C. v. The 

Partnerships and Unincorporated Associations Identified on Schedule “A”, No. 13-cv-8612 

(N.D. Ill. Dec. 5, 2013) (unpublished) (Order granting Ex Parte Motion for Temporary 

Restraining Order); Calvin Klein Trademark Trust, et al. v. The Partnerships, et al., No. 13-cv8186 (N.D. Ill. Nov. 19, 2013) (unpublished) (same); Manolo Blahnik International Limited v.

The Partnerships, et al., No. 13-cv-7810 (N.D. Ill. Nov. 12, 2013) (unpublished) (same); NBA 

Properties, Inc., et al. v. The Partnerships, et al., No. 13-cv-7181 (N.D. Ill. Oct. 9, 2013) 

(unpublished) (same); Beats Electronics, LLC v. The Partnerships, et al., No. 13-cv-6724 (N.D. 

Ill. Sept. 25, 2014) (unpublished) (same); Lululemon Athletica Canada Inc. v. The Partnerships, 

et al., No. 13-cv-6297 (N.D. Ill. Sept. 10, 2013) (unpublished) (same); Chrome Hearts LLC v. 

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The Partnerships, et al., No. 13-cv-4784 (N.D. Ill. July 10, 2013) (unpublished) (same); 

Luxottica USA LLC v. The Partnerships, et al., No. 13-cv-4429 (N.D. Ill. June 20, 2013) 

(unpublished) (same); Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012) 

(unpublished) (same); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D. Ill. Dec. 

20, 2012) (unpublished) (same); Tory Burch LLC v. Zhong Feng, et al., No. 1:12-cv-09066 (N.D. 

Ill. Nov. 15, 2012) (unpublished) (same); Coach, Inc., et al. v. Does 1-100, No. 1:12-cv-8963 

(N.D. Ill. Nov. 15, 2012) (unpublished) (same); Deckers Outdoor Corp. v. Does 1-1,281, No.

1:12-cv-01973 (N.D. Ill. June 6, 2012) (unpublished) (same); Abercrombie & Fitch Trading Co. 

v. 4cheapbags.com, No. 1:12-cv-21088 (S. D. Fla. June 6, 2012) (unpublished) (same); Tory 

Burch, LLC v. Yong Sheng Int’l Trade Co., Ltd., No. 1:10-cv-09336-DAB (S.D.N.Y. Jan. 4, 

2011) (unpublished) (same); (hereinafter, collectively referred to as the “Counterfeit Website 

Cases”); see also, Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 (E.D. Mich. 2001)

(enjoining Defendant from “using in any way the Internet domain name ‘fordrecalls.com’”); 

Kraft Food Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 956 (N.D. Ill. 2002) (granting 

preliminary injunction requiring defendant to “immediately” remove all references to versions of 

Plaintiff’s mark, including removing all references “from metatags, metanames or any other 

keywords on his websites”). 

B. Transferring the Defendant Domain Names to Plaintiff’s Control Is 

Appropriate

As a part of the Temporary Restraining Order, Plaintiff also seeks temporary transfer of 

the Defendants’ Domain Names to Plaintiff’s control in order to disable the counterfeit websites 

and electronically publish notice of this case to Defendants. Defendants involved in domain 

name litigation easily can, and often will, change the ownership of a domain name or continue 

operating the website while the case is pending. Accordingly, to preserve the status quo and 

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ensure the possibility of eventual effective relief, courts in trademark cases involving domain 

names regularly grant the relief requested herein. See, e.g., the Counterfeit Website Cases, supra

at p. 28; see also Board of Directors of Sapphire Bay Condos. W. v. Simpson, 129 F. App’x 711 

(3d Cir. 2005) (affirming District Court’s granting of the preliminary injunction ordering 

defendant to “cancel his registration of the domain name and refrain from using the name, or any 

derivative thereof, for any Web site under his ownership or substantial control”); Chanel, Inc. v. 

Paley, No. 3:09-cv-04979-MHP (N.D. Cal. Nov. 13, 2009) (unpublished) (granting temporary 

restraining order and disabling domain names at issue); Philip Morris U.S.A., Inc. v. Otamedia 

Ltd., 331 F. Supp. 2d 228, 246 (S.D.N.Y. 2004) (granting order transferring ownership of 

Defendant’s Internet domain names to Plaintiff); Ford Motor Co., 126 F. Supp. 2d at 466 

(granting Plaintiff’s preliminary injunction because, among other things, “Defendant's 

misappropriation of the goodwill [Plaintiff] has developed in the mark by registering the 

[infringing] Internet domain name ... significantly tarnishes [Plaintiff’s] reputation”). 

As such, Plaintiff respectfully requests that, as part of the Temporary Restraining Order,

the Court require the relevant registries and/or registrars for the Defendants Domain Names to 

transfer the Defendants’ Domain Names to Plaintiff. 

C. Preventing the Fraudulent Transfer of Assets Is Appropriate

Plaintiff request an ex parte restraint of Defendants’ assets so that Plaintiff’s right to an 

equitable accounting of Defendants’ profits from sales of Counterfeit VRǀ46 Products is not 

impaired. Issuing an ex parte restraint will ensure Defendants’ compliance. If such a restraint is 

not granted in this case, Defendants may disregard their responsibilities and fraudulently transfer 

financial assets to overseas accounts before a restraint is ordered. Specifically, upon information 

and belief, the Defendants in this case hold most of their assets in China, making it easy to hide 

or dispose of assets, which will render an accounting by Plaintiff meaningless. 

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Courts have the inherent authority to issue a prejudgment asset restraint when Plaintiff’s

complaint seeks relief in equity. Animale Grp. Inc. v. Sunny’s Perfume Inc., 256 F. App’x 707,

709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 987 (11th Cir.

1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992). In

addition, Plaintiff has shown a strong likelihood of succeeding on the merits of its trademark

infringement and counterfeiting claims, so according to the Lanham Act 15 U.S.C. § 1117(a)(1),

Plaintiff is entitled, “subject to the principles of equity, to recover ... defendant’s profits.” 

Plaintiff’s Complaint seeks, among other relief, that Defendants account for and pay to Plaintiff

all profits realized by Defendants by reason of Defendants’ unlawful acts. Therefore, this Court 

has the inherent equitable authority to grant Plaintiff’s request for a prejudgment asset freeze to 

preserve the relief sought by Plaintiff. 

The Northern District of Illinois in Lorillard Tobacco Co. v. Montrose Wholesale 

Candies entered an asset restraining order in a trademark infringement case brought by a tobacco 

company against owners of a store selling counterfeit cigarettes. Lorillard, 2005 WL 3115892, at 

*13 (N.D. Ill. Nov. 8, 2005). The Court, citing Grupo Mexicano de Desarollo, S.A. v. Aliance 

Bond Fund, 527 U.S. 308 (1999), recognized that it was explicitly allowed to issue a restraint on 

assets for lawsuits seeking equitable relief. Id. (citing Grupo Mexicano, 527 U.S. at 325 (citing 

Deckert v. Independence Shares Corp., 311 U.S. 282 (1940)). Because the tobacco company 

sought a disgorgement of the storeowner’s profits, an equitable remedy, the Court found that it 

had the authority to freeze the storeowner’s assets. Id.; see also Animale Grp. Inc. v. Sunny’s 

Perfume Inc., 256 F. App’x 707, 709 (5th Cir. 2007); Levi Strauss & Co. v. Sunrise Int’l Trading 

Inc., 51 F.3d 982, 987 (11th Cir. 1995); Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d 

552, 559 (9th Cir. 1992); CSC Holdings, Inc. v. Redisi, 309 F.3d 988 (7th Cir. 2002) (“since the 

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assets in question ... were the profits of the [defendants] made by unlawfully stealing [the 

Plaintiff’s] services, the freeze was appropriate and may remain in place pending final 

disposition of this case.”); accord 5 J. Thomas McCarthy, McCarthy on Trademark and Unfair 

Competition § 30:40 (4th ed. 2013). In addition, courts in this district and across the country 

regularly issue asset-restraining orders for entire financial accounts in cases involving the sale of 

counterfeit products. See, e.g., the Counterfeit Website Cases, supra at p. 28. 

Plaintiff has shown a likelihood of success on the merits, an immediate and irreparable

harm suffered as a result of Defendants’ activities, and that, unless Defendants’ assets are frozen,

Defendants will likely hide or move their ill-gotten funds to offshore bank accounts. 

Accordingly, the granting of an injunction preventing the transfer of Defendants’ assets is 

proper. 

D. Plaintiff Is Entitled to Expedited Discovery

The Supreme Court has held that “federal courts have the power to order, at their 

discretion, the discovery of facts necessary to ascertain their competency to entertain the merits.” 

Vance v. Rumsfeld, No. 1:06-cv-06964, 2007 WL 4557812, *6 (N.D. Ill. Dec. 21, 2007) (quoting 

Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351, 98 S. Ct. 2380 (1978)). A district court 

has wide latitude in determining whether to grant a party's request for discovery. Id. (citation 

omitted). Furthermore, courts have broad power over discovery and may permit discovery in 

order to aid in the identification of unknown defendants. See Fed. R. Civ. P. 26(b)(2); Gillespie 

v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980). 

As described above, Defendants are using third-party payment processors such as Visa, 

eCrater, eBay, PayPal, and Western Union, which help to increase their anonymity by 

interposing a third party between the consumer and Defendants. Without being able to discover 

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Defendants’ bank and payment system accounts, any asset restraint would be of limited value 

because Plaintiff would not know the entities upon whom to serve the order.

Plaintiff respectfully requests expedited discovery to discover bank and payment system 

accounts Defendants use for their counterfeit sales operations. The discovery requested on an 

expedited basis in Plaintiff’s Proposed Temporary Restraining Order has been limited to include 

only what is essential to prevent further irreparable harm. Discovery of these financial accounts 

so that they can be frozen is necessary to ensure that these activities will be contained.

Under Federal Rule of Civil Procedure 65(d)(2)(C), this Court has the power to bind any 

third party who is in active concert with the Defendants that is given notice of the order to 

provide expedited discovery in this action. Fed. R. Civ. P. 65(d)(2)(C). Plaintiff’s counsel is 

aware that the same third parties, in previous lawsuits, have worked with trademark owners and 

is not aware of any reason that Defendants or third parties cannot comply with these expedited 

discovery requests without undue burden. Further, all relevant third parties have in fact complied 

with identical requests in previous similar cases. More importantly, as Defendants have engaged 

in many deceptive practices in hiding their identities and accounts, Plaintiff’s seizure and asset 

restraint in the Temporary Restraining Order may have little meaningful effect without the 

requested relief. Accordingly, Plaintiff respectfully request that expedited discovery be granted. 

V. A BOND SHOULD SECURE THE INJUNCTIVE RELIEF 

The posting of security upon issuance of a temporary restraining order or preliminary 

injunction is vested in the Court’s sound discretion. Rathmann Grp. v. Tanenbaum, 889 F.2d

787, 789 (8th Cir. 1989); Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411, 421 (4th 

Cir. 1999); Fed. R. Civ. P. 65(c). Because of the strong and unequivocal nature of Plaintiff’s

evidence of counterfeiting, infringement, and unfair competition, Plaintiff respectfully requests

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that this Court require Plaintiff to post a bond of no more than Ten Thousand U.S. Dollars 

($10,000.00). See, e.g., Oakley, Inc. v. Does 1-100, No. 12-cv-9864 (N.D. Ill. Dec. 14, 2012) 

(unpublished) ($10,000 bond); True Religion Apparel, Inc. v. Does 1-100, No. 12-cv-9894 (N.D.

Ill. Dec. 20, 2012) (unpublished) ($10,000 bond); Tory Burch LLC v. Zhong Feng, et al., No.

1:12-cv-09066 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Coach, Inc., et al. v.

Does 1-100, No. 1:12-cv-8963 (N.D. Ill. Nov. 15, 2012) (unpublished) ($10,000 bond); Deckers 

Outdoor Corp. v. Does 1-1,281, No. 1:12-cv-01973 (N.D. Ill. Apr. 4, 2012) (unpublished)

($10,000 bond); Abercrombie & Fitch Trading Co. v. 4cheapbags.com, No. 1:12-cv-21088 (S. 

D. Fla. June 6, 2012) (unpublished) ($10,000 bond). 

VI. CONCLUSION 

Plaintiff’s business, its VRǀ46 brand, and consumers are being irreparably harmed. 

Without entry of the requested relief, the sale of Counterfeit VRǀ46 Products will continue to 

lead prospective purchasers and others to believe that Defendants’ products have been 

manufactured by or emanate from Plaintiff. Therefore, entry of an ex parte order is necessary to 

protect Plaintiff’s trademark rights, to prevent further harm to Plaintiff and the consuming 

public, and to preserve the status quo. In view of the foregoing and consistent with previous 

similar cases, Plaintiff respectfully requests that this Court enter a Temporary Restraining Order 

in the form submitted herewith and set a status hearing before the expiration of the Temporary 

Restraining Order at which hearing Plaintiff intends to present a motion for preliminary 

injunction. 

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 Respectfully submitted,

Dated: August 13, 2020

 By: s/Michael A. Hierl _ 

Michael A. Hierl (Bar No. 3128021)

William B. Kalbac (Bar No. 6301771)

Hughes Socol Piers Resnick & Dym, Ltd.

Three First National Plaza

70 W. Madison Street, Suite 4000

Chicago, Illinois 60602

(312) 580-0100 Telephone

mhierl@hsplegal.com

Attorneys for Plaintiff

VALENTINO ROSSI

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CERTIFICATE OF SERVICE

The undersigned attorney hereby certifies that a true and correct copy of the foregoing 

Memorandum was filed electronically with the Clerk of the Court and served on all counsel of 

record and interested parties via the CM/ECF system on August 13, 2020.

s/Michael A. Hierl

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