IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

VALENTINO ROSSI, )

) Case No. 20-cv-4746

Plaintiff, ) 

)

) Judge

v. )

)

THE INDIVIDUALS, CORPORATIONS, )

LIMITED LIABILITY COMPANIES, )

PARTNERSHIPS AND UNINCORPORATED )

ASSOCIATIONS IDENTIFIED )

ON SCHEDULE A HERETO, )

)

Defendants. )

COMPLAINT

Plaintiff VALENTINO ROSSI, through undersigned counsel, hereby complains of the 

Partnerships, Unincorporated Associations and others identified in Schedule A attached hereto 

(collectively, “Defendants”), and for his Complaint hereby alleges as follows:

JURISDICTION AND VENUE

1. 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. 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.

2. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may 

properly exercise personal jurisdiction over Defendants since each of the Defendants directly 

targets consumers in the United States, including Illinois, through at least the fully interactive 

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commercial Internet stores operating under the Defendant Domain Names and/or the Online 

Marketplace Accounts identified in Schedule A attached hereto (collectively, the “Defendant 

Internet Stores”). 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 bearing counterfeit versions of Plaintiff’s trademark. Each of the 

Defendants has targeted sales from Illinois residents by operating online stores that offer 

shipping to the United States, including Illinois, accept payment in U.S. dollars and, on 

information and belief, has sold products bearing counterfeit versions of Plaintiff’s federally 

registered trademark to residents of Illinois. Each of the Defendants is committing tortious acts 

in Illinois, is engaging in interstate commerce, and has wrongfully caused Plaintiff substantial 

injury in the State of Illinois.

INTRODUCTION

3. This action has been filed by Plaintiff to combat online counterfeiters who trade 

upon Plaintiff’s reputation and goodwill by selling and/or offering for sale products in connection 

with Plaintiff’s VR|46 trademark, which is covered by U.S. Trademark Registration No. 

3,499,157. The Registration is valid, subsisting, and in full force and effect. A true and correct 

copy of the federal trademark registration certificate for the mark is attached as Exhibit 1.

4. The Defendants create numerous Defendant Internet Stores and design them to 

appear to be selling genuine Plaintiff’s products, while selling inferior imitations of Plaintiff’s

products. The Defendant 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’ illegal operations arise out of the same transaction, 

occurrence, or series of transactions or occurrences. Defendants attempt to avoid liability by going 

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to great lengths to conceal both their identities and the full scope and interworking of their illegal 

counterfeiting operation. Plaintiff is forced to file this action to combat Defendants’ counterfeiting 

of Plaintiff’s registered trademark, as well as to protect unknowing consumers from purchasing 

unauthorized VR|46 products over the Internet. Plaintiff has been and continues to be irreparably 

damaged through consumer confusion, dilution, and tarnishment of his valuable trademark as a 

result of Defendants’ actions and seeks injunctive and monetary relief.

5. This Court has personal jurisdiction over each Defendant, in that each Defendant

conducts significant business in Illinois and in this Judicial District, and the acts and events 

giving rise to this lawsuit of which each Defendant stands accused were undertaken in Illinois

and in this Judicial District. In addition, each Defendant has offered to sell and ship infringing 

products into this Judicial District.

THE PLAINTIFF

6. Plaintiff VALENTINO ROSSI is an Italian citizen residing in the UK.

7. Plaintiff VALENTINO ROSSI is the registered owner of the VR|46 trademark

(U.S. Trademark Registration No. 3,499,157). VALENTINO ROSSI is in the business of 

developing, marketing, selling and distributing VR|46 products. VALENTINO ROSSI is widely 

considered one of the greatest professional motorcycle racers of all time and has won nine Grand 

Prix World Championships. He has ridden with the number 46 his entire career. He is the owner 

of the Sky Racing team by VR|46 which debuted in the Moto 3 category of Grand Prix 

motorcycle racing in 2014.

8. VALENTINO ROSSI is the official source of VR|46 products:

https://www.vr46.com/en/

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9. Since at least May 15, 2006, the VR|46 mark is and has been the subject of

substantial and continuous marketing and promotion by Plaintiff. Plaintiff has and continues to 

widely market and promote the VR|46 mark in the industry and to consumers. Plaintiff’s

promotional efforts include — by way of example, but not limitation — website and social 

media sites, and point of sale materials.

10. The VR|46 trademark is distinctive and identifies the merchandise as goods from 

Plaintiff. The registration for the VR|46 trademark constitutes prima facie evidence of its

validity and of Plaintiff’s exclusive right to use the VR|46 trademark pursuant to 15 U.S.C. § 

1057(b).

11. The VR|46 trademark qualifies as a famous mark, as that term is used in 15 

U.S.C. §1125 (c)(1) and has been continuously used and never abandoned.

12. Plaintiff has expended substantial time, money, and other resources in developing, 

advertising, and otherwise promoting the VR|46 trademark. As a result, products bearing the 

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VR|46 trademark are widely recognized and exclusively associated by consumers, the public, 

and the trade as being products sourced from Plaintiff.

THE DEFENDANTS

13. Defendants are individuals and business entities who, upon information and 

belief, reside in the People’s Republic of China or other foreign jurisdictions. Defendants 

conduct business throughout the United States, including within Illinois and in this Judicial 

District, through the operation of fully interactive commercial websites and online marketplaces 

operating under the Defendant Internet Stores. Each Defendant targets the United States, 

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

to sell counterfeit VR|46 products to consumers within the United States, including Illinois and

in this Judicial District.

THE DEFENDANTS’ UNLAWFUL CONDUCT

14. The success of the VR|46 brand has resulted in its counterfeiting. Plaintiff has

identified numerous domain names linked to fully interactive websites and marketplace listings 

on platforms such as iOffer and Aliexpress, including the Defendant Internet Stores, which were 

offering for sale, selling, and importing counterfeit VR|46 products to consumers in this Judicial 

District and throughout the United States. Defendants have persisted in creating the Defendant

Internet Stores. Internet websites like the Defendant Internet Stores are estimated to receive tens 

of millions of visits per year and to generate over $135 billion in annual online sales. 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 in fiscal 

year 2017 was over $1.21 billion. Internet websites like the Defendant Internet Stores are also 

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estimated to contribute to tens of thousands of lost jobs for legitimate businesses and broader 

economic damages such as lost tax revenue every year.

15. Upon information and belief, Defendants facilitate sales by designing the 

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

retailers, outlet stores, or wholesalers selling genuine VR|46 products. Many of the Defendant 

Internet Stores look sophisticated and accept payment in U.S. dollars via credit cards, Western 

Union, eCrater, eBay and PayPal. Defendant Internet Stores often include images and design 

elements that make it very difficult for consumers to distinguish such counterfeit sites from an

authorized website. 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® Security, VeriSign®, Visa®, 

MasterCard®, and PayPal® logos. 

16. Plaintiff has not licensed or authorized Defendants to use the VR|46 trademark, 

and none of the Defendants are authorized retailers of genuine VR|46 products.

17. Upon information and belief, Defendants also deceive unknowing consumers by 

using the VR|46 trademark without authorization within the content, text, and/or meta tags of their 

websites to attract various search engines crawling the Internet looking for websites relevant to 

consumer searches for VR|46 products. Additionally, upon information and belief, Defendants use 

other unauthorized search engine optimization (SEO) tactics and social media spamming so that 

the Defendant Internet Store listings show up at or near the top of relevant search results and 

misdirect consumers searching for genuine VR|46 products. Further, Defendants utilize similar 

illegitimate SEO tactics to propel new domain names to the top of search results after others are

shut down. As such, Plaintiff also seeks to disable Defendant Domain Names owned by 

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Defendants that are the means by which the Defendants could continue to sell counterfeit VR|46 

products.

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

fictitious names and addresses to register and operate their massive network of Defendant Internet 

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

Defendant Domain Names are incomplete, contain randomly typed letters, or fail to include cities 

or states. Other Defendant Domain Names use privacy services that conceal the owners’ identity 

and contact information. Upon information and belief, Defendants regularly create new websites 

and online marketplace accounts on various platforms using the identities listed in Schedule A to 

the Complaint, as well as other unknown fictitious names and addresses. Such Defendant 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 massive counterfeiting operation, and to avoid 

being shut down.

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

similarities among the Defendant Internet Stores. For example, some of the Defendant websites 

have virtually identical layouts, even though different aliases were used to register the respective 

domain names. In addition, the counterfeit VR|46 products for sale in the Defendant Internet Stores

bear similarities and indicia of being related to one another, suggesting that the counterfeit VR|46 

products were manufactured by and come from a common source and that, upon information and 

belief, Defendants are interrelated. The Defendant 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, 

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identically or similarly priced items and volume sales discounts, similar hosting services, similar 

name servers, and the use of the same text and images. 

20. 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. 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. 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. Counterfeiters also typically ship products in 

small quantities via international mail to minimize detection by U.S. Customs and Border 

Protection. A 2012 U.S. Customs and Border Protection report on seizure statistics indicated that 

the Internet has fueled “explosive growth” in the number of small packages of counterfeit goods 

shipped through the mail and express carriers.

21. Further, counterfeiters such as Defendants typically operate multiple credit card 

merchant accounts and eCrater, eBay and PayPal accounts behind layers of payment gateways so 

that they can continue operation in spite of Plaintiff’s enforcement efforts. Upon information and 

belief, Defendants maintain off-shore bank accounts and regularly move funds from their eCrater, 

eBay and PayPal accounts to off-shore bank accounts outside the jurisdiction of this Court. Indeed, 

analysis of eCrater, eBay and PayPal transaction logs from previous similar cases indicates that 

offshore counterfeiters regularly move funds from U.S.-based eCrater, eBay and PayPal accounts 

to China-based bank accounts outside the jurisdiction of this Court.

22. Defendants, without any authorization or license from Plaintiff, have knowingly 

and willfully used and continue to use the VR|46 trademark in connection with the 

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advertisement, distribution, offering for sale, and sale of counterfeit VR|46 products into the

United States and Illinois over the Internet. Each Defendant Internet Store offers shipping to the 

United States, including Illinois and, on information and belief, each Defendant has offered to 

sell counterfeit VR|46 products into the United States, including Illinois.

23. Defendants’ use of the VR|46 trademark in connection with the advertising, 

distribution, offering for sale, and sale of counterfeit VR|46 products, including the sale of 

counterfeit VR|46 products into Illinois, is likely to cause and has caused confusion, mistake, and 

deception by and among consumers and is irreparably harming Plaintiff.

COUNT I

TRADEMARK INFRINGEMENT AND COUNTERFEITING (15 U.S.C. § 1114)

24. Plaintiff repeats and incorporates by reference herein the allegations contained in 

paragraphs 1-23 of this Complaint.

25. This is a trademark infringement action against Defendants based on their 

unauthorized use in commerce of counterfeit imitations of the registered VR|46 trademark in 

connection with the sale, offering for sale, distribution, and/or advertising of infringing goods.

The VR|46 trademark is a highly distinctive mark. Consumers have come to expect the highest

quality from Plaintiff’s products provided under the VR|46 trademark.

26. Defendants have sold, offered to sell, marketed, distributed, and advertised, and 

are still selling, offering to sell, marketing, distributing, and advertising products in connection 

with the VR|46 trademark without Plaintiff’s permission.

27. Plaintiff VALENTINO ROSSI is the registered owner of the VR|46 trademark

(U.S. Registration No. 3,499,157).

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28. The United States Registration for the VR|46 trademark (Exhibit 1) is in full force 

and effect. Upon information and belief, Defendants have knowledge of Plaintiff’s rights in the 

VR|46 trademark and are willfully infringing and intentionally using the VR|46 trademark on 

counterfeit goods. Defendants’ willful, intentional and unauthorized use of the VR|46 trademark

is likely to cause and is causing confusion, mistake, and deception as to the origin and quality of 

the counterfeit goods among the general public.

29. Defendants’ activities constitute willful trademark infringement and

counterfeiting under 15 U.S.C. §§ 1114, 1117.

30. The injuries and damages sustained by Plaintiff have been directly and 

proximately caused by Defendants’ wrongful reproduction, use, advertisement, promotion, 

offering to sell, and sale of counterfeit VR|46 products.

31. Plaintiff has no adequate remedy at law, and, if Defendants’ actions are not 

enjoined, Plaintiff will continue to suffer irreparable harm to its reputation and the goodwill of its

well-known VR|46 trademark.

COUNT II

FALSE DESIGNATION OF ORIGIN (15 U.S.C. § 1125(a))

32. Plaintiff repeats and incorporates by reference herein the allegations contained in 

paragraphs 1-31 of this Complaint.

33. Defendants’ promotion, marketing, offering for sale, and sale of counterfeit VR|46 

products has created and is creating a likelihood of confusion, mistake, and deception among the 

general public as to the affiliation, connection, or association with Plaintiff or the origin, 

sponsorship, or approval of Defendants’ counterfeit VR|46 products by Plaintiff.

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34. By using the VR|46 trademark in connection with the sale of counterfeit VR|46

products, Defendants create a false designation of origin and a misleading representation of fact 

as to the origin and sponsorship of the counterfeit VR|46 products.

35. Defendants’ false designation of origin and misrepresentation of fact as to the 

origin and/or sponsorship of the counterfeit VR|46 products to the general public is a willful 

violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125.

36. Plaintiff has no adequate remedy at law and, if Defendants’ actions are not 

enjoined, Plaintiff will continue to suffer irreparable harm to its reputation and the goodwill of 

his brand.

COUNT III 

VIOLATION OF ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT

(815 ILCS § 510/1, et seq.)

37. Plaintiff repeats and incorporates by reference herein the allegations contained in 

paragraphs 1-36 of this Complaint.

38. Defendants have engaged in acts violating Illinois law including, but not limited 

to, passing off their counterfeit VR|46 products as those of Plaintiff, causing a likelihood of 

confusion and/or misunderstanding as to the source of their goods, causing a likelihood of 

confusion and/or misunderstanding as to an affiliation, connection, or association with genuine 

VR|46 products, representing that their products have Plaintiff’s approval when they do not, and 

engaging in other conduct which creates a likelihood of confusion or misunderstanding among 

the public.

39. The foregoing Defendants’ acts constitute a willful violation of the Illinois

Uniform Deceptive Trade Practices Act, 815 ILCS § 510/1, et seq.

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40. Plaintiff has no adequate remedy at law, and Defendants’ conduct has caused 

Plaintiff to suffer damage to its reputation and goodwill. Unless enjoined by the Court, Plaintiff

will suffer future irreparable harm as a direct result of Defendants’ unlawful activities.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment against Defendants and each of them as 

follows:

1) That Defendants, their affiliates, officers, agents, servants, employees, attorneys,

confederates, and all persons acting for, with, by, through, under, or in active concert with them 

be temporarily preliminarily, and permanently enjoined and restrained from:

a. using the VR|46 trademark or any reproductions, counterfeit copies, or colorable 

imitations thereof in any manner in connection with the distribution, marketing, 

advertising, offering for sale, or sale of any products that are not genuine VR|46

products or is not authorized by Plaintiff to be sold in connection with the VR|46

trademark;

b. passing off, inducing, or enabling others to sell or pass off any products as genuine 

VR|46 products or any other products produced by Plaintiff that are not Plaintiff’s or 

not produced under the authorization, control, or supervision of Plaintiff and 

approved by Plaintiff for sale under the VR|46 trademark;

c. committing any acts calculated to cause consumers to believe that Defendants’ 

counterfeit VR|46 products are those sold under the authorization, control, or 

supervision of Plaintiff, or are sponsored by, approved by, or otherwise connected 

with Plaintiff;

d. further infringing the VR|46 trademark and damaging Plaintiff’s goodwill;

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e. otherwise competing unfairly with Plaintiff in any manner;

f. shipping, delivering, holding for sale, transferring or otherwise moving, storing,

distributing, returning, or otherwise disposing of, in any manner, products or inventory

not manufactured by or for Plaintiff, nor authorized by Plaintiff to be sold or offered 

for sale, and which bear any trademark of Plaintiff, including the VR|46 trademark, or 

any reproductions, counterfeit copies, or colorable imitations thereof;

g. using, linking to, transferring, selling, exercising control over, or otherwise owning the 

Online Marketplace Accounts, the Defendant Domain Names, or any other domain 

name or online marketplace account that is being used to sell or is the means by which 

Defendants could continue to sell counterfeit VR|46 products; and

h. operating and/or hosting websites at the Defendant Domain Names and any other domain 

names registered or operated by Defendants that are involved with the distribution,

marketing, advertising, offering for sale, or sale of any product bearing the VR|46

trademark or any reproduction, counterfeit copy or colorable imitation thereof that are not

genuine VR|46 products or not authorized by Plaintiff to be sold in connection with the 

VR|46 trademark;

2) That Defendants, within fourteen (14) days after service of judgment with notice of entry 

thereof upon them, be required to filed with the Court and serve upon Plaintiff a written report under 

oath setting forth in detail the manner and form in which Defendants have complied with paragraph 

1, a through h, above;

3) Entry of an Order that, at Plaintiff’s choosing, the registrant of the Defendant Domain 

Names shall be changed from the current registrant to Plaintiff, and that the domain name 

registries for the Defendant Domain Names, including, but not limited to, VeriSign, Inc., 

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Neustar, Inc., Afilias Limited, CentralNic, Nominet, and the Public Interest Registry, shall 

unlock and change the registrar of record for the Defendant Domain Names to a registrar of 

Plaintiff’s selection, and that the domain name registrars take any steps necessary to transfer the 

Defendant Domain Names to a registrar of Plaintiff’s selection; or that the same domain name 

registries shall disable the Defendant Domain Names and make them inactive and untransferable;

4) Entry of an Order that, upon Plaintiff’s request, those in privity with Defendants and 

those with notice of the injunction, including any online marketplaces such as iOffer and Alibaba 

Group Holding Ltd., Alipay.com Co., Ltd. and any related Alibaba entities (collectively, 

“Alibaba”), social media platforms, Facebook, YouTube, LinkedIn, Twitter, Internet search 

engines such as Google, Bing and Yahoo, web hosts for the Defendant Domain Names, and 

domain name registrars, shall:

a. disable and cease providing services for any accounts through which Defendants 

engage in the sale of counterfeit VR|46 products using the VR|46 trademark, 

including any accounts associated with the Defendants listed on Schedule A;

b. disable and cease displaying any advertisements used by or associated with 

Defendants in connection with the sale of counterfeit VR|46 products using the VR|46

trademark; and

c. take all steps necessary to prevent links to the Defendant Domain Names identified in 

Schedule A from displaying in search results, including, but not limited to, removing 

links to the Defendant Domain Names from any search index; and

5) That Defendants account for and pay to Plaintiff all profits realized by Defendants by 

reason of Defendants’ unlawful acts herein alleged, and that the amount of damages for 

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infringement of the VR|46 trademark be increased by a sum not exceeding three times the 

amount thereof as provided by 15 U.S.C. § 1117;

6) In the alternative, that Plaintiff be awarded statutory damages pursuant to 15 U.S.C. § 

1117(c) of not less than $1,000 and not more than $2,000,000 for each and every use of the 

VR|46 trademark;

7) That Plaintiff be awarded his reasonable attorneys’ fees and costs; and

8) Award any and all other relief that this Court deems just and proper.

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

(312) 580-1994 Facsimile

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 

Complaint 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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