Arnold B. Calmann (abc@saiber.com) 

SAIBER LLC 

One Gateway Center, Suite 1000 

Newark, N.J. 07102 

Telephone: (973) 622-3333 

Facsimile: (973) 622-3349 

John G. Froemming (froemmingj@howrey.com) 

David M. Jaquette (jaquetted@howrey.com) 

HOWREY LLP 

1299 Pennsylvania Avenue, N.W. 

Washington, D.C. 20004 

Telephone: (202) 783-0800 

Facsimile: (202) 383-6610 

Attorneys for Plaintiffs 

UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF NEW JERSEY 

BMW OF NORTH AMERICA, LLC and 

BAYERISCHE MOTOREN WERKE AG, 

 Plaintiffs, 

 v. 

ONYX ENTERPRISES INT’L CORP., 

ROMAN GERASHENKO, and 

STANISLAV (“STEVEN”) ROYZENSHTEYN, 

 Defendants. 

Civil Action No. 

COMPLAINT FOR TRADEMARK 

INFRINGEMENT AND 

COUNTERFEITING, UNFAIR 

COMPETITION, AND CYBERSQUATTING

JURY TRIAL DEMANDED 

DOCUMENT FILED ELECTRONICALLY

Plaintiffs BMW of North America, LLC and Bayerische Motoren Werke AG 

(collectively “BMW”), by way of complaint against the defendants, Onyx Enterprises Int’l 

Corp., Roman Gerashenko, and Steven Royzenshteyn, allege as follows: 

Nature of the Action

1. Plaintiffs seek injunctive and monetary relief from Defendants for trademark 

infringement and counterfeiting, unfair competition, and cybersquatting with regard to various 

trademarks of the Plaintiffs, including Plaintiffs’ famous Roundel logo, “BMW” word mark, 

Case 3:10-cv-04016-MLC-DEA Document 1 Filed 08/06/10 Page 1 of 20 PageID: 1
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THE ULTIMATE DRIVING MACHINE mark, MINI mark, and MINI Wings logo, and 

Plaintiffs’ Grille Design and “745” trademarks. 

2. As alleged more fully below, Defendants have violated, and continue to violate, 

the Trademark Act of 1946 as amended, 15 U.S.C. §§ 1125 et seq. (the “Lanham Act”), and New 

Jersey state law through their illegal acquisition and use of the domain name 

www.formulabmwusa.com and sale at www.carid.com of infringing and counterfeit goods 

bearing BMW’s trademarks. 

Parties

3. Plaintiff BMW of North America, LLC (“BMW NA”) is a Delaware limited 

liability company having its principal place of business at 300 Chestnut Ridge Road, Woodcliff 

Lake, New Jersey 07677. BMW NA is a wholly owned subsidiary of BMW (US) Holding 

Corporation, a Delaware corporation, which is a wholly owned subsidiary of Bayerische 

Motoren Werke AG (“BMW AG”). 

4. Plaintiff BMW AG is a corporation organized under the laws of the Federal 

Republic of Germany with its principal place of business at Petuelring 130, 80809 Munich, 

Germany. BMW AG designs and manufactures motor vehicles, parts, and other products for 

sale in Europe and for export and sale throughout the world. 

5. Defendant Onyx Enterprises Int’l Corp. (“Onyx Enterprises”) is a New Jersey 

corporation with its principal place of business at Eight-A Corporate Center, 1 Corporate Drive, 

Cranbury, NJ 08512. Defendant Onyx Enterprises Int’l Corp. is in the business of selling 

automotive parts and also does business as CarID at www.carid.com and Onyx Automotive at 

www.onyxautomotive.com. 

6. Defendant Roman Gerashenko is the co-owner of Onyx Enterprises Int’l Corp., 

resides at 39 Dalton Avenue, Staten Island, NY 10306, and conducts business at 1 Corporate 

Drive, Cranbury, NJ 08512. Defendant Gerashenko has personally directed the activities herein. 

7. Defendant Steven Royzenshteyn is the co-owner of Onyx Enterprises Int’l Corp., 

resides at 42 Westport Lane, Staten Island, New York 10314, and conducts business at 1 

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Corporate Drive, Cranbury, NJ 08512. Defendant Royzenshteyn has personally directed the 

activities herein. 

Jurisdiction and Venue

8. This Court has personal jurisdiction over Defendants because Defendant Onyx 

Enterprises is incorporated and located in the State of New Jersey, all Defendants conduct 

business in New Jersey, all Defendants have used the domain name www.formulabmwusa.com 

to transact business in the State of New Jersey, and the domain name www.formulabmwusa.com 

is registered to an address in the State of New Jersey. 

9. This Court has jurisdiction over the subject matter of this action under 15 U.S.C. 

§ 1121 and 28 U.S.C. §§ 1331 and 1338(a) and 1338(b), and has supplemental jurisdiction under 

28 U.S.C. § 1367(a) over BMW’s claims under New Jersey state law. 

10. Venue is proper in this District under 28 U.S.C. § 1391(b), as Defendants are 

located in this District and, upon information and belief, a substantial part of the events or 

omissions giving rise to the claims occurred and are occurring in this District. 

BMW’s Trademarks

11. BMW is in the business of designing, manufacturing, distributing and servicing 

motor vehicles, vehicle grilles, emblems and badges and a variety of other products under 

various trademarks, including the “BMW” word mark, THE ULTIMATE DRIVING MACHINE 

mark, “745” mark, MINI mark, and the famous Roundel logo, MINI Wings logo, and kidneyshaped engine grille design trademarks (“the BMW Grille Design”) shown below: 

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12. BMW NA has been the exclusive licensee and authorized user of the Roundel 

logo and “BMW” word mark in the United States continuously since at least as early as 1949 in 

connection with the design, manufacture, sale and service of motor vehicles and assorted 

automotive parts. 

13. BMW NA has been the exclusive licensee and authorized user of the THE 

ULTIMATE DRIVING MACHINE trademark in the United States continuously since at least as 

early as 1975 in connection with passenger cars and related products. 

14. BMW NA has been the exclusive licensee and authorized user of the “745” mark 

in commerce in the United States continuously since at least as early as 2003 in connection with 

automobiles. 

15. BMW NA has been the exclusive licensee and authorized user of the MINI mark 

and MINI Wings Logo in commerce in the United States continuously since at least as early as 

2002 in connection with automobiles, parts and accessories therefor, and promotional items. 

BMW NA is authorized to institute this suit in order to enforce and protect its rights in 

connection with the foregoing marks as alleged herein, including but not limited to those in 

paragraphs 12 through 15. 

16. Since long prior to the acts of Defendants complained of herein, BMW has also 

used the Roundel logo, “BMW” word mark, BMW Grille Design, THE ULTIMATE DRIVING 

MACHINE mark, “745” mark, MINI mark, and MINI Wings logo in connection with its 

business of designing, manufacturing, distributing, and servicing motor vehicles and a variety of 

other products in the State of New Jersey. 

17. BMW AG is the owner of the following U.S. registrations for the Roundel logo, 

“BMW” word mark, BMW Grille Design, THE ULTIMATE DRIVING MACHINE mark, 

“745” mark, MINI mark, and MINI Wings logo: 

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Mark Reg. No. Reg. Date Goods/Services

“BMW” 611,710 Sept. 6, 1955 Automobiles and motorcycles 

“BMW” 1,164,922 Aug. 11, 1981 Motor vehicle repair and 

maintenance services and 

dealership services 

“BMW” 1,627,241 Sept. 18, 1990 Clothing 

“BMW” 2,816,178 Feb. 24, 2004 Metal key rings; vehicle parts; 

wheel stud locks; valve stem 

caps; license plate frames; 

vehicle seat covers; car covers; 

carry-all bags, floor mats 

“BMW” 3,436,270 May 27, 2008 Leasing services for motor 

vehicles; retail and wholesale 

financing services for motor 

vehicles; credit card services; 

online personal banking; online 

customer banking services for 

credit card, loan, finance and 

lease accounts; loan services 

613,465 Oct. 4, 1955 Automobiles, motorcycles and 

parts thereof 

1,170,556 Sept. 22, 1981 Motor vehicle repair and 

maintenance services and 

dealership services 

1,450,212 Aug. 4, 1987 Vehicles and parts thereof not 

included in other classes, 

including but not limited to 

engines, vehicle registration 

plates, vehicle seats, car bodies 

and parts thereof, steering 

wheels, wheels, rims for vehicle 

wheels, valves for vehicle tires, 

mats, head rests, and vehicle 

accessories 

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Mark Reg. No. Reg. Date Goods/Services

2,752,258 Aug. 19, 2003 Vehicle parts, valve stem caps, 

metal key rings, and cleaning 

preparations 

3,418,573 Apr. 29, 2008 Leasing and financing services 

for motor vehicles; online credit 

applications and online banking; 

loan services 

(BMW Grille 

Design mark) 

3,431,482 May 20, 2008 Motor vehicles 

(BMW Grille 

Design mark) 

3,431,493 May 20, 2008 Motor vehicles 

THE ULTIMATE 

DRIVING MACHINE 

1,240,182 May 31, 1983 Automobiles 

“745” 2,549,293 July 6, 2000 Automobiles 

MINI 2,746,570 Aug. 5, 2003 Automobiles and structural 

parts therefor 

MINI 2,826,013 March 23, 2004 Antifreeze 

Windshield cleaning fluids; 

automobile cleaning kits, 

comprising automobile cleaners, 

automobile wax, buckets, wheel 

cleaners, brushes, and cloths 

MINI 3,507,903 Sept. 30, 2008 Automobiles and automobile 

parts such as steering wheels 

Clothing; metal key chains; 

sunglasses, toy vehicles, wallets 

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Mark Reg. No. Reg. Date Goods/Services

2,855,714 June 22, 2004 Clothing, namely shirts, 

sweatshirts, jackets, gloves, and 

headwear 

2,907,546 Dec. 7, 2004 Gloves; head wear, jackets; and 

shirts 

2,812,820 Feb. 10, 2004 Automobiles and structural 

parts therefor; automobile 

windshield sunshades; fitted car 

covers; valve stem caps for 

vehicle tires; floor and trunk 

mats for vehicles 

2,825,969 March 23, 2004 Antifreeze 

Windshield cleaning fluids; 

automobile cleaning kits, 

comprising automobile cleaners, 

automobile wax, buckets, wheel 

cleaners, brushes, and cloths 

These registrations were duly and legally issued, and are valid and subsisting. Registrations 

611,710; 1,164,922; 1,627,241; 2,816,178; 613,465; 1,170,556; 1,450,212; 2,752,258; 

1,240,182; 2,549,293; 2,746,570; 2,826,013; 2,855,714; 2,907,546; 2,812,820; and 2,825,969 are 

incontestable pursuant to 15 U.S.C. § 1065. 

18. BMW NA distributes its passenger cars and vehicle parts and provides 

maintenance services for its customers through nationwide networks of authorized dealers and 

service providers. BMW NA authorizes its BMW dealerships to use the Roundel logo, “BMW” 

word mark, BMW Grille Design, THE ULTIMATE DRIVING MACHINE mark, and “745” 

mark in connection with the sale and/or service of BMW products, and authorizes its MINI 

dealerships to use the MINI word mark and MINI Wings logo in connection with the sale and/or 

service of MINI products. 

19. To create and maintain goodwill among its customers, BMW has taken substantial 

steps to assure that all authorized BMW and MINI dealers and service providers using these 

marks are of the highest quality. 

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20. Beginning at least as early as 1998, BMW began using its “BMW” word mark 

within various Internet domain names through which customers access BMW’s commercial 

websites. Through these websites, BMW provides information to its customers and markets a 

variety of products and services. 

21. BMW has sold hundreds of thousands of motor vehicles in the United States 

under its Roundel logo, “BMW” word mark, BMW Grille Design, THE ULTIMATE DRIVING 

MACHINE mark, “745” mark, MINI mark, and MINI Wings logo. 

22. BMW has expended millions of dollars in advertising efforts across the country in 

connection with the Roundel logo, “BMW” word mark, BMW Grille Design, THE ULTIMATE 

DRIVING MACHINE mark, “745” mark, MINI mark, and MINI Wings logo —including 

advertising of its Formula One racing team. 

23. As a result of its long use and promotion of the Roundel logo, “BMW” mark, 

MINI mark, and MINI Wings logo, BMW has established these marks as famous and distinctive 

marks among members of the general American public. 

BMW’s Formulabmwusa.com Website

24. BMW has been an active participant in Formula One car racing since the sport’s 

inception in the 1950s. “Formula One” is a well-known and widely-publicized series of 

international racing events in which various automobile manufacturers enter top-performing 

vehicles. 

25. Over the last decade, BMW co-sponsored its own Formula One team. BMW 

maintained an official website at www.formulabmwusa.com to advertise its Formula One team, 

results, and news. 

26. BMW displayed its official corporate badge at www.formulabmwusa.com with 

BMW’s Roundel logo and THE ULTIMATE DRIVING MACHINE mark. BMW operated and 

provided content for this website through an outside vendor. 

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27. In 2009, BMW decided to discontinue its involvement in Formula One in order to 

focus its efforts on other motorsport activities. 

Defendants’ Wrongful Activities 

28. Later, in 2009, Defendants procured the domain name www.formulabmwusa.com 

from BMW’s outside vendor without authorization from BMW and resumed displaying BMW’s 

official corporate badge, with BMW’s Roundel logo and THE ULTIMATE DRIVING 

MACHINE mark, giving the misimpression that BMW still sponsored the website. See Exh. 1. 

29. Defendants currently own or control the domain name 

www.formulabmwusa.com, which is registered to a fictitious name, “Alex Kniz”, at an address 

that does not exist, 556 Lincoln Street, Carlstadt, New Jersey 07072. 

30. Upon information and belief, Defendants have gained access to BMW’s website 

content management system and are displaying content relating to BMW’s Formula One racing 

team and motorsport activities, including content that BMW previously displayed at this website. 

Id.

31. BMW sent Defendants a request to turn over www.formulabmwusa.com to BMW 

and to cease displaying BMW’s trademarked material, but Defendants did not respond.

32. Defendants have also resumed displaying the look and feel of BMW’s former 

website but have added a new contact name, “John Wilson” at expert@formulabmwusa.com, 

under the guise of it being a BMW official. Id. 

33. Defendants have bad-faith intent to profit from their unauthorized use of “BMW” 

in the domain name www.formulabmwusa.com.

34. Defendants are also advertising, offering for sale and selling mesh grille overlays 

and badges at www.carid.com that bear identical or substantially indistinguishable copies of 

BMW’s Grille Design, Roundel logo, and “745” mark, even though these products are not made 

or authorized by BMW. See Exh. 2.

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35. Defendants are making commercial use at www.carid.com of BMW’s Roundel 

logo and MINI Wings logo. See Exh. 3.

36. Defendants are calling their products “BMW Lambo Doors,” “BMW Grilles,” 

“MINI Accessories” and the like, even though their products are not made or authorized by the 

BMW Group. Id.

37. Defendants are not affiliated with or sponsored by BMW, and have never been 

authorized by BMW or any of its subsidiaries, affiliates, or authorized agents to use BMW’s 

marks in any form. 

38. Defendants have never provided services for BMW or any of its subsidiaries, 

affiliates, or authorized agents. 

39. Defendants’ unauthorized use of the Roundel logo, “BMW” word mark, BMW 

Grille Design, THE ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and 

MINI Wings logo in the manner described above: 

(a) is likely to cause confusion, to cause mistake, and/or to deceive customers 

and potential customers as to the origin, sponsorship, or approval of 

Defendants’ website at www.formulabmwusa.com and products sold at 

www.carid.com, or as to some affiliation, connection, or association of 

Defendants with BMW; 

(b) enables Defendants to trade on and receive the benefit of goodwill BMW 

built up at great labor and expense over many years, and to gain 

acceptance for Defendants’ websites and products not solely on their own 

merits, but on the reputation and goodwill of BMW, its trademarks, and its 

products and services; 

(c) unjustly enriches Defendants; and 

(d) unlawfully removes from BMW the ability to control the nature and 

quality of products provided under BMW’s trademarks and places the 

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goodwill and valuable reputation of BMW in the hands of Defendants, 

over whom BMW has no control. 

40. BMW has been damaged and continues to be damaged by Defendants’ 

unauthorized use of the Roundel logo, “BMW” word mark, BMW Grille Design, THE 

ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and MINI Wings logo in the 

manner described above. 

41. Unless these acts of Defendants are restrained by this Court, they will continue to 

cause irreparable injury to BMW and to the public for which there is no adequate remedy at law. 

Count I 

Federal Trademark Infringement and Counterfeiting 

(Lanham Act § 32, 15 U.S.C. § 1114(1))

42. BMW realleges and incorporates the allegations set forth in paragraphs 1 through 

41 herein. 

43. Defendants’ use of BMW’s Roundel logo, “BMW” word mark, BMW Grille 

Design, THE ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and MINI 

Wings logo in connection with their website at www.formulabmwusa.com and their sale of mesh 

grille overlays and badges at www.carid.com is likely to cause confusion, cause mistake, or 

deceive customers as to the source or sponsorship of Defendants’ websites, company and 

products. 

44. Defendants’ sale of non-genuine BMW mesh grille overlays in the identical shape 

of BMW’s federally trademarked grille design constitutes trademark counterfeiting. BMW AG 

owns trademark registrations for its Grille Design (Reg. Nos. 3,431,482 and 3,431,493), and uses 

these marks in connection with grilles. 

45. The acts of Defendants complained of herein constitute use in commerce of 

reproductions, copies, or colorable imitations of BMW’s federally registered Roundel logo, 

“BMW” word mark, BMW Grille Design, THE ULTIMATE DRIVING MACHINE mark, 

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“745” mark, MINI mark, and MINI Wings logo in connection with the sale, offering for sale, 

distribution and advertising of goods and services in violation of 15 U.S.C. § 1114(1). 

46. Defendants’ acts complained of herein have been deliberate, willful, and 

intentional, with full knowledge and in conscious disregard of BMW’s rights in its marks and 

with intent to trade off BMW’s vast goodwill in its marks. 

47. As a result of the foregoing alleged actions of Defendants, BMW has been injured 

and damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will 

continue to suffer injury and damage. 

Count II 

Federal Unfair Competition and False Designation of Origin 

(Lanham Act § 43(a), 15 U.S.C. § 1125)

48. BMW realleges and incorporates the allegations set forth in paragraphs 1 through 

47 herein. 

49. Defendants’ unauthorized use of the Roundel logo, “BMW” word mark, BMW 

Grille Design, THE ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and 

MINI Wings logo in connection with their website at www.formulabmwusa.com and in 

connection with the advertising and sale of infringing mesh grille overlays and badges at 

www.carid.com falsely indicates that Defendants and their websites and products are connected 

with, sponsored by, affiliated with, or related to BMW. 

50. Defendants’ unauthorized use of the Roundel logo, “BMW” word mark, BMW 

Grille Design, THE ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and 

MINI Wings logo has caused, and is likely to continue to cause confusion, mistake, or deception 

as to the source or sponsorship of Defendants and their websites and products. 

51. Defendants’ unauthorized use of the Roundel logo, “BMW” word mark, BMW 

Grille Design, THE ULTIMATE DRIVING MACHINE mark, “745” mark, MINI mark, and 

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MINI Wings logo has diminished the goodwill in BMW’s marks which BMW has built up at 

great labor and expense. 

52. The acts of Defendants complained of herein constitute unfair competition and 

false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 

53. Defendants’ acts complained of herein have been deliberate, willful, and 

intentional, with full knowledge and in conscious disregard of BMW’s rights in its marks. 

54. As a result of the foregoing alleged actions of Defendants, BMW has been injured 

and damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will 

continue to suffer injury and damage. 

Count III 

Violation of the Anticybersquatting Consumer Protection Act 

(Lanham Act § 43(d), 15 U.S.C. § 1125(d))

55. BMW realleges and incorporates the allegations set forth in paragraphs 1 through 

54 herein. 

56. The domain name www.formulabmwusa.com owned by Defendants incorporates 

the “BMW” mark. 

57. The “BMW” mark was famous and distinctive at the time of the registration of 

www.formulabmwusa.com. 

58. Upon information and belief, Defendants’ acquisition and use of this domain 

name has been and is in bad faith, in that the acquisition and use occurred (i) with full knowledge 

and conscious disregard of BMW’s rights in the “BMW” mark, (ii) with full knowledge of the 

split between BMW and its outside website vendor, and that Defendants did not have permission 

to take this domain and unlawfully access BMW’s content management system; and (iii) with an 

intent to profit from BMW’s vast goodwill in this mark. 

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59. The acts of Defendants complained of herein constitute cybersquatting in 

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

60. As a result of the foregoing alleged actions, BMW has been injured and damaged. 

Unless the foregoing alleged actions of Defendants are enjoined, BMW will continue to suffer 

injury and damage. 

Count IV 

Unfair Competition 

(New Jersey Unfair Competition Act, N.J.S.A. 56:4-1 et seq.)

61. BMW realleges and incorporates the allegations set forth in paragraphs 1 through 

60 herein. 

62. The acts of Defendants complained of herein constitute unfair competition in 

violation of New Jersey Unfair Competition Act, N.J.S.A. 56:4-1 et seq., as Defendants have 

misappropriated the Roundel logo, “BMW” word mark, BMW Grille Design, THE ULTIMATE 

DRIVING MACHINE mark, “745” mark, MINI mark, and MINI Wings logo for their own use. 

63. As a result of the foregoing alleged actions of Defendants, Defendants have been 

unjustly enriched and BMW has been injured and damaged. Unless the foregoing alleged 

actions of Defendants are enjoined, BMW will continue to suffer injury and damage. 

Count V 

Trademark Infringement and Unfair Competition 

(Common Law of New Jersey)

64. BMW realleges and incorporates the allegations set forth in paragraphs 1 through 

63 herein. 

65. The acts of Defendants complained of herein constitute trademark infringement 

and unfair competition in violation of the common law of New Jersey. 

66. Defendants’ use of the infringing marks as described above has caused, is causing 

and, unless enjoined by this Court, will continue to cause confusion and mistake in the 

marketplace and deception of the trade and public as to the relationship or affiliation of the 

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parties and the source, origin, or sponsorship of www.formulabmwusa.com and Defendants’ 

websites and products. 

67. Defendants’ use of the infringing marks as described above has impaired, is 

impairing and, unless enjoined by this Court, will continue to impair BMW’s reputation under its 

trademarks and has caused, is causing and, unless enjoined by this Court, will continue to cause 

injury and damage to BMW for which BMW is entitled to relief under the common law. 

68. As a result of the foregoing actions of Defendants, BMW has been injured and 

damaged. Unless the foregoing alleged actions of Defendants are enjoined, BMW will continue 

to suffer injury and damage. 

Prayer For Relief

WHEREFORE, BMW prays that: 

1. Judgment be entered for BMW on its claims. 

2. Defendants, their agents, owners, servants, employees, related entities, attorneys, 

successors, assigns, and all others in active concert or participation with any of them, be 

enjoined and restrained, during the pendency of this action, and permanently thereafter, from: 

(a) using www.formulabmwusa.com or any other domain name, trade name, 

or mark that includes the letters “BMW’ or that is otherwise similar to the 

“BMW” word mark or any other mark or designation of BMW or its 

affiliates; 

(b) selling, transferring, or redirecting the domain name 

www.formulabmwusa.com to any other person, entity, or website; 

(c) registering any other domain names that incorporate “BMW” or any other 

trademark of BMW’s; 

(d) displaying BMW’s Roundel logo, MINI Wings logo, or any other BMW 

logo or colorable imitation thereof, in connection with their or any 

business; 

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(e) manufacturing, purchasing, brokering, importing, advertising, offering for 

sale, distributing, selling, marketing or promoting non-genuine BMW 

products that display or otherwise bear any BMW trademarks or colorable 

imitations thereof; 

(f) using BMW’s trademarks or colorable imitations thereof as or in the 

names, titles, and listings of Defendants’ products or others’ products not 

made or authorized by BMW; and 

(g) doing any other act or thing likely to confuse, mislead, or deceive others 

into believing that Defendants or their websites, related entities, or 

products are affiliated with, sponsored by, or approved by BMW. 

3. An accounting be directed to determine any and all of Defendants’ sales and 

profits and BMW’s losses resulting from Defendants’ activities, and that all such sales or 

profits and any non-duplicative losses be paid over to BMW and increased as the Court finds 

to be just under the circumstances of this case. 

4. Defendants be required to pay over to BMW, in accordance with Section 35 of the 

United States Trademark Act, 15 U.S.C. § 1117(a)-(d): 

(a) in accordance with Section 35 of the United States Trademark Act, 15 

U.S.C. § 1117(a) and (b), an award of treble BMW’s actual damages and 

Defendants’ profits; 

(b) in accordance with Section 35 of the United States Trademark Act, 15 

U.S.C. § 1117(b) and (c), statutory damages up to $2 million per 

counterfeit mark per type of counterfeit good sold by Defendants, offered 

for sale, or distributed by Defendants, resulting from Defendants’ 

intentional use of BMW’s federally registered trademarks in connection 

with the sale of products that are not made or authorized by BMW; 

(c) statutory damages of $100,000 relating to Defendants’ unlawful acts of 

cybersquatting; and 

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(d) BMW’s reasonable attorneys’ fees and costs of this action. 

5. Defendants, in accordance with Section 36 of the United States Trademark Act, 

15 U.S.C. § 1118, be required to deliver to BMW for destruction all domain name 

registrations, papers, signs, labels, prints, packages, advertising, or other promotional 

materials in Defendants’ possession or control bearing BMW’s trademarks. 

6. Defendants, in accordance with Section 34(a) of the United States Trademark Act, 

15 U.S.C. § 1116(a), be required to file with the Court, and serve upon BMW, within thirty 

(30) days after the entry and service on Defendants of an injunction, a report in writing and 

under oath, setting forth in detail the manner and form in which Defendants have complied 

with the terms of such injunction. 

7. Defendants, in accordance with Section 43(d) of the United States Trademark 

Act, 15 U.S.C. § 1125(d), be required to forfeit or cancel the www.formulabmwusa.com 

domain name or transfer the same at Plaintiffs’ election to BMW. 

8. BMW recover such other relief as the Court may deem appropriate. 

DEMAND FOR JURY TRIAL

BMW hereby demand a trial by jury of all issues so triable. 

Dated: August 6, 2010 Respectfully submitted, 

SAIBER LLC 

Attorneys for Plaintiffs BMW of North 

America, LLC and Bayerische Motoren Werke 

AG 

_/s/ Arnold B. Calmann___________________ 

Arnold B. Calmann (abc@saiber.com) 

One Gateway Center, Suite 1000 

Newark, NJ 07102 

Tel: (973) 622-3333 

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John G. Froemming (froemmingj@howrey.com) 

David M. Jaquette (jaquetted@howrey.com) 

HOWREY LLP 

1299 Pennsylvania Avenue, N.W. 

Washington, DC 20004 

Tel: (202) 783-0800 

Case 3:10-cv-04016-MLC-DEA Document 1 Filed 08/06/10 Page 18 of 20 PageID: 18
19

LOCAL CIVIL RULE 11.2 CERTIFICATION

 Under Local Civil Rule 11.2, the undersigned counsel for Plaintiffs hereby certifies that 

this matter is not the subject of any other action asserted by Plaintiffs herein in any court, or of 

any pending arbitration or administrative proceeding. 

Dated: August 6, 2010 

SAIBER LLC 

Attorneys for Plaintiffs BMW of North 

America, LLC and Bayerische Motoren Werke 

AG 

_/s/ Arnold B. Calmann___________________ 

Arnold B. Calmann (abc@saiber.com) 

One Gateway Center, Suite 1000 

Newark, NJ 07102 

Tel: (973) 622-3333 

John G. Froemming (froemmingj@howrey.com) 

David M. Jaquette (jaquetted@howrey.com) 

HOWREY LLP 

1299 Pennsylvania Avenue, N.W. 

Washington, DC 20004 

Tel: (202) 783-0800 

Case 3:10-cv-04016-MLC-DEA Document 1 Filed 08/06/10 Page 19 of 20 PageID: 19
20

LOCAL CIVIL RULE 201.1 CERTIFICATION

 Under Local Civil Rule 201.1, the undersigned counsel for Plaintiffs hereby certifies that 

they seek both monetary damages greater than $150,000 and injunctive relief, and therefore this 

action is not appropriate for compulsory arbitration. 

Dated: August 6, 2010 

SAIBER LLC 

Attorneys for Plaintiffs BMW of North 

America, LLC and Bayerische Motoren Werke 

AG 

_/s/ Arnold B. Calmann___________________ 

Arnold B. Calmann (abc@saiber.com) 

One Gateway Center, Suite 1000 

Newark, NJ 07102 

Tel: (973) 622-3333 

John G. Froemming (froemmingj@howrey.com) 

David M. Jaquette (jaquetted@howrey.com) 

HOWREY LLP 

1299 Pennsylvania Avenue, N.W. 

Washington, DC 20004 

Tel: (202) 783-0800 

Case 3:10-cv-04016-MLC-DEA Document 1 Filed 08/06/10 Page 20 of 20 PageID: 20