Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 1 of 26 PageID #:1 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION CALVIN KLEIN TRADEMARK TRUST, ) and CALVIN KLEIN, INC., ) ) Case No. 15-cv-2224 Plaintiffs, ) v. ) ) THE PARTNERSHIPS and ) UNINCORPORATED ASSOCIATIONS ) IDENTIFIED ON SCHEDULE “A,” ) ) ) Defendants. ) COMPLAINT Plaintiffs Calvin Klein Trademark Trust and Calvin Klein, Inc. (together, “Plaintiffs” or “Calvin Klein”) hereby bring the present action against the Partnerships and Unincorporated Associations identified on Schedule A attached hereto (collectively, “Defendants”) and allege as follows: I. 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 business activities toward consumers in Illinois and causes harm to Calvin Klein’s Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 2 of 26 PageID #:2 business within this Judicial District. Through at least the fully interactive commercial Internet websites operating under the Defendant Domain Names and/or the Online Marketplace Accounts identified in Schedule A attached hereto (collectively, the “Defendant Internet Stores”), 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 counterfeit Calvin Klein products to residents of Illinois. Each of the Defendants is committing tortious acts in Illinois, is engaging in interstate commerce, and has wrongfully caused Calvin Klein substantial injury in the State of Illinois. II. INTRODUCTION 3. This action has been filed by Calvin Klein to combat online counterfeiters who trade upon Calvin Klein’s reputation and goodwill by selling and/or offering for sale unauthorized and unlicensed counterfeit products, including underwear and watches, featuring Calvin Klein’s trademarks (the “Counterfeit Calvin Klein Products”). The Defendants create the Defendant Internet Stores by the hundreds or even thousands and design them to appear to be selling genuine Calvin Klein products, while actually selling Counterfeit Calvin Klein Products to unknowing consumers. 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’ counterfeiting operation arises out of the same transaction, occurrence, or series of transactions or occurrences. Defendants attempt to avoid liability by going to great lengths to conceal both their identities and the full scope and interworking of their counterfeiting operation. Calvin Klein is forced to file these actions to combat Defendants’ counterfeiting of the registered Calvin Klein trademarks, as well as to protect unknowing consumers from purchasing Counterfeit Calvin Klein Products over the 2 Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 3 of 26 PageID #:3 Internet. Calvin Klein has been and continues to be irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable Calvin Klein trademarks as a result of Defendants’ actions and seeks injunctive and monetary relief. III. THE PARTIES Plaintiff 4. Plaintiff Calvin Klein Trademark Trust (“CKTT”) is a business trust organized and existing under the laws of Delaware with an address, c/o Calvin Klein, Inc., at 205 West 39th Street, New York, New York 10018. CKTT’s sole trustee, Wilmington Trust Company, is a Delaware corporation with a business address at Rodney Square North, 1100 North Market Street, Wilmington, Delaware 19890. CKTT is the record owner of the CALVIN KLEIN and CK trademarks for underwear, watches, and various other products (among other marks) in the United States. 5. Plaintiff Calvin Klein, Inc. is a corporation organized and existing under the laws of the State of New York, having its principal place of business at 205 West 39th Street, New York, New York 10018. Calvin Klein, Inc. is the beneficial owner of the trademarks owned by CKTT, including trademarks for watches and various other products (among other marks), in the United States. 6. Calvin Klein is one of the leading fashion design and marketing companies in the world. It designs and markets women’s and men’s designer collection apparel and a range of other products that are manufactured and marketed through an extensive network of licensing agreements and other arrangements worldwide. Brands/lifestyles include Calvin Klein Collection, ck Calvin Klein, Calvin Klein, Calvin Klein Jeans and Calvin Klein Underwear, among others. Product lines under the various Calvin Klein brands include women’s dresses and 3 Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 4 of 26 PageID #:4 suits, men’s dress furnishings and tailored clothing, men’s and women’s sportswear and bridge and collection apparel, golf apparel, jeanswear, underwear, fragrances, eyewear, women’s performance apparel, hosiery, socks, footwear, swimwear, jewelry, watches, outerwear, handbags, small leather goods, and home furnishings (including furniture), all of which prominently display its famous, internationally-recognized and federally-registered trademarks, including CALVIN KLEIN (collectively, the “Calvin Klein Products”). Calvin Klein Products have become enormously popular and even iconic, driven by Calvin Klein’s arduous quality standards and innovative design. Among the purchasing public, genuine Calvin Klein Products are instantly recognizable as such. In the United States and around the world, the Calvin Klein brand has come to symbolize high quality and prestige. Further, Calvin Klein Products are among the most recognizable in the world. 7. Calvin Klein Products are distributed and sold to consumers through department stores including, but not limited to, Nordstrom and Macy’s, throughout the United States and in Illinois, and through the official e-commerce calvinklein.com website which was launched in August 2008. 8. Calvin Klein has continuously sold Calvin Klein products under the Calvin Klein trademarks in the United States for many years. Calvin Klein incorporates a variety of distinctive marks in the design of its various Calvin Klein Products. As a result of its long- standing use, Calvin Klein owns common law trademark rights in its trademarks. Calvin Klein has also registered its trademarks with the United States Patent and Trademark Office. Calvin Klein Products typically include at least one of the federally registered Calvin Klein trademarks. Often the Calvin Klein mark is displayed in more than one location on a single product, e.g., interior label, lining, or external name plate. Calvin Klein uses its trademarks in connection with 4 Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 5 of 26 PageID #:5 the marketing of its Calvin Klein Products, including the following marks which are collectively referred to as the “CALVIN KLEIN Trademarks.” Registration Trademark Goods and Services Number 3,320,669 CALVIN KLEIN UNDERWEAR FOR: UNDERWEAR, SLEEPWEAR, T- SHIRTS, TANK TOPS, PAJAMAS, SLEEP SHIRTS, ROBES, BRIEFS, BOXERS, ATHLETIC UNDERWEAR, SPORT KNIT UNDERWEAR, AND LOUNGEWEAR, NAMELY, LOUNGING PANTS, SHIRTS AND TOPS, AND LOUNGE JACKETS; WOMEN’S INTIMATE APPAREL, SLEEP-WEAR, LOUNGEWEAR, BODYWEAR AND DAYWEAR, NAMELY, UNDERWEAR, BRAS, CONTROL BRIEFS, CONTROL HIPSTERS, CONTROL BIKINIS, CAMISOLES, CAMISETTES, BIKINIS, HIPSTERS, BRIEFS, SLIPS, CHEMISES, TEDDIES, CAMISOLES, BRALETTES AND PETTI-PANTS, NIGHTGOWNS, NIGHT SHIRTS, PAJAMAS, SLEEP SHORTS, AND BATHROBES IN CLASS 025. 2,483,764 FOR: EYEGLASS FRAMES, SUNGLASSES IN CLASS 009. FOR: CLOTHING CAPS AND HATS IN CLASS 025. FOR: ADVERTISING AGENCIES AND DEVELOPING PROMOTIONAL CAMPGAINS FOR BUSINESSES IN CLASS 035. FOR DESIGN FOR OTHERS IN THE FIELD OF CLOTHING AND RETAIL CLOTHING BOUTIQUES IN CLASS 042. 5 Case: 1:15-cv-02224 Document #: 1 Filed: 03/13/15 Page 6 of 26 PageID #:6 2,454,886 FOR: EYEGLASS FRAMES, SUNGLASSES IN CLASS 009. FOR: WATCHES AND CLOCKS IN CLASS 014. FOR: CLOTHING, FOOTWEAR AND HEADWEAR FOR WOMEN, MEN, BOYS AND GIRLS, NAMELY, JUMP SUITS, SHIRTS, BLOUSES, JACKETS, BATHING SUITS, PANTS, BELTS, SHORTS, WARM-UP SUITS, SWEATPANTS AND SWEATSHIRTS, WALKING SHORTS, JEANS, KNITTED TOPS, STOCKINGS, TIGHTS, HATS, CAPS, COATS, OUTER COATS, SWEATERS, SKIRTS, COATS, T-SHIRTS, BEACH AND SWIMMING COVER-UPS, TANK TOPS, CAMISOLES; TENNIS AND GOLF APPAREL, NAMELY, DRESSES, TOPS, SKIRTS, PANTS, AND SHORTS; FOOTWEAR, NAMELY, SHOES, ACTIVE SPORT SHOES, SNEAKERS, BOOTS, SLIPPERS; BLAZERS, PANTS, SOCKS IN CLASS 025. FOR: ADVERTISING AGENCIES AND DEVELOPING PROMOTIONAL CAMPAIGNS FOR BUSINESSES IN CLASS 035. FOR: DESIGN FOR OTHERS IN THE FIELD OF CLOTHING AND RETAIL CLOTHING BOUTIQUES IN CLASS 042. 2,142,329 FOR: HANDBAGS, WALLETS KEYCASES, CHANGE PURSES, COSMETIC CASES SOLD