Professional Documents
Culture Documents
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Plaintiff,
COMPLAINT
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v.
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Defendants.
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This action seeks claims for relief against Defendant C.V. SNB-React ua
("SNB-React" or Defendant) for asserting false statements through four separate Notice
of Claimed Infringement forms submitted to eBay, Inc. that approximately two-dozen of
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LRG's listings were counterfeit goods, and by implication, that LRG is a counterfeiter.
The claims for relief include (1) declaratory judgment that LRG's listings are not
counterfeit goods nor otherwise constitute trademark infringement, (2) tortious
interference with contractual relations and/or expectancy, (3) defamation and (4)
injurious falsehood.
THE PARTIES
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State of Arizona.
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3.
LRG has not ascertained the true names and capacities of defendants
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JOHN AND JANE DOES I-x; ; ABC PARTNERSHIPS I-X; DEF BLACK & WHITE
LIMITED LIABILITY COMPANIES I-X; AND XYZ CORPORATIONS I-X,
will amend this complaint and allege the true names of these fictitious defendants if and
when they are ascertained.
JURISDICTION
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LRG
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This Court has jurisdiction over this action under 28 U.S.C 1331, 1338
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and 2201because it is an action arising under the laws of the United States, namely,
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whether LRG's sale of particular goods on eBay are counterfeit and/or otherwise
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constitute trademark infringement, and therefore violate 15 USC 1114 and/or 1125.
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Further, this Court has jurisdiction over this action under 28 U.S.C. 1332
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because diversity of citizenship exists and the matter in controversy exceeds the sum of
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$75,000. LRG is both organized in and operates out of the State of Arizona. Defendant
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is foreign business entity formed in the Netherlands, and does not have a principal place
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7.
This Court has supplemental jurisdiction over Plaintiff's state and common
law claims under 28 U.S.C. 1367 because these claims share a common nucleus of
operative facts giving rise to LRG's federal claims.
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purposely directed its commercial activities toward the state of Arizona by making false
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and injurious statements to eBay through the Notice of Claim Form that an Arizona
removing approximately two dozen listings, temporarily restricting LRG's seller account
for seven days and putting LRG at risk of having its selling privileges suspended and/or
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terminated by eBay. This action is based upon activities that arise out of or relate to
these contacts.
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contacts with the United States of America and Arizona are substantial, continuous, and
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Amazon and Etsy, with said enforcement activities purposely directed at other similarly
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since a substantial part of the events or omissions giving rise to the claim occurred in
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Arizona and/or a substantial part of property that is the subject of the action is situated in
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Arizona, namely, that LRG's listings on eBay occurred from and/or the purported
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counterfeit and/or infringing goods sold by LRG were located in Arizona. Alternatively,
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if there is no district in which this action may otherwise be brought , this judicial district
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GENERAL ALLEGATIONS
LRG Background
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gear for motorcycles, all-terrain vehicles, utility terrain vehicles and snowmobiles.
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LRG
operates
an
online
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retail
store
from
its
website
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platform in the United States, on information and belief, one or more servers located in
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LRG has sold items on eBay since October 2002, and from this date
through the present, has built an enormous presence through resource expenditure, hard
work and exemplar customer service.
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LRG lists in excess of 130,000 items for sale through its eBay store front.
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The vast majority of these items are located at and shipped to customers from LRG's
warehouse located in Tempe, Arizona. (See Exhibit A attached hereto).
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The majority of LRG's sales occurs through its eBay store-front compared
positive feedback rating over the past 12 months based on 30,000 plus reviews.
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agreements for permission to sell third party manufactured items that contain the
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manufacturer's brand and/or third party brands in the motorcycle, all-terrain vehicles,
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(http://stores.ebay.com/Lytle-Racing-Group)
http://www.amazon.com/gp/node/index.html?ie=UTF8&marketplaceID=ATVPDKIKX0DER&me=
A13A8IYIE73YJE&merchant=A13A8IYIE73YJE&redirect=true
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agreements with several iconic brands in the motorcross industry, such as Honda,
SNB-React Background
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React, is actively involved in fighting the "global trade in counterfeit goods," and claims
to have experience in dealing with "almost all areas of infringing goods."
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from
fashion,
electronics,
pharmaceuticals,
automotive
and
sports,
totaling
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Apple, Inc., Harley-Davidson, Inc., Jack Daniel's Properties, Inc., and the European
subsidiaries of Japanese automotive giants Kawasaki, Honda and Yamaha.
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seized 13,726,987 goods, closed 588,057 online auctions and took down 8,524 websites.
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eBay's VeRO (Verified Rights Owner) Program, which is designed to protect brand
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owners and consumers from the sale and purchase of counterfeit goods and/or goods that
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behalf like SNB-React, to proactively identify counterfeit and/or infringing listings and
for eBay to expeditiously remove same.
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Notice of Claimed Infringement form under a good faith belief that contains:
a.
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b.
c.
eBay is located;
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d.
e.
A statement that there is a good faith belief that the use of the
address;
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material complained of is not authorized by the intellectual property owner, its agent or
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the law
f.
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information in the notice is accurate and the complaint party is authorized to act on the
intellectual property owners behalf.
(See Exhibit C hereto)
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eBay provides brand owners and/or their agents with the Notice of
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Claimed Infringement form, that among other things, has a section and reason code to
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product infringing upon a trademark and 1.2 when a listing contains an unlawful use of
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trademark. (Id.).
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proactively identify and seek removal of infringing listings because eBay is not in the
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upon receipt of a Notice of Claimed Infringement and any and all listings remain
disabled and removed from sale indefinitely unless the complaining party withdraws the
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complaint and permits the seller to maintain the listing and/or a judicial determination
that one or more of the listings are not counterfeit and/or do not otherwise violate the
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33.
Lanham Act does not contain a parallel mechanism for a seller to submit a counternotification to eBay that enables eBay to restore the listing while avoiding potential
liability through a statutory safe harbor.
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under the Lanham Act, a retail seller like LRG is at a significant disadvantage when
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facing any claim, including unmeritorious claims, brought by a brand owner and/or their
agent that one or more listings are counterfeit or otherwise infringes upon the brand
owner's trademark.
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seller's account may be temporarily restricted or suspended, and is at risk of having his,
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her or its selling privileges on eBay terminated if deemed a repeat infringer and/or
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offender.
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eBay has a dedicated web page explaining the dangers of counterfeit goods
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to its e-commerce platform and what eBay does to prevent counterfeit listings from
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On or about August 29, 2014, LRG received notification from eBay that
two listings:
231317490367 - D'COR Kawasaki Sticker Sheet
390918993048 - D'COR Team Monster Energy Kawasaki Decal Sticker
Sheet
had been identified by SNB-React as counterfeit and that eBay removed these listings.
(See Exhibit E attached hereto)
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impkawasaki@snbreact.org.
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Heavy Industries, Ltd., an entity incorporated in Japan, and the parent company to
subsidiaries operating world-wide.
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subsidiaries the right to use the Kawasaki mark in connection with goods and services,
as well as sublicense the rights to third parties.
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and on information and belief, an official sponsor of Team Monster Energy Kawasaki.
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Corp, U.S.A. to manufacture and sell graphics bearing the Kawasaki mark, including
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those that co-brand with Monster Energy, as well as the right to further sublicense the
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Prior to August 29, 2014, LRG entered into an agreement with D'Cor to
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identified in 39.
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inquiring about the problem with the listings and that D'Cor is an officially licensed
Kawasaki manufacturer. (See Exhibit F attached hereto).
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response that the listings were an "unlawful replica" of a product made by Kawasaki,
and it was "confirmed by a Kawasaki expert that your item(s) [were] counterfeit." (Id.).
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49.
Between October 2002 and August 29, 2014, LRG had never been the
target of an eBay Notice of Claimed Infringement form claiming that LRG was selling
counterfeit goods.
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three listings:
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had been identified by SNB-React as counterfeit and that eBay removed these listings.
(See Exhibit G attached hereto).
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had been identified by SNB-React as counterfeit and that eBay removed these listings
(See Exhibit H attached hereto)
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SNB-React was acting on behalf of Kawasaki Motors Europe N.V. and that it could be
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contacted at impkawasaki@snbreact.org.
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after Thanksgiving, one of the busiest shopping days of the year and three days before
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demanding that SNB-React immediately advise why these listings are a problem and
that LRG has an agreement with Factory Effex to sell these items. SNB-React failed to
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letter with the Chuck Kober Affidavit (Exhibit B hereto) to SNB-React demanding that
SNB-React immediately withdraw the August 28, November 6 and November 28th
Notices of Claimed Infringement, but under no circumstances later than December 10,
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The December 4th letter advised (again) SNB-React that these items were
not counterfeit and were sold lawfully pursuant to an agreement with Factory Effex.
(See Exhibits B and J).
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SNB-React ignored the letter and did not withdraw the three notices.
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Showa/Flo Red;
390930369082 - Factory Effex 5' Die-Cut Sticker;
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had been identified by SNB-React as counterfeit and that eBay removed these listings
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the right to use the Yamaha mark in connection with goods and services, as well as sub-
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account, which included prohibiting the listing of new items for 7 days and updating
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inventory amounts, and a warning that additional violations could result in LRG's
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On a daily basis, LRG averages between 200 and 500 new listings on its
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eBay store front, some of which are time sensitive and involve a short window to begin
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prevented from updating any new inventory that it receives from manufacturers, and is
therefore precluded from selling these items during the restricted time period.
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items on eBay.
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By being restricted from listing new items, LRG's search rankings for
newly listed items, especially those that are time sensitive and involve short windows to
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deactivated.
FIRST CLAIM FOR RELIEF
(Declaration of Non-Infringement under 15 USC 1114 and 1125
re LRG's Listings on eBay)
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All of the allegations contained within the paragraphs above and below are
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to eBay through eBay's VeRO program stating that LRG's listings identified in 38,
51, 52 and 59 infringe upon SNB-React's clients trademark because these listings are
counterfeit.
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eBay deactivated and removed these listings from LRG's store front as a
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result of SNB-React's actions and assertions, and has penalized LRG's account by
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temporarily restricting same and placing LRG at risk of suspension and/or termination
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exists whether LRG's listings are counterfeit goods and/or otherwise infringe upon SNB-
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Factory Effex and D'Cor, pursuant to valid agreements with these third parties.
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Further, Factory Effex and D'Cor manufacture graphics and other goods
bearing one or more of the Honda, Yamaha, Suzuki and Kawasaki marks through valid
license agreements with their American subsidiaries and/or the American subsidiaries'
respective licensing agencies, and lawfully sub-licensed the right to sell these licensed
goods to retail sellers like LRG.
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Declaratory Judgment that LRG's listings as set forth in 38, 51, 52 and 59 are not
1114 and/or 1125, to permit eBay to reactivate the listings and allow LRG to sell these
items through LRG's store front to eBay customers without further interference by SNB-
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unjustified Notice of Claim Forms in the future labeling LRG as a counterfeiter and that
its retail items are counterfeit goods, to avoid future irreparable injury and tarnishment
to LRG's business reputation and goodwill with eBay.
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fees on the basis this is an exceptional case because SNB-React knew and/or
deliberately ignored the fact that LRG's listed items were not counterfeit but rather sold
pursuant to valid agreements with third party manufactures who are licensees of the
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Honda, Yamaha, Suzuki and Kawasaki marks, before SNB-React submitted one or more
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of the four separate Notice of Claimed Infringement forms to eBay that falsely claim
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that LRG's listings are counterfeit products, and by implication, that LRG is a
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counterfeiter.
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80.
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All of the allegations contained within the paragraphs above and below are
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LRG has had an ongoing business relationship with eBay since October
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2002.
with eBay and eBay's customers looking to purchase LRG's listed products
manufactured by Factory Effex and D'Cor, who are reasonably likely to be influenced to
purchase from LRG's strong front based on LRG's long-standing presence on eBay,
exceptional customer service and/or high page rankings and visibility for many of the
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listed products.
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contractual relationship and continued contractual expectancy with eBay giving LRG the
privilege to list and sell items through LRG's store front on eBay's enormous e-
commerce platform, and that SNB-React was aware that LRG had a long-standing and
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Notice of Claim forms to eBay that falsely assert that LRG's listings of Factory Effex
and D'Cor items were counterfeit while coupled with the knowledge that eBay's VeRO
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program defers to brand owners (or their agents) in claims of infringement, eBay's
policy re counterfeit goods and that eBay will not reactive listings unless the brand
owner (or their agent) withdraws the complaint and permits a seller like LRG to sell the
deactivated listing.
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SNB-React's course of conduct that targeted LRG was undertaken for the
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purpose of preventing LRG from listing and selling the Factory Effex and D'Cor items
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through its eBay store front to eBay customers, restricting LRG's privilege to sell on
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eBay and subjecting LRG to risk of being suspended and/or terminated by eBay.
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interfered with LRG's existing and prospective relationships by undertaking this course
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sustained and will continue sustaining immediate and irreparable harm and injury
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including damage to reputation, loss of good will, loss profits and loss of competitive
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at trial.
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unjustified Notice of Claim Forms in the future labeling LRG as a counterfeiter and that
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its retail items are counterfeit goods, to avoid future irreparable injury and tarnishment
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rights with the intent to substantially injure LRG, and other similarly situated seller.
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acts, LRG hereby seeks exemplary damages in addition to its actual damages.
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All of the allegations contained within the paragraphs above and below are
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eBay through the Notice of Claimed Infringement form, and in any and all
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communication with eBay related thereto, that LRG is a counterfeiter selling counterfeit
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counterfeit, but rather being lawfully sold pursuant to agreements with Factory Effex
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and D'Cor.
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LRG has sustained special and general damages to its good will and/or
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unjustified Notice of Claim Forms in the future labeling LRG as a counterfeiter and that
its retail items are counterfeit goods, to avoid future irreparable injury and tarnishment
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rights with the intent to substantially injure LRG, and other similarly situated seller.
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acts, LRG hereby seeks exemplary damages in addition to its actual damages.
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101.
All of the allegations contained within the paragraphs above and below are
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eBay through the Notice of Claimed Infringement form, and in any and all
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communication with eBay related thereto, that LRG is a counterfeiter and that products
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listed for sale by LRG's on its eBay store-front were counterfeit goods.
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ignorance, that one or more of these separate statements were false when made based on
information that LRG provided to SNB-React, including clear assertions that these listed
products were not counterfeit, were sold pursuant to valid agreements with Factory
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Effex and D'Cor, these products were properly licensed and an Affidavit and supporting
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VeRO program to persuade eBay to remove these listings, restrict LRG's seller account
and to otherwise suspend and/or terminate LRG's selling privileges.
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described herein, Plaintiff has sustained, and will continue sustaining immediate and
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irreparable harm and injury including, but not limited to, damage to reputation, lost
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unjustified Notice of Claim Forms in the future labeling LRG as a counterfeiter and that
its retail items are counterfeit goods, to avoid future irreparable injury and tarnishment
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acts, LRG hereby seeks exemplary damages in addition to its actual damages.
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identified in 38, 51, 52 and 59 do not constitute counterfeit goods and/or otherwise
trademark infringement under 15 USC 1114 and/or 1125;
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B.
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C.
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D.
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E.
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F.
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G.
For such other and further relief as the Court deems just and proper.
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By