United States District Court, E.D. Virginia, Alexandria Division
REPORT AND RECOMMENDATION
Theresa Carroll Buchanan United States Magistrate Judge.
matter comes before the Court on Plaintiff's Motion for
Default Judgment (Dkt. 39). After a representative for
Defendant failed to respond to Plaintiff's Motion or to
appear at the hearing on December 22, 2017, the undersigned
U.S. Magistrate Judge took the matter under
advisement. For the reasons stated below, the
undersigned now recommends that Plaintiff's Motion for
Default Judgment be GRANTED.
April 6, 2017, Montblanc-Simplo GmbH ("Plaintiff")
filed this lawsuit, and subsequently, on September 7, 2017,
added Miroslav Ilnitskiy ("Defendant") as a
defendant in its First Amended Verified Complaint (Dkt. 24).
Plaintiff's suit against Defendant involves allegations
of trademark infringement and trademark counterfeiting in
violation of the Lanham Act, 15 U.S.C. § 1114(1), and
copyright infringement in violation of the Copyright Act, 17
U.S.C. § 501. (Am. Compl. ¶¶ 10, 79, 85,
96.)Plaintiff alleges that Defendant has
improperly used Plaintiff's trademarks and copyrighted
works without permission to promote and sell counterfeit
products on the Internet. (Mem. Supp. Default J. at 1.)
Plaintiff now seeks default judgment against Defendant and
requests permanent injunctive relief and statutory damages.
(Id. at 1-2.)
Jurisdiction and Venue
Court has subject matter jurisdiction over this action
pursuant to 28 U.S.C. §§ 1331 and 1338(a), because
this action involves federal questions arising under the
Lanham Act and the Copyright Act, which are federal laws
relating to trademarks and copyrights. (Am. Compl.
Court has personal jurisdiction over Defendant pursuant to
the Virginia Long-Arm Statute, Va. Code § 8.01-328.1.
For personal jurisdiction over a defendant, the standards of
both federal due process and the forum state's long-arm
statute and must be satisfied. See Tire Eng'g &
Distrib., LLC v. Shandong Linglong Rubber Co., 682 F.3d
292, 301 (4th Cir. 2012). Federal due process permits
personal jurisdiction where a defendant has "certain
minimum contacts with [the forum state] such that the
maintenance of the suit does not offend 'traditional
notions of fair play and substantial justice.'"
Int'l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463
(1940)). The Virginia Long-Arm Statute "extends the
jurisdiction of its courts as far as federal due process
permits." ePlus Tech., Inc. v. Aboud, 313 F.3d
166, 176 (4th Cir. 2002). With federal due process and the
Virginia Long-Arm Statute requiring the same standards,
essentially only one personal jurisdiction inquiry is
required. See id.
jurisdiction can exist over a nonresident defendant based on
that defendant's Internet contacts with the forum. A
state may exercise personal jurisdiction over a nonresident
defendant when that defendant "(1) directs electronic
activity into the State, (2) with the manifested intent of
engaging in business or other interactions within the State,
and (3) that activity creates, in a person within the State,
a potential cause of action cognizable in the State's
courts." ALS Scan, Inc. v. Dig. Serv. Consultants,
Inc., 293 F.3d 707, 714 (4th Cir. 2002). However, a
state may not exercise personal jurisdiction over a
nonresident defendant when that defendant engages in
"passive Internet activity'' such as
"simply plac[ing] information on the Internet."
Defendant is not a resident of Virginia, Virginia may
exercise personal jurisdiction over Defendant based on
Defendant's Internet contacts. Defendant set up an
interactive e-commerce website and social media accounts
accessible to Virginia residents. (Am. Compl. ¶ 51.)
Defendant used his websites and accounts to individually
communicate with, receive payment from, and ship counterfeit
products to at least one customer in Virginia. (Id.
¶¶ 53-54.) Therefore, Defendant directed electronic
activity into Virginia with the intent to engage in business
and other interactions, and such activity created potential
causes of action.
is proper in this District pursuant to 28 U.S.C. §
1391(b)(2), because a substantial part of the events giving
rise to the claims against Defendant occurred in this
District. (Id. ¶ 16.)
Service of Process
of process has been proper in this action. Federal Rule of
Civil Procedure 4(f)(3) allows service on individuals in a
foreign country "by other means not prohibited by
international agreement, as the court orders." However,
any court-ordered method of service of process allowed by
Rule 4(f)(3) must still comply with constitutional due
process, meaning that a court "must approve a method of
service that is 'reasonably calculated' to give
notice to defendant.'' BP Prods. N. Am., Inc. v.
Dagra, 232 F.R.D. 263, 264 (E.D. Va. 2005) (citation
omitted). Service of process through electronic and online
communications, such as email and social networking messages,
generally satisfy constitutional due process. See
WhosHere, Inc. v. Orun, No. 1:13-cv-00526-AJT-TRJ, 2014
WL 670817, at *3 (Feb. 20, 2014).
September 26, 2017, Plaintiff filed its Motion for Service by
Publication and Email (Dkt. 27). On September 27, 2017, the
Court granted Plaintiff's Motion through an Order (Dkt.
30) (the "September 27th Order"), which required
Plaintiff to complete service of process by publishing the
Court's September 27th Order in The Washington
Post or The Washington Times within fourteen
days and by sending the September 27th Order to
Defendant's eight previously used email addresses. The
Court determined then, and reaffirms now, that such service
of process was reasonably calculated to give notice to
Defendant. Plaintiff complied by emailing copies of the
September 27th Order to Defendant's email addresses on
October 3, 2017, and by publishing a copy of the September
27th Order in The Washington Times on
October 5, 2017. (Weslow Decl. ¶¶ 6,
Through its compliance with the court-ordered method of
service of process that was reasonably calculated to give
notice to Defendant, Plaintiff properly completed service of
process for this action.
Grounds for Default: Judgment
date, Defendant has not appeared or otherwise participated in
these proceedings. The Court's September 27th Order,
which was sent to Defendant's eight email addresses and
published in The Washington Times, stated that
Defendant was to answer or respond to the lawsuit within
twenty-one days after publication of the September 27th
Order, and ''[i]f no appearance or pleading is filed
as required by this Order, this Court may render a judgment
against Defendant." The September 27th Order was
published in The Washington Times on October 5,
2017, and no party responded on behalf of Defendant within
twenty-one days, despite instruction to do so by the Court.
November 15, 2017, Plaintiff filed its Request for
Clerk's Entry of Default (Dkt. 36), seeking an entry of
default for Defendant. On November 16, 2017, the Clerk of the
Court issued the Entry of Default (Dkt. 37) for Defendant. On
December 1, 2017, Plaintiff filed its Motion for Default
Judgment. The undersigned then held a hearing on
Plaintiff's Motion on December 22, 2017, at which no
representative for Defendant appeared. Finding the matter
uncontested, the undersigned took the matter under advisement
to issue this Report and Recommendation.
FINDINGS OF FACT
full review of the pleadings and the record in this case, the
undersigned finds that Plaintiff has established the
Montblanc-Simplo GmbH is a German corporation headquartered
in Hamburg, Germany. (Am. Compl. ¶ 5.) Plaintiff is in
the business of manufacturing, designing, branding, and
selling sophisticated, high-quality products ("Montblanc
Products") such as writing instruments, writing
accessories, watches, leather goods and belts, jewelry, and
eyewear. (Id. ¶¶ 2, 18.) Defendant
Miroslav Ilnitskiy is an individual who has used various
email addresses, websites, and social media accounts to
promote and sell counterfeit Montblanc Products with the
intent to profit from such promotion and sale. (Id.
¶¶ 9, 51, 68.)
has manufactured, designed, and sold Montblanc Products since
1906, with its initial product being high-quality writing
instruments. (Id. ¶ 18.) Plaintiff promotes
Montblanc Products and its other services using formative
marks including the word "Montblanc" and various
other designs ("Montblanc Marks"). Montblanc Marks
are famous and distinctive through the United States and the
world. (Id. ¶ 23.) Plaintiff's Montblanc
Products and their packaging display Montblanc Marks.
(Id. ¶ 20.) Plaintiff also operates an Internet
website through the domain name <montblanc.com>,
through which it sells and advertises its Montblanc Products
and displays Montblanc Marks. (Id. ¶¶
19-20.) Plaintiff has common law rights in Montblanc Marks
and has registered various Montblanc Marks as trademarks
around the world, such as word marks and design marks,
including registration with the Principal Trademark Register
of the U.S. Patent and Trademark Office. (Id.
¶¶ 22, 24-27, Scheds. B-C.) Plaintiff also has
copyrighted various original images and expressions
("Montblanc Works") for use in advertising
Montblanc Products. (Id. ¶¶ 88, 90, Sched.
D.) Plaintiff displays Montblanc Works on their website
<montblanc.com> and in other advertising. (Id.
¶ 89.) In 2010 alone, Plaintiff's brand generated
more than $780 million in total sales revenue worldwide.
(Id. ¶ 21.)
August 17, 2015, using an alias, Defendant registered the
domain name <montblancua.com> through a domain name
registrar. (Id. ¶ 30.) After registration,
<montblancua.com> was configured to replicate
Plaintiff's genuine <montblanc.com> website, and
<montblancua.com> displayed Montblanc Marks and
Montblanc Works and promoted counterfeit Montblanc Products
for sale. (Id. ¶¶ 31-32.) The email
<email@example.com> (the "'Subject Email
Addresses") were associated with the sale of counterfeit
products through <montblancua.com> and were accessed
primarily from IP addresses in Ukraine. (Id.
¶¶ 34-35.) The email address <firstname.lastname@example.org>
was also associated with the Subject Email Addresses.
(Id. ¶ 34.) Plaintiff's investigator
purchased counterfeit products from <montblancua.com>
and paid for the counterfeit products through a Paypal
account associated with the email address
¶¶ 33, 36.) On around August 17, 2016,
approximately one month after Plaintiff's investigator
purchased the counterfeit products, <montblancua.com>
November 6, 2016 and December 6, 2016, Defendant registered
the domain names <montblancpensoutletcheapsale.com>,
<montblancpensoutletcheaponsale.com> (the "Subject
Domain Names"), using a privacy service that concealed
his identity. (Id. ¶¶ 38, 41.) After
registration, the Subject Domain Names were configured to
replicate Plaintiff's genuine <montblanc.com>
website, and the Subject Domain Names displayed replicas of
Montblanc Marks and Montblanc Works and promoted counterfeit
Montblanc Products for sale. (IcL ¶¶ 39-40, 42-43.)
Defendant also used a webpage on the third-party webhosting
platform <vk.com> (the "Vk.com Webpage") to
display replicas of Montblanc Marks and Montblanc Works and
promote counterfeit Montblanc Products for sale.
(Id. ¶¶ 49-50.)
operated nine Instagram accounts with the following
usernames: m7-montblanc, zekta-montblanc, adaam.fmontblanc,
ladonmontblanc, filidam-montblanc, light-montblanc,
dimoncheg-montblanc, mjt-montblanc, and amira-montblanc (the
"Subject Instagram Accounts'') . (Id.
¶¶ 44-45.) The Subject Instagram Accounts displayed
replicas of Montblanc Marks and Montblanc Works and promoted
counterfeit Montblanc Products for sale. (Id.
¶¶ 44, 47-48.) The Subject Instagram Accounts were
associated with free email accounts from Internet service
providers based in Russia and Ukraine, and the Instagram
accounts were accessed primarily from IP addresses located in
Ukraine. (Id. ¶ 46.) Plaintiff's
investigator purchased a counterfeit product that was
advertised on the Subject Instagram Accounts by communicating
with Defendant via Defendant's email address
<email@example.com>. (Id. ¶¶
52-53.) Defendant requested and received payment for the
counterfeit product through a Paypal account associated with
the email address <firstname.lastname@example.org>.
(Id. ¶ 53.) Defendant shipped the counterfeit
product, which displayed replica Montblanc Marks, to this
District. (Id. ¶¶ 54-55.)
EVALUATION OF PLAINTIFF'S COMPLAINT
defendant has defaulted, the well-pleaded allegations of
facts set forth in the plaintiff s complaint are deemed
admitted. JTH Tax, Inc. v. Grabert, 8 F.Supp.3d 731,
736 (E.D. Va. 2014) (citing Ryan v. Homecomings Fin.
Network, 253 F.3d 778, 780 (4th Cir. 2001)). Before
entering default judgment, however, the Court must evaluate
the plaintiff's complaint against the standards of
Federal Rule of Civil Procedure 12(b)(6) to ensure that the
complaint properly states a claim. GlobalSantaFe Corp. v.
Globalsantafe.com, 250 F.Supp.2d 610, 612 n.3 (E.D. Va.
2003). As such, it is appropriate to evaluate Plaintiff's
trademark infringement, trademark counterfeiting, and
copyright infringement claims in its Complaint (Dkt. 1)
against the standards of Federal Rule of Civil Procedure
Trademark Infringement Under -the Lanham Act
alleges a claim of trademark infringement in violation of the
Lanham Act, 15 U.S.C. § 1114(1). The Lanham Act
prohibits the use of a colorable imitation of a registered
mark in connection with the distribution of goods and
services where such use is likely to cause confusion or to
deceive. 15 U.S.C. § 1114(1). For a claim of trademark
infringement, a plaintiff must show that: (1) it has a valid
trademark; (2) the trademark is protectable; and (3) the
defendant's use of a colorable imitation of the trademark
is likely to cause confusion among consumers. Synergistic
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