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EASTERN DIVISION
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Plaintiffs,
v.
PADOVA WHEELS, INC., a California
Corporation d/b/a VIBE MOTORING;
FABIO PETTENUZZO, an Individual;
SALAHUDIN NUDIN NLN, an
Individual a/k/a SAL DIN d/b/a
PIONEER TIRE AND WHEEL; and
DOES 1-10, inclusive,
Defendants.
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Plaintiffs), to hereby file their Complaint for Damages and Declaratory Relief
FABIO PETTENUZZO, SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer
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Plaintiff BMW NA is now, and was at the time of the filing of this
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having its principal place of business at 300 Chestnut Ridge Road, Woodcliff
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BMW AG.
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Plaintiff BMW AG is now, and was at the time of the filing of this
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Complaint and at all intervening times, a German corporation organized under the
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laws of the Federal Republic of Germany with its principal place of business
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WHEELS, INC., is now, and was at the time of the filing of this Complaint, and at
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Motoring with a registered address of 4035 E. Guasti Rd., Ste. #311, Ontario,
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California 91761.
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6.
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PETTENUZZO, is now, and was at the time of the filing of this Complaint, and at
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all intervening times, an individual and agent for service of process for Defendant
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PADOVA WHEELS, INC. conducting business from 4035 E. Guasti Rd., Ste.
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NUDIN NLN, is now, and was at the time of the filing of this Complaint, and at all
intervening times, an individual also known as Sal Din doing business as Pioneer
Tire and Wheel conducting business from 340 S. East End Ave., Ste. H, Pomona,
California 91766.
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names. When the true names and capacities of said Defendants have been
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Sal Din d/b/a Pioneer Tire and Wheel, and DOES 1-10, inclusive, sued herein by
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fictitious names, are jointly, severally and concurrently liable and responsible with
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Plaintiffs are informed and believe and thereon allege that at all times
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FABIO PETTENUZZO, SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer
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Tire and Wheel, and DOES 1-10, inclusive, and each of them, were the agents,
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servants and employees of every other Defendant and the acts of each Defendant,
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as alleged herein, were performed within the course and scope of that agency,
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service or employment.
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JURISDICTION / VENUE
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This Court has jurisdiction over the subject matter of the First, Second,
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Third, and Fifth Causes of Action (violation of the Lanham Act and Patent law)
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conduct business and/or reside within this jurisdiction and have committed the
this district. Defendants have sufficient minimum contacts with this district such
that the exercise of jurisdiction over Defendants by this Court does not offend
traditional notions of fair play and substantial justice. Among other things,
Defendants have advertised, offered to sell, sold, and distributed products that
infringe the trademarks and design patents of Plaintiffs to consumers within this
judicial district for Defendants own commercial gain and have exploited
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business contacts and financial interests. Defendants have also offered to sell and
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actually sold counterfeit products (described more fully below) using interactive
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internet websites knowing or having reason to know that consumers throughout the
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United States, including within this judicial district, would purchase said
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counterfeit goods from Defendants, believing that they were authentic goods
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in this judicial district, have purposefully directed action to California and this
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the laws of the State of California, such that this Courts assertion of jurisdiction
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over Defendants does not offend traditional notions of fair play and due process.
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omissions giving rise to these claims occurred in this judicial district, and has
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products were paid with funds from a financial institution in California, and the
Defendants actions within this district directly interfere with and damage
Plaintiffs commercial business and harms Plaintiffs goodwill within this Venue.
GENERAL ALLEGATIONS
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distributing motor vehicles, wheels, parts, seat belt buckle clips, floor mats, anti-
slip mats, mileage readers, DVD compact disc players, watches, clothing, MP3
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players, PC port hubs, lighters, ash trays, USB flash memory drives, key-chains,
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pocket wallets, phone cases, car stickers and badges, car key cases, car key bags,
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driving license cases, brake pedal covers, storage basins, and a variety of other
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products under various trademarks, including but not limited to the BMW marks.
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Plaintiffs BMW-branded products and marks have achieved great success since
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awareness of their BMW marks and products. Plaintiffs have spent an enormous
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and developed significant goodwill in their entire product line. A wide array of
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high degree of promotion and the quality and popularity of the BMW motor
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vehicles, the BMW marks have been prominently placed in the minds of the
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public.
familiar with Plaintiffs intellectual property and products, and have come to
recognize the BMW marks and products and associate them exclusively with
Plaintiffs. Plaintiffs have acquired a valuable reputation and goodwill among the
public as a result of such association. Indeed, the BMW marks are famous in the
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other rights in their BMW products and services through their use, advertising
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and promotion, Plaintiffs have also protected their valuable rights by filing for and
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ii.
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iii.
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ix.
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xii.
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xiv.
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xv.
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automobiles and automobile related products, are one of the largest producers of
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automobile wheels in the world. Accordingly, Plaintiffs own various valid and
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lawfully issues United States Design Patents, including but not limited to wheel
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as well as the reputation they have gained, Plaintiffs and their products have
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become targets for unscrupulous individuals and entities who wish to take a free
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ride on its goodwill, reputation and fame. Plaintiffs have spent considerable
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counterfeit
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BMW-branded
products.
Their
actions
vary
and
include
www.eBay.com, owned by eBay, Inc. (eBay), to offer for sale, sell and distribute
products, including counterfeit automobile wheel rims, center caps, and badges
comprised of the BMW Design Patents and/or bearing the BMW Trademarks,
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such as Defendants are accomplished through the PayPal payment service provided
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funds to sellers, electronically and online, from any PayPal account to any other
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PayPal account.
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sellers, including Defendants, to make use of eBay and its PayPal services, users
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must agree to terms and conditions set forth in eBay and PayPals User
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Agreements, as well as pay various fees associated with any listing or transaction
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automobile wheel rims with accessories comprised of the BMW Design Patents
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Defendant SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and
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Single (1) wheel X6 20X 10.5 Gunmetal Machine E70 E71 from Defendants
SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel for a cost
of $225.00.
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badges purchased and received from Defendants PADOVA WHEELS, INC. d/b/a
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Sal Din d/b/a Pioneer Tire and Wheel were inspected by Plaintiffs to determine
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authenticity. Plaintiffs inspection of the purchased items confirmed that the items
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Defendants sold were in fact counterfeit BMW products infringing upon the
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automobile parts, wheels, center caps, badges, and related goods and services, and
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use images and marks that are confusingly similar to, identical to, and/or constitute
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confuse consumers and aid in the promotion and sales of its unauthorized goods.
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Defendants conduct and use began long after Plaintiffs adoption and
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use of its BMW Trademarks and BMW Design Patents, after Plaintiffs
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obtained the trademark and patent registrations alleged above, and after Plaintiffs
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ownership of the marks, and of the fame in such marks, prior to the actions alleged
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herein, and adopted them in bad faith and with intent to cause confusion, tarnish,
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counterfeit and dilute Plaintiffs marks and products. Defendants also had
faith and in violation of Plaintiffs patent rights. Neither Plaintiffs nor any
Defendants actions were committed in bad faith and with the intent to
dilute Plaintiffs marks, and to cause confusion and mistake, and to deceive the
consuming public and the public at large as to the source, sponsorship and/or
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By their wrongful conduct, Defendants have traded upon and diminished Plaintiffs
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goodwill.
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willfully and in bad faith committed the following acts, all of which have and will
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Plaintiffs rights in the BMW Trademarks and BMW Design Patents; (ii)
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applied counterfeit marks; (iii) misled the public into believing there is an
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advertised and sold by Defendants and Plaintiffs; (iv) used false designations of
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origin on or in connection with its goods and services; (v) committed unfair
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Unless enjoined,
NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel, and DOES 1
set forth elsewhere in this Complaint as though fully set forth in this cause of
action.
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interstate commerce.
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Plaintiffs, as the owners of all right, title and interest in and to the
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were actually aware that Plaintiffs are the registered trademark holders of the
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BMW Trademarks.
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asserted marks in connection with the sale, offering for sale, distribution, or
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Trademarks.
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used in commerce upon or in connection with the sale, offering for sale,
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cause mistake, or to deceive, mislead, betray, and defraud consumers who believe
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exclusive rights and goodwill in the marks, as well as with bad faith and the intent
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irreparable injury, loss and damage to its rights in and to the BMW Trademarks
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and the goodwill associated therewith, for which it has no adequate remedy at law;
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Act, 15 U.S.C. 1114. Based on such conduct, Plaintiffs are entitled to injunctive
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relief as well as monetary damages, and other remedies provided by section 1116,
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SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel, and
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set forth elsewhere in this Complaint as though fully set forth in this cause of
action.
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Plaintiffs, as the owners of all common law right, title, and interest in
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and to the BMW Trademarks, have standing to maintain an action for false
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designation of origin and unfair competition under the Federal Trademark Statute,
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goods and services, used in commerce marks that are confusingly similar to the
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asserted marks, and/or has made false designations of origin which are likely to
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Defendants have unfairly competed with and injured and, unless immediately
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known, that their adoption and commencement of use in commerce and continuing
and counterfeit items bearing Plaintiffs asserted marks unfairly competes with
and defraud consumers to believe that the substandard imitations are genuine
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BMW products.
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Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), causing Plaintiffs to suffer
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substantial and irreparable injury for which it has no adequate remedy at law.
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wrongful conduct, as alleged herein, Plaintiffs have been and will be deprived of
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trial, and have been deprived and will be deprived of the value of their marks as
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Plaintiffs seek damages and an accounting of Defendants profits, and requests that
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the Court grant Plaintiffs three times that amount in the Courts discretion.
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Din d/b/a Pioneer Tire and Wheel, and DOES 1 through 10, Inclusive)
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set forth elsewhere in this Complaint as though fully set forth in this cause of
action.
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long after Plaintiffs asserted marks became famous, and Defendants acted
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deceive, mislead, betray, and defraud consumers to believe that the substandard
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herein have diluted and will continue to dilute Plaintiffs asserted and other marks,
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and are likely to impair the distinctiveness, strength and value of Plaintiffs marks,
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for the damages that have been caused and which will continue to be caused by
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43(c) of the Lanham Act, 15 U.S.C. section 1125(c), Plaintiffs are entitled to
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U.S.C. 1116, 1117, 1118, and 1125(c), including Defendants profits, actual and
prejudgment interest.
SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel, and
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set forth elsewhere in this Complaint as though fully set forth in this cause of
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action.
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of Plaintiffs rights and is likely to cause confusion, mistake and deception among
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consumers and the public as to the source, origin, sponsorship, or quality of the
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goods of Defendant, thereby causing loss, damage and injury to Plaintiff and to the
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purchasing public. Defendants conduct was intended to cause such loss, damage
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and injury.
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Defendants intended to, did and will continue to induce customers to purchase its
false and counterfeit products by trading off the extensive goodwill built up by
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will permit them to make substantial sales and profits on the strength of Plaintiffs
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have been and will be deprived of substantial sales of their products in an amount
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as yet unknown but to be determined at trial, and have been and will be deprived of
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order granting Defendants profits stemming from its infringing activity, and their
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violation of its rights set forth above. Plaintiffs seek injunctive relief.
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or impose a constructive trust over all monies and assets in Defendants possession
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NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel, and DOES 1 through 10,
Inclusive)
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set forth elsewhere in this Complaint as though fully set forth in this cause of
action.
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Plaintiffs are the owners of the BMW Design Patents with the
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to infringe the BMW Design Patents by using, selling and/or offering to sell, in
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the United States and/or importing into the United States, wheels which embody
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Plaintiffs are informed and believe, and on that basis allege, that
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Design Patents.
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Plaintiffs have been and will be irreparably and permanently harmed; wherefore
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entitled to, among other things, an order enjoining and restraining Defendants from
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SALAHUDIN NUDIN NLN a/k/a Sal Din d/b/a Pioneer Tire and Wheel, and
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Patents.
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1114(a);
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7. For $2,000,000.00 per counterfeit mark per type of goods sold, offered
for sale, or distributed under 15 U.S.C. 1117(c).
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judgment;
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17200;
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12.For an order from the Court requiring that Defendants provide complete
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and return or pay their ill-gotten gains obtained from the illegal
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monies that should have been paid if Defendants complied with their
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13.For an order from the Court that an asset freeze or constructive trust be
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15. For treble damages suffered by Plaintiffs as a result of the willful and
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20.For such other and further relief as the Court may deem just and
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equitable.
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