Haru Holding Co v. Harusaki Inc. - trademark complaint EDNY.pdf

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF NEW YORK

-------------------------------------------------------------------- x HARU HOLDING CORP., a Delaware corporation, Plaintiff, -against- HARUSAKI INC., a New York corporation, ALVIN ZHENG, an individual, NEW HARU SAKI JAPANESE, INC., a New York Corporation, and XUE QING CHEN, an individual, Defendants. --------------------------------------------------------------------- x

Plaintiff, HARU HOLDING CORP., a Delaware corporation, by and through its

undersigned counsel, files this amended complaint against Defendants HARUSAKI INC., a

New York corporation, ALVIN ZHENG, an individual, NEW HARU SAKI JAPANESE, INC.,

a New York corporation, and XUE QING CHEN, an individual, and in support of its claims

alleges as follows:

THE PARTIES

1. Plaintiff Haru Holding Corp. (Plaintiff or HHC) is a Delaware corporation

with a business address of 8750 NW 36th Street, Suite 300, Doral, Florida 33178.

2. Upon information and belief, Defendant Harusaki Inc. (Harusaki) is an active

New York corporation with a business address of 282 Merrick Road, Rockville Centre, New

York 11570.

3. Defendant Alvin Zheng (Zheng) is an individual residing at 48-33 Colden

Street, Flushing, NY 11355.

4. Upon information and belief, Zheng is a shareholder and officer of Harusaki.

Civil Action No.: 14-cv-4365 (JS) (AKT) FIRST AMENDED COMPLAINT JURY TRIAL DEMANDED

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Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 1 of 21 PageID #: 200

5. Upon information and belief, Zheng is now, and has always been, the sole

shareholder and officer of Harusaki.

6. Upon information and belief, Zheng and Harusaki have done business under the

names HARUSAKI INC., HARUSAKI, HARUSAKI JAPANESE RESTAURANT, and

HARUSAKI.US.

7. Upon information and belief, Defendant New Haru Saki Japanese, Inc. (New

Haru) is an active New York corporation with a business address of 282-284 Merrick Road,

Rockville Centre, New York 11570. Upon information and belief, New Haru does business

under the names HARUSAKI, HARUSAKI JAPANESE FINE CUISINE & SUSHI BISTRO,

NEW HARU SAKI JAPANESE, INC., HARUSAKI BAR & GRILL, HARUSAKI JAPANESE

RESTAURANT, and HARUSAKISUSHI.COM.

8. Upon information and belief, Defendant Xue Qing Chen (Chen), is the Chief

Executive Officer of New Haru.

9. Upon information and belief, Chen is now, and has always been, the sole

shareholder and officer of New Haru. Harusaki, Zheng, New Haru and Chen may be

individually or collectively referred to as Defendants.

10. Upon information and belief, Defendants currently (and/or at a prior time) own,

operate, and/or promote, individually and/or collectively, at least one restaurant, located at 282

Merrick Road (sometimes addressed as 282-284 Merrick Road), Rockville Centre, New York

11570 (the Restaurant).

11. Upon information and belief, Defendants currently (and/or at a prior time), use the

trademarks, trade names and domain names, HARUSAKI INC., HARUSAKI, HARUSAKI

JAPANESE RESTAURANT, HARUSAKI JAPANESE FINE CUISINE & SUSHI BISTRO,

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NEW HARU SAKI JAPANESE, INC., HARUSAKI BAR & GRILL, HARUSAKI JAPANESE

RESTAURANT, HARUSAKI.US, and HARUSAKISUSHI.COM, to advertise and promote the

Restaurant, to advertise and promote restaurant and catering services, and to sell food

(individually and/or collectively the Infringing Marks).

STATEMENT OF CASE

12. This is a civil action seeking declaratory and injunctive relief, Defendants profits,

damages sustained by Plaintiff, treble damages, statutory damages, and costs of this action,

including, without limitation, attorneys fees, among other relief for: (i) infringement of federally

registered trademarks in violation of 32 of the Federal Trademark Act of 1946, also known as

the Lanham Act, codified at 15 U.S.C. 1114, et seq.; (ii) false designation of origin and unfair

competition in violation of 43(a) of the Lanham Act, codified as 15 U.S.C. 1125(a), et seq.;

(iii) cybersquatting under the Anti-Cybersquatting Consumer Protection Act, codified at 15

U.S.C. 1125(d)), et seq.; and (iv) trademark infringement in violation of N.Y.G.B.L. 360-K;

and (v) unfair competition and unfair trade practices in violation of common law.

13. Plaintiff brings this action due to Defendants continued and willful infringement

of Plaintiffs federally-registered HARU Trademarks (as later defined), and Defendants use of

trademarks, trade names, and domain names, consisting of the HARU Trademarks and/or

marks confusingly similar to the HARU Trademarks, and/or Defendants use directly and/or

indirectly in concert with others, of the HARU Trademarks and trademarks, trade names, and

domain names including the word HARU, in connection with the advertising and promotion of

competing restaurant services. Defendants use of the confusingly similar Infringing Marks are

likely to bring to mind of consumers, Plaintiffs distinctive HARU Trademarks, create

consumer confusion, and create a false association between Plaintiff and Defendants.

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14. As set forth below, Defendants acts constitute federal and state trademark

infringement, false designation of origin, false description, unfair competition, cybersquatting,

and injury to business reputation, all in violation of 15 U.S.C. 1114 and 1125(a) and (d) and

New York General Business Law 360-K, 360-L, and unfair competition and unfair trade

practices in violation of New York common law.

JURISDICTION AND VENUE

15. This action arises under the Lanham Act, 15 U.S.C. 1114, 1125(a), 1125(d),

and New York General Business Law 360-K, 360-L.

16. This Court has original federal question subject matter jurisdiction over this

action pursuant to 28 U.S.C. 1331 and 1338 and 15 U.S.C. 1121. This Court has

supplemental subject matter jurisdiction over Plaintiffs remaining state and common laws

claims under 28 U.S.C. 1367.

17. This Court has personal jurisdiction over Defendants because Defendants have

substantial contacts with, are incorporated in (as to Harusaki and New Haru), and transact

business in, the State of New York and in this District. Among other things, Defendants

maintain a place of business at 282 Merrick Road (and/or 282-284 Merrick Road), Rockville

Centre, New York 11570 and advertise and promote restaurant services for the Restaurant

located at 282 Merrick Road, Rockville Centre, NY 11570. Defendants purposefully avail

themselves of the benefits and protections of New York law by regularly conducting business in

this State and District. This Court also has personal jurisdiction over Defendants because

Defendants have committed willful acts in this State and District that are the subjects of the

claims set forth herein.

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18. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) because

each of the Defendants reside in this District, Defendants operate and do significant business in

this District, and because a substantial part of the events giving rise to the claims alleged herein

occurred in this District.

FACTS COMMON TO ALL COUNTS

THE INCONTESTABLE HARU TRADEMARKS

19. Plaintiff operates several high profile restaurants in New York and Boston which

prominently use and display one or more of the federally-registered and state-registered

HARU trademarks and other common law trademarks, domain names and corporate names

consisting of the HARU trademark (collectively, the HARU Trademarks).

20. Plaintiffs HARU restaurants serve traditional Japanese and inventive Japanese-

fusion cuisine in a trendy ambiance. Plaintiff also provides delivery and catering services,

private rooms and lounges, outdoor dining spaces and a vibrant bar scene.

21. Plaintiff has continuously and extensively used the HARU Trademarks in

interstate commerce since as early as 1999 in connection with its restaurant, catering, and related

services.

22. Plaintiffs goods/services have been highly publicized in connection with the

HARU Trademarks and by virtue of its promotion, advertising, and continuous use, Plaintiff

has acquired notoriety and a valuable reputation connected with the HARU brand.

23. Plaintiff is the owner of the following federal trademark registrations for its

HARU Trademarks (individually and collectively referred to as the HARU Registrations),

including, without limitation, the following:

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Trademark Registration No.

Goods/Services Incontestable

2,546,193 Restaurant services (Class 043). Yes

HARU

2,709,147 Restaurant services (Class 043). Yes

4,125,100 Restaurant, bar, and catering services (Class 043).

True and accurate copies of the above-referenced HARU Registrations are attached hereto as

Exhibit 1. Each of the HARU Registrations is valid, subsisting, and in full force and effect

and therefore, confers a nationwide right of exclusive use of the trademark in connection with the

goods/services applied for in the registrations pursuant to 15 U.S.C. 1057(c).

24. Two of the HARU Registrations are incontestable, including the word mark

HARU, and thereby constitute conclusive evidence of Plaintiffs ownership and its exclusive

right to use the marks in connection with restaurant services in accordance with 15 U.S.C.

1065. In addition, the registrations are proof of the inherent distinctiveness of the HARU

Trademarks.

25. Plaintiff is also the owner of the New York Trademark Registration No. S20853

for the mark HARU and Design, registered in connection with restaurant services in Class 042

(individually, the HARU New York Registration and collectively, as part of the HARU

Registrations). A true and correct copy of the New York Registration is attached as Exhibit 2.

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THE GOODWILL IN THE HARU TRADEMARKS

AND THE FINE REPUTATION OF PLAINTIFF

26. The HARU restaurants are popular among teppanyaki, Japanese fusion cuisine

and sushi enthusiasts alike and have received a great number of positive reviews on various

online websites like Yelp.com, Zagat.com, and Tripadvisor.com. Since opening the doors,

Plaintiff has continuously expended substantial resources to market, advertise, and promote its

HARU Trademarks in a variety of national media including without limitation, through print

and electronic media (e.g. harusushi.com, Facebook, and YouTube), television, and radio.

27. As a result of extensive advertising and promotion, the HARU Trademarks

have acquired enormous value and have become distinctive and well-known to the consuming

public and the trade as identifying and distinguishing Plaintiffs goods/services.

28. Due to the substantial success of Plaintiffs restaurants, the HARU Trademarks

have received extensive unsolicited publicity and media coverage. Over the past decade,

HARU restaurants have become premier dining establishments.

29. Plaintiffs registered and common law rights in its HARU Trademarks were

established long before any date of first use on which Defendants may rely.

HISTORY OF THE PARTIES

30. On April 7, 2014, Plaintiff, by and through undersigned counsel, sent

correspondence to Defendants Zheng and Harusaki advising them of Plaintiffs objection to

Defendants use of the HARU Trademarks in connection with their restaurant located at 282

Merrick Road, Rockville Centre, New York 11570.

31. Having received no response, Plaintiff, by and through undersigned counsel, sent

additional correspondence to Defendants Zheng and Harusaki on May 6, 2014.

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32. As of the initial filing of this action on July 18, 2014, Defendants Zheng and

Harusaki had not responded to Plaintiffs correspondence.

DEFENDANTS VIOLATIONS OF THE HARU TRADEMARKS

33. Upon information and belief, on April 20, 2007, New Haru was incorporated with

the New York Department of State, Division of Corporations.

34. Upon information and belief, Defendant Chen is the Chief Executive Officer of

New Haru.

35. Upon information and belief, on September 28, 2011, Defendant Zheng registered

the domain name HARUSAKI.US. Further, upon information and belief, Defendant Zheng

designed the webpages which have appeared and/or are currently appearing at the

HARUSAKI.US domain name which Zheng posted and made accessible to the public. The

webpages currently appearing at the HARUSAKI.US domain name promote the Restaurant and

advertise and promote Defendants restaurant services at 282 Merrick Road, Rockville Centre,

New York 11570.

36. On or about December 8, 2011, Defendants Zheng and Harusaki attempted to

secure a liquor license for the Restaurant located at 282-284 Merrick Road, Rockville Centre,

NY 11570.

37. On or about March 2013, Defendant New Haru began to use the domain name

HARUSAKISUSHI.COM to advertise and promote Defendants restaurant services located at

282 Merrick Road, Rockville Centre, New York 11570.

38. On or about November 2013, Defendant New Haru secured a liquor license from

the New York State Liquor Authority for the restaurant located at 282-284 Merrick Road,

Rockville Centre, New York 11570

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39. Defendants had knowledge of Plaintiffs superior rights to and interest in the

HARU Trademarks prior to purchasing and/or commencing use and/or registration of the

Infringing Marks. As a matter of law, Defendants were at least on constructive notice of

Plaintiffs HARU Trademarks due to the issuance by the United States Patent and Trademark

Office of the HARU Registrations prior to purchasing, and/or commencing their use and

registration of the Infringing Marks.

40. Defendants also received notice of Plaintiffs rights to the HARU Trademarks

through Plaintiffs correspondence with Defendants, but nonetheless have continued to use the

Infringing Marks or marks confusingly similar to Plaintiffs registered marks.

THE LIKELIHOOD OF CONFUSION BETWEEN THE HARU TRADEMARKS AND DEFENDANTS INFRINGING USES

41. Defendants use and registration of the confusingly similar Infringing Marks as

part of their trade names, trademarks, and domain names to identify competing restaurant, bar,

restaurant take-out, and related services creates confusion and deception as to the source or

origin of Defendants (and/or their affiliates or business partners) goods/services and through

this use, Defendants are unfairly trading on the valuable reputation and goodwill embodied in the

HARU Trademarks.

42. The sight, sound, and overall commercial impression conveyed by Defendants

Infringing Marks are confusingly similar to the HARU Trademarks.

43. The type of goods/services being offered by Defendants in connection with the

Infringing Marks are identical to the type of goods/services being offered by Plaintiff in

connection with the HARU Trademarks.

44. Defendants use of, and connection to the ownership of, and registration of a

domain name incorporating, the Infringing Marks are likely to cause consumers to mistakenly

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believe that Defendants (and/or their affiliates or business partners) goods/services are

approved, endorsed, sponsored by, or affiliated with Plaintiff, or that Plaintiff is a source of

Defendants (and/or their affiliates or business partners) goods/services, or that those

goods/services are in some other way associated with Plaintiff, all to Plaintiffs injury and harm.

45. Plaintiff has not granted any right, assignment or license to use its HARU

Trademarks to Defendants (and/or their affiliates or business partners) for any purpose

whatsoever.

46. Defendants conduct not only infringes Plaintiffs rights in and to the HARU

Trademarks; it trades upon Plaintiffs goodwill and reputation; dilutes the distinctiveness of the

HARU Trademarks; causes a likelihood of confusion; and unfairly competes with Plaintiff.

47. Defendants conduct has damaged, and continues to damage, Plaintiff. To the

extent that Defendants (and/or their affiliates or business partners) goods/services are offered

improperly in connection with the HARU Trademarks, and do not conform to Plaintiffs

quality standards, such non-conformity has injured or is likely to injure Plaintiffs reputation and

goodwill.

COUNT 1: INFRINGEMENT OF A REGISTERED TRADEMARK (15 U.S.C. 1114)

48. Plaintiff hereby repeats and incorporates the allegations contained in Paragraphs 1

through 47 as if fully set forth herein.

49. This claim is brought under 15 U.S.C. 1114.

50. Plaintiff has continuously and extensively used the HARU Trademarks since as

early as 1999 and has not abandoned the marks.

51. The HARU Registrations are valid and enforceable, and two of the

registrations, including the word mark for HARU, are incontestable.

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52. Plaintiffs use and registration of the HARU Trademarks in the United States

for restaurant services predates the use of the Infringing Marks by Defendants.

53. Defendants control, use, registration, and/or renewal of the Infringing Marks in

commerce, in connection with the sale, offering for sale, distribution, or advertising of

competing goods and/or services are likely to cause confusion, mistake, or deception with regard

to the origin of Defendants goods/services and to confuse, mislead, and deceive members of the

public into believing that Plaintiff has allowed, sponsored, approved, or licensed Defendants

(and/or their affiliates or business partners) to provide competing goods/services, or in some way

Defendants (and/or their affiliates or business partners) are connected to or affiliated with

Plaintiff, when Defendants are not.

54. Any such confusion would result in injury or have a direct impact on Plaintiffs

reputation and its ability to market its own goods/services under the HARU Trademarks.

Furthermore, any defect, objection, or fault found with Defendants (and/or their affiliates or

business partners) goods/services would negatively impact and seriously injure the reputation

Plaintiff has established for the goods/services it sells under the HARU Trademarks.

55. Upon information and belief, Defendants aforementioned infringing acts and

conduct were carried out willfully and with the intent and purpose of appropriating and trading

upon the goodwill and reputation of Plaintiff and the HARU Trademarks and to pass off

Defendants goods/services as Plaintiffs goods/services, or as having been sponsored or

approved by Plaintiff.

56. Defendants control, use, registration, and/or renewal of the Infringing Marks was

without Plaintiffs permission, license, or consent. Defendants are not connected with Plaintiff

or the HARU Trademarks.

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57. Plaintiff has objected to Defendants use, attempt to register, and/or registration of

the Infringing Marks and Defendants have intentionally ignored such demands and continue the

infringing conduct, intending to trade on the goodwill associated with the HARU trademarks.

58. Defendants acts constitute willful and deliberate infringement of the federally-

registered HARU Trademarks in violation of 15 U.S.C. 1114.

59. Defendants willful and callous misconduct makes this an exceptional case,

entitling Plaintiff to have any monetary remedies increased, up to three times such amount, and

to recover its attorneys fees under 15 U.S.C. 1117.

60. Plaintiff has been and will continue to be irreparably injured by Defendants

conduct. Plaintiff cannot be adequately compensated for these injuries by monetary remedies

alone, and Plaintiff has no adequate remedy at law for Defendants infringement of its rights.

Plaintiff is therefore entitled to injunctive relief against Defendants, and, after trial, to recover

any damages proven to have been caused, or any profits of Defendants that have been earned

unjustly, by reason of Defendants acts of infringement.

COUNT 2: FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION (15 U.S.C. 1125(a))



62. This claim is brought under 15 U.S.C. 1125(a).

63. The HARU Trademarks are valid and enforceable, and two of the federal

registrations, including the word mark for HARU, are incontestable.

64. Defendants unauthorized use of the HARU Trademarks in their trade names,

trademarks, corporate names, and domain names, in commerce, in connection with the sale,

offering for sale, distribution, or advertising of goods/services, unfairly competes with Plaintiff,

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constitutes a false designation of origin and false description, and falsely represents to the public

that the goods/services advertised, sold, or offered for sale by Defendants (and/or their affiliates

or business partners) emanate from the same source or origin as Plaintiffs goods/services, or that

Plaintiff authorizes, endorses, sponsors, or otherwise approves those goods/services, when

Plaintiff does not.

65. Defendants, with knowledge of such falsity, directly and/or indirectly, offered or

caused to be offered, advertised, and sold goods/services in connection with trademarks, trade

names, and domain names that are confusingly similar to the HARU Trademarks.

66. Defendants use, ownership and registration of the Infringing Marks are all


or the HARU Trademarks. Plaintiff has objected to Defendants use, ownership, and/or

registration of the Infringing Marks and Defendants have intentionally ignored such demands

and continue to use the Infringing Marks, intending to trade on the goodwill associated with the

HARU Trademarks.

67. Defendants acts constitute false designation of origin, false suggestion and false

connection with the HARU Trademarks and unfair competition in violation of 15 U.S.C.

1125(a).

68. Defendants willful and callous misconduct make this an exceptional case,

entitling Plaintiff to have any monetary remedies increased up to treble damages, and to recover

its attorneys fees under 15 U.S.C. 1117.




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unjustly, by reason of Defendants acts of infringement and unfair competition.

COUNT 3: VIOLATION OF THE ANTI-CYBERSQUATTING CONSUMER PROTECTION ACT

(15 U.S.C. 1125(d)) 70. Plaintiff hereby repeats incorporates the allegations contained in Paragraphs 1


71. This claim is brought under 15 U.S.C. 1125(d).

72. On information and belief, Defendants control, owns and/or maintains the

HARUSAKI.US domain name and HARUSAKISUSHI.COM (Domain Names), which are

confusingly similar to Plaintiffs distinctive HARU Trademarks, and are using the said

Domain Names with bad faith intent to profit from Plaintiffs distinctive the HARU

Trademarks.

73. Defendants use the Domain Names in connection with advertising and promoting

at least one restaurant located at 282 Merrick Road, Rockville Centre, New York 11570.

74. Defendants unauthorized use of the HARU Trademarks in their Infringing

Marks, including, without limitation, in the use of the Domain Names is likely to cause

confusion, mistake, or deception with regard to the origin of Defendants goods/services and to

confuse, mislead, and deceive members of the public into believing that Plaintiff has allowed,

sponsored, approved, or licensed Defendants to provide the same goods/services, or in some way

Defendants are connected to or affiliated with Plaintiff, when they are not.

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75. This is particularly true since the Domain Names consist of and/or incorporate the

HARU Trademarks and is nearly identical and confusingly similar to Plaintiffs HARU

Trademarks.

76. Defendants use and continue to use the HARUSAKI.US and

HARUSAKISUSHI.COM Domain Names in bad faith, long after Defendants had constructive

and actual notice of Plaintiffs federally registered HARU Trademarks. Defendants lack any

rights and do not have any legitimate interest in and to the Infringing Marks.

77. Defendants acts constitute cybersquatting in violation of 15 U.S.C. 1125(d).






unjustly, by reason of Defendants acts of infringement and cybersquatting.

79. By reason of the foregoing, Plaintiff is entitled to a transfer of the Domain Names

and to an award of statutory damages of $100,000 per Domain Name. Defendants willful

misconduct makes this an exceptional case, entitling Plaintiff to recover its attorneys fees

pursuant to 15 U.S.C. 1117.

COUNT 4: TRADEMARK INFRINGEMENT IN VIOLATION OF N.Y.G.B.L. 360-K AS TO HARU TRADEMARKS

80. Plaintiff hereby repeats incorporates the allegations contained in Paragraphs 1


81. Plaintiff has continuously and extensively used the HARU Trademarks since as

early as 1999 in the State of New York and has not abandoned the marks.

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82. Plaintiff owns New York Registration No. S20853 for the mark HARU in

connection with restaurant services in International Class 042.

83. Defendants are using, without Plaintiffs consent, a reproduction, counterfeit,

copy or colorable imitation of the HARU mark in connection with the sale, distribution,

offering for sale, or advertising of Defendants restaurant services and such use is likely to cause

confusion or mistake or to deceive as to the source of origin of such goods/services.

84. Defendants acts constitute trademark infringement in violation of N.Y. Gen. Bus.

Law 360-K.

85. By reason of Defendants acts alleged herein, Plaintiff has suffered and, unless

Defendants conduct is restrained, will continue to suffer serious and irreparable harm for which

there is no adequate remedy at law.

COUNT 5: INJURY TO BUSINESS REPUTATION (NEW YORK) N.Y.G.B.L. 360-L



87. Since as early as 1999, Plaintiff has continuously, extensively, and exclusively

used the HARU Trademarks in the State of New York to advertise, promote, and offer

restaurant, catering, takeout and related services.

88. As a result of Plaintiffs use, the HARU Trademarks have become well-known,

distinctive and famous --- particularly in the State of New York.

89. Defendants are using, without Plaintiffs consent, a reproduction, counterfeit,

copy or colorable imitation of the HARU mark in connection with the sale, distribution,

offering for sale, or advertising of Defendants restaurant services and such use is likely to cause

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injury to Plaintiffs business reputation and the goodwill embodied in the HARU Trademarks

and dilutes the distinctive quality of the marks.

90. Upon information and belief, Defendants conduct was done with the intent and

purpose of appropriating and trading upon the goodwill and reputation embodied in the HARU

Trademarks, and of passing off Defendants goods/services as those of Plaintiff.

91. The acts complained of have diluted, blurred and tarnished the strong and positive

association between Plaintiff and the HARU Trademarks by causing the HARU Trademarks

to be associated with goods/services not controlled, approved, or authorized by Plaintiff. Such

conduct is in violation of New York Gen. Bus. Law 360-L.

92. By reason of Defendants acts alleged herein, Plaintiff has suffered and, unless

Defendants conduct is restrained, will continue to suffer serious and irreparable harm for which

there is no adequate remedy at law.

COUNT 6: COMMON LAW UNFAIR COMPETITION AND UNFAIR TRADE PRACTICES



94. This is a claim for common law unfair competition and unfair trade practices

arising under the common law of the Commonwealth of New York.

95. Defendants unauthorized use of the HARU Trademarks in their trade names,

trademarks, corporate names, and/or domain names in commerce, in connection with the sale,

offering for sale, distribution, or advertising of goods or services, unfairly competes with

Plaintiff, constitutes a false designation of origin and false description, and falsely represents to

the public that the goods/services advertised, sold, or offered for sale by Defendants (and/or their

affiliates or business partners) emanate from the same source or origin as Plaintiffs

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goods/services, or that Plaintiff authorizes, endorses, sponsors, or otherwise approves those

goods/services, when Plaintiff does not.

96. Defendants, with knowledge of such falsity, directly and/or indirectly, offered or

caused to be offered, advertised, and sold goods/services in connection with trademarks, trade

names, and/or domain names that are confusingly similar to the HARU Trademarks.

97. Defendants use, ownership and registration of the Infringing Marks are all


or the HARU Trademarks. Plaintiff has objected to Defendants use, ownership, and/or

registration of the Infringing Marks and Defendants have intentionally ignored such demands

and continue to use the Infringing Marks, intending to trade on the goodwill associated with the

HARU Trademarks.

98. Defendants actions constitute common law unfair competition and unfair trade

practices in violation of the common law of New York.

DEMAND FOR JURY TRIAL

Plaintiff respectfully requests a trial by jury in this action of all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Haru Holding Corp. respectfully prays for the following relief

against Defendants:

(a) An order declaring that Defendants unauthorized conduct violates the Lanham Act, 15 U.S.C. 1114, 1125(a), and 1125(d), and New York common law;

(b) An order requiring Defendants to provide an inventory list of all domain names and all articles, materials and tangible things in Defendants possession, custody, or control, consisting of any of the HARU Trademarks, or colorable imitations thereof;

(c) An order declaring that Defendants unauthorized conduct violates New York Gen.

Bus. Law 360-K and 360-L;

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(d) An order permanently enjoining and restraining Defendants and those in active

concert and participation with Defendants from:

1. Further infringing and/or making any use of any of the HARU Trademarks, the word HARU, or any colorable imitation thereof, using or registering any trademark or domain name incorporating or confusingly similar to any of the HARU Trademarks, using, registering or renewing any trademark or domain name constituting or incorporating any of the Infringing Marks, any corresponding trademarks, and/or any domain name or trademark confusingly similar thereto to advertise, promote, display or sell any good/service;

2. Making any further use of the Infringing Marks or any domain name, trademarks, corporate names, trade names, or designations consisting of, in whole or in part, any of the HARU Trademarks, the term HARU, or any colorable imitation thereof, and/or any domain name, trademark, corporate name, trade name, or designation confusingly similar to the HARU Trademarks;

3. Registering, renewing, purchasing, and/or acquiring any trademarks, domain names, trade names, corporate names, and/or designations, consisting of, in whole or in part, any of the HARU Trademarks, the term HARU, or any colorable imitation thereof, or any domain name, trademark, corporate name, trade name, or designation confusingly similar thereto;

4. Representing or suggesting to any third party that Defendants are affiliated with, sponsored by, licensed by, or otherwise connected with Plaintiff and/or the HARU Trademarks; and

5. Otherwise unfairly competing with Plaintiff;

(e) An order compelling Defendants to transfer registration to Plaintiff of any and all rights it has in any of the Infringing Marks, including, without limitation, the HARUSAKI. US and HARUSAKISUSHI.COM domain names and/or any other trademarks, corporate names, trade names, and/or designations consisting of, in whole or in part, any of the HARU Trademarks, the term HARU, or any colorable imitation thereof, and/or any domain name, trademark, corporate name, trade name, or designation confusingly similar thereto;

(f) An order compelling Defendants to remove all signs, and to recall all copies of print or electronic media, press releases, promotions, or advertisements in Defendants control bearing the HARU Trademarks or colorable imitations thereof and/or the Infringing Marks, and all related goods/services and/or materials, articles or tangible things, pursuant to 15 U.S.C. 1118;

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(g) An order directing any other relief that the Court may deem appropriate to prevent the public from deriving any erroneous impression that any goods/services offered by Defendants are authorized by Plaintiff or are in any way related to Plaintiff, Plaintiffs goods/services, and/or the HARU Trademarks;

(h) An order directing an accounting and judgment be rendered against Defendants for:

1. Plaintiffs damages and Defendants profits from their infringement and

misuse of the HARU Trademarks as provided for in 15 U.S.C. 1117;

2. All profits received by Defendants and all damages sustained by Plaintiff on account of Defendants unfair competition and false designation of origin through the use of the HARU Trademarks under 15 U.S.C. 1117;

3. Damages to Plaintiff for Defendants wrongful conduct, including treble

damages for Defendants intentional and willful conduct pursuant to 15 U.S.C. 1117;

4. Plaintiffs damages and/or Defendants profits for unfair competition and/or

unfair trade practices under the common law, including punitive and exemplary damages;

5. Plaintiffs reasonable costs and attorneys fees incurred in connection with

this lawsuit, pursuant to 15 U.S.C. 1117;

6. Pre-judgment and post-judgment interest and costs by virtue of Defendants infringement of Plaintiffs HARU Trademarks, cybersquatting, unfair competition and/or unfair trade practices;

7. All available remedies available to Plaintiff pursuant to New York Gen Bus.

Law 360-M including, an award of profits, damages, impoundment, and reasonable attorneys fees; and

(i) Any other and further relief as this Court may deem just and proper.

Dated: November 25, 2014 BRAD M. BEHAR & ASSOCIATES, PLLC By: /s/ Janet C. Moreira____________

Brad M. Behar 94 Second Street Mineola, NY 11501-3008 Tel: 516.741.6500 Fax: 516.741.6510

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E-mail: [email protected] Janet C. Moreira MAVEN INTELLECTUAL PROPERTY 333 S.E. 2nd, Ave., Suite 2000 Miami, FL 33131 Tel: 305.967.7450 Fax: 305.967.7450 E-mail: [email protected] Attorneys for Plaintiff HARU HOLDING CORP.

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Haru Holding Co v. Harusaki Inc. - trademark complaint EDNY.pdf

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