Case: 1:19-cv-04383 Document #: 1 Filed: 06/28/19 Page 1 of 14 PageID #:1

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

LVMH SWISS MANUFACTURES SA,

Case No. 19-cv-04383
Plaintiff,

v.

THE PARTNERSHIPS and

UNINCORPORATED ASSOCIATIONS
IDENTIFIED ON SCHEDULE “A,”

Defendants.

COMPLAINT

Plaintiff LVMH Swiss Manufactures SA (“Plaintiff” or “TAG Heuer”) hereby brings the

present action against the Partnerships and Unincorporated Associations identified on Schedule

A attached hereto (collectively, “Defendants”) and alleges as follows:

I. JURISDICTION AND VENUE

1. This Court has original subject matter jurisdiction over the claims in this action

pursuant to the provisions of the Patent Act, 35 U.S.C. § 1, et seq., 28 U.S.C. § 1338(a)-(b) and

28 U.S.C. § 1331. This Court has jurisdiction over the claims in this action that arise under the

laws of the State of Illinois pursuant to 28 U.S.C. § 1367(a), because the state law claims are so

related to the federal claims that they form part of the same case or controversy and derive from

a common nucleus of operative facts.

2. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may

properly exercise personal jurisdiction over Defendants since each of the Defendants directly

targets business activities toward consumers in the United States, including Illinois, through at

least the fully interactive, commercial Internet stores operating under the Online Marketplace
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Accounts identified in Schedule A attached hereto (collectively, the “Defendant Internet

Stores”). Specifically, Defendants are reaching out to do business with Illinois residents by

operating one or more commercial, interactive Defendant Internet Stores through which Illinois

residents can purchase products featuring TAG Heuer’s patented design. Each of the Defendants

has targeted sales from Illinois residents by operating online stores that offer shipping to the

United States, including Illinois, accept payment in U.S. dollars and, on information and belief,

has sold products featuring TAG Heuer’s patented design to residents of Illinois. Each of the

Defendants is committing tortious acts in Illinois, is engaging in interstate commerce, and has

wrongfully caused TAG Heuer substantial injury in the State of Illinois.

II. INTRODUCTION

3. TAG Heuer is a subsidiary of LVMH Moët Hennessy Louis Vuitton SA

(“LVMH”) and part of LVMH’s Watches & Jewelry Business Group. This action has been filed

by TAG Heuer to combat online infringers who trade upon TAG Heuer’s reputation and

goodwill by selling and/or offering for sale unauthorized and unlicensed products, namely the

watches shown in Exhibit 1, that infringe TAG Heuer’s patented design (the “Infringing

Products”). The Defendants create the Defendant Internet Stores by the dozens and design them

to appear to be selling genuine products, while actually selling Infringing Products to unknowing

consumers. The Defendant Internet Stores share unique identifiers, such as design elements and

similarities of the infringing products offered for sale, establishing a logical relationship between

them and suggesting that Defendants’ operation arises out of the same transaction, occurrence, or

series of transactions or occurrences. Defendants attempt to avoid liability by going to great

lengths to conceal both their identities and the full scope and interworking of their operation.

TAG Heuer is forced to file this action to combat Defendants’ infringement of its patented

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design, as well as to protect unknowing consumers from purchasing Infringing Products over the

Internet. TAG Heuer has been and continues to be irreparably damaged from the loss of its

lawful patent rights to exclude others from making, using, selling, offering for sale, and

importing its patented design as a result of Defendants’ actions and seeks injunctive and

monetary relief.

III. THE PARTIES

Plaintiff LVMH Swiss Manufactures SA

4. TAG Heuer is organized and existing under the laws of Switzerland with its

principal place of business in La Chaux de Fonds, Switzerland.

5. Since 1860, watchmaking pioneer TAG Heuer has been blending technological

innovations, high-precision timekeeping and cutting-edge designs to create products whose

performance continues to shape the passing of time. In 1887, TAG Heuer patented the famous

“oscillating pinion” for mechanical stopwatches, which is still used to this day by leading

manufacturers in production of mechanical chronographs. From then on, TAG Heuer has

continually been at the forefront of some of the most spectacular innovations in watchmaking

history: inventing the first stopwatch accurate to 1/100th of a second, the first water resistant

chronograph, the first chronograph movement with an automatic microrotor, among its numerous

other accomplishments.

6. TAG Heuer is engaged in the manufacture, sale and distribution of prestigious,

high-quality, luxury, mechanical and electronic watches, and other similar items sold throughout

the United States (collectively, the “TAG Heuer Products”). TAG Heuer Products have become

enormously popular and even iconic, driven by TAG Heuer’s arduous quality standards and

innovative designs. Indeed, TAG Heuer is the world’s 4th largest prestigious watch brand,

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having 1,600 employees around the world, 150 customer service centers, 5,200 collect points and

500 staff and master watchmasters worldwide, and whose products are sold in more than 4,300

boutiques. According to Vontobel Equity Research reports, TAG Heuer was ranked sixth of the

Top 20 of Swiss watch brands by watch sales in 2012 (report dated May 31, 2013), seventh in

2013 (report dated May 6, 2014), and eighth in 2014 (report dated April 10, 2015), ahead of

many other renowned watch brands.

7. Among the purchasing public, genuine TAG Heuer Products are instantly

recognizable as such. In the United States and around the world, the TAG Heuer brand has come

to symbolize high quality, and TAG Heuer Products are among the most recognizable of their

kind in the world. TAG Heuer Products have won several awards, and particularly, TAG Heuer

Products have won almost every year at the prestigious Grand Prix D’Horlogerie De Genéve

(Geneva Watchmaking Grand Prix). These awards are, notably, the following:

- Grand Prix D’Horlogerie De Genéve of 2002: “Design Watch Prize” for the

Micrograph F1, accurate to 1/10 of a second;

- Grand Prix D’Horlogerie De Genéve of 2004: “Design Watch Prize” for the

Monaco Sixty Nine watch;

- Grand Prix D’Horlogerie De Genéve of 2005: “Design Watch Prize” for the

Diamond Fiction watch;

- 2005: “Red Dot Design Award” for the Monaco V4 watch;

- Grand Prix D’Horlogerie De Genéve of 2006: “Sports Watch Prize” for the TAG

Heuer Carrera 360 pink gold watch;

- Grand Prix D’Horlogerie De Genéve of 2008: “Sports Watch Prize” for the TAG

Heuer Grand Carrera Calibre 36 RS Caliper chronograph;

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- Grand Prix D’Horlogerie De Genéve of 2010: “Prize for the Small Hand” for the

TAG Heuer Carrera Calibre 1887 watch;

- Grand Prix D’Horlogerie De Genéve of 2011: “Sports Chronograph Prize” for

the TAG Heuer Mikrotimer Flying 1000 watch;

- Grand Prix D’Horlogerie De Genéve of 2012: “Golden Hand Prize” for the

MikroGirder chronograph, accurate to 5/10,000 of a second.

8. The TAG Heuer website, tagheuer.com, provides visitors with a history of TAG

Heuer, details of TAG Heuer Products, and the means by which TAG Heuer Products may be

purchased around the world. This website receives approximately 2 million visitors per month.

9. TAG Heuer is also popular on social media platforms with over 3.2 million

Facebook fans, over 394,000 followers on Twitter, and more than 2 million followers on

Instagram.

10. For over 150 years, TAG Heuer has embraced motor sports by bringing together

state-of-the-art materials, movements, and avant-garde design to produce the most precise,

reliable and thrilling timepieces. TAG Heuer launched the TAG Heuer Carrera in 1963, the first

chronograph specifically designed for professional drivers. TAG Heuer was the first watch

brand to partner with racing drivers and the McLaren Formula One team, and is associated with

the most famous drivers and time changers of the racing world: Alain Prost, Ayrton Senna,

Mikka Häkkinen, Lewis Hamilton, and Jenson Button.

11. In addition to motor racing, TAG Heuer has partnered with six of the world’s

most iconic marathons, including the Chicago Marathon. TAG Heuer was the official

timekeeper of the 2015 Bank of America Chicago Marathon.

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12. TAG Heuer’s “Don’t Crack Under Pressure” advertising campaign is inspired by

TAG Heuer’s image, popularity, and “unbreakable determination.” The initial ads for this

campaign featured celebrities and athletes such as Cristiano Ronaldo, Maria Sharapova, Steve

McQueen, and Patrick Dempsey. The accompanying campaign film was awarded the 2014 Best

Watchmaking Campaign at the annual Swiss Watchmaking Advertising Campaign Awards,

recognized for its demonstration of the pioneering spirit, communication impact, and expression

of the brand identity through the tight links that TAG Heuer has nourished with sports since

1860. This campaign has also included Cara Delevingne, the British super model with over 11.3

million followers on social media, as an ambassador.

13. TAG Heuer Products are distributed and sold to consumers through a network of

carefully selected, authorized retailers that satisfy certain criteria, such as Jared, C.D. Peacock,

and high-quality department stores throughout the United States and Illinois such as Macy’s and

Bloomingdale’s. TAG Heuer guarantees the authenticity of, and provides a manufacturer’s

warranty for, merchandise purchased through authorized retailers of TAG Heuer Products, and

only though those retailers.

14. TAG Heuer Products are known for their distinctive patented designs. These

designs are broadly recognized by consumers. Watches embodying these designs are associated

with the quality and innovation that the public has come to expect from TAG Heuer Products.

TAG Heuer uses these designs in connection with its TAG Heuer Products, including, but not

limited to, the following patented design, herein referred to as the “TAG Heuer Design.”

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Patent Number Claim Issue Date

D601,909 October 13, 2009

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15. TAG Heuer is the lawful assignee of all right, title, and interest in and to the TAG

Heuer Design. The patent for the TAG Heuer Design was lawfully issued on October 13, 2009

with named inventor Christoph Behling. Attached hereto as Exhibit 2 is a true and correct copy

of the TAG Heuer Design.

16. TAG Heuer has not granted a license or any other form of permission to

Defendants with respect to the TAG Heuer Design.

The Defendants

17. Defendants are individuals and business entities who, upon information and

belief, reside in the People’s Republic of China or other foreign jurisdictions. Defendants

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conduct business throughout the United States, including within the State of Illinois and this

Judicial District, through the operation of the fully interactive, commercial online marketplaces

operating under the Defendant Internet Stores. Each Defendant targets the United States,

including Illinois, and has offered to sell, and, on information and belief, has sold and continues

to sell Infringing Products to consumers within the United States, including the State of Illinois.

18. On information and belief, Defendants are an interrelated group of infringers

working in active concert to knowingly and willfully make, use, offer for sale, sell, and/or import

into the United States for subsequent sale or use products that infringe directly and/or indirectly

the TAG Heuer Design in the same transaction, occurrence, or series of transactions or

occurrences. Tactics used by Defendants to conceal their identities and the full scope of their

operation make it virtually impossible for TAG Heuer to learn Defendants’ true identities and the

exact interworking of their network. In the event that Defendants provide additional credible

information regarding their identities, TAG Heuer will take appropriate steps to amend the

Complaint.

19. TAG Heuer has not licensed or authorized Defendants to use the TAG Heuer

Design, and none of the Defendants are authorized retailers of genuine TAG Heuer Products.

20. Defendants go to great lengths to conceal their identities and often use multiple

fictitious names and addresses to register and operate their network of Defendant Internet Stores.

On information and belief, Defendants regularly create new online marketplace accounts on

various platforms using the identities listed in Schedule A to the Complaint, as well as other

unknown fictitious names and addresses. Such Defendant Internet Store registration patterns are

one of many common tactics used by the Defendants to conceal their identities, the full scope

and interworking of their operation, and to avoid being shut down.

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21. Even though Defendants operate under multiple fictitious names, there are

numerous similarities among the Defendant Internet Stores. The Defendant Internet Stores

include notable common features, including accepted payment methods, check-out methods,

meta data, illegitimate SEO tactics, lack of contact information, identically or similarly priced

items and volume sales discounts, the same incorrect grammar and misspellings, similar hosting

services, and the use of the same text and images, including content copied from TAG Heuer’s

tagheuer.com website.

22. In addition to operating under multiple fictitious names, Defendants in this case

and defendants in other similar cases against online infringers use a variety of other common

tactics to evade enforcement efforts. For example, infringers like Defendants will often register

new online marketplace accounts under new aliases once they receive notice of a lawsuit.

Infringers also typically ship products in small quantities via international mail to minimize

detection by U.S. Customs and Border Protection.

23. Further, infringers such as Defendants typically operate multiple credit card

merchant accounts and PayPal accounts behind layers of payment gateways so that they can

continue operation in spite of TAG Heuer’s enforcement efforts. On information and belief,

Defendants maintain off-shore bank accounts and regularly move funds from their PayPal

accounts or other financial accounts to off-shore bank accounts outside the jurisdiction of this

Court. Indeed, analysis of PayPal transaction logs from previous similar cases indicates that off-

shore infringers regularly move funds from U.S.-based PayPal accounts to China-based bank

accounts outside the jurisdiction of this Court.

24. Defendants, without any authorization or license from TAG Heuer, have

knowingly and willfully made, used, offered for sale, sold, and/or imported into the United States

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for subsequent sale or use products that infringe directly and/or indirectly the TAG Heuer

Design, and continue to do so via the Defendant Internet Stores. Each Defendant Internet Store

offers shipping to the United States, including Illinois, and, on information and belief, each

Defendant has sold Infringing Products into the United States, including Illinois.

25. Defendants’ infringement of the TAG Heuer Design in the making, using,

offering to sell, selling, or importing of the Infringing Products was willful.

26. Defendants’ infringement of the TAG Heuer Design in connection with the

making, using, offering to sell, selling, or importing of the Infringing Products, including the

offering for sale and sale of Infringing Products into Illinois, is irreparably harming TAG Heuer.

COUNT I
INFRINGEMENT OF UNITED STATES DESIGN PATENT NO. D601,909
(35 U.S.C. § 271)

27. TAG Heuer hereby re-alleges and incorporates by reference the allegations set

forth in the preceding paragraphs.

28. Defendants make, use, offer for sale, sell, and/or import into the United States for

subsequent sale or use Infringing Products that infringe directly and/or indirectly the ornamental

design claimed in the TAG Heuer Design.

29. Defendants have infringed the TAG Heuer Design through the aforesaid acts and

will continue to do so unless enjoined by this Court. Defendants’ wrongful conduct has caused

TAG Heuer to suffer irreparable harm resulting from the loss of its lawful patent rights to

exclude others from making, using, selling, offering for sale, and importing the patented

inventions. TAG Heuer is entitled to injunctive relief pursuant to 35 U.S.C. § 283.

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30. TAG Heuer is entitled to recover damages adequate to compensate for the

infringement, including Defendants’ profits pursuant to 35 U.S.C. § 289. TAG Heuer is entitled

to recover any other damages as appropriate pursuant to 35 U.S.C. § 284.

PRAYER FOR RELIEF

WHEREFORE, TAG Heuer prays for judgment against Defendants as follows:

1) That Defendants, their affiliates, officers, agents, servants, employees, attorneys,

confederates, and all persons acting for, with, by, through, under or in active concert with

them be temporarily, preliminarily, and permanently enjoined and restrained from:

a. making, using, offering for sale, selling, and importing any products not authorized

by TAG Heuer and that include any reproduction, copy or colorable imitation of the

design claimed in the TAG Heuer Design;

b. aiding, abetting, contributing to, or otherwise assisting anyone in infringing upon the

TAG Heuer Design; and

c. effecting assignments or transfers, forming new entities or associations or utilizing

any other device for the purpose of circumventing or otherwise avoiding the

prohibitions set forth in subparagraphs (a) and (b), above.

2) Entry of an Order that, upon TAG Heuer’s request, those in privity with Defendants and

those with notice of the injunction, including, without limitation, any online marketplace

platforms such as iOffer, eBay, AliExpress, Alibaba, Amazon, Wish.com, and Dhgate, web

hosts, sponsored search engine or ad-word providers, credit cards, banks, merchant account

providers, third party processors and other payment processing service providers, Internet

search engines such as Google, Bing and Yahoo (collectively, the “Third Party Providers”)

shall:

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a. disable and cease providing services being used by Defendants, currently or in the

future, to engage in the sale of goods that infringe the TAG Heuer Design;

b. disable and cease displaying any advertisements used by or associated with

Defendants in connection with the sale of infringing goods using the TAG Heuer

Design; and

c. take all steps necessary to prevent links to the Defendant Internet Stores identified on

Schedule A from displaying in search results, including, but not limited to, removing

links to the Defendant Internet Stores from any search index;

3) That TAG Heuer be awarded such damages as it shall prove at trial against Defendants that

are adequate to compensate TAG Heuer for infringement of the TAG Heuer Design, and all

of the profits realized by Defendants, or others acting in concert or participation with

Defendants, from Defendants’ unauthorized use and infringement of the TAG Heuer Design;

4) That TAG Heuer be awarded from Defendants, as a result of Defendants’ use and

infringement of the TAG Heuer Design, three times TAG Heuer’s damages therefrom and

three times Defendants’ profits therefrom, after an accounting, pursuant to 35 USC § 284;

5) That TAG Heuer be awarded its reasonable attorneys’ fees and costs; and

6) Award any and all other relief that this Court deems just and proper.

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Dated this 28th day of June 2019. Respectfully submitted,

/s/ Justin R. Gaudio

Amy C. Ziegler
Justin R. Gaudio
Allyson M. Martin
Greer, Burns & Crain, Ltd.
300 South Wacker Drive, Suite 2500
Chicago, Illinois 60606
312.360.0080 / 312.360.9315 (facsimile)
aziegler@gbc.law
jgaudio@gbc.law
amartin@gbc.law

Counsel for Plaintiff LVMH Swiss Manufactures SA

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