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Case 1:12-cv-00696-WMS Document 1 Filed 07/24/12 Page 1 of 17
David R. Pfalzgraf, Jr., Esq.
Matthew D. Miller, Esq.
RUPP, BAASE, PFALZGRAF, CUNNINGHAM & COPPOLA LLC
1600 Liberty Building
Buffalo, New York 14202
Telephone: (716) 854-3400
miller@ruppbaase.com
pfalzgraf@ruppbaase.com
Neil B. Friedman, Esq.
BAKER and RANNELLS PA
575 Route 28, Suite 102
Raritan, New Jersey 07769
Telephone: (212) 481-7007
n.friedman@br-tmlaw.com
Attorneys for Plaintiff
______________________________________
: UNITED STATES DISTRICT COURT
DROWN CORP., : WESTERN DISTRICT OF NEW YORK
:
Plaintiff, : Civil Action No. 12-CV-696
:
v. : Hon. __________________
: United States District Judge
PLEASANT AVENUE ENTERPRISES LLC :
d/b/a SOUTHTOWNS WINE & LIQUOR, : COMPLAINT FOR INJUNCTIVE RELIEF
MARTIN V. BARRETT, JONAS C. RICCIO, : AND DEMAND FOR JURY TRIAL
EWINEANDLIQUOR.COM, and :
WINESALESONLINE.COM, :
:
Defendants. :
______________________________________ :
Plaintiff, Drown Corp. (hereinafter “Drown” or “Plaintiff”), through counsel, alleges on
knowledge as to its own acts and otherwise on information and belief as follows:
THE PARTIES
1. Plaintiff, Drown Corp., is a corporation organized and existing under the laws of
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the State of New York having a principal place of business located at 14 Stratford Ct., East
Amherst, County of Erie, State of New York. Drown is the owner of and licensor of the marks
and trade names at issue in this action.
2. Defendant Pleasant Avenue Enterprises LLC d/b/a “Southtowns Wine & Liquor”
is, upon information and belief, a limited liability company organized and existing under the
laws of the State of New York and having a principal place of business located at 4095 No.
Buffalo St., Orchard Park, County of Erie, State of New York (hereinafter, “Southtowns”).
3. Defendant Jonas C. Riccio (“Riccio”) is, upon information and belief, an owner,
member, officer and/or principal of Defendant Souththowns and resides at 7166 East Quaker
Road, Orchard Park, County of Erie, State of New York.
4. Defendant Martin V. Barrett (“Barrett”) is, upon information and belief, an
owner, member, officer and/or principal of Defendant Souththowns and resides at 51 Maryon
Drive, City of Buffalo, County of Erie, State of New York.
5. Defendant ewineandliquor.com, an Internet e-commerce retail wine and liquor
store with a listed address at 4124 North Buffalo St., Orchard Park, New York 14127, is, upon
information and belief, owned by Defendants Southtowns, Riccio and/or Barrett.
6. Defendant winesalesonline.com, an Internet e-commerce retail wine and liquor
store with a listed address at 4124 North Buffalo St., Orchard Park, New York 14127, is, upon
information and belief owned by Defendants Southtowns, Riccio and/or Barrett.
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7. Hereinafter, Southtowns, Riccio, Barrett, ewineandliquor.com,
winesalesonline.com are collectively referred to as the “Defendants.”
8. Upon information and belief, Riccio and Barrett, control the day-to-day activities
and operations of Southtowns, ewineandliquor.com, and winesalesonline.com including the
infringing activities referred to in this Complaint. Upon information and belief, Riccio and
Barrett are the owners, Managing Members, officers, directors, and/or principals of Southtowns,
ewineandliquor.com, and winesalesonline.com and have caused said defendants to commit the
acts complained of herein, and dominate and control the business activities of Southtowns,
ewineandliquor.com, and winesalesonline.com, and have personally participated in the wrongful
acts alleged herein, within this judicial district.
9. On information and belief, Defendants were at all relevant times acting to the
fullest extent recognized by law as the agent, employee or co-conspirator of each of the other
Defendants and that in committing the acts and omissions alleged herein and causing the damage
and injuries alleged, was acting within the scope of such agency, employment, conspiracy, joint
venture or partnership relationship. The Defendants have committed acts in furtherance of the
conspiracy, have given aid and encouragement to the conspirators and have ratified and adopted
the acts of their co-conspirators.
10. On information and belief, there exists, and at all times herein mentioned there
existed, a unity of interests and ownership between Defendants such that any individuality and
separateness between the Defendants never existed or has ceased to exist, and the Defendants are
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in each instance the alter ego of the other Defendants who control each entity. To adhere to the
fiction of the separate existence of the entities as separate and distinct from the Defendants
identified with them and owning and controlling them would permit an abuse of the corporate
and other entity privileges, would sanction fraud and would promote injustice.
11. Defendants (a) are doing business in the State of New York; (b) have transacted
business within the State of New York and this judicial district; and (c) have committed tortious
acts as alleged in this Complaint within the State of New York and this judicial district.
NATURE OF THE ACTION
12. This is an action for trademark infringement, false designation of origin,
trademark dilution, unfair competition, and false advertising in violation of the laws of the
United States and the State of New York. Plaintiff seeks an injunction, damages and related
relief.
JURISDICTION AND VENUE
13. The Court has jurisdiction over this matter pursuant to 15 U.S.C. § 1121 and
28 U.S.C. §§ 1331, 1338 and 1367, and pendant and related State law claims. Plaintiff’s claims
are predicated upon the Lanham Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq.,
and the statutory and common law of the State of New York.
14. The Defendants are subject to the personal jurisdiction of this Court because,
among other things, they are domiciled within the State of New York and within this judicial
district and a substantial part of the acts giving rise to this action occurred in the State of New
York.
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15. Venue is properly founded in this district pursuant to 28 U.S.C. § 1391(b)(2) and
§ 1391(c)(2).
PLAINTIFF’S PREMIER MARKS AND NAMES
16. Plaintiff is the owner of and licensor of a family of trademarks, service marks,
trade names, and domains containing the term PREMIER for use on and/or in association with
wine and spirits, gourmet foods, retail wine and liquor store services, and related goods and
services (hereinafter, “Plaintiff’s Goods and Services”).
17. Plaintiff is the owner of, amongst others, the following U.S. federal trademark
registrations:
MARK REG. NO. GOODS
PREMIER CENTER 1476311* Retail food and liquor store services
PREMIER 1735135* Wines, whiskey, vodka, gin and vermouth
PREMIER GROUP 3200489* Retail store, online retail store, …services pertaining to
and featuring food products, alcoholic beverages
PREMIER PLACE 2093427* Retail store services…pertaining to food products,
alcoholic beverages…
THE PREMIER CARD 3235897* Retail store, mail order…services featuring wine,
gourmet food and kitchenware.
PREMIER MOMENT 3643325 Advertising and publicity services…promoting wines
of others…retail store and on-line retail store services
featuring alcoholic beverages.
PREMIER PARTY PLACE 1082056* Gourmet food store services.
PREMIER 2062424* Coffee
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PREMIER 2199130* Large variety of food products
PREMIER GOURMET 3063262* Large variety of food products
PREMIER WINE FLIGHTS 4053722 Educational services, namely conducting seminars and
programs in the field of wine, wine and food pairing,
wineries, and viniculture; wine tastings
True and correct copies of the Plaintiff’s trademark registrations are attached hereto as
Exhibit A. All of the foregoing registrations are valid and subsisting and are in full force and
effect. The registrations identified with an asterisk are incontestable pursuant to
15 U.S.C. §1115(b).
18. Plaintiff is the owner of the following New York State trademark registrations:
MARK REG. NO. INTERNATIONAL CLASS
PREMIER S10141 035
PREMIER PLACE S14610 042
THE PREMIER CARD S14691 036
True and correct copies of the CT Corsearch abstracts along with the relevant Certificates
of Assignment of Servicemark are attached hereto as Exhibit B.
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19. Plaintiff is the owner of, amongst others, the following domains and their
associated websites: premierwines.com, premiergroup.net, premierwineandliquor.com, and
premierwine.com.
20. Plaintiff’s registered marks and common law rights in its PREMIER family of
marks and names are licensed by Plaintiff for use by, inter alia, the following independently
owned and operated wine and liquor stores in the Greater Buffalo area: Premier Wine & Spirits
of Amherst, New York, Premium Wine & Spirits of Williamsville, New York, and Prestige Wine
& Spirits of Orchard Park, New York. Each of the stores bare interior and exterior signage
prominently featuring Plaintiff’s PREMIER marks. Photographs of the outside entrance to each
store are set forth below:
Premier Wine & Spirits Premium Wine & Spirits Prestige Wine & Spirits
Amherst, N.Y. Williamsville, N.Y. Orchard Park, N.Y.
21. Plaintiff’s PREMIER associated wine and liquor stores are referred to in the trade,
are known throughout the Greater Buffalo area as, and are referred to by consumers alternatively
and colloquially as “Premier,” “Premier Wine,” “Premier Liquor,” “Premier Wine and Liquor,”
“Premier Wine and Spirits,” “Premier Center,” “Premier Place,” and “Premier Group.”
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22. Plaintiff’s PREMIER family of marks and names are also licensed by Plaintiff for
use on the following websites: premierwineandliquor.com, premierwine.com, premierwines.com,
and premiergroup.net.
23. Plaintiff’s PREMIER mark in the Greater Buffalo area has been in continuous,
open and notorious use for over 65 years.
24. The Premier Group is spearheaded by one of the most well known wine and
liquor store retailers in the country, namely, Burton Notarius. His Premier Liquor store in
Kenmore (now located in Amherst) was one of the largest wine and liquor stores in the nation.
Mr. Notarius has been presented awards, accolades, and honors for decades, including being
honored in Market Watch magazine as one of America’s 12 Leaders in wine and spirit retailing;
honored in Liquor Store Magazine for retail excellence; earning regional honors for years and
being named “Retailer of the Year” by The Wine Spectator; he has been the subject of special
articles in a number of magazines, including Beverage Dynamics and Beverage Retailer; he has
been on the Board of Directors of the New York Wine & Grape Foundation since 1991; and is
known ubiquitously in and throughout the New York State wine industry as a shaper and leader
of the industry.
25. All of the Plaintiff’s above referenced marks and names are hereinafter
collectively referred to as “Plaintiff’s PREMIER Marks and Names.”
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Case 1:12-cv-00696-WMS Document 1 Filed 07/24/12 Page 9 of 17
26. Plaintiff advertises and promotes Plaintiff’s PREMIER Goods and Services under
Plaintiff’s PREMIER Marks and Names throughout the Greater Buffalo area and well beyond.
DEFENDANTS’ WRONGFUL ACTIVITIES
FACTS COMMON TO ALL COUNTS AND ALL DEFENDANTS
27. Without the consent or approval of Plaintiff, Defendants have offered and
continue to offer for sale, and/or provide and continue to provide retail and on-line retail wine
and liquor store services (hereinafter, the “Offending Services”) in the Greater Buffalo area,
using the following copy in their advertising and promotional materials:
Village of Orchard Park’s Only
Premier Wine & Liquor Store
28. The Defendants use of “Premier Wine & Liquor Store” (hereinafter the
“Offending Mark”) constitutes use in commerce of counterfeits of and/or unauthorized
reproductions, copies, and/or colorable imitations of Plaintiff’s PREMIER Marks and Names.
29. Defendants are offering for sale and providing the Offending Services by using
the Offending Mark in advertisements and promotional materials directed to the same group of
ultimate consumers as Plaintiff offers its PREMIER Goods and Services under Plaintiff’s
PREMIER Marks and Names.
30. The Defendants’ use of the Offending Mark recently came to Plaintiff’s attention,
and a letter was sent on behalf of Plaintiff to Defendant Southtowns on June 26, 2012 demanding
that Defendant Southtowns immediately cease and desist from the use by Defendants of the
Offending Mark.
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Case 1:12-cv-00696-WMS Document 1 Filed 07/24/12 Page 10 of 17
31. Defendant responded to Plaintiff’s attorney via a phone call on July 2, 2012,
wherein Defendant (a) asserted that it did not and was not violating Plaintiff’s rights, (b) that
Defendants would continue using the phrase, “Premier Wine & Liquor Store” on coupons
advertising and promoting Defendants’ services through the end of August, 2012, (c) that
thereafter, Defendants would continue to use of the term “Premier” in another manner or
variation and that Plaintiff “could just send another cease and desist at that time,” and (d)
referring to Plaintiff’s principals in a vulgar manner.
32. Defendants have expressed and asserted an actual intent to continue willfully their
unauthorized use of the term “PREMIER” on and in conjunction with advertising and
promotional materials.
33. The aforementioned acts, Offending Services, and Offending Mark of Defendants
are likely to cause confusion and mistake among the trade and consumers that (a) Defendants’
retail and on-line retail wine and liquor store services originate with Plaintiff, and/or (b) there is
some affiliation, connection or association of Defendants with Plaintiff, and/or (c) the Offending
Services are being offered to consumers under license from or with the sponsorship and/or
approval of Plaintiff.
34. The aforementioned acts, Offending Services, and Offending Mark of Defendants
are willful and intentional, in that Defendants have actual knowledge and are on actual notice
that the Offending Services, Offending Mark, and Offending uses are confusingly similar to
Plaintiff’s PREMIER Marks and Names, and/or that Defendants have willfully ignored such fact,
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and that such acts have been done in a deliberate effort to cause confusion and mistake among
the consuming public as to the source, affiliation and/or sponsorship of Defendants’ services, and
to gain for Defendants the benefit of the significant goodwill associated with the Plaintiff’s
PREMIER Marks and Names.
FIRST CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Trademark Infringement – Federal)
35. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 34 hereof as if fully set forth herein.
36. The aforementioned acts of Defendants constitute trademark infringement in
violation of 15 U.S.C. § 1114 et seq.
37. Such conduct on the part of Defendants has caused and will continue to cause
irreparable injury to Plaintiff, for which Plaintiff has no adequate remedy at law.
SECOND CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Trademark Counterfeiting- Federal)
38. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 37 hereof as if fully set forth herein.
39. The aforementioned acts of Defendants constitute trademark counterfeiting in
violation of 15 U.S.C. §§ 1116(d) and 1117(b) and (c).
40. Such conduct on the part of Defendants has caused and will continue to cause
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irreparable injury to Plaintiff, for which Plaintiff has no adequate remedy at law.
THIRD CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(False Designation of Origin and False Advertising – Federal)
41. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 40 hereof as if fully set forth herein.
42. The aforementioned acts of Defendants constitute the use of a false designation of
origin and/or the making of false or misleading description of fact and/or the making of a false or
misleading representation of fact in violation of 15 U.S.C. § 1125(a).
43. The aforementioned acts of Defendants are likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plaintiff
and/or Plaintiff’s licensees, or as to the origin, sponsorship, or approval of Defendants’ retail and
on-line stores and services, or commercial activities by Plaintiff and/or Plaintiff’s licensees.
44. Such conduct on the part of Defendants has caused and will continue to cause
irreparable injury to Plaintiff, for which Plaintiff has no adequate remedy at law.
FOURTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Trademark Infringement - New York General Business Law §360-k et seq.)
45. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 44 hereof as if fully set forth herein.
46. Defendants have used and continue to use, without Plaintiff’s consent, a
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reproduction, counterfeit, copy, and/or colorable imitation of Plaintiff’s PREMIER Marks and
Names, including but not limited to Plaintiff’s New York registered trademarks, in connection
with the sale, offering for sale, and/or advertising and promotion in this State of Defendants’
retail and on-line retail wine and liquor store services which use is likely to cause confusion or
mistake or to deceive as to the source of origin of said services.
47. Defendants have engaged in and are engaging in the reproduction, counterfeiting,
copying and/or use of a colorable imitation of Plaintiff’s PREMIER Marks and Names, including
but not limited to Plaintiff’s New York registered trademarks, in advertisements and promotional
materials intended to be used upon or in connection with the sale or offering of sale of
Defendants’ retail and on-line retail wine and liquor store services.
48. The aforementioned acts of Defendants constitute trademark infringement in
violation of N.Y. General Business Law § 360-k, et seq.
49. Such conduct on the part of Defendants has caused and will continue to cause
irreparable injury to Plaintiff, for which Plaintiff has no adequate remedy at law.
FIFTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Trademark Dilution – New York General Business Law §360-l et seq.)
50. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 49 hereof as if fully set forth herein.
51. The aforementioned acts of Defendants are likely to cause injury to Plaintiff’s
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business reputation or dilution of the distinctive quality of Plaintiff’s PREMIER Marks and
Names and/or trade names, in violation of N.Y. General Business Law §360-l, et seq.
52. Such conduct on the part of Defendants has caused and will continue to cause
irreparable injury to Plaintiff, for which Plaintiff has no adequate remedy at law.
SIXTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Unfair Competition, Unfair Sales Practices and/or Deceptive Trade Practices)
53. Plaintiff repeats and realleges each and every allegation set forth in paragraphs 1
through 52 above as if fully set forth herein.
54. The acts and conduct of Defendants as set forth herein and above constitute false
and unfair competition, unfair sales practices, and/or deceptive trade practices in violation of the
common law of the State of New York.
55. Such conduct on the part of Defendants has injured and damaged the Plaintiff in
an amount to be determined at trial and has caused and will continue to cause irreparable injury
to the Plaintiff, for which the Plaintiff has no adequate remedy at law.
WHEREFORE, Plaintiff demands judgment as follows:
1. Preliminarily and permanently enjoining and restraining Defendants, their
subsidiaries, affiliates, divisions, officers, members, directors, principals, servants, employees,
successors and assigns, and all those in active concert or participation with them, from:
a. using any mark, trademark, service mark, trade name, LLC name,
corporate or other entity name, advertising slogan, or promotional material
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containing the term “PREMIER” alone or in combination with other
terms, symbols or the like on or in association with alcoholic beverages,
retail and/or on-line retail wine and/or liquor store and/or related services;
b. advertising or promoting Defendants’ wine and/or liquor store services
and related services under any term, mark, trademark, service mark, trade
name, LLC name, corporate or other entity name containing the term
“PREMIER” alone or in combination with other terms, symbols or the
like;
c. engaging in any other activity constituting unfair competition with
Plaintiff, or constituting an infringement of the Plaintiff’s PREMIER
Marks and Names or of Plaintiff’s rights in, or to its right to use or exploit
Plaintiff’s PREMIER Marks and Names, or constituting injury to the
reputation and the goodwill associated with Plaintiff’s PREMIER Marks
and Names;
d. making any statement or representation whatsoever, with respect to the
Offending Services and/or Offending Mark in issue, that falsely designates
the origin of the Offending Services and/or Offending Mark as those of
Plaintiff, or that is false or misleading with respect to Plaintiff; and
e. engaging in any other activity, including the effectuation of assignments
or transfers of its interests in unauthorized colorable imitations of the
Plaintiff’s PREMIER Marks and Names or the formation of other
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corporations, partnerships, associations or other entities or the utilization
of any other devices, for the purpose of circumventing, evading, avoiding
or otherwise violating the prohibitions set forth in subsections 1(a)
through 1(d) above; and
2. Directing that Defendants deliver up for destruction all products, labels,
tags, artwork, prints, signs, packages, dies, wrappers, receptacles, advertisements, and
promotional materials in its possession, custody or control bearing the term “PREMIER” and/or
any reproductions, copies or colorable imitations thereof; and
3. Directing such other relief as the Court may deem appropriate to prevent
the trade and public from deriving any erroneous impression that any product or service at issue
in this case that has been offered for sale, sold or otherwise circulated or promoted by
Defendants is authorized by Plaintiff or is related to or associated in any way with Plaintiff’s
products or services; and
4. Requiring Defendants to account and pay over to Plaintiff all profits realized
by Defendants by their wrongful acts and directing that such profits be trebled, since Defendants’
actions were willful; and
5. Awarding Plaintiff, at Plaintiff’s election, statutory damages pursuant to
15 U.S.C. §1117(c) in an amount to be determined at trial; and
6. Awarding Plaintiff its costs, reasonable attorneys, and investigatory fees and
expenses, together with prejudgment interest; and
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7. Awarding Plaintiff such other and further relief, legal or equitable, as the
Court deems just and proper.
DEMAND FOR JURY TRIAL
Plaintiff hereby demands trial by jury on all issues triable to a jury.
Dated: July 24, 2012
Buffalo, New York
RUPP, BAASE, PFALZGRAF,
CUNNINGHAM & COPPOLA LLC
By: s/ Matthew D. Miller, Esq.
David R. Pfalzgraf, Jr., Esq.
Matthew D. Miller, Esq.
1600 Liberty Building
Buffalo, New York 14202
(716) 854-3400
pfalzgraf@ruppbaase.com
miller@ruppbaase.com
BAKER and RANNELLS PA
By: s/ Neil B. Friedman, Esq.
Neil B. Friedman, Esq.
575 Route 28, Suite 102
Raritan, New Jersey 07769
(212) 481-7007
n.friedman@br-tmlaw.com
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