Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 1 of 29 Page ID #:1

1 JOHNSON & PHAM, LLP

Christopher D. Johnson, SBN: 222698
2 E-mail: cjohnson@johnsonpham.com
Christopher Q. Pham, SBN: 206697
3 E-mail: cpham@johnsonpham.com
Marcus F. Chaney, SBN: 245227
4 E-mail: mchaney@johnsonpham.com
6355 Topanga Canyon Boulevard, Suite 326
5 Woodland Hills, California 91367
Telephone: (818) 888-7540
6 Facsimile: (818) 888-7544
7 Attorneys for Plaintiffs
BMW OF NORTH AMERICA, LLC and
8 BAYERISCHE MOTOREN WERKE AG
9
10 UNITED STATES DISTRICT COURT
11 CENTRAL DISTRICT OF CALIFORNIA
12 WESTERN DIVISION
13
BMW OF NORTH AMERICA, LLC, a Case No.: 2:21-cv-03061
14 Delaware limited liability company; and
BAYERISCHE MOTOREN WERKE COMPLAINT FOR DAMAGES
15 AG, a German corporation,
(1) FEDERAL TRADEMARK
16 Plaintiffs, INFRINGEMENT &
COUNTERFEITING [15 U.S.C. §
17 v. 1114/Lanham Act § 32(a)]
18 PHOENIX WHEEL & TIRE, LLC, an (2) FALSE DESIGNATION OF
Arizona limited liability company; ORIGIN/UNFAIR
19 ARAM YOUKHANA, an individual; COMPETITION [15 U.S.C. §
and DOES 1-10, inclusive, 1125(a)/Lanham Act § 43(a)]
20
Defendants. (3) TRADEMARK DILUTION [15
21 U.S.C. § 1125(c)]
22 (4) UNFAIR BUSINESS PRACTICES
[CALIFORNIA BUSINESS &
23 PROFESSIONS CODE § 17200]
24 (5) FEDERAL DESIGN PATENT
INFRINGEMENT [35 U.S.C. §
25 271]
26 [DEMAND FOR JURY TRIAL]
27
28

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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 2 of 29 Page ID #:2

1 Plaintiffs BMW of North America, LLC (“BMW NA”) and Bayerische

2 Motoren Werke AG (“BMW AG”) (collectively “BMW” or “Plaintiffs”) hereby
3 file their Complaint for Damages (“Complaint”) against Defendants Phoenix
4 Wheel & Tire, LLC (“PW&T”), Aram Youkhana (“YOUKHANA”), and Does 1-
5 10, inclusive (collectively “Defendants”).
6 PARTIES
7 1. Plaintiff BMW NA is a Delaware limited liability company registered
8 to conduct business in the State of California with its principal place of business
9 located in Woodcliff Lake, New Jersey. BMW NA is a wholly owned subsidiary
10 of BMW (US) Holding Corporation, a Delaware corporation, which is a wholly
11 owned subsidiary of BMW AG. BMW NA is the exclusive authorized distributor
12 of “BMW”, “BMW M” and “MINI” automotive and related products in the United
13 States.
14 2. Plaintiff BMW AG is a German corporation organized under the laws
15 of the Federal Republic of Germany with its principal place of business located in
16 Munich, Germany. BMW AG manufactures motor vehicles, emblems, wheels,
17 grilles, and other parts in Germany and other countries for export and sale
18 throughout the world.
19 3. Plaintiffs are informed and believe, and on that basis allege, that
20 Defendant PW&T is an Arizona limited liability company with a principal place of
21 business located in Mesa, Arizona.
22 4. Plaintiffs are informed and believe, and on that basis allege, that
23 Defendant PW&T did not and does not have sufficient funding to assume
24 responsibility for its actual and foreseeable liabilities.
25 5. Plaintiffs are informed and believe, and on that basis allege, that
26 Defendant PW&T is undercapitalized.
27 6. Plaintiffs are informed and believe, and on that basis allege, that
28 Defendant PW&T has failed to observe corporate formalities required by law.
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 3 of 29 Page ID #:3

1 7. Plaintiffs are informed and believe, and on that basis allege, that
2 Defendant PW&T is the alter ego of Defendant YOUKHANA.
3 8. Plaintiffs are informed and believe, and on that basis allege, that
4 Defendant YOUKHANA is an individual residing in Chandler, Arizona.
5 9. Plaintiffs are informed and believe, and on that basis allege, that
6 Defendant YOUKHANA is an owner, operator, member, officer and/or manager
7 of Defendant PW&T, and a moving force behind the actions of Defendant PW&T
8 complained of herein.
9 10. Plaintiffs are informed and believe, and on that basis allege, that
10 Defendants PW&T, YOUKHANA, and Does 1-10, inclusive, and each of them,
11 were the agents, partners, joint venturers, servants, and employees of every other
12 defendant and the acts of each defendant, as alleged herein, were performed within
13 the course and scope of that agency, partnership, joint venture, service or
14 employment.
15 11. Plaintiffs are informed and believe, and on that basis allege, that
16 Defendants PW&T, YOUKHANA, and Does 1-10, inclusive, sued herein by
17 fictitious names, are jointly, severally and concurrently liable and responsible with
18 one another upon the causes of action hereinafter set forth.
19 12. The true names and capacities, whether individual, corporate,
20 associate or otherwise, of defendants herein identified as Does 1-10, inclusive, are
21 unknown to Plaintiffs. Plaintiffs therefore sue said Doe defendants by such
22 fictitious names, and when the true names and capacities of said Doe defendants
23 are ascertained, Plaintiffs will seek to amend this pleading accordingly.
24 JURISDICTION / VENUE
25 13. This Court has subject matter jurisdiction over this action pursuant to
26 the Lanham Act, 15 U.S.C. § 1051, et seq., 28 U.S.C. §§ 1331 and/or 1338(a), and
27 supplemental jurisdiction over Plaintiffs’ state law claim pursuant to 28 U.S.C. §§
28 1367(a) and 1338(b).
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 4 of 29 Page ID #:4

1 14. This Court has specific personal jurisdiction over Defendants PW&T
2 and YOUKHANA inasmuch as they have committed the tortious activities of
3 trademark infringement and design patent infringement alleged in this Complaint
4 by purposefully directing their infringement activities to retailers/buyers in the
5 State of California. Defendants PW&T and YOUKHANA have sufficient
6 minimum contacts with California such that the exercise of jurisdiction over them
7 by this Court does not offend traditional notions of fair play and substantial justice.
8 15. In addition, Plaintiff BMW NA has significant contacts with the State
9 of California. For example, Plaintiff BMW NA’s Technology Office, Western
10 Region Office, Group Representative Office, Engineering and Emission Test
11 Center, and Training Center are all located in California. In addition, Plaintiff
12 BMW NA operates a Vehicle Distribution Center (one of four) and Parts
13 Distribution Centers (two of six) in California. Plaintiff BMW NA also has more
14 than fifty (50) dealerships throughout the State of California.
15 16. Venue is proper in this district, inter alia, pursuant to 28 U.S.C. §
16 1391(b) because, Plaintiffs are informed and believe, and on that basis allege, that
17 a substantial part of the events or omissions giving rise to these claims occurred
18 within this District, and has caused damage to Plaintiffs in this District.
19 GENERAL ALLEGATIONS
20 Plaintiffs and the Famous BMW Trademarks and Products
21 17. Plaintiffs are in the business of designing, manufacturing, and
22 distributing motor vehicles, motor vehicle parts and accessories, sold under various
23 trademarks, including but not limited to:
24 a. the “BMW” word mark, the BMW logo and BMW model
25 names, such as 3 SERIES, 5 SERIES, and 7 SERIES (collectively “BMW Marks”);
26 and
27 b. the M logo and M model names such as M2, M3, M4, M5, and
28 M6 (collectively “BMW M Marks”).
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 5 of 29 Page ID #:5

1 18. Plaintiffs’ products and marks have achieved great success since their
2 introduction in commerce in the United States continuously since as early as 1955
3 for the BMW brand and since as early as 1987 for the BMW M brand.
4 19. BMW also provides numerous services, such as maintenance and
5 repair services, financing, leasing, insurance and warranty services. BMW also
6 sells a wide variety of merchandise bearing the BMW and BMW M Marks,
7 including but not limited to apparel, mugs, bags, toys, pens and watches. BMW has
8 manufactured, marketed and sold millions of vehicles in the United States.
9 20. Plaintiffs have for decades utilized a network of authorized dealers in
10 the United States to market both new and certified pre-owned BMW and BMW M
11 vehicles, vehicle parts, accessories, and merchandise, and services such as rental,
12 financing, and maintenance services. BMW currently has more than 340 authorized
13 dealers in the United States.
14 21. Plaintiffs’ commercial success under the BMW and BMW M Marks
15 in the United States and around the world has been tremendous. Plaintiffs have sold
16 many billions of dollars of products and services under the BMW and BMW M
17 Marks in the United States over the years. Plaintiffs’ motor vehicles and related
18 motor vehicle parts and accessories have earned a reputation for innovation, quality
19 and performance and have won numerous awards in the industry in the United
20 States and around the world.
21 22. Plaintiffs have spent substantial time, money and effort in developing
22 consumer recognition and awareness of their marks and products. Plaintiffs spend
23 tens of millions of dollars every year in the United States to extensively advertise,
24 market, and promote products and services offered under the BMW and BMW M
25 Marks through a variety of media, including television and print advertisements,
26 the Internet, and high-profile sponsorships.
27 23. As a result of Plaintiffs’ efforts, the quality of Plaintiffs’ products, the
28 high degree of promotion and the quality and popularity of the Plaintiffs’ products,
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 6 of 29 Page ID #:6

1 the BMW and BMW M Marks have been prominently placed in the minds of the
2 public. Consumers, purchasers and the members of the public have become familiar
3 with Plaintiffs’ intellectual property and products, and have come to recognize the
4 BMW and BMW M Marks, and products and associate them exclusively with
5 Plaintiffs. Plaintiffs have acquired a valuable reputation and goodwill among the
6 public as a result of such association. Indeed, the Plaintiffs’ BMW Marks are
7 famous in the United States and around the world.
8 24. In use in the United States since 1955, the BMW Marks, in particular,
9 enjoy unquestionable fame as a result of long use, extensive advertising, massive
10 commercial success, substantial publicity, and favorable public acceptance and
11 recognition. Indeed, the BMW Marks have become among the most recognized
12 brands in the world, and have consistently been ranked in many top-100 lists for
13 years, including No. 22 in “100-top Most Powerful Brands” by Tenet Partners in
14 2017, No. 20 in “The World’s Most Valuable Brands” by Forbes in 2018, and No.
15 13 in “Best Global Brands” by Interbrand in 2018, among many others.
16 25. Furthermore, federal district courts have recognized that the BMW
17 Marks are famous. See BMW of N. Am., LLC v. Eurotech Wheels, LLC, No. 08 CV
18 0171 JM (WMC), 2008 WL 11337018, at *1 (S.D. Cal. July 25, 2008) (finding that
19 the BMW Word Mark and BMW Logo are both famous); BMW of N. Am., LLC v.
20 Quality Star Benzz LLC, No. 2:12-CV-00889-GMN, 2013 WL 1338233, at *1 (D.
21 Nev. Mar. 29, 2013) (“BMW NA has expended millions of dollars in advertising
22 across the United States in connection with its Marks [including the BMW Logo]
23 making them famous.”).
24 BMW AG’s Registered Trademarks
25 26. Although Plaintiffs have gained significant common law trademark
26 rights based on their use in commerce of the BMW and BMW M Marks,
27 advertising and promotion, Plaintiffs have also protected their valuable rights by
28 filing for and obtaining numerous federal trademark registrations.
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 7 of 29 Page ID #:7

1 27. Plaintiff BMW AG is the exclusive owner of numerous federally

2 registered and common law trademarks.
3 28. Plaintiff BMW AG owns United States Patent and Trademark Office
4 (“U.S.P.T.O.”) certificates of registrations for the following BMW and BMW M
5 Marks relevant to this action (collectively the “BMW Trademarks”).
6
7 Mark Reg. No. Goods and Services
Reg. Date (Summary)
8
BMW 0611710 Automobiles, motorcycles.
9
9-6-1955
10
BMW 2816178 Floor mats for vehicles in class 27;
11 02-24-2004 Various goods in classes 1, 2, 3, 4, 5, 6, 7,
8, 9, 11, 12, 16, 18, 20, 21, 22, 24, 25, and
12
28.
13
14 BMW 5333863 Metal badges and plates in class 06;
11-14-2017 Various land vehicle engine parts in class
15
07;
16 Lights for vehicles and other goods in class
11;
17
Land vehicles and various parts and
18 accessories for land vehicles, including
structural parts, side grills being vehicle
19
trim, badges, wheels, hubcaps, valve stem
20 caps and other goods in class 12;
Pens, pencils, notepads, notebooks, decals,
21
adhesive labels, and adhesive stickers, and
22 other goods; boxes, namely, stationery
23
boxes, cardboard boxes and paper boxes;
shopping bags made of paper or cardboard,
24 and containers, storage containers and
25
packaging containers made of paper or
cardboard; merchandise bags made of
26 paper or cardboard and other goods in class
27 16;
Floor mats for vehicles in class 27;
28 Toy products in class 28.
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 8 of 29 Page ID #:8

1 Mark Reg. No. Goods and Services

Reg. Date (Summary)
2
613465 Automobiles, motorcycles and parts
3
10-4-1955 thereof.
4
5
6
1450212 Apparatus for lighting for use in the
7 8-4-1987 automotive industry in class 11;
Land vehicles and parts thereof in class 12;
8
(Various other goods and services in
9 Classes 1, 2, 3, 4, 5, 6, 8, 9, 11, 12, 14, 16,
18, 20, 21, 24, 25, 26, 28, 34, 35, 36, 37,
10
39, and 41.)
11
12 5333865 Land vehicles and parts thereof in class 12;
11-14-2017 Floor mats for vehicles, rubber mats, and
13
carpeting for automobiles in class 27;
14 Various other goods and services in classes
6, 7, 11, 16, and 28.
15
16
4293991 Automobiles, motorcycles and sports
17 2-26-2013 utility vehicles and their parts namely
structural parts, engines, wheels,
18
transmissions, windshields, differentials,
19 fenders, drive belts, gears, axles, brakes
20
and braking systems, chassis, badges,
bumpers, vehicle seats, trunks, side
21 mirrors, rear view mirrors, steering wheels,
22
shock absorbers, safety belts, rims for
vehicle wheels, anti-theft devices for
23 vehicles (among other goods in Class 12).
24
25 5333900 Metal badges and plates in class 06;
11-14-2017 Various land vehicle engine parts in class
26 07;
27 Lights for vehicles and other goods in class
11;
28

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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 9 of 29 Page ID #:9

1 Mark Reg. No. Goods and Services

Reg. Date (Summary)
2
Land vehicles and various parts and
3
accessories for land vehicles, including
4 structural parts, side grills being vehicle
trim, badges, wheels, hubcaps, valve stem
5
caps and other goods in class 12;
6 Pens, pencils, notepads, notebooks, decals,
adhesive labels, and adhesive stickers, and
7
other goods; boxes, namely, stationery
8 boxes, cardboard boxes and paper boxes;
shopping bags made of paper or cardboard,
9
and containers, storage containers and
10 packaging containers made of paper or
cardboard; merchandise bags made of
11
paper or cardboard and other goods in class
12 16;
Floor mats for vehicles in class 27;
13
Toy products in class 28.
14
15 5333899 Metal badges and plates in class 06;
11-14-2017 Various land vehicle engine parts in class
16
07;
17 Lights for vehicles and other goods in class
18
11;
Land vehicles and various parts and
19 accessories for land vehicles, including
20 structural parts, side grills being vehicle
trim, badges, wheels, hubcaps, valve stem
21 caps and other goods in class 12;
22 Pens, pencils, notepads, notebooks, decals,
adhesive labels, and adhesive stickers, and
23 other goods; boxes, namely, stationery
24 boxes, cardboard boxes and paper boxes;
shopping bags made of paper or cardboard,
25 and containers, storage containers and
26 packaging containers made of paper or
cardboard; merchandise bags made of
27 paper or cardboard and other goods in class
28 16;

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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 10 of 29 Page ID #:10

1 Mark Reg. No. Goods and Services

Reg. Date (Summary)
2
Floor mats for vehicles in class 27;
3
Toy products in class 28.
4
5 1438545 Automobiles.
05-05-1987
6
7
2683597 Floor mats and trunk mats in class 27;
8 02-04-2003 Various other goods in class 12 and 25.
9
3526899 Automobiles and their structural parts;
10
11-4-2008 parts of automobiles, namely, engines,
11 wheels, steering wheels, door sills, gear
shift knobs, headrests, seats, tire valve stem
12
caps, license plate frames, car badges;
13 automotive body kits comprising external
structural parts of automobiles (class 12);
14
Various goods in classes 06, 14, 18, 25,
15 and 28.
16
3767662 Motor vehicles being land vehicles and
17
3-30-2010 their parts, namely, wheels, steering
18 wheels, door sills being strips of metal
affixed to the automobile sill, gear shift
19
knobs, headrests, seats, tire valve stem
20 caps, license plate frames, badges for
21
motor vehicles being trim; automotive
body kits comprising external structural
22 parts of automobiles; engines for motor
23
vehicles (class 12);
Jewelry, in particular key rings of precious
24 metal; horological and chronometric
25 instruments (class 14);
Adhesive paper badges and stickers of
26 paper or plastic; various other goods in
27 class 16;
Various other goods and services in classes
28 7, 18, 25, 28, 37 and 41.
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 11 of 29 Page ID #:11

1 Mark Reg. No. Goods and Services

Reg. Date (Summary)
2
3767663 Motor vehicles being land vehicles and
3
3-30-2010 their parts, namely, wheels, steering
4 wheels, door sills being strips of metal
affixed to the automobile sill, gear shift
5
knobs, headrests, seats, tire valve stem
6 caps, license plate frames, badges for
motor vehicles being trim; automotive
7
body kits comprising external structural
8 parts of automobiles; engines for motor
vehicles (class 12);
9
Jewellery, in particular key rings of
10 precious metal; horological and
chronometric instruments (class 14);
11
Adhesive paper badges and stickers of
12 paper or plastic; various other goods in
class 16;
13
Various other goods and services in classes
14 7, 18, 25, 28, 37 and 41.
15
5522663 Automobiles and their structural parts;
16
7-24-2018 bicycles; parts of automobiles, namely,
17 engines, wheels, steering wheels, door sills
18
being strips of metal affixed to the
automobile sill, gear shift knobs, headrests,
19 seat, tire valve steam caps, license plate
20 frames, car badges, namely, vehicle
identification badges and automobile hood
21 ornaments; automotive body kits
22 comprising external structural parts of
automobiles (class 12);
23 Floor mats in class 27;
24 Various other goods and services in classes
7, 9, 14, 16, 18, 25, 28, 35, 37 and 41.
25
26 M2 3988515 Automobiles and structural parts therefor
27 7-5-2011 in class 12.

28

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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 12 of 29 Page ID #:12

1 Mark Reg. No. Goods and Services

Reg. Date (Summary)
2
M3 2535373 Passenger motor vehicles and structural
3
2-5-2002 parts therefore in class 12.
4
5 M4 5425915 Automobiles in class 12.
3-20-2018
6
M5 2381292 Passenger motor vehicles and structural
7
8-29-2000 parts therefore in class 12.
8
9 M6 3265555 Motor vehicles and structural parts therefor
7-17-2007 in class 12;
10
Various other goods and services in classes
11 16 and 28.
12
13
29. The federal trademark registrations listed above are prima facie

14
evidence of BMW’s ownership and the validity of those registered trademarks.

15 Further, many of these registrations are incontestable, and thus constitute

16 conclusive evidence of BMW’s exclusive right to use those marks for the products

17 and/or services specified in those registrations pursuant to 15 U.S.C. §§1065 and

18 1115(b).

19 30. Plaintiff BMW AG owns the BMW Trademarks.

20 31. Plaintiff BMW AG has authorized and consented to Plaintiff BMW

21 NA’s use of the BMW Trademarks in the United States.

22 32. Plaintiffs have never authorized or consented to Defendants’ use of

23 the BMW Trademarks in commerce, or any confusingly similar marks by

24 Defendants.

25 BMW AG’s Registered Design Patents

26 33. Plaintiff BMW AG, as one of the foremost designers and

27 manufacturers of automobiles and automobile related products, is one of the largest

28 producers of automobile wheels in the world, and the exclusive owner of numerous

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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 13 of 29 Page ID #:13

1 federally registered design patents for wheels.

2 34. Plaintiff BMW AG owns valid and lawfully issued United States
3 Design Patents for wheels relevant to this action including wheel design patent nos.:
4 D551,149; D583,741; D593,022; D594,396; D615,018; D620,862; D621,770;
5 D630,564; D631,813; D635,078; D661,239; D671,473; D686,128; D686,132;
6 D697,008; D703,599; D721,316; D748,560; D754,051; D758,943; D788,676;
7 D792,315; D823,774; D842,206; D847,067; and D856,252 (collectively the
8 “BMW Design Patents”). True and correct copies of the BMW Design Patents are
9 collectively attached hereto and marked as Exhibit A.
10 Defendants’ Infringing Conduct
11 35. Beginning on a date that is unknown to Plaintiffs and continuing to
12 the present, Plaintiffs are informed and believe, and on that basis allege, that
13 Defendants have, without the consent of Plaintiffs, imported, offered for sale, sold
14 and distributed infringing replica BMW wheels to consumers that were publicly
15 displayed and sold using the BMW Trademarks in advertising, that bear counterfeit
16 BMW Trademarks and that embody the BMW Design Patents, that were not
17 manufactured by Plaintiffs or any manufacturer authorized by Plaintiffs.
18 36. Plaintiffs are informed and believe, and on that basis allege, that
19 Defendants use account(s) registered with eBay, Inc. to offer for sale replica BMW
20 wheels to consumers on eBay.com using BMW Trademarks in advertising and to
21 sell and distribute replica BMW wheels to consumers that bear counterfeit BMW
22 Trademarks on center caps and badges and embody BMW Design Patents.
23 37. Plaintiffs are informed and believe, and on that basis allege, that
24 Defendants operate on eBay.com under the seller IDs ““phoenixwheelandtire” and
25 “phoenixwheelandtire2”.
26 38. On or about July 30, 2018, Plaintiffs’ put Defendant YOUKHANA on
27 written notice of infringement stemming from his displaying, advertising,
28 marketing, offering for sale, selling, distributing, and/or otherwise making
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 14 of 29 Page ID #:14

1 available on eBay stores “phoenixwheelandtire” and “phoenixwheelandtire2”

2 numerous replica BMW wheels that copy the distinctive designs of BMW Design
3 Patents and bear BMW Trademarks.
4 39. Subsequently, Plaintiffs’ submitted takedown notices to eBay for all
5 infringing wheels that continued to be advertised for sale on eBay.com under seller
6 IDs “phoenixwheelandtire” and “phoenixwheelandtire2”.
7 40. Plaintiffs are informed and believe, and on that basis allege, that
8 despite prior notice Defendants have regularly and systematically advertised,
9 marketed, distributed and sold a presently unknown quantity of replica automobile
10 wheels embodying and comprised of BMW Design Patents, bearing counterfeit
11 BMW Trademarks and using BMW Trademarks in advertising.
12 41. On March 5, 2021, in their ongoing investigation of infringing uses of
13 BMW Trademarks and online advertisements and sales of products bearing
14 counterfeit BMW and BMW M Trademarks and embodying BMW Design Patents,
15 Plaintiffs investigator purchased a set of four “20” WHEELS RIMS FIT BMW 3-
16 4-5-6-7 M6 Sport M RIMS M3 437M PERFORMANCE BLACK MACH” (eBay
17 Item # 283839381730) from eBay seller ID “phoenixwheelandtire” for a cost of
18 $2,157.15 USD sent from a PayPal electronic account. The item location for these
19 wheels identified in the eBay.com listing was Sterling Heights, Michigan, United
20 States.
21 42. On or around March 17, 2021, Plaintiffs investigator received four
22 boxed wheels in the State of California, pursuant to the March 5, 2021 order from
23 eBay seller ID “phoenixwheelandtire,” with shipping labels identifying the
24 following sender:
25 ADAM
26 4806921600
27 PHOENIX WHEEL & TIRE
28 526 W BROADWAY
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 15 of 29 Page ID #:15

1 MESA AZ 85210
2 43. The boxes received from Defendants were shipped from Mesa,
3 Arizona to Canoga Park, California, and each box contained a wheel infringing
4 upon BMW design patent no. D758,943 with counterfeit BMW center caps and
5 BMW M badges infringing upon the BMW and BMW M trademarks.
6 44. Plaintiffs are informed and believe, and on that basis allege, that
7 through such business activities, Defendants have purposefully derived benefit
8 from their interstate commerce activities by expressly targeting foreseeable
9 purchasers in the State of California and throughout the United States.
10 45. Plaintiffs are informed and believe, and on that basis allege, that
11 Defendants violated and continue to violate Plaintiffs’ exclusive rights to the BMW
12 Trademarks and use images and marks that are identical to and/or confusing similar
13 to the BMW Trademarks to confuse consumers and aid in the promotion and sale
14 of infringing replica BMW wheel rims.
15 46. Plaintiffs are informed and believe, and on that basis allege, that
16 Defendants’ infringing uses of BMW Trademarks and BMW Design Patents in
17 commerce began long after Plaintiffs’ adoption and use of the BMW Trademarks
18 and BMW Design Patents, after Plaintiffs obtained the trademark and design patent
19 registrations alleged above, and after the BMW Trademarks became famous.
20 Neither Plaintiffs nor any of Plaintiffs’ authorized agents have consented to
21 Defendants’ use of Plaintiffs’ BMW Trademarks or BMW Design Patents.
22 47. Plaintiffs are informed and believe, and on that basis allege, that
23 despite prior notice from and eBay.com takedown efforts by Plaintiffs, Defendants
24 continue to violate Plaintiffs’ exclusive rights in and to the BMW Trademarks and
25 BMW Design Patents on eBay.com.
26 48. Plaintiffs are informed and believe, and on that basis allege, that
27 Defendants’ actions were committed intentionally, in bad faith and with the intent
28 to dilute Plaintiffs’ marks, and to cause confusion and mistake, and to deceive the
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COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 16 of 29 Page ID #:16

1 consuming public and the public at large as to the source, sponsorship and/or
2 affiliation of Defendants. Through their wrongful conduct, Defendants have
3 directly traded upon and diminished Plaintiffs’ goodwill.
4 49. In committing these acts, all of which have and will continue to cause
5 irreparable harm to Plaintiffs, Plaintiffs are informed and believe, and on that basis
6 allege, that Defendants have, among other things, willfully and in bad faith: (i)
7 infringed, tarnished, diluted Plaintiffs’ rights in the BMW Trademarks and BMW
8 Design Patents; (ii) used counterfeit BMW Trademarks; (iii) misled the public into
9 believing there is an association or connection between Defendants and Plaintiffs
10 and/or the products advertised and sold by Defendants and Plaintiffs; (iv) misled
11 the public into believing that Plaintiffs endorse Defendants products; (v) used false
12 designations of origin on or in connection with its goods and services; (vi) infringed
13 upon the BMW Design Patents; and (vii) profited unfairly from such activity.
14 Unless enjoined, Defendants will continue to cause irreparable harm to Plaintiffs.
15 FIRST CAUSE OF ACTION
16 (Infringement of Registered Trademarks & Counterfeiting by Defendants
17 PHOENIX WHEEL & TIRE, LLC, ARAM YOUKHANA, and DOES 1
18 through 10, Inclusive)
19 [15 U.S.C. § 1114/Lanham Act § 32(a)]
20 50. Plaintiffs hereby incorporate by reference each of the allegations set
21 forth in paragraphs 17 - 49 in this Complaint as though fully set forth in this cause
22 of action.
23 51. Plaintiffs have continuously used the BMW Trademarks in interstate
24 commerce.
25 52. Plaintiff BMW AG, as the exclusive owner of all right, title and
26 interest in and to the BMW Trademarks, and Plaintiff BMW NA as an authorized
27 licensee to use the BMW Trademarks in the United States with consent from
28 Plaintiff BMW AG, have standing to maintain an action for trademark infringement
- 16 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 17 of 29 Page ID #:17

1 under 15 U.S.C. §1114.

2 53. Defendants did not and failed to obtain the consent or authorization of
3 Plaintiffs as the registered owners of the BMW Trademarks to deal in and
4 commercially import, sell and/or distribute products bearing the BMW Trademarks
5 in commerce.
6 54. Plaintiffs are informed and believe, and on that basis allege, that
7 Defendants are and at the time of their actions complained of herein were actually
8 aware that Plaintiffs are the registered trademark holders of the BMW Trademarks.
9 55. Plaintiffs are informed and believe, and on that basis allege, that
10 Defendants intentionally and knowingly used in commerce reproductions,
11 counterfeits, copies and/or colorable imitations of Plaintiffs’ BMW Trademarks to
12 offer for sale, sell and distribute counterfeit goods bearing BMW Trademarks to
13 consumers online.
14 56. Plaintiffs are informed and believe, and on that basis allege, that
15 Defendants imported, transported, offered for sale, sold and distributed counterfeit
16 goods bearing Plaintiffs’ BMW Trademarks in commerce in connection with the
17 sale, offering for sale, distribution, and/or advertising of counterfeit goods bearing
18 Plaintiffs’ BMW Trademarks.
19 57. Plaintiffs are informed and believe, and on that basis allege, that
20 Defendants’ egregious and intentional importation, sale and/or distribution of
21 counterfeit goods bearing Plaintiffs’ BMW Trademarks is likely to cause
22 confusion, or to cause mistake, or to deceive, mislead, betray, and defraud
23 consumers who believe that Defendants’ items are authentic products
24 manufactured by Plaintiffs and/or authorized manufacturers.
25 58. Plaintiffs are informed and believe, and on that basis allege, that
26 Defendants’ acts have been committed with knowledge of Plaintiffs’ exclusive
27 rights and goodwill in the BMW Trademarks, as well as with bad faith and the
28 intent to cause confusion or to cause mistake and to deceive.
- 17 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 18 of 29 Page ID #:18

1 59. Plaintiffs are informed and believe, and on that basis allege, that
2 Plaintiffs have suffered and will continue to suffer substantial and irreparable
3 injury, loss and damage to their rights in and to the BMW Trademarks and the
4 goodwill associated therewith, for which it has no adequate remedy at law; thus,
5 Plaintiffs request injunctive relief.
6 60. Plaintiffs are informed and believe, and on that basis allege, that
7 Defendants’ continued knowing and willful importation, sale and distribution of
8 goods bearing Plaintiffs’ BMW Trademarks without Plaintiffs’ consent or
9 authorization constitutes intentional infringement of Plaintiffs’ federally registered
10 trademarks in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114. Based
11 on such conduct, Plaintiffs are entitled to injunctive relief as well as monetary
12 damages, and other remedies provided by section 1116, 1117, and 1118, including
13 Defendants’ profits, treble damages, reasonable attorneys’ fees, costs, statutory
14 damages and/or prejudgment interest.
15 SECOND CAUSE OF ACTION
16 (False Designation of Origin & Unfair Competition against Defendants
17 PHOENIX WHEEL & TIRE, LLC, ARAM YOUKHANA, and DOES 1
18 through 10, Inclusive)
19 [15 U.S.C. § 1125(a)/Lanham Act § 43(a)]
20 61. Plaintiffs hereby incorporate by reference each of the allegations set
21 forth in paragraphs 17 - 49 in this Complaint as though fully set forth in this cause
22 of action.
23 62. Plaintiffs, as the owners of all common law right, title, and interest in
24 and to the BMW Trademarks, have standing to maintain an action for false
25 designation of origin and unfair competition under Section 43(a) of the Lanham
26 Act (15 U.S.C. § 1125).
27 63. Plaintiffs’ BMW Trademarks are inherently distinctive and/or have
28 otherwise acquired distinctiveness.
- 18 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 19 of 29 Page ID #:19

1 64. Plaintiffs are informed and believe, and on that basis allege, that
2 Defendants have without authorization, on or in connection with its goods and
3 services, used in commerce marks that are confusingly similar to the asserted
4 marks, and/or have made false designations of origin which are likely to cause
5 confusion or cause mistake or to deceive as to the affiliation, connection or
6 association of Defendants with Plaintiffs, and/or as to the origin, sponsorship or
7 approval of Defendants’ goods or services or commercial activities.
8 65. Plaintiffs are informed and believe, and on that basis allege, that
9 Defendants’ conduct described above violates the Lanham Act, and Defendants
10 have unfairly competed with and injured and, unless immediately restrained, will
11 continue to injure Plaintiffs, causing damage to Plaintiffs in an amount to be
12 determined at trial, and will cause irreparable injury to Plaintiffs’ goodwill and
13 reputation associated with the value of Plaintiffs’ marks.
14 66. Plaintiffs are informed and believe, and on that basis allege, that the
15 conduct of Defendants has been knowing, deliberate, willful, intended to cause
16 confusion, or to cause mistake or to deceive and in blatant disregard of Plaintiffs’
17 rights.
18 67. Plaintiffs are informed and believe, and on that basis allege, that
19 Defendants knew, or by the exercise of reasonable care should have known, that
20 their adoption and commencement of use in commerce and continuing use of marks
21 that are confusingly similar to and constitute a counterfeit reproduction of
22 Plaintiffs’ BMW Trademarks would cause confusion, mistake, or deception among
23 purchasers, users and the public.
24 68. Plaintiffs are informed and believe, and on that basis allege, that
25 Defendants’ egregious and intentional use, sale and distribution of fake, pirated and
26 counterfeit automobile products bearing Plaintiffs’ BMW Trademarks unfairly
27 competes with Plaintiffs and is likely to cause confusion, mistake, or to deceive,
28 mislead, betray, and defraud consumers to believe that the substandard imitations
- 19 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 20 of 29 Page ID #:20

1 are genuine BMW products.

2 69. Plaintiffs are informed and believe, and on that basis allege, that
3 Defendants’ continuing and knowing use of BMW Trademarks constitutes false
4 designation of origin and unfair competition in violation of Section 43(a) of the
5 Lanham Act (15 U.S.C. § 1125(a)), causing Plaintiffs to suffer substantial and
6 irreparable injury for which it has no adequate remedy at law.
7 70. Plaintiffs are informed and believe, and on that basis allege, that
8 Defendants’ wrongful conduct has permitted or will permit it to make substantial
9 profits on the strength of Plaintiffs’ marketing, advertising, sales and consumer
10 recognition. As a direct and proximate result of Defendants’ wrongful conduct, as
11 alleged herein, Plaintiffs have been and will be deprived of sales of genuine BMW
12 products in an amount as yet unknown but to be determined at trial, and have been
13 deprived and will be deprived of the value of their marks as commercial assets in
14 an amount as yet unknown but to be determined at trial. Plaintiffs seek damages
15 and an accounting of Defendants’ profits, and requests that the Court grant
16 Plaintiffs three times that amount in the Court’s discretion.
17 71. Plaintiffs are informed and believe, and on that basis allege, that based
18 on Defendants’ wrongful conduct, Plaintiffs are entitled to injunctive relief as well
19 as monetary damages, and other remedies as provided by the Lanham Act,
20 including Defendants’ profits, treble damages, reasonable attorneys’ fees, costs and
21 prejudgment interest.
22 THIRD CAUSE OF ACTION
23 (Trademark Dilution against Defendants PHOENIX WHEEL & TIRE,
24 LLC, ARAM YOUKHANA, and DOES 1 through 10, Inclusive)
25 [15 U.S.C. § 1125(c)]
26 72. Plaintiffs hereby incorporate by reference each of the allegations set
27 forth in paragraphs 17 - 49 in this Complaint as though fully set forth in this cause
28 of action.
- 20 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 21 of 29 Page ID #:21

1 73. Plaintiffs’ BMW Trademarks are distinctive, and the BMW Marks are
2 famous within the meaning of the Lanham Act.
3 74. Plaintiffs are informed and believe, and on that basis allege, that
4 Defendants’ unlawful actions began long after Plaintiffs’ BMW Trademarks
5 became famous, and Defendants acted knowingly, deliberately and willfully with
6 the intent to trade on Plaintiffs’ reputation and to dilute Plaintiffs’ BMW
7 Trademarks. Defendants’ conduct is willful, wanton and egregious.
8 75. Plaintiffs are informed and believe, and on that basis allege, that
9 Defendants’ intentional importation, transportation, sale and/or distribution of fake,
10 pirated, and counterfeit items bearing Plaintiffs’ BMW Trademarks is likely to
11 cause confusion, mistake, or to deceive, mislead, betray, and defraud consumers to
12 believe that the substandard imitations are genuine BMW products. The actions of
13 Defendants complained of herein have diluted and will continue to dilute the BMW
14 Trademarks and other marks, and are likely to impair the distinctiveness, strength
15 and value of Plaintiffs’ BMW Trademarks, and injure the business reputation of
16 Plaintiffs and their marks.
17 76. Plaintiffs are informed and believe, and on that basis allege, that
18 Defendants’ acts have caused and will continue to cause Plaintiffs irreparable harm.
19 Plaintiffs have no adequate remedy at law to compensate it fully for the damages
20 that have been caused and which will continue to be caused by Defendants’
21 unlawful acts, unless they are enjoined by this Court.
22 77. As the acts alleged herein constitute a willful violation of section 43(c)
23 of the Lanham Act, 15 U.S.C. section 1125(c), Plaintiffs are informed and believe,
24 and on that basis allege, that they are entitled to injunctive relief as well as monetary
25 damages and other remedies provided by 15 U.S.C. §§ 1116, 1117, 1118, and
26 1125(c), including Defendants’ profits, actual and statutory damages, treble
27 damages, reasonable attorney’s fees, costs and prejudgment interest.
28 ///
- 21 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 22 of 29 Page ID #:22

1 FOURTH CAUSE OF ACTION

2 (Unlawful, Unfair, Fraudulent Business Practices against Defendants
3 PHOENIX WHEEL & TIRE, LLC, ARAM YOUKHANA, and DOES 1
4 through 10, Inclusive)
5 [California Business & Professions Code § 17200 et seq.]
6 78. Plaintiffs hereby incorporate by reference each of the allegations set
7 forth in paragraphs 17 - 49 in this Complaint as though fully set forth in this cause
8 of action.
9 79. Plaintiffs are informed and believe, and on that basis allege, that by
10 marketing, advertising, promoting, selling, importing, transporting, warehousing,
11 distributing, shipping and/or otherwise dealing in counterfeit BMW products,
12 Defendants have engaged in unfair competition including unlawful, unfair, and
13 fraudulent business practices in violation of the California Business and
14 Professions Code § 17200 et seq.
15 80. Plaintiffs are informed and believe, and on that basis allege, that
16 Defendants’ importation, transportation, sale, distribution, and other dealings in
17 counterfeit BMW products is in violation and derogation of Plaintiffs’ rights and is
18 likely to cause confusion, mistake, and deception among consumers and the public
19 as to the source, origin, sponsorship, or quality of the goods of Defendants, thereby
20 causing loss, damage and injury to Plaintiffs and to the purchasing public.
21 Defendants’ conduct was intended to cause such loss, damage and injury.
22 81. Plaintiffs are informed and believe, and on that basis allege, that
23 Defendants knew or by the exercise of reasonable care should have known that
24 their importation, transportation, marketing, advertising, promoting, selling, and
25 distribution of counterfeit BMW products would cause confusion mistake or
26 deception among purchasers, users and the public.
27 82. Plaintiffs are informed and believe, and on that basis allege, that by
28 importing, transporting, marketing, advertising, promoting, selling, distributing,
- 22 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 23 of 29 Page ID #:23

1 and/or otherwise dealing in products bearing counterfeit versions of Plaintiffs’

2 BMW Trademarks, Defendants intended to, did, and will continue to induce
3 customers to purchase counterfeit products by trading off the extensive goodwill
4 built up by Plaintiffs in the BMW Trademarks.
5 83. Plaintiffs are informed and believe, and on that basis allege, that the
6 conduct of Defendants has been knowing, deliberate, willful, intended to cause
7 confusion, or to cause mistake or to deceive, and in disregard of Plaintiffs’ rights.
8 84. Plaintiffs are informed and believe, and on that basis allege, that
9 Defendants’ wrongful conduct, as alleged above, has permitted and will permit
10 them to make substantial profits on the strength of Plaintiffs’ nationwide marketing,
11 advertising, sales and consumer recognition. As a direct and proximate result of
12 Defendants’ wrongful conduct, as alleged herein, Plaintiffs have been and will be
13 deprived of substantial sales of their products in an amount as yet unknown but to
14 be determined at trial, and have been and will be deprived of the value of the BMW
15 Trademarks as commercial assets, in an amount as yet unknown but to be
16 determined at trial. Plaintiffs seek restitution in this matter, including an order
17 granting Defendants’ profits stemming from their infringing activity, and their
18 actual and/or compensatory damages.
19 85. Plaintiffs are informed and believe, and on that basis allege, that
20 Plaintiffs have no adequate remedy at law for Defendants’ continuing violation of
21 its rights set forth above. Plaintiffs seek injunctive relief.
22 FIFTH CAUSE OF ACTION
23 (Federal Design Patent Infringement against Defendants PHOENIX
24 WHEEL & TIRE, LLC, ARAM YOUKHANA, and DOES 1 through 10,
25 Inclusive)
26 [35 U.S.C. § 271]
27 86. Plaintiffs hereby incorporate by reference each of the allegations set
28 forth in paragraphs 17 - 49 in this Complaint as though fully set forth in this cause
- 23 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 24 of 29 Page ID #:24

1 of action.
2 87. Plaintiffs are the owners of the BMW Design Patents with the USPTO
3 registration numbers: D551,149; D583,741; D593,022; D594,396; D615,018;
4 D620,862; D621,770; D630,564; D631,813; D635,078; D661,239; D671,473;
5 D686,128; D686,132; D697,008; D703,599; D721,316; D748,560; D754,051;
6 D758,943; D788,676; D792,315; D823,774; D842,206; D847,067; and D856,252.
7 88. Plaintiffs are informed and believe, and on that basis allege, that
8 Defendants have infringed and continue to infringe the BMW Design Patents by
9 using, selling and/or offering to sell, within the United States and/or importing into
10 the United States, wheels identified by eBay Item Numbers 283839381730
11 (infringing upon design patent D758,943), 164296298304 (infringing upon design
12 patent D788,676), 164191850448 (infringing upon design patent 842,206),
13 164296276603 (infringing upon design patent D823,774), 164145059909
14 (infringing upon design patent D631,813), 163942998710 (infringing upon design
15 patent D671,473), 163943089583 (infringing upon design patent D748,560),
16 164296413930 (infringing upon design patent D661,239), 163942912946
17 (infringing upon design patent D621,770), 163923342257 (infringing upon design
18 patent D686,128), 164110783555 (infringing upon design patent D686,128),
19 164156897015 (infringing upon design patent D703,599), 164133072029
20 (infringing upon design patent D615,018), 163784994345 (infringing upon design
21 patent D631,813), 163762295515 (infringing upon design patent D551,149),
22 164153125550 (infringing upon design patent D823,774), 164045592750
23 (infringing upon design patent D583,741), 163906689703 (infringing upon design
24 patent D758,943), 163762277233 (infringing upon design patent D594,396),
25 164157660620 (infringing upon design patent D615,018), 164136396435
26 (infringing upon design patent D792,315), 163943303211 (infringing upon design
27 patent D748,560), 163865711742 (infringing upon design patent D721,316),
28 164064369847 (infringing upon design patent D630,564), 164194694159
- 24 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 25 of 29 Page ID #:25

1 (infringing upon design patent D697,008), 164043747307 (infringing upon design

2 patent D661,239), 164136429539 (infringing upon design patent D748,560),
3 164043938378 (infringing upon design patent D758,943), 163989360657
4 (infringing upon design patent D792,315), 164296435319 (infringing upon design
5 patent D847,067), 163903455295 (infringing upon design patent D686,128),
6 164118684949 (infringing upon design patent D621,770), 164140874019
7 (infringing upon design patent D792,315), 283844229816 (infringing upon design
8 patent D703,599), 283825091167 (infringing upon design patent D593,022),
9 283854191382 (infringing upon design patent D758,943), 283865072204
10 (infringing upon design patent D697,008), 283660302503 (infringing upon design
11 patent D661,239), 283620349190 (infringing upon design patent D754,051),
12 283545305130 (infringing upon design patent D551,149), 283949260151
13 (infringing upon design patent D661,239), 283530995293 (infringing upon design
14 patent D686,132), 283754597229 (infringing upon design patent D594,396),
15 283516659297 (infringing upon design patent D615,018), 283669138098
16 (infringing upon design patent D621,770), 283754574379 (infringing upon design
17 patent D583,741), 283431279552 (infringing upon design patent D748,560),
18 283821919849 (infringing upon design patent D615,018), 283515862597
19 (infringing upon design patent D792,315), 283501545206 (infringing upon design
20 patent D792,315), 283659299398 (infringing upon design patent D758,943),
21 283928064863 (infringing upon design patent D630,564), 283949296364
22 (infringing upon design patent D823,774), 283660322698 (infringing upon design
23 patent D635,078), 283742646635 (infringing upon design patent D758,943),
24 283565691951 (infringing upon design patent D620,862), 283742657757
25 (infringing upon design patent D661,239), 283814104155 (infringing upon design
26 patent D748,560), 283794641012 (infringing upon design patent D842,206),
27 283666834067 (infringing upon design patent D823,774), 283659143058
28 (infringing upon design patent D630,564), 283666768234 (infringing upon design
- 25 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 26 of 29 Page ID #:26

1 patent D748,560), 283709373878 (infringing upon design patent D792,315),

2 283929153526 (infringing upon design patent D847,067), 283810816272
3 (infringing upon design patent D686,128), 283662433441 (infringing upon design
4 patent D758,943), 283949275896 (infringing upon design patent D788,676),
5 283666716075 (infringing upon design patent D748,560), 283665727965
6 (infringing upon design patent D842,206), 283880668416 (infringing upon design
7 patent D630,564), 283665762623 (infringing upon design patent D721,316),
8 283928046381 (infringing upon design patent D856,252), 283834408879
9 (infringing upon design patent D792,315), 283680304519 (infringing upon design
10 patent D697,008) and 283839435927 (infringing upon design patent D823,774)
11 which embody the design covered by the BMW Design Patents.
12 89. Plaintiffs are informed and believe, and on that basis allege, that
13 Defendants’ infringing wheels include all of the ornamental designs of the BMW
14 Design Patents. By their conduct, Defendants have violated 35 U.S.C. § 271 by
15 direct infringement of the BMW Design Patents and by inducing others to infringe
16 the BMW Design Patents.
17 90. Plaintiffs are informed and believe, and on that basis allege, that
18 Defendants have earned profits by virtue of their infringement of the BMW Design
19 Patents.
20 91. Plaintiffs are informed and believe, and on that basis allege, that as a
21 direct and legal result of Defendants’ wrongful conduct, Plaintiffs have been and
22 will be irreparably and permanently harmed; wherefore Plaintiffs are without an
23 adequate remedy at law. Accordingly, Plaintiffs are entitled to, among other things,
24 an order enjoining and restraining Defendants from further engaging in
25 infringement of the BMW Design Patents.
26 92. Plaintiffs are informed and believe, and on that basis allege, that
27 Defendants infringement of the BMW Design Patents is and has been willful.
28 Accordingly, Plaintiffs are entitled to monetary damages, in an amount to be proven
- 26 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 27 of 29 Page ID #:27

1 at trial, an award of treble damages, and their reasonable attorneys’ fees and costs.
2 PRAYER FOR RELIEF
3 WHEREFORE, Plaintiffs BMW of North America, LLC and Bayerische
4 Motoren Werke AG pray for judgment against Defendants Phoenix Wheel & Tire,
5 LLC, Aram Youkhana, and Does 1 through 10, inclusive, and each of them, as
6 follows:
7 A. For an award of Defendants’ profits and Plaintiffs’ damages in an
8 amount to be proven at trial for trademark infringement under 15 U.S.C. § 1114(a);
9 B. For an award of Defendants’ profits and Plaintiffs’ damages in an
10 amount to be proven at trial for false designation of origin and unfair competition
11 under 15 U.S.C. § 1125(a);
12 C. For treble damages suffered by Plaintiffs as a result of the willful and
13 intentional infringements and acts of counterfeiting engaged in by Defendants,
14 under 15 U.S.C. § 1117(b);
15 D. For $2,000,000.00 per counterfeit mark, per type of goods imported,
16 sold, offered for sale, and/or distributed under 15 U.S.C. § 1117(c);
17 E. For an award of Defendants’ profits and Plaintiffs’ damages in an
18 amount to be proven at trial for trademark dilution under 15 U.S.C. § 1125(c);
19 F. In the alternative to actual damages and Defendants’ profits for the
20 infringement and counterfeiting of Plaintiffs’ trademarks pursuant to the Lanham
21 Act, for statutory damages pursuant to 15 U.S.C. § 1117(c), which election
22 Plaintiffs will make prior to the rendering of final judgment;
23 G. For restitution in an amount to be proven at trial for unfair, fraudulent
24 and illegal business practices under California Business and Professions Code §
25 17200;
26 H. For an award of Plaintiffs’ damages and Defendants’ profits adequate
27 to compensate Plaintiffs for Defendants infringement of the BMW Design Patents,
28 and in no event less than a reasonable royalty for Defendants acts of infringement,
- 27 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 28 of 29 Page ID #:28

1 including all pre-judgment and post-judgment interest at the maximum rate

2 permitted by law;
3 I. For an award of all damages, including treble damages based on any
4 infringement found to have been willful pursuant to 35 U.S.C. § 284, together with
5 pre-judgment interest;
6 J. For an award of all Defendants profits pursuant to 35 U.S.C. § 289,
7 together with pre-judgment interest;
8 K. For temporary, preliminary and permanent injunctive relief from this
9 Court prohibiting Defendants from engaging or continuing to engage in the
10 unlawful, unfair, or fraudulent business acts or practices described herein,
11 including the advertising and/or dealing in any counterfeit product; the
12 unauthorized use of any mark or other intellectual property right of Plaintiffs; acts
13 of trademark infringement or dilution; false designation of origin; unfair
14 competition; and any other act in derogation of Plaintiffs’ rights;
15 L. For an order from the Court requiring that Defendants provide
16 complete accountings and for equitable relief, including that Defendants disgorge
17 and return or pay their ill-gotten gains obtained from the illegal transactions entered
18 into and or pay restitution, including the amount of monies that should have been
19 paid if Defendants’ complied with their legal obligations, or as equity requires;
20 M. For an order from the Court that an asset freeze or constructive trust
21 be imposed over all monies and profits in Defendants’ possession which rightfully
22 belong to Plaintiffs;
23 N. For destruction of the infringing/counterfeit articles in Defendants’
24 possession under 15 U.S.C. § 1118;
25 O. For damages in an amount to be proven at trial for unjust enrichment;
26 P. For an award of exemplary or punitive damages in an amount to be
27 determined by the Court;
28 Q. For Plaintiffs’ reasonable attorney’s fees;
- 28 -
COMPLAINT FOR DAMAGES
 Case 2:21-cv-03061 Document 1 Filed 04/08/21 Page 29 of 29 Page ID #:29

1 R. For all costs of suit; and

2 S. For such other and further relief as the Court may deem just and
3 equitable.
4
5 DATED: April 8, 2021 JOHNSON & PHAM, LLP
6
By: /s/ Marcus F. Chaney
7 Christopher D. Johnson, Esq.
8 Christopher Q. Pham, Esq.
Marcus F. Chaney, Esq.
9 Attorneys for Plaintiffs
10 BMW OF NORTH AMERICA, LLC and
BAYERISCHE MOTOREN WERKE AG
11
12
13
14
DEMAND FOR JURY TRIAL
15
Plaintiffs BMW of North America, LLC and Bayerische Motoren Werke AG
16
respectfully demand a trial by jury in this action pursuant Rule 38 of the Federal
17
Rules of Civil Procedure and Local Rule 38-1.
18
19
DATED: April 8, 2021 JOHNSON & PHAM, LLP
20
21 By: /s/ Marcus F. Chaney
Christopher D. Johnson, Esq.
22 Christopher Q. Pham, Esq.
23 Marcus F. Chaney, Esq.
Attorneys for Plaintiffs
24 BMW OF NORTH AMERICA, LLC and
25 BAYERISCHE MOTOREN WERKE AG
26
27
28

- 29 -
COMPLAINT FOR DAMAGES
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 1 of 27 Page ID #:30

Exhibit A
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 2 of 27 Page ID #:31
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 3 of 27 Page ID #:32
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 4 of 27 Page ID #:33
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 5 of 27 Page ID #:34
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 6 of 27 Page ID #:35
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 7 of 27 Page ID #:36
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 8 of 27 Page ID #:37
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 9 of 27 Page ID #:38
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 10 of 27 Page ID #:39
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 11 of 27 Page ID #:40
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 12 of 27 Page ID #:41
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 13 of 27 Page ID #:42
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 14 of 27 Page ID #:43
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 15 of 27 Page ID #:44
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 16 of 27 Page ID #:45
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 17 of 27 Page ID #:46
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 18 of 27 Page ID #:47
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 19 of 27 Page ID #:48
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 20 of 27 Page ID #:49
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 21 of 27 Page ID #:50
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 22 of 27 Page ID #:51
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 23 of 27 Page ID #:52
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 24 of 27 Page ID #:53
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 25 of 27 Page ID #:54
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 26 of 27 Page ID #:55
Case 2:21-cv-03061 Document 1-1 Filed 04/08/21 Page 27 of 27 Page ID #:56