Roblox Sues Network of China-Based Entities in Trademark Infringement Suit

The defendants created numerous internet stores designed to appear to be selling genuine Roblox products but instead sell “inferior imitations,” alleged the complaint. The defendants’ internet stores share “unique identifiers” including design elements and “similarities of the counterfeit products offered for sale, establishing a logical relationship between them,” suggesting that their "illegal operations arise out of the same transaction, occurrence, or series of transactions or occurrences,” it said.

Many of the defendants’ names and physical addresses used to register the online marketplace accounts “are incomplete, contain randomly typed letters, or fail to include cities or states,” said the complaint. Other online marketplace accounts “use privacy services that conceal the owners’ identity and contact information,” it said. The counterfeit products for sale in the defendants’ stores “bear similarities and indicia of being related to one another, suggesting that the counterfeit products were manufactured by a common source and that Defendants are interrelated,” it said.

The defendants “attempt to avoid liability by going to great lengths to conceal both their identities and the full scope and interworking of their illegal counterfeiting operation,” alleged the complaint. Roblox filed the action to combat the defendants’ counterfeiting of its trademarks “as well as to protect unknowing consumers from purchasing unauthorized products over the Internet,” it said.

Roblox has been and continues to be “irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable trademarks” as a result of the defendants’ actions, the complaint said. The company claims violation of trademarks covering the word marks Roblox, Bloxy and Powering Imagination, plus 13 Roblox copyrights.

Among the e-commerce platforms selling the defendants’ counterfeit Roblox products are iOffer, Amazon, DHgate, Alipay, Joom, Printerval, Redbubble and Qoo10, said the complaint. The defendants’ stores “include images and design elements that make it very difficult for consumers to distinguish such counterfeit sites from an authorized website,” said the complaint. Defendants “perpetuate the illusion of legitimacy by offering ‘live 24/7’ customer service and using 'indicia of authenticity'” that consumers associate with authorized retailers, such as logos from major credit card and internet security companies, it said.

The defendants deceive consumers by using Roblox trademarks without authorization within the context, text or meta tags of its websites “to attract various search engines looking for websites relevant to consumer searches” for Roblox products, the complaint said. They also use other unauthorized “search engine optimization (SEO) tactics and social media spamming” so that their e-commerce listings appear “at or near the top of relevant search results and misdirect consumers” looking for genuine Roblox products, it said. They also use illegitimate SEO methods to push new online marketplace accounts to the top of search results “after others are shut down,” the complaint alleged.

On information and belief, the defendants “are in constant communication with each other and regularly participate in QQ.com chat rooms and through websites such as sellerdefense.cn, kaidianyo.com and kuajingvs.com regarding tactics for operating multiple accounts, evading detection, pending litigation and potential new lawsuits,” the complaint alleged. Their use of Roblox trademarks in advertising and selling counterfeit products “is likely to cause and has caused confusion, mistake, and deception by and among consumers,” while “irreparably harming” Roblox, it said.

In addition to federal trademark and copyright infringement claims, Roblox claims violation of the Illinois Uniform Deceptive Trade Practices Act. The plaintiff seeks orders temporarily, preliminarily and permanently enjoining the defendants from using its trademarks and copyrights in connection with counterfeit Roblox products; committing acts designed to cause consumers to believe their counterfeit products are genuine; and owning online marketplace accounts used to sell counterfeit Roblox products.

It also seeks an order that at its request, any online marketplaces, such as Amazon; any social media platforms, such as Facebook and YouTube; and search engines, including Google and Bing, "disable and cease providing services for any accounts through which Defendants engage in the sale of counterfeit products.”

Roblox requests orders that the defendants must account for and pay to it all profits realized by their unlawful acts using the Roblox trademarks, or statutory damages under 15 U.S.C. Section 1117(c) of not less than $2,000, and not more than $2 million, for each use of its trademark; and that defendants pay all profits realized on the unlawful acts alleged provided under 17 U.S.C. Section 504(b), or, alternatively, that Roblox be awarded statutory damages under 17 U.S.C. Section 504(c) of not less than $200 and not more than $150,000 for each use of its copyrights.