It doesn't take a genius in trademark law to predict that if you name your cryptocurrency AlibabaCoin, Chinese e-commerce giant Alibaba Group will not be pleased.

But how exactly does a company that's based in China and incorporated in the Cayman Islands go after an upstart working out of the United Arab Emirates and Belarus—in a New York court?

The answer? Quinn Emanuel Urquhart & Sullivan partner Carey Ramos.

The New York-based litigator, who co-heads the firm's national media and entertainment practice, convinced U.S. District Judge J. Paul Oetken in Manhattan on Monday to issue a preliminary injunction against AlibabaCoin Foundation for trademark infringement.

It's a notable move by a U.S. court to protect the IP rights of a Chinese company, especially given the anonymity of the cryptocurrency sector. And indeed, Oetken was not easily persuaded.

In late April, he declined to enter a preliminary injunction because he wasn't convinced that the court had personal jurisdiction over AlibabaCoin.

But after introducing crucial new evidence that at least one New York resident bought AlibabaCoin—plus a vigorous oral argument on Oct. 5—Ramos won the judge over.

Still, AlibabaCoin counsel James Dabney of Hughes Hubbard Reed put up a good fight.

“We're talking about whether or not the court should today issue extraterritorial relief against U.A.E.-based and Belarus-based actors who are, on this record, acting lawfully in their own countries,” Dabney said, according to a transcript of the Oct. 5 proceedings.

In the U.A.E., AlibabaCoin has been granted trademark rights to its name (which tells you something about U.A.E. trademark laws), though Alibaba is currently contesting the registration.

“It seems to me that the record in this case shows overwhelmingly what the plaintiff is after is to sidestep the pending cancellation proceeding that they brought in the U.A.E., which is being contested, and is not within the court's jurisdiction, and to try to rely again and again and again on alleged procedural mechanisms to avoid the need to put in any real proof that this case actually involves either purposeful availment of United States law or privileges or circumstances that would make it reasonable,” Dabney said.

Ramos in the hearing hammered a few key points. He noted that while Alibaba may be based in China, it does business in the United States, with subsidiaries including a cloud computing company in California. Moreover, he reminded the court that the company “launched the largest IPO in world history in 2014 on the New York Stock Exchange.”

He also argued that consumers in New York are being confused by the sound-alike names, and that this is hurting Alibaba.

The New Yorker who bought AlibabaCoin spent about $100 on the cryptocurrency, but his investment is now worth about $4. “The value has plummeted,” Ramos said. “I can't imagine the people who bought these things are very happy that they paid over $100 and it's now worth $4. That's a bad deal by anybody's measure, but it's a bad deal that's associated with our client's name. They will forever remember I bought something called Alibaba coins, and I lost a ton of money.”

As for AlibabaCoin's New York connection, Ramos recounted how just that morning, he downloaded the AlibabaCoin app and wallet on his phone. “They've got U.S. flags on their website. They had a video with imagery from New York City, Times Square, and everything. They've got U.S. dollars,” he said. “I don't want to go back through all the evidence, but they were targeting, they were soliciting the world. They wanted to get buyers from anywhere, and they didn't ask them where they were from because they didn't want to know.”

The judge was convinced.

Oetken rejected Dabney's argument that the AlibabaCoin sales didn't occur in the United States because the transactions technically “consist of ledger entries made in Minsk, Belarus, following observation of changes in 'blockchain' data outside the United States.”

“I don't buy the argument from defendants,” the judge said at the hearing. “[I]f I book a hotel room, here in Manhattan, in Minsk, the Renaissance Minsk, how that could not be transacting business in New York?”

In his Oct. 22 written decision, Oetken wrote that “Alibaba has demonstrated a reasonable probability that defendants have transacted business in New York within the meaning of New York's long-arm statute.”

As for the U.A.E. trademark fight, Oetken didn't care. “[N]otwithstanding these foreign proceedings, there is nothing unreasonable about Alibaba's turning to a court in the United States to protect its United States trademarks, to enjoin defendants from committing infringing acts in the United States, and otherwise to seek relief under United States (and New York) law.”

Ramos in an emailed comment called the decision “a triple win—for consumers, brand owners and innovators. The only losers are those who wish to sow confusion.”

 

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