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4,256,301 | 9,435,945 | 2014-04-15 | United States District Court for the Western District of Michigan | Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC | Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC, 16 F. Supp. 3d 874 (2014) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_43 | because a plaintiff whose trademark has been violated potentially suffers economic harm as a result of the defendant’s actions, the injury occurs both in places where the plaintiff does business and in the state where its primary office is located. | Further, “ |
4,256,301 | 9,435,945 | 2014-04-15 | United States District Court for the Western District of Michigan | Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC | Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC, 16 F. Supp. 3d 874 (2014) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_0 | An inference arises that the third factor is satisfied if the first two requirements are met. | Expressly aimed at Michigan
As discussed above, Defendant was on notice that Plaintiff is located in Michigan and that if it used a mark that infringes Plaintiffs registered trademark, that the effect of the conduct would be felt in Michigan. Therefore, the Court concludes that Defendant expressly aimed its infringing conduct at Michigan.
(iii) Brunt of Injuries felt in Michigan
A plaintiff whose trademark rights have been violated feels the injury in the state in which its offices are located. Bird, 289 F.3d at 876. Because Plaintiff is located in Michigan, the effects of Defendant’s allegedly tortious conduct is felt in Michigan. Because Plaintiff has met all three prongs of the Colder effects test, the Court concludes that Defendant purposely availed itself of the privilege of acting in Michigan.
For the foregoing reasons, the Court concludes that Plaintiff has established a prima facie case of purposeful availment under the Due Process clause under both the Zippo sliding-scale of website interactivity and the Colder effects test.
2. Activity in Forum
The second Southern Machine factor is whether the cause of action arises from the defendant’s activities in the forum state. Southern Mach. Co., 401 F.2d at 381. As discussed above, trademark infringement is essentially a tort, the effect of which is felt in the state where Plaintiff is located. Therefore, to the extent that Defendant has allegedly violated Plaintiff’s federal trademarks, the cause of action arises in Michigan, where Plaintiff is located.
3. Reasonable exercise
The final Southern Machine factor is whether, based on the quality and quantity of contacts, exercise of personal jurisdiction over the defendant is reasonable. “ |
4,091,446 | 9,435,945 | 2011-02-28 | United States Court of Appeals for the Tenth Circuit | Shrader v. Biddinger | Shrader v. Biddinger, 633 F.3d 1235 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_20 | engaging in commerce with residents of the forum state is not in and of itself the kind of activity that approximates physical presence within the state’s borders. | ” Melea, Ltd. v. Jawer SA, 511 F.3d 1060, 1069 (10th Cir.2007) (quoting Lolavar v. de Santibanes, 430 F.3d 221, 229 (4th Cir.2005)). See generally Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556-57, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (holding conclusory allegation of conspiracy is insufficient, even when coupled with parallel conduct by defendants). Mr. Shrader has not done that.
2. General jurisdiction for operation of commercial web site
The question of general jurisdiction here is potentially more complicated when the Wave59 web site’s commercial activities are considered. These do not affect the analysis of specific jurisdiction, since only the contacts out of which Mr. Shrader’s tort claims arise are relevant in that respect. As the Fifth Circuit explained in analogous circumstances:
For specific jurisdiction we look only to the contact out of which the cause of action arises — in this case the maintenance of the internet bulletin board. Since this defamation action does not arise out of the solicitation of [business]..., those [commercial] portions of the website need not be considered.
Revell, 317 F.3d at 472 (footnote omitted).
It should be emphasized that, as we are dealing with general jurisdiction, the commercial contacts here must be of a sort “that approximate physical presence” in the state — and “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_47 | need only make a prima facie showing of jurisdiction. | ” Viches v. MLT, Inc., 127 F.Supp.2d 828, 830 (E.D.Mich.2000) (Gadola, J.). In this case, because the Court has not conducted an evi-dentiary hearing, the Plaintiff “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_32 | the defendant must purposefully avail himself of the privilege of acting in the forum state or causing a consequence in the forum state; | ” The Sixth Circuit has established a three-part test for determining whether a court may-exercise limited jurisdiction over a defendant:
(1) “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_55 | the cause of action must arise from the defendant’s activities there; | The Sixth Circuit has established a three-part test for determining whether a court may-exercise limited jurisdiction over a defendant:
(1) “the defendant must purposefully avail himself of the privilege of acting in the forum state or causing a consequence in the forum state;” (2) “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_22 | the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum state to make the exercise of jurisdiction over the defendant reasonable. | The Sixth Circuit has established a three-part test for determining whether a court may-exercise limited jurisdiction over a defendant:
(1) “the defendant must purposefully avail himself of the privilege of acting in the forum state or causing a consequence in the forum state;” (2) “the cause of action must arise from the defendant’s activities there;” and (3) “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_36 | the operation of an internet website can constitute the purposeful availment of the privilege of acting in a forum state if the website is interactive to a degree that reveals specifically intended interaction with residents of the state. | ”
Youn, 324 F.3d at 418 (citing Southern Machine Co. v. Mohasco Industries, Inc., 401 F.2d 374, 381 (6th Cir.1968)). The Court will now examine these three elements in turn.
a. The Sixth Circuit has held that “ |
8,452,891 | 9,435,945 | 2006-09-13 | United States District Court for the Eastern District of Michigan | Domino’s Pizza PMC v. Caribbean Rhino, Inc. | Domino’s Pizza PMC v. Caribbean Rhino, Inc., 453 F. Supp. 2d 998 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_22 | a substantial connection to the claim. | Many of the participating franchise locations and the sales of the pizza cards in Michigan were, more specifically, within the Eastern District of Michigan. PL Resp., Ex A, G. Consequently, because these actions constitute a substantial part of the events giving rise to the Plaintiffs claim, venue in the Eastern District of Michigan is proper with respect to Defendant Martineau. See 28 U.S.C. § 1391(b)(2).
Turning to consider Defendants Caribbean Rhino and Buy for Charity, many of the actions that Martineau undertook with respect to setting up the business were done on behalf of Caribbean Rhino. PI. Resp., Ex C, nos. 1-3, 5-7, 9, 11, 13-14, 19-26. (Actions taken by Martineau on behalf of Caribbean Rhino include, but are not limited to creating agreements with the Domino’s franchisees, establishing the interactive websites, and the selling of the pizza cards.). The sum of Caribbean Rhino’s business assets was then sold by Mar-tineau to Buy for Charity. See PI. Resp., Ex B, Tr. of Martineau, pp. 60-61. Buy for Charity then continued the relationships with more than fifty Domino’s franchise locations within the Eastern District of Michigan, See PI. Resp., Ex. G, and continued to operate the websites that advertised and sold the allegedly infringing Domino’s pizza cards. These actions, taken by the Defendants Caribbean Rhino and Buy for Charity, are the events that allegedly caused confusion about the Domino’s pizza card product and eventually gave rise to this cause of action. See IA, Inc., 983 F.Supp. at 699-700. Consequently, the Court finds that the Eastern District of Michigan is a proper venue for this suit with respect to Defendants Caribbean Rhino and Buy for Charity. Plaintiff has sufficiently demonstrated that the district chosen for this course of action has “ |
2,920,171 | 9,435,945 | 2007-09-27 | United States Court of Appeals for the Sixth Circuit | Air Products & Controls, Inc. v. Safetech International, Inc. | Air Products & Controls, Inc. v. Safetech International, Inc., 503 F.3d 544 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_32 | the privilege of acting in the forum state or causing a consequence in the forum state. | ” S. Mach., 401 F.2d at 381-82.
B. Discussion
In this case, the district court concluded that two Michigan long-arm statutes (one that applies to individuals and one that applies to corporations) authorized the exercise of jurisdiction over Defendants, but that the exercise of jurisdiction in this case would run afoul of the limits of constitutional due process. Specifically, the district court found that Defendants had purposefully availed themselves of the privilege of acting in the forum state or causing a consequence in that state, but determined that Air Products’ causes of action did not “arise from” those activities and, thus, that exercise of jurisdiction in this case would not be reasonable.
Because we agree with the district court that Michigan law authorizes the exercise of jurisdiction over Defendants, we do not address that aspect of the district court’s decision. We focus only on the due process requirements for the exercise of specific jurisdiction over Defendants, analyzing the three prongs of the Southern Machine test. Although the district court correctly concluded that the first prong of that test — purposeful availment — was satisfied here, we augment the district court’s analysis in certain respects because that prong is arguably the most important, and because it colors our discussion of the other prongs of the test. Purposeful Availment
As indicated above, in order to exercise specific personal jurisdiction over an out-of-state defendant, that defendant must have purposefully availed himself of “ |
2,920,171 | 9,435,945 | 2007-09-27 | United States Court of Appeals for the Sixth Circuit | Air Products & Controls, Inc. v. Safetech International, Inc. | Air Products & Controls, Inc. v. Safetech International, Inc., 503 F.3d 544 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_22 | the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum state to make the exercise of jurisdiction over the defendant reasonable. | In addition, to the extent that Defendants’ asset transfer was an act directed at Air Products and done with an intent to injure Air Products, such that Defendants’ contacts are “enhanced,” the causes of action in this case are directly related to that act. Accordingly, the present action arises both from Defendants’ contacts with the forum state as well as actions directed at the forum state.
There is also another consideration that supports this result we reach. One of the remedies that Air Products seeks in this case is attorneys fees, which, it alleges, it has a right to based on a provision of the credit application submitted by Safetech to open its initial credit account with Air Products. The provision provides that, should it be necessary for Air Products to collect money owed on the credit account, Safetech will be liable for the costs of collection, including attorneys fees. Air Product’s request for attorneys fees, therefore, arises directly from Defendants’ contacts with the forum state — i.e., from Defendants’ initiation of an ongoing business relationship via the credit application it sent to Air Products in Michigan. Therefore, at least that component of Air Products’ claims clearly arises from Defendants’ contacts with Michigan.
Especially given that this prong is a “lenient standard,” that the cause of action need not “formally” arise from the defendant’s contacts, and that Air Products need only make a prima facie showing of jurisdiction under the procedural posture of this case, this prong is satisfied in this case. Reasonableness
The third prong of the Southern Machine test is that “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_47 | need only make a prima facie showing of jurisdiction, | In November of that year it came under official investigation in its home country for attempting to obtain bank loans and stock certificates under false pretenses. Several months later, German authorities opened a second investigation into fraudulent activities perpetrated by TAE executives. The end result was TAE falling into a German insolvency proceeding in April 2008, at which all the firm’s engine warranties — including those covering the engines that power the plaintiffs’ planes— were declared void. Consequently, the plaintiffs allege, their engines are now worth substantially less than they were at the time of purchase. In addition, to remain operable the engines will require significant maintenance expenditures that would have been covered by the warranties if they were still in force.
Plaintiffs assert that Diamond misled them about the state of TAE’s finances and the likelihood that their engine warranties would turn out to be worthless. They therefore filed a complaint in this court alleging fraudulent and negligent misrepresentation of those facts, as well as fraud by omission. In addition, Morris claims that Diamond violated the Kentucky Consumer Protection Act, KRS 367.110, et seq., and Mascaro claims violation of the Florida Unfair and Deceptive Trade Practices Act, Fla. Stat. § 501.201, et seq. Diamond has moved to dismiss the complaint for lack of personal jurisdiction and (failing that) on the basis that it fails to state a cognizable cause of action. We turn first to the jurisdictional arguments.
I
The plaintiff bears the burden of establishing personal jurisdiction. While the district court may hold an evidentiary hearing to determine whether or not jurisdiction exists, it need not do so; in that case the plaintiff “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | consider facts proffered by the defendant that conflict with those offered by the plaintiff, | While the district court may hold an evidentiary hearing to determine whether or not jurisdiction exists, it need not do so; in that case the plaintiff “need only make a prima facie showing of jurisdiction,” CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1262 (6th Cir.1996), establishing the necessary facts with “reasonable particularity.” Without a hearing the court may not “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_58 | must consider the pleadings and affidavits in a light most favorable to the plaintiff, | Without a hearing the court may not “consider facts proffered by the defendant that conflict with those offered by the plaintiff,” id. (citing Serras v. First Tenn. Bank Nat’l Ass’n, 875 F.2d 1212, 1214 (6th Cir.1989)), and “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_4 | General jurisdiction is proper only where ‘a defendant’s contacts with the forum state are of such a continuous and systematic nature that the state may exercise personal jurisdiction over the defendant even if the action is unrelated to the defendant’s contacts with the state.’ | ” Dickson Marine Inc. v. Panalpina, Inc., 179 F.3d 331, 339 (5th Cir.1999) (citing Helicopteros Nacionales de Colombia, SA v. Hall, 466 U.S. 408, 414-16, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984); Mary Twitchell, The Myth of General Jurisdiction, 101 Harv. L.Rev. 610 (1988)). The purpose of this inquiry is to determine whether the forum state has enough of an interest in the defendant corporation itself to force it to submit to the state’s authority, because in a general jurisdiction case the state need not have an interest in the specific cause of action alleged. Id. The assessment of general jurisdiction considers the defendant’s connections with the forum state leading up to the accrual of the cause of action, and not just those contacts related to the case at hand. “General jurisdiction is proper only where ‘a defendant’s contacts with the forum state are of such a continuous and systematic nature that the state may exercise personal jurisdiction over the defendant even if the action is unrelated to the defendant’s contacts with the state. |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_2 | the fact that [the defendant] maintains a website that is accessible to anyone over the Internet is insufficient to justify general jurisdiction. | It is true that Diamond maintains some sort of contractual relationship with Don Davis Aviation, but a single such contract is hardly “systematic” and compares unfavorably to the Helicópteros defendant’s significant and repeated purchases in the putative forum state. Second, the FAA’s registry reflects at least ten Diamond-manufactured aircraft assigned to Kentucky. (Pl.’s Ex. C.) Again, however, this is not on its own substantial evidence that Diamond has directed its activities to Kentucky: the planes’ present owners could have purchased them second-hand or from out of state before bringing them here. There is no evidence or even allegation regarding the sales themselves — nothing to show that Diamond directed its efforts to Kentucky. Indeed the fact that Diamond maintains various distributors (none of which is located in Kentucky) suggests that it did not itself sell the planes to Kentucky. Cf. Conti v. Pneumatic Prods. Corp., 977 F.2d 978, 981 (6th Cir.1992) (finding no general jurisdiction over a manufacturer selling its products to Ohio via distributors). And even if Diamond had itself sold the planes into Kentucky, we are not persuaded that ten planes would constitute “continuous and systematic contacts.”
Third, Diamond has communicated with Kentucky residents regarding sales of its products. It sent (in paper form and via e-mail) information regarding a DA42 to Todd House, whose YourJet, Inc. eventually became involved with Morris Aviation. (House Aff. ¶ 4.) But the only communications discussed by the plaintiffs are just those involved in this case and do not necessarily imply any prior dealings in Kentucky on Diamond’s part. Fourth, in November 2007 it allegedly directed Jeff Owen to fly a DA 42 to Louisville to demonstrate its features to House and his busi ness partner John Morris. (Id. at ¶ 16.) But this is again a single event that does not show “continuous and systematic contacts” with the state. But “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_28 | significant that, unlike direct marketing, registrants initiate the contact with | ” Bird, 289 F.3d at 874 (citing Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 419-20 (9th Cir.1997)). This was true in Bird even though residents of the forum state (Ohio) could transact business directly with the defendant through the website by registering Internet domain names. The Sixth Circuit found it “ |
4,204,530 | 9,435,945 | 2010-07-26 | United States District Court for the Western District of Kentucky | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc. | Morris Aviation, LLC v. Diamond Aircraft Industries, Inc., 730 F. Supp. 2d 683 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_20 | approximates physical presence within the state’s borders | The Sixth Circuit found it “significant that, unlike direct marketing, registrants initiate the contact with” the defendant corporation. The website alleged to exist in this case no more “ |
5,764,715 | 9,435,945 | 2011-12-05 | United States District Court for the Eastern District of Michigan | American University of Antigua College of Medicine v. Woodward | American University of Antigua College of Medicine v. Woodward, 837 F. Supp. 2d 686 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_52 | in connection with the sale, offering for sale, distribution, or advertising of any goods or services. | Id. at 992-93.
Applicable Law and Analysis
Plaintiff seeks summary judgment based on its defamation, Lanham Act, and Anticybersquatting Consumer Protection Act claims.
Lanham Act
The Lanham Act imposes liability for infringement of trademarks on:
(1) As the plain reading of the statute indicates, the Lanham Act only regulates the use of an infringing mark “ |
5,764,715 | 9,435,945 | 2011-12-05 | United States District Court for the Eastern District of Michigan | American University of Antigua College of Medicine v. Woodward | American University of Antigua College of Medicine v. Woodward, 837 F. Supp. 2d 686 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_53 | Congress enacted [the ACPA] ... to address ‘a new form of piracy on the Internet caused by acts of ‘cybersquatting,’ which refers to the deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners.’ |
A person shall be liable in a civil action by the owner of a mark... if, without regard to the goods or services of the parties, that person
(i) has a bad faith intent to profit from that mark... and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of section 706 of Title 18 or section 220506 of Title 36. “Congress enacted [the ACPA]... to address ‘a new form of piracy on the Internet caused by acts of ‘cybersquatting,’ which refers to the deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners. |
5,764,715 | 9,435,945 | 2011-12-05 | United States District Court for the Eastern District of Michigan | American University of Antigua College of Medicine v. Woodward | American University of Antigua College of Medicine v. Woodward, 837 F. Supp. 2d 686 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | a bad faith intent to profit. | DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir.2004) (citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489 493 (2d Cir.2000)).
To prevail on a claim under the ACPA, a plaintiff must demonstrate the following:
(1)it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, the owner’s mark; and (4) the defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. The last element does not simply require a finding of bad faith, as AUA postures in its pending motion, but “ |
5,764,715 | 9,435,945 | 2011-12-05 | United States District Court for the Eastern District of Michigan | American University of Antigua College of Medicine v. Woodward | American University of Antigua College of Medicine v. Woodward, 837 F. Supp. 2d 686 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_6 | Generally speaking, the key question in cases where a plaintiff alleges trademark infringement ... is whether the defendant’s action creates a likelihood of confusion as to the origin of the parties’ goods or services. |
While the Court concludes that AUA is entitled to summary judgment with respect to its defamation claim (Count IV), the Court concludes that AUA prevails with respect to the following statements by Woodward, only:
• AUA routinely commits fraud upon its students.
• AUA falsifies its students’ grades.
• AUA breaches contracts.
• AUA conspires to commit fraud and violations of civil rights.
• AUA commits criminal activities reportable to the FBI.
• AUA colluded with St. Joseph Hospital to maliciously end
• [Woodward’s] career.
• AUA committed perjury.
The Court therefore is entering a permanent injunction, enjoining Woodward from continuing to publish these seven statements. The Court is scheduling a hearing on the issue of damages.
An Order' consistent with this Opinion will issue.
1
. AUA does not seek summary judgment based on Count III of its Complaint, alleging a violation of the Family Educational Rights & Privacy Act of 1974. As this Court indicated to AUA's counsel at the hearing on AUA's first preliminary injunction motion, the Court does not believe that the statute creates a private cause of action. See Gonzaga Univ. v. Doe, 536 U.S. 273, 287, 122 S.Ct. 2268, 153 L.Ed.2d 309 (2002). The Court therefore is entering summary judgment for Woodward pursuant to Federal Rule of Civil Procedure 56(f) with respect to this claim.
2
. Bird v. Parsons, 289 F.3d 865, 877 (6th Cir.2002) (citing Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997) (“Generally speaking, the key question in cases where a plaintiff alleges trademark infringement... is whether the defendant’s action creates a likelihood of confusion as to the origin of the parties’ goods or services. |
3,742,147 | 9,435,945 | 2012-03-02 | United States Court of Appeals for the Sixth Circuit | Carrier Corp. v. Outokumpu Oyj | Carrier Corp. v. Outokumpu Oyj, 673 F.3d 430 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | construe the facts in a light most, favorable | Thus, Carrier’s burden is “relatively slight,” Third Nat'l Bank in Nashville v. WEDGE Group, Inc., 882 F.2d 1087, 1089 (6th Cir.1989) (internal quotation marks omitted), cert. denied, 493 U.S. 1058, 110 S.Ct. 870, 107 L.Ed.2d 953 (1990), and we must “ |
3,742,147 | 9,435,945 | 2012-03-02 | United States Court of Appeals for the Sixth Circuit | Carrier Corp. v. Outokumpu Oyj | Carrier Corp. v. Outokumpu Oyj, 673 F.3d 430 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | require!] only that the cause of action, of whatever type, have a substantial connection with the defendant’s [in-forum] activities. |
Here, the conspiracy in which OCP and OTO allegedly participated had an explicit geographical focus. According to the complaint, one of the main pillars of the conspiracy was allocating Carrier’s U.S. business to the Outokumpu defendants, thereby forcing Carrier to pay higher prices in the United States. Such conduct serves as a paradigmatic example of “expressly aiming” tortious conduct. Carrier has thus sufficiently alleged purposeful availment under the Southern Machine test. To satisfy this factor, we “ |
5,722,545 | 9,435,945 | 2010-03-31 | United States District Court for the District of Columbia | Citadel Investment Group, L.L.C. v. Citadel Capital Co. | Citadel Investment Group, L.L.C. v. Citadel Capital Co., 699 F. Supp. 2d 303 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_38 | regularly does or solicits business, engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed, or services rendered, in the District of Columbia. | Steinberg v. Int’l Criminal Police Org., 672 F.2d 927, 928 (D.C.Cir.1981); accord Kopff v. Battaglia, 425 F.Supp.2d 76, 81 (D.D.C.2006). Here, plaintiffs contend only that this Court has specific jurisdiction over Citadel Capital.
To establish specific jurisdiction over a non-resident defendant in a federal question case such as this, plaintiffs must plead facts that (1) bring the case within the scope of the District of Columbia’s long-arm statute, D.C.Code § 13-423, and (2) satisfy the constitutional requirements of due process. The District’s long-arm statute states that courts may exercise jurisdiction over any person who, acting directly or through an agent, engages in the following conduct:
(1) transacts any business in the District of Columbia;
(2) contracts to supply services in the District of Columbia;
(3) causes tortious injury in the District of Columbia by an act or omission in the District of Columbia; or
(4) causes tortious injury in the District of Columbia by an act or omission outside the District of Columbia if the person “ |
5,722,545 | 9,435,945 | 2010-03-31 | United States District Court for the District of Columbia | Citadel Investment Group, L.L.C. v. Citadel Capital Co. | Citadel Investment Group, L.L.C. v. Citadel Capital Co., 699 F. Supp. 2d 303 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | bad faith intent to profit from that mark. | Def.’s Mem. at 17. Under the Anticybersquatting Consumer Protection Act, an individual may not register, traffic in, or use a domain name where he has a “ |
5,722,545 | 9,435,945 | 2010-03-31 | United States District Court for the District of Columbia | Citadel Investment Group, L.L.C. v. Citadel Capital Co. | Citadel Investment Group, L.L.C. v. Citadel Capital Co., 699 F. Supp. 2d 303 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_51 | the domain name registrant [and] that registrant’s authorized licensee. | The Act creates a cause of action against both “ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_12 | We review de novo a district court’s dismissal of a complaint for lack of personal jurisdiction pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. | The district court granted both of Defendants’ motions on December 8, 2006. Defendants also filed an opposition to Plaintiffs motion for mediation in Toledo, Ohio.
The parties appeared at a case management conference with the district court on June 19, 2007. On June 21, 2007, the district court ordered that discovery in the case be completed by January 31, 2008; dispositive motions submitted by November 11, 2007; opposition to dispositive motions submitted by November 30, 2007; and replies submitted by December 15, 2007. The parties also consented to the magistrate judge’s jurisdiction for all purposes, including the entry of judgment. This case was subsequently reassigned from the district judge to a magistrate judge. The court scheduled a settlement conference for February 25, 2008, and a jury trial before the magistrate judge for March 18, 2008, with voir dire set for March 17, 2008.
After the June 19, 2007 case management conference, Defendants made a motion for an extension of time until July 9, 2007 to file its Rule 26 discovery responses. Defendants subsequently withdrew this motion, and submitted their Rule 26 discovery responses on June 9, 2007.
The district court held an additional pretrial conference on June 17, 2007, which Defendants’ counsel attended in person, and which Defendant Riordan attended by telephone. The district court also stayed litigation pending mediation as contemplated by the parties’ contract.
After participating in the above-described proceedings, on April 1, 2009, Defendants filed a motion to dismiss for lack of personal jurisdiction, arguing that their contacts with Ohio were insufficient to support personal jurisdiction over them in that forum. The magistrate judge granted Defendants’ motion on May 28, 2009, and dismissed the action for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2).
Plaintiff timely appealed. Standard of Review
“ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_13 | Personal jurisdiction can be either general or specific, depending upon the nature of the contacts that the defendant has with the forum state. | Bird v. Parsons, 289 F.3d 865, 871 (6th Cir.2002); see also Calphalon Corp. v. Rowlette, 228 F.3d 718, 721 (6th Cir.2000). Analysis
“ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_4 | General jurisdiction is proper only where a defendant’s contacts with the forum state are of such a continuous and systematic nature that the state may exercise personal jurisdiction over the defendant even if the action is unrelated to the defendant’s contacts with the state. | Id. at 873. “ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_25 | in a suit arising out of or related to the defendant’s contacts with the forum. | Specific jurisdiction, however, is proper only “ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_48 | have recognized that Ohio’s long-arm statute is not coterminous with federal constitutional limits, | Calphalon, 228 F.3d at 721.
Ohio’s long-arm statute states in relevant part:
A court may exercise personal jurisdiction over a person who acts directly or by an agent, as to a cause of action arising from the person’s:
(1) Transacting any business in this state;
(2) Contracting to supply services or goods in this state;
(3) Causing tortious injury by an act or omission in this state;
(6) Causing tortious injury in this state to any person by an act outside this state committed with the purpose of injuring persons, when he might reasonably have expected that some person would be injured thereby in this state. Although we “ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | consistently focused on whether there are sufficient minimum contacts between the nonresident defendant and the forum state so as not to offend traditional notions of fair play and substantial justice. | Although we “have recognized that Ohio’s long-arm statute is not coterminous with federal constitutional limits,” Bird, 289 F.3d at 871, our jurisprudence analyzing personal jurisdiction under Ohio law has nevertheless done so with reference to the limits of federal constitutional due process. Specifically, this Court has “ |
5,714,675 | 9,435,945 | 2011-08-18 | United States Court of Appeals for the Sixth Circuit | Gerber v. Riordan | Gerber v. Riordan, 649 F.3d 514 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_41 | [sjpeeific jurisdiction over [Defendants] is permissible only if their contacts with Ohio satisfy the three-part test that this [C]ourt established in Southern Machine Co. v. Mohasco Industries, Inc., 401 F.2d 374, 381 (6th Cir.1968). |
Under this Court’s due process jurisprudence, “ |
3,847,686 | 9,435,945 | 2011-09-06 | United States Court of Appeals for the Sixth Circuit | Indah v. United States Securities & Exchange Commission | Indah v. United States Securities & Exchange Commission, 661 F.3d 914 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | not offend ‘traditional notions of fair play and substantial justice.’ |
Shortly after the district court ordered these sanctions, the plaintiffs filed another motion — a motion for relief from judgment, focused on the district court’s sanctions orders. The district court denied this motion. Additionally, because neither the plaintiffs nor Reifman had paid the $107,369.53 within thirty days, Newmont moved for a judgment on the monetary award. On April 26, 2010, the district court entered a judgment against the plaintiffs and Reifinan in the amount of $107,369.53.
II. ANALYSIS
The plaintiffs have filed four Notices of Appeal in this case from numerous different orders of the district court, but we have consolidated the appeals together and the parties have briefed the consolidated appeal in two groups. First, in Nos. 09-2117/09-2570, the plaintiffs challenge the district court’s orders (1) granting Newmont’s motion to dismiss, (2) denying the plaintiffs’ motion for reconsideration in light of their proposed Third Amended Complaint, (3) granting sanctions, and (4) granting the remaining defendants’ motions to dismiss. Second, in Nos. 10-1477/10-1837, the plaintiffs challenge the district court’s order denying the plaintiffs’ motion for relief from the sanctions orders, and the district court’s separate sanctions judgment. For the reasons that follow, we affirm the district court’s dismissal of the case, but we reverse its holding that Rule 11 was violated and its subsequent order of sanctions.
A. Nos. 09-2117/09-2570: Dismissal and the Grant of Sanctions
1. The Dismissal of the Claims Against Newmont
The district court dismissed the plaintiffs’ claims against Newmont on the ground that the court lacked both general and specific personal jurisdiction over Newmont. We review de novo a dismissal for lack of personal jurisdiction.
To comply with due process, a court’s exercise of its power over an out-of-state defendant must “not offend ‘traditional notions of fair play and substantial justice. |
3,847,686 | 9,435,945 | 2011-09-06 | United States Court of Appeals for the Sixth Circuit | Indah v. United States Securities & Exchange Commission | Indah v. United States Securities & Exchange Commission, 661 F.3d 914 (2011) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | the plaintiff need only make a prima facie showing of jurisdiction. In this situation, we will not consider facts proffered by the defendant that conflict with those offered by the plaintiff, and will construe the facts in a light most favorable to the nonmoving party. | Where the district court has not held an evidentiary hearing on the issue, however, “the plaintiff need only make a prima facie showing of jurisdiction. |
3,903,436 | 9,435,945 | 2006-12-21 | United States Bankruptcy Court for the Southern District of Ohio | Stickel v. Finkelstein (In re Huffy Corp.) | Stickel v. Finkelstein (In re Huffy Corp.), 358 B.R. 724 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | traditional notions of fair play and substantial justice. | ” Enron Corp. v. Arora (In re Enron Corp.), 316 B.R. 434, 444 (Bankr.S.D.N.Y.2004).
The broad precepts governing this court’s constitutionally permitted exercise of personal jurisdiction have been frequently recited:
The Due Process Clause requires that the exercise of personal jurisdiction in each case comport with “ |
3,903,436 | 9,435,945 | 2006-12-21 | United States Bankruptcy Court for the Southern District of Ohio | Stickel v. Finkelstein (In re Huffy Corp.) | Stickel v. Finkelstein (In re Huffy Corp.), 358 B.R. 724 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_4 | even if the action is unrelated to the defendant’s contacts with the state. | General jurisdiction may be found where a defendant has “continuous and systematic contacts with the forum state sufficient to justify the state’s exercise of judicial power with respect to any and all claims” against the defendant. A state could exercise general jurisdiction over a defendant “ |
3,903,436 | 9,435,945 | 2006-12-21 | United States Bankruptcy Court for the Southern District of Ohio | Stickel v. Finkelstein (In re Huffy Corp.) | Stickel v. Finkelstein (In re Huffy Corp.), 358 B.R. 724 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | cause of action ... have a substantial connection with the defendant’s in-state activities. | ”
The second or “arising from” factor essentially requires that the “cause of action... have a substantial connection with the defendant’s in-state activities. |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_23 | it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief. | Johnson v. Rivera, 272 F.3d 519, 520-21 (7th Cir.2001). In ruling on a motion to dismiss, the court must assume all facts alleged in the complaint to be true and view the allegations in the light most favorable to plaintiffs. Dismissal for failure to state a claim is appropriate where “ |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_53 | deliberate, bad-faith, and abusive registration of Internet domain names in vio lation of the rights of trademark owners, | ” (D.E. 26 at 5.) Kathrein similarly cites no authority to show that this undermines the alleged alter ego relationship, and the Court also finds this argument to be waived.
II. Plaintiffs Have Adequately Stated an ACPA Claim
Kathrein and Lee move to dismiss Plaintiffs’ ACPA claim. The ACPA was enacted in 1999 to combat the “ |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | ‘registers, traffics in, or uses a domain name’ that is ‘identical or confusingly similar to’ a ‘distinctive’ mark or that is ‘identical or confusingly’ similar to or dilu-tive of a famous mark | The ACPA was enacted in 1999 to combat the “deliberate, bad-faith, and abusive registration of Internet domain names in vio lation of the rights of trademark owners,” a practice also known as cybersquatting. The ACPA applies to any person who “ |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_51 | registered a domain name, ... and liability for using a domain name can only exist for the registrant or that person’s authorized licensee, | ” (D.E. 21 at 4.) See Bird v. Parsons, 289 F.3d 865, 881 (6th Cir.2002) (since there is no allegation that defendants “registered a domain name,... and liability for using a domain name can only exist for the registrant or that person’s authorized licensee,” the complaint must be dismissed against those defendants because it “contains no allegation that... [those defendants] are... licensee[s]”) (citing 15 U.S.C. § 1125(d) (1)(D)) (emphases in original). |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_42 | contains no allegation that ... [those defendants] are ... licensee[s] | See Bird v. Parsons, 289 F.3d 865, 881 (6th Cir.2002) (since there is no allegation that defendants “registered a domain name,... and liability for using a domain name can only exist for the registrant or that person’s authorized licensee,” the complaint must be dismissed against those defendants because it “contains no allegation that... [those defendants] are... licensee[s]”) (citing 15 U.S.C. § 1125(d) (1)(D)) (emphases in original). |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_54 | [a] person shall be liable for using a domain name ... only if that person is the domain name registrant or that registrant’s authorized licensee. | See Hamptons Locations, Inc. v. Rubens, No. 01 C 5477DRHWDW, 2005 WL 2436209, at *8 (E.D.N.Y. Sept.30, 2005) (in ACPA action, evidence that individual defendant was involved “in the development, launching, and operation of the website” precluded summary judgment in favor of defendant).
Even if there were no allegations that Kathrein registered the website, Plaintiffs have made allegations that Kathrein has engaged in a violation of the ACPA as the alter ego of Lee, as discussed above. (D.E. 15 ¶ 4.) The ACPA does contain a specific provision (that does not apply to the Lanham Act generally) stating that “[a] person shall be liable for using a domain name... only if that person is the domain name registrant or that registrant’s authorized licensee. |
4,087,111 | 9,435,945 | 2007-04-18 | United States District Court for the Northern District of Illinois | Flentye v. Kathrein | Flentye v. Kathrein, 485 F. Supp. 2d 903 (2007) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_54 | domain name registrant or that registrant’s authorized licensee. | 15 U.S.C. § 1125(d)(1)(D). However, if Ka-threin is deemed to be the alter ego of Lee or Lee Street, Kathrein seemingly would be deemed the “registrant” under the statute, since “the separate personalit[y]” of Kathrein would “no longer exist.” Therefore, based on the allegations in the Complaint, Kathrein seemingly could be considered the “ |
4,199,183 | 9,435,945 | 2010-07-26 | United States District Court for the Middle District of Tennessee | Borescopes R US v. 1800Endoscope.com, LLC | Borescopes R US v. 1800Endoscope.com, LLC, 728 F. Supp. 2d 938 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_6 | Generally speaking, the key question in eases where a plaintiff alleges trademark infringement and unfair competition is whether the defendant’s actions create a likelihood of confusion as to the origin of the parties’ goods or services. | Defendant cites Plaintiffs Complaint where Plaintiff asserts that a likelihood of confusion in the marketplace is created and exacerbated by the similarity of the two domain addresses; that Plaintiffs damages are enhanced because of the parties’ similar markets and marketing approaches, namely the use of the Internet; and that the use of Defendant’s domain name benefits from Plaintiffs reputation. (Docket Entry No. 1, Complaint at ¶¶ 5, 7-8).
Defendant argues that there is no evidence that Defendant unfairly competed in its activities related to the adoption of its domain name, promotion of its services or solicitation of its customers other than using a generic term in its domain name. See Gaylord Entertainment Co., 187 F.Supp.2d at 951 (stating that even if the term “Opry” were generic, based on the evidence presented a trier-of-fact could determine that the defendant engaged in unfair competition in its activities related to the adoption, promotion, and solicitation sales of the disputed mark so long as the claim was not predicated solely on the defendant’s use of the term “Opry”). Defendant contends that Plaintiff merely objects to the use of Defendant’s domain name and that cannot be the basis for a Lanham Act passing off claim. Defendant also contends that Plaintiff never had a right to monopolize the term “boreseope” and this is not an instance where Plaintiff is a rightful monopolist that needs protection from new entrants to the market.
Plaintiff has presented evidence that it received occasional telephone calls from clients searching for Defendant’s of fices. (Docket Entry No. 30 at ¶ 8). See Bird v. Parsons, 289 F.3d 865, 877 (6th Cir.2002) (“ |
4,000,350 | 9,435,945 | 2012-05-24 | United States District Court for the Western District of Tennessee | Hilani v. Greek Orthodox Archdiocese | Hilani v. Greek Orthodox Archdiocese, 863 F. Supp. 2d 711 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | consider facts proffered by the defendant that conflict with those offered by the plaintiff. | The pleadings and affidavits submitted must be viewed in a light most favorable to the plaintiff, and the district court should not “ |
4,000,350 | 9,435,945 | 2012-05-24 | United States District Court for the Western District of Tennessee | Hilani v. Greek Orthodox Archdiocese | Hilani v. Greek Orthodox Archdiocese, 863 F. Supp. 2d 711 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_4 | contacts with the forum state are of such a continuous and systematic nature that the state may exercise personal jurisdiction over the defendant even if the action is unrelated to the defendant’s contacts with the state. | ” The parties agree that specific personal jurisdiction does not exist in this case. A court may have general jurisdiction over an out-of-state defendant when a defendant’s “ |
4,000,350 | 9,435,945 | 2012-05-24 | United States District Court for the Western District of Tennessee | Hilani v. Greek Orthodox Archdiocese | Hilani v. Greek Orthodox Archdiocese, 863 F. Supp. 2d 711 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_2 | maintain[ing] a website that is accessible to anyone over the Internet is insufficient to justify general jurisdiction | ”).
34
. Gordon, 300 S.W.3d at 653 (citing Elec. Power Bd. of Chattanooga v. St. Joseph Valley Structural Steel Corp., 691 S.W.2d 522, 526 (Tenn.1985)).
35
. Id. (citing Mfrs. Consolidation Serv., Inc. v. Rodell, 42 S.W.3d 846, 866 (Tenn.Ct.App. 2000)).
36
. Id. (citing Stigall v. Wickes Mach., 801 S.W.2d 507, 511 (Tenn.1990)).
37
. Bird, 289 F.3d at 874 (holding that " |
3,675,455 | 9,435,945 | 2009-12-04 | United States District Court for the Southern District of Florida | Transamerica Corp. v. Moniker Online Services, LLC | Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp. 2d 1353 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_35 | merely uses domain names to designate host computers on the Internet. This is the type of purely ‘nominative’ function that is not prohibited by trademark law. | {Defendants’ Mot. at 4). In support of this position, Defendants cite Bird v. Parsons, 289 F.3d 865 (6th Cir.2002). In Bird, the court found a domain name registrar was not liable for the infringement caused by the domain name owner because the registrar did not use the mark in commerce. The court reasoned,
A registrar that grants a particular domain name to a registrant simply grants it an address____The fact that the registrant can then use its domain name to infringe on the rights of a registered trademark owner does not subject the registrar to liability for trademark infringement or unfair competition.
Id. at 878. The court held that the registrar “merely uses domain names to designate host computers on the Internet. |
3,675,455 | 9,435,945 | 2009-12-04 | United States District Court for the Southern District of Florida | Transamerica Corp. v. Moniker Online Services, LLC | Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp. 2d 1353 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | bad faith intent to profit from | (Id.). Defendants cite what they call the “leading decision in this realm”—Lockheed Martin Corp. v. Network Solutions, Inc., 141 F.Supp.2d 648 (N.D.Tex.2001) (Lockheed II)—in support of this position. (See id.). There is no summary judgment evidence that plaintiff is a person who has had a “ |
3,675,455 | 9,435,945 | 2009-12-04 | United States District Court for the Southern District of Florida | Transamerica Corp. v. Moniker Online Services, LLC | Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp. 2d 1353 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | intent to profit from that mark | That the court’s interpretation of “ |
3,675,455 | 9,435,945 | 2009-12-04 | United States District Court for the Southern District of Florida | Transamerica Corp. v. Moniker Online Services, LLC | Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp. 2d 1353 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_54 | [a] person shall be liable for using a domain name ... only if that person is the domain name registrant or that registrant’s authorized licensee. | Id.
In Flentye v. Kathrein, 485 F.Supp.2d 903, 914 (N.D.Ill.2007), the court denied defendants’ motion to dismiss based on immunity where plaintiffs alleged that several defendants, as a group, had registered the domain names at issue. The court reasoned:
Even if there were no allegations that Kathrein registered the website, Plaintiffs have made allegations that Kathrein has engaged in a violation of the ACPA as the alter ego of Lee, as discussed above. (D.E. 15 ¶ 4.) The ACPA does contain a specific provision (that does not apply to the Lanham Act generally) stating that “[a] person shall be liable for using a domain name... only if that person is the domain name registrant or that registrant’s authorized licensee. |
3,675,455 | 9,435,945 | 2009-12-04 | United States District Court for the Southern District of Florida | Transamerica Corp. v. Moniker Online Services, LLC | Transamerica Corp. v. Moniker Online Services, LLC, 672 F. Supp. 2d 1353 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | has a bad faith intent to profit from that mark. | The Lanham Act’s subsection on “cyberpiracy prevention” also has a bad faith provision that states a person will be hable to the owner of the mark when that person “ |
4,194,194 | 9,435,945 | 2010-12-30 | United States District Court for the Eastern District of Michigan | McCluskey v. Belford High School | McCluskey v. Belford High School, 795 F. Supp. 2d 608 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | traditional notions of fair play and substantial justice. | The Court agrees with Plaintiffs that, at the very least, Belford clearly transacted business in Michigan and entered into a contract for materials and/or services to be furnished in Michigan when it (i) telephoned Michigan residents, (ii) swayed them to purchase its product, (iii) accepted credit card payment from Michigan residents online and over the phone, and (iv) mailed its diplomas and degrees to Michigan residents at their respective Michigan residences. See Sifers v. Horen, 385 Mich. 195, 188 N.W.2d 623, 624 n. 2 (1971) (“the slightest” act of doing business in Michigan satisfies the “transact business” requirement of § 600.715(1)). Accordingly, specific jurisdiction over Belford is proper under Michigan’s long-arm statute.
B. Due Process
The Sixth Circuit has articulated a three-part inquiry to determine whether the exercise of specific jurisdiction over a defendant comports with federal due process requirements:
First, the defendant must purposefully avail himself of the privilege of acting in the forum state or causing a consequence in the forum state. Second, the cause of action must arise from the defendant’s activities there. Finally, the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum state to make the exercise of jurisdiction over the defendant reasonable.
S. Mach. Co. v. Mohasco Indus., Inc., 401 F.2d 374, 381 (6th Cir.1968). The Court addresses each element, in turn.
1. Law
The Sixth Circuit has summarized the purposeful availment requirement as follows:
[The plaintiff] must... establish with reasonable particularity sufficient “minimum contacts” with Michigan so that the exercise of jurisdiction over [the foreign defendant] would not offend “ |
4,194,194 | 9,435,945 | 2010-12-30 | United States District Court for the Eastern District of Michigan | McCluskey v. Belford High School | McCluskey v. Belford High School, 795 F. Supp. 2d 608 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_0 | An inference arises that the third [.Mohasco ] factor is satisfied if the first two requirements are met. | The purported class action complaint in this case stems from Belford’s alleged sale of sham high school diplomas and university degrees. Some of the alleged victims of the purported scam are Michigan residents. In order to facilitate and complete these sales, Belford reached out to Michigan residents in manner sufficient to satisfy the purposeful availment requirement, as discussed extensively above. As such, the case relates to and is connected with Belford’s contacts with Michigan. Thus, the second element of the Mohasco framework is satisfied.
3. “ |
4,217,967 | 9,435,945 | 2010-08-30 | United States District Court for the Eastern District of Kentucky | Santa Escolastica, Inc. v. Pavlovsky | Santa Escolastica, Inc. v. Pavlovsky, 736 F. Supp. 2d 1077 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | need not ‘formally’ arise from defendant’s contacts. | In keeping with the lax standard, the claims “ |
5,727,264 | 9,435,945 | 2013-06-27 | United States District Court for the Southern District of Ohio | Bracken v. DASCO Home Medical Equipment, Inc. | Bracken v. DASCO Home Medical Equipment, Inc., 954 F. Supp. 2d 686 (2013) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_47 | ‘need only make a prima facie showing of jurisdiction.’ | Ohio Nat’l Life Ins. Co., 922 F.2d at 325. The Court may allow affidavits, documents and even a limited evidentiary hearing to resolve disputed jurisdictional facts. Id.
Under Rule 12(b)(2), the plaintiff bears the burden of proving personal jurisdiction exists. CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1261-62 (6th Cir.1996). In the face of a supported motion to dismiss, the plaintiff may not rest on his pleadings, but must, by affidavit or otherwise, set forth specific evidence supporting jurisdiction. When the Court considers a motion to dismiss pursuant to Rule 12(b)(2) without an evidentiary hearing on the issue of personal jurisdiction, however, the plaintiff “ ‘need only make a prima facie showing of jurisdiction. |
4,130,480 | 9,435,945 | 2012-05-18 | United States Court of Appeals for the Sixth Circuit | Miami Valley Fair Housing Center, Inc. v. Steiner & Associates Inc. | Miami Valley Fair Housing Center, Inc. v. Steiner & Associates Inc., 483 F. App'x 67 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_16 | The requirement that jurisdiction be established as a threshold matter ‘spring[s] from the nature and limits of the judicial power of the United States’ and is ‘inflexible and without exception.’ | Third-Party Plaintiffs sought indemnity and contribution for any damages awarded to Plaintiffs and alleged breach of contract and negligence claims against all Third-Party Defendants. Third-Party Defendants filed motions to dismiss or for judgment on the pleadings pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(c), respectively. The magistrate judge recommended dismissal of Third-Party Plaintiffs’ claims on the grounds that the FHA did not imply a right to indemnity or contribution and Third-Party Plaintiffs’ breach of contract and negligence claims substantively repeated their indemnity and contribution claims. The district court adopted the magistrate judge’s recommendation and dismissed the motions. The district court did not state its view on whether the FHA preempted Third-Party Plaintiffs’ contribution and indemnity claims; rather, it stated its agreement that the FHA “does not contain or authorize” contribution and indemnity claims and that the breach of contract and negligence claims were repetitive. (Order Adopting Report and Recommendations 2, R. 371.)
Several Third-Party Defendants also moved to dismiss the third-party complaint on the ground that the district court lacked personal jurisdiction over them, on the grounds that neither federal law nor the Ohio long-arm statute permitted service of process over those Third-Party Defendants. See Calphalon Corp. v. Rowlette, 228 F.3d 718, 721 (6th Cir.2000); Ohio Rev.Code § 2307.382. The district court never ruled on those motions, but it should have. A federal court may not assume jurisdiction to decide the merits of a dispute; it must satisfy itself in the first instance that it has jurisdiction over the parties and the subject matter. Steel Co. v. Citizens for a Better Environment, 523 U. “The requirement that jurisdiction be established as a threshold matter ‘spring[s] from the nature and limits of the judicial power of the United States’ and is ‘inflexible and without exception. |
3,716,568 | 9,435,945 | 2012-01-12 | United States Court of Appeals for the Fifth Circuit | Conn v. Zakharov | Conn v. Zakharov, 667 F.3d 705 (2012) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | offend traditional notions of fair play and substantial justice. | The statute makes clear that “[w]hen jurisdiction over a person is based solely upon this section, only a cause of action arising from acts enumerated in this section may be asserted against” the non-resident defendant.
But a finding that the requisites for state-law long-arm jurisdiction have been met does not end the inquiry: the Due Process Clause requires that the defendant have sufficient “minimum contactes]” with the forum state so that finding personal jurisdiction does not “ |
4,222,143 | 9,435,945 | 2009-05-14 | United States District Court for the Western District of Michigan | LGT Enterprises, LLC v. Hoffman | LGT Enterprises, LLC v. Hoffman, 614 F. Supp. 2d 825 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | the cause of action, of whatever type, have a substantial connection with the defendants’ in-state activities. | Doing so, one might conclude that LGT has at least a colorable argument on the first element of personal jurisdiction, “purposeful availment of the privilege of acting in Michigan or of causing a consequence in Michigan”, based in part on Hoffman’s sales to Michigan customers and/or sales for Michigan events (arguably “acting in Michigan”) and/or on the harm caused to LGT in its Michigan home (“Causing a consequence in Michigan”).
But purposeful availment alone is not enough. LGT must also make a prima facie showing that its conversion claims “arose out of’ Hoffman’s Michigan activities.
As both sides agree, see P’s Opp at 11 and Defs Reply at 3, the second prong of the federal due process test does not require that the causes of action formally “arise from” Hoffman’s contacts with the forum; rather, it requires only that “ |
4,222,143 | 9,435,945 | 2009-05-14 | United States District Court for the Western District of Michigan | LGT Enterprises, LLC v. Hoffman | LGT Enterprises, LLC v. Hoffman, 614 F. Supp. 2d 825 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_36 | In this Circuit, 'operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state ... if the website is interactive to a degree that reveals specifically intended interaction with residents of the state.’ | UK Acquisition, 2006 WL 932417 at *2 (quoting BK, 471 U.S. at 475, 105 S.Ct. 2174).
3
. Hoffman's website is highly interactive, i.e., it is not merely a passive website providing a company’s background, contact information, product descriptions, store locations, etc. See Bridgeport Music, Inc. v. Still N the Water Pub., 327 F.3d 472, 483 (6th Cir.2003) (“In this Circuit, 'operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state... if the website is interactive to a degree that reveals specifically intended interaction with residents of the state. |
4,222,143 | 9,435,945 | 2009-05-14 | United States District Court for the Western District of Michigan | LGT Enterprises, LLC v. Hoffman | LGT Enterprises, LLC v. Hoffman, 614 F. Supp. 2d 825 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_12 | A district court’s dismissal for lack of personal jurisdiction pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure is reviewed de novo | ”
Griswold v. Potter, 2003 WL 23941714, *5 (W.D.Mich. Oct. 15, 2003) (quoting Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 819, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988)). See Burnshire Dev., LLC v. Cliffs Reduced Iron Corp., 198 Fed.Appx. 425, 429 (6th Cir.2006)
(Boggs, Gibbons, Griffin) (" |
12,133,542 | 9,435,945 | 2016-05-06 | United States District Court for the Western District of Tennessee | Fleming v. Janssen Pharmaceuticals, Inc. | Fleming v. Janssen Pharmaceuticals, Inc., 186 F. Supp. 3d 826 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | not consider the facts proffered by the defendant that conflict with those offered by the plaintiff, and will construe the facts in the light most favorable to the nonmoving party. | When the court does not conduct an evi-dentiary hearing on the issue, it must “ |
12,133,542 | 9,435,945 | 2016-05-06 | United States District Court for the Western District of Tennessee | Fleming v. Janssen Pharmaceuticals, Inc. | Fleming v. Janssen Pharmaceuticals, Inc., 186 F. Supp. 3d 826 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_49 | construct ] the complaint in a light most favorable to the plaintiff. | A court must “ |
12,133,542 | 9,435,945 | 2016-05-06 | United States District Court for the Western District of Tennessee | Fleming v. Janssen Pharmaceuticals, Inc. | Fleming v. Janssen Pharmaceuticals, Inc., 186 F. Supp. 3d 826 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_13 | Personal jurisdiction can be either general or specific, depending upon the nature of the contacts that the defendant has with the forum state. | HDC, LLC v. City of Ann Arbor, 675 F.3d 608, 611 (6th Cir.2012).
III. ANALYSIS
A. Personal Jurisdiction as to Johnson & Johnson
Defendants Janssen and Johnson & Johnson assert that all claims against Johnson & Johnson should be dismissed because Plaintiff has failed to establish personal jurisdiction as to Johnson & Johnson. (EOF No. 184 at 4-8.) Plaintiff argues that personal jurisdiction exists because Johnson & Johnson purposefully availed itself of this Court when it designed Invokana and, along with Janssen, a subsidiary, placed • Invokana in- the stream of commerce in Tennessee. (ECF No. 33 at 5 (citing Daimler AG v. Bauman, — U.S. -, 134 S.Ct. 746, 759 n. 13, 187 L.Ed.2d 624 (2014)).)
“ |
12,271,413 | 9,435,945 | 2016-10-31 | United States District Court for the Southern District of Ohio | Johansen v. HomeAdvisor, Inc. | Johansen v. HomeAdvisor, Inc., 218 F. Supp. 3d 577 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_1 | a federal court’s subject matter jurisdiction over a case stems from the existence of a federal question | ” (quotation omitted)).
III. ANALYSIS
HomeAdvisor moved to dismiss by challenging this. Where, as- here, “ |
12,271,413 | 9,435,945 | 2016-10-31 | United States District Court for the Southern District of Ohio | Johansen v. HomeAdvisor, Inc. | Johansen v. HomeAdvisor, Inc., 218 F. Supp. 3d 577 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_1 | personal jurisdiction exists if the defendant is amenable to service of process under the [forum] state’s long-arm statute and if the exercise of personal jurisdiction would not deny the defendant! ] due process. | Where, as- here, “a federal court’s subject matter jurisdiction over a case stems from the existence of a federal question”—i.e., whether HomeAdvisor violated the TCPA—“ |
12,271,413 | 9,435,945 | 2016-10-31 | United States District Court for the Southern District of Ohio | Johansen v. HomeAdvisor, Inc. | Johansen v. HomeAdvisor, Inc., 218 F. Supp. 3d 577 (2016) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | whether there are sufficient minimum contacts between the nonresident defendant and the forum state so as not to offend ‘traditional notions of fair play and substantial justice.’ | ” Bird v. Parsons, 289 F.3d 865, 871 (6th Cir. 2002) (quotation omitted).
Ohio’s long-arm statute does not extend to the full limits of the Due Process Clause. Id. Nevertheless, because Home-Advisor mentions Ohio’s long-arm statute only in passing, while focusing instead on the lack of due process (Doc. 18 at PagelD 61-65), the Court limits its analysis to the Due Process Clause as well. The Sixth Circuit repeatedly has emphasized that the central question in determining whether personal jurisdiction is proper under the Due Process Clause is “whether there are sufficient minimum contacts between the nonresident defendant and the forum state so as not to offend ‘traditional notions of fair play and substantial justice. |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | shall be liable in a civil action by the owner of a mark | ” The court found that the record established that Cruise Traffic, George, and Joseph had not demonstrated the “clean hands” required to assert the equitable defenses on which they relied. Additionally, Royal Caribbean would be prejudiced if it were to set aside the defaults, as the Domain Names continued to divert customers from Royal Caribbean, causing loss of income. Finally, as for the motion for default judgment, the court determined that Royal Caribbean had shown that default judgment was proper.
The Appellants moved for reconsideration of the district court’s order, and a stay pending appeal, both of which the district court denied. The Appellants also separately moved for relief from the judgment, asserting, for the first time, that Cruise Traffic and George were the registrant’s “licensees” or the de facto registrants of the Domain Names. The district court denied the motion, concluding that this relief was not warranted because the Appellants failed to present any information or arguments not available prior to the entry of the underlying judgment. The appellants then filed this timely appeal.
B.
First, the district court did not err in determining that it had in rem jurisdiction over this action.
The ACPA provides that a person “ |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | has a bad faith intent to profit from that mark |
The ACPA provides that a person “shall be liable in a civil action by the owner of a mark” if he “ |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | registers, traffics in, or uses a domain name |
The ACPA provides that a person “shall be liable in a civil action by the owner of a mark” if he “has a bad faith intent to profit from that mark” and “ |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_54 | [a] person shall be liable ... only if that person is the domain name registrant or that registrant’s authorized licensee. |
The ACPA provides that a person “shall be liable in a civil action by the owner of a mark” if he “has a bad faith intent to profit from that mark” and “registers, traffics in, or uses a domain name” that is identical or confusingly similar to the protected mark. As to use of a domain name, “[a] person shall be liable... only if that person is the domain name registrant or that registrant’s authorized licensee. |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_54 | registrant or that registrant’s authorized licensee. |
The Appellants argue that in rem jurisdiction is improper where a district court can obtain personal jurisdiction over a person who, in bad faith, registers, uses or traffics in a domain name.
But the plain language of the ACPA provides that, to be liable for use of a domain name, the person must be the “ |
12,399,168 | 9,435,945 | 2017-02-27 | United States Court of Appeals for the Eleventh Circuit | Royal Caribbean Cruises Ltd. v. Royalcaribean.com | Royal Caribbean Cruises Ltd. v. Royalcaribean.com, 680 F. App'x 874 (2017) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_51 | The only defendant that registered a domain name is Parsons, and liability for using a domain name can only exist for the registrant or that person’s authorized licensee. 15 U.S.C. § 1125(d)(1)(D). | See 15 U.S.C. § 1125(d)(1)(D); see also Bird v. Parsons, 289 F.3d 865, 881 (6th Cir. 2002) (“The only defendant that registered a domain name is Parsons, and liability for using a domain name can only exist for the registrant or that person’s authorized licensee. |
4,230,298 | 9,435,945 | 2009-03-25 | United States District Court for the Middle District of Tennessee | Energy Automation Systems, Inc. v. Saxton | Energy Automation Systems, Inc. v. Saxton, 618 F. Supp. 2d 807 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_36 | [t]he operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state under the first Mohasco factor ‘if the website is interactive to a degree that reveals specifically intended interaction with residents of the state.’ |
In this circuit, “[t]he operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state under the first Mohasco factor ‘if the website is interactive to a degree that reveals specifically intended interaction with residents of the state. |
4,230,298 | 9,435,945 | 2009-03-25 | United States District Court for the Middle District of Tennessee | Energy Automation Systems, Inc. v. Saxton | Energy Automation Systems, Inc. v. Saxton, 618 F. Supp. 2d 807 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_36 | The operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state ... if the website is interactive to a degree that reveals specifically intended interaction with residents of the state. | Bird v. Parsons, 289 F.3d 865, 874 (6th Cir.2002) (citing Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 890 (6th Cir.2002)).
“The operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state... if the website is interactive to a degree that reveals specifically intended interaction with residents of the state. |
4,325,714 | 9,435,945 | 2014-07-22 | United States District Court for the Eastern District of Michigan | Allianz Global Corporate & Specialty v. Advantage Aviation Technologies, Inc. | Allianz Global Corporate & Specialty v. Advantage Aviation Technologies, Inc., 32 F. Supp. 3d 849 (2014) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_1 | [Personal jurisdiction over a defendant exists if the defendant is amenable to service of process under the [forum] state’s long-arm statute and if the exercise of personal jurisdiction would not deny the defendant!] due process. |
On September 5 and 6, 2012, defendant’s representative and Flagship negotiated shipping, and the final invoice cost; the parties agreed that the landing gear systems would be shipped FOB to Flagship in Michigan. On September 11, 2012, AAAP paid defendant the remaining balance due of $145,325.00 on behalf of Flagship. Defendant shipped the landing gear systems back to Flagship on September 14, 2012; Flagship received the systems on September 16, 2012.
When Flagship received the parts on September 16th, it noticed that the main landing gear actuators were improperly aligned. It called defendant that day, and defendant instructed Flagship over the phone how to properly realign the actuators. Flagship also noticed that the right hand main landing gear drag brace lower bushing was not properly ground down. Flagship sent the bushing back to defendant for resizing; defendant resized the part and returned it to Flagship on September 18, 2012. These additional repairs were done pursuant to defendant’s five-year warranty.
The runway incident occurred on October 31, 2012, which plaintiffs determined occurred due defendant’s faulty repair of the plane’s nose gear. Plaintiffs filed suit against defendant on October 23, 2013. The Court held a hearing on this motion on July 7, 2014, and oral argument was heard.
II. Standard
The burden in a Rule 12(b)(2) motion is on plaintiffs to establish jurisdiction over defendant. Welsh, 631 F.2d at 438. If the Court determines that it will decide the issue based solely on the written materials submitted, the plaintiff need only make a prima facie case for jurisdiction. Id. The Court must consider the pleadings and affidavits in the light most favorable to plaintiff.
“ |
8,452,432 | 9,435,945 | 2006-09-13 | United States District Court for the Middle District of North Carolina | WLC, LLC v. Watkins | WLC, LLC v. Watkins, 454 F. Supp. 2d 426 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | traditional notions of fair play and substantial justice. |
For a state to exercise personal jurisdiction -over a non-resident defendant, due process requires that the defendant have certain minimum contacts with the forum state such that the maintenance of the suit does not offend “ |
8,452,432 | 9,435,945 | 2006-09-13 | United States District Court for the Middle District of North Carolina | WLC, LLC v. Watkins | WLC, LLC v. Watkins, 454 F. Supp. 2d 426 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_25 | arising out of or related to | World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980).
Personal jurisdiction may be exercised either specifically or generally. Specific jurisdiction is established where the forum state asserts personal jurisdiction over a defendant in a suit “ |
8,452,432 | 9,435,945 | 2006-09-13 | United States District Court for the Middle District of North Carolina | WLC, LLC v. Watkins | WLC, LLC v. Watkins, 454 F. Supp. 2d 426 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | does not require that the cause of action formally ‘arise from’ defendant’s contacts with the forum; rather, [it] requires only ‘that the cause of action, of whatever type, have a substantial connection with the defendant’s in-state activities.’ | Specifically, a plaintiffs claims must “arise out of’ or “relate to” the defendant’s, contacts with the forum state. Helicopteros, 466 U.S. at 414 n. 8, 104 S.Ct. 1868. In determining whether a claim is sufficiently related to forum-related activities, circuits have applied different tests. For instance, the Sixth Circuit takes a more liberal view and “does not require that the cause of action formally ‘arise from’ defendant’s contacts with the forum; rather, [it] requires only ‘that the cause of action, of whatever type, have a substantial connection with the defendant’s in-state activities. |
5,575,277 | 9,435,945 | 2006-08-31 | United States District Court for the Eastern District of Michigan | Dedvukaj v. Maloney | Dedvukaj v. Maloney, 447 F. Supp. 2d 813 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_47 | need only make a prima facie showing of jurisdiction. |
The auctions in question took place over several weeks, and during the auctions, Plaintiff regularly received updates via email regarding the bids entered. (PL’s Resp. Ex. 1, p. 1-4.) Plaintiff regularly logged onto the website to monitor the progress of the auctions, regularly participated in the auction by raising his bid, and spoke with Defendants via the toll-free number during the auctions. Id.
Plaintiff emerged as the successful bidder in both the “Suzanne” auction and the “In The Lounge” auction. After winning both auctions, Plaintiff Dedvukaj communicated with Defendants through emails and phone calls, verified payment terms, and sent a check for $649.20 to Defendants at the listed address in Syracuse, New York. (PL’s Resp. Ex. 1, p. 4-5.) Defendants accepted this payment and cashed Plaintiffs check. Id.
Defendants never shipped the paintings, but offered Plaintiff a full refund. Plaintiff refused this refund and demanded the paintings or the fair market value of the originals. Plaintiff filed this action on June 10, 2005 alleging Breach of Contract, Fraud and Misrepresentation.
III. DISCUSSION
Defendants’ Motion to Dismiss requests this Court to dismiss Plaintiffs Complaint pursuant to Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction, or in the alternative, to transfer venue to the United States District Court for the Northern District of New York pursuant to Fed.R.Civ.P. 12(b)(3) and 28 U.S.C. § 1391(a). For the reasons explained below, the Court will deny the Defendants’ Motion in its entirety.
A. Burden of Proof
Although this matter is before the court on Defendants’ motion to dismiss, Plaintiff has the burden of establishing the district court’s jurisdiction. Where the court does not conduct an evidentiary hearing on the issue of personal jurisdiction in considering a Rule 12(b)(2) motion, the plaintiff “ |
5,575,277 | 9,435,945 | 2006-08-31 | United States District Court for the Eastern District of Michigan | Dedvukaj v. Maloney | Dedvukaj v. Maloney, 447 F. Supp. 2d 813 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | court will not consider facts proffered by the defendant that conflict with those offered by the plaintiff, | ” In ruling on a 12(b)(2) motion, the “ |
5,575,277 | 9,435,945 | 2006-08-31 | United States District Court for the Eastern District of Michigan | Dedvukaj v. Maloney | Dedvukaj v. Maloney, 447 F. Supp. 2d 813 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | traditional notions of fair play and substantial justice. |
In the present case, Defendants transacted business in Michigan when Defendants communicated with Plaintiff Ded-vukaj in Michigan through email messages and telephone calls, accepted Plaintiffs bids during the auctions, accepted Plaintiffs winning bids in two auctions, sent notice and confirmation to Plaintiff that he had submitted the winning bids in two auctions, confirmed shipping charges for two items to Michigan, and accepted payment through the mail from Michigan.
The “arising out of’ requirement is satisfied in the present case because the alleged harm stems directly from the breach of the contracts that establish the transaction of business in Michigan. Defendants transacted business in Michigan, and Plaintiffs claims arise from those transactions.
In addition to M.C.L. § 600.705(1) and § 600.735(1), Plaintiffs claims can be analyzed under M.C.L. § 600.705(2) and § 600.735(2) for fraud and misrepresentation because Plaintiff claims he was deceived by Defendants’ representations that the paintings were originals. The screen printouts clearly identify the artwork in both auctions as “original,” yet Defendants have stated they do not own the originals. (Defs.’ Mot. to Dis., p. 6.) Plaintiffs claims can also be analyzed under M.C.L. § 600.705(5) and § 600.735(5) for breach of contract. Plaintiff has presented a prima facie case for limited jurisdiction under all three (3) clauses of both statutes.
Viewing the facts in the light most favorable to Plaintiff Dedvukaj, Plaintiff has presented a prima facie case that limited jurisdiction extends to Defendants under Michigan law.
2. Due Process
Although personal jurisdiction is authorized under Michigan’s “long-arm” statute, this Court cannot exercise personal jurisdiction in violation of the Due Process Clause of the Fourteenth Amendment. Neogen, 282 F.3d at 889. Plaintiff Dedvukaj must present a prima facie case that the exercise of personal jurisdiction does not offend due process. Plaintiff must demonstrate that Defendants have adequate “minimum contacts” with Michigan such that finding personal jurisdiction will not offend “ |
5,575,277 | 9,435,945 | 2006-08-31 | United States District Court for the Eastern District of Michigan | Dedvukaj v. Maloney | Dedvukaj v. Maloney, 447 F. Supp. 2d 813 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_36 | is interactive to a degree that reveals specifically intended interaction with residents of the state. | ” With regard to internet contacts, a defendant purposefully avails itself of the privilege of acting in a state if it acts through a website that “ |
5,575,277 | 9,435,945 | 2006-08-31 | United States District Court for the Eastern District of Michigan | Dedvukaj v. Maloney | Dedvukaj v. Maloney, 447 F. Supp. 2d 813 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_50 | if we find, as we do, the first two elements of a prima facie case—purposeful availment and a cause of action arising from the defendant’s contacts with the forum state—then an inference arises that this third factor is also present | It may, thus, be difficult for a novice buyer to understand where eBay stops and MrLister begins. These factors present a situation where Defendants’ experience and extensive use of the eBay website entwine the two entities. Defendants benefited from the interactive nature of the eBay website because it allowed them to take advantage of automatically sent out updates on Defendants’ auctions and encouraged potential buyers to pursue the items and outbid competitors. Where a knowledgeable seller has entangled itself with the eBay website for its own promotion and success, it presents a difficult argument to sever the relationship along bright lines.
In sum, viewing the facts of this case in the light most favorable to Plaintiff Dedvu-kaj, the Court finds that Plaintiff has presented a prima facie case that Defendants activities in Michigan constitute purposeful availment.
b. Arising from Defendants’ activities
The second step of the Mohasco personal jurisdiction test requires that the cause of action must arise from Defendants’ activities within Michigan. Neogen, 282 F.3d at 889-890. This step is satisfied because Plaintiffs complaint stems from a breach of the contract created by submitting the winning bids for the two auctions. The activity that established purposeful availment is the same activity that gave rise to Plaintiff Dedvukaj’s claim. This connection satisfies the “arising from” requirement.
c. Substantial connection with the forum state
The third step of the Mohasco test requires that the acts of Defendants or consequences thereof have a substantial enough connection with the forum state to make the exercise of jurisdiction over the Defendants reasonable. Neogen, 282 F.3d at 889-890. An inference arises that the third factor is satisfied if the first two requirements are met. See also, CompuServe, Inc., 89 F.3d at 1268 (noting that “ |
3,689,787 | 9,435,945 | 2006-06-09 | United States District Court for the Eastern District of Michigan | Ford Motor Co. v. Cross | Ford Motor Co. v. Cross, 441 F. Supp. 2d 837 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_14 | traditional notions of fair play and substantial justice. | Michigan’s long-arm statute provides that any of the following relationships between a party and the state will provide a sufficient basis upon which a court of record may exercise limited personal jurisdiction, and to render personal judgments against an individual based upon an act which creates any of the following relationships:
(1) The transaction of any business within the state.
(2) The doing or causing an act to be done, or consequences to occur, in the state resulting in an action for tort.
(3) The ownership, use, or possession of real or tangible personal property situated within the state.
(4) Contracting to insure a person, property, or risk located within this state at the time of contracting.
(5) Entering into a contract for services to be rendered or for materials to be furnished in the state by the defendant.
(6) Acting as a director, manager, trustee, or other officer of a corporation incorporated under the laws of, or having its principal place of business within this state.
(7) Maintaining a domicile in this state while subject to a marital or family relationship which is the basis of the claim for divorce, alimony, separate maintenance, property settlement, child support, or child custody.
M.C.L. § 600.075.
The Michigan Supreme Court has determined that this state’s long-arm statute confers the broadest possible grant of personal jurisdiction consistent with due process. In order to comply with the due process clause, a plaintiff must establish that significant minimum contacts exist sufficient to satisfy “ |
3,689,787 | 9,435,945 | 2006-06-09 | United States District Court for the Eastern District of Michigan | Ford Motor Co. v. Cross | Ford Motor Co. v. Cross, 441 F. Supp. 2d 837 (2006) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_56 | whether the defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties. | Paragraphs 8, 9 and 30 of the Complaint, together with Paragraph 2 and Exhibits A and B of the Zumwalt Declaration assert that the Ford marks are famous and distinctive, and that they are associated by the consuming public exclusively with Ford. Such allegations, if accepted, will warrant a finding of a likelihood of confusion. Paragraphs 10 and 31 of the Complaint establish that Defendants had no authority from Ford to use their marks. In view of Defendants’ default, plaintiffs factual allegations must be accepted as true. I am satisfied that they fully support a finding of trademark infringement as to each Defendant, and I recommend that the Court enter a judgment for Plaintiff on its Third Claim for Relief.
6. Fourth Claim for Relief (False Designation of Origin and False Advertising)
Ford’s claim for false designation of origin and false advertising is based upon § 43(a) of the Lanham Act. The statute provides that:
(1) any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which -
(A) is likely to cause confusion, or to cause mistake, or to deceive... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1). In both instances, the test is “ |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | a domain name that ... is identical or confusingly similar to [a mark]. | Coal, for ICANN Transparency Inc. v. VeriSign, Inc., 464 F.Supp.2d 948, 952 (N.D.Cal. 2006).
D
In sum, the ACPA precludes the use of “a domain name that... is identical or confusingly similar to [a mark].” |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_52 | use[s] in commerce any ... colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion. | In the instant case, the only “domain names” at issue within the meaning of the ACPA are the second and top level domain combinations owned by defendants, such as “recipes.com” or “com.org,” which do not themselves contain any reference to GEL’s mark. GEL’s argument that these second and top level domain combinations, when used in conjunction with Wildcard DNS, constitute “use of domain name,” in violation of the ACPA, lack force. This is because, for ACPA purposes, the domain name itself, rather than the use of the domain name in conjunction with Wildcard DNS, must be identical or confusingly similar to GEL’s mark. GEL cannot establish that defendants’ second and top level domain combinations are themselves in any way similar to the GOFORIT mark. Defendants are therefore entitled to summary judgment dismissing this claim.
IV
GEL also asserts a claim for service mark infringement under § 32(a) of the Lanham Act, 15 U.S.C. § 1114(1).
A
Defendants argue that GEL cannot recover under § 1114(1) because, assuming that GEL has a legally protectable mark, defendants have not used a reproduction, counterfeit, copy, or colorable imitation of GEL’s mark.
GEL argues in response that defendants’ actions constitute “use” of its mark because their conduct hinders or impedes the user from accessing GoForIt.com by directing users to defendants’ sites, while still displaying the GOFORIT mark on the address bar.
B
Section 1114(1) imposes liability on any entity that “use[s] in commerce any... colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion. |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_46 | [defendant] merely uses domain names to designate host computers on the Internet, | Cf. Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 625-26 (6th Cir.1996) (holding that plaintiffs trademark rights over “1-800-HOLIDAY” did not give it control over defendant’s confusingly similar “1-800-H[zero]LIDAY,” even if its customers sometimes misdialed to defendant’s number, because defendant never promoted the number in connection with plaintiffs trademark). The TLD websites do not display anyone else’s logos, marks, or distinctive trade dress. Defendants have never tried to leverage others’ trademarks into profit by selling specific trademarked keywords to advertisers. Cf. Rescuecom, 562 F.3d at 129-30 (distinguishing Google’s advertisements from WhenU’s advertisements by noting that Google sold specific trademarked keywords to advertisers looking for sponsored ad space, while WhenU took users’ inputs, trademarked or not, to match them with relevant advertisers, without offering any particular trademarks for sale). Moreover, as with the ACPA claim, there is apparently no precedent to support GEL’s argument that a third level domain name can infringe on trademark rights, much less its assertion that activation of the Wildcard function in a third level domain can do so. The court therefore concludes as a matter of law that defendants have not “used” GEL’s trademarks for the purposes of § 1114(1).
2
Nor can GEL recover on the second ground. GEL maintains that defendants have infringed its mark by directing the browser to display “goforit.com.org” in the address bar, as though to pass off “com.org” as “GoForIt.com,” a “colorable imitation” of GEL’s GOFORIT mark. See Bird v. Parsons, 289 F.3d 865, 878 (6th Cir.2002) (citing Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949, 956 (C.D.Cal.1997) (agreeing with analysis in case where “ |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_35 | [t]his is the type of purely nominative function that is not prohibited by trademark law | See Bird v. Parsons, 289 F.3d 865, 878 (6th Cir.2002) (citing Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949, 956 (C.D.Cal.1997) (agreeing with analysis in case where “[defendant] merely uses domain names to designate host computers on the Internet,” and concluding that “ |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | identical to, confusingly similar to, or dilutive of a mark. |
B
To prevail on a claim of unfair competition under Texas law, GEL must show “some finding of an independent substantive tort or illegal conduct” by defendants that interfered with GEL’s ability to conduct its business. See RTLC AG Prods, v. Treatment Equip. Co., 195 S.W.3d 824, 833 (Tex.App.2006, no pet.); Taylor Publ’g Co. v. Jostens, Inc., 216 F.3d 465, 486 (5th Cir.2000). Because GEL is not entitled to recover on any of its claims against defendants and has not produced evidence that would enable a reasonable jury to find that defendants committed an independent substantive tort or illegal conduct, defendants are entitled to summary judgment dismissing this claim.
VIII
The court now considers GEL’s motion for partial summary judgment addressed to defendants’ counterclaims for reverse domain name hijacking, under 15 U.S.C. § 1114(2)(D)(iv), and tortious interference with contract, under Texas common law.
A
GEL moves for summary judgment dismissing defendants’ counterclaim for reverse domain name hijacking, contending that defendants have no evidence that GEL made a material misrepresentation or that defendants’ domain name was transferred, and that defendants cannot prove that they have been damaged. Defendants respond that GEL knowingly misrepresented to Tucows that defendants’ domain names were identical or confusingly similar to GEL’s GOFORIT mark.
B
To prevail on a reverse domain name hijacking claim under 15 U.S.C. § 1114(2)(D)(iv), the claimant must show that a registrar took “action” based on a “knowing and material misrepresentation” by another that a “domain name” is “ |
4,263,476 | 9,435,945 | 2010-10-25 | United States District Court for the Northern District of Texas | Goforit Entertainment, LLC v. Digimedia.Com L.P. | Goforit Entertainment, LLC v. Digimedia.Com L.P., 750 F. Supp. 2d 712 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_15 | prohibiting the registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s mark. | The statute defines “action” as “any action of refusing to register, removing from registration, transferring, temporarily disabling, or permanently canceling a domain name” in the “implementation of a reasonable policy” by the registrar “ |
4,262,267 | 9,435,945 | 2010-10-28 | United States District Court for the Eastern District of Michigan | King v. Ridenour | King v. Ridenour, 749 F. Supp. 2d 648 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_24 | [Tjhis court will not consider facts proffered by the defendant that conflict with those offered by the plaintiff. | In support of its motion to dismiss, Waters has submitted an affidavit of one of its attorneys familiar with Waters’ prior representations that includes the following averments: Waters does not have any offices, employees, personal property, or real estate in Michigan; Water has never commenced any litigation in any court in Michigan; Waters has never advertised in Michigan; its sole representation in Michigan involved an issue which was certified to the Michigan Supreme Court by a Texas appellate court, over Waters’s objection, following a jury trial in a mesothelioma case filed in Texas; the wrongful death action giving rise to the instant action was filed and litigated in a state court in Texas; Waters did not represent any party before the Michigan and Texas probate courts. MacLean aff. ¶¶ 4-9. Plaintiffs have provided no affidavits that contradict these statements.
DISCUSSION
There are two issues before the Court: 1) whether the Court has personal jurisdiction over Waters; and 2) whether Plaintiffs have stated claims for breach of contract and legal malpractice. Personal jurisdiction is a threshold issue, and the Court must address it first before considering the Rule 12(b)(6) challenge to the legal sufficiency of the complaint. See Bird v. Parsons, 289 F.3d 865, 872 (6th Cir.2002).
1. Personal Jurisdiction
A. Legal Standard — Rule 12(b)(2)
The standard on a motion to dismiss for lack of personal jurisdiction depends on whether the district court holds an evidentiary hearing. When it does not hold one, a district court may consider only the pleadings and affidavits on file and must consider them in the light most favorable to the plaintiff. Bird, 289 F.3d at 871. A court cannot weigh the controverting assertions of the party seeking dismissal. CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1262 (6th Cir.1996). See Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 887 (6th Cir.2002) (“ |
4,262,267 | 9,435,945 | 2010-10-28 | United States District Court for the Eastern District of Michigan | King v. Ridenour | King v. Ridenour, 749 F. Supp. 2d 648 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_2 | [T]he fact that Dotster maintains a website that is accessible to anyone over the Internet is insufficient to justify general jurisdiction. | In some cases, even though the, exercise of personal jurisdiction would comport with due process, a court's exercise of jurisdiction over the defendant would be improper because the conduct giving rise to the action does not meet the requirements of Michigan’s long-arm statute. The Michigan Supreme Court’s discussion in Green v. Wilson, 455 Mich. 342, 347-51, 565 N.W.2d 813 (1997) is instructive in this regard. There the court stated:
The coextensive nature of Michigan's long-arm jurisdiction [and due process] becomes pertinent only if the particular acts or status of a defendant first fit within a long-arm statute provision. As the Mallory [v. Conida Warehouses, 113 Mich.App. 280, 317 N.W.2d 597 (1982)] Court implicitly concluded, this does not mean that the two are equal and require a single inquiry based solely upon due process restrictions.
The provisions enumerated in § 705 would be superfluous if the Legislature intended that any activity that is constitutional also satisfy a long-arm statute. Furthermore, the Michigan Legislature could have written language into the statutes that confers jurisdiction to the broadest limits of due process, as other states have done. It chose not to do so.
Id. at 350-51, 565 N.W.2d 813 (emphasis added) (footnote omitted). Only because the Court finds that its exercise of jurisdiction over Water would offend notions of due process does the Court dispense with an application of Michigan's long-arm statute here.
3
. The website’s accessibility to Michigan residents is insufficient by itself to establish general jurisdiction in Michigan. See Henning v. Suarez Corp., 713 F.Supp.2d 459, 469-70 (E.D.Pa.2010) (citing cases); see also Bird, 289 F.3d at 874 (" |
4,262,267 | 9,435,945 | 2010-10-28 | United States District Court for the Eastern District of Michigan | King v. Ridenour | King v. Ridenour, 749 F. Supp. 2d 648 (2010) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | substantial connection with the defendant’s in-state activities. | The court in Shepherd, however, did not consider lobbying as a sufficient contact by itself to establish general jurisdiction. Id. at 865. Rather, it found that lobbying was one factor among many that it could consider. Furthermore, and more importantly, the court recognized a “fundamental difference” between lobbying activities before the federal government and lobbying activities before a state government. Id. With respect to the former, it stated:
It makes sense to exclude a defendant's lobbying contacts with the federal government from a local court’s personal jurisdiction analysis because when a defendant travels to the District of Columbia for purposes of petitioning the federal government, it intends to impact the federal government but not necessarily the forum itself.
Id. at 865-66.
Because Waters lobbied U.S. Senators from Michigan in Washington, D.C., on an asbestos bill of national importance, there is no reason for the Court to consider these activities in its general jurisdiction analysis.
5
. In the Court's view, the asbestos locator on Waters's website is not “advertising” sufficient to find purposeful availment. It is specific to no one state, and merely provides a public service of notifying interested persons of locations potentially containing asbestos. To find the locator sufficient advertising to constitute purposeful availment in Michigan would mean Waters has purposefully availed itself of the privileges of acting in all fifty states simply by its use of a website. This would be an odd result. But even if the locator was sufficient to establish purposeful availment, the second Mohasco factor would be absent because Plaintiffs’ lawsuit has no connection at all with the locator. See Bird, 289 F.3d at 875 (second Mohasco factor requires that cause of action have a “ |
5,751,277 | 9,435,945 | 2009-11-13 | United States District Court for the Eastern District of Michigan | Weather Underground, Inc. v. Navigation Catalyst Systems, Inc. | Weather Underground, Inc. v. Navigation Catalyst Systems, Inc., 688 F. Supp. 2d 693 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_32 | purposefully avail[ed] [itself] of the privilege of acting in the forum state or causing a consequence in the forum state | Id. at 475, 105 S.Ct. 2174 (quoting Keeton v. Hustler Magazine, 465 U.S. 770, 774, 104 S.Ct. 1473, 79 L.Ed.2d 790 (1984); Helicopteros, 466 U.S. at 417, 104 S.Ct. 1868).
At the outset, the Court observes that a defendant cannot be subject to suit in a particular state merely because it maintained a Web site that could be viewed in the forum. Bird, 289 F.3d at 874. Instead, the Court must evaluate the relationship of NCS, Michigan, and the cause of action. Accord Mohasco, 401 F.2d at 381 (court must first determine whether the defendant “ |
5,751,277 | 9,435,945 | 2009-11-13 | United States District Court for the Eastern District of Michigan | Weather Underground, Inc. v. Navigation Catalyst Systems, Inc. | Weather Underground, Inc. v. Navigation Catalyst Systems, Inc., 688 F. Supp. 2d 693 (2009) | 2002-05-21 | United States Court of Appeals for the Sixth Circuit | Bird v. Parsons | Bird v. Parsons, 289 F.3d 865 (2002) | 9435945_40 | [a] substantial connection with [a] defendant’s in-state activities, | In other words, so long as the cause of action has “ |