Edible Arrangements LLC et al v. Provide Commerce, Inc.
Filing
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ORDER denying Defendant's 51 Motion for Judgment on the Pleadings. See attached Memorandum of Decision. Plaintiffs' 67 Motion for Leave to File a Sur-Reply is denied as moot. Signed by Judge Vanessa L. Bryant on 3/24/15. (De Palma, C)
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
EDIBLE ARRANGEMENTS, LLC, and
EDIBLE ARRANGEMENTS
INTERNATIONAL, LLC,
Plaintiffs,
v.
PROVIDE COMMERCE, INC.,
Defendant.
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3:14-CV-00250 (VLB)
March 24, 2015
MEMORANDUM OF DECISION DENYING
DEFENDANT‟S MOTION FOR JUDGMENT ON THE PLEADINGS [Dkt. 51]
I.
Introduction
The Plaintiffs, Edible Arrangements, LLC, and Edible Arrangements
International, LLC, bring this action against Defendant Provide Commerce, Inc.
alleging trademark infringement in violation of 15 U.S.C. § 1114(1)(A) (Count I);
false designation of origin or sponsorship and unfair competition in violation of
15 U.S.C. § 1125(A) (Count II); trademark dilution in violation of 15 U.S.C. §
1125(C) (Count III); common law trademark infringement (Count IV); unfair
competition and deceptive trade practices in violation of the Connecticut Unfair
Trade Practices Act, Conn. Gen. Stat. 42-110b(a) et seq. (“CUTPA”) (Count V); and
violations of the Anticybersquatting Consumer Protection Act, 15 U.S.C. §
1125(D) (“ACPA”) (Count VI). Defendant has moved for judgment on the
pleadings on Count VI, arguing that Plaintiffs‟ ACPA claim must be dismissed
pursuant to Fed. R. Civ. P. 12(b)(7) for failure to join a party under Rule 19. For
the reasons that follow, Defendants‟ Motion for Judgment on the Pleadings is
DENIED.
II.
Factual Background
Unless otherwise noted, the following facts and allegations are taken from
Plaintiffs‟ First Amended Complaint [Dkt. 32] and deemed to be true for the
purpose of this Motion.
Plaintiff Edible Arrangements, LLC is a limited liability company organized
under the laws of the State of Connecticut with its principal place of business at
95 Barnes Road, Wallingford, Connecticut. [Dkt. 32 at ¶ 2.] Plaintiff Edible
Arrangements International, LLC is a limited liability company organized under
the laws of the State of Delaware with its principal place of business at the same
address. [Id. at ¶ 3.] Plaintiffs allege that, both online and through over 1000
stores throughout the United States, they sell arrangements of fresh fruit
sculpted into the shapes of flowers and arranged in containers that mimic floral
bouquets, gourmet chocolate-dipped fruit, fruit salads, and other fruit-based
products. [Id. at ¶¶ 11–12.] Defendant Provide Commerce, Inc. (“Provide
Commerce”) is a corporation organized under the laws of the State of Delaware,
with its principal place of business at 4840 Eastgate Mall, San Diego, California.
[Id. at ¶ 4.] Provide Commerce is an online retailer that sells flowers, plants, gift
baskets and fresh and chocolate-dipped fruit under multiple brands, including
Shari‟s Berries. [Id. at ¶ 17.]
Plaintiffs allege that Edible Arrangements, LLC owns multiple United
States registrations for EDIBLE ARRANGEMENTS and EDIBLE ARRANGEMENTS
and DESIGN, which it has licensed to Edible Arrangements International, LLC for
use and sublicensing in connection with the sculpted fruit arrangements and
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other fruit products it sells. [Id. at ¶¶ 9–10.] Plaintiffs also promote and sell
products via the Internet at the website www.ediblearrangements.com. [Id. at ¶
12.]
In their First Amended Complaint, Plaintiffs allege that in 2010, and then
again in 2014, Provide Commerce used Plaintiffs‟ EDIBLE ARRANGEMENTS
trademark as a search engine keyword to trigger advertisements of Provide
Commerce‟s brands, and also used Plaintiffs‟ mark and a confusingly similar
mark in the body of Provide Commerce‟s Google advertisements as a description
of the goods offered by Provide Commerce. [Id. at ¶¶ 18–23.] Because the
Motion for Judgment before the Court does not seek to dismiss the claims based
on these allegations, the Court will not elaborate upon them here. For purposes
of the current Motion, the relevant facts are as follows.
Plaintiffs allege that on or around February of 2014, Provide Commerce
began using domain names that constituted common misspellings of Plaintiffs‟
website, to wit, www.ediblearragements.com and www.edibelarrangements.com
(the “typosquatting domains”). [Id. at ¶ 24.] Plaintiffs allege that consumers who
inadvertently misspell Plaintiffs‟ URL when entering it into an internet browser
are diverted to Provide Commerce‟s www.berries.com website. [Id.] Plaintiffs
further allege upon information and belief that Provide Commerce has also
registered other typosquatting domains that are confusingly similar to Plaintiffs‟
marks.1 [Id.] Plaintiffs claim that Provide Commerce has “registered, trafficked in
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In their Opposition to Defendant‟s Motion for Judgment on the Pleadings,
Plaintiffs represent that in May 2014, they learned of a third misspelled site that
also rerouted to berries.com, spelled “ediblearangements.com.” [Dkt. 63 at 4.]
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and used” these typosquatting domains with the intent and purpose of diverting
consumers and business away from Plaintiffs. [Id. at ¶¶ 64–67.]
According to the briefings filed by the parties, the typosquatting domains
appear to be registered through two privacy services companies, Whois Privacy
Services Pty Ltd. (“Whois Privacy Services”) and Fundacion Private Whois
(“Fundacion”), which shield the identity of the domain name registrant. [See Dkt.
52 at 6; Dkt. 63 at 4 and Exs. 2–4.] As a result, at this stage in the litigation the
true owner of each of these typosquatting domains remains unknown. [Dkt. 63 at
2.] However, Provide Commerce denies ownership, control, involvement or
awareness of the domain names, or any domain names similar to Plaintiffs‟
website URL. [Dkt. 35 at ¶ 24; Dkt. 55 at ¶¶ 4–12.] Provide Commerce also denies
it had any knowledge of the redirection of traffic from those domains to its
website before Plaintiffs filed their First Amended Complaint. [Dkt. 55 at ¶¶ 16–
17.] Based on these denials, Provide Commerce now moves for judgment on the
pleadings pursuant to Fed. R. Civ. P. 12(c) on the grounds that the actual domain
name registrant(s) and the two privacy services are necessary parties pursuant to
Fed. R. Civ. P. 19.
III.
Standard of Review
Rule 12(c) provides that “[a]fter the pleadings are closed––but early
enough not to delay trial––a party may move for judgment on the pleadings.”
Fed. R. Civ. P. 12(c). When a Rule 12(c) motion is used by the defendant as a
vehicle for raising certain procedural defects, the district court will apply the
same standards for granting the appropriate relief or denying the motion as it
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would have employed had the motion been brought prior to the defendant's
answer under Rule 12(b). See 5C C. Wright & A. Miller, Fed. Prac. & Proc. Civ. §
1367, at 218 (3d ed. 2004); see, e.g., U.S. ex rel. Phipps v. Comprehensive
Community Dev. Corp., 152 F. Supp. 2d 443, 450–49 (S.D.N.Y. 2001); Marceline v.
Town of Darien, 974 F. Supp. 2d 123, 128 (D. Conn. 2013). Thus, where a motion
for judgment under Rule 12(c) is based on the failure to join a necessary party,
the motion will be treated like a motion to dismiss under Rule 12(b)(7). See, e.g.,
Roh v. Devack, 3:07-CV-1901 CSH, 2010 WL 5069874, at *2 (D. Conn. Dec. 3, 2010).
Pursuant to Rule 12(b)(7), a district court may dismiss a complaint for
failure to join a required party under Rule 19, which governs joinder of persons
needed for just adjudication. Fed. R. Civ. P. 12(b)(7); see, e.g., Known Litig.
Holdings, LLC v. Navigators Ins. Co., 934 F. Supp. 2d 409, 414–15 (D. Conn. 2013).
In considering a motion to dismiss pursuant to Rule 19, the Court first determines
whether an absent party is “necessary” under Rule 19(a), and then undertakes a
Rule 19(b) analysis as to whether the party is also “indispensable” such that
dismissal would be required in that party‟s absence. Id. at 415.
Upon review of a Rule 12(b)(7) motion, like any motion under Rules 12(b) or
12(c), the court is required to accept all factual allegations in the complaint as
true and to draw inferences in favor of the non-moving party. 5C C. Wright & A.
Miller, Fed. Prac. & Proc. Civ. § 1359 (3d ed. 2004); see, e.g., Tross v. Ritz Carlton
Hotel Co., LLC, 928 F. Supp. 2d 498, 507, n. 2 (D. Conn. 2013); Dumann Realty,
LLC v. Faust, 267 F.R.D. 101, 101 n. 1 (S.D.N.Y. 2010). The district judge is not
limited to the pleadings when reviewing a 12(b)(7) motion, see, e.g., Holland v.
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Fahnestock & Co., Inc., 210 F.R.D. 487, 495 (S.D.N.Y. 2002) (collecting cases), and
the court can deny the motion when there is insufficient or contradictory
evidence concerning whether a party is a necessary party within the meaning of
Rule 19(a). See, e.g., Nanjing Textiles IMP/EXP Corp., Ltd. v. NCC Sportswear
Corp., 06 CIV. 52 (JGK), 2006 WL 2337186, at *8 (S.D.N.Y. Aug. 11, 2006); S&S
Mach. Corp. v. Gen. Motors Corp., 93 CIV. 3237 (CSH), 1994 WL 529867, at *4
(S.D.N.Y. Sept. 28, 1994).
IV.
Discussion
The Court begins with the threshold question in any motion for judgment or
motion to dismiss for failure to join a party under Rule 19, which is whether that
party is “necessary” under Rule 19(a). A party is necessary under Rule 19(a) and
must be joined if:
(A) in that person's absence, the court cannot accord
complete relief among existing parties; or (B) that person
claims an interest relating to the subject of the action and
is so situated that disposing of the action in the person's
absence may: (i) as a practical matter impair or impede
the person's ability to protect the interest; or (ii) leave an
existing party subject to a substantial risk of incurring
double, multiple, or otherwise inconsistent obligations
because of the interest.
Fed. R. Civ. P. 19(a). This threshold determination by the Court “must be based
on the state of the pleadings at the time the motion is brought. Royal Ins. Co. of
Am. v. Caleb V. Smith & Son, Inc., 3:90CV651(WWE), 1997 WL 835058, at *1 (D.
Conn. June 16, 1997) (citing Associated Dry Goods v. Towers Fin. Corp., 920 F.2d
1121, 1124 (2d Cir. 1990)).
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Defendant argues that Whois Privacy Services, Fundacion, and the
unknown domain name registrant(s) are necessary parties under Rule 19(a)
because the Court cannot accord complete relief to Plaintiffs in these parties‟
absence, and because the absent parties “claim an interest” in the subject of the
action. [Dkt. 52 at 10–11.] In support of this claim, Defendant points to the fact
that Plaintiffs seek an order enjoining Defendant from, inter alia, registering,
using, transferring, selling, conveying or assigning to any individual or entity
other than Plaintiffs any typosquatting domains, as well as an order directing
Defendant to transfer to Plaintiffs its typosquatting domain registrations, and any
other domain names that use names, words, designations, or other symbols
confusingly similar to Plaintiffs‟ marks. [Dkt. 32 at XI.J; I(4)-(5).] In essence,
Defendant‟s argument is that Plaintiffs have sued the wrong party: Provide
Commerce denies that it registered, owns or controls the typosquatting domains,
claims that the domains are not in Provide Commerce‟s possession, and asserts
that as a result, Provide Commerce cannot transfer the domain names to
Plaintiffs and thus cannot furnish “complete relief” to Plaintiff. [Dkt. 52 at 11.]
Alternatively, Provide Commerce claims that “transferring away” control of the
typosquatting domain names would affect the interests of the absent parties. [Id.]
Defendant‟s argument misapprehends both the current procedural posture
of this case and the definition of a “necessary party” as that term is interpreted
under Rule 19. On a motion for judgment on the pleadings, the Court is required
to accept Plaintiffs‟ well-pled allegations as true, and Plaintiffs have put forth
sufficient factual content to support their claim that Defendant, whether through
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or with other parties, acquired the use of and profited from the typosquatting
domains. In this procedural posture, the only inference the Court may properly
draw from Defendant‟s denial of these allegations is that there are disputed
issues of fact regarding the Defendant‟s relationships to the proposed parties
that must be resolved before its motion for joinder could be granted. For
example, as Plaintiffs point out, if through discovery it becomes apparent that the
true owner of the typosquatting domains registered the domain names on behalf
of Provide Commerce, this domain name registrant would be considered an agent
and would not be a necessary party under Rule 19. See, e.g., Direct Energy Mktg.
Ltd. v. Duke/Louis Dreyfus, LLC, 50 Fed. Appx. 469, 472 (2d Cir. 2002) (holding
that an agent is not a necessary party when one sues a principal). Likewise, if it
is determined that the privacy services and/or domain name registrant(s)
participated with Defendant in the infringement of Plaintiffs‟ mark under the
ACPA––which imposes liability on both the domain name registrant and the
registrant‟s authorized licensee, see 15 U.S.C. § 1125(d)(1)(D)––the proposed
parties would be jointly and severally liable for the infringement, and Plaintiffs
would not be required to join them to this action. See, e.g., Bassett v.
Mashantucket Pequot Tribe, 204 F.3d 343, 358 (2d Cir. 2000) (holding that a
plaintiff is not required to join all infringers in a single action). As the Second
Circuit has noted, “[a] party is necessary under Rule 19(a)(1) only if in that party's
absence „complete relief cannot be accorded among those already parties.‟”
Mastercard Int'l Inc. v. Visa Int'l Service Ass'n Inc., 471 F.3d 377, 385 (2d. Cir.
2006) (emphasis added). Taking the facts alleged in the Complaint as true,
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Plaintiffs can obtain complete relief as to Provide Commerce without bringing in
any other parties, even if Plaintiffs must ultimately pursue additional litigation
against others to obtain all the relief Plaintiffs seek in this matter.
In sum, an analysis of whether Whois Privacy Services, Fundacion, and the
unknown domain name registrant(s) are necessary parties requires the
determination of Defendant‟s relationships (or lackthereof) to those parties.
Accepting Plaintiffs‟ allegations as true, these relationships do not bear any of
the indicia of a “necessary party” as that term is construed by Rule 19, and the
Court cannot make a determination otherwise based on Defendants‟ contrary
assertions. Furthermore, where a party does not qualify as necessary under Rule
19(a), the Court need not decide whether its absence warrants dismissal under
Rule 19(b). See Viacom Int’l v. Kearney, 212 F.3d 721, 724 (2d Cir. 2000).
Accordingly, Defendant‟s Motion is denied. Contrary to Defendant‟s
position that no more can be done to prove the nonexistence of a legally
significant relationship with the absent parties, the Court trusts that discovery
will uncover the nature of Defendant‟s relationship to both the privacy services
and the true registrant(s) of the typosquatting domains.
V.
Conclusion
For the foregoing reasons, Defendant‟s [Dkt. 51] Motion for Judgment on
the Pleadings is DENIED.
IT IS SO ORDERED.
________/s/______________
Hon. Vanessa L. Bryant
United States District Judge
Dated at Hartford, Connecticut: March 24, 2015
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