UBID, Inc. v. The GoDaddy Group, Inc. et al
Filing
104
MEMORANDUM OPINION signed by the Honorable Charles P. Kocoras on 4/11/2011.Mailed notice(sct, )
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SUNRISE BIDDERS, INC.,
Plaintiff,
vs.
THE GODADDY GROUP, INC. et al,
Defendants.
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09 C 2123
MEMORANDUM OPINION
CHARLES P. KOCORAS, District Judge:
This matter is before the Court on the motion of The Go Daddy Group, Inc. and
GoDaddy.com, Inc. (collectively referred to as “GoDaddy”) to transfer venue to the
United States District Court of Arizona pursuant to 28 U.S.C. § 1404(a). For the reasons
set forth below, the motion is denied.
BACKGROUND
The following facts are taken from plaintiff Sunrise Bidders, Inc.’s (“Sunrise”)
complaint and GoDaddy’s brief in support of its motion to transfer. GoDaddy is an
Arizona corporation with its principal place of business in Scottsdale. GoDaddy is
engaged in the business of providing, in exchange for a fee, internet-based website
hosting and domain name registration. GoDaddy also offers online advertising
(“CashParking”) and online auction services. Sunrise is a Delaware corporation with
its principal place of business in Itasca, Illinois. After purchasing substantially all the
assets of uBid, Inc., (“uBid”), a Delaware corporation with its principal place of
business in Chicago, Sunrise became the successor-in-interest to uBid. On April 6,
2009, Sunrise filed suit against GoDaddy in the Northern District of Illinois. According
to the allegations of the complaint, GoDaddy trafficked and used, in violation of the
Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) (“ACPA”),
approximately 170 registered domain names with a bad faith intent to profit from
Sunrise’s trademarks. On November 5, 2009, this Court granted GoDaddy’s motion to
dismiss for lack of personal jurisdiction. On September 29, 2010, the Court of Appeals
reversed, holding that GoDaddy was subject to specific jurisdiction in Illinois. Pursuant
to 28 U.S.C. § 1404(a), GoDaddy now moves to transfer venue to the United States
District Court of Arizona.
LEGAL STANDARD
Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in
the interest of justice, a district court may transfer any civil action to any other district
or division where it might have been brought.” 28 U.S.C. § 1404(a). To determine
whether transfer will serve the convenience of the parties and witnesses, and promote
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the interests of justice, the court must examine both the private and the public interests
at stake. Nalco Co., v. Envtl. Mgmt. Inc., 694 F. Supp. 2d 994, 998 (N.D. Ill. 2010). The
private interests include : (1) the plaintiff’s choice of forum; (2) the situs of material
events; (3) the relative ease of access to sources of proof; (4) the convenience of the
witnesses; and (5) the convenience to the parties of litigating in the respective forums.
Sassy, Inc., v. Berry, 406 F. Supp. 2d 874, 876 (N.D. Ill. 2005). The “interest of justice”
factors include: (1) the congestions of the respective court dockets; (2) prospects for a
speedy trial; and (3) the courts’ familiarity with the applicable law. Coffey v. Van Dorn
Iron Works, 796 F.2d 217, 221 (7th Cir.1986). Section 1404(a) does not indicate the
relative weight to be accorded to each factor. Instead, the district court has discretion
to “adjudicate motions for transfer according to an individualized, case-by-case
consideration of convenience and fairness.” Stewart Org., Inc., v. Ricoh Corp., 487 U.S.
22, 29 (1988). With these principles in mind, we turn to the present motion.1
DISCUSSION
I.
Private Interests Factors
GoDaddy contends that Sunrise’s choice of forum should be given minimal
consideration because the situs of material events in this case is Arizona. A plaintiff's
1
The moving party also bears the burden of “establishing, by reference to particular circumstances, that the
transferee forum is clearly more convenient.” Coffey, 796 F.2d at 219-20. In the instant case, venue is proper in the
Northern District of Illinois and the parties do not dispute the propriety of venue in the United States District Court of
Arizona. W e will therefore confine our discussion to whether the convenience of the parties and witnesses and the
interests of justice favor transfer.
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choice of forum is generally given substantial weight, particularly when it is the
plaintiff's home forum. Vandeveld v. Christoph, 877 F. Supp. 1160, 1167 (N.D. Ill.
1995). Unless the balance is strongly in favor of the defendant, the plaintiff's choice of
forum should rarely be disturbed. In re Nat'l Presto Indus., Inc., 347 F.3d 662, 664 (7th
Cir. 2003). A plaintiff's choice of forum may be afforded less deference, however, when
another forum has a stronger relationship to the dispute or when the forum of plaintiff's
choice has no significant connection to the situs of material events. Gueorguiev v. Max
Rave, LLC, 526 F. Supp. 2d 853, 857 (N.D. Ill. 2007). In the instant matter, GoDaddy
focuses on the allegedly “infringing activity” and argues that the conduct giving rise to
the dispute occurred in Arizona where GoDaddy maintains its computer servers and
operates its parked page and auction services. Sunrise, on the other hand, centers its
argument on the “injury” aspect of the trademark infringement and points to Illinois, the
location of the trademark owner. “[A] substantial part of the events triggering trademark
infringement may occur both in the district where the infringer is located and [the
district] where the trademark owner is located and confusion is likely to occur.” Nw.
Corp. v. Gabriel Mfg. Co., No. 96 C 2004, 1996 WL 73622, at *5 (N.D. Ill. Feb. 16,
1996). Under the present circumstances, Arizona and Illinois neutralize one another
since the infringing activity and the injury took place in these two judicial districts.
Relatedly, in a case such as the one at hand, the situs of material events is potentially
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everywhere Sunrise’s website is accessible; Sunrise could have easily sued in many
different districts since GoDaddy’s business is entirely conducted on the internet.
However, since Sunrise chose Illinois, its home forum, as the preferred venue for this
action, we will defer to Sunrise’s choice of forum if other factors remain equal between
the parties.
GoDaddy next contends that we should transfer venue because sources of proof
are more accessible in Arizona where storage facilities, computer servers, and document
custodians are located. In the instant matter, both judicial districts are sources of proof,
as relevant documents of the two companies are either located in Arizona or Illinois. We
agree with GoDaddy that GoDaddy’s business records likely will be the main focus of
discovery since its conduct is the subject of the lawsuit. However, GoDaddy has failed
to establish that it would be inconvenient or impractical to transfer documents to Illinois
since electronic information can conveniently be accessed from, and stored in, any
location. Irrespective of where the judicial proceedings take place, all relevant
documents will unavoidably have to be collected, downloaded or copied, and
transferred to counsel in Arizona and/or Illinois. Accordingly, this factor does not favor
or disfavor transfer of venue.
GoDaddy next argues that Arizona is more convenient for its witnesses than
Illinois. In assessing this factor, the Court considers, among other factors, the number
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of witnesses located in each forum; the nature, quality and importance of their
testimony; and whether the witnesses can be compelled to testify. Event News Network,
Inc., v. Thill, No. 05 C 2972, 2005 WL 2978711, at *5 (N.D. Ill. Nov. 2, 2005).
GoDaddy has identified seven potential witnesses residing in Arizona: four witnesses
will provide information regarding GoDaddy’s development, oversight, technical
aspects, and operation of the parked page, CashParking, and domain auction service;
and the remaining three will analyze aspects of GoDaddy’s contractual relationships
with domain registrants, complaint procedure, and registration records for the domain
names. On the other hand, Sunrise has disclosed five potential witnesses who are
knowledgeable of Sunrise’s business operations and Sunrise’s acquisition, ownership,
registration, and protection of trademarks. A review of the record before the Court
reveals that it would be as inconvenient for GoDaddy to litigate this case in Illinois as
it would be for Sunrise to litigate it in Arizona. A transfer of venue to Arizona would
therefore merely shift the inconvenience to Sunrise. Heller Financial, Inc., v. Midwhey
Powder Co., 883 F.2d 1286, 1294 (7th Cir. 1989).
Also in connection with the inconvenience for witness factor, GoDaddy indicates
that Mr. Kobinski, a former employee, may be called to testify as to the development
of GoDaddy’s parked page service. GoDaddy further claims that as a non-party, Mr.
Kobinski is outside the compulsory process of the Northern District of Illinois. Sunrise
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retorts that GoDaddy has already disclosed three other employees who would testify
about the same matter and that Mr. Kobinski is a redundant witness. We agree with
Sunrise. The movant bears the burden of establishing what the witness’s testimony will
be and how vital that testimony will be to the case. Rohde v. Cent. R.R. of Indiana, 951
F. Supp. 746, 748 (N.D. Ill. 1997). Here, GoDaddy has failed to show how Mr.
Kobinski’s testimony will prove vital to the litigation. In addition, GoDaddy has not
indicated that the third-party witness would resist appearing in Illinois. It is presumed
that GoDaddy’s witness will testify voluntarily. Clearly, the inconvenience to witnesses
factor is inconsequential to the transfer of venue.
Finally, the Court finds that the convenience to the parties element is
insignificant in the instant case. Sunrise argues that GoDaddy is financially more
capable of handling the expenses of trial. GoDaddy argues that Sunrise has not put forth
any evidence indicating that it would be financially burdened by the costs of litigation.
However, neither party has offered evidence showing that litigating the case in another
district would be untenable for its own finances. “A party arguing against or for transfer
because of inadequate means must offer documentation to show that transfer (or lack
thereof) would be unduly burdensome to his or her finances.” Ruppert v. Principal Life
Ins. Co., No. 06 C 903, 2007 WL 2025233, at *6 (S.D. Ill. July 9, 2007). Absent any
information regarding the parties’ financial inability to litigate in another judicial
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district, we conclude that both litigants have the financial wherewithal to litigate in
either forum.
II.
Public Interest Factors
The interests of justice component relates to the efficient administration of the
court system. Courts will consider, among other factors, the relationship of each
community to the controversy, and the respective desirability of resolving controversies
in each locale. Research Automation, Inc., v. Schrader-Bridgeport Int’l, Inc., 626 F.3d
973, 978 (7th Cir. 2010).2
GoDaddy argues that Arizona is the community with the greatest ties to the
action because the activities, practices, and evidence at issue are entirely located in
Arizona. As previously discussed, we recognize that Arizona aggregates a significant
portion of the relevant events; however, Sunrise’s injury took place in Illinois. “Illinois
has a strong interest in adjudicating injuries to the intellectual property rights of
businesses that operate in this state.” Sch. Stuff, Inc., v. Sch. Stuff, Inc., No. 00 C 5593,
2001 WL 558050, at *6 (N.D. Ill. May 21, 2001). Because Illinois has a discernible
relationship with the present matter, we conclude that this factor cannot influence the
transfer of venue.
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The parties do not dispute that other relevant factors such as the congestion of docket, the likelihood of a
speedy trial, and the respective courts’ familiarity with the relevant law, are neutral. Therefore, the Court declines to
address these factors.
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GoDaddy finally contends that because Sunrise is seeking preliminary and
permanent injunctive relief, Arizona is the most desirable forum for resolving this
controversy. More specifically, Sunrise asks the Court to enjoin GoDaddy from
registering, using, trafficking, typosquatting, cybersquatting, cyberpirating, and/or
domain tasting, any domain name that incorporates or is confusingly similar to the
distinctive valuable marks of Sunrise. Notwithstanding the fact that both districts are
equally armed to prevent a party from engaging in illegal conduct, and that injury can
be felt wherever Sunrise’s website is accessible, the Court finds GoDaddy’s argument
persuasive. The computer servers and the website, subject of the lawsuit, are
respectively located and maintained in Arizona. If relief is ultimately granted,
enforcement will primarily take place in Arizona. Therefore, Arizona is the better forum
to enforce and monitor any injunctive relief; this factor favors transfer.
However, considering the totality of the public and private interests, this Court
concludes that GoDaddy has not met its burden of establishing that transfer is warranted
under the circumstances. “The burden is on the moving party to demonstrate that the
balance of the factors weighs heavily in favor of transfer and that transfer would not
merely shift inconvenience from one party to another.” Graham v. UPS, 519 F. Supp.
2d 801, 809 (N.D. Ill. 2007). Therefore, the Northern District of Illinois is the
appropriate forum for this action.
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CONCLUSION
Based on the foregoing analysis, the motion to transfer venue to the United States
District Court of Arizona is denied.
Charles P. Kocoras
United States District Judge
Dated: April 11, 2011
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