John Beal, Inc. v. Roofpros, Inc. et al
Filing
44
MEMORANDUM AND ORDER. (See Full Order.) IT IS HEREBY ORDERED that plaintiff John Beal, Inc.'s Motion to Dismiss Web.com Group Without Prejudice, for Joinder of a New Foreign Defendant, and for Leave to File an Amended Complaint 40 is grant ed in part and denied as moot in part as described in this Memorandum and Order. IT IS FURTHER ORDERED that plaintiff's claims against defendant Web.com Group, Inc., are dismissed without prejudice subject to the following condition: If plainti ff refiles these claims against Web.com Group, Inc., it must pay to defendant Web.com Group, Inc., any costs, including reasonable attorney's fees, it incurred in this action. IT IS FURTHER ORDERED that the Clerk of Court shall docket plaintif f's Proposed Amended Complaint (ECF # 43 ) to reflect its filing date to be the date of this Memorandum and Order. IT IS FURTHER ORDERED that the Case Management Order entered February 3, 2017 (ECF # 34 ), the Supplemental Case Management Order entered June 2, 2017 (ECF # 38 ), and the Order Referring Case to Alternative Dispute Resolution entered June 2, 2017 (ECF # 39 ) are vacated. Signed by District Judge Catherine D. Perry on 7/19/2017. (CBL)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
JOHN BEAL, INC.,
Plaintiff,
v.
ROOFPROS, INC., et al.,
Defendants.
)
)
)
)
)
)
)
)
)
No.
4:16 CV 1151 CDP
MEMORANDUM AND ORDER
In this trademark infringement action, plaintiff John Beal, Inc., claims that
defendants Roofpros, Inc. (a foreign corporation located in South Africa), and
Web.com Group, Inc., wrongfully used its trademark and logo to solicit business
from homeowners who thought they were doing business with plaintiff. Through
the course of discovery, plaintiff learned that All Response Media, Ltd. (an entity
located in the United Kingdom), committed the alleged offending conduct it had
attributed to Web.com and that Web.com is not liable for the conduct at issue in this
case. In a single motion filed with the Court, plaintiff now seeks to: 1) dismiss
Web.com from this action without prejudice, 2) join a new foreign defendant to the
case, and 3) amend the complaint to add this defendant and refine its claims of
trademark infringement. I will dismiss Web.com from this action and permit
plaintiff to amend its complaint. I will deny as moot plaintiff’s request to join the
newly named foreign defendant.
Motion to Dismiss Without Prejudice
Under Fed. R. Civ. P. 41(a)(1), a plaintiff may voluntarily dismiss its
complaint against a defendant without prejudice if the dismissal occurs before the
defendant has either answered or moved for summary judgment. Otherwise, “an
action may be dismissed at the plaintiff's request only by court order, on terms that
the court considers proper.” Fed. R. Civ. P. 41(a)(2).
Here, defendant Web.com answered plaintiff’s complaint and proceeded
through discovery and other preliminary scheduling and motion practice.
Web.com agrees that plaintiff’s case against it should be dismissed and does not
object to a dismissal without prejudice. Web.com argues, however, that the
circumstances of this case require that terms of dismissal be imposed, and
specifically, that dismissal without prejudice be conditioned on plaintiff’s payment
of its attorney’s fees and costs incurred in this action in the event plaintiff refiles the
case against it. Plaintiff did not respond to this proposal. I agree with Web.com
that this condition is proper here. Therefore, under Fed. R. Civ. P. 41(d), I will
order that if plaintiff files an action based on or including the same claim against
defendant Web.com, plaintiff shall pay to Web.com all of Web.com’s costs of this
action, including its reasonable attorney’s fees incurred in defending the action.
These costs and fees will be determined at the time of the new filing. See Jeffries v.
Missouri Metals, LLC, No. 4:13-CV-1921 JAR, 2014 WL 1846305, at *3 (E.D. Mo.
May 8, 2014).
-2-
Motion for Leave to File an Amended Complaint /
Motion to Join Foreign Defendant
Plaintiff seeks leave to file an amended complaint naming Roofpros, Inc., and
All Response Media, Ltd., as defendants. I will grant this request. Plaintiff shall
effect service of process upon these foreign defendants in accordance with the
Federal Rules of Civil Procedure and shall promptly provide proof of service under
Fed. R. Civ. P. 4(l), so that this action – which has now been pending in this Court
for over a year1 – may proceed.2
Because the amended complaint adds All Response Media, Ltd., as a
defendant to this action, plaintiff’s separate request to join this foreign defendant
will be denied as moot.
Accordingly,
IT IS HEREBY ORDERED that plaintiff John Beal, Inc.’s Motion to
Dismiss Web.com Group Without Prejudice, for Joinder of a New Foreign
Defendant, and for Leave to File an Amended Complaint [40] is granted in part and
denied as moot in part as described in this Memorandum and Order.
IT IS FURTHER ORDERED that plaintiff’s claims against defendant
Web.com Group, Inc., are dismissed without prejudice subject to the following
1
Plaintiff originally filed this action in State court in November 2015. After being named a
defendant in May 2016, Web.com removed the action to this Court in July 2016 on the basis of
federal question and diversity jurisdiction.
2
I note that despite being served with process in October 2016, defendant Roofpros never
answered or otherwise appeared in this action.
-3-
condition: If plaintiff refiles these claims against Web.com Group, Inc., it must pay
to defendant Web.com Group, Inc., any costs, including reasonable attorney’s fees,
it incurred in this action.
IT IS FURTHER ORDERED that the Clerk of Court shall docket plaintiff’s
Proposed Amended Complaint (ECF #43) to reflect its filing date to be the date of
this Memorandum and Order.
IT IS FURTHER ORDERED that the Case Management Order entered
February 3, 2017 (ECF #34), the Supplemental Case Management Order entered
June 2, 2017 (ECF #38), and the Order Referring Case to Alternative Dispute
Resolution entered June 2, 2017 (ECF #39) are vacated.
_________________________________
CATHERINE D. PERRY
UNITED STATES DISTRICT JUDGE
Dated this 19th day of July, 2017.
-4-
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?