Dentsply International, Inc. V. Dental Brands for Less LLC

Filing 28

OPINION AND ORDER re: 15 MOTION to Change Venue and Alternatively to Dismiss First Amended Complaint filed by Dental Brands for Less LLC: For the foregoing reasons, Defendant's motion is DENIED. In accordance with Individual Rule III.B.4, the parties shall propose a briefing schedule for Defendant's pending motion to dismiss. (Signed by Judge Lorna G. Schofield on 3/4/2016) (tn)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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DENTSPLY INTERNATIONAL INC.,
:
:
Plaintiff,
:
:
-against:
:
DENTAL BRANDS FOR LESS LLC d/b/a
:
DENTAL WHOLESALE DIRECT,
:
:
Defendant. :
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USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #:
DATE FILED: 3/4/2016

15 Civ. 8775 (LGS)
OPINION AND ORDER

LORNA G. SCHOFIELD, District Judge:
Plaintiff DENTSPLY International Inc. (“DENTSPLY”) sues Defendant Dental Brands
for Less d/b/a Dental Wholesale Direct (“Dental Brands”) over Defendant’s resale of
DENTSPLY’s dental products. Dental Brands moves for a permissive transfer of this case to the
U.S. District Court for the Southern District of Florida pursuant to 28 U.S.C. § 1404(a). For the
following reasons, Defendant’s motion is denied.
I.

BACKGROUND
DENTSPLY is a corporation organized in Delaware with offices in York, Pennsylvania.

Plaintiff produces, markets and sells dental products to retailers and distributors within the
United States under various trademarks. According to DENTSPLY’s First Amended Complaint
(the “Complaint”), Dental Brands is not a DENTSPLY retailer or distributor, but purchases,
repackages, relabels and resells DENTSPLY’s products. Dental Brands is a Florida-based
discount dental products retailer, and according to a declaration submitted in connection with this
motion, its only place of business is in the Southern District of Florida.
The Complaint brings claims for trademark infringement, unfair competition and
trademark dilution under the Lanham Act, and for violation of New York laws governing

trademark anti-dilution and unfair trade practices. The Complaint also raises various state law
claims for tortious interference with contracts, tortious interference with business relations and
unfair competition. On January 19, 2016, Defendant moved to transfer this case to the Southern
District of Florida pursuant to 28 U.S.C. § 1404(a) or, in the alternative, for dismissal under
Federal Rule of Procedure 12(b)(6). An order dated January 25, 2016, granted the parties’
request that the transfer portion of Defendant’s motion be decided before reaching the merits.
II.

STANDARD
“For the convenience of the parties and witnesses, in the interest of justice,” a district

court may transfer a civil action to another federal district court where it might have been
brought. 28 U.S.C. § 1404(a). “District courts have broad discretion in making determinations
of convenience under Section 1404(a) and notions of convenience and fairness are considered on
a case-by-case basis.” D.H. Blair & Co. v. Gottdiener, 462 F.3d 95, 106 (2d Cir. 2006).
Among the factors to be considered in determining whether to grant a motion to
transfer venue “are, inter alia: (1) the plaintiff’s choice of forum, (2) the
convenience of witnesses, (3) the location of relevant documents and relative ease
of access to sources of proof, (4) the convenience of parties, (5) the locus of
operative facts, (6) the availability of process to compel the attendance of
unwilling witnesses, and (7) the relative means of the parties.”
N.Y. Marine & Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 112 (2d Cir. 2010) (quoting
D.H. Blair & Co., 462 F.3d at 106–07). “The burden of establishing the propriety of a change of
forum under § 1404 rests on the moving party.” John Wiley & Sons, Inc. v. Swancoat, No. 08
Civ. 5672, 2009 WL 2486048, at *4 (S.D.N.Y. Aug. 14, 2009). “Absent a clear and convincing
showing that the balance of convenience strongly favors the alternate forum[,] discretionary
transfers are not favored.” Xiu Feng Li v. Hock, 371 F. App’x 171, 175 (2d Cir. 2010) (summary
order) (internal quotation marks and alteration omitted).

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III.

DISCUSSION
The first factor -- plaintiff’s choice of forum -- weighs against transfer. DENTSPLY

filed suit here in the Southern District of New York, and its choice will not be overturned absent
a definitive showing that the Southern District of Florida is a superior venue.
The second factor -- convenience of witnesses -- is neutral. Defendant argues that its
own witnesses (consisting of the company’s five employees) are all located in the Southern
District of Florida. These witnesses are under Defendant’s control, however, and would
therefore be available to testify in either venue. See U.S. Commodity Futures Trading Comm’n
v. Wilson, 27 F. Supp. 3d 517, 539 (S.D.N.Y. 2014). Any inconvenience to Dental Brands
employees is offset by the convenience to DENTSPLY employees, who would prefer New York
if called as witnesses to testify, for example, on the alleged differences between “authorized”
products and what Dental Brands sells.
“Although the convenience of the parties is a factor in determining whether transfer
should be granted, the convenience of non-party witnesses is accorded more weight than that of
party witnesses.” Id. (emphasis added). Defendant has not argued that non-party witnesses
would be inconvenienced or unavailable if the case remained in this court. Plaintiff identifies
New York as the venue where more third-party witnesses are likely to be located based on
Defendants’ sales in New York and the large number of dentists here. Plaintiff intends to call as
witnesses dentists who bought DENTSPLY products from Defendant. While Defendant claims
that “States, including Florida, in proximity to [its] office” account for 20% of Defendant’s sales,
this statement is ambiguous as to which states in addition to Florida were included to reach that
figure. In any event, Defendant acknowledges that sales in New York account for 7.5% of its
nationwide sales, which would allow both sides sufficient witnesses to make their cases.

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The third factor -- the location of relevant documents and relative ease of access to
sources of proof -- is neutral. As with witnesses, the documents and sources of proof in
Defendant’s possession in Florida are offset by those in Plaintiff’s possession. Any other
relevant documents would be held by third-party customers of Dental Brands’s products who, as
noted above, are more likely to be found close to this venue than to the Southern District of
Florida. Even if the clear majority of relevant documents were located closer to the Southern
District of Florida, “[t]he location of relevant documents is largely a neutral factor in today’s
world of faxing, scanning, and emailing documents.” Am. Steamship Owners Mut. Prot. &
Indem. Ass’n v. Lafarge N. Am., Inc., 474 F. Supp. 2d 474, 484 (S.D.N.Y. 2007); see also ACE
Am. Ins. Co. v. Bank of the Ozarks, No. 11 Civ. 3146, 2012 WL 3240239, at *13 (S.D.N.Y. Aug.
3, 2012) (“The location of documentary evidence is typically considered a neutral factor in the
transfer analysis.”).
The fourth factor -- the convenience of parties -- is neutral. Although Dental Brands
would much prefer to litigate in the Southern District of Florida, Plaintiff’s home office is in
Pennsylvania, which is geographically closer to this district than to the Southern District of
Florida. “Where a transfer would merely switch the burden of inconvenience from one party to
the other, this factor . . . is essentially neutral.” Am. Steamship, 474 F. Supp. 2d at 484 (internal
quotation marks omitted).
The fifth factor -- the locus of operative facts -- weighs in favor of transfer, but only
slightly. Dental Brands argues that the Southern District of Florida is where the relevant events
occurred because that is where its employees operate, where its goods are warehoused, and
where the allegedly infringing goods originated for distribution. As DENTSPLY notes,
however, this case focuses on Defendant’s sale of Plaintiff’s products, and any resulting

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confusion those sales have caused in the dentists who have purchased those products. The
location of Defendant’s warehouse and distribution center is therefore not dispositive.
The sixth factor -- the availability of process to compel the attendance of unwilling
witnesses -- weighs against transfer. Defendant’s identification of its five employees as
witnesses is irrelevant to this factor, which focuses on non-parties who would otherwise be
beyond a court’s subpoena power. See Wilson, 27 F. Supp. 3d at 539. Because DENTSPLY
intends to prove its case through dentists in New York who purchased allegedly infringing
products from Dental Brands, compulsory process for unwilling witnesses weighs in favor of
litigating in this district. See Fed. R. Civ. P. 45(c)(1)(A)–(B) (geographical scope of federal
courts’ subpoena power).
Finally, the seventh factor -- the relative means of the parties -- weighs slightly in favor
of transfer. “Where a disparity exists between the means of the parties, such as in the case of an
individual suing a large corporation, the court may consider the relative means of the parties in
determining where a case should proceed.” Martignago v. Merrill Lynch & Co., No. 11 Civ.
3923, 2012 WL 112246, at *9 (S.D.N.Y. Jan. 12, 2012) (internal quotation marks omitted).
Here, both entities generate substantial nationwide revenues and operate internationally.
DENTSPLY’s market capitalization and revenues are, however, substantially larger than
Defendant’s, and Plaintiff would therefore be less inconvenienced by having to litigate in a
distant forum. This factor weighs in favor of transfer, albeit slightly.
Considering all factors, transfer is inappropriate because Defendant has failed to show by
clear and convincing evidence that convenience and fairness on balance favor litigation in the
Southern District of Florida.

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IV.

CONCLUSION
For the foregoing reasons, Defendant’s motion is DENIED. In accordance with

Individual Rule III.B.4, the parties shall propose a briefing schedule for Defendant’s pending
motion to dismiss.

SO ORDERED.
Dated: March 4, 2016
New York, New York

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