GOFIT LLC v. GoFit LLC et al

Filing 35

OPINION AND ORDER by Judge John E Dowdell Defendants' Motion to Dismiss for Lack of Jurisdiction (Doc. 12) is granted. Finding as moot Plaintiff's Motion to Reset the Scheduling Order upon Adjudication of Defendants' Motion to Di smiss (Doc. 34). All remaining scheduling dates and deadlines are stricken ; striking/terminating deadline(s)/Hearing(s); finding as moot 34 Motion to Accelerate/Extend/Reset Hearing(s)/Deadline(s); granting 12 Motion to Dismiss for Lack of Jurisdiction (Re: 2 Complaint ) (SAS, Chambers)

UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF OKLAHOMA
GOFIT LLC, an Oklahoma Limited
Liability Company,
Plaintiff,
v.
GOFIT LLC, a Delaware Limited
Liability Company, and
LUPINE DREAMS LLC
Defendants.

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Case No. 12-CV-622-JED-FHM

OPINION AND ORDER
The Court has for its consideration the “Motion to Dismiss and Brief in Support of
Defendants GoFit, LLC and Lupine Dreams, LLC” (Doc. 12) (the “Motion”). Defendants argue
that this case should be dismissed because the Court lacks personal jurisdiction over them.
I.

Background
Plaintiff, GOFIT LLC, is an Oklahoma limited liability company doing business in Tulsa,

Oklahoma. Plaintiff is a nationwide seller of fitness-related equipment. Defendants, GoFit LLC
and Lupine Dreams LLC (collectively, “defendants”), are both Delaware limited liability
companies.1

Plaintiff’s claims in this case are based upon use of the name GoFit – the

designation under which defendants are offering their services, which consist of gym passes that
can be used on a nationwide basis. Plaintiff asserts that use of the GoFit mark and corresponding

1

Plaintiff appears to plead claims against Lupine Dreams LLC on the basis of alter ego liability
only. (See Doc. 2, at 1-2). This conclusion is drawn from the assertion that Lupine Dreams LLC
is a subsidiary of GoFit LLC (Delaware). Plaintiff bases this allegation on the fact that the same
address is listed for both companies in their incorporation materials. (See id.). Defendants
dispute that the entities should be treated as one. (Doc. 24, at 4). For purposes of this
jurisdictional analysis only, the Court will evaluate all evidence as though it relates to both
companies equally.

design elements on defendants’ website, www.gofitpass.com, constitutes a violation of plaintiff’s
trademark rights. Plaintiff has thus asserted claims against defendants for federal trademark
infringement, false designation of origin in violation of 15 U.S.C. § 1125(a), common law unfair
competition and trademark infringement, violation of the Oklahoma Unfair Trade Practices Act
(78 Okla. Stat. § 51 et seq.), infringement to “enhance the commercial value of defendants’
products,” contributory trademark infringement, vicarious trademark infringement, and violation
of the Federal Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)).
Defendants’ Motion challenges this Court’s jurisdiction, arguing that defendants’ have no
contacts with Oklahoma sufficient to subject them to personal jurisdiction in this forum. To that
end, defendants have submitted the declaration of Gerald Levine (Doc. 12-1) which states,
among other things, that defendants have no members or manager in Oklahoma, no contracts
with any person or company doing business in Oklahoma, and have not done business with
anyone in the state.

Mr. Levine further attests that defendants have no “offices, mailing

addresses, bank accounts, telephone listings, agents, employees, or personnel within the State of
Oklahoma.” (Id.). Finally, Mr. Levine swears that no sales or commercial transactions have
been conducted in relation to the GoFit mark, let alone in Oklahoma. (Id.). The sole contact
with Oklahoma which plaintiff argues provides the Court with jurisdiction is defendants’
website. Accordingly, the Court’s analysis of whether it has jurisdiction involves defendants’
website and whether it is a sufficient contact with Oklahoma for purposes of establishing
personal jurisdiction.
II.

Standards
Plaintiff bears the burden of establishing that the Court has personal jurisdiction over the

defendants. OMI Holdings, Inc. v. Royal Ins. Co. of Canada, 149 F.3d 1086, 1091 (10th Cir.

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1998). “When a district court rules on a Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of
personal jurisdiction without holding an evidentiary hearing, ... the plaintiff need only make a
prima facie showing of personal jurisdiction to defeat the motion.” Id. (citations omitted). “The
plaintiff may make this prima facie showing by demonstrating, via affidavit or other written
materials, facts that if true would support jurisdiction over the defendant.” Id. at 1091. “In order
to defeat a plaintiff's prima facie showing of jurisdiction, a defendant must present a compelling
case demonstrating ‘that the presence of some other considerations would render jurisdiction
unreasonable.’” Id. (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985)). The
allegations of the complaint must be accepted as true to the extent they are uncontroverted by a
defendant's affidavit. Taylor v. Phelan, 912 F.2d 429, 431 (10th Cir. 1990). If the parties
provide conflicting affidavits, all factual disputes must be resolved in plaintiff's favor and a
prima facie showing of personal jurisdiction is sufficient to overcome defendant's objection. Id.
For a court to exercise personal jurisdiction over a nonresident defendant, the plaintiff
must demonstrate the existence of every fact required to satisfy both the forum's long-arm statute
and the Due Process Clause of the United States Constitution. See 12 Okla. Stat. § 2004(F).
“Because Oklahoma's long-arm statute permits the exercise of jurisdiction that is consistent with
the United States Constitution, the personal jurisdiction inquiry under Oklahoma law collapses
into the single due process inquiry.” Intercon, Inc. v. Bell Atl. Internet Solutions, Inc., 205 F.3d
1244, 1247 (10th Cir. 2000) (citing Rambo v. Am. S. Ins. Co., 839 F.2d 1415, 1416 (10th Cir.
1988)); see also Hough v. Leonard, 867 P.2d 438, 442 (Okla. 1993).
“Due process requires that the nonresident defendant's conduct and connection with the
forum state are such that the nonresident could reasonably anticipate being haled into court in
that state.” Conoco, Inc. v. Agrico Chem. Co., 115 P.3d 829, 835 (Okla. 2004) (citing World–

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Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). “The Due Process Clause
permits the exercise of personal jurisdiction over a nonresident defendant ‘so long as there exist
minimum contacts between the defendant and the forum State.’” Intercon, 205 F.3d at 1247
(quoting World–Wide Volkswagen, 444 U.S. at 291). A court “may, consistent with due process,
assert specific jurisdiction over a nonresident defendant ‘if the defendant has purposefully
directed his activities at the residents of the forum, and the litigation results from alleged injuries
that arise out of or relate to those activities.’” Id. at 1247 (quoting Burger King, 471 U.S. at 472
(1985)). “When a plaintiff's cause of action does not arise directly from a defendant's forum
related activities, the court may nonetheless maintain general personal jurisdiction over the
defendant based on the defendant's business contacts with the forum state.” Id. at 1247 (citing
Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414–16 & n.9 (1984)).
III.

Analysis
As noted, plaintiff argues that defendants’ website, www.gofitpass.com, constitutes

purposefully directed commercial activity directed towards Oklahoma as a result of its alleged
level of interactivity. In support of this proposition, plaintiff principally relies upon Zippo
Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Penn. 1997) and its
progeny.2
In Zippo, the court discussed the various levels of interactivity available among websites
and utilized a website's interactivity as a sliding scale for whether it constitutes a “contact” with
the forum state significant enough to create personal jurisdiction:
At one end of the spectrum are situations where a defendant clearly does business
over the Internet. If the defendant enters into contracts with residents of a foreign
2

Zippo is considered to be a seminal case in the area of evaluating whether a website can be
sufficient to establish personal jurisdiction. See, e.g., Outdoor Channel, Inc. v. Performance One
Media, LLC, 826 F. Supp. 2d 1271, 1284 (N.D. Okla. 2011) (discussing Zippo at length).
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jurisdiction that involve the knowing and repeated transmission of computer files
over the Internet, personal jurisdiction is proper. At the opposite end are situations
where a defendant has simply posted information on an Internet Web site which is
accessible to users in foreign jurisdictions. A passive Web site that does little
more than make information available to those who are interested in it is not
grounds for the exercise personal [sic] jurisdiction. The middle ground is
occupied by interactive Web sites where a user can exchange information with the
host computer. In these cases, the exercise of jurisdiction is determined by
examining the level of interactivity and commercial nature of the exchange of
information that occurs on the Web site.
952 F. Supp. at 1124. The Tenth Circuit has not expressly adopted the Zippo sliding-scale test
for internet jurisdictional analysis. See Shrader v. Biddinger, 633 F.3d 1235, 1242 n.5 (10th Cir.
2011). In Shrader, the court noted that the personal jurisdiction analysis in internet contexts
must be adapted “by placing an emphasis on the internet user or site intentionally directing
his/her/its activity or operation at the forum state rather than just having the activity or operation
accessible there.” Id. at 1241 (emphasis original). The Shrader court utilized the following test
for specific jurisdiction in an internet context:
[A] State may, consistent with due process, exercise judicial power over a person
outside of the State when that person (1) directs electronic activity into the State,
(2) with the manifested intent of engaging in business or other interactions within
the State, and (3) that activity creates, in a person within the State, a potential
cause of action cognizable in the State's courts. Under this standard, a person who
simply places information on the Internet does not subject himself to jurisdiction
in each State into which the electronic signal is transmitted and received. Such
passive Internet activity does not generally include directing electronic activity
into the State with the manifested intent of engaging business or other interactions
in the State thus creating in a person within the State a potential cause of action
cognizable in courts located in the State.
Id. at 1240-41 (emphasis original). In short, simply having a website viewable over the internet,
without more, does not support personal jurisdiction in any state where the website may be
viewable. The court also noted that “it bears emphasizing that general jurisdiction over a web
site that has no intrinsic connection with a forum state requires commercial activity carried on
with forum residents in such a sustained manner that it is tantamount to actual physical presence
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within the state.” Id. at 1246. The Shrader court offered further direction with respect to what
“more” could suffice for jurisdiction where the plaintiff’s claims are related to a website. Using
an amalgam of internet-related case law and the “effects test” derived from Calder v. Jones, 465
U.S. 783 (1984)3, the Shrader court directs us to “look to indications that a defendant
deliberately directed its message at an audience in the forum state and intended harm to the
plaintiff occurring primarily or particularly in the forum state.” Shrader, 633 F.3d at 1241.
General Jurisdiction
Defendants’ sole contact with Oklahoma – a website viewable within the state – is clearly
insufficient to establish general jurisdiction. It is undisputed that defendants have not sold a
single product to an Oklahoma resident or otherwise had any contact with the State beyond the
fact that their website is visible here. The Court need not go beyond that statement in finding a
lack of systematic and continuous contacts necessary to support general jurisdiction over
defendants. See Shrader, 633 F.3d at 1246.
Specific Jurisdiction
Plaintiff alleges that defendants’ website is rife with trademark infringing images, which
go directly to the heart of plaintiff’s trademark infringement claims.4 Consequently, plaintiff

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Under the Calder “effects test,” “purposeful direction is established if three showings are
made: the defendant (a) commits ‘an intentional action’; (b) that is ‘expressly aimed at the forum
state’; (c) with ‘knowledge that the brunt of the injury would be felt in the forum state.’”
Grynberg v. Ivanhoe Energy, Inc., 490 F. App'x 86, 96 (10th Cir. 2012) cert. denied, 133 S. Ct.
941, 184 L. Ed. 2d 726 (U.S. 2013) (quoting Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514
F.3d 1063, 1072 (10th Cir. 2008)). Plaintiff urges that this test should be applied in addition to
the Zippo test (see Doc. 22, at 10-12). The Court finds that it need not perform a separate
analysis under Calder, as the “effects test” is sufficiently captured in performing the analysis
counseled by Shrader.
4

The defendants state that the website has been taken down during the pendency of this
litigation. (Doc. 24, at 2-3).
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argues that defendants are using plaintiff’s trademarks to generate traffic to their website and
therefore are directing activity into Oklahoma which causes harm to an Oklahoma resident.
(Doc. 22, at 12-13). Defendants counter that, whether applying Zippo or Shrader, their website
does not constitute commercial activity directed at Oklahoma sufficient to support personal
jurisdiction.
According to defendants, the actual website at issue was, at the time this litigation was
filed, significantly different from the website described by plaintiff. Defendants point out that
the webpages described by plaintiff were merely exhibits submitted to the United States Patent
and Trademark Office (“USPTO”) in connection with defendants’ trademark application and
were “not actual webpages from a usable form of the website.” (Doc. 24, at 3). Plaintiff has not
submitted any evidence demonstrating that the webpages depicted in its response brief were ever
functional, and plaintiff acknowledges that those exhibits were sourced from defendants’
trademark application submitted to the USPTO.5 (Doc. 22, at 6). In contrast, the declarations of
Mr. Levine (Docs. 12-1 and 24-1) on behalf of the defendants attest that the actual website at
issue was not interactive and did not allow commercial transactions to take place. According to
defendants, the website did allow those who visited it to request more information. (Doc. 24, at
3-4). Thus, on the Zippo spectrum, defendants’ website is certainly closer to the passive end of
the scale, as it was only minimally interactive. See Zippo, 952 F. Supp. at 1124. There is no
evidence that any Oklahoma resident ever requested information through the website.
5

Defendants state that the initial trademark application submitted in connection with the GoFit
mark contained a “scrivener’s error,” which stated that the mark had already been used in
commerce. (Doc. 24, at 3; see also Doc. 24-1). On November 27, 2012, the USPTO filing was
updated to reflect that the mark was filed on an “Intent to Use” basis and to reflect that the
website was “a non-interactive website where no sales could occur.” (Doc. 24, at 3). The Court
finds this “error” to be largely inconsequential with respect to this analysis, as evidence
submitted by defendants demonstrated that they have not sold any products or services through
the website or otherwise in relation to the GoFit mark. (Doc. 12-1).
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Applying Shrader to the facts at hand, it is apparent that defendants’ website is an
insufficient contact for the purpose of subjecting the defendants to the jurisdiction of an
Oklahoma court.

Under the first prong, which looks at whether the defendant “directed

electronic activity” into Oklahoma, the evidence establishes that there has been no commercial
activity with any Oklahoma resident through the website. See Shrader, 633 F.3d at 1240-41.
Even assuming the mere visibility of the website in Oklahoma were sufficient to this first prong,
the website would fail the second prong of Shrader. The second prong examines whether the
electronic activity directed at Oklahoma was done “with the manifested intent of engaging in
business or other interactions within the State.” Id. The website itself does not demonstrate an
intent to engage in business or other interactions within Oklahoma because it did not – in its
actual form – permit Oklahoma residents to enter into a contract with defendants or otherwise
purchase goods or services. Given the absence of any commercial activity taking place through
the website, the Court finds that the website fails the second prong of Shrader. Merely placing
information on a website does not manifest an intent to direct commercial activity into
Oklahoma. See id. at 1241; see also Outdoor Channel, Inc., 826 F. Supp. 2d at 1286-87 (holding
website which merely allowed visitors to request information was insufficient under Shrader to
establish personal jurisdiction).6
The Court therefore finds that it cannot exercise personal jurisdiction over defendants, as
plaintiff has not made a prima facie showing that defendants have sufficient minimum contacts
with the State of Oklahoma such that defendants’ due process rights would not be violated were
the Court to assume jurisdiction.
6

Having found that defendants have no contacts with Oklahoma for the purposes of exercising
personal jurisdiction, the assumption of jurisdiction under such circumstances would clearly
offend “traditional notions of fair play and substantial justice,” and further analysis is not
required. See Int'l Shoe Co. v. State of Wash., 326 U.S. 310, 316 (1945).
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IT IS THEREFORE ORDERED that defendants’ motion to dismiss for lack of
jurisdiction (Doc. 12) is granted.

Plaintiff’s motion to reset the scheduling order upon

adjudication of defendants’ motion to dismiss (Doc. 34) is moot.
This case is hereby terminated.

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