People Express Airlines, Inc. v. 200 Kelsey Associates, LLC
Filing
20
OPINION AND ORDER - 200 Kelsey's motion to dismiss pursuant to Rule 12(b)(2) is GRANTED. While the Court finds that personal jurisdiction over 200 Kelsey wanting, it reaches no conclusion as to the substantive aspects ofPEOPLExpress's Complaint. PEOPLExpress is therefore free to take whatever action it sees fit in a more appropriate forum. Signed by District Judge Mark S. Davis and filed on 2/5/13. (jcow, )
UNITED
STATES
DISTRICT
EASTERN DISTRICT
COURT
FILED
OF VIRGINIA
Newport News Division
PEOPLE EXPRESS AIRLINES,
INC.
CLERK, US DiSTRiCT COURT
NORFOLK, VA
A Delaware Corporation
Plaintiffs,
Civil Action No.
v.
200 KELSEY ASSOCIATES,
4:12cv61
LLC
A New Jersey Limited Liability Company
Defendant.
OPINION AND ORDER
This
matter
Associates,
LLC's
is
before
the
("200 Kelsey")
Court
on
Defendant
2 00
Kelsey
motion to dismiss pursuant to
Federal Rule of Civil Procedure 12(b)(2)
or, in the alternative,
to dismiss in part pursuant to Federal Rule of Civil Procedure
12(b)(6)
Rule
and to strike impertinent matter pursuant to Federal
of Civil Procedure 12(f).
After examining the Complaint,
200 Kelsey's motion to dismiss and the associated memoranda, the
Court finds that the facts and legal contentions are adequately
presented and oral argument would not aid in the decisional
process. Fed. R. Civ. P. 78(b); E.D. Va. Loc. Civ. R. 7(J) . The
matter is therefore ripe for decision. For the reasons set forth
below,
the Court GRANTS 200 Kelsey's motion to dismiss pursuant
to Rule
12(b)(2).
Because
the Court
finds
it lacks personal
jurisdiction, it does not reach
200 Kelsey's alternative ground
for dismissal pursuant to Rule 12(b)(6)
nor its motion to strike
pursuant to Rule 12(f) .
I. FACTUAL HISTORY1
Plaintiff People Express Airlines,
Airlines
or
PEOPLExpress
Inc. d/b/a PEOPLExpress
("PEOPLExpress")
is
a
Delaware
Corporation with a principle place of business in Newport News,
Virginia.
Defendant
Kelsey
is
a
limited
liability
company
organized under the laws of the State of New Jersey with its
principal place
declaration of
of business
the parties'
in New
rights
York.
The
in certain
suit seeks a
trademarks and
judgment against 200 Kelsey for cybersquatting and unfair trade
practices.
PEOPLExpress is a corporation that formed in the summer of
2011
with
the
intent
to
begin
providing
airline
passenger
service in Virginia under the "famous" brand and marks related
to "PEOPLE EXPRESS," including the word mark "PEOPLEXPRESS," the
combination mark "PEOPLExpress," and a design mark depicting the
profiles of two faces.
related
marks
The "PEOPLE EXPRESS" brand ("Brand") and
("Marks")
were
previously
used
for
passenger
1 The facts recited here are drawn from Plaintiff's Complaint and are
assumed true for the purpose of deciding the motion currently before
the Court.
They are not to be considered factual findings for any
purpose other than consideration of the pending motion. See TomTom,
Inc. v. APT Sys. GmbH, No. I:12cv528, 2012 WL 4457730, at *1 (E.D. Va.
Sept. 14, 2012).
flight service by another company, also operating under the name
PEOPLExpress,
service
from
after
PEOPLExpress
1981
becoming
claims
no
until
1987,
part
of
when
that
another
connection
to
airline.
the
former
Plaintiff PEOPLExpress claims only that it
of
the
Brand
and
associated Marks
company
made
ceased
Plaintiff
PEOPLExpress.
intends to make use
"famous"
by
the
prior
airline.
Plaintiff PEOPLExpress asserts that it intended to commence
passenger service in the summer of 2012 and that in the summer
of 2011 it began taking several actions in preparation for such
service,
including performing marketing and accounting studies
of
Brand.
the
PEOPLExpress
claims
that
it
has
invested
significant time and money in extensive preparations to use the
Brand
in
commerce.
PEOPLExpress
Trademark
Additionally,
on
September
22,
2011,
filed an intent-to-use application with the U.S.
Office.
This
application
and
the
circumstances
surrounding it give rise to the instant litigation.
Specifically,
Office
informed
PEOPLExpress's
on
January
PEOPLExpress
intent-to-use
18,
2012,
that
it
application,
the
U.S.
could
because
Trademark
not
200
approve
Kelsey
already held a prior-pending intent-to-use application for the
mark
"PEOPLE
PEOPLExpress
EXPRESS,"
claims
that
filed
200
on
Kelsey's
September
pending
16,
2009.
intent-to-use
application is the second such application that 200 Kelsey has
filed with respect
to
the
"PEOPLE EXPRESS"
mark,
and that 200
Kelsey filed this second application five days before the first
application was to become abandoned due to 200 Kelsey's failure
to file a statement of use.
the
"PEOPLE
EXPRESS"
September 21,
2005,
Thus,
mark
200 Kelsey has allegedly kept
unavailable
the
date
to
200
for
it filed its
registration
first
since
intent-to-use
application.
With
respect
application,
the
U.S.
Allowance on May 17,
Kelsey's
Trademark
2011.
second
office
intent-to-use
issued
a
Notice
of
200 Kelsey then filed for a six-
month extension of time to file its statement of use on November
17,
2011,
which
extension
PEOPLExpress claims
granted,
was
granted
on
that further extensions
effectively
suspending
any
November
19,
2011.
of time might be
further
action
Kelsey's intent-to-use application until May 17,
on
2014,
200
at the
latest.
PEOPLExpress
alleges
that
200
Kelsey has
a practice
of
registering trademark applications without having the intent to
use
the
marks
in
commerce,
and
that
200
Kelsey
continually
extends its registrations so it may demand licenses from those,
such
as
commerce.
money"
PEOPLExpress,
do
intend
to
use
the
marks
in
PEOPLExpress claims that 200 Kelsey aims "to extort
for marks
legitimate
who
it has never used and in which it has no
rights.
PEOPLExpress
further
alleges
that,
in
addition to filing fraudulent trademark applications, 200 Kelsey
registers domain names for marks in which it has no ownership or
interest, and does not intend to use in any way, in an effort to
"hold"
the
domain
name.
PEOPLExpress
accordance with this practice,
name
complains
that,
in
200 Kelsey registered the domain
www.peopleexpressairline.com
on
July
26,
2005
and
the
domain name www.peopleexpressair.com on November 23, 2009.
Sometime after learning of 200 Kelsey's pending intent-to-
use application, PEOPLExpress contacted 200 Kelsey regarding the
mark.
PEOPLExpress claims that 200 Kelsey refused to consider
any agreement involving its application other than a "license"
of
the
mark
application.
agreement
to
PEOPLExpress
PEOPLExpress
pending
the
complains
resolution
that
such
of
a
such
license
is improper because it would create in 200 Kelsey
controlling rights to the mark where none currently exist.
II.
PEOPLExpress
PROCEDURAL HISTORY
initiated the
instant action
on
April
26,
2010, when it filed a three-count Complaint against 200 Kelsey
seeking a declaratory judgment (Count I)
and alleging that 200
Kelsey cyber squatted in violation of the Lanham Act (Count II)
and engaged in unfair trade practices (Count III).
PEOPLExpress
declare
that
specifically
PEOPLExpress's
use
requests
of
the
that
"PEOPLE
the
court
EXPRESS"
(1)
mark
does not infringe on the rights of 200 Kelsey; (2) declare that
200
Kelsey
has
no
right,
title,
or
interest
in
the
marks
domain names involving the words PEOPLE and EXPRESS;
preliminary
from
and
pursuing
names
or
Kelsey
websites
any
logos
to
permanent
assign
injunctions
existing
associated
to
or
future
with
and
trademark
PEOPLExpress;
PEOPLExpress
or domain names;
restraining
(5)
all
rights
order
200
(3)
200
issue
Kelsey
involving
(4)
to
order
any
Kelsey
or
and
the
200
all
to abandon
any and all trademark applications for any mark including the
words
"PEOPLE" and "EXPRESS" and any other mark associated with
PEOPLExpress.
PEOPLExpress
also
seeks
actual
and
punitive
damages, costs, and attorneys' fees.
On May 18, 2012, 200 Kelsey filed its motion to dismiss and
a brief supporting such motion.
ECF Nos.
filed its opposition brief on June 5,
2012.
Kelsey filed its reply brief on June 11,
Therefore,
5-6.
PEOPLExpress
ECF No.
2012.
9.
ECF No.
200
10.
200 Kelsey's motion to dismiss is fully briefed and
ripe for this Court's consideration.
III.
DISCUSSION
If the Court lacks personal jurisdiction over 200 Kelsey,
dismissal of all claims is appropriate.2
Therefore,
the Court
2 200 Kelsey has filed a motion to dismiss for lack of personal
jurisdiction pursuant to Rule 12(b)(2).
PEOPLExpress responds by
arguing only that this Court has personal jurisdiction over 200 Kelsey
in this action. PEOPLExpress does not argue, in the alternative, that
a transfer of venue pursuant to 28 U.S.C. §1406 is appropriate,
should the Court find that it lacks such jurisdiction.
Failure to
raise a claim that transfer of venue is appropriate constitutes a
begins by considering 200 Kelsey's Motion to Dismiss Pursuant to
Rule
12(b)(2).
Because
jurisdiction over
200
the
Kelsey,
Court
it
finds
does
not
it
lacks
reach
personal
200
Kelsey's
alternative ground for dismissal nor its motion to strike.
A.
Rule
12(b)(2)
Standard of Review
permits
a
party
to
dismiss an action on the ground that
jurisdiction over that party.
request
the
that
a
court lacks
court
personal
Fed. R. Civ. P. 12(b)(2).
When a
defendant challenges the court's personal jurisdiction over him,
the
plaintiff
possesses
bears
personal
evidence.
the
burden
of
proving
jurisdiction
by
a
Mylan Labs. , Inc.
(4th Cir. 1993); Combs v.
1989).
denies
In cases where
facts
essential
v.
Bakker,
Akzo,
that
the
preponderance
N.V. , 2
of
F.3d 56,
886 F.2d 673, 676
court
the
59-60
(4th Cir.
"the defendant provides evidence which
for
under threat of dismissal,
jurisdiction,
xthe plaintiff
must,
present sufficient evidence to create
a factual dispute on each jurisdictional element which has been
denied by the defendant and on which the defendant has presented
evidence.'"
Colt Def.,
L.L.C. v. Heckler & Koch Def.,
Inc., No.
2:04cv258, 2004 U.S. Dist. LEXIS 28690, at *29-30 (E.D. Va. Oct.
waiver of
such claim.
Jenson v.
Klayman,
115 Fed.
App'x 634,
635-36
(4th Cir. 2004) . Additionally, although the Court has discretion to
transfer venue in the interest of justice, there are no facts before
the Court suggesting an appropriate alternative venue or that transfer
is in the interest of justice. See 28 U.S.C. § 1406(a).
22,
2004)
(quoting Indus.
Leasing Corp.,
When
party,
Carbon Corp.
737 F. Supp.
deciding
the
v.
Equity Auto & Equip.
925, 926 (W.D. Va. 1990)).
question
of
its
jurisdiction
over
a
the Court may rule "on the basis only of motion papers,
supporting
legal
complaint."
memoranda
Combs,
886
and
F.2d
the
at
relevant
676.
In
allegations
that
of
context,
a
"the
burden on the plaintiff is simply to make a prima facie showing
of
a
sufficient
jurisdictional
prima
facie
jurisdictional
challenge."
showing,
Id.
"a
basis
court
93312,
F.3d
Nutrition
at
at
No.
3:09cv269,
*4
(E.D. Va.
Sept.
29,
62) .
However,
"the
court
pleading
allegations
plaintiff,
assume
inferences
at
Co.,
676.
in
the
credibility,
and
for the existence of
to
both
v. Mead
Dist.
LEXIS
(citing Mylan Labs,
must
light
look
U.S.
the
plaintiff's
PBM Prods,
2009
2009)
a
may
plaintiff and defendant's proffered proof."
Johnson
survive
evaluating
In
district
to
construe
most
draw
all
favorable
the
jurisdiction."
most
Combs,
2
relevant
to
the
favorable
886
F.2d
In any motion pursuant to Rule 12(b) (2), the ultimate
question is whether the plaintiff has proven that the Court has
personal jurisdiction over the defendant.
"'Personal
jurisdiction'
is
the
phrase
used
to
express
a
court's power to bring a person into its adjudicative process."
Noble
Sec,
(E.D.
Va.
Inc.
2009)
v.
MIZ
(citing
Eng'g,
Ltd.,
Black's
Law
611
F.
Supp.
Dictionary
2d 513,
857
(7th
525
ed.
1999)).
"Federal
jurisdiction
its
district
'only
to
constitutional
federal
courts."'
power
Id.
Inc. , 126 F.3d 617,
of
personal
Inst,
of
n.15
(4th
requires
state,
Cir.
authorized by
ordain
(4th Cir.
Fin.
general
Analysts
2009).
"requires
under
the
v.
lower
Centricut,
There are two types
CFA Inst,
551
285,
292
...
contact
F.3d
v.
jurisdiction
personal
connection with
defendant
to
defend
the
itself
only
that
the
forum state
in
that
Helicopteros Nacionales de Colombia,
with
the
forum
S.A.
relevant
that
it
is
Id.
conduct
fair
state."
Id.
v. Hall,
466 U.S.
for
(citing
408,
(1984)).
"[F]or
a
district
jurisdiction over a
be
Inc.
India,
systematic'
personal
Congress
and specific.
of
such
establish
1997)).
"General
and
jurisdiction
such a
414-15
and
(quoting ESAB Grp.,
622
'continuous
exercise
regardless of where the relevant conduct occurred."
Specific
the
to
jurisdiction:
Chartered
degree
may
such that a defendant may be sued in that state for any
reason,
have
the
courts
satisfied:
(1)
authorized under the
court
nonresident
the
to
defendant,
exercise
[forum]
jurisdiction must
requirements
the
Inc.
v.
Cir.
2003).
of
[specific]
two
Fourteenth
personal
conditions
jurisdiction
state's long arm statute;
the exercise of
of
assert
must
must
be
and
(2)
comport with the due process
Amendment."
Carefirst Pregnancy Ctrs. , Inc.,
334
Carefirst
F.3d 390,
of
Md.,
397
(4th
Virginia's long-arm
statute provides
that
"[a]
court may
exercise personal jurisdiction over a person, who acts directly
or by an agent,
of
as
to a cause of action arising from"
enumerated activities,
in this Commonwealth,"
or
omission
328.1(A)(1)
Fourth
in
&
Circuit
which amounts
rise
to
a
Commonwealth."
noted
that
"a
single
'transacting business'
cause
of
action
jurisdiction upon [Virginia]
contractual
Va.
Code
Ann.
§ 8.01-
The United States Court of Appeals for the
has
to
"[t] ransacting any business
and "[clausing tortious injury by an act
this
(3).
including
a number
relationship
may
act
by a
nonresident
in Virginia
be
sufficient
and gives
to
confer
courts," even if that act is a mere
conducted
entirely
out-of-state
telephone and mail.
English & Smith v.
38-40 (4th Cir. 1990)
(quoting Danville Plywood Corp. v. Plain &
Fancy
Kitchens,
Inc. ,
Peninsula Cruise,
315, 318-19
237 Va.
'is
a
Inc.
(1999)
255,
260
(1989))
to
"[w]hen
jurisdiction
Va.
acts
533,
534-35
New River Yacht
confer
("We have
statue
Virginia
from
v.
Va.
901
(1977));
Sales,
Inc.,
F.2d 36,
see
also
257
Va.
(quoting Nan Ya Plastics Corp. v. DeSantis,
single-act
[Virginia's
218
Metzger,
via
requiring
jurisdiction on
only
our
a
person
long-arm statute],
only a
enumerated
over
held that
[therein]
may
Code § 8.01-328.1(C).
10
be
Code
one
§ 8.01-328.1
transaction
courts.'").
is
cause
based
of
asserted
in
However,
solely
upon
action arising
against
him."
Virginia's long-arm statute has been determined "to extend
personal
jurisdiction to
extent
permissible
inquiry."
Consulting
Eng'rs
Ltd.,
561
F.3d
273,
277
(4th Cir.
2009)
Haven
Advocate,
315
F.3d
256,
(4th
process
requirement
"sufficient
is
'minimum
'the maintenance of
261
satisfied
contacts'
with
Corp.
the
v.
due
Geometric,
(citing Young v.
Cir.
if
2002)).
the
the
forum
The
defendant
state
such
New
due
has
that
the suit does not offend traditional notions
of fair play and substantial justice.'"
Co. v. Wash. ,
326 U.S.
the
of
existence
under
[so that] the statutory inquiry merges with the
process clause,
constitutional
the
310,
sufficient
316
Id. (quoting Int'1 Shoe
(1945)).
minimum
In order to establish
contacts
with
the
forum,
a
plaintiff must prove that the defendant '"purposefully directed
his
activities
at
the
residents
of
the
forum'
and
that
the
plaintiff's cause of action 'arise[s] out of those activities."
Id.
(quoting Burger King Corp. v. Rudzewicz,
(1985)).
Furthermore,
the
defendant's
471 U.S.
activities
or
462, 472
contacts
with the forum must be such that he would "reasonably anticipate
being
haled
into
court"
in
the
forum
state.
World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980).
In accordance
has
established
sufficient
court
is
with
a
minimum
to
the
above
three-part
contacts
consider:
nMD
standard,
test
exist.
the
11
for
the
Fourth Circuit
determining
Specifically,
extent
to
which
a
the
whether
district
defendant
purposefully
activities
arise
out
whether
availed
in
of
the
quality,
334
712
(2)
of
the
Inc.
the
directed
at
personal
2002)).
397.
conducting
the
State;
The
561
and
(3)
be
F.3d
Consultants,
analysis
claims
would
jurisdiction
v. Digital Serv.
(4th Cir.
of
plaintiffs'
Geometric,
not merely the quantity,
F.3d at
privilege
whether
reasonable.'"
(quoting ALS Scan,
707,
of
activities
exercise
constitutionally
F.3d
State;
those
the
itself
at
Inc.,
focuses
of the contacts.
278
293
on the
Carefirst,
"Even a single contact may be sufficient to
create jurisdiction when the cause of action arises out of that
single contact,
substantial
justice'
Burger King,
has
not
provided that
is
471 U.S.
at
purposefully
conducting
not
the principle of
thereby
477-78).
availed
activities
in
offended."
However,
itself
the
forum,
personal jurisdiction is appropriate.
LLC
v.
Shandong
(4th Cir.
Noble,
2012)
Linglong
Rubber
of
561
Id.
where a
the
(quoting
defendant
privilege
of
for
dismissal
of
lack
Tire Eng'g & Distrib.,
Co. , Ltd. ,
(citing Geometric,
'fair play and
682
F.3d at
F.3d
273);
292,
302
see also
611 F. Supp. 2d at 530.
B. Analysis
As
argues
a
threshold
only
that
matter,
this
the
Court
Court
may
notes
exercise
that
PEOPLExpress
specific
personal
jurisdiction over 200 Kelsey based on its actions with respect
to
the
Brand,
Marks,
and Plaintiff
12
PEOPLExpress.
PEOPLExpress
does not contend that this Court may exercise general personal
jurisdiction over
specifically
200
Kelsey.
disclaims
jurisdiction in
Accordingly,
its
the
the
brief
Court
On
the
Court's
contrary,
ability
in opposition to
considers
only
to
the
PEOPLExpress
exercise
such
instant motion.
the
question
Court
lacks
of
its
specific jurisdiction over 200 Kelsey.
200
Kelsey
argues
jurisdiction because
contacts
with
the
200
that
this
Kelsey
does
forum.
200
purposefully availed itself of
in Virginia and, accordingly,
forum
would
offend
substantial justice.
submitted
an
("Reich").
Kelsey
contends
traditional
notions
of
that
it
never
doing business
fair
In support of its position,
affidavit
any meaningful
that haling it into court in this
from
its
president,
play
and
200 Kelsey has
Michael
Reich
Reich certifies that 200 Kelsey does not maintain a
does not advertise in Virginia,
is not engaged in significant or
in Virginia,
has
no
long-term business activities
employees or agents
have
any
property,
bank
accounts,
addresses
in
Virginia,
nor
any
facilities in Virginia.
ECF No.
is not incorporated in Virginia
facts
have
the privilege of
physical presence in Virginia,
not
not
personal
suggesting
that
business in Virginia.
200
has
See ECF No. 6 at 8.
13
f 5)
or
mailing
locations
Additionally,
(Compl.
Kelsey
offices,
operations,
6-2.
and does
in Virginia,
or
200 Kelsey
and there are no
otherwise
conducted
In response,3 PEOPLExpress offers two bases upon which it
asserts
that
this
Court
may
jurisdiction over 200 Kelsey:
PEOPLExpress
purchase
constituted
an
resident
of
a
(1)
license
forum,
specific
personal
200 Kelsey's "demand"4 that
for
individualized
the
exercise
the
"PEOPLE
tortious
sufficient
to
act
give
EXPRESS"
taken
rise
mark
against
to
a
specific
jurisdiction of 200 Kelsey; and (2) 200 Kelsey's registration of
domain
names
using
the
"PEOPLE
EXPRESS"
mark
and
subsequent
offer to sell such domain names to PEOPLExpress created personal
jurisdiction over 200 Kelsey in this forum.
200 Kelsey replies that PEOPLExpress initiated contact with
200
Kelsey
occurred
outside
represents
at
his
outside
that
office
of
of
Virginia
Virginia.
PEOPLExpress's
in
and
that
such
contact
2 00
Kelsey
Specifically,
attorney
Connecticut
all
in
contacted
January
its
attorney
to
express
2012
PEOPLExpress's interest in purchasing 200 Kelsey's rights in the
"PEOPLE
EXPRESS"
mark.
After
some
communication
back
and
forth
via telephone and email,
Reich met with PEOPLExpress President,
3
PEOPLExpress
The
Court
notes
that
failed
to
plead
personal
jurisdiction in its Complaint and that all of PEOPLExpress's arguments
in support of this Court's jurisdiction over 200 Kelsey were raised
after 2 00 Kelsey filed its motion to dismiss pursuant to Rule
12(b)(2).
4 200 Kelsey does not concede that a demand was made, but in ruling on
personal jurisdiction, this Court "must construe all relevant pleading
allegations in the light most favorable to the plaintiff . . . ."
Combs,
886 F.2d at 676.
Therefore, the Court
characterization for purposes of this motion only.
14
will
adopt
this
Michael Morisi ("Morisi"), in New York to discuss PEOPLExpress's
interest in the mark.
agreement
its
and no
response
rights
it
may
constitute
business
to
However,
contract
formed.
PEOPLExpress's
hold
in
purposeful
Virginia
the
"PEOPLE
of
mark
does
benefits
of
establishing
not
doing
personal
because 200 Kelsey did not initiate
all communications occurred outside the forum,
to
PEOPLExpress's
jurisdiction,
200
trademark
owner
therefore,
200
alleged
that
in purchasing whatever
the
no contract resulted with PEOPLExpress,
respect
Kelsey argues
EXPRESS"
of
purposes
forum,
2 00
interest
availment
for
jurisdiction in this
the contact,
was
the parties could not reach an
Kelsey
within
Kelsey's
domain
names
second
argues
the
the
basis
that
meaning
forum party.
for
the
are
insufficient
to
is
Lanham
out-of-forum activities
With
personal
PEOPLExpress
of
and
not
Act
concerning
establish
a
and,
the
personal
jurisdiction over 200 Kelsey in the instant action.
As
discussed
above,
determining
whether
a
court
can
exercise personal jurisdiction over a defendant is a two-pronged
inquiry, focusing both on the long-arm statute of the state in
which the
While
district
these
two
court
sits
inquiries
statute extends personal
and due
merge
process
because
jurisdiction to
considerations.
Virginia's
the
long-arm
extent authorized
by the Due Process Clause of the Fourteenth Amendment,
and the
Court therefore need only conduct a constitutional analysis,
15
see
Geometric, 561 F.3d at 277,
the Court will briefly address its
jurisdiction under the Virginia long-arm statute
PEOPLExpress's
statute)
reliance
before
on
specific
to
turning
two
the
constitutional
(in light of
provisions
of
that
inquiry.
The
Court will then address each of the proffered acts of purposeful
availment
act
is
in
turn.
sufficient
Circuit's test,
12(b)(2)
302
Ultimately,
to
satisfy
because
the
it
first
finds
prong
that
of
neither
the
Fourth
the Court finds that dismissal pursuant to Rule
is appropriate.
(citing Geometric,
See Tire Eng'g & Distrib.,
682 F.3d at
561 F.3d at 273) ; see also Noble,
611 F.
Supp. 2d at 53 0.
i.
PEOPLExpress
Virginia's Long-Arm Statute
cites
two
subsections
of
Virginia's
long-arm
statute in support of its argument that this Court may exercise
personal
jurisdiction over 2 00
Kelsey.
In relevant part,
long-arm statute provides that:
A. A court may exercise personal jurisdiction over a
person, who acts directly or by an agent, as to a
cause of action arising from the person's:
3.
Causing tortious injury by an act or omission in
this
Commonwealth.
4.
Causing tortious injury in this Commonwealth to
any person by an act
or omission outside
this
Commonwealth
if
he
regularly
does
or
solicits
business, or engages in any other persistent course of
conduct,
used
or
or
derives
consumed
substantial
or
services
Commonwealth.
16
revenue
rendered,
from
in
goods
this
the
Va.
Code
Ann.
§
8.01-328.1 (A) (1)
&
(3).
In
reviewing
these
provisions in light of the facts before it, the Court finds that
neither supports the exercise of personal jurisdiction over 200
Kelsey in this case.
First,
to
jurisdiction
subject
in
a
nonresident
Virginia
pursuant
defendant
to
§
to
personal
8.01-328.1(A)(3),
PEOPLExpress "must allege 'that one essential act of the alleged
tort occurred in Virginia.'"
Pharm.,
Nov.
LLC,
13, 2008)
05-0335,
also
No.
3:08cv393,
1983).
v.
2757930,
at *6
Broad.
Co. ,
Am.
PEOPLExpress
committed
any
2008
WL
Pharm.,
4911232,
(quoting Decisions Insights,
2005 WL
Brown
Provident
act
has
in
(E.D.
704
failed
Virginia.
Va.
F.2d
to
Inc.
v. Quillen,
No.
Oct.
21,
see
1296,
jurisdiction
328.1(A)(3)
because
over
there
200
are
facts
2005));
1300
that
regardless
Kelsey
no
*3
Amneal
Va.
PEOPLExpress has suffered a tortious injury,
exercise
at
v.
(E.D.
allege
Thus,
Inc.
(4th
Cir.
200
Kelsey
of
whether
this Court may not
pursuant
to
suggesting
§ 8.01that
any
aspect of such tortious injury was caused "by an act or omission
in
this
Commonwealth."
Va.
Code
Ann.
§
8.01-328.1(A)(3)
(emphasis added).
Personal jurisdiction over 200 Kelsey is
exercised pursuant to § 8.01-328.1(A) (4) .
also not properly
For this provision of
Virginia's long-arm statute to confer jurisdiction,
must
show
that
(1)
200
Kelsey
17
caused
tortious
PEOPLExpress
injury
in
the
Commonwealth by an act or omission outside of the Commonwealth;
(2)
200 Kelsey regularly does or solicits business,
in
any
other
persistent
substantial
rendered in
the
from
revenue
action
arises
Kelesy,
in
of
used
and
has
or
derives
consumed
or
services
PEOPLExpress's
cause of
or
(3)
conduct.
conduct,
See
failed
Va.
to
make
Ann.
such
PEOPLExpress
relies
solely upon
any
other
persistent
revenue
from
asserting
course
goods
used
of
or
On the contrary,
that
it
has
no
presence in the Commonwealth of Virginia.
failed to
requirement
8.01-
showing.
offer any evidence
set
of
an
There are no facts before the Court suggesting
rendered in Virginia.
affidavits
§
allegations
Kelsey regularly does or solicits business,
substantial
has
Code
in arguing this Court's personal jurisdiction over
isolated demand.5
the 200
such
PEOPLExpress
Specifically,
200
goods
Commonwealth;
from
328.1(A)(4).
course
or engages
forth
in
or engages
conduct,
or
derives
consumed
or
services
200 Kelsey has offered
physical
or
business
Because PEOPLExpress
or argument as
§ 8.01-328.1 (A) (4) ,
to the
the
Court
second
finds
that it may not properly exercise jurisdiction pursuant to this
subsection of Virginia's long-arm statute.
5 PEOPLExpress characterizes such demand only as a "license" demand.
Compl. H 46, ECF No. 1; see also ECF No. 9 at 4, 7. Although
PEOPLExpress summarily
trademark owner can
domicile, PEOPLExpress
an offer, as the Court
argues that an offer to sell a domain name to a
create jurisdiction in the trademark owner's
does not allege that 200 Kelsey ever made such
discusses in greater detail below.
18
Although the Court finds that the proffered subsections of
Virginia's long-arm statute do not support a finding of personal
jurisdiction over
another
subsection
jurisdiction.
that
"[a]
person,
200
may
in
may
acts
this
support
Specifically,
court
who
Kelsey
the
Section
exercise
directly
case,
or
an
note
that
of
such
exercise
8.01-328.1(A)(1)
personal
by
it does
provides
jurisdiction
agent,
as
to
a
over
a
cause
of
action arising from the person's ...
transacting any business in
this
8.01-328.1(A)(1).
Commonwealth."
Va.
Code Ann.
Courts have repeatedly held that
statute
requiring
jurisdiction."
Thus,
the
nonresidents
Id.
is
one
transaction
Peninsula Cruise,
purpose
provisions
state to
only
of
the
engage
"is
in
some
in
to
Virginia
to
the
to
one
omitted).
And,
purposeful
thus,
Accordingly,
with
§
activity
the
turns to the constitutional inquiry,
in
in
over
this
inquiry
561 F.3d at
mind,
specifically,
its
clause."
"statutory
Geometric,
8.01-328.1 (A) (1)
of
jurisdiction
the extent permissible under the due process
(citations
confer
(citing cases).
extent
assert
merges with the constitutional inquiry."
277.
"is a single-act
257 Va. at 319
statue,
implicated,
who
§ 8.01-328.1
Virginia
the
Court
the two acts
that PEOPLExpress alleges constitute purposeful availment.
ii.
As
described
three-prong
test
Due Process Requirements
above,
for
the
Fourth
determining
19
Circuit
whether
a
has
set
court
has
forth
a
personal
jurisdiction over
a
find
such
that
it
consider (1)
itself
(2)
of
has
nonresident
defendant.
jurisdiction over
For
200
this
Court
Kelsey,
it
to
must
the extent to which 200 Kelsey purposefully availed
the
privilege
of
conducting
activities
in
Virginia;
whether PEOPLExpress's claims arise out of those activities;
and
(3)
whether this
Court's exercise of personal jurisdiction
is constitutionally reasonable.
However,
because
the
Court
See Geometric,
finds
that
561 F.3d at 278.
none
of
200
actions rise to the level of purposeful availment,
finds that dismissal is appropriate.
F.3d at 302
(citing Geometric,
Kelsey's
it ultimately
Tire Eng'g & Distrib.,
561 F.3d at 273);
682
see also Noble,
611 F. Supp. 2d at 530.
a.
License Demand as Purposeful Availment
PEOPLExpress's
that
mark,
PEOPLExpress
200
Kelsey
primary
purchase
contention
a
license
purposefully
is
to
directed
that,
by
demanding
the
"PEOPLE
EXPRESS"
its
activities
at
a
resident of Virginia in a manner sufficient to give this Court
personal
jurisdiction over 200
Kelsey for
any cause
of action
arising out of such contact.
PEOPLExpress is correct that
be
sufficient
to
create
jurisdiction when the
arises out of that single contact."
The
Supreme
Court
has
"[e]ven a single contact may
routinely
creates a 'substantial connection'
20
Carefirst,
held
that
cause
of
action
334 F.3d at 397.
"[s]o
with the forum,
long
as
it
even a single
act
can
support
jurisdiction"
Burger King, 471 U.S.
Ins.
Co. ,
335
U.S.
over
at 475 n.18
220,
223
a
nonresident
(quoting McGee v. Int'l Life
(1957)).
But,
"'some
occasional acts'
related to the forum may not be
establish
jurisdiction
[such]
circumstances
of
their
at
The
318) .
Supreme
Id.
Court has
create
only
not
be
'random,'
into
'fortuitous,'
'unilateral
Burger
haled
activity
King,
471
of
U.S.
a
or
observed
jurisdiction
that
party
475
an
'attenuated'
the
"purposeful
as
a
contacts,
or
(internal
326 U.S.
that a defendant
solely
'attenuated'
another
at
or
sufficient to
(quoting Int'1 Shoe,
availment" requirement is designed to "ensure[]
will
single
'if their nature and quality and
commission'
affiliation with the forum.'"
defendant.
a
result
or
of
of
the
third
person.'"
citations
omitted).
Accordingly:
The
unilateral activity of
those who claim some
relationship
with
a
nonresident
defendant
cannot
satisfy the requirement of contact with the forum
state....
[I] t
is
essential
in
each
case
that
there
be some act by which the defendant purposefully avails
itself of
the privilege of conducting activities
within the forum State, thus invoking the benefits and
protections of its laws.
Id.
(quoting
Hanson
v.
Denckla,
(internal quotation marks omitted).
nonresident defendant
proximately result
is proper
from actions
21
357
U.S.
Thus,
235,
253
jurisdiction over a
"where the contacts
by
the
(1958))
defendant
[at issue]
himself
that
create
a
'substantial
connection'
McGee,
U.S.
(quoting
Because
of
at
223)
w[jJurisdiction may not be
others,"
generated
Kelsey's
it
335
with
the
by
Court
the
defendant"
have
reasonably
Court
for the conduct
NANA
Dev.
Corp. ,
Ultimately,
as
exercise
to
"those
when
the
Court
a single act,
of
specific
1124,
considers
in
Id.
original).
[contacts]
determining
[Virginia]"
anticipated
F.2d
state."
manufactured by the conduct
complained of
783
forum
(emphasis
"conduct and connection with
should
demand,
looks
the
being
in this
1127
whether
actually
whether
is
haled
such that
into
action.
(4th
the
2 00
this
Chung v.
Cir.
1986).
alleged
license
is sufficient to warrant this Court's
personal
jurisdiction over
200
Kelsey
in
this action under the Due Process Clause.
The
Fourth
Circuit
has
summarized
various,
nonexclusive
factors that district courts consider when evaluating whether a
defendant has purposefully availed himself of
conducting business
in the
forum State.
the privileges of
Such factors
include,
but are not limited to:
6 Although this standard requires a "substantial connection" with the
forum state, it is distinct from the standard applicable to general
personal jurisdiction, by which a State exercises jurisdiction over a
party "in a suit not arising out of or related to the defendant's
contacts with the forum."
Burger King, 471 U.S. at 473 n.15 (quoting
Helicopteros, 466 U.S. at 414 n.9) (emphasis added).
The "substantial
connection" required to support the exercise of specific jurisdiction
refers to the connection required between the defendant's activities
and the
forum,
when those activities
serve as
in which such jurisdiction is exercised.
U.S.
at 223).
22
the basis
See id.
for the
(quoting McGee,
suit
335
(1)
whether the defendant maintains offices or agents
in the forum state;
(2) whether the defendant owns
property in the forum state; (3) whether the defendant
reached
into
the
forum
state
to
solicit
or
initiate
business;
(4)
whether
the
defendant
deliberately
engaged
in
significant
or
long-term
business
activities in the forum state; (5) whether the parties
contractually agreed that the law of the forum state
would govern disputes; (6) whether the defendant made
in-person contact with the resident of the forum state
in
the
forum
state
regarding
the
business
relationship; and (7) the nature, quality and extent
of the parties communications about the business being
transacted.
Geometric,
561
F.3d
(numbering added).
Kelsey
maintains
property
in
at
offices
Virginia,
Accordingly,
the first,
of
or
or
or
finding
(internal
citations
omitted)
There are no facts before the Court that 200
significant
a
278
agents
that
long-term
has
business
second,
purposeful
it
in
Virginia,
that
deliberately
activities
it
owns
engaged
in
in
Virginia.
and fourth factors weigh against
availment.
Similarly,
both
parties
agree that they were unable to reach an agreement concerning the
"PEOPLE
parties,
EXPRESS"
mark.
Since
no
contract
exists
between
the
the fifth factor weighs neither in favor nor against a
finding of
purposeful
suggesting
that
PEOPLExpress
in
200
the
Kelsey
Virginia.
between the parties
Therefore,
availment.
Further,
ever
On
made
the
occurred outside
sixth
factor
23
in-person
contrary,
the
against
are
no
facts
contact
of Virginia,
weighs
purposeful availment.
there
a
only
with
meeting
in New York.
finding
of
The
third
factor
purposeful availment.
Kelsey agree
200
likewise
weighs
Specifically,
against
a
finding of
both PEOPLExpress and 200
(although with varying degrees of emphasis),
Kelsey's
license
demand
was
in
response
to
an
that
inquiry
initiated by PEOPLExpress after it learned of 200 Kelsey's prior
pending intent-to-use application.
There
are
no
facts
before the Court suggesting that 200 Kelsey ever "reached into"
Virginia to solicit or initiate business.
Geometric,
at
reached
278.
On
Virginia
pending
to
the
initiate
although
court
may
initiated
it
accord
with
20 0
The
may
Fourth
not
treat
such
weight"
to
"special
contact
PEOPLExpress
contact
application.
that,
n.17;
contrary,
with
the
other.
Circuit
the
outside
of
as
its
expressly
held
dispositive,
fact
that
Inst.,
Ohio,
F.3d
concerning
has
fact
CFA
see also Diamond Healthcare of
Mary Health Partners,
Kelsey
561
551
Inc.
v.
one
F.3d
a
party
at
295
Humility of
229 F.3d 448, 451 (4th Cir. 2000)
(finding
nonresident defendant's contacts insufficient to confer personal
jurisdiction,
in part, because the plaintiff had initiated the
contractual
relationship).
In
that
of
six
none
purposefully
the
availed
business in Virginia,
to
the
fact
that
the
first
itself
light
of
factors
the
the Court does
complained
24
of
of
the
Court's
suggest
privileges
findings
200
of
Kelsey
conducting
accord significant weight
demand
occurred
not
only
outside of Virginia,
but solely in response to contact initiated
by PEOPLExpress.
This
quality,
leaves
the
and extent of
and 200 Kelsey.
matter,
any
seventh
the
and
final
factor,
the
nature,
communications between PEOPLExpress
Geometric,
561 F.3d at 278.
As a
threshold
the Court observes that PEOPLExpress has failed to plead
facts
concerning
its
communications
with
200
Kelsey,
with
the exception of its general allegation in Paragraph 46 of the
Complaint
resolve
that
that:
the
[200]
"When
matter
approached
of
Kelsey ha[d]
the
by
blocking
Plaintiff
to
intent-to-use
filed for PEOPLE EXPRESS,
attempt
application
[200]
refused to consider anything other than a 'license'...."
H 46, ECF No. 1.
to
Kelsey
Compl.
PEOPLExpress likewise failed to describe any
other communications with 200 Kelsey in its brief in opposition
to 200 Kelsey's motion to dismiss.
to
200
Kelsey's
proffers
Accordingly,
concerning
such
evaluating the seventh Geometric factor.7
that
its
attorney,
Edmund
J.
the Court looks
communication
when
200 Kelsey represents
Ferdinand,
III
("Ferdinand"),
received one voicemail message at his office in Connecticut from
7 The Court may properly consider such proffers when evaluating whether
PEOPLExpress
has
made
jurisdictional basis to
Prods.,
2009 U.S.
Dist.
a
prima
facie
showing
of
a
survive 200 Kelsey's challenge.
LEXIS 93312,
at
*4.
However,
sufficient
See PBM
"the court must
construe all relevant ... allegations in the light most favorable to
the
plaintiff,
assume
credibility,
and draw the
most
favorable
inferences for the existence of jurisdiction."
Id.
25
PEOPLExpress's
attorney,
Ferdinand and Byers
interest
"PEOPLE
Duncan
Byers
exchanged emails
in purchasing any rights
EXPRESS"
mark.
ECF
No.
("Byers"),
and
that
concerning PEOPLExpress's
200 Kelsey may
10,
Ex.
1-2.
have
in the
Additionally,
Ferdinand exchanged emails with Morisi regarding Morisi's desire
to meet with Reich in New York.
200 Kelsey represents that this
meeting did in fact take place.
Thus,
one
to
voicemail
emails
outside
the
from
exchanged
of
PEOPLExpress
between
Virginia.
the
two,
the Court has before it
200
and
Even construing
Kelsey,
one
they
do
not
support
a
finding
that
200
series
meeting
these
light most favorable to PEOPLExpress,
a
of
occurring
communications
in
the Court finds that
Kelsey
purposefully
directed its efforts toward PEOPLExpress.
For these reasons,
finding
of
demand.
purposeful
Although
finds that,
none of the Geometric factors support a
availment
these
factors
based
are
on
not
the
alleged
exclusive,
license
the
Court
in viewing the facts before it as a whole and in the
light most favorable to PEOPLExpress,
there is simply not enough
to support a finding that 2 00 Kelsey purposefully availed itself
of
the
privilege
exchanges
and
occurred here,
of
doing
telephone
are,
alone,
purposeful availment."
(describing
the
business
in
Virginia.
Brief
email
such
those
that
conversations,
as
"qualitatively
insufficient
Tire Eng'g & Distrib.,
682
Fourth
Circuit's
26
analysis
in
to
show
F.3d at 302
Geometric
concerning a nonresident defendant who "maintained no offices in
Virginia" and had never traveled there, but who had "exchanged
four brief emails and had several phone conversations with the
Virginia-based
which
plaintiff").
PEOPLExpress
applications
and
in
Geometric,
complains—200
its
outside Virginia.
As
alleged
Geometric,
the
Kelsey's
license
conduct
of
intent-to-use
demand—occurred
561 F.3d at 282.
entirely
The Court finds
that 200 Kelsey's alleged contacts are simply too attenuated to
support this Court's exercise of specific personal jurisdiction
over 200
Kelsey in this case.
PEOPLExpress cannot,
own unilateral inquiry and solicitation of
a
finding to
the
contrary.
through its
information,
See Burger King,
support
471 U.S.
at
475
(quoting Hanson, 357 U.S. at 253).
b.
Alleged Offer to Sell Domain Name as Purposeful Availment
In
license
addition
to
demand
its
was
primary
contention
200
Kelsey's
to
sufficient
that
specific
personal
create
jurisdiction over 200 Kelsey in Virginia,
PEOPLExpress summarily
argues that "a person who registers a trademark as a domain name
and offers
subject
that domain name
to
domicile."
Toeppen,
briefly
personal
ECF No.
141
F.3d
addressing
for sale to a
jurisdiction
9
at
1316,
the
6
in
(citing
1322-24
merits
of
trademark owner
the
trademark
Panavision
(9th
this
Cir.
Int'l,
is
owner's
L.P.
1998)).
argument,
...
v.
Before
the
Court
observes that PEOPLExpress has not pled or otherwise alleged any
27
facts
indicating
that
200
names to PEOPLExpress.
Kelsey
Rather,
ever
offered
to
sell
domain
PEOPLExpress simply alleges that
200 Kelsey registered two domain names using the Brand without
subsequently making a marketplace use of those domains.8
H1I
51-52,
ECF
No.
1.
Accordingly,
exercise specific personal
basis
of
such offers
even
if
the
jurisdiction over 200
alone,
there are
no facts
Compl.
Court
could
Kelsey on the
alleged in
the
Complaint or briefings indicating that any such offers were ever
made.
Additionally,
the
Ninth
Circuit
case
cited
PEOPLExpress requires that the nonresident "engage[]
to register
purpose
[another's]
of
extorting
his domain names for the
money
[the
from
141 F.3d at 1322.
rule
this
reach),
in
PEOPLExpress
in a scheme
trademarks as
Panavision Int'1,
applies
by
Circuit
could
Accordingly,
(a question
not
trademark
invoke
even if such a
the
it
owner]."
Court
as
a
does
not
basis
for
jurisdiction, as PEOPLExpress, by its own pleading, affirms that
it is not currently and has never been the owner of the mark at
8 PEOPLExpress
generally
"scheme to extort money"
argues
that
200
from PEOPLExpress.
Kelsey
ECF No.
was
engaged
9 at 8.
in
a
However,
the only facts alleged supporting the existence of such scheme concern
the alleged "license" demand.
Compl. U 46, ECF No. 1; see also ECF
No. 9 at 4, 7. In its Complaint, PEOPLExpress alleges that, in other
such schemes, 200 Kelsey registered domain names using marks that it
had reserved in intent-to-use applications with the intent to extort
money from others interested in such marks.
Compl. H 48, ECF No. 1.
However, PEOPLExpress fails to allege any facts suggesting that, in
this case, 200 Kelsey did anything more than register two domain names
in
2005
and 2009.
Nowhere
does
PEOPLExpress
claim that
200
Kelsey
subsequently offered to sell those domain names to or otherwise extort
money from PEOPLExpress.
28
issue.
Accordingly,
specific
the Court finds no basis for exercising
personal
jurisdiction
over
200
Kelsey
under
PEOPLExpress's alternative theory.
V.
CONCLUSION
The Court finds that PEOPLExpress has
failed to show that
200 Kelsey purposefully availed itself of the privilege of doing
business
in
activities
Virginia
at
or
otherwise
PEOPLExpress,
a
purposefully
resident
of
directed
Virginia.
its
Because
PEOPLExpress has
failed to make a prima facie showing of this
first element of
the
the
Rule
does
12(b)(2)
not
action.
have
As
jurisdictional analysis,
analysis
personal
a result,
above,
the
jurisdiction
Court
over
dismiss
finds
all
the
pursuant
that
reaches
of
no
foregoing
to
Rule
personal
jurisdiction
conclusion
PEOPLExpress's
Complaint.
as
to
is
200
2 00
Kelsey
200
Kelsey's
GRANTED.
over
the
forth in
that
in
it
this
Kelsey's
and 12(f).
reasons,
12(b)(2)
set
concludes
the Court need not address
alternative motions under Rules 12(b)(6)
For
as
2 00
motion
While
the
to
Court
Kelsey
wanting,
it
substantive
aspects
of
PEOPLExpress
is
therefore
free
to
take whatever action it sees fit in a more appropriate forum.
The Clerk is REQUESTED to send a copy of
Order to counsel of record for the parties.
29
this Opinion and
IT
IS
SO ORDERED
/sWfcr
Mark S.
Davis
United States District Judge
Norfolk, Virginia
February 5 / 2013
30
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