CHRISTINA A. SNYDER, District Judge.
On April 11, 2014, plaintiff Kaswit, Inc. ("Kaswit") filed this trademark and unfair competition lawsuit against defendants Dogfather K9 Connections Inc. ("DKC") and Frank Romano. The operative first amended complaint ("FAC") asserts federal Lanham Act claims for trademark infringement, false designation of origin, and cybersquatting, as well as California law claims for trademark infringement and unfair competition. FAC ¶¶ 39-65. In brief, Kaswit alleges that signage and websites belonging to DKC, a dog kennel in Santa Rosa, California, infringe Kaswit's "Dogfather" trademark.
On June 9, 2014, defendants moved to transfer this action to the Northern District of California pursuant to 28 U.S.C. § 1406(a), or alternatively pursuant to 28 U.S.C. § 1404(a). On June 16, 2014, plaintiff filed its opposition. Dkt. 13. Defendants replied on June 23, 2013. Dkt. 14. On July 7, 2014, the Court held a hearing. After considering the parties' arguments, the Court finds and concludes as follows.
Under Fed. R. Civ. P. 12(b)(3), a defendant may move to dismiss or transfer a complaint for improper venue. When deciding a Rule 12(b)(3) motion, unlike a Rule 12(b)(6) motion, the Court need not accept the pleadings as true and may consider facts outside the pleadings.
In determining if the plaintiff's preferred venue is improper for the purposes of 28 U.S.C. § 1406, the court looks to 28 U.S.C. § 1391(b), which provides that venue is proper in
28 U.S.C. § 1391(b). Once a defendant has raised a timely objection to venue, the plaintiff has the burden of showing that venue is proper.
Alternatively, if venue is found to be proper in this district, the Court may nonetheless find that transfer is appropriate based on consideration of the following factors: (1) the convenience of the parties; (2) the convenience of the witnesses; and (3) the interests of justice. 28 U.S.C. § 1404(a);
In analyzing the "interests of justice," a number of factors are relevant, including the following: (1) the location where relevant agreements (if any) were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff's choice of forum, (4) the respective parties' contacts with the forum, (5) the contacts relating to the plaintiff's cause of action in the chosen forum, (6) the differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, and (8) the ease of access to sources of proof.
However, "[s]ubstantial weight is accorded to the plaintiff's choice of forum, and a court should not order a transfer unless the `convenience' and `justice' factors set forth above weigh heavily in favor of venue elsewhere."
Plaintiff's complaint alleges that venue is proper in this district under both § 1391(b)(1) and § 1391(b)(2). As set forth below, the Court concludes that venue is improper in this district. Thus this action should be dismissed or transferred to the Northern District of California.
Venue is proper under 28 U.S.C. § 1391(b)(1) if all of the defendants reside in California and at least one of the defendants is deemed to reside in the Central District of California. It is undisputed that individual Romano resides in the Northern District of California. Accordingly, venue is only proper if DKC resides in this district. For venue purposes, corporate defendants such as DKC "are deemed to reside . . . in any judicial district in which" a court may exercise personal jurisdiction exists over the corporation for purposes of the case in question. 28 U.S.C. § 1391(c)(3). Venue therefore turns on whether DKC is subject to this Court's personal jurisdiction with respect to this action.
At the outset, the Court finds that only specific jurisdiction over defendant is properly at issue here. Plaintiff offers no allegations or evidence that would possibly support an exercise of general jurisdiction over DKC, which would require DKC's contacts be substantial enough to approximate physical presence in the forum state.
The Court has specific jurisdiction over DKC if DKC has sufficient minimum contacts with the forum state arising from, or related to, its alleged infringing actions, namely operating a dog kennel facility under the name Dogfather K9 Connections and its attendant website.
The first prong may be satisfied by a showing of either purposeful availment or purposeful direction. In a tort case, courts focus on the latter, applying the effects test set forth in
Plaintiff argues that the first prong of the effects test is satisfied because defendants intentionally registered their various infringing "dogfatherk9connections" domain names and advertised their services through the same trade channels and to the same customer base as plaintiff. Opp'n at 7. Further, plaintiff contends that defendants have wilfully infringed plaintiff's Dogfather mark by using the identical term to refer to Romano and as part of defendant's name Dogfather K9 Connections which offers services such as dog training, boarding and day care.
Based on this evidence, plaintiff has not met his burden showing that DKC is subject to personal jurisdiction in this district. Plaintiff does not introduce sufficient evidence that DKC directed its activities towards this district. As discussed above, DKC's kennel facility is located entirely in the Northern District of California. Additionally, plaintiff offers no evidence that DKC solicits business in this district.
Further, plaintiff cannot rely upon defendants' website to justify venue being proper in this district. With respect to the express aiming prong of the
While plaintiff is able to satisfy the first prong of the
Accordingly, because this Court concludes that DKC did not purposefully direct its activities toward this district, plaintiff does not satisfy the first prong of the specific jurisdiction test. Thus plaintiff fail to meet his burden of proof showing that defendant DKC is subject to this Court's personal jurisdiction with respect to the civil action in question.
Venue is proper in this district under this subpart of the general venue statute if "a substantial part of the events or omissions giving rise to the claim occurred" in the Central District of California. "In a trademark infringement action, `the actionable wrong takes place both where infringing labels are affixed to the goods and where confusion of purchasers is likely to occur.'"
Plaintiff argues that venue is proper in this District under § 1391(b)(2) because the trademarked property at issue is located and distributed from this district, and Southern Californian purchasers might become confused by defendants' website's allegedly infringing marks and accidently purchase their services. Opp'n at 5.
In response, defendants contend that defendants' allegedly infringing labels are affixed "on the exterior signage of [their] facility" and "on road-side signage directing customer to [their] facility," and therefore the alleged trademark infringement takes place in the Northern District of California, "not in Southern California where the plaintiff's goods are distributed by a third party." Reply at 2. Additionally, defendants argue that plaintiff's allegation that confused Southern California purchasers likely accidentally purchase DKC's services from the internet should be dismissed as conjecture.
Based on the above evidence, plaintiff has not met his burden showing that a substantial part of the alleged trademark infringement took place in this district. Both the presence of plaintiff's trademarked property and its distribution from this district by a third party are irrelevant in determining whether venue is proper in this district. Plaintiff offers no evidence that consumers in the Central District are likely to be confused by the name of a dog kennel located in the Northern District. Although plaintiff hypothesizes that Southern California purchasers could become confused by defendants website when researching trips to Northern California, this scenario is speculative at best. Accordingly, 28 § 1391(b)(2) does not justify venue in this district.
As set forth above, the Court concludes that venue is improper in this district. When a district court determines an action has been brought in "the wrong division or district," the Court may either dismiss the case, or "if it be in the interest of justice," transfer the case.
Section 1406(a) "instructs a court to transfer a case from the `wrong' district to a district `in which it could have been brought under § 1391.'"
Alternatively, if venue is proper in this district, defendants argue in the alternative that this case should be transferred to the Northern District of California pursuant to 28 U.S.C. § 1404 for the convenience of the parties and witnesses, and in the interest of justice. Mot. at 6-7. Defendants contend that this matter should be transferred to the Northern District of California because both defendants, almost all of the witnesses, the events and omissions at issue, and much of the evidence is located in or around Santa Rosa, California.
As discussed above, venue is not proper in this district. Alternatively, even if venue were proper in this district, the Court would nonetheless concludes that this action should be transferred to the Northern District of California pursuant to § 1404. First, venue is proper in the Northern District of California. Second, transferring this case to the Northern District of California also promotes the interests of justice because this Court is unable to compel witnesses outside the 100-mile limit from appearing for trial testimony with relevant evidence. Fed. R. Civ. P. 45(c)(1)(A). Since these witnesses likely reside or are employed near Santa Rosa, they would likely be within the subpoena power of the Northern District of California.
In accordance with the foregoing, the Court hereby GRANTS defendants' motion to transfer this action to the Northern District of California.