JOSEPH C. SPERO, United States Magistrate Judge
Defendant T.J. Bellafiore, an individual, brings a Motion to Dismiss for Lack of
Plaintiff Kaia Foods, Inc. ("Kaia") is based in Oakland, California. Complaint ¶ 4. Kaia and its predecessor-in-interest, Alive & Radiant Foods, "produce and sell healthy, organic snacks, including airdried, organic vegetable chips." Id. ¶ 6. Plaintiff contends it holds a common-law trademark for KALE IN A KRUNCH and KALE KRUNCH, which it refers to collectively as the "KALE KRUNCH trademark." Plaintiff's Opposition to Defendant's Motion to Dismiss ("Opposition") at 2. In particular, Plaintiff alleges in the Complaint that "[a]s early as April 2008, Plaintiff's predecessor-in-interest launched an air-dried organic kale chip product, which it marketed under the KALE IN A KRUNCH trademark." Complaint ¶ 7. Plaintiff further alleges that "[c]urrently, Kale Krunch is available for purchase throughout the United States at numerous health food stores, as well as online at Plaintiff's website and other third-party websites, such as Amazon.com." Id. ¶ 8.
According to Plaintiff, Defendant Bellafiore has knowingly and in bad faith infringed Kaia's trademark. In support of its allegation that Defendant was aware of Kaia's mark, Kaia alleges that "[o]n November 7, 2008, Defendant placed an order for Plaintiff's "Kale in a Krunch" chips via Plaintiff's website; the name on the order was T.J. Bellafiore and included a corresponding email address." Id. ¶ 9. Kai further alleges that Defendant registered the domain name "kaleinyourkitchen.com" on December 4, 2010 and the domain name "Kale.krunch.com" on March 18, 2011. Id. ¶¶ 10-11. As of March 19, 2011, the Whois record for the latter domain name allegedly listed a mailing address in Culver City, California. Id. ¶ 11.
Kaia alleges that on April 15, 2011, Defendant filed a federal trademark application with the United States Patent and Trademark Office ("USPTO") for "KALE KRUNCH" in which Defendant claimed that the mark was "in use" and that the date of first use in commerce was April 15, 2011. Id. ¶ 13. The trademark allegedly was registered on October 22, 2013 with Registration No. 4422321 and the registration lists the owner as T.J. Bellafiore, dba Kale in Your Kitchen, located in Culver City, California. Id. Kaia alleges that Defendant "copied Plaintiff's Kale Krunch recipe and has been marketing kale-based snacks under the KALE KRUNCH trademark online via the domain <kaleinyourkitchen.com>." Id. ¶ 14. According to Kaia, currently that domain "resolves to a website that prominently displays the KALE KRUNCH trademark at the top of the page." Id.
Kaia asserts claims for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125 (Claim One), violation of the Anti-cybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d) (Claim Two) and unfair competition under the California Business and Professions Code, §§ 17200 et seq. (Claim Four). Kaia also brings a claim seeking the cancellation of Defendant's trademark registration for the KALE KRUNCH mark on the basis that Defendant allegedly "misrepresented that no other person had the right to use the trademark" (Claim Three).
Defendant brings a motion seeking dismissal of this action on the basis of improper venue or transfer to the Central District of California, pursuant to Fed. R. Civ. P. 12(b)(3) (authorizing motion to dismiss for improper venue) and 28 U.S.C. § 1406(a) (providing that "[t]he district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought"). Defendant T.J. Bellafiore's Motion to Dismiss for Lack of Venue, or, in the Alternative, to Transfer Venue ("Motion") at 1. Defendant invokes 28 U.S.C. § 1391(b), governing venue in civil actions, arguing that subsection (1), providing for venue in "a judicial district in which a defendant resides, if all defendants are residents of the State in which the district is located," does not apply because Defendant does not reside in the Northern District of California but rather, in Los Angeles County, in the Central District of California. Id. at 6-7.
In support of the Motion, Defendant Bellafiore has filed a declaration stating that she has been does business in Los Angeles County as "Kale in Your Kitchen" since 2011 and that at all relevant times she is and has been a permanent resident of Los Angeles. Declaration of T.J. Bellafiore ("Bellafiore Decl."), ¶ 1, 3, 5. According to Ms. Bellafiore, she sells her kale snacks to "Los Angeles and Palm Springs-based customers in person and through [her] website." Id. ¶ 4. She states that when an order is placed through her website or directly, she mails or delivers the order in person and therefore, that she has "personal knowledge of the location of every customer who has purchased Kale snacks from her directly or through her website." Id. ¶ 8. According to Ms. Bellafiore, "[s]ince [she] began [her] business, the majority of [her] sales of Kale Snacks have been in person, or over the phone, to Los Angeles and Palm Springs-based clientele that [she has] developed" and that she has "never marketed any Kale Snacks to customers in Northern California" and has not "ever sold Kale Snacks directly to customers living in California or the San Francisco area." Id. ¶¶ 8-9. She further states as follows:
Id. ¶ 11. Finally, Ms. Bellafiore states that she is the registered owner of the trademark KALE KRUNCH, USPTO Registration No. 4422321 and the domain name <kaleinyourkitchen.com>, which she uses "to display the [KALE KRUNCH] mark and offer Kale Snacks for sale." Id. ¶¶ 6-7.
In its Opposition brief, Kaia argues that venue in this district is proper because: "(1) substantial events giving rise to this action occurred in the Northern District, and (2) consumer confusion, due to Defendant's
Kaia argues that in tort cases, a substantial part of the events upon which the claim is based occur where the harm is felt by the plaintiff and therefore, venue is proper in the Northern District. Opposition at 5 (citing Twitter v. Skootle Corp., 2012 WL 2375486, at *6 (N.D.Cal. June 22, 2012)). Kaia also asserts that Defendant knew that any harm would be suffered in this district because she purchased Plaintiff's product in 2008. Id. at 6. Moreover, Kaia argues, Defendant's "bare assertion that she is located in the Central District and supposedly does not do business in this District is a far cry from the `strong showing' that could upset Plaintiff's choice of forum." Id. (citing Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.1986); Natural Wellness Centers of Am., Inc. v. J.R. Andorin, Inc., 2012 WL 216578, at *10 (N.D.Cal. Jan. 24, 2012); Warfield v. Gardner, 346 F.Supp.2d 1033, 1044 (D.Ariz.2004)).
Kaia also argues that venue is proper in the Northern District because consumer confusion is likely to occur in this District. Id. at 6-8. Kaia cites the rule that "[i]n a trademark infringement action, the actionable wrong takes place both where the infringing labels are affixed to the goods and where confusion of purchasers is likely to occur." Id. at 7 (quoting Ansel Adams Publishing Rights Trust v. PRS Media Partners, L.L.C., 2010 WL 4974114 (N.D.Cal. Dec. 1, 2010) and citing Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., 2005 WL 701599, at *4 n. 2 (N.D.Cal. March 23, 2005)). According to Kaia, there can be consumer confusion in this district merely because Defendant's products are advertised and made available here, even if Defendant has made no actual sales in the District. Id. at 7. Kaia contends consumer confusion is likely in this district because consumers in the Northern District can access Defendant's website. Id.; see also Declaration of Marie Richmond in Support of Plaintiff's Opposition to Defendant's Motion to Dismiss ("Richmond Decl."), ¶ 5.
Finally, Kaia asserts that in determining whether a transfer is appropriate, the court should also consider: 1) the plaintiff's choice of forum; 2) the convenience of the witnesses and parties; 3) familiarity of the forum with applicable law; 4) ease of access to evidence and 5) relative court congestion. Id. at 8 (citing Ansel Adams, 2010 WL 4974114, at *2). According to Plaintiff, a defendant seeking transfer must make a strong showing of inconvenience to warrant upsetting the plaintiff's choice of forum and Defendant has not made such a showing here. Id. at 8-9.
Defendant also rejects Plaintiff's argument that Defendant must make a strong showing that the Northern District is less convenient for the parties than the Central District to warrant transfer. Id. at 4-5. Defendant argues that this standard applies to transfers requested under 28 U.S.C. § 1404(a), not to transfers like the one requested here, under § 1406(a). Id. Similarly, Defendant argues, the rule cited by Kaia that a plaintiff's choice of forum generally should not be disturbed applies to § 1404(a) transfers, not § 1406(a) transfers. Id. at 5.
A party may bring a motion to dismiss an action for improper venue pursuant to Federal Rule of Civil Procedure 12(b)(3). When venue is improper, the court "shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought." 28 U.S.C. § 1406(a). Plaintiff bears the burden of showing that venue is proper. See Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir.1979) ("Plaintiff had the burden of showing that venue was properly laid in the Northern District of California."). When the plaintiff asserts multiple claims, it must establish that venue is proper as to each claim. Adobe Systems, Inc. v. Childers, 2011 WL 566812, at *7 (N.D.Cal. Feb. 14, 2011) (citation omitted). However, where venue exists for the principal claim, federal courts will also adjudicate closely related claims, even if there is no independent source of venue for the related claims. Id.
On a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(3), "the pleadings need not be accepted as true, and the court may consider facts outside of the pleadings." Murphy v. Schneider National, Inc., 362 F.3d 1133, 1137 (9th Cir.2004) (citations omitted). Whether to permit discovery relating to venue is within the Court's discretion. Trusted Health Products, Inc. v. Blue Cross Laboratories, Inc., 2014 WL 3586256, at *2 (E.D.Ky. July 21, 2014) (the scope of discovery concerning jurisdiction,
Venue as to a trademark claim is evaluated under the general venue statute, 28 U.S.C. § 1391(b). Adobe Systems, 2011 WL 566812, at *7. Under 28 U.S.C. § 1391(b)(2), upon which Kaia relies to establish venue in this action, venue is proper in "a judicial district in which a substantial part of the events or omissions give rise to the claim occurred...." In a trademark infringement action, a substantial part of the events occur both where the labels are affixed and where confusion of purchasers is likely to occur. Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., 2005 WL 701599, at *4 n. 2 (N.D.Cal. March 23, 2005) (citation omitted).
Confusion of customers occurs where the passing off occurs, that is, "where the deceived customer buys the defendant's product in the belief that he is buying the plaintiffs." Sykes Laboratory, Inc. v. Kalvin, 610 F.Supp. 849, 860 n. 8 (C.D.Cal. 1985). Thus, in Sutter Home, the court found that venue was proper in the Northern District of California where the defendant, whose business was located outside the district, operated a website advertising its products that was accessible in the Northern District and made "relatively modest sales" in this district. 2005 WL 701599, at *4 n. 2; see also Adobe Systems, 2011 WL 566812, at *8 n. 5 (citing Sutter Home for the proposition that "a website coupled with even a small number of sales in the district can support a finding that venue is proper"). Further, courts have held that confusion is likely to occur based on advertising activities that are aimed at the district, even if there is no evidence that actual sales of the allegedly infringing product have occurred. Adobe Systems, 2011 WL 566812, at *8 (holding that venue was proper, even though there was no evidence of sales in the district, because defendant had "aimed its activities at" the district by entering into numerous contracts with companies in the district and advertised prominently on its website its "close relationship" with these local companies); see also Radical Products, Inc. v. Sundays Distributing, 821 F.Supp. 648, 650 (W.D.Wash.1992) (holding that venue was proper, even though there were no sales in the district because defendant had mailed 650 brochures advertising its products to addresses in the district).
On the other hand, courts have generally held that the mere fact that a website that displays the allegedly infringing mark can be accessed in the district is not sufficient for venue in the absence of sales in the district or other activities aimed at the district. See Shari's Berries International, Inc. v. Mansonhing, 2006 WL 2382263, at *2 (E.D.Cal. Aug. 17, 2006) (holding that where mark was displayed on website that provided email address and toll-free number for placing orders but there were no other events or omissions in the district, venue was improper); Francesca's Collections, Inc. v. Medina, 2011 WL 3925062 (S.D.Tex. Sept. 7, 2011) (holding that where defendant advertised allegedly infringing mark on an
In Jamba Juice Company v. Jamba Group, Inc., 2002 WL 1034040, at *2 (N.D.Cal. May 15, 2002), Judge Walker offered the following explanation for rejecting venue on a trademark infringement claim based on accessibility to the defendant's website coupled with harm to the plaintiff in the district:
Id. Citing the Eighth Circuit's decision in Woodke v. Dahm, 70 F.3d 983 (8th Cir. 1995), Judge Walker found that such a result would be contrary to Congressional intent in enacting the venue statute, which focuses on the activities of the defendant. Id. He went on to note that in the context of personal jurisdiction, to which courts look for guidance as to the venue inquiry, "the Ninth Circuit has made it clear in a series of recent decisions that in order to establish personal jurisdiction, a plaintiff must show `something more' than the operation of a general access website, specifically, `conduct directly targeting the forum.'" Id. (quoting Rio Properties, Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1020 (9th Cir.2002), discussing Cybersell, Inc v. Cybersell, Inc, 130 F.3d 414, 418-20 (9th Cir.1997)). Judge Walker continued, "[t]his `something more' occurs, for example, when a company places print and radio advertisements in the forum state." Id. (citing Rio Properties, 284 F.3d at 1020-22). He went on to hold that venue was improper where the defendant's activities were conducted entirely outside of the district and the only connection to the district was that defendant operated a website that was accessible in the district.
In Dakota Beef, the court reached a similar result, looking to the law of personal jurisdiction for guidance. 445 F.Supp.2d at 920-921. Noting that access to a passive website is not sufficient to give rise to minimum contacts for the purposes of personal jurisdiction, the court went on to address whether the contacts in that case were adequate for the purposes of venue. Id. at 920. The court held that they were not, reasoning as follows:
Id. at 920-921.
Plaintiff in this case, however, points to Ansel Adams Publishing Rights Trust v. PRS Media Partners, LLC, 2010 WL 4974114 (N.D.Cal. Dec. 1, 2010) in support of its position that access by internet users in this district to a generally accessible website that displays the allegedly infringing mark is sufficient to establish a likelihood of confusion within the district for the purposes of venue. In Ansel Adams, the court held that there was a likelihood of confusion in the district because the defendant maintained a website through which internet users in the district could order the defendant's product. 2010 WL 4974114, at *2. In support of this conclusion, the court cited Sutter Home, highlighting the fact that the defendant in that case advertised its product on its website and that although the product could not be ordered directly through the website, customers could download an order form and mail or fax an order to the company. Id. The court did not address the fact that in Sutter Home, the defendant also made sales of its product, albeit modest sales, in the district.
To the extent the court in Ansel Adams extended the holding of Sutter Home to a situation in which the only basis for finding a likelihood of confusion in the district is the operation of an interactive website that is accessible in the district, the undersigned declines to follow Ansel Adams. First, the court in Ansel Adams did not address whether its holding was consistent with Congress's intent in enacting the general venue statute. For the reasons stated in Jamba Juice, the undersigned finds that it is not. Second, the court in Ansel Adams did not look to the law of personal jurisdiction for guidance or explain why it implicitly rejected the conclusions of the courts that have considered the law of personal jurisdiction, including Jamba Juice and Dakota Beef, and found on that basis that venue is improper where it is based only on access to an interactive website that is generally accessible to internet users.
Aside from the website operated by Defendant, none of the acts or omissions upon which Plaintiff's trademark infringement claim is based occurred in the Northern District of California. Although internet users in this district can access Defendant's website, there is no evidence that any orders have ever been placed by purchasers in this district. To the contrary, the only evidence is that no orders have been placed with Defendant from this district — whether via the website or through any other means. Defendant has also offered uncontroverted evidence that she has never aimed her marketing activities
The Court also rejects Plaintiff's assertion that venue in the Northern District is proper because in tort cases, venue is proper where the harm is felt by the plaintiff. As discussed above, that is not the rule as to claims for trademark infringement. Further, the case cited by Plaintiff in support of this proposition, Twitter, Inc. v. Skootle Corp., does not involve a trademark infringement claim but rather, a contract claim in which the defendant had entered a terms of service agreement that included a forum selection clause. 2012 WL 2375486, at *6 (June 22, 2012). Similarly, Plaintiff's reliance on cases involving requests for convenience transfers under 28 U.S.C. § 1404(a) is misplaced. See Opposition at 5-6 (citing Natural Wellness Centers of America, Inc. v. J.R. Andorin, Inc., 2012 WL 216578, at *10 (N.D.Cal. Jan. 24, 2012) (denying request for a transfer of venue under 28 U.S.C. § 1404(a)); Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.1986) (same); Warfield v. Gardner, 346 F.Supp.2d 1033, 1044 (D.Ariz.2004) (same)). Defendant does not seek a transfer under 28 U.S.C. § 1404(a) based on convenience; rather, Defendant asserts the case should be dismissed or transferred because venue is improper under § 1406(a).
Finally, the Court denies Plaintiff's request to conduct discovery on venue. Although Defendant offered a declaration in support of the Motion stating that no sales had been made of the allegedly infringing product in this district and no advertising efforts had been aimed at this district, Kaia did not offer any evidence to the contrary in support of its Opposition brief. Nor did Kaia suggest in its Opposition that it needed to conduct discovery on venue in order to adequately respond to Defendant's evidence. Rather, Kaia relied entirely upon the theory that there is a likelihood of confusion in the district because Defendant's website is accessible here. It was only when Kaia's counsel became aware, at oral argument, that the Court did not agree with its theory that it asked for the opportunity to conduct discovery on venue so that it could "beef up" its allegations. Kaia's request is untimely; moreover, Kaia has offered nothing in its briefs or at oral argument that leads the Court to believe that venue discovery will change the result on this issue. Accordingly, the Court declines to exercise its discretion to permit Kaia to conduct discovery on venue. See Trusted Health Products, Inc. v. Blue Cross Laboratories, Inc., 2014 WL 3586256, at *2 (E.D.Ky. July 21, 2014).
As the Court finds that venue in the Northern District of California is improper as to Plaintiff's trademark infringement claim — and Plaintiff has made no attempt to establish that venue in this district is proper as to any of its other claims — the only remaining question is whether the Court should dismiss or transfer the action. Based on the evidence in the record, as well as the stipulation of the parties, the Court finds that venue in the Central District of California is proper as to all of Plaintiff's claims. Therefore, it is in the interest of justice to transfer the action to that district.
The Motion is GRANTED on the basis that venue is improper in this district. The action shall be transferred to the Central District of California.
