WILLIAM J. MARTÍNEZ, District Judge.
Plaintiffs Pandaw America, Inc. and Paul Strachan (jointly "Plaintiffs") bring claims against the above-listed Defendants for trademark infringement, unfair competition, misappropriation, and cyberpiracy. (Complaint (ECF No. 1) at 20-36.) Before the Court is Defendants' Joint Motion to Dismiss for Lack of Personal Jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2) ("Motion"). (ECF No. 39.) For the reasons set forth below, the Motion is granted in part and denied in part.
The purpose of a motion to dismiss pursuant to Rule 12(b)(2) is to test whether the Court has personal jurisdiction over the named parties. Plaintiffs bear the burden of establishing personal jurisdiction over all of the Defendants. Behagen v. Amateur Basketball Ass'n, 744 F.2d 731, 733 (10th Cir.1984). If the presence or absence of personal jurisdiction can be established by reference to the complaint, the Court need not look further. The Court will accept the well-pled allegations (namely the plausible, nonconclusory, and nonspeculative facts) of the complaint as true to determine whether Plaintiffs have made a prima facie showing that personal jurisdiction exists. Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir.2008). Any factual conflicts must be resolved in the plaintiff's favor. Wenz v. Memery Crystal, 55 F.3d 1503, 1505 (10th Cir.1995). To defeat the plaintiff's prima facie case, a defendant "must present a compelling case demonstrating `that the presence of some other considerations would render jurisdiction unreasonable.'" OMI Holdings v. Royal Ins. Co. of Can., 149 F.3d 1086, 1091 (10th Cir.1998) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985)).
Plaintiff Pandaw America is a corporation based in Colorado that is the United States arm of the larger multi-national Pandaw organization. (ECF No. ¶ 2.) The larger Pandaw organization operates river cruises in various countries throughout the world. (Id. ¶ 15.) Plaintiff Paul Strachan is the president and owner of the larger Pandaw organization. (Id. ¶ 3.) The Court will refer to these entities collectively as Pandaw.
Pandaw owns United States Trademark registration 3,021,969 ("Pandaw Mark"). (Id. ¶ 17.) The Pandaw Mark was registered in 2005 in connection with travel agency services. (Id. ¶¶ 17-18.) Pandaw is also the owner of the website http:// www.pandaw.com. (Id. ¶ 20.)
Defendant Pandaw Cruises India Pvt. Ltd. ("Pandaw India") is an Indian corporation that was formed in 2004 and began operating cruises on the Ganges River in
Pandaw India registered three domain names to promote their Ganges River cruises: (1) bengalpandaw.com; (2) pandaw.in; and (3) pandawcruises.com.
On August 16, 2010, Plaintiffs sent Defendant Raj Singh, Pandaw India's director, a cease-and-desist letter demanding that Pandaw India stop using the Pandaw Mark. (ECF No. 1 ¶ 41, ECF No. 40-3.) In response, Pandaw India changed its name to Heritage River Cruises, Pvt. Ltd. ("Heritage"). (ECF No. 40 ¶ 13.) Defendant Heritage then registered the following websites: (1) www.thegangescruise. com; and (2) www.thegangescruise-us.com. (ECF No. 1-4 at 42.) These websites promoted Pandaw India/Heritage's Ganges River cruises.
Based on these facts, Plaintiffs bring claims of statutory and common law trademark infringement, statutory and common law unfair competition, common law misappropriation, and cyberpiracy. (ECF No. 1.) Defendants have collectively moved to dismiss the Complaint and assert that the Court does not have personal jurisdiction over them. (ECF No. 39.)
The Tenth Circuit has established a two-part test for personal jurisdiction: "First, we ask whether any applicable statute authorizes service of process on defendants. Second, we examine whether the exercise of statutory jurisdiction comports with constitutional due process demands." Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th Cir. 2008). Plaintiffs assert that there are two statutes that authorize service of process on Defendants: (1) the Colorado longarm statute — Colo. Rev. Stat. § 13-1-124; and (2) Federal Rule of Civil Procedure 4(k)(2). The Court will examine each in turn below.
In Colorado, the state's long arm statute — Colo. Rev. Stat. § 13-1-124 — "confers the maximum jurisdiction permissible consistent with the Due Process Clause." Archangel Diamond Corp. v. Lukoil, 123 P.3d 1187, 1193 (Colo.2005). Thus, the Court need only address the constitutional question of whether the exercise of personal jurisdiction over Defendants comports with due process. Dudnikov, 514 F.3d at 1070 (10th Cir.2008) (noting that the inquiry into whether any statute authorizes service of process "effectively collapses into the second, constitutional, analysis" in Colorado).
"[T]he question of whether a non-resident defendant has the requisite minimum contacts with the forum state to establish in personam jurisdiction must be decided on the particular facts of each case." Benton v. Cameco Corp., 375 F.3d 1070, 1076 (10th Cir.2004) (internal quotation marks omitted). "[T]he individual nature of the [personal jurisdiction] determination makes it extremely difficult to compare precisely the unique circumstances and outcomes of different cases." Keefe v. Kirschenbaum & Kirschenbaum, P.C., 40 P.3d 1267, 1273 (Colo.2002).
The minimum contacts analysis differs depending on whether it arises from specific or general jurisdiction. OMI Holdings, 149 F.3d at 1090-91. A court may assert specific jurisdiction "if the defendant has `purposefully directed' his activities at residents of the forum, and the litigation results from alleged injuries that `arise out of or relate to' those activities." Burger King, 471 U.S. at 472, 105 S.Ct. 2174 (internal citations and quotations omitted). General jurisdiction, on the other hand, "arises when a defendant maintains continuous and systematic contacts with the forum state even when the cause of action has no relation to those contacts." Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). Plaintiffs' Complaint alleges that the Court has both general and specific jurisdiction over Defendants. (Compl. ¶ 12.) However, in their opposition to the instant Motion, Plaintiffs abandon their general jurisdiction claim. (ECF No. 41 at 8 n. 2.) Thus, the Court will examine only whether Defendants had sufficient contacts with Colorado so as to invoke specific personal jurisdiction.
A court may exercise specific jurisdiction when the defendant has purposefully directed its activities to the forum state and where the underlying alleged injury arises out of or relates to the defendant's activities in the forum state. Found. for Knowledge in Dev. v. Interactive Design, 234 P.3d 673, 678 (Colo.2010). This is a two prong analysis, where the Court must determine (1) "whether the defendant purposefully availed himself of the privilege of conducting business in the forum state;" and (2) "whether the litigation `arises out of' the defendant's forum-related contacts." Id. (quoting Archangel, 123 P.3d at 1194). Within this analysis, the Court considers the "quantity and quality" of Defendants' contacts in Colorado. OMI Holdings, 149 F.3d at 1092 (emphasis in original).
Plaintiffs have failed to establish that Defendants had sufficient minimum contacts with Colorado to warrant specific jurisdiction. A defendant has "purposefully directed" its activities at Colorado or its residents when it has (1) taken intentional action, (2) that was expressly aimed at Colorado, (3) with the knowledge that the brunt of the injury from the action would be felt in Colorado. Dudnikov, 514 F.3d
Accordingly, the Court finds that Plaintiffs have failed to show that Defendants have sufficient minimum contacts with Colorado so as to subject Defendants to personal jurisdiction under the Colorado longarm statute.
Federal Rule of Civil Procedure 4(k)(2) provides, in relevant part: "For a claim that arises under federal law, serving a summons ... establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws." Fed.R.Civ.P. 4(k)(2). In essence, Rule 4(k)(2) acts as "a sort of federal longarm statute." United States v. Swiss American Bank, Ltd., 191 F.3d 30, 36 (1st Cir.1999). It allows a court to exercise personal jurisdiction over a defendant if: (1) the plaintiff's claim arises under federal law; (2) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and (3) the exercise of jurisdiction comports with due process. Synthes (U.S.A.) v. G.M. Dos Reis Jr., 563 F.3d 1285, 1293-94 (9th Cir.2009); World Tanker Carriers Corp. v. M/V Ya Mawlaya, 99 F.3d 717, 720 (5th Cir.1996).
Plaintiffs' Complaint brings six claims, three of which arise under federal law: (1) trademark infringement in violation of 15 U.S.C. § 1114; (2) unfair competition in violation of 15 U.S.C. § 1125(a); and (3) cyberpiracy in violation of 15 U.S.C. § 1125(d). (ECF No. 1.)
Defendants argue that Plaintiffs' claims do not truly arise under federal law: "[W]hat Plaintiffs have framed as a trademark infringement dispute is in reality only a thinly veiled cover for a power grab for an Indian company, based on agreements and licenses granted under Indian law." (ECF No. 39 at 18-19.) In so arguing, Defendants are essentially asking
Moreover, the existence of a license or other agreement to use a trademark is an affirmative defense against a trademark infringement claim. See Creative Gifts, Inc. v. UFO, 235 F.3d 540, 547-48 (10th Cir.2000). Thus, Defendants are free to defend against Plaintiffs' claims by asserting their license or other agreement to use the trademark. But the fact that they have this defense does not convert Plaintiffs' trademark claims into a contract dispute. Plaintiffs have pled trademark infringement and other federal claims and, therefore, the Court finds that Plaintiffs have satisfied the first prong of the Rule 4(k)(2) test.
The second prong of the Rule 4(k)(2) test requires that the defendant not be subject to personal jurisdiction in any of the fifty states. Rather than requiring the plaintiff to meet the onerous burden of proving that the defendant is not subject to personal jurisdiction in any of the 50 states, most circuits have taken the following approach:
ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 552 (7th Cir.2001) (citations omitted); see also Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1415 (Fed.Cir.2009); Holland Am. Line, Inc. v. Wartsila N.A., 485 F.3d 450, 461 (9th Cir. 2007); Mwani v. bin Laden, 417 F.3d 1, 11 (D.C.Cir.2005); Adams v. Unione Mediterranea Di Sicurta, 364 F.3d 646, 651 (5th Cir.2004). Because of the widespread agreement amongst the circuits, the Court presumes that the Tenth Circuit would adopt this approach.
Defendants here contend that they are not subject to personal jurisdiction in any state in the United States. (ECF No. 56 at 5-7.) Accordingly, the Court finds that the second prong of the Rule 4(k)(2) analysis is satisfied.
Under Rule 4(k)(2), the Court makes the same constitutional inquiry into the quantity and quality of the Defendants' contacts with the forum as discussed above. However, the forum in this analysis is the United States as a whole rather than Colorado. Synthes, 563 F.3d at 1295. Thus, the Court must determine whether: (1) Defendants have purposefully directed their activities at residents of the United States; (2) Plaintiffs' claims arise out of or relate to Defendants' activities with the forum; and the assertion of personal jurisdiction over Defendants would be fair and reasonable. Id. at 1297.
Plaintiffs must show that personal jurisdiction is proper over each individual Defendant. Rush v. Savchuk, 444 U.S. 320, 332, 100 S.Ct. 571, 62 L.Ed.2d 516 (1980) ("The requirements of International Shoe... must be met as to each defendant over whom a state court exercises jurisdiction.") Therefore, the Court will separately consider whether the it would comport with
Plaintiffs bring their claims against the following entities: (1) Pandaw Cruises India Pvt. Ltd.; (2) Exotic Journeys Pvt. Ltd.; (3) Exotic Hospitality Pvt. Ltd.; (4) Gajraj Wildlife Resorts Pvt. Ltd.; and (5) Heritage River Cruises Pvt. Ltd. (ECF No. 1.) Heritage is the successor entity to Pandaw Cruises. (ECF No. 40 ¶ 10.) The other entities are or were shareholders in Pandaw India/Heritage. (Id. ¶¶ 2, 5.) Defendants Raj Singh and Vishnu Singh Sinsinwar are directors of all of these entities. (Id. ¶¶ 1-2.) Because all of these entities have common ownership and control, the Court will consider all of them together as the "Entity Defendants".
The Court finds that the Entity Defendants have purposefully directed their activities towards residents of the United States. The Entity Defendants have registered at least two different websites: http://thegangescruise.com and http://thegangescruise-us.com (the "U.S. website") to market their cruises worldwide. (ECF Nos. 1-4 & 41-6.) "The intended market for business conducted through a website can be determined by considering the focus of the website as a whole." Graduate Mgmt. Admission Council v. Raju, 241 F.Supp.2d 589, 598 (E.D.Va. 2003). The relevant question is whether the website is "designed to attract or serve a [United States] audience." Young v. New Haven Advocate, 315 F.3d 256, 263 (4th Cir.2002).
The U.S. website states that it is "designed for travel agents" and directs users to contact two agents located in the United States "to help provide U.S.-based administrative functions and facilitate the booking and payment process for North American travel agents and their customers." (ECF No. 41-6 at 3.) The U.S. website has directions for traveling to India from the United States, including information on which airlines have flights from the United States to the cruise's port cities. (Id. at 5.) Additionally, the Entity Defendants maintain a phone number that is toll-free for persons calling from the United States. (ECF No. 41-6.) Thus, the Court finds that the Entity Defendants have purposefully directed their activities at United States residents. See Graduate Mgmt. Admission Council, 241 F.Supp.2d at 598 (under substantially similar circumstances, court found that website was designed to attract a United States audience).
The Court also finds that Plaintiffs' claims relate to the activities that the Entity Defendants direct towards the United States. Until Pandaw India recently changed its name to Heritage, and, in conjunction, changed the websites from www.bengalpandaw.com, www.pandaw.in, and www.pandawcruisesindia.com, to www.thegangescruise.com and www.thegangescruise-us.com, Plaintiffs' Pandaw Mark was a prominent aspect of the websites. (See ECF No. 1-4.) Plaintiffs' Complaint alleges that Defendants' use of the Pandaw Mark in online and print advertisement caused actual consumer confusion in the United States. (ECF No. 1 at 25-26; ECF No. 41-1 ¶¶ 23-24.) Thus, the Court finds that Plaintiffs' claims in this case relate to the Entity Defendants' websites and advertising materials, which are targeted to United States residents.
Finally, the Court finds that assertion of jurisdiction over the Entity Defendants would be fair and reasonable. In determining whether the exercise of jurisdiction is reasonable, the Court must look at the following factors: (1) the burden on the defendant; (2) the forum state's interest in resolving the dispute; (3) the plaintiff's interest in receiving convenient and effective relief; (4) the interstate judicial system's interest in obtaining the most
As previously noted, under Rule 4(k)(2), the forum is the entire United States. As these claims involve United States intellectual property laws, the forum clearly has significant interest in resolving this dispute. See Sunshine Distribution Inc. v. The Sports Authority Michigan, Inc., 157 F.Supp.2d 779 (E.D.Mich.2001) ("United States obviously has an interest in enforcing its statutes.").
Plaintiff Pandaw America is a United States corporation based in Colorado. (Compl. ¶ 2.) It coordinates all United States oriented sales and marketing of Pandaw cruises as well as use of the Pandaw Mark in the United States. (ECF No. 41-1 ¶¶ 4-5.) Thus, litigating these intellectual properties issues in the United States would be more convenient for Plaintiffs.
Defendants principal argument against the assertion of personal jurisdiction is that defending this action in the United States would cause an undue burden (ECF No. 39 at 16-17.) However, the Entity Defendants have purposefully marketed their cruises towards the United States consumer and, as such, should have reasonably anticipated that they would be subject to litigation in this country. Given the United States's interest in enforcing its intellectual property laws, and the fact that the Entity Defendants willingly chose to market their product to U.S. consumers, the Court finds that the burden on the Entity Defendants is outweighed by the other factors. Accordingly, the Court finds that it would be fair and reasonable, and comport with due process, to exercise personal jurisdiction over the Entity Defendants.
Plaintiffs' Complaint brings claims against the following individuals: Raj Singh, Attar Singh, Gajendra Singh, Vishnu Singh Sinsinwar, Ashrafi Devi, Sanjay Sahay, and Atul Bhatt (collectively, the "Individual Defendants"). The Individual Defendants argue that Plaintiffs have failed to state a claim against them
Defendants' argument regarding piercing the corporate veil is misguided. In a trademark infringement case, the Court does not undertake the traditional veil piercing analysis. Rather, a claim for trademark infringement may be asserted against a stockholder or officer of a corporation who is responsible for his corporation's infringing activities. Feder v. Videotrip Corp., 697 F.Supp. 1165, 1177 (D.Colo. 1988); see also Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 456 F.Supp. 531, 537 (S.D.N.Y.1977) ("[a]n individual, including a corporate officer, director or stockholder, who causes a corporate defendant to infringe, or personally participates in the acts constituting infringement, is jointly and severally liable for the infringement"). Liability may be based on the individual's knowledge of and participation in the infringing conduct. See Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.1971) ("one who, with knowledge of the infringing activity induces, causes or materially contributes to the infringing conduct of another, may be held liable as a `contributory' infringer"). However, actual intent to infringe is not necessary for liability under the Act. Lottie Joplin, 456 F.Supp. at 537. Therefore, individual liability may be imposed on a corporate officer who had no knowledge of the infringement, but who had: (1) the right and ability to supervise the infringing activity; and (2) a direct financial interest in such activity. Feder, 697 F.Supp. at 1177.
Defendants Raj Singh and Vishnu Singh Sinsinwar are directors of all of the Entity Defendants. (ECF No. 40 ¶¶ 1-2.) The Court therefore has little trouble finding that they had the right and ability to supervise the infringing activity and a direct financial interest in such activity. For the same reasons applicable to the Entity Defendants, the Court also finds that it would not violate due process to exercise personal jurisdiction over Defendants Raj Singh and Vishnu Singh Sinsinwar.
Defendant Gajendra Singh is a director of Gajraj Wildlife Resorts. (ECF No. 1-2 at 9.) Gajraj holds 60% of the stock of Pandaw Cruises India and Heritage River Cruises. (ECF No. 40 ¶ 5.) The Court therefore finds that Gajendra Singh had a financial interest in the marketing of the Ganges River cruises to United States consumers, which is the allegedly infringing activity. The Court also finds that, as a director of the majority shareholder of Pandaw India/Heritage, Gajendra Singh also had the ability to control the infringing activity. Accordingly, the Court finds that it does not violate due process to exercise personal jurisdiction over Gajendra Singh.
Defendant Sanjay Sahay is listed as a registrant of all of the websites at issue here. (ECF No. 1-4 at 42, 1-5, 1-6, 1-7.) He is also listed as the administrative, technical, and billing contact for these websites. (Id.) These websites are central to Plaintiffs' claims in this case. (ECF No. 1.) Therefore, the Court finds that Sahay had the ability to control the infringing activity and that it would not violate due process to exercise personal jurisdiction over Defendant Sanjay Sahay.
Defendant Ashrafi Devi is Raj Singh's mother. (ECF No. 39-2 ¶ 2.) She has no interest in Heritage, Exotic Hospitality or Gajraj Wildlife Resorts. (Id. ¶ 17.) Devi was formerly a director of Exotic Journeys but resigned due to health issues in 2010. (Id. ¶ 19.) Exotic Journeys was a shareholder entity of Pandaw
Defendant Attar Singh was Raj Singh's father and has been deceased since 1972. (ECF No. 40 ¶ 3.) Plaintiffs' Complaint alleges that they have been using the Pandaw Mark since 1998 and that the infringement began in 2010. (ECF No. 1 ¶ 16.) Thus, Attar Singh was deceased before any of the alleged infringement occurred and he could not have had the right or ability to supervise any of that infringement. Accordingly, the Court finds that it cannot exercise personal jurisdiction over Attar Singh.
Defendant Atul Bhatt runs the cruise vessel in India for Heritage. (ECF No. 39-3 ¶ 24.) He is not involved with sales or marketing of the cruises. (Id.) He is an employee of Heritage Cruises but has no control over the entity and no ownership interest in any of the Entity Defendants. (Id. ¶¶ 17-18.) Given this undisputed evidence, the Court finds that Defendant Bhatt did not direct any activities at the United States consumer. Therefore, the Court cannot exercise personal jurisdiction over Defendant Bhatt.
Plaintiffs' Complaint names three websites and alleges in rem jurisdiction over them. (ECF No. 1.) However, when a mark owner is able to locate the registrant of a website and is able to bring claims against that individual or corporate entity, it is not permitted to also proceed in rem against the website itself. See Alitalia-Linee Aeree Italiane S.p.A. v. Casinoalitalia.com, 128 F.Supp.2d 340, 344 (E.D.Va.2001) ("A mark owner may proceed in personam against an infringer or, in certain circumstances where this cannot be done, the owner may proceed in rem against the domain name; a mark owner may not proceed against both at the same time."). Because Plaintiffs have been able to locate the registrant of the websites named here, they cannot also proceed against the websites in rem. Accordingly, the Court finds that Plaintiffs' in rem claims against the websites must be dismissed.
For the reasons set forth above, the Court ORDERS the following:
1. The Motion to Dismiss (ECF No. 39) is DENIED as to the following Defendants:
2. The Motion to Dismiss (ECF No. 39) is GRANTED and Plaintiffs' claim are DISMISSED WITHOUT PREJUDICE as to the following Defendants:
3. The Clerk shall amend the caption to reflect the dismissal of the above parties and all further filings by the parties shall be titled accordingly.
