A.W.L.I. Grp. Inc. v. Amber Freight Shipping Lines

• Citation: 828 F.Supp.2d 557
• Decision Date: 09 December 2011
• Docket Number: No. 10–cv–5464 (ADS)(ARL).,10–cv–5464 (ADS)(ARL).
• Parties: A.W.L.I. GROUP, INC., Plaintiff, v. AMBER FREIGHT SHIPPING LINES, Defendant.
• Court: U.S. District Court — Eastern District of New York

828 F.Supp.2d 557

A.W.L.I. GROUP, INC., Plaintiff,

v.AMBER FREIGHT SHIPPING LINES, Defendant.

No. 10–cv–5464 (ADS)(ARL).

United States District Court, E.D. New York.

Dec. 9, 2011.

Kaplan Gilman & Pergament LLP, by Michael Robert Gilman, Esq., of Counsel, Woodbridge, NJ, for Plaintiff.

Natiss & Gordon, P.C., by Shalom A. Schwartz, Esq., of Counsel, Roslyn Heights, NY, for Defendant.

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

The Plaintiff in this case, A.W.L.I. Group, Inc. (“AWLI” or “the Plaintiff”) filed a complaint against the Defendant, Amber Freight Shipping Lines (“AFSL” or “the Defendant”) for alleged trademark infringement, false designation of origin, dilution, unfair competition and deceptive trade practices.

For the reasons set forth below, the Court grants the Defendant's motion to dismiss the complaint for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2) and denies the Plaintiff's request for jurisdictional discovery.

I. BACKGROUND

The Plaintiff AWLI is a domestic business corporation organized and existing under the laws of the State of New York, with an office and principal place of business in Jamaica, Queens, New York. The Defendant AFSL is a company organized and existing under the laws of the State of California, with its office and principal place of business in Los Angeles, California. Both companies appear to participate in what this Court categorizes as the “freight transport” industry. Specifically, the companies provide for freight transportation by sea, air, and all other available means, as well as storage, packing and distribution services.

AWLI states that it has continuously used the service marks AMBER, AMBER WORLDWIDE, and AMBER FREIGHT for its freight transport services, and that it has registered these marks with the U.S. Patent and Trademark Office (“PTO”). The Plaintiff alleges that the Defendant AFSL offers its identical services under the name AMBER FREIGHT to the same customers as the Plaintiff in identical geographic areas. Thus, the Plaintiff contends that the Defendant's alleged trademark infringement will cause a likelihood of consumer and trade confusion and deception with AWLI's use of its family of AMBER marks. The Plaintiff's main contentions center on the operation of the Defendant's website: www. amberfrieght. com.

The Plaintiff states in its complaint that “Upon information and belief, Defendant transacts business within this district, derives substantial revenue from intra-state and interstate commerce and has committed tortious acts within this district and also without this district having injurious consequences within this district ...” (Complt. at ¶ 6.) However, the only known connection by the Defendant with New York state cited by the Plaintiff is that on the Defendant's website, it expressly stated that the Defendant “currently handles all points of USA and Canada to and from all worldwide cities,” which the Plaintiff contends includes New York State.

The Defendant's business has never had any officers or employees working or residing in New York. It has also never leased or owned any retail space, warehouse space, or other type of property in New York. AFSL has never had any bank accounts in New York and has never designated a representative to accept service of process on behalf of the company in New York. The Defendant does operate the website www. amberfreight. com, but the website was not created and is not maintained on any computer equipment in New York State. The Defendant also alleges it derives no business from its website. Finally, in this regard, the Defendant claims it has no customers in New York State.

II. DISCUSSION

A. Legal Standard for Determining Personal Jurisdiction

Federal Rule of Civil Procedure 12(b)(2) ( “Fed.R.Civ.P. 12(b)(2)”) permits a defendant to challenge a court's personal jurisdiction over it prior to the filing of an answer or the commencement of discovery. A plaintiff bears the burden of demonstrating personal jurisdiction over the persons or entities against whom he seeks to bring suit. Penguin Grp. (USA), Inc. v. Am. Buddha, 609 F.3d 30, 34 (2d Cir.2010); Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir.2001). In deciding a motion to dismiss for lack of personal jurisdiction, the Court may rely on materials that are outside the pleadings, including any affidavits submitted by the parties. DiStefano v. Carozzi N. Am., 286 F.3d 81, 84 (2d Cir.2001). However, where, as here, the Court “relies on the pleadings and affidavits, and chooses not to conduct a ‘full-blown evidentiary hearing,’ plaintiffs need only make a prima facie showing of personal jurisdiction over the defendant.” Penguin, 609 F.3d at 34–35; Porina v. Marward Shipping Co., Ltd., 521 F.3d 122, 126 (2d Cir.2008). “Such a showing entails making legally sufficient allegations of jurisdiction, including an averment of facts that, if credited, would suffice to establish jurisdiction over the defendant.” Penguin, 609 F.3d at 35 (internal quotations marks and alterations omitted). Furthermore, materials presented by the plaintiff should be construed in the light most favorable to the plaintiff and all doubts resolved in its favor. See A.I. Trade Fin., Inc. v. Petra Bank, 989 F.2d 76, 79–80 (2d Cir.1993).

“In a federal question case where a defendant resides outside the forum state, a federal court applies the forum state's personal jurisdiction rules ‘if the federal statute does not specifically provide for national service of process.’ ” PDK Labs v. Friedlander, 103 F.3d 1105, 1108 (2d Cir.1997) (citing Mareno v. Rowe, 910 F.2d 1043, 1046 (2d Cir.1990)). The Lanham Act does not provide for nationwide service of process; therefore, “this Court must look to New York's jurisdictional statutes to determine personal jurisdiction.” Greenlight Capital, Inc. v. GreenLight (Switz.) S.A., No. 04 Civ. 3136, 2005 WL 13682, *2, 2005 U.S. Dist. LEXIS 2 (S.D.N.Y. Jan. 4, 2005) (citing Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 22 (2d Cir.2004)).

Accordingly, in analyzing a Fed.R.Civ.P. 12(b)(2) motion, courts in New York follow a two-step process. First, a court will determine whether personal jurisdiction lies pursuant to New York's long-arm statute, CPLR §§ 301 and 302(a). Nat'l Union Fire Ins. Co. of Pittsburgh, PA. v. BP Amoco P.L.C., 319 F.Supp.2d 352, 357 (S.D.N.Y.2004) (citing Omni Capital Int'l Ltd. v. Rudolf Wolff & Co., 484 U.S. 97, 105, 108 S.Ct. 404, 98 L.Ed.2d 415 (1987)). Second, a court must analyze whether personal jurisdiction comports with the basic requirements of due process. Id. Pursuant to the New York long-arm statute, there are two ways that a New York court can exercise personal jurisdiction over a non-resident defendant: general jurisdiction pursuant to N.Y. CPLR § 301 (“Section 301”) or specific jurisdiction pursuant to N.Y. CPLR § 302 (“Section 302”).

B. Whether the Court has General Jurisdiction over the Defendant Pursuant to CPLR § 301

CPLR § 301 provides for jurisdiction over a defendant that is “engaged in such a continuous and systematic course of ‘doing business' in New York as to warrant a finding of its ‘presence’ in the state.” Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181, 184 (2d Cir.1998) (internal quotation marks and citation omitted). “[A] corporation is ‘doing business' and is therefore ‘present’ in New York and subject to personal jurisdiction with respect to any cause of action, related or unrelated to the New York contacts, if it does business in New York not occasionally or casually, but with a fair measure of permanence and continuity.” Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88, 95 (2d Cir.2000) (internal citation and quotation marks omitted). In determining whether a defendant is subject to general jurisdiction, New York courts look to a number of factors including: (1) “the existence of an office in New York”; (2) “the solicitation of business in the state”; (3) “the presence of bank accounts and other property in the state”; and (4) “the presence of employees of the foreign defendant in the state.” Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 58 (2d Cir.1985).

The Defendant asserts that it does not maintain an office in New York; does not conduct solicitations of business targeting New York consumers; does not maintain any bank accounts or other property in New York; and does not have any employees or agents in New York, or have an on-going contractual relationship with a New York corporation. In the complaint, the Plaintiff does not allege facts to the contrary and in fact make no arguments with regard to Section 301 in its opposition. Accordingly, the Court finds that the Defendant is not subject to general jurisdiction in New York because there is no indication that AFSL is engaged in a continuous or systematic course of doing business in this state.

C. Whether the Court Has Specific Jurisdiction Pursuant to CPLR § 302

Section 302 of New York's long-arm statute provides that:

(a) As to a cause of action arising from any of the acts enumerated in this section, a court may exercise personal jurisdiction over any non-domiciliary, or his executor or administrator, who in person or through an agent:

1. transacts any business within the state or contracts anywhere to supply goods or services in the state; or

2. commits a tortious act within the state, except as to a cause of action for defamation of character arising from the act; or

3. commits a tortious act without the state causing injury to person or property within the state, except as to a cause of action for defamation of character arising from the act, if he

(i) regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in the state, or

(ii) expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from...