Ahmed v. Hosting.com

• Decision Date: 27 June 2014
• Docket Number: 14–10026–WGY.,Civil Action Nos. 13–13117–WGY
• Citation: 28 F.Supp.3d 82
• Parties: Naeem AHMED, Plaintiff, v. HOSTING.COM and John Doe, Defendants. Naeem Ahmed, Plaintiff, v. Facebook, Inc., John Doe 1, John Doe 2, and John Doe 3, Defendants.
• Court: U.S. District Court — District of Massachusetts

28 F.Supp.3d 82

Naeem AHMED, Plaintiff

v.HOSTING.COM and John Doe, Defendants.

Naeem Ahmed, Plaintiff

v.Facebook, Inc., John Doe 1, John Doe 2, and John Doe 3, Defendants.

Civil Action Nos. 13–13117–WGY

14–10026–WGY.

United States District Court, D. Massachusetts.

Signed June 27, 2014.

Patrick J. O'Toole, Jr., Weil, Gotshal & Manges, Sabrina A. Perelman, Randi W. Singer, Weil, Gotshal & Manges LLP, New York, NY, Defendant, Facebook, Inc.

MEMORANDUM AND ORDER

YOUNG, District Judge.

I. INTRODUCTION

Naeem Ahmed (“Ahmed”) brings two separate, but similar, suits against Hosting.com (“Hosting”), Facebook, Inc. (“Facebook”), and four unnamed John Doe defendants (collectively, “John Does”) (with Hosting and Facebook, the “Defendants”) for trademark infringement. Ahmed alleges that Hosting and Facebook are responsible for the infringing activities of the John Does, including the use of the trademarks “The News International,”¹ “the Jang,” and “Geo” (collectively, “the Marks”), over which Ahmed allegedly has some proprietary interest. Ahmed further contends that the John Does' infringing use is causing severe losses and irreparable damage to his business.

Hosting and Facebook have both moved to dismiss Ahmed's complaints. They contend that this Court lacks subject matter jurisdiction and that Ahmed has failed sufficiently to allege a trademark infringement claim against any defendant.

A. Procedural Posture

1. Hosting²

Ahmed filed a complaint with this Court on December 9, 2013. Compl. (“The Hosting Compl.”), ECF No. 1. On January 29, 2014, Hosting moved to dismiss Ahmed's complaint pursuant to Federal Rules of Civil Procedure (“Rule”) 12(b)(1), 12(b)(2), and 12(b)(6) for lack of standing, lack of personal jurisdiction, and failure to state a claim upon which relief can be granted.

Def.'s Rule 12(b)(1), 12(b)(2) & 12(b)(6) Mot. Dismiss Pl.'s Compl., ECF No. 15. On the same day, Hosting filed a memorandum and a declaration of its counsel in support of its motion. Mem. Supp. Def.'s Rule 12(b)(1), 12(b)(2) & 12(b)(6) Mot. Dismiss Pl.'s Compl. (“Hosting's Mem.”), ECF No. 16.; Decl. Leah W. Feinman Supp. Def.'s Rule 12(b)(1), 12(b)(2) & 12(b)(6) Mot. Dismiss Pl.'s Compl. (“Decl. Feinman”), ECF No. 17.

On February 4, 2014, Ahmed opposed Hosting's motion. Mem. Law Opp'n Def. No. 1's Mot. Dismiss (“Opp'n to Hosting”), ECF No. 20. Hosting replied to Ahmed's opposition on February 24, 2014. Def.'s Reply Br. Supp. Rule 12(b)(1), 12(b)(2) & 12(b)(6) Mot. Dismiss Pl.'s Compl., ECF No. 23. On March 21, 2014, Hosting filed a request for judicial notice of certain United States Patent and Trademark Office (“USPTO”) materials, Req. Judicial Notice Supp. Mot. Dismiss, ECF No. 26, to which Ahmed responded on April 3, 2014, Resp. Hosting.com's Req. Judicial Notice Supp. Mot. Dismiss, ECF No. 27.

2. Facebook³

Ahmed filed a complaint with this Court on January 7, 2014. Compl. (“The Facebook Compl.”), ECF No. 1. On February 27, 2014, Facebook filed a motion to dismiss Ahmed's complaint pursuant to Rules 12(b)(1) and 12(b)(6) or, alternatively, to have Ahmed file a more definite statement under Rule 12(e). Def. Facebook, Inc.'s Mot. Dismiss Compl. or, Alternative, More Definite Statement, ECF No. 13. On the same day, Facebook filed a memorandum and a declaration of its counsel in support of its motion. Mem. Supp. Facebook., Inc.'s Mot. Dismiss Compl. or, Alternative, More Definite Statement (“Facebook's Mem.”), ECF No. 14; Decl. Patrick J. O'Toole, Jr. Supp. Facebook, Inc.'s Mot. Dismiss Compl. or, Alternative, More Definite Statement (“Decl. O'Toole”), ECF No. 15. On March 6, 2014, Ahmed opposed Facebook's motion. Mem. Law Opp'n Def. No. 1's Mot. Dismiss or More Definite Statement (“Opp'n to Facebook”), ECF No. 18. On March 18, 2014, Facebook replied to the opposition. Reply Mem. Law Further Supp. Facebook, Inc.'s Mot. Dismiss Compl. or, Alternative, More Definite Statement, ECF No. 21. On March 25, 2014, Facebook filed a request for judicial notice of two USPTO Office Actions, Req. Judicial Notice Supp. Facebook, Inc.'s Mot. Dismiss or, Alternative, More Definite Statement (“Req. Judicial Notice”), ECF No. 22, to which Ahmed responded on April 3, 2014, Resp. Facebook's Req. Judicial Notice Supp. Mot. Dismiss or, Alternative, More Definite Statement, ECF No. 23.

B. Facts Alleged

The underlying facts alleged in both cases are strikingly similar, revolving around Ahmed's rights to the purported Marks, and the Defendants' alleged infringement thereof. Hosting is a “cloud computing company that builds and operates high-performance websites for companies.” Hosting's Mem. 3. Among the sites Hosting administers and operates is the webpage www.thenews. com.pk, which it operates for Jang, “the largest media company in Pakistan.” Id. Jang owns a Pakistani trademark for one of the Marks, which it registered in 1995 and has used on its site since at least January 1998. Id. Jang's contact information is displayed on its webpage. Id. at 4.

Facebook is a social networking company that allows users to communicate by creating Facebook “[p]ages.” Facebook's Mem. 5. Several of those Facebook pages, run by three John Does, allegedly use the Marks in which Ahmed claims a proprietary interest. The Facebook Compl. ¶ 1.

Ahmed alleges⁴ that the webpage www.thenews.com.pk, administered by Hosting, infringes on the trademark “The News International,” which he allegedly owns or licenses. Decl. Feinman, Ex. 8, Cease & Desist Notice (Trademark Infringement) (“Cease & Desist Notice”) 1, ECF No. 17–8. Likewise, Ahmed claims the various Facebook pages infringe on all the Marks, which he allegedly owns or exclusively licenses. The Facebook Compl. ¶ 1. On December 1, 2013, Ahmed, through his attorneys, sent Hosting a cease and desist notice under section 512 of the Digital Millennium Copyright Act (the “DMCA”) asking Hosting to take down the allegedly infringing website. Cease & Desist Notice 1–3. Hosting conducted an investigation of the allegations and responded that the notice was deficient because the DMCA covers only copyright infringement, not, as alleged here, trademark infringement, and that it would not ask Jang to remove anything from the website. Decl. Feinman, Ex. 9, Email Response Cease & Desist Notice, Dec. 4, 2013, ECF No. 17–9.

The purported “common law and statutory licensee” interest in the Marks which Ahmed referenced in his cease and desist letter allegedly comes from “trademark number[s]” 86/123,789 (for “The News International” mark) and 86/123,767 (for “the Jang” mark). The Facebook Compl. ¶ 15. Although Ahmed labels these as trademarks, actually he is referencing two United States trademark applications, filed by a company named Axact (Pvt) Limited of Pakistan (“Axact”). See Hosting's Mem. 3–4; Decl. O'Toole, Ex. 1, The Jang Mark Appl., ECF No. 15–1; id., Ex. 2, The News International Mark Appl., ECF No. 15–2. Ahmed, however, has alleged no connection between Axact and himself.

After learning of Axact's application, Jang filed suit against Axact in Pakistan, before the High Court of Sindh at Karachi. See Decl. Feinman, Ex. 10, Suit Decl., Permanent Inj., Damages & Rendition Accounts Against Infringement Trademark & Copyrights, ECF No. 17–10. The High Court issued an injunction ordering Axact to refrain from trying to undermine Jang's trademarks. Id., Ex. 11, Order Sheet High Ct. Sindh, Karachi, ECF No. 17–11. On December 27, 2013, News Publication (Pvt) Limited, part of the Jang Group, filed its own trademark applications in the United States for “The News International.” Id., Ex. 12, Trademark/Service Mark Appl. 86153145, ECF No. 17–12; id., Ex. 13, Trademark/Service Mark Appl. 86153210, ECF No. 17–13.

On January 15, 2014, Axact assigned to Ahmed the two applications it had filed. The Jang Mark Appl. 2; The News International Mark Appl. 2. On March 13, 2014, the USPTO denied registration for both trademark applications and invited a response. Req. Judicial Notice, Ex. A, United States Patent Trademark Office (USPTO) Office Action (Official Letter) Applicant's Trademark Appl. No. 86123767 (“USPTO Refusal ‘The Jang’ Mark”), ECF No. 22–1; id., Ex. B, United States Patent Trademark Office (USPTO) Office Action (Official Letter) Applicant's Trademark Appl. No. 86123789 (“USPTO Refusal ‘The News International’ Mark”), ECF No. 22–2.

II. ANALYSIS

A. Standing/Subject Matter Jurisdiction

1. Standard of Review

In order for a court to have jurisdiction to hear the merits of a case, the plaintiff must have standing to bring the matter. FW/PBS, Inc. v. City of Dallas, 493 U.S. 215, 231, 110 S.Ct. 596, 107 L.Ed.2d 603 (1990), holding modified on other ground by City of Littleton, Colo. v. Z.J. Gifts D–4, L.L.C., 541 U.S. 774, 124 S.Ct. 2219, 159 L.Ed.2d 84 (2004) ; United States v. AVX Corp., 962 F.2d 108, 113 (1st Cir.1992). Standing cannot be inferred from declarations in the pleadings but must instead be affirmatively established. FW/PBS, Inc., 493 U.S. at 231, 110 S.Ct. 596. In order to establish standing, the plaintiff must satisfy the court that he or she has suffered a “personal injury fairly traceable to the defendant's allegedly unlawful conduct.” Hein v. Freedom From Religion Found., 551 U.S. 587, 598, 127 S.Ct. 2553, 168 L.Ed.2d 424 (2007) (quoting Allen v. Wright, 468 U.S. 737, 751, 104 S.Ct. 3315, 82 L.Ed.2d 556 (1984) ). Specifically, in the trademark context, standing to bring suit under the Lanham Act⁵ is conferred to those who have an ownership interest in a registered trademark, or, for those with unregistered marks, those who have a reasonable interest that could be harmed by infringement. See Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 160 (1st Cir.1977) ; Unleashed Doggie Day Care, LLC v. Petco Animal Supplies Stores, Inc., 828 F.Supp.2d 384, 390 n. 2 (D.Mass.2010) (O'Toole, J.); see also 15 U.S.C. §§ 1114, 1125(a). Ownership interest, relevant for registered trademarks, has been interpreted to limit standing only to registered owners or exclusive licensees...