Biragov v. Dreamdealers U.S. LLC
| Decision Date | 15 November 2021 |
| Docket Number | 21 Civ. 483 (JPC) |
| Parties | ALEXANDER BIRAGOV and RENTARACE INC., Plaintiffs, v. DREAMDEALERS USA, LLC and PHEENIX INC., Defendants. |
| Court | U.S. District Court — Southern District of New York |
More than two years ago, a Nevada state court ordered Plaintiffs to turn over their website domain name to Defendant Dreamdealers USA, LLC after finding that the domain infringed Dreamdealers's trademarks. Yet Plaintiffs now contend that Defendants hijacked their website by complying with this order. Dreamdealers has moved to dismiss, arguing among other things that the Nevada case precluded Plaintiffs' claims. The Court agrees. Plaintiffs may not resurrect what another court killed. The Court therefore grants the motion and dismisses with prejudice Plaintiffs' federal claims against Dreamdealers on res judicata grounds pursuant to Federal Rule of Civil Procedure 12(b)(6). The Court further declines to exercise supplemental jurisdiction over Plaintiffs' claims against Dreamdealers under state law and dismisses those claims without prejudice.
The Court begins with the threshold issue of what materials it may consider at this stage. In considering a motion to dismiss under Rule 12(b)(6), a court may consider not only the facts alleged in the complaint but also “any written instrument attached to the complaint, statements or documents incorporated into the complaint by reference, . . . and documents possessed by or known to the plaintiff upon which it relied in bringing the suit.” Tongue v. Sanofi, 816 F.3d 199, 209 (2d Cir. 2016) (quotations omitted). “Where a document is not incorporated by reference, the court may nevertheless consider it where the complaint relies heavily upon its terms and effect, thereby rendering the document integral to the complaint.” DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010) (quotations omitted)). “[M]ere notice or possession, ” however, “is not enough.” Nicosia v. Amazon.com, Inc., 834 F.3d 220, 231 (2d Cir. 2016) (quotations omitted). Besides documents incorporated by reference, a court “may consider documents of which a court may take judicial notice.” United States ex rel. Wood v. Allergan, Inc., 899 F.3d 163, 169 n.5 (2d Cir. 2018) (quotations omitted).
Dreamdealers asks the Court to take judicial notice of eleven different documents in considering its motion to dismiss. See Dkt. 30-3 at 3-4. Of those documents, the Court takes judicial notice of-and relies on-only the Nevada state court litigation documents, which are attached as Exhibits E, F, G, H, I, and J to the Declaration of Ismail Amin, Esq., counsel for Dreamdealers. See Convergen Energy LLC v. Brooks, No. 20 Civ. 3746 (LJL), 2020 WL 5549039, at *6 n.2 (S.D.N.Y. Sept. 16, 2020) .
Plaintiff Alexander Biragov is a Russian Federation resident who is the founder and Chief Executive Officer of Plaintiff Rentarace, Inc., a Delaware corporation with its principal place of business in New York City. Dkt. 2 (“Complaint”) ¶¶ 12-13, 16. Rentarace aggregates service providers that offer racecar driving experiences in the United States and abroad into a single website. Id. ¶ 17. Dreamdealers is a Nevada limited liability company with its principal place of business in Las Vegas. Id. ¶ 14.[1] Defendant Pheenix Inc. is a California corporation that serves as a domain name registrar and has its principal place of business in California. Id. ¶¶ 5, 15. Pheenix has not yet appeared in this matter nor, according to the docket, been properly served under Federal Rule of Civil Procedure 4(h). Compare Dkt. 29 (), with Dkt. 36 (not complying with Rule 4(h)).
In October 2017, Dreamdealers sued Biragov and Rentarace in Nevada's Eighth Judicial District Court (the “Nevada Court”) claiming that their website www.exoticracing.com (the “Hijacked Domain”) violated Dreamdealers's trademarks (and was a deceptive trade practice). Dkt. 30-2 (“Amin Decl.”), Exh. E (“Nevada Complaint”) at 1, ¶¶ 16, 109. That is because Dreamdealers does business as Exotics Racing and owns the domain name www.exoticsracing.com. Id. ¶¶ 4, 13, 16, 109.[2] Dreamdealers brought claims for trademark infringement, cybersquatting, trademark dilution, deceptive trade practice, injunctive relief, and declaratory relief. Id. ¶¶ 46-110.
In November 2017, the Nevada Court granted Dreamdealers a temporary restraining order (the “TRO”) after a hearing. See Amin Decl., Exh. F (“TRO”); see also Complaint ¶¶ 38, 69. The TRO ordered the Hijacked Domain to be immediately transferred to Dreamdealers, required Biragov and Rentarace to disclose any domain names that used Dreamdealers's trademarks, enjoined them from registering or trafficking domain names similar to Dreamdealers's trademarks, and enjoined them from using Dreamdealers's trademarks or any “confusingly similar variations thereof.” TRO at 5. Pheenix-the registrar of the Hijacked Domain-then allegedly transferred the Hijacked Domain back to Dreamdealers. Complaint ¶ 72.
A month later, the Nevada Court granted Dreamdealers a preliminary injunction. Amin Decl., Exhs. G, H. Before doing so, the Nevada Court received and reviewed a submission that Biragov had filed opposing the preliminary injunction. See Amin Decl., Exhs. G-I.
In September 2019, the Nevada Court granted Dreamdealers's Amended Motion for Summary Judgment. Amin Decl., Exh. J. The Nevada Court granted Dreamdealers's claims for trademark infringement, false designation, cybersquatting, trademark dilution, and deceptive trade practice. Id. at 2. The Nevada Court also “permanently restrained and enjoined” Biragov and Rentarace from (1) “registering or trafficking in any domain name containing the [Dreamdealer] Marks” or any “confusingly similar variations” and (2) “using the [Dreamdealer] Marks or any confusingly similar variations thereof.” Id. at 2-3.
Biragov and Rentarace did not appeal the adverse judgment from the Nevada Court. See generally Dreamdealers USA, LLC v. Rentarace Group S.R.O., No. A-17-763361-B (Nev. Dist. Ct.).
On January 20, 2021, Plaintiffs initiated this case, bringing claims against Defendants that sound oddly familiar to those resolved by the Nevada Court: federal law claims against Dreamdealers for reverse domain hijacking under 15 U.S.C. § 1114(2)(D)(iv), for a declaratory judgment as to both Defendants that Plaintiffs lawfully used the Hijacked Domain under 15 U.S.C. § 1114(2)(D)(v), for a declaratory judgment that Plaintiffs did not infringe Dreamdealers's trademarks under 28 U.S.C. § 2201(a), and state law claims for tortious interference with a contract, deceptive business practices, breach of contract, and unjust enrichment. Complaint ¶¶ 90-130. Three months later, Dreamdealers moved to dismiss the case, arguing that a litany of reasons warrants dismissal: lack of personal jurisdiction, preclusion by the Nevada Case, failure to state a claim, improper venue, and forum non conveniens. See Dkt. 30 (“Motion to Dismiss”) at 2. Dreamdealers argues in the alternative that the Court should transfer the case to the United States District Court for the District of Nevada. Id.
To survive a motion to dismiss for failure to state a claim under Rule 12(b)(6), “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. A complaint's “[f]actual allegations must be enough to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555. Although a court must “accept[] as true the factual allegations in the complaint and draw[] all inferences in the plaintiff's favor, ” Biro v. Conde Nast, 807 F.3d 541, 544 (2d. Cir. 2015), it need not “accept as true legal conclusions couched as factual allegations, ” LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475-76 (2d Cir. 2009).
Federal courts have “leeway to choose among threshold grounds for denying audience to a case on the merits.” Sinochem Int'l Co. v. Malaysia Int'l Shipping Corp., 549 U.S. 422, 431 (2007) (quotations omitted). The principle underlying this discretion is that “jurisdiction is vital only if the court proposes to issue a judgment on the merits.” Id. (quotations omitted). And so a federal court dismissing for a non-merits reason “need not resolve whether it has authority to adjudicate the cause (subject-matter jurisdiction) or personal jurisdiction over the defendant” when dismissing for a non-jurisdictional reason is the “less burdensome course.” Id. at 425, 436.
The Supreme Court has recognized several threshold grounds to resolve a case that count as non-merits dismissals. These grounds include: dismissing for forum non conveniens; declining to adjudicate state law claims on discretionary grounds; abstaining under Younger v Harris, 401 U.S. 37 (1971); dismissing for lacking statutory standing; denying class certification; and dismissing suits against the Government based on covert espionage agreements under Totten v. United States, 92 U.S. 105 (1875). See Sinochem, 549 U.S. at 431; Ortiz v. Fibreboard Corp., 527 U.S. 815, 831 (1999)...
To continue reading
Request your trial