Enterprise Rent-a-Car Co. v. Stowell

• Decision Date: 05 April 2001
• Docket Number: No. 4:00CV555 TCM.,4:00CV555 TCM.
• Citation: 137 F.Supp.2d 1151
• Parties: ENTERPRISE RENT-A-CAR CO., Plaintiff, v. Mike STOWELL, Defendant.
• Court: U.S. District Court — Eastern District of Missouri

137 F.Supp.2d 1151

ENTERPRISE RENT-A-CAR CO., Plaintiff, v. Mike STOWELL, Defendant.

No. 4:00CV555 TCM.

United States District Court, E.D. Missouri, Eastern Division.

April 5, 2001.

Robert Schultz, Schultz and Little, L.L.P., St. Louis, MO, for Enterprise Rent-A-Car Company, plaintiff.

Althea P. Johns, Law Office of Althea P. Johns, P.C., St. Louis, MO, for Mike Stowell, defendant.

MEMORANDUM AND ORDER

MUMMERT, United States Magistrate Judge.

This matter is an action filed by Enterprise Rent-A-Car ("Plaintiff"), a Missouri corporation with its principal place of business in the County of St. Louis, against Michael Stowell ("Defendant"), a California resident, seeking monetary, injunctive, and equitable relief for alleged violations of the Anticybersquatting¹ Consumer Protection Act of 1999, 15 U.S.C. § 1125(d) (Count I); federal trademark infringement, 15 U.S.C. § 1114 (Count 2); section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count 3); common law trademark infringement (Count 4); unfair competition (Count 5); and Missouri's antidilution statute, Mo.Rev.Stat. § 417.061 (Count 6).

Arguing that this Court² lacks personal jurisdiction over him, Defendant moves to dismiss pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure. [Doc. 12] Plaintiff opposes the motion, and moves this Court to transfer the case the United States District Court for the Central District of California if the Court concludes that personal jurisdiction is lacking. [Doc. 19]

Background

The facts relevant to a resolution of the pending motions are not in dispute.

Defendant lives part of the year in California and part in the United Kingdom. (Dep. at 5-6.) He owns several antique stores and, doing business as "UK to L.A.", imports furniture from England to Los Angeles. (Id. at 6-7, 13.) As part of his antique business, Defendant owns and operates a website, "oldpine.com." (Id. at 10.)

Plaintiff is, inter alia, in the business of providing automobile rental services to customers throughout the United States. (Compl.¶ 6.) On June 16, 1997, Plaintiff applied to the United States Patent and Trademark Office to register as its trademark the term "Virtual Car." (Id. ¶ 9.) The Office granted the application in December 1998. (Def.Ex. A.) Plaintiff alleges that it has and will continue to use the mark "Virtual Car" to identify its rental, leasing, and reservation service for automobiles and other motor vehicles. (Comp.¶ 8.)

Defendant, on the other hand, registered the term "VIRTUALCAR.COM" with InterNIC Registration Services as a domain name,³ effective October 12, 1997. (Dep. Ex. 10.) He intended to buy and sell antique and classic cars on the "VIRTUALCAR.COM" website. (Dep. at 14.) The site was built on Defendant's computer in England. (Id. at 17.)

In June 1999, Defendant was contacted by Plaintiff's legal counsel. (Def.Ex. 2.) Counsel advised Defendant that VIRTUAL CAR was a registered trademark belonging to Plaintiff and requested that Defendant transfer all rights and ownership in the domain name to Plaintiff. (Id.) Counsel noted that, "Our research indicates that you are not currently utilizing the VIRTUALCAR.COM domain name." (Id.) In reply, Defendant's counsel noted that Defendant had registered the VIRTUALCAR.COM domain name prior to VIRTUAL CAR being registered as Plaintiff's trademark. (Def.Ex. 3.) Plaintiff's counsel countered that the date when an application is filed is the determinative factor in trademark law and, in a later letter, offered to pay Defendant $500 to reimburse him for his out-of-pocket expenses in registering the domain name. (Def.Exs.4, 5.)

Defendant shut down the website in October 2000 without having purchased or sold any cars via the site. (Dep. at 15.) He does not know how many "hits" he had on the website while it was in operation. (Id.) He sold the domain name "VIRTUALCAR.COM" in April 2000 to a company in England. (Dep.Ex. 11.) Before the sale, for a period of approximately eighteen months, Defendant's "VIRTUALCAR.COM" website had a link to "oldpine.com." (Dep. at 16.)

Discussion

The issue of personal jurisdiction and the effect of electronic commerce (e-commerce) on that legal principle has been litigated with some frequency in the past six years. See, e.g., Millennium Enterprises, Inc. v. Millennium Music, LP, 33 F.Supp.2d 907, 908 (D.Or.1999) (reviewing or citing over 30 cases dealing with jurisdiction and the Internet as of 1999). Companies conducting business on the Internet have created this flow of litigation. Although this important jurisdictional question is no longer on the cutting edge of jurisprudence, the Court will begin its discussion with a brief explanation of the Internet.

"The Internet is a decentralized, self-maintained networking system that links computers and computer networks around the world, and is capable of quickly transmitting communications." ACLU v. Reno, 217 F.3d 162, 168 (3rd Cir.2000). Computer networks communicate with one another by using a standard language or protocol. America Online, Inc. v. Huang, 106 F.Supp.2d 848, 850 (E.D.Va.2000). "[F]or the Internet to function, each computer connected to the Internet, known as a `host,' must have a unique identity, so that other computers identify it. Currently, a computer's identify on the Internet is its Internet Protocol address." Id. The Internet Protocol address is a series of four numbers, each between 0 and 255, separated by periods. Id. (citations omitted). For ease of access,⁴ an alphanumeric domain name is employed instead of the Internet Protocol address to locate a particular computer on the Internet. Id. See also note 3, supra.

In October 1997, Defendant registered as a domain name a trademark that Plaintiff applied to register as such five months before. This domain name was the name of his website for his planned business of selling and buying classic and antique cars.

"The World Wide Web [the "Web"] is a publishing forum consisting of millions of individual `Web sites' each containing information such as text, images, illustrations, video, animation or sounds provided by that site's creator." Reno, 217 F.3d at 169. "Information is said to be published on the Web as soon as it is made available to others by connecting the publisher's computer to the Internet." Id. Once a site is connected to the Internet, the information on this site becomes available and accessible to all Internet users irrespective of the location of the user or of the website publisher. Id. "[U]nder current technology, Web publishers cannot `prevent [their sites] content from entering any geographic community.'" Id. (first alteration added; second in original) (emphasis supplied). Thus, "`[t]he [Internet] is ambient — nowhere in particular and everywhere at once.'" Id. (quoting Doe v. Roe, 191 Ariz. 313, 955 P.2d 951, 956 (1998)) (first alteration added; second in original).

The question before the Court is whether the publication of Defendant's website "VIRTUALCAR.COM" on the Internet establishes sufficient contact with the Eastern District of Missouri to create personal jurisdiction over Defendant.

"When personal jurisdiction is challenged, the plaintiff has the burden to show jurisdiction exists." Burlington Indus., Inc. v. Maples Indus., Inc., 97 F.3d 1100, 1102 (8th Cir.1996) (citing Gould v. P.T. Krakatau Steel, 957 F.2d 573, 575 (8th Cir.1992)). To survive a motion to dismiss challenging personal jurisdiction, however, "the plaintiff need only make a prima facie showing of personal jurisdiction over the defendant." Digi-Tel Holdings, Inc. v. Proteq Telecommunications, Ltd., 89 F.3d 519, 522 (8th Cir.1996). When determining whether the plaintiff has made such a showing, the court must view the evidence in the light most favorable to the plaintiff and must resolve factual conflicts in the plaintiff's favor. Id. "`When a question of the District Court's jurisdiction is raised, either by a party or by the court on its own motion, the court may inquire, by affidavits or otherwise, into the facts as they exist.'" Stevens v. Redwing, 146 F.3d 538, 543 (8th Cir.1998) (quoting Land v. Dollar, 330 U.S. 731, 735 n. 4, 67 S.Ct. 1009, 91 L.Ed. 1209 (1947)).

The court is guided by two primary rules when deciding whether to exercise personal jurisdiction over a nonresident defendant: first, the forum state's long-arm statute must be satisfied, and, second, due process must not be violated. Digi-Tel Holdings, 89 F.3d at 522. The " `ultimate objective'" of Missouri's long arm-statute<sup>5</sup> is "`to extend the jurisdiction of the courts of [Missouri] over nonresident defendants to that extent permissible under the Due Process Clause of the Fourteenth Amendment of the Constitution of the United States.'" Clune v. Alimak AB, 233 F.3d 538, 541 (8th Cir.2000) (quoting State v. Pinnell, 454 S.W.2d 889, 892 (Mo. 1970) (en banc)) (alteration added). "Accordingly, Missouri courts have interpreted the statute broadly to cover those cases where the Due Process Clause permits the assertion of personal jurisdiction." Id. Thus, this Court's inquiry into whether the assertion of personal jurisdiction over Defendant satisfies Missouri's long-arm statute is coextensive with its inquiry into whether the assertion satisfies due process. See Uncle Sam's Safari Outfitters, Inc. v. Uncle Sam's Army Navy Outfitters-Manhattan, Inc., 96 F.Supp.2d 919, 921 (E.D.Mo.2000).

To satisfy due process, the plaintiff must show "minimum contacts" between the defendant and the forum state. International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). In determining whether such a showing has been made, the court should examine (1) the nature and quality of contacts with the forum state; (2) the quantity of such contacts; (3) the relation of the cause of action to the contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) the convenience of the parties. Burlington Indus., Inc., 97 F.3d at...