Enterprise Rent-a-Car Company v. U-Haul Intern., Inc.

• Citation: 327 F.Supp.2d 1032
• Decision Date: 22 July 2004
• Docket Number: No. 4:03-CV-1480 CAS.,4:03-CV-1480 CAS.
• Parties: ENTERPRISE RENT-A-CAR COMPANY, Plaintiff, v. U-HAUL INTERNATIONAL, INC., Defendant.
• Court: U.S. District Court — Eastern District of Missouri

327 F.Supp.2d 1032

ENTERPRISE RENT-A-CAR COMPANY, Plaintiff, v. U-HAUL INTERNATIONAL, INC., Defendant.

No. 4:03-CV-1480 CAS.

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

July 22, 2004.

COPYRIGHT MATERIAL OMITTED

David B. Jinkins, Dean L. Franklin, Paul A. Maddock, Jacob S. Wharton, Steven E. Garlock, Thompson Coburn, St. Louis, MO, for Plaintiff.

Christine Meis McAuliffe, Glenn Spencer Bacal, Jennings and Strouss, Phoenix, AZ, Donald L. Schlapprizzi, Donald L. Schlapprizzi, P.C., St. Louis, MO, for Defendant.

MEMORANDUM AND ORDER

SHAW, District Judge.

This matter is before the Court on several motions: Defendant U-Haul International, Inc.'s motion to dismiss for lack of personal jurisdiction and improper venue or in the alternative to transfer to the proper venue, and plaintiff Enterprise Rent-A-Car Company's motions for jurisdictional discovery and for leave to amend its complaint. The parties oppose each other's motions. For the following reasons, the Court will deny the motion to dismiss and the alternative motion to transfer, deny the motion for jurisdictional discovery as moot, and grant the motion for leave to amend the complaint.

Background.

This is an action by Enterprise Rent-A-Car Company ("plaintiff" or "Enterprise") asserting federal and state law trademark violations against U-Haul International, Inc. ("defendant" or "UHI"). Enterprise alleges in its complaint that it is the owner of numerous distinctive trademarks and service marks comprising the lower case letter "e," including one mark which is just the lower case "e" (the "Marks"). Enterprise uses the Marks in connection with its business of vehicle rental, leasing, sales and related reservation services throughout the United States. Enterprise owns numerous registrations on the United States Principal Register for many of the Marks. Enterprise asserts that the Marks are valid and incontestable, and constitute a family of long-standing and valuable marks which it has used continuously since at least 1967.

Enterprise alleges that long after it established its rights in the Marks, UHI began using one or more marks comprising an "e," some with a lower case "e," which are confusingly similar to one or more of Enterprise's Marks and infringe on Enterprise's registered marks. Enterprise alleges that UHI is using these marks in connection with the offering of vehicle rental, leasing, sales and services, including through its "e-move" network, the Internet website www.emove.com and interrelated websites including www.uhaul.com. Enterprise also alleges that UHI filed four applications with the United States Patent and Trademark Office ("PTO") to register different versions of its allegedly infringing marks, and that one mark was registered in January 1999 as U.S. Trademark Reg. No. 2,220,884 (the "884 registration"). The other three applications claim the benefit of the 884 registration, and Enterprise alleges these marks are the same or similar marks to the 884 registration. Enterprise initiated opposition proceedings in the PTO to prevent UHI from registering the marks covered by the three applications not yet issued into registrations. Enterprise asserts that in January 2004, while this action and the opposition proceedings in the PTO were pending, UHI filed with the PTO a declaration averring, inter alia, that there was no proceeding involving UHI's ownership or right to continued registration of one of the pending applications, No. 76/321,040.

The First Amended Complaint asserts claims for trademark infringement under 15 U.S.C. § 1114 (Count I); trademark infringement under 15 U.S.C. § 1125(a) (Count II); dilution under 15 U.S.C. § 1125(c) (Count III); cancellation of registration under 15 U.S.C. § 1119 (Count IV); declaratory judgment denying registration (Count V); common law trademark infringement (Count VI); and unfair competition in violation of Missouri common law (Count VII).

UHI moves to dismiss the claims against it for lack of personal jurisdiction and improper venue, and in the alternative moves for transfer of this action to the proper venue. UHI states that before the instant action was filed, it filed an action in the United States District Court for the District of Arizona, seeking declaratory judgment of non-infringement of Enterprise's trademark rights at issue in the present case, and a declaration of lack of unfair competition pursuant to 15 U.S.C. § 1125 or any state statutes or common law (the "first Arizona litigation"). UHI states that on October 7, 2002, Enterprise filed a motion to dismiss the first Arizona litigation on the basis that no case or controversy existed, as there was no apprehension of imminent suit against UHI because Enterprise intended to resolve the dispute amicably on a business basis, rather than through litigation. The district court in Arizona granted Enterprise's motion to dismiss on September 12, 2003. The instant action was filed on October 15, 2003. On February 24, 2004, UHI and EMove, Inc., the party exclusively licensed to use the allegedly infringing marks at issue in this case and which UHI asserts owns and operates the www.emove.com website, filed a new complaint for declaratory judgment against Enterprise in the United States District Court for the District of Arizona, e-Move, Inc., et al. v. Enterprise Rent-A-Car Co., No. CV04-0387-PHX-DGC. That action has been stayed pending resolution of the instant motions. See id., Order of June 30, 2004.

UHI asserts that this Court's exercise of personal jurisdiction over it violates the Due Process Clause, and as such is not permitted under the United States Constitution or Missouri's long-arm statute. UHI also asserts that because it is not subject to personal jurisdiction in this district, venue is improper as well, and therefore this case must either be dismissed or transferred to the proper venue.

Legal Standard.

A party seeking to invoke the jurisdiction of a federal court bears the burden to establish that jurisdiction exists. Moog World Trade Corp. v. Bancomer, S.A., 90 F.3d 1382, 1384 (8th Cir.1996). To defeat a motion to dismiss for lack of personal jurisdiction, the non-moving party need only make a prima facie showing of jurisdiction. Pecoraro v. Sky Ranch for Boys, Inc., 340 F.3d 558, 561 (8th Cir.2003) (citing Digi-Tel Holdings, Inc. v. Proteq Telecommunications (PTE), Ltd., 89 F.3d 519, 522 (8th Cir.1996)). For the purpose of a prima facie showing, the court must view the evidence in the light most favorable to the plaintiff, and determine all factual conflicts in its favor. Id. "[J]urisdiction need not be proved by a preponderance of the evidence until trial or until the court holds an evidentiary hearing." Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387 (8th Cir.1991). When considering whether personal jurisdiction exists under the Missouri long-arm statute, it is permissible to consider matters outside the pleadings. Stevens v. Redwing, 146 F.3d 538, 543 (8th Cir.1998).

Where a federal court's subject matter jurisdiction over a case arises from the existence of a federal question, the court may exercise personal jurisdiction over a defendant if the plaintiff has properly served the defendant with process under the forum state's long-arm statute and if the defendant has sufficient contacts with the forum state to satisfy procedural due process. Omni Capital Int'l, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S. 97, 104-05, 108 S.Ct. 404, 98 L.Ed.2d 415 (1987); Bird v. Parsons, 289 F.3d 865, 871 (6th Cir.2002).

The Missouri long-arm statute provides that an individual or company submits to personal jurisdiction of the courts of the State of Missouri for any cause of action arising from, inter alia, the following: (1) transaction of any business within the state, and (2) commission of a tortious act within the state. See Mo.Rev.Stat. § 506.500 (2000). Missouri construes its long-arm statute to confer jurisdiction to the fullest extent permitted by the Due Process Clause, within the specific categories enumerated in the statute. State ex rel. Metal Serv. Ctr. of Georgia, Inc. v. Gaertner, 677 S.W.2d 325, 327 (Mo.1984) (en banc); see Clune v. Alimak AB, 233 F.3d 538, 541 (8th Cir.2000), cert. denied sub nom Industrivarden Serv. AB v. Clune, 533 U.S. 929, 121 S.Ct. 2551, 150 L.Ed.2d 718 (2001). As a result, the Court will focus on whether exercising personal jurisdiction over the defendant comports with federal due process standards. See Dakota Indus., Inc. v. Ever Best Ltd., 28 F.3d 910, 915 (8th Cir.1994).

The Due Process Clause limits the power of a state to assert personal jurisdiction over a nonresident defendant. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 413-14, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). A state may exercise personal jurisdiction over a nonresident defendant consistent with due process when the defendant has "certain minimum contacts with [the forum state] such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" International Shoe Co. v. State of Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940)). "In judging minimum contacts, a court properly focuses on the relationship among the defendant, the forum, and the litigation." Calder v. Jones, 465 U.S. 783, 788, 104 S.Ct. 1482, 79 L.Ed.2d 804 (1984) (citations and internal quotations omitted). The defendant's contact with the forum state must be purposeful and such that defendant "should reasonably anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980). A party may anticipate being haled into court in a particular jurisdiction if it "purposefully directed" its activities at residents of the forum, and the litigation results from alleged injuries that "arise out of or...