Gregory A. Lewis & Britannica Capital Partners, LLC v. Malgorzata Madej, Kingsley Ventures Corp.

• Decision Date: 23 October 2015
• Docket Number: 15cv2676 (DLC)
• Parties: GREGORY A. LEWIS AND BRITANNICA CAPITAL PARTNERS, LLC, Plaintiffs, v. MALGORZATA MADEJ, KINGSLEY VENTURES CORP. AND SANJAY GUPTA, Defendants.
• Court: U.S. District Court — Southern District of New York

GREGORY A. LEWIS AND BRITANNICA CAPITAL PARTNERS, LLC, Plaintiffs, v. MALGORZATA MADEJ, KINGSLEY VENTURES CORP. AND SANJAY GUPTA, Defendants.

15cv2676 (DLC)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

October 23, 2015

OPINION AND ORDER

APPEARANCES:

For the plaintiff:

Jeffrey Sonnabend

Sonnabend Law

600 Prospect Avenue

Brooklyn, NY 11215

For the defendant Kingsley Ventures Corp.:

Amy J. Everhart

Everhart Law Firm

1400 Fifth Avenue North

Nashville, TN 37208

DENISE COTE, District Judge:

This dispute arises out of an alleged trademark infringement. Gregory Lewis ("Lewis") and Britannica Capital Partners, LLC ("Britannica") allege that Malgorzata Madej ("Madej"), Sanjay Gupta ("Gupta"), and Kingsley Ventures Corp. ("Kingsley") fraudulently and intentionally blocked the plaintiffs from using the name "Britannica" and relatedtrademarks.¹ They seek a declaration that Kingsley's trademarks are invalid and that its registered trademarks with the Patent and Trademark Office ("PTO") should be cancelled. The plaintiffs also seek money damages under both federal and state causes of action. The plaintiffs have not been able to locate either Madej or Gupta to effect service on them. Plaintiffs assert, however, that they served Kingsley on July 29, 2015.

Kingsley has moved to dismiss the action by arguing that there is no personal jurisdiction over it in New York, that service was flawed, and that venue is improper. For the reasons that follow, Kingsley's September 18, 2015 motion to dismiss is denied. Kingsley will be required to assist the plaintiffs in serving Madej and Gupta.

Background

The following facts are taken from the complaint and documents integral to those claims. Lewis is a resident of New York and Britannica is an LLC organized in New York. In December 2011, Lewis began licensing and other preparatory actions necessary for providing investment and consulting services under the mark "Britannica Capital Partners LLC" and/or"Britannica Capital." In preparing to do business as Britannica, plaintiffs registered with the Financial Industry Regulatory Authority ("FINRA"). FINRA is responsible for certifying and registering every financial services firm in the United States and has a record of the name of every financial firm. On January 24, 2012, plaintiffs requested that FINRA check the availability of the name "Britannica Capital Partners LLC." On February 9, FINRA confirmed that the name was available for registration, meaning that no other firm was registered with a name that would be confusingly similar to Britannica. Given FINRA's authoritative registry, FINRA's confirmation of the availability of the name Britannica established that Kingsley was not operating under that name. Lewis began contacting prior clients to inform them that he would be operating as Britannica Capital Partners LLC.

In March 2012, Lewis established Britannica as a New York LLC and has been providing investment related services under the Britannica name since then. Plaintiffs applied with the PTO to register the mark "Britannica," but the application was not accepted because Kingsley had already filed an application with a similar name. Plaintiffs surmise that the defendants learned of the plaintiffs' earlier registration with FINRA and have intentionally frustrated the plaintiffs' ability to register theBritannica mark by filing their own applications with the PTO under similar names.

Plaintiffs allege many specific facts to support their accusations. For example, Gupta signed Kingsley's trademark application to the PTO for the name "Britannica" on February 12, 2012. The application claimed a date of first use of February 12, 2012, the same day the application was filed. Two weeks later, the defendants began operating a website -- www.britannicacapital.com -- to advertise investment related services. The defendants' website stated that it was "founded in 2012."

After receiving a cease and desist letter from counsel for the defendants in September 2012, plaintiffs asked for an explanation of the basis for Kingsley's trademark application, including evidence of the time of first use. In response, Kingsley supplied apparently fraudulent documentation of its first use of the mark in 2004. Additionally, the complaint asserts that Gupta signed one trademark application and Madej signed four on behalf of Kingsley for Britannica-related marks. The first, second, third, and fourth applications originally stated a date of first use in commerce of February 12, 2012.²The fifth application was filed on September 16, 2012 and listed a date of first use of June 1, 2004.

The plaintiffs allege further fraudulent conduct by the defendants. For example, the defendants represent that Kingsley has a place of business in Casper, Wyoming. The address Kingsley provides, however, is a residential home that is occupied by Kingsley's registered agent for receiving service of process. Further, Madej has stated under penalty of perjury that she resides and does business in "Suite 94" at an address in London. The address is a post office box at a Mailboxes, Etc. retail location.

Plaintiffs brought this action for a declaratory judgment of trademark invalidity pursuant to 28 U.S.C. §§ 2201-2202. Plaintiffs' other causes of action include trademark infringement under 15 U.S.C. § 1125(a) and related state law claims for a prima facie tort and civil conspiracy.

Plaintiffs served Kingsley with the complaint on July 29, 2015. At the initial pretrial conference of September 18, the Court inquired about the status of service on Gupta and Madej. Plaintiffs' counsel described his efforts to serve Gupta and Madej, his inability to locate them, and his desire to take discovery of Kingsley to assist in serving them. Kingsley's counsel provided little information at the conference about thedefendants. She did not know the whereabouts of Gupta or his role at the company. Counsel for Kingsley further reported that Madej is a principal of Kingsley and has been in the United States but is "located in Europe." Defense counsel explained that Kingsley provides financial services in the United States, and has some customers in Colorado, but she does not know where it is registered to provide financial services. She also does not know where its principal place of business is located, but knows it has offices in Wyoming.

On the day of the conference, Kingsley moved to dismiss the complaint on three grounds: (1) lack of personal jurisdiction; (2) insufficient service of process; and (3) improper venue. In support of the motion, Kingsley provided an affidavit from Madej that lists "Suite 94" at a London address as her address. She identifies herself as an officer of Kingsley.

On October 2, the plaintiffs filed a motion for a nunc pro tunc extension of time to serve defendants Madej and Gupta. The motion further seeks an order requiring Kingsley to accept service on behalf of the individual defendants whom plaintiffs allege are Kingsley's officers.

Discussion

When deciding a motion to dismiss under Rule 12(b), Fed. R. Civ. P., a court must "accept all allegations in the complaintas true and draw all inferences in the non-moving party's favor." LaFaro v. New York Cardiothoracic Group, PLLC, 570 F.3d 471, 475 (2d Cir. 2009). "In order to survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must make a prima facie showing that jurisdiction exists." Licci v. Lebanese Canadian Bank, SAL, 732 F.3d 161, 167 (2d Cir. 2013) (citation omitted) ("Licci II"). In evaluating whether this standard is met, the pleadings and any supporting materials are construed in the light most favorable to the plaintiff. Id. "This showing may be made through the plaintiff's own affidavits and supporting materials, containing an averment of facts that, if credited, would suffice to establish jurisdiction over the defendant." Southern New England Telephone Co. v. Global NAPs Inc., 624 F.3d 123, 138 (2d Cir. 2010) (citation omitted). On the other hand, a court "will not draw argumentative inferences in the plaintiff's favor." In re Terrorist Attacks on September 11, 2001, 538 F.3d 71, 93 (2d Cir. 2008) (citation omitted). Furthermore, a plaintiff may not rely on conclusory statements without any supporting facts, as such allegations would "lack the factual specificity necessary to confer jurisdiction." Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181, 185 (2d Cir. 1998). Finally, in determining proper venue, "[i]f the court chooses to rely on pleadings and affidavits, the plaintiff needonly make a prima facie showing of venue." Gulf Ins. Co. v. Glasbrenner, 417 F.3d 353, 355 (2d Cir. 2005) (citation omitted).

I. Personal Jurisdiction

There are two steps to analyzing personal jurisdiction:

To determine personal jurisdiction over a non-domiciliary in a case involving a federal question, [courts] first apply the forum state's long-arm statute. If the long-arm statute permits personal jurisdiction, [courts] analyze whether personal jurisdiction comports with due process protections established under the Constitution.

Eades v. Kennedy, PC Law Offices, 799 F.3d 161, 168 (2d Cir. 2015) (citation omitted). Plaintiffs have satisfied both the state's long-arm statute and the constitutional requirements. Thus, there is personal jurisdiction over Kingsley.

A. New York's Long-Arm Statute

Plaintiffs allege that personal jurisdiction exists over Kingsley under CPLR § 302(a)(3)(ii), which provides in relevant part: "[A] court may exercise personal jurisdiction over any non-domiciliary" who "commits a tortious act without the state causing injury to person or property within the state . . . if he . . . expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce." Jurisdiction under this section has five elements:

First, that defendant committed a tortious act outside the State; second, that the cause of action arises from that act;

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