Hasbro, Inc. v. Clue Computing, Inc., Civil Action No. 97-10065-DPW.

• Decision Date: 30 September 1997
• Docket Number: Civil Action No. 97-10065-DPW.
• Citation: 994 F.Supp. 34
• Parties: HASBRO, INC., Plaintiff, v. CLUE COMPUTING, INC., Defendant.
• Court: U.S. District Court — District of Massachusetts

994 F.Supp. 34

HASBRO, INC., Plaintiff, v. CLUE COMPUTING, INC., Defendant.

Civil Action No. 97-10065-DPW.

United States District Court, D. Massachusetts.

September 30, 1997.

COPYRIGHT MATERIAL OMITTED

Richard J. McCarthy, Edwards & Angell, Boston, MA, Kenneth B. Wilson, Michael B. Levin, Wilson, Sonsini, Goodrich & Rosati, Palo Alto, CA, for Hasbro, Inc.

Thomas A. Mullen, Wakefield, MA, for Clue Computing, Inc.

MEMORANDUM AND ORDER

WOODLOCK, District Judge.

Plaintiff Hasbro brings this suit against Clue Computing, a Colorado company, for trademark infringement upon the CLUE® trademark. Hasbro, the owner of the CLUE® mark for the game CLUE, alleges that Clue Computing has infringed upon its trademark rights through use of a World Wide Web site at the address of "clue.com." Defendants have moved to dismiss the case pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction or, in the alternative, to transfer venue pursuant to 28 U.S.C. § 1404(a). Plaintiff Hasbro has shown sufficient contacts by the defendant with Massachusetts to enable this court to exercise jurisdiction over the defendant. In addition, I find plaintiff's choice of forum is appropriate. Accordingly, I will deny the defendant's motion.

I. BACKGROUND

A. The Internet

The Internet is a giant electronic network which connects the smaller networks of the world. The Internet was developed by the Department of Defense's Advanced Research Project Agency 25 years ago in order to link the computer systems of universities, government agencies, and other research organizations. Since then, the activity generated by the Internet, as well as the size of the Internet itself, has grown exponentially. Today, the Internet serves approximately 90 million individuals, linking those persons (or, more accurately, their computers) through global telecommunication lines. See generally ACLU v. Reno, 929 F.Supp. 824, 830-38 (E.D.Pa.1996), aff'd, ___ U.S. ___, 117 S.Ct. 2329, 138 L.Ed.2d 874 (1997). The World Wide Web is one part of the Internet which allows for the display of graphic materials, photos, text and audio. Individuals around the world can easily access and interact with the World Wide Web. Information is "published" on the Internet by any individual working with the proper software in their home or business. Because of the ease of producing the "Web pages" or "Web sites," a vast array of information has accumulated on the World Wide Web. Users access such information by either typing in an address or using any of several "search engines," software and database architecture that explores the Web, that seek to locate particular text requested by the user. World Wide Web addresses take two forms. A unique numeric address identifies each site along with a unique corresponding alphanumeric address, known as a "domain name."

The explosive growth of the Internet has sparked new debates in the law. "Cyberspace" poses new issues regarding copyrights and Internet sites, First Amendment inquiries, trademark, and personal jurisdiction issues. Conflicts involving trademark issues, such as those in this case, easily erupt from the choice of domain names. The registration and assignment of domain names occurs through Network Solutions, Inc. ("NSI"), a corporation under contract with the Internet Network Information Center ("InterNIC"). Domain names are organized on two levels. The first level domain name indicates the type of organization, e.g. ".edu" for educational institutions, ".com" for commercial organizations, ".gov" for government organizations. In addition to the suffix, one other character string, chosen by the creator, makes up a unique specific address, or the domain name. This poses a problem where several different companies conduct businesses under the same mark, which each would like to use. This problem has been further amplified by individuals who capitalize upon the issue, trying to "scoop up" available Web sites that might later be in demand by large companies. These individuals have been termed "cyber-squatters." As expected, litigation has resulted when the individuals or companies own the trademark on the name contained within the address. See Howard G. Zaharoff & Thomas W. Evans, Cyberspace and the Internet: Law's Newest Frontier, Boston B.J., May/June, 1997, at 14; Kenneth Sutherlin Dueker, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9 Harv. J.L. & Tech. 483 (1996); Alan J. Hartnick, Copyright & Trademark on the Internet — And Where to Sue, 217 N.Y.L.J. 5 (February 21, 1997). The instant case does not contain allegations of "cyber-squatting," but does involve a trademark dispute over an Internet Web site address.

B. Defendant Clue Computing, Inc.

Clue Computing is a Colorado corporation located in Longmont, Colorado. It is in the business of computer consulting. Created in 1994 as a partnership, Clue Computing is now under the ownership of Eric Robison.¹ (Robison Aff. ¶ 1.) Robison is the sole fulltime employee of Clue Computing and Clue Computing has no offices outside of Longmont, Colorado. Id.

Clue Computing has served less than a dozen clients during its existence. In 1994, Clue Computing's revenues totaled approximately $40,000. (Dep. of Eric Robison, Pl.'s Ex. 4 at 19.) In that year, Clue Computing served approximately four clients, all located in Colorado. Id. at 19-20. In 1995, Clue Computing's revenues increased to between $80,000 and $100,000, and in 1996 Clue's revenues totaled approximately $40,000. Id. at 19. In those years, Clue Computing worked for Grumman Systems Support Corporation; Matsushita; EG & G; University of Texas; and Professional Training Services (PTS). The work for those companies brought Robison to Canada, Texas, New York, California, Arizona, Maryland, Georgia, and Antarctica. (Pl.'s Ex. 4.)

Clue Computing's work for PTS originated when PTS contacted Comtrix, a Colorado company, to find trainers and was referred to Clue Computing. PTS needed trainers to fulfill a contract for Digital Equipment Corporation, a Massachusetts company. For PTS, Clue Computing traveled to many locations and trained employees of Digital Canada and DEC America, as well as other companies, not related to Digital. Robison was aware that Digital was a Massachusetts-based company and traveled under the Digital travel accounts. (Pl.'s Ex. 4 at 109-10, Pl.'s Ex. 13.) PTS paid Robison after receiving payment from Digital. (Pl.'s Ex. 13.)

Robison has never been to Massachusetts. Other than PTS, none of his clients have been associated with Massachusetts. Clue Computing's phone records show that during the company's existence, its employees have made eight calls to Massachusetts. In addition, Clue Computing purchased software from FTP software, a Massachusetts company.

Defendant Clue Computing owns the "clue. com" Web site.² The company uses the Web site to advertise its business, including Internet consulting, training, system administration and network design and implementation. On its Web site, Clue states, "Clue will go to any customers site! Clue's own Eric Robison traveled to Antarctica for the 1995-1996 field season." (Pl.s Ex. 7) (emphasis in original.) The Web site offers the address, phone number, and email address for the company. In addition, those Internet users who view the site can instantly email the company by clicking on the page. Id. On another page of its Web site, Clue computing also states, "Location: Clue is a completely virtual company; the employees telecommute or work at client sites. It can be said, that the center of gravity of Clue Computing lies somewhere in Longmont, Colorado, USA. Clue provides services for clients anywhere on the planet." Furthermore, the site advertises, "Clients: Clue Computing provides services for many organizations, including: Digital Equipment Corporation...." Additionally, several individuals use the "clue. com" site for personal email and Web sites. Id. (emphasis in original.)

C. Plaintiff Hasbro, Inc.

Hasbro, Inc. designs, manufactures and markets children's toys and related items. In 1944, Hasbro invented the CLUE® board game, a murder mystery game where participants attempt to discover which character committed a murder in which room with which weapon. The name CLUE® has been registered as a trademark of Hasbro since 1950. Currently, Hasbro is developing CD-ROM versions of their traditional games. These games are available on the World Wide Web, e.g. MONOPOLY® game at "monopoly.com," SCRABBLE® game at "scrabble.com," and others. The CD-ROM version of the CLUE® has been developed as well. However, in 1996 Hasbro discovered that Clue Computing owned the domain name "clue.com."

Hasbro is a Rhode Island corporation, with its largest facility in Beverly, Massachusetts. Parker Brothers, the developer and marketer of CLUE® game, and Hasbro Interactive, the developer and marketer of the electronic version of CLUE® game, are located in Massachusetts. The majority of Hasbro's American employees, over 2500 of its 6500, are in Massachusetts. (Dec. of John McCann, III ¶ 6). In addition, Hasbro has more facilities in Massachusetts, over 2 million square feet, than in any other state. Id. Hasbro initiated suit in Massachusetts because of the location of Parker Brothers and Hasbro Interactive, but also because most, if not all, of its witnesses are located in Massachusetts. (Id., ¶ 8.) Witnesses will include, among others, marketing and advertising employees from Parker Brothers who will testify regarding expenses incurred in promoting and protecting the mark, Hasbro Interactive employees who will testify about the CD revision of the game and the Internet, and Hasbro accounting people, who will testify to effects of dilution of the mark. (Id., ¶ 10.)

D. Procedural History

Under the rules of NSI, the organization which registers domain names, any evidence of violation of a registered trademark requires NSI to put the...