L.L.C. v. Citadel Capital Co., Civil Action No. 09-0886 (JDB).

• Decision Date: 31 March 2010
• Docket Number: Civil Action No. 09-0886 (JDB).
• Citation: 699 F.Supp.2d 303
• Parties: CITADEL INVESTMENT GROUP, L.L.C., et al., Plaintiffs, v. CITADEL CAPITAL COMPANY, Defendant.
• Court: U.S. District Court — District of Columbia

699 F.Supp.2d 303

CITADEL INVESTMENT GROUP, L.L.C., et al., Plaintiffs,

v.CITADEL CAPITAL COMPANY, Defendant.

Civil Action No. 09-0886 (JDB).

United States District Court,District of Columbia.

March 31, 2010.

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Daniel D. Rubinstein, Paul D. McGrady, Jr., Greenberg Traurig LLP, Chicago, IL, Mark Lee Hogge, Steven J. Wadyka, Greenberg Traurig, LLP, Washington, DC, for Plaintiffs.

Barry S. Neuman, Carter Ledyard & Milburn, Washington, DC, Kenneth S. Levine, Rose Auslander, Carter, Ledyard & Milburn LLP, New York, NY, for Defendant.

MEMORANDUM OPINION

JOHN D. BATES, District Judge.

Plaintiffs Citadel Investment Group, L.L.C. (“Citadel Investment”) and KCG IP Holdings LLC bring this suit against defendant Citadel Capital S.A.E. (“Citadel Capital”), alleging that, in promoting its business, Citadel Capital misappropriated and infringed plaintiffs' federally-registered trademarks. Plaintiffs assert five claims against Citadel Capital: trademark infringement under 15 U.S.C. § 1114(1); false designation of origin under 15 U.S.C. § 1125(a); violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125; and both trademark infringement and unfair competition under District of Columbia common law. Before the Court is Citadel Capital's motion to dismiss for lack of personal jurisdiction and for failure to join an indispensable party. Upon careful consideration of the parties' memoranda, the applicable law, and the entire record herein, and for the reasons stated below, the Court will deny the motion.

BACKGROUND

Plaintiff Citadel Investment, a Delaware limited liability company with its principal place of business in Illinois, offers investment management, investment consultation, and brokerage fund services. Compl. ¶¶ 4, 16. To promote these services, and to “protect its investment in its brand,” Compl. ¶ 12, Citadel Investment uses three federally-registered trademarks: (1) the word “Citadel,” Compl., Ex. C; (2) the phrase “Citadel Solutions,” Compl., Ex. B; and (3) the word “Citadel” coupled with a stylized castle design, Compl., Ex. A. ¹ Citadel Investment also owns the domain name < citadelgroup.com>, and operates a website accessible at www. citadelgroup. com. Compl. ¶ 19.

Defendant Citadel Capital is an Egyptian Joint Stock Company with its principal place of business in Cairo, Egypt. Compl. ¶ 6. Since 2004, it has made “private equity investments in the Middle East and North Africa,” Compl. ¶ 20, and “is the leading private equity firm in the Middle East and North Africa,” Def.'s Mem. in Supp. of Mot. to Dismiss (“Def.'s Mem.”) [Docket Entry 17], Decl. of Hisham el-Khazindar (“el-Khazindar Decl.”), ¶ 5 To promote its services, Citadel Capital uses a logo featuring the name “Citadel Capital” and the Arabic word for “citadel” adjacent to a stylized castle design. Compl. ¶ 22. Plaintiffs believe this logo infringes their federally-registered trademarks. Citadel Capital also allegedly is the registrant of the domain name , and operates a website at www. citadelcapital. com. Compl. ¶ 23.

In March 2008, plaintiffs learned that Citadel Capital “was preparing for an initial public offering ... that could effect [sic] the U.S. financial services market.” Pls.' Opp'n to Def.'s Mot. to Dismiss (“Pls.' Opp'n”) [Docket Entry 19], Decl. of Karen Schweickart, ¶ 2. In particular, plaintiffs were worried that if Citadel Capital entered the American financial services market, Citadel Capital's use of the “Citadel” name could confuse consumers. See id. Therefore, plaintiffs advised Citadel Capital that they “held superior intellectual property rights in the United States in the ‘Citadel’ trademarks,” and that Citadel Capital could not use its name and logo in U.S. markets. Id. For its part, Citadel Capital “did not believe that [its] ... use of the ‘Citadel Capital’ name or plans to pursue an [initial public offering] would cause confusion with” plaintiffs' trademarks. Id. at ¶ 3. Plaintiffs nonetheless indicated that they “would not agree to Citadel Capital's use of their name and logo in the United States.” Pls.' Opp'n, Decl. of Adam Cooper, ¶ 4.

Thereafter, Citadel Capital filed a trademark application with the United States Patent and Trademark Office, seeking to register the company's logo. See Pls.' Opp'n, Decl. of Adam Levetown (“Levetown Decl.”), Ex. O (Citadel Capital's trademark application). The Patent and Trademark Office refused Citadel Capital's application, concluding that Citadel Capital's proposed trademark was “similar” to plaintiffs' previously-registered trademarks and therefore “there is a likelihood of confusion as to the source of applicant's services.” Levetown Decl., Ex. P (rejection of Citadel Capital's trademark application), 4.

Even though Citadel Capital did not obtain a trademark for its logo, plaintiffs allege that it nevertheless has attempted “entry into the United States market for investment services” through “its attendance at and sponsorship of industry conferences in the investment services field.” Compl. ¶ 3; see also Levetown Decl. at ¶ 8. Of particular relevance to plaintiffs' claims here, Citadel Capital served as a “lead sponsor” and a “reception sponsor” of the Global Private Equity Conference held in Washington, D.C. in May 2009.” Compl. ¶ 3; see also Levetown Decl. at ¶ 8. ² In its role as a “reception sponsor” of the event, Citadel Capital hosted a cocktail reception for Conference attendees. See id. During the reception, Citadel Capital's chairman “gave a speech to the cocktail party attendees where he described defendant Citadel Capital's investment strategy and projects.” Id. at ¶ 15. The chairman also participated in a panel discussion at the conference. See id. at ¶ 11. Approximately 700 individuals and corporations attended the Global Private Equity Conference, many of which had offices in the District of Columbia or else were “otherwise affiliated with the District.” Levetown Decl. at ¶ 9.

Throughout the Conference, Citadel Capital's employees handed out business cards and other promotional material bearing Citadel Capital's name and logo. See id. at ¶¶ 9-10, 17. The company also deployed several placards bearing the company's name and logo at its conference booth and during the cocktail reception. See id. at ¶ 9. And Citadel Capital “maintain[ed] a computer at its Conference booth displaying its website www. citadelcapital. com and promoting [its] private equity investment services.” Pls.' Opp'n at 7; see also Levetown Decl. at ¶ 9.

Plaintiffs concluded that Citadel Capital's use of its logo to promote its private equity services in the United States infringed plaintiffs' trademarks, and therefore filed this action. Plaintiffs assert four claims against Citadel Capital related to its use of its company logo: trademark infringement under 15 U.S.C. § 1114(1); false designation of origin under 15 U.S.C. § 1125(a); and both trademark infringement and unfair competition under District of Columbia common law. They seek monetary damages for these claims, and a permanent injunction restraining Citadel Capital from using any logo that is similar to plaintiffs' trademarks. Additionally, plaintiffs assert that Citadel Capital is liable for cybersquatting based on its use of a domain name that plaintiffs believe is confusingly similar to plaintiffs' own domain name. For this claim, they seek both monetary damages and an order transferring Citadel Capital's domain name to plaintiffs. Citadel Capital has moved to dismiss plaintiffs' claims for lack of personal jurisdiction and for failure to join an indispensable party.

ANALYSIS

I. Federal Rule of Civil Procedure 12(b)(2): Personal Jurisdiction

Under Federal Rule of Civil Procedure 12(b)(2), a plaintiff bears the burden of establishing a court's personal jurisdiction over a defendant. Where, as here, there has been no jurisdictional discovery, a plaintiff need only make a prima facie showing of the pertinent jurisdictional facts in order to meet that burden. See Mwani v. bin Laden, 417 F.3d 1, 8 (D.C.Cir.2005); see also Brunson v. Kalil & Co., Inc., 404 F.Supp.2d 221, 226 (D.D.C.2005). “Moreover, to establish a prima facie case, plaintiffs are not limited to evidence that meets the standards of admissibility required by the district court. Rather, they may rest their argument on their pleadings, bolstered by such affidavits and other written materials as they can otherwise obtain.” Mwani, 417 F.3d at 8. Nevertheless, a plaintiff must allege “specific facts upon which personal jurisdiction may be based,” Blumenthal v. Drudge, 992 F.Supp. 44, 53 (D.D.C.1998), and it cannot rely on conclusory allegations, see Elemary v. Philipp Holzmann A.G., 533 F.Supp.2d 116, 121 (D.D.C.2008).

The Court may exercise personal jurisdiction over a non-resident defendant either by finding general jurisdiction over the party, or by finding specific jurisdiction based on “acts of a defendant that touch and concern the forum.” Steinberg v. Int'l Criminal Police Org., 672 F.2d 927, 928 (D.C.Cir.1981); accord Kopff v. Battaglia, 425 F.Supp.2d 76, 81 (D.D.C.2006). Here, plaintiffs contend only that this Court has specific jurisdiction over Citadel Capital.

To establish specific jurisdiction over a non-resident defendant in a federal question case such as this, plaintiffs must plead facts that (1) bring the case within the scope of the District of Columbia's long-arm statute, D.C.Code § 13-423, and (2) satisfy the constitutional requirements of due process. See GTE New Media Servs. Inc. v. BellSouth Corp., 199 F.3d 1343, 1347 (D.C.Cir.2000); United States v. Ferrara, 54 F.3d 825, 828 (D.C.Cir.1995). The District's long-arm statute states that courts may exercise jurisdiction over any person who, acting directly or through an agent, engages in the following conduct:

(1) transacts any business in the District of Columbia;

(2) contracts to supply services in the District of

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