Limostars, Inc. v. New Jersey Car and Limo, Inc.
| Decision Date | 08 August 2011 |
| Docket Number | No. CV-10-2179-PHX-LOA,CV-10-2179-PHX-LOA |
| Parties | LimoStars, Inc., Plaintiff, v. New Jersey Car and Limo, Inc., a New Jersey corporation, Defendant. |
| Court | U.S. District Court — District of Arizona |
A default damages hearing was held in open court on June 16, 2011, after entry of default against Defendant New Jersey Car and Limo, Inc. ("New Jersey Limo"), a New Jersey corporation, on Plaintiff LimoStars, Inc.'s ("Plaintiff") October 12, 2010 Complaint. (Docs. 1, 101) Plaintiff's President and Chief Executive Officer, Charles Wurster, III ("Wurster") testified at the default damages hearing. Pursuant to General Order 11-3,2 the undersigned Magistrate Judge recommends that default judgment beentered in favor of Plaintiff against Defendant New Jersey Limo in the amount of $82,380.77 and include the requested injunctive relief recommended herein for the reasons set forth in this Report and Recommendation.
This trademark infringement action seeks both injunctive relief and monetary damages as a result of Defendant New Jersey Limo's intentional infringement of Plaintiff's federally registered "LIMOSTARS" trademark by New Jersey Limo's use of the www.nylimostars.com website. New Jersey Limo is a New Jersey corporation, controlled by Malak Faltawws ("Faltawws"), its Chief Executive Officer ("CEO").
On April 12, 2011, the Court received a faxed letter, doc. 29, from Faltawws, a non-lawyer, only two days before the April 14, 2011default damages hearing which had been scheduled since February 10, 2011. The next day the Court received a second letter, doc. 31. Among other claims, Faltawws' first letter "question[ed] the plaintiff's claim that jurisdiction is proper in the Courts of Arizona . . . [because] this case does not involve any dispute with GoDaddy.com, or my registration of the domain name."3 (Doc. 29 at 1) The Court construed the April 13, 2011 letter, doc. 31, a motion to continue the default damages hearing which it summarily granted with very little notice to Plaintiff's Illinois counsel, Mark L. Brown. (Doc. 33) Faltawws was informed in writing that only licensed attorneys may represent a corporation in Arizona and New Jersey Limo "must retain an attorney, licensed to practice law in Arizona and admitted to practice in this District Court or authorized to practice law in this District Court upon pro hoc vice application, and file an appearance herein on or before April 29, 2011." (Id. at 5)(emphasis in original). When no attorney appeared in this case on behalf of New Jersey Limo by May 18, 2011, the Court re-scheduled the default damages hearing for June 16, 2011. (Doc. 37)
Count I of Plaintiff's Complaint alleges a trademark infringement claim in violation of 15 U.S.C. § 1114(1)(a), which provides for the liability of anyone who, without the consent of the registrant, uses:
in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
(Doc. 10 at 7-8) Count II alleges false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a), which similarly provides for the liability of anyone who:
on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.
The Complaint requests New Jersey Limo (1) "disgorge all profits derived from the sale of products or services originating from its infringing use of the LIMOSTARS trademark"; (2) "pay compensatory damages, in an amount to be determined at trial, attributable to the infringement of the LIMOSTARS trademark"; (3) "pay enhanced damages to Plaintiff of at least treble the amount of compensatory damages, due to Defendant's intentional, willful, deliberate, malicious, egregious and bad faith actions"; (4) pay punitive damages to Plaintiff for "Defendant's oppressive, fraudulent and malicious acts of infringement and unfair competition"; and (5) pay Plaintiff's costs in bringing this action, including its reasonable attorneys' fees and expenses. (Id. at 9-10)
The Complaint also seeks a permanent injunction, prohibiting New Jersey Limo, "its officers, agents, servants, employees, affiliates, parent or subsidiarycorporations, attorneys, and all those in privity or acting in concert with it" from further infringement of the LIMOSTARS trademark and enjoining Defendant from refusing to transfer to Plaintiff the use of www.nylimostars.com. (Id. at 9) The Lanham Act provides that district courts "shall have the power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office. . . ." 15 U.S.C. § 1116(a). Injunctive relief "is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant's continuing infringement." Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988). "When the infringing use is for a similar service," as Plaintiff alleges here, "a broad injunction is especially appropriate." GoTo. com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1211 (9th Cir. 2000).
New Jersey Limo's registered agent is Faltawws whose address is 301 State Route 17, Suite 800, Rutherford, New Jersey 07070. (Doc. 19, Exhibit ("Exh") 1 at 1-2; Exh 4 at 2, ¶ 2) The internet website at issue identifies this address as the business address for New Jersey Limo. (Doc. 10-1 at 1) Faltawws is New Jersey Limo's CEO. (Docs. 19, Exhs 1, 3; 25, Exh 2, ¶¶ 3, 9)
A process server attempted to serve the Summons and Complaint on New Jersey Limo on November 15, 2010, through its registered agent, Faltawws, at the above address but was unable to do so because (Doc. 16)
Federal Rule of Civil Procedure ("Rule") 4(h)(1) governs service of process on domestic and foreign corporations, when the corporation is served in the United States. Rule 4(h)(1)(A) provides that a corporation may be served "in the manner prescribed by Rule 4(e)(1) for serving an individual." Rule 4(h)(1)(B) authorizes service of process on a corporation "by delivering a copy of the summons and of the complaint to an officer, amanaging or general agent, or any other agent authorized by appointment or by law to receive service of process and - if the agent is one authorized by statute and the statute so requires - by also mailing a copy of each to the defendant. . . ." Fed.R.Civ.P. 4(h)(1). Rule 4(e)(1), in turn, permits service "following state law for serving a summons in an action brought in courts of general jurisdiction in the state where the district court is located or where service is made." Rule 4(e) (1), Fed.R.Civ.P.
After attempting to serve process on New Jersey Limo's CEO, Faltawws, its registered agent who left no forwarding address, Plaintiff served the New Jersey Department of Treasury as authorized under New Jersey law. B & B Realty Associates, LLC v. J & S Management Enterprises, Inc., 2008 WL 4681981, * 5 (N.J. Super.A.D., Oct. 22, 2008) (4).
On December 8, 2010, Plaintiff had copies of the Summons and Complaint served on New Jersey Limo by delivering them to the New Jersey Department of Treasury. (Docs. 17; 19, Exh 4, ¶ 4) The New Jersey Department of Treasury acknowledged receipt of this service via letter, dated December 21, 2010. (Doc. 19, Exhs 2,4) In the letter, dated January 20, 2011, the Department of Treasury confirmed that itmailed a copy of the Complaint to New Jersey Limo's last known registered agent at the address referenced above, and that the mailing was returned undelivered. (Id., Exh 3)
Plaintiff's counsel requested that the New Jersey Department of Treasury provide the foregoing information via affidavit and, in response, Plaintiff's counsel received a substantively identical letter, signed by Chief of Operation Robert Benco, Jr. and notarized by Notary Shaunelle Clark. (Doc. 25, Exh 3)
New Jersey Limo also received actual notice of this action as early as February 18, 2011, doc. 25, ¶¶ 3-4, and no later than April 11, 2011 when Faltawws sent his letter to the Court. (Doc. 29) Despite both statutory service of process and actual notice of this lawsuit, no answer or other responsive pleading was filed on behalf of New Jersey Limo and the time to do so has expired. The Clerk of Court entered New Jersey Limo's default on February 8, 2011. (Doc. 20) On February 25, 2011, Plaintiff filed an application for entry of default judgment against New Jersey Limo and requested an evidentiary hearing pursuant to Rule 55(b)(2). (Doc. 23) Because the Complaint requested non-liquidated damages and injunctive relief, the Court held a default damages evidentiary hearing on June 16, 2011. (Doc. 38) Holtsinger v. Briddle, 2007 WL 1080112, * 1 (E.D.Cal. 2007) (...
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