Del Monte Int'l GMBH v. Del Monte Corp.

• Decision Date: 05 February 2014
• Docket Number: No. CV 13–5912 RSWL (MANx).,CV 13–5912 RSWL (MANx).
• Court: U.S. District Court — Central District of California
• Parties: DEL MONTE INTERNATIONAL GMBH, Plaintiff, v. DEL MONTE CORPORATION, Defendant.

995 F.Supp.2d 1107

DEL MONTE INTERNATIONAL GMBH, Plaintiff,

v.DEL MONTE CORPORATION, Defendant.

No. CV 13–5912 RSWL (MANx).

United States District Court,

C.D. California.

Feb. 5, 2014.

Jason D. Russell, Winston Ping Hsiao, Skadden, Arps, Slate, Meagher and Flom LLP, Los Angeles, CA, Anthony J. Dreyer, Jamie Stockton, Skadden, Arps, Slate, Meagher and Flom LLP, New York, NY, for Plaintiff.

Thomas Harold Zellerbach, Orrick Herrington and Sutcliffe LLP, Menlo Park, CA, for Defendant.

Order re: Defendant's Motion to Dismiss Pursuant to Fed.R.Civ.P. 12(b)(1) and 12(b)(6) [17]

RONALD S.W. LEW, Senior District Judge.

Currently before the Court is Defendant Del Monte Corporation's (“Defendant”) Motion to Dismiss Pursuant to Fed.R.Civ.P. 12(b)(1) and 12(b)(6) [17]. Plaintiff Del Monte International GmbH (“Plaintiff”) filed its Opposition on November 6, 2013 [21]. Defendant filed its Reply on November 20, 2013 [22]. This matter was taken under submission on November 26, 2013 [23]. Having reviewed all papers submitted pertaining to the Motion, and having considered all arguments presented to the Court, the Court NOW FINDS AND RULES AS FOLLOWS:

Defendant's Motion to Dismiss is hereby GRANTED.

I. Background

Plaintiff is a limited liability company organized under the laws of Switzerland, with its principal place of business in Monaco. Compl. ¶ 2. Plaintiff is a wholly owned subsidiary of Fresh Del Monte Produce Inc. (“Fresh Del Monte”), the holding company for the Del Monte Fresh Produce group of companies. Id. at ¶ 3. Defendant is a Delaware corporation with its principal executive offices in California. Id. at ¶ 4.

Before August 1989, Defendant was a wholly owned subsidiary of RJR Nabisco, Inc. and was divided into two major operations. Id. at ¶ 12. One operation was dedicated to selling canned fruits and vegetables and dried fruits; the other operation principally sold fresh fruits, fresh vegetables, fresh produce, and certain preserved products. Id. In late 1989, the second operation was sold to Polly Peck International and ultimately became part of Fresh Del Monte. Id.

Fresh Del Monte is a leading producer and seller of high-quality fresh fruit and vegetables, as well as a leading producer and distributor of prepared fruit and vegetables, juices, beverages, snacks, and desserts in Europe, the Middle East, Africa, and former Soviet Union countries. Id. at ¶ 13. Fresh Del Monte provides its services and products to customers in over 80 countries worldwide. Id. Fresh Del Monte has leading market positions in many product categories, all of which are sold under the DEL MONTE trademark. Id. at ¶ 14. Fresh Del Monte generated approximately $2,664,166,000 in net sales from its DEL MONTE branded products in fiscal year 2012. Id.

Plaintiff owns the trademark DEL MONTE in South Africa and has owned the Mark there since 1990. Id. at ¶ 16. Plaintiff also holds: (1) an exclusive, perpetual,royalty-free worldwide license to use the DEL MONTE Mark on or in connection with the production, manufacture, sale, and distribution of fresh fruit, vegetables, and produce, and certain preserved fruit products; and (2) an exclusive, royalty-free license to use the DEL MONTE Mark on or in connection with production, manufacture, sale, and distribution of all food products in Europe, the Middle East, Africa, and former Soviet Union countries. Id. at ¶ 17.

Plaintiff and its affiliates have owned and operated over a dozen “delmonte” domain names for over a decade without seeking or receiving authorization from Defendant. Id. at ¶ 19. Defendant has never objected to any of these domain names. Id.

In June 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) introduced its New Generic Top Level Domain Program, which allows parties to apply for new generic top level domains (“gTLD”), unique top level domains (“TLD”), to be used in lieu of traditional TLDs, such as <.com> or <. net>. Id. at ¶ 20. The application window opened on January 12, 2012, and closed on May 30, 2012. Id. at ¶ 21.

ICANN also provided for a New gTLD Dispute Resolution Procedure and authority for administering this procedure was delegated to the World Intellectual Property Organization (“WIPO”). Id. at ¶ 22. WIPO subsequently adopted the WIPO Rules for New gTLD Dispute Resolution for Legal Rights Objections. Id. Under these policies and rules, third parties were allowed to challenge a gTLD application by filing a Legal Rights Objection (“LRO”) during a specified period. Id. at ¶ 23. The principal inquiries pertaining to applications for gTLDs that are also trademarks are (1) whether the applicant has bona fide rights in the trademark that corresponds to the applied-for gLTD and (2) whether registration of the gTLD by the applicant would create an impermissible likelihood of consumer confusion. Id. at ¶ 24.

Plaintiff submitted its Application for the gTLD <.delmonte> during the specified period. Id. at ¶ 25. On March 1, 2013, Defendant filed an LRO objecting to Plaintiff's Application. Id. at ¶ 31. On June 14, 2013, WIPO appointed a three-member panel to decide, based on its determination as to the principal inquiries pertaining to gTLDs, whether to uphold or reject Defendant's LRO. Id. at ¶ 35. On August 6, 2013, a majority of the WIPO panel decided in favor of sustaining Defendant's LRO. Id. at ¶ 36.

On August 13, 2013, Plaintiff filed this Action in this Court, requesting a declaration that: (1) Plaintiff has bona fide rights in the DEL MONTE Mark; (2) that Plaintiff is not in violation of the Anti–Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d); and (3) Plaintiff's registration of the gTLD <.delmonte> will not create an impermissible likelihood of confusion. Plaintiff also requests that this Court order Defendant to withdraw its LRO. Id. at ¶ 42.

II. Legal Standard

A. Motion to Dismiss Pursuant to Rule 12(b)(1)

Federal Rule of Civil Procedure 12(b)(1) authorizes a court to dismiss claims over which it lacks proper subject matter jurisdiction. A court is free to determine jurisdiction on a motion to dismiss for lack of jurisdiction under Rule 12(b)(1) “unless the jurisdictional issue is inextricable from the merits of a case.” Kingman Reef Atoll Invs., L.L.C. v. United States, 541 F.3d 1189, 1195 (9th Cir.2008) (citing Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir.1987)).

“[U]nlike a Rule 12(b)(6) motion, in a Rule 12(b)(1) motion, the district court is not confined to the four corners of the complaint—it may consider facts and need not assume the truthfulness of the complaint[,]” and the existence of disputed material facts will not preclude the court from evaluating the existence of subject matter jurisdiction. Americopters, LLC v. Fed. Aviation Admin., 441 F.3d 726, 732 n. 4 (9th Cir.2006); see also Ass'n of Am. Med. Colls. v. United States, 217 F.3d 770, 778 (9th Cir.2000). The moving party “should prevail [on a motion to dismiss] only if the material jurisdictional facts are not in dispute and the moving party is entitled to prevail as a matter of law.” Casumpang v. Int'l Longshoremen's & Warehousemen's Union, 269 F.3d 1042, 1060–61 (9th Cir.2001) (internal citations omitted); Tosco Corp. v. Cmts. for a Better Env't, 236 F.3d 495, 499 (9th Cir.2001), overruled on other grounds by, Hertz Corp. v. Friend, 559 U.S. 77, 130 S.Ct. 1181, 175 L.Ed.2d 1029 (2010).

B. Motion to Dismiss Pursuant to Rule 12(b)(6)

Federal Rule of Civil Procedure 12(b)(6) allows a party to move for dismissal of one or more claims if the pleading fails to state a claim upon which relief can be granted. Dismissal can be based on a lack of cognizable legal theory or lack of sufficient facts alleged under a cognizable legal theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.1988). However, a party is not required to state the legal basis for its claim, only the facts underlying it. McCalden v. Cal. Library Ass'n, 955 F.2d 1214, 1223 (9th Cir.1990). In a Rule 12(b)(6) motion to dismiss, a court must presume all factual allegations of the complaint to be true and draw all reasonable inferences in favor of the non-moving party. Klarfeld v. United States, 944 F.2d 583, 585 (9th Cir.1991).

The question presented by a motion to dismiss is not whether the plaintiff will prevail in the action, but whether the plaintiff is entitled to offer evidence in support of its claim. Swierkiewicz v. Sorema N.A., 534 U.S. 506, 511, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002). “While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the ‘grounds' of his ‘entitle [ment] to relief’ requires more than labels and conclusions, and a formulaic recitation of a cause of action's elements will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal citation omitted). Although specific facts are not necessary if the complaint gives the defendant fair notice of the claim and the grounds upon which the claim rests, a complaint must nevertheless “contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (internal quotation marks omitted).

If dismissed, a court must then decide whether to grant leave to amend. The Ninth Circuit has repeatedly held that a district court should grant leave to amend even if no request to amend the pleadings was made, unless it determines that the pleading could not possibly be cured by the allegation of other facts. Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir.2000).

III. Discussion

A. Subject Matter Jurisdiction

Plaintiff asserts a claim for declaratory relief under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. Compl. ¶ 42. The Declaratory Judgment Act creates a remedy in federal court “[i]n a case of actual controversy within its jurisdiction,” and provides that a federal court “may declare the...