Panavision Intern., LP v. Toeppen, 96-3284 DDP (JRx).

• Decision Date: 19 September 1996
• Docket Number: No. 96-3284 DDP (JRx).,96-3284 DDP (JRx).
• Citation: 938 F. Supp. 616
• Court: U.S. District Court — Central District of California
• Parties: PANAVISION INTERNATIONAL, L.P., a Delaware Limited Partnership, Plaintiff, v. Dennis TOEPPEN, an individual, Network Solutions, Inc., a District of Columbia Corporation, and Does 1-50, Defendants.

938 F. Supp. 616

PANAVISION INTERNATIONAL, L.P., a Delaware Limited Partnership, Plaintiff, v. Dennis TOEPPEN, an individual, Network Solutions, Inc., a District of Columbia Corporation, and Does 1-50, Defendants.

No. 96-3284 DDP (JRx).

United States District Court, C.D. California.

September 19, 1996.

COPYRIGHT MATERIAL OMITTED

William E. Thomson, Jr., Ivy Kagan Bierman, Sean A. Luner, Kaye Scholer Fierman Hays & Handler, Los Angeles, CA, for Panavision International L.P.

Bruce W. Hamby, Orange, CA, Joseph D. Murphy, Meyer, Capel, Hirschfeld, Muncy, Jahn & Aldeen, Champaign, IL, for Dennis Toeppen.

ORDER DENYING DEFENDANT TOEPPEN'S MOTION TO QUASH THE SUMMONS AND DISMISS FOR LACK OF PERSONAL JURISDICTION

PREGERSON, District Judge.

Defendant Dennis Toeppen's Motion to Quash the Summons and Dismiss for Lack of Personal Jurisdiction, brought pursuant to Federal Rules of Civil Procedure 12(b)(2), came before the Court on September 16, 1996. After reviewing and considering the materials submitted by the parties and hearing oral argument, the Court denies Toeppen's Motion to Quash.

I. BACKGROUND

Plaintiff Panavision International, L.P. ("Panavision") is a Delaware limited partnership with its principal place of business in Los Angeles, California. Panavision owns several federally registered trademarks, including "Panavision" and "Panaflex," which it uses in connection with its theatrical motion picture and television camera and photographic equipment business.

Defendant Dennis Toeppen ("Toeppen") is an individual residing in Illinois. Toeppen owns several web sites, including the two at issue in this case, "panavision.com" and "panaflex.com." (Farrand Decl. ¶ 15.)

Defendant Network Solutions, Inc. ("NSI") is a District of Columbia corporation with its principal place of business in Herndon, Virginia. NSI registers Internet domain names.

The Internet is an international computer "super-network" of over 15,000 computer networks used by about 30 million individuals, corporations, organizations, and educational institutions worldwide. See generally American Civil Liberties Union v. Reno, 929 F.Supp. 824, 830-848 (E.D.P.A.1996) (discussing the Internet). In recent years, businesses have begun to use the Internet to provide information and products to consumers and other businesses.

Every Internet user has a unique address consisting of one or more address components. This address is commonly referred to as the "domain" or "domain name." On the Internet, domain names serve as the primary identifier of the Internet user. Businesses on the Internet commonly use their business names (e.g., IBM) with the designation ".com" (e.g., IBM.com) as their domain names. The designation ".com" identifies the name holder as a commercial entity.

NSI does not make an independent determination of an applicant's right to use a domain name. However, since at least November 23, 1995, NSI has required applicants, including Toeppen, to make certain representations and warranties, including: (1) that the applicant's statements in the application are true and the applicant has the right to use the requested domain name; (2) that the use or registration of the domain name does not interfere with or infringe the rights of any third party with respect to trademark, service mark, trade name, company name or any other intellectual property right; and (3) that the applicant is not seeking to use the domain name for any unlawful purpose, including tortious interference with contract or prospective business advantage, unfair competition, injuring the reputation of another, or for the purpose of confusing or misleading a person, whether natural or incorporated.

In December of 1995, Toeppen applied for registration of the Internet domain name "Panavision.com" and NSI registered the domain name. (Toeppen Decl. ¶ 12.) Toeppen is not, and never has been, authorized to use the Panavision Marks. (Farrand Decl. ¶ 16.)

After registering the "Panavision.com" domain name, Toeppen established a "web site" displaying aerial views of Pana, Illinois. (Toeppen Decl. ¶ 12.) At no time did Toeppen use the "Panavision.com" name in connection with the sale of any goods or services. (Toeppen Decl. ¶ 13.)

Like many businesses, Panavision has decided to do business via the Internet. When Panavision attempted to establish a web site under its own name, however, it discovered that Toeppen had registered domain names using the Panavision trademarks. (Farrand Decl. ¶ 12.)

By registering the "Panavision.com" domain name with NSI, Toeppen has prevented Panavision from registering and using its own trademark, Panavision, as an Internet domain name. (Farrand Decl. ¶ 13.)

After Panavision notified Toeppen of its intent to use the "Panavision.com" domain name, Toeppen demanded $13,000 to discontinue use of the domain name. (Farrand Decl. ¶ 14.) Toeppen subsequently registered Panavision's "Panaflex" trademark as the domain name "Panaflex.com." (Farrand Decl. ¶ 15.) Panavision asserts, based on conversation with an attorney for American Standard, Inc., that Toeppen is also a defendant in trademark actions brought by American Standard, Inc. and Intermatic, Inc. because of Toeppen's registration of "americanstandard.com" and "intermatic.com" as domain names and subsequent demands for money to relinquish control of the names. (Thomson Decl. ¶ 10.) Toeppen is also the registered owner of several other domain names that are similar to trademarked names, including: aircanada.com; anaheimstadium.com; arriflex.com (Arriflex is Panavision's main competitor); australiaopen.com; camdenyards.com; deltaairlines.com; eddiebauer.com; flydelta.com; frenchopen.com; lufthansa.com; neimanmarcus.com; northwestairlines.com; and yankeestadium.com. (Thomson Decl. ¶ 7, Ex. 10.)

Panavision asserts that Toeppen's sole purpose in registering the domain names at issue was to extort money from Panavision.

On May 7, 1996, Panavision brought claims against Toeppen and NSI in the Central District of California for: 1) federal dilution of trademark; 2) state dilution of trademark; 3) federal trademark infringement; 4) federal unfair competition; 5) unfair competition; 6) intentional interference with prospective economic advantage; 7) negligent interference with prospective economic advantage; and 8) breach of contract.

On August 21, 1996, Toeppen filed this Motion to Quash the Summons and Dismiss the Complaint for Lack of Personal Jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2). Toeppen alleges that the Court lacks personal jurisdiction because Toeppen resides in Illinois and the allegations concern Toeppen's actions in Illinois.

II. DISCUSSION

It is the plaintiff's burden to establish personal jurisdiction. See Ziegler v. Indian River County, 64 F.3d 470, 473 (9th Cir.1995). The plaintiff need only make a prima facie showing of jurisdiction where, as here, the court did not hear testimony or make factual findings. See id.; Omeluk v. Langsten Slip & Batbyggeri A/S, 52 F.3d 267, 268 (9th Cir.1995). This showing can be based on the affidavits of knowledgeable witnesses. See Data Disc, Inc. v. Systems Technology Assoc., Inc., 557 F.2d 1280, 1285 (9th Cir.1977); California Software Inc. v. Reliability Research, Inc., 631 F.Supp. 1356 (C.D.Cal.1986).

Where there is no applicable federal statute governing personal jurisdiction, federal courts must apply the law of the state in which the district court sits. Core-Vent Corp. v. Nobel Industries, 11 F.3d 1482, 1484 (9th Cir.1993). California's "long-arm" statute permits courts to assert jurisdiction over a nonresident defendant whenever permitted by the state and federal Constitutions. Cal. Code Civ.P. § 410.10. Therefore, the Court "need only determine whether personal jurisdiction in this case would meet the requirements of due process." Core-Vent, 11 F.3d at 1484 (quoting Brainerd v. Governors of the Univ. of Alberta, 873 F.2d 1257, 1258 (9th Cir.1989)).

A. General Jurisdiction

General jurisdiction permits a court to exercise personal jurisdiction over the defendant as to any cause of action arising in any jurisdiction. See Omeluk, 52 F.3d at 270. General jurisdiction exists when the defendant is domiciled in the forum state or its activities there are "substantial" or "continuous and systematic." Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16, 104 S.Ct. 1868, 1872-73, 80 L.Ed.2d 404 (1984); Omeluk, 52 F.3d at 270.

The Court does not have general jurisdiction over Toeppen. First, he is domiciled in Illinois, not California. Second, his activities in California are not substantial, systematic, or continuous. In 1996, Toeppen was in California twice, which he asserts is representative of his yearly contacts with this state.

B. Specific Jurisdiction

Specific jurisdiction arises in circumstances where the defendant's contacts with the forum state are insufficient to establish general jurisdiction but the defendant's activities in the forum are sufficient to establish jurisdiction for the purposes of the litigation. See Helicopteros, 466 U.S. at 414, 104 S.Ct. at 1872; Omeluk, 52 F.3d at 270. The defendant need not ever have been physically present in the forum state for specific jurisdiction to apply. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476, 105 S.Ct. 2174, 2184, 85 L.Ed.2d 528 (1985); Data Disc, 557 F.2d at 1288; California Software, 631 F.Supp. at 1360. The Court holds that it has specific jurisdiction over Toeppen.

The Ninth Circuit uses a three part test for specific jurisdiction: (1) "the nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from the defendant's forum-related activities; and (3) exercise of jurisdiction...